Ex Parte Liddell et al

Patent Trial and Appeal Board

Sep 25, 2017

12852632 (P.T.A.B. Sep. 25, 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.
12/852,632 08/09/2010 Kimm Liddell ITW-171US-23036 4308
68837 7590
Blue Filament Law PLLC
Avery Goldstein
700 E. Maple Road
Suite 450
Birmingham, MI 48009
09/27/2017 EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
09/27/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ag @bluefil amentlaw.com
patentdocketing@bluefilamentlaw.com
ap @bluefil amentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIMM LIDDELL, HELENA TWARDOWSKA, and
ROBERT MARK ADAMS1
Appeal 2016-004333
Application 12/852,632
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1—8.2 We have jurisdiction under 35 U.S.C. § 6(b). We
heard oral arguments from Appellants’ representative on September 18,
2017.
We REVERSE.
1 Appellants identify Illinois Tool Works Inc. as the real party in interest.
Appeal Brief filed August 31, 2015 (“App. Br.”), 2.
2 The Examiner allowed claims 21—29 and objected to claims 9—11 for
depending from a rejected base claim. Final Office entered March 23, 2015
(“Final Act.”), 10-11.
Appeal 2016-004333
Application 12/852,632
STATEMENT OF THE CASE
Appellants claim a method for finishing a repaired surface. App. Br.
6. Claim 1 illustrates the subject matter on appeal and is reproduced below
with contested limitations highlighted:
1. A method for finishing a repaired surface comprising:
repairing a damaged surface with a material selected from
unsaturated polyester resins, primers, fillers, adhesives, or
putties;
wiping a liquid sealer on the repaired surface to fill
pinholes and microporosity in the repaired surface without
depositing excess residue, the sealer consisting essentially of a
mixture of about 10 to about 30 wt% polymer, about 10 to about
55 wt% of at least one filler, about 5 to about 30 wt%
microspheres, and about 20 to about 45 wt% solvent, the polymer
being re-dissolvable in solvent', and
applying a top coat to the sealed surface without sanding
the sealed surface, the top coat being free of visible pinholes.
App. Br. A-l (Claims Appendix).
The Examiner sets forth the following rejections in the Final Office
Action, and maintains the rejections in the Answer entered January 15, 2016
(“Ans.”):
I. Claims 1 and 4—6 under 35 U.S.C. § 103(a) as unpatentable
over Tang (US 2006/0198951 Al, published September 7, 2006 ) in view of
Reynolds (US 2007/0010609 Al, published January 11, 2007) and Okada
(US 2003/0129300 Al, published July 10, 2003);
II. Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over
Tang in view of Reynolds, Okada, and Starka (US 4,752,532, issued June
21, 1988); and
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Appeal 2016-004333
Application 12/852,632
III. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Tang in view of Reynolds, Okada, and Girardot (US 6,315,482 Bl, issued
November 13, 2001).
DISCUSSION
Upon consideration of the evidence relied-upon in this appeal and the
respective positions of the Examiner and Appellants, we do not sustain the
Examiner’s rejections of claims 1—8 under 35 U.S.C. § 103(a) for the
reasons set forth in the Appeal Brief and below.
Rejection I
We decide the appeal as to Rejection I based on claim 1 because the
remaining claims subject to this ground of rejection (claims 2—4, 8, 11, 16—
18, and 21) depend from claim 1, and thus include all the limitations of
claim 1.
The Examiner finds that Tang discloses a method for refmishing a
damaged area on a substrate that comprises repairing the damaged area with
body filler or body putty and then applying a primer composition to the
repaired area. Final Act. 3; Tang || 2, 13, 14, 16. The Examiner finds that
Tang discloses that the primer composition comprises a film forming
polymer having at least one functional group, and a crosslinking agent
comprising at least one functional group reactive with the film forming
polymer’s functional group. Final Act. 3; Tang || 13, 25. The Examiner
finds that “the film forming polymer and crosslinker component of Tang can
be considered the polymer component” of the liquid sealer recited in claim
1, and further finds that “the polymer components of Tang form a cross-
linked thermosetting polymer.” Final Act. 3; Ans. 2; Tang 124.
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Application 12/852,632
As set forth above, claim 1 recites a sealer including a polymer that is
“re-dissolvable in solvent.” Appellants’ Specification explains that the
sealer is prepared in liquid form, and suitable polymers for use in the sealer
are those that can change to a solid state when the liquid sealer is dried.
Spec. 14, 15. Appellants’ Specification further explains that the polymer
in the dried sealer remains solid until the sealer is wetted with a solvent,
which causes the sealer to become soluble, and allows the polymer and other
components of the sealer to be applied to a surface. Spec. 116. Therefore,
according to Appellants’ Specification, a “re-dissolvable polymer” is a
polymer that can change from a liquid state to a solid state, and when in the
solid state, can be solubilized or “re-dissolved” with a solvent to return to a
liquid state.
As discussed above, the Examiner acknowledges that the film-
forming polymer and cross-linking agent disclosed in Tang form a cross-
