Ex Parte Nakatani et al

Patent Trial and Appeal BoardAug 11, 2017

13381516 (P.T.A.B. Aug. 11, 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. 13/381,516 12/29/2011 Yasukazu Nakatani Q128035 6143 23373 7590 08/15/2017 SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON, DC 20037 EXAMINER LOPEZ, RICARDO E. ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 08/15/2017 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YASUKAZU NAKATANI, TOSHIO MIYATANI, HIROSHI TORII, NATSUMI OKAMOTO, TAKAYUKI HIRAO, MANABU FUJISAWA, and SHIGEHITO SAGISAKA Appeal 2017-002706 Application 13/381,516 Technology Center 1700 Before JULIA HEANEY, JEFFREY R. SNAY, and SHELDON M. McGEE, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 3—6, 8, and 10-17. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify Daikin Industries, Ltd. as the real party in interest. App. Br. 2. Appeal 2017-002706 Application 13/381,516 BACKGROUND The subject matter on appeal relates to polymer coating compositions. Spec. 12. Appellants describe adding certain cobalt compounds to a fluorine containing polymer to impart heat resistance to the resulting composition. Id. 130. Claim 1—the sole independent claim on appeal—is reproduced below from the Claims Appendix of the Appeal Brief, with italics added to highlight the key recitation in dispute: 1. A composition, comprising: a fluorine-containing polymer (a) and a cobalt compound (b), wherein the fluorine-containing polymer (a) includes a polymerization unit based on at least one monomer selected from the group consisting of tetrafluoroethylene, hexafluoropropylene, perfluoro(alkyl vinyl ether), chlorotrifluoroethylene, vinylidene fluoride, and vinyl fluoride, wherein the cobalt compound (b) is at least one selected from the group consisting of cobalt acetate, cobalt benzoate, and organometallic complexes of cobalt, and wherein an amount of the cobalt compound (b) is 1 to 100 ppm of the fluorine-containing polymer (a). REJECTIONS I. Claims 1, 3—6, 8, 10-15, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshimura2 and Sturgill.3 II. Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Yoshimura, Sturgill, and Maeda.4 2 US 4,276,214, issued June 30, 1981 (“Yoshimura”). 3 US 2009/0163628 Al, published June 25, 2009 (“Sturgill”). 4 US 2005/0109530 Al, published May 26, 2005 (“Maeda”). 2 Appeal 2017-002706 Application 13/381,516 DISCUSSION With regard to Rejection I, the Examiner finds that Sturgill teaches use of cobalt phthalocyanine, cobalt acetylacetonate, and cobalt tetrapyrrole complexes as corrosion inhibiting pigments. Final Act. 3 (citing Sturgill 15, 44, and 87, respectively). Based on that finding, the Examiner determines that it would have been obvious to one skilled in the art to include any of the above-mentioned cobalt complexes in Yoshimura’s fluorine-containing resin to produce a corrosion inhibiting coating. Id. at 3— 4. Appellants argue that Sturgill fails to identify cobalt phthalocyanine, cobalt acetylacetonate, or cobalt tetrapyrrole as corrosion inhibiting pigments. App. Br. 9-10. We agree. As Appellants correctly point out, id., Sturgill identifies cobalt phthalocyanine complexes as compounds that are not used for anticorrosive applications. Sturgill 115 (including cobalt phthalocyanine among a list of compounds that “do not use trivalent cobalt and are not used for anticorrosive applications.”). Sturgill identifies cobalt acetylacetonate solely as a divalent precursor compound, which may be used as a starting material along with an oxidation source and a valence stabilizer to prepare other trivalent or tetravalent cobalt corrosion-inhibiting pigments. Id. H 41, 44. Sturgill’s paragraph 87, which the Examiner relies upon as teaching cobalt tetrapyrrole5 as a corrosion-inhibiting pigment, fails to mention cobalt tetrapyrrole at all. 5 Appellants disclose cobalt tetrapyrrole as an example of the organometallic complexes of cobalt recited in claim 1. Spec. 133. 3 Appeal 2017-002706 Application 13/381,516 Because the Examiner’s obviousness determination is premised on an erroneous finding as to the teaching of Sturgill, we do not sustain Rejection I. The Examiner’s additional reliance on Maeda does not cure that deficiency. Accordingly, Rejection II is not sustained for the same reason. DECISION The Examiner’s decision rejecting claims 1, 3—6, 8, and 10-17 is reversed. REVERSED 4