Ex Parte Bartley et al

Patent Trial and Appeal BoardDec 6, 2012

11840467 (P.T.A.B. Dec. 6, 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. 11/840,467 08/17/2007 Michael Bartley 074788A1 1381 24959 7590 12/06/2012 PPG INDUSTRIES INC INTELLECTUAL PROPERTY DEPT ONE PPG PLACE PITTSBURGH, PA 15272 EXAMINER JACOBSON, MICHELE LYNN ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 12/06/2012 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 MICHAEL BARTLEY, MARK BOWMAN, JAMES A CLAAR and MARK MARTIN ____________________ Appeal 2011-011820 Application 11/840,467 Technology Center 1700 ____________________ Before FRED E. McKELVEY, RICHARD TORCZON and GEORGE C. BEST, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011820 Application 11/840,467 2 Statement of the case PPG Industries Ohio, Inc., (“applicant”), the real party in interest (Brief, 1 page 1), seeks review under 35 U.S.C. § 134(a) of a final rejection dated 2 23 November 2010. 3 The application has been published as U.S. Patent Application Publication 4 2009/0047531 A1. 5 In support of prior art rejections, the Examiner relies on the following 6 evidence. 7 Guthrie et al. (“Guthrie”) U.S. Patent 3,908,039 23 Sep. 1975 Li et al. (“Li”) U.S. Patent Application Publication 2003/0118744 A1 26 Jun. 2003 McGinnis Kirk-Othmer Encyclopedia of Chemical Technology, Radiation Curing, pages 1-26 Published on line 4 Dec 2000 pdf copy attached Applicant does not contest the prior art status of the evidence relied upon by 8 the Examiner. 9 Claims on appeal 10 Claims 1, 3, 5-10 and 12-27 are on appeal. Brief, page 1; Answer, page 2. 11 Claim 1, which we reproduce from page 6 of the Claim Appendix of the 12 Brief, reads [some indentation added; principal limitation in dispute in italics]: 13 Appeal 2011-011820 Application 11/840,467 3 A package coated at least in part with a composition 1 comprising: 2 (a) a polyene comprising (meth)acrylate and 3 (b) a polythiol, 4 wherein the composition does not comprise a Michael addition 5 catalyst and 6 wherein the composition is curable by radiation. 7 Suitable polyenes can be represented by the formula: 8 A─(X)m, 9 wherein 10 (1) A is an organic moiety, 11 (2) X is an olefinically unsaturated moiety and 12 (3) m is at least 2, such as 2 to 4. 13 Examples of X groups include: 14 15 R 16 │ 17 ─C─C═CH2 18 ║ 19 O 20 (meth)acryl 21 and 22 R 23 │ 24 ─CH2─C═CH2 25 (meth)allyl 26 Appeal 2011-011820 Application 11/840,467 4 where each R is H (hydrogen) or methyl (─CH3). 1 Mixtures of polyenes are said to be useful. Specification, ¶ 0010, page 4, 2 last line to page 5:1. According to applicant, “(Meth)acrylate and (meth)allyl can 3 also be used together.” Specification, page 5:2. “(Meth)acrylate” means 4 (1) methacrylate or (2) acrylate. Specification, ¶ 0010, page 5:2-4. 5 Rejections 6 Rejection 1: Claims 1, 3, 5-10, 12-19 and 23-27 stand rejected under § 103 7 as being unpatentable over Guthrie and McGinnis. Answer page 3. Claims 20-21 8 are not included in Rejection 1. 9 Rejection 2: Claims 1 and 20-22 stand rejected under § 103 as being 10 unpatentable over Li and Guthrie. Answer, page 9. 11 Analysis 12 Rejection 1 13 In presenting the appeal with respect to Rejection 1, applicant does not 14 separately address Claims 3, 5-10, 12-19 and 23-27. Those claims stand or fall 15 with the patentability of Claim 1. 37 CFR § 41.37(c)(1)(vii). 16 The Examiner found that Guthrie describes a photocurable coating 17 composition comprising a polyene component and a polythiol component. 18 Answer, page 4, ¶ 3; Guthrie, col. 1:7-11 and col. 1:57-60. 19 Guthrie describes the use of specific polyenes, characterizing those polyenes 20 as follows (col. 2:7-14): 21 a polyene component selected from particular polyenes . . . which 22 contain 2 or more terminally positioned unsaturated carbon-to-carbon 23 bonds per molecule, contain at least one of the following: N, O, and 24 Appeal 2011-011820 Application 11/840,467 5 six member carbon containing ring, and are characterized in that they 1 will react with [a] polythiol to form tough and durable coatings. 