linked thermosetting polymer. Ans. 2. Appellants assert that it is well-
known in the art that cross-linked thermoset polymers as disclosed in Tang
are not re-dissolvable in solvent, and Appellants rely on Hamilton (Methods
of Conserving Archaeological Material from Underwater Sites, Adhesives
and Consolidates - Conservative Manual - Conservation Research
Laboratory . . . , 1—5, (2014)) in support of this argument. App. Br. 10.
Hamilton states that thermosetting resins are characterized
by monomeric units liked together by chemical bonds to form three-
dimensional networks that are “insoluble in all solvents” and “remain
permanently insoluble.” Hamilton 1. Hamilton further states that when
crosslinking occurs in thermoplastic resins, insoluble three-dimensional
networks form that are characteristic of thermosetting resins. Id.
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Appeal 2016-004333
Application 12/852,632
In response to Appellants’ arguments and evidence, the Examiner
finds that Tang discloses mixing the film-forming polymer and cross-linking
agent, and applying the mixture to a substrate as quickly as possible. Ans. 2.
The Examiner finds that during the time when Tang’s film-forming polymer
is being applied to the substrate, the polymer would be “in an uncrosslinked
state and still re-dissolvable in solvent.” Ans. 2—3. However, although Tang
may disclose that the film-forming polymer is initially soluble during
application of the film-forming polymer/cross-linking agent mixture to a
substrate, the Examiner does not establish that the cross-linked
thermosetting polymer ultimately formed—asserted by the Examiner to
correspond to the “polymer component” recited in claim 1 as discussed
above—is re-dissolvable in solvent, in accordance with the description of
“re-dissolvable” polymers provided in Appellants’ Specification. Spec.
H 14—16. In other words, the Examiner does not show that Tang’s film-
forming polymer/cross-linking agent mixture that forms a thermosetting
resin changes from a liquid state to a solid state, and can then be solubilized
or “re-dissolved” with a solvent when in this solid state to return to a liquid
state.
Although the Examiner asserts that “even a cross-linked thermosetting
polymer as ultimately formed by Tang can be dissolved in a solvent such as
a strong acid” (Ans. 3—4), Hamilton explicitly states that thermosetting
resins are permanently insoluble in all solvents. Hamilton pg. 1. In
addition, all of the solvents disclosed in Appellants’ Specification as suitable
for use in Appellants’ method of refmishing a repaired surface are organic
solvents (Spec. 112), and we find no disclosure in Appellants’ Specification
indicating that strong acids would be suitable solvents for the method of
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Appeal 2016-004333
Application 12/852,632
claim 1. Therefore, the Examiner fails to provide evidence or persuasive
reasoning establishing that one of ordinary skill in the art would have
considered a strong acid to be a “solvent,” consistent with how this term is
used throughout Appellants’ Specification. Spec. H 12, 16, 17, 19,21. In
re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(During prosecution of patent applications, “the PTO must give claims their
broadest reasonable construction consistent with the specification.”).
Moreover, as Appellants point out, claim 1 recites that the sealer
consists essentially of the listed components, and, therefore, excludes
additional components that materially affect the basic and novel
characteristics of the sealer. App. Br. 15—16. Appellants argue that claim 1
therefore precludes inclusion of a cross-linking agent in the sealer because a
crosslinker would cause formation of a cross-linked thermosetting polymer
that would not be re-dissolvable in solvent as require by claim 1. Id.
Although the Examiner responds that “nowhere does the specification
clearly disclose that a basic and novel characteristic of the claimed process
was that the polymer was re-dissolvable in solvent” (Ans. 5—6), as discussed
above, Appellants’ Specification explains that suitable polymers for use in
the sealer of Appellants’ method are those that can change from a liquid
state to a solid state, and when in the solid state, can be solubilized or “re­
dissolved” with a solvent to return to a liquid state. Spec. Tflf 14—16.
Therefore, contrary to the Examiner’s assertion, Appellants’ Specification
indicates that a basic and novel characteristic of the method of claim 1 is
inclusion of a re-dissolvable polymer in the recited sealer.
Therefore, the Examiner fails to establish that Tang discloses a
polymer re-dissolvable in solvent as required by claim 1. We therefore do
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Application 12/852,632
not sustain the Examiner’s rejection of claims 1 and 4—6 under 35 U.S.C.
§ 103(a).
Rejections II and III
Because the additional references applied by the Examiner in
Rejections II and III do not cure the deficiencies of Tang discussed above,
we also do not sustain these rejections of claims of claims 2, 3, 7, and 8
under § 103(a). Final Act. 8—10.
DECISION
We reverse the Examiner’s rejections of claims 1—8 under 35 U.S.C.
§ 103(a).
REVERSED
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