Ex Parte Chasser et al

Patent Trial and Appeal BoardMay 22, 2018

14158882 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/158,882 24959 7590 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 01/20/2014 05/22/2018 FIRST NAMED INVENTOR Anthony M. Chasser 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 12008746Al 8458 EXAMINER AHMED, SHEEBA ART UNIT PAPER NUMBER 1787 MAILDATE DELIVERY MODE 05/22/2018 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 ANTHONY M. CHASSER, SHANTI SWARUP, JOHN E. SCHWENDEMAN, and JOHN FURAR Appeal2017-008232 Application 14/158,882 Technology Center 1700 Before CATHERINE Q. TIMM, MONTE T. SQUIRE, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a Final Action, dated August 9, 2016, of claims 1-18. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. Appeal2017-008232 Application 14/158,882 Claims 1 and 10 illustrate the subject matter on appeal and are reproduced below: 1. A curable film-forming composition comprising: (a) a polymeric acrylic binder having reactive functional groups, wherein the polymeric acrylic binder is prepared from an ethylenically unsaturated, epoxy functional monomer that is reacted with benzoic acid; and (b) a curing agent containing functional groups that are reactive with reactive functional groups on the polymeric acrylic binder. 10. A multilayer coated substrate comprising: a substrate; a colored basecoat applied to at least a portion of a surface of the substrate; and a clearcoat applied to at least a portion of the basecoat, said clearcoat deposited from a curable film-forming composition comprising: (a) a polymeric acrylic binder having reactive functional groups, wherein the polymeric acrylic binder is prepared from an ethylenically unsaturated, epoxy functional monomer that is reacted with benzoic acid; and (b) a curing agent containing functional groups that are reactive with reactive functional groups on the polymeric acrylic binder. 2 Appeal2017-008232 Application 14/158,882 Appellant 1 requests review of the Examiner's rejection of claims 1-18 under 35 U.S.C. Â§ 102(a)(2) as anticipated by Vijverberg (US 2008/0124474 Al, published May 29, 2008). Final Act. 2; App. Br. 5. OPINION After review of the respective positions provided by Appellant and the Examiner, we REVERSE the Examiner's rejection of claims 1-9 under 35 U.S.C. Â§ 102(a)(2) for the reasons presented by Appellant. However, we AFFIRM the Examiner's prior art rejection of claims 10-18 under 35 U.S.C. Â§ 102(a)(2) for the reasons presented by the Examiner. We add the following for emphasis. Claim 1 Independent claim 1 is directed to a curable film-forming composition comprising a binder component and a curing agent component, where the binder component is a polymeric acrylic binder having reactive functional groups prepared from an ethylenically unsaturated, epoxy functional monomer that is reacted with benzoic acid. The Examiner finds Vijverberg discloses a curable film composition comprising an epoxy functional acrylic binder and a crosslinker reactive with the epoxy groups of the binder, where the crosslinker includes acid functional polyester crosslinkers comprising co-condensed mono-functional carboxylic acids such as benzoic acid. Ans. 3; Vijverberg, Abstract, i-fi-150, 71, 7 6, 79. The Examiner also finds Vijverberg discloses reacting the 1 PPG Industries Ohio, Inc. is the Applicant/ Appellant and is also identified as the real party in interest. App. Br. 2. 3 Appeal2017-008232 Application 14/158,882 acrylic binder having reactive epoxy functional groups with a crosslinker or curing agent containing acid functional groups that are reactive with the binder. Ans. 3; Vijverberg i-f 70. From this disclosure, the Examiner determines that the benzoic acid of the crosslinker will react with the epoxy groups of the binder, leading to a composition that anticipates the subject matter of independent claim 1. Ans. 3. Appellant argues that there is no teaching or suggestion in the reference to use a polymeric acrylic binder prepared from an ethylenically unsaturated, epoxy functional monomer that is reacted with benzoic acid as claimed. App. Br. 7. According to Appellant, Vijverberg only discloses benzoic acid where mono-functional carboxylic acids are explicitly listed for the purposes of co-condensation with hydroxyl functional groups on acid- functional polyester crosslinking agents. App. Br. 7; Vijverberg i-f 79. We agree with Appellant. In order for the Examiner to carry the burden of establishing a prima facie case of anticipation, the Examiner must establish where each and every element of the claimed invention, arranged as required by the claim, is found in a single prior art reference, either expressly or under the principles of inherency. See generally In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Here, as noted by Appellant, the subject matter of claim 1 is directed to a curable composition comprising a polymeric acrylic binder prepared from an ethylenically unsaturated, epoxy functional monomer that is reacted with benzoic acid as claimed. App. Br. 7. The Examiner direct us to no portion of Vijverberg that describes the claimed polymeric acrylic binder in a curable composition. Instead, the Examiner asserts that, once the composition is cured, the benzoic acid allegedly present in Vijverberg' s 4 Appeal2017-008232 Application 14/158,882 crosslinker (curing agent) will react with the epoxy groups in Vijverberg's binder to yield the claimed polymeric acrylic binder. Ans. 3. However, this assertion does not explain how Vijverberg describes a curable composition comprising a polymeric acrylic binder prepared from an ethylenically unsaturated, epoxy functional monomer that is reacted with benzoic acid before any reaction with a curing agent. Accordingly, we reverse the Examiner's prior art rejection of claims 1-9 under 35 U.S.C. Â§ 102(a)(2) for the reasons presented by Appellant and given above. Claim 102 Independent claim 10 is directed to a multilayer coated substrate having a clearcoat applied to at least a portion of the basecoat, where said clearcoat is made from the curable composition described in claim 1. In the Specification, Appellant describes coated substrates that include a cured clearcoat. Spec. i-f 61. Therefore, we interpret the language of claim 10 as including embodiments of the multilayer coated substrate where the composition of claim 1 applied to the substrate has been cured. The Examiner determines that when the benzoic acid of the crosslinker reacts with the epoxy groups of the binder in Vijverberg, the result is a cured composition that anticipates the claimed cured composition. Ans. 3. 2 Although Appellant argues claims 11, 12, and 15-16 under separate headings, the issue is the same for all the claims depending from claim 10. App. Br. 10-11. Accordingly, we limit our discussion to independent claim 10. 5 Appeal2017-008232 Application 14/158,882 We are unpersuaded by Appellant's arguments of Examiner error with respect to the anticipatory rejection of claim 10 for the reasons given by the Examiner. Final Act. 2--4; App. Br. 7-8; Ans. 3. While Appellant contends that Vijverberg's benzoic acid is consumed in making Vijverberg's crosslinker, Appellant has not directed us to any objective evidence showing that Vijverberg's cured coating resulting from a reaction of a binder having functional groups and a crosslinker comprising co-condensed benzoic acid is chemically different from the cured clearcoat of the coated substrate of claim 10. Accordingly, we affirm the Examiner's prior art rejection of claims 10-18 under 35 U.S.C. Â§ 102(a)(2) for the reasons presented by the Examiner and given above. DECISION The Examiner's prior art rejection of claims 1-9 under 35 U.S.C. Â§ 102(a)(2) is reversed. The Examiner's prior art rejection of claims 10-18 under 35 U.S.C. Â§ 102(a)(2) is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED-IN-PART 6