Ex Parte Chang et al

Patent Trial and Appeal BoardMar 25, 2015

11321680 (P.T.A.B. Mar. 25, 2015)

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. 11/321,680 12/29/2005 Cheng-Chung Chang 60089US003 2194 7590 03/25/2015 SEAN EDMAN 3M Innovative Properties Company Office of Intellectual Property Consel 3M Center, P O Box 33427 St. Paul, MN 55133 EXAMINER KRUER, KEVIN R ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 03/25/2015 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 CHENG-CHUNG CHANG, ZAI-MING QIU, NAIYONG JING, and CHERYL L. ELSBERND ____________ Appeal 2013-004472 Application 11/321,680 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and GEORGE C. BEST, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1–3, 5–12, 27, and 28–30. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: 1. A coating composition comprising at least one non- perfluorinated non-urethane aliphatic (meth)acryl compound that is a monomer or oligomer having at least two acryl or methacryl groups, and at least one polymerizable fluorochemical comprising a (per)fluoropolyether (meth)acryl Appeal 2013-004472 Application 11/321,680 2 compound, wherein the (per)fluoropolyether (meth)acryl compound comprises at least two catenated oxygen heteroatoms. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Liu US 6,660,388 B2 Dec. 9, 2003 Wu US 2004/0048053 A1 Mar. 11, 2004 We note that in the Examiner’s Answer, the Examiner discusses certain references that are disclosed in the Liu reference. These references are: Larson US 4,567,073 Jan. 28, 1986 Kang ’798 US 6,238,798 B1 May 29, 2001 THE REJECTION Claims 1–3, 5–12, and 27–30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wu in view of Liu. ANALYSIS We reverse the above § 103 rejection for the reasons expressed by Appellants in the Appeal Brief, and for the reasons below. The Examiner has failed to establish that the teaching at column 2, lines 2–10 of Liu (the blending of an antisoiling layer composition with a hardcoat layer composition to form a single layer coating) suggests employing the crosslinking compound used in Liu for making the hardcoat layer composition as a crosslinking agent for making Wu’s antisoiling layer composition to arrive at Appellants’ claimed coating composition. Appeal 2013-004472 Application 11/321,680 3 Furthermore, Liu (as Appellants point out on pages 10–11 of the Appeal Brief) purposefully employs a separate antisoiling layer “atop” a hardcoat layer (Appeal Brief 10), rather than a single layer coating, for the reasons stated by Appellants. As such, we agree with Appellants’ position that Liu does not suggest that the disclosed crosslinking agent (used in making the hardcoat layer of Liu) would have been an obvious choice as a crosslinking agent in making Wu’s antisoiling layer to arrive at Appellants’ claimed coating composition. In view of the above, we reverse the rejection. CONCLUSIONS OF LAW AND DECISION The rejection is reversed. REVERSED kmm