Ex Parte Anderson et al

Patent Trial and Appeal BoardNov 26, 2012

12028988 (P.T.A.B. Nov. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/028,988 02/11/2008 Lawrence G. Anderson 2202A1GC 7904 24959 7590 11/26/2012 PPG INDUSTRIES INC INTELLECTUAL PROPERTY DEPT ONE PPG PLACE PITTSBURGH, PA 15272 EXAMINER BUIE-HATCHER, NICOLE M ART UNIT PAPER NUMBER 1767 MAIL DATE DELIVERY MODE 11/26/2012 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 LAWRENCE G. ANDERSON, PAUL H. LAMERS, and STEPHEN G. MCQUOWN __________ Appeal 2011-011581 Application 12/028,988 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011581 Application 12/028,988 2 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1, 2, 4-12, and 14-24. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appellants’ invention is said to be directed to curable film-forming compositions that demonstrate burnish resistance and low gloss properties (Spec. para. [0003]). Claims 1 and 11 are illustrative: 1. A curable film-forming composition comprising: a) a curing agent; and b) a film-forming material comprising a fluoropolymer, a polymer having functional groups, and a plurality of particles comprising nanoscale particles having an average particle size ranging from 1 to 100 nanometers prior to incorporation into the composition; wherein 20 to 30 percent by weight of the film-forming material of b) comprises the fluoropolymer, the film-forming material of b) demonstrates an index of refraction of less than 1.52, and wherein after application to a substrate as a coating and after curing, the particles are concentrated at the coating-air interface and appear as a continuous sheet along the coating surface, and wherein the cured composition is transparent and demonstrates burnish resistance and an 85° gloss of less than 50. 11. A multi-component composite coating composition comprising a basecoat deposited from a pigmented film- forming composition which demonstrates an 85° gloss of less than 20, and a transparent topcoat applied over the basecoat in which the transparent topcoat is deposited from a topcoat film- forming composition, the topcoat film-forming composition comprising: Appeal 2011-011581 Application 12/028,988 3 a) a curing agent; and b) a film-forming material comprising a fluoropolymer, a polymer having functional groups, and a plurality of particles comprising nanoscale particles having an average particle size ranging from 1 to 100 nanometers prior to incorporation into the topcoat film-forming composition; wherein 20 to 30 percent by weight of the film-forming material of b) comprises the fluoropolymer, the film-forming material of b) demonstrates an index of refraction of less than 1.52, and wherein after application to a substrate as a coating and after curing, the particles are concentrated at the coating-air interface and appear as a continuous sheet along the coating surface, and wherein the cured composition is transparent and demonstrates burnish resistance and an 85° gloss of less than 50. Appellants appeal the following rejections: 1. Claims 1, 5-11, 15, 16, and 18-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Coca (US 2006/0074195 A1 published Apr. 6, 2006) in view of White (US 6,790,904 B2 issued Sept. 14, 2004). 2. Claims 2 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Coca in view of White and Mohri (US 5,216,081 issued June 1, 1993). 3. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Coca in view of White and Brown (US 6,495,624 B1 issued Dec. 17, 2002). 4. Claims 1, 2, 5, 6, 9, 10-12, and 15-21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ohmori (US 4,581,412 issued Apr. 8, 1986) in view of White. Appeal 2011-011581 Application 12/028,988 4 5. Claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ohmori in view of White and Mohri. REJECTIONS (1) AND (4) Appellants’ arguments focus on claims 1 and 11 (App. Br. 9-14, 20-23). ISSUES 1. Did the Examiner reversibly err in concluding that the combined teachings of Coca or Ohmori with White would have suggested the subject matter of claim 1? We decide this issue in the negative. 2. Did the Examiner reversibly err in concluding that the combined teachings of Coca or Ohmori with White would have suggested the subject matter of claim 11 that includes a multi-component composite having a base coat deposited from a pigmented film-forming composition which demonstrates an 85° gloss of less than 20”? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSES Issue (1):Claim 1 Appellants argue that if the teachings of Coca and White or Ohmori and White were combined the teachings would have resulted in a high gloss coating not a low gloss coating as claimed (App. Br. 10-13, 21-22). Appellants contend that Coca, Ohmori and White are directed to high gloss coating such that there would have been no suggestion in the art to form a low gloss coating as claimed (id. at 11-13). Appeal 2011-011581 Application 12/028,988 5 The Examiner finds that Coca and Ohmori teach all the composition ingredients recited in claim 1, except for the claimed nanoscale particles and the claimed properties of the composition (Ans. 4-5, 11-12). The Examiner finds that White teaches adding nanoscale particles to coating compositions to improve mar and scratch resistance (id. at 5, 11-12). The Examiner concludes that it would have been obvious to combine White’s particles with Coca’s or Ohmori’s coating to improve mar and scratch resistance of the coating (id. at 5, 12). The Examiner further finds that because the prior art compositions and processes of making the composition are the same as the claimed composition and disclosed process of making, the properties would have flowed naturally from the combination (id. at 5, 12). Regarding Appellants’ argument that the prior art is directed to high gloss coatings only, the Examiner finds that Coca discloses at paragraphs 2 and 6 making a durable coating and is not limited solely to high gloss coatings (id. at 17). The Examiner further finds that Ohmori is concerned with coatings having excellent transparency and gloss but does not limit the gloss to either high or low gloss (id. at 21). Appellants do not specifically respond to either of these findings of the Examiner (Reply Br. 4-5, 8-9). On this record, the preponderance of the evidence favors the Examiner’s obviousness conclusion. The Examiner has provided particular findings regarding Coca and Ohmori that are not refuted by Appellants. In addition to the Examiner’s finding that Coca and Ohmori are not limited high gloss coatings, we note that White teaches that the skilled artisan can optimize the amount and size of the particles to the desired appearance and the desired mar and scratch resistance of the coating (White Appeal 2011-011581 Application 12/028,988 6 col. 9, ll. 58-67; col. 10, ll. 1-11). This teaching underscores that it would have been within the skill of the ordinary artisan to optimize the amount of particles to affect the appearance (e.g., glossiness) and the mar and scratch resistance of the coating. Indeed, Appellants admit that particles made of filler are “widely used in the coatings industry to affect gloss and they are known to improve abrasion resistance in many cases” (Spec. para. 0062- 0063). Regarding dependent claims 2 and 4, Appellants rely on the same arguments made with regard to claim 1 (App. Br. 15-16, 23-24). These arguments are unpersuasive for the same reasons noted above. Regarding dependent claim 23, Appellants argue that the Examiner has not provided a reason for combining Brown’s teachings with Coca and White (id. at 17). Appellants contend that if the Examiner is using Brown as an evidentiary reference to show that Coca’s nanoparticles would roughen the surface of the coating, then Coca’s nanoparticles are too fine and are not fillers that roughen the surface of the coating and affect gloss (id. at 17-18). The Examiner responds that Brown is used as an evidentiary reference (Ans. 20). The Examiner finds that Brown teaches that microparticles can be used as surface roughening agents. Id. The preponderance of the evidence favors the Examiner’s conclusion of obviousness. As the Examiner is using Brown as an evidentiary reference to show a state of fact, there is no need to provide a reason for combining the teachings. Appellants’ argument regarding Coca’s nanoparticles being too small to affect gloss is without evidentiary support. Appellants have not provided Appeal 2011-011581 Application 12/028,988 7 any evidence to substantiate their argument. Moreover, we note that claim 1, from which claim 23 depends, requires nanoparticles which would be the same scale as those argued by Appellants as being too small in Coca. We further note that paragraph 0063 of the Specification describes that the fillers can be any organic or inorganic composition or particle size distribution. Appellants have not explained why Coca’s resin droplets cannot be reasonably considered filler as that term is described in the Specification. On this record and for the above reasons, we affirm the Examiner’s § 103 rejections of claims 1, 2, 4-10, and 23. Issue (2): Claim 11 Appellants argue that there is no teaching or suggestion in Coca or Ohmori in view of White to prepare a multi-component composite coating composition as recited in the claims comprising a basecoat deposited from a pigmented film-forming composition which demonstrates an 85° gloss of less than 20 (App. Br. 14 and 23). We agree. The Examiner fails to provide any finding or technical explanation of how Coca’s or Ohmori’s basecoat has the particular glossiness recited in claim 11 (Ans. 6-7, 13-15). While the Examiner reasons that the compositions and process of forming the composition of the applied prior art are the same as claimed and disclosed, the Examiner’s reasoning applies to the transparent topcoat composition of claim 11. The Examiner provides no findings or explanation regarding the basecoat of Coca’s or Ohmori’s multi- component composite. On this record, we are constrained to reverse the Examiner’s rejections of claim 11, 12, 14-22, and 24. Appeal 2011-011581 Application 12/028,988 8 DECISION The Examiner’s decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED-IN-PART bar