2 The Examiner found that Guthrie differs from the subject matter of Claim 1 3 in that it does not describe the use of a (meth)acrylate polyene. Answer, page 4, 4 ¶ 4. 5 To address the difference, the Examiner relies on McGinnis. Answer, ¶ 5. 6 The Examiner found that McGinnis describes organic polymeric coating 7 materials which can be cured by radiation. Id. Vinyl-group containing materials 8 known to have been cured via radiation include those having vinyl-unsaturation in 9 the form of allyl, acrylate, methacrylate groups. Id.; McGinnis, page 1, second full 10 paragraph, line 2. Included among the polymeric coating materials described by 11 McGinnis are polymers made from (meth)acrylate monomers (McGinnis 12 pages 10-11). 13 The Examiner’s rationale rejecting Claim 1 based on obviousness is 14 bottomed on In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Answer, page 5, 15 ¶ 6. Guthrie describes the use of allyl compounds cured by radiation to make 16 coatings. McGinnis describes the use of (meth)acrylate compounds cured by 17 radiation to make coatings. The Examiner reasoned that one skilled in the art 18 would have found it obvious to radiation cure a mixture of Guthrie allyl 19 compounds and the McGinnis (meth)acrylate compounds along with the Guthrie 20 thiol to make a suitable coating. Answer, page 5, ¶ 7. 21 Applicant maintains that the Examiner’s rationale ignores express teachings 22 of Guthrie and McGinnis. Brief, page 3. In particular, applicant points out that 23 Guthrie describes the use of specific allyl compounds. Id. Applicant further points 24 Appeal 2011-011820 Application 11/840,467 6 out that McGinnis does not describe radiation curing of a polyene in combination 1 with a polythiol compound. Id. 2 The general rule is that the use of two known materials for a particular 3 purpose generally can be said to render obvious the use of a mixture of the two 4 materials for the same purpose. Despite the general rule, there can be no per se 5 rule. Each obviousness case must be considered on the basis of the prior art relied 6 upon to support an obviousness rejection. 7 We believe both applicant and the Examiner may have overlooked that 8 portion of Guthrie which describes the use of a third component in the overall 9 Guthrie composition: “(c) a resin component.” Col. 2:14. The third component is 10 described as including a polyester-polyene. Col. 5:13. The polyester-polyene can 11 be a polyester capped with an acrylate. Col. 5, formula (a) where g = 0 and R = H 12 (hydrogen) and Table at the bottom of cols. 5-6 listing “acrylic acid”. Applicant 13 also describes the use of “polyester (meth)acrylate[]” [which by virtue of 14 applicant’s definition of (meth)acrylate would include polyester acrylate]. 15 Specification, ¶ 0008, line 5. Based on Guthrie’s description of the use of a 16 mixture of component (b) and component (c) in combination with polythiol 17 component (a), it would appear that Guthrie teaches the use of the mixture upon 18 which the Examiner’s obviousness rationale is based. 19 Applicant maintains that one skilled in the art would not have been 20 “motivated” to use a (meth)acrylate in combination with the allyl compounds 21 described by Guthrie. Brief, page 4. However, as noted above, express teachings 22 of Guthrie appear to provide a complete answer to applicant’s lack of “motivation” 23 argument. 24 Appeal 2011-011820 Application 11/840,467 7 Applicant further maintains that there would be no reasonable expectation of 1 success using a mixture. Guthrie suggests otherwise. Applicant’s argument 2 appears to be that allyl compounds are electron-rich whereas (meth)acrylates are 3 said to be electron-poor. Brief, page 4. No evidence is cited in support of the 4 argument. Moreover, we note that applicant suggests that a mixture can be used. 5 Specification, ¶ 0010, page 5, line 2. If applicant believes a mixture can be used, 6 then we find it curious that applicant now argues that one skilled in the art would 7 not expect success in the use of a similar combination of Guthrie component (b) in 8 combination with component (c). 