Ex Parte Abrami et al

Patent Trial and Appeal BoardOct 31, 2017

13156740 (P.T.A.B. Oct. 31, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/156,740 06/09/2011 Siamanto Abrami 09006564A1 5711 24959 7590 10/31/2017 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER ROBINSON, ELIZABETH A ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 10/31/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE —————— BEFORE THE PATENT TRIAL AND APPEAL BOARD —————— Ex parte SIAMANTO ABRAMI, GUANGLIANG TANG, and POLYAMIE TIPON —————— Appeal 2017-000919 Application 13/156,7401 Technology Center 1700 —————— Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. OGDEN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a)2 from the Examiner’s decision rejecting claims 8, 10, 11, 15–17, 19, 21, and 23–26 in the above- identified application.3 We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify PPG Industries Ohio, Inc. as the real party in interest. See Appeal Br. 1, Mar. 17, 2016. 2 Appeal Br.; Reply Br., Oct. 10, 2016. 3 Final Office Action, Sept. 22, 2015 [hereinafter Final Action]; Examiner’s Answer, Aug. 30, 2016 [hereinafter Answer]. Appeal 2017-000919 Application 13/156,740 2 BACKGROUND Appellant’s invention “relates to coating compositions that comprise magnesium hydroxide particles having a particle size of less than 200 nanometers, . . . and to substrates at least partially coated with at least one layer deposited from such a composition.” Spec.4 ¶ 1. The sole independent claim is reproduced below: 8. A substrate comprising a first coating composition comprising nanoparticles comprising magnesium hydroxide and having an average primary particle size of less than 200 nm, a polyamine and an epoxy functional polymer; and a second coating composition comprising a film-forming resin deposited on the first. Appeal Br. Claims App. 1. The Examiner maintains the following grounds of rejection: 1. Claims 8, 10, 15–17, 19, 21, and 23–26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Anderson5 in view of Gross6 and Benavides Pérez.7 See Final Action 2–4. 2. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over Anderson in view of Gross, Benavides Pérez, and Carlson.8 See Final Action 4–5. 4 Specification, June 9, 2011 (hereinafter Spec.). 5 Anderson, Jr. et al., US 5,166,255 (issued Nov. 24, 1992) [hereinafter Anderson]. 6 Gross et al., US 7,338,989 B2 (issued Mar. 4, 2008) [hereinafter Gross]. 7 Benavides Pérez et al., WO 2009/061165 A1 (published May 14, 2009). The Examiner cites English equivalent Benavides Pérez et al., US 8,796,364 B2 (issued Aug. 5, 2014) [hereinafter Benavides Pérez]. 8 Carlson et al., US 5,401,337 (issued Mar. 28, 1995). Appeal 2017-000919 Application 13/156,740 3 Appellants argue claims 8, 10, 15–17, 19, 21, and 23–26 as a group, see Appeal Br. 2–6, and make no distinct argument regarding claim 11, see id. at 6. Therefore, consistent with 37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to claim 8. Claims 10, 15–17, 19, 21, and 23–26 stand or fall with claim 8. DISCUSSION The Examiner finds that Anderson teaches a substrate comprising a first coating composition (an epoxy primer), and a second coating composition (a polyurethane clear coat). Final Action 2 (citing Anderson 12:34–57). The Examiner finds that Anderson describes using the coating on a transportation vehicle, but does not give any specific detail about the epoxy primer. See id. 2–3. However, the Examiner finds that Anderson teaches a composition, suitable for use as an anti-chip primer on an automobile, comprising an epoxy functional polymer, a polyamide curing component, and a magnesium hydroxide (MgOH) filler. Id. at 3 (citing Gross 7:9–17, 2:45–59). The Examiner determines that “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to use the epoxy primer of Gross, as the epoxy primer of Anderson, in order to provide a specific primer which provides outstanding protection against stone chipping for the vehicle.” Id. According to the Examiner, although Gross does not disclose that the MgOH filler is in the form of nanoparticles, Benavides Pérez teaches that in a paint coating comprising MgOH particles, the particles may range in size from 1 to 100 nm, with the benefit that they provide flame retardance while maintaining the mechanical properties of the coating. Id. (citing Benavides Appeal 2017-000919 Application 13/156,740 4 Pérez 1:43–50, 3:58–67). The Examiner likewise finds that Gross teaches that the disclosed epoxy polymer may comprise flame retardants. Id. at 3. (citing Gross 5:23–30). Thus, the Examiner determines [i]t would have been obvious to one of ordinary skill in the art at the time of the invention to use magnesium hydroxide particles in the size range taught by Benavides Pérez, as the magnesium hydroxide particles of Anderson in view of Gross, in order to provide the primer with flame retardance, while maintaining the mechanical properties of the primer. Id. at 3–4. Appellants argue that while Gross “list[s] examples of suitable organic and inorganic fillers, which list does include magnesium hydroxide,” the list “also includes a number of other organic and inorganic fillers including, preferably, inorganic color pigments, of which there are multiple examples.” Appeal Br. 3. Thus, Appellants argue that the Examiner has provided no rationale, other than hindsight based on Appellants’ Specification, for why a person of ordinary skill in the art would have selected MgOH from the lengthy list of possible fillers. See id. Appellants’ argument is not persuasive of reversible in the Examiner’s rejection of claim 8. Gross teaches that MgOH is a suitable filler material. See Gross 4:37–40. That Gross teaches many other components as suitable filler materials does not render the use of MgOH unobvious. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [reference] discloses a multitude of effective combinations does not render any particular formulation less obvious.”) The preponderance of the evidence shows that based on the teaching of Gross, a person of ordinary skill in the art would have had reason to use MgOH in an automotive primer Appeal 2017-000919 Application 13/156,740 5 coating, because MgOH was a known filler, and its use would not have involved more than ordinary skill in the art. The evidence on this record does not suggest that Gross teaches away from the use of MgOH as a filler. As the Examiner correctly points out, see Answer 3, Gross’s expression of a preference for “inorganic color pigments” is only a preference as to the type of pigment, but Gross lists both fillers and pigments as components of the disclosed primer. See Gross 4:33–36. Nor does the evidence suggest that the Examiner bases the rejection on impermissible hindsight reconstruction. Gross teaches a person of ordinary skill in the art that MgOH is a suitable filler, independent of any information gleaned from Appellants’ Specification. Appellants also argue that the Examiner has not explained why a skilled artisan would have specifically included a flame retardant in Gross’s primer “instead of, or in addition to, all of the other listed additives.” Appeal Br. 3. According to Appellants, “flame retardancy is not typically a property desired or needed in automotive coatings.” Id. at 4. In addition, Appellants point out that Gross teaches fillers and flame retardants as separate categories of additives, and that Gross describes MgOH as a filler, not a flame retardant. Id. These arguments are not persuasive of reversible error. The Examiner’s rejection relies on Benavides Pérez, not Gross, for the teaching that nanoparticle MgOH has flame retardant properties. See Final Action 3. Thus, although Gross does not itself make that connection, the flame retardant nature of nanoparticulate MgOH would have been obvious in view of Benavides Pérez. Moreover, the preponderance of the evidence does not support Appellants’ contention that flame retardancy was unknown as a Appeal 2017-000919 Application 13/156,740 6 desirable property for automotive coatings, because Gross teaches that the primer may contain “flame retardants . . . in customary and known, effective amounts.” Gross 5:23–30. Appellants further argue that Gross discloses MgOH only as a filler, and that a person of ordinary skill in the art “in all likelihood would have chosen an inexpensive, macro-sized magnesium hydroxide” rather than an expensive nanoparticulate MgOH filler. Appeal Br. 4. This argument is not persuasive because the Examiner’s rejection relies not just on the teachings of Gross, but on the combined teachings of the references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”) This includes Benavides Pérez, which provides a reason to use nanoparticulate MgOH, rather than microparticulate MgOH, for its flame-retardant properties. Moreover, as the Examiner correctly notes, Appellants have not pointed to any evidence in the record comparing the prices of nanoparticulate MgOH to the prices of microparticulate MgOH. See Answer 4. Appellants next argue that Appellants’ motivation in using nanoparticulate MgOH is to provide corrosion resistance, and “[o]ne skilled in the art, desiring corrosion resistance, would not have been motivated to look to a patent that teaches anti-stone chip resistance.” Appeal Br. 4. This argument is unpersuasive because, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Rather, the question is “whether the combination was obvious to a person with ordinary skill in the art.” Id. at 420. Appellants’ Appeal 2017-000919 Application 13/156,740 7 motivation to provide corrosion resistance, therefore, is not determinative as to the Examiner’s rejection, which articulates a different rationale for combining the references. Next, Appellants point to evidence presented in the Declaration of Michael A. Mayo9 showing that a composition with nanoparticulate MgOH had better corrosion resistance than a composition with microparticulate MgOH. Id. at 5–6. Appellants argue that “[t]he declaration is persuasive for showing why the invention as presently claimed gave unexpected results as compared to the art.” Id. at 6. Appellants have the burden to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). In doing so, Appellants must show that the closest prior art does not exhibit the alleged advantage. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Appellants’ data compares a composition within the scope of claim 8 with a composition comprising micro-sized MgOH. However, Benavides Pérez teaches the use of 1–100 nm particles, see Benavides Pérez 3:58–61, which are in the nanoparticle size range recited in claim 8. Thus, Appellants have not compared the invention as claimed with the closest prior art. Nor have Appellants pointed to evidence that the corrosion advantage would have been unexpected at the time of Appellants’ filing. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.”). Moreover, given the broad range of MgOH particle sizes encompassed by claim 8, more than a single 9 Declaration of Michael A. Mayo, submitted June 19, 2015. Appeal 2017-000919 Application 13/156,740 8 working example within the recited size range would be required in order to distinguish the full claim breadth over the closest prior art. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’”) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, in the Reply Brief, Appellants argue that Anderson teaches that “the primer layer is largely irrelevant to the functioning of the basecoat,” and “[t]here is no teaching of suggestion in Anderson to combine the basecoat with particularly desirable primer layers to improve performance.” Reply Br. 1. This argument is not persuasive of reversible error, because the Examiner’s rejection relies not just on Anderson, but on what the combined teachings of Anderson, Gross, and Benavides Pérez would have suggested to a person of ordinary skill in the art. See Keller, 642 F.2d at 425. For the above reasons, we affirm the Examiner’s rejection of 8, 10, 11, 15–17, 19, 21, and 23–26. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv) (2016). AFFIRMED