9 Rejection 1 is affirmed, but, given the difference between our rationale and 10 that of the Examiner, our affirmance will be designated as a new rejection. 11 Rejection 2 12 In presenting the appeal, applicant does not separately address Claims 20-22, 13 apart from Claim 1. However, we have already determined that on this record 14 Claim 1 is not patentable under § 103 over Guthrie and McGinnis. 15 Claim 20 depends from Claim 1 and calls for “[t]he package of Claim 1, 16 wherein the package comprises a polymeric substrate.” Brief, page 7. 17 The need for a separate Rejection 2 appears to be the “polymeric substrate” 18 limitation of Claim 20. We elect to decide Rejection 2 on the basis of Claim 20. 19 Claims 1 and 21-22 stand or fall with Claim 20. 37 CFR § 41.37(c)(1)(vii). 20 Appeal 2011-011820 Application 11/840,467 8 Li Fig. 1 is reproduced below. 1 Li Fig. 1 depicts a cross-section of a plastic container With reference to Fig. 1, Li describes the use of a cured lubricant coating 2 18, 20, 22 on a typical plastic beverage container. Li, ¶ 0012. 3 The coating is formed from a coating composition comprising film formers 4 that can be radiation cured. ¶ 0015. The film formers include polymerizable 5 materials including polymerizable “butyl acrylate” [a (meth)acrylate within the 6 meaning of Claims 1 and 20] and polymerizable allyl acrylate [a compound within 7 the scope of component (b) of Guthrie]. Also described are polymers with vinyl or 8 (meth)acrylate functional units. Id. Initiators to effect cross-linking are described, 9 Appeal 2011-011820 Application 11/840,467 9 one being n-pentylmercaptan. ¶ 0018. N-pentylmercaptan is not a polythiol 1 because it has but one mercapto (─SH) group. 2 The Li disclosure of acrylate and allyl acrylates as being individually 3 suitable for Li’s purpose justifies application of In re Kerkhoven to conclude that it 4 would have been obvious to use a mixture of acrylate and allyl acrylate. The 5 mixture is similar to the coating composition mixture described by Guthrie. 6 The difference between Li and Claim 20 is that Li does not describe the use 7 of a polythiol along with the resins. However, Guthrie teaches that a combination 8 of (1) polythiol, (2) allyl component and (3) resin component is a useful coating. 9 No reason is apparent why one skilled in the art would not have found it obvious to 10 use the Guthrie coating on the Li plastic bottle. Applicant is using a known 11 combination on a known plastic bottle to obtain a predictable result. 12 Rejection 2 is affirmed, but will also be designated as a new rejection. 13 Decision 14 Upon consideration of the appeal, and for the reasons given herein, it is 15 ORDERED that the decision of the Examiner rejecting claims 1, 3, 16 5-10, 12-19, and 23-27 over Guthrie and McGinnis is affirmed. 17 ORDERED that the decision of the Examiner rejecting claims 1 and 18 20-22 over Li and Guthrie is affirmed. 19 FURTHER ORDERED that since our rationale differs from the 20 rationale of the Examiner, our affirmance is designated as a new rejection. 37 CFR 21 § 41.50(b). 22 FURTHER ORDERED that our decision is not a final agency action. 23 Appeal 2011-011820 Application 11/840,467 10 FURTHER ORDERED that within two (2) months from the date of 1 our decision, appellant may further prosecute the application on appeal by 2 exercising on of the two following options: 3 Option 1: Request that prosecution be reopened by submitting 4 an amendment or evidence or both. 37 CFR § 41.50(b)(1). 5 Option 2: Request rehearing on the record presently before the 6 Board. 37 CFR § 41.50(b)(2). 7 FURTHER ORDERED that no time period for taking any subsequent 8 action in connection with this appeal may be extended under 37 CFR 9 § 1.136(a)(1)(iv). 10 AFFIRMED 11 New rejection 37 CFR § 41.50(b) 12 13 bar 14