Ex Parte Poole

Patent Trial and Appeal Board

Dec 19, 2016

12844854 (P.T.A.B. Dec. 19, 2016)

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.
12/844,854 07/28/2010 James E. Poole 08006241A1GC 8860
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
12/19/2016 EXAMINER
RIPA, BRYAN D
ART UNIT PAPER NUMBER
1754
MAIL DATE DELIVERY MODE
12/19/2016 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 JAMES E. POOLE
Appeal 2015-003961
Application 12/844,854
Technology Center 1700
Before BRADLEY R. GARRIS, JEFFREY T. SMITH,
and JULIA HEANEY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35U.S.C. § 134 from the Examiner’s
decision to finally reject claims 18 and 19. We have jurisdiction under 35
U.S.C. § 6(b).
1 Appellant identifies the real party in interest as PPG Industries Ohio, Inc.
Appeal Br. 2.
Appeal 2015-003961
Application 12/844,854
The claimed invention is directed to a process for preparing a curable,
electrodepositable coating composition. App. Br. 6. Claim 18 illustrates the
subject matter on appeal and is reproduced below:
18. A process for preparing a curable, electrodepositable coating
composition comprising:
(1) combining (i) a resin component containing an active hydrogen-
containing, cationic salt group-containing resin comprising an acrylic,
polyester, polyurethane and/or polyepoxide polymer, with (ii) an at
least partially capped polyisocyanate curing agent to form a reactive
mixture;
(2) adding to the reactive mixture an additive composition comprising
2-mercaptobenzothiazole dispersed in a polymeric component;
(3) adding a catalyst composition essentially of a tin compound to the
reactive mixture; and
(4) diluting the reactive mixture with water to a solids content of 10 to
30 percent by weight, based on the total weight of the reactive
mixture.
Appellant requests review of the following rejection from the
Examiner’s Final Office Action of March 25, 2014:
I. Claims 18 and 19 are rejected under 35 U.S.C. § 102(e) as
unpatentable over Kaylo et al., (U.S. Pub. No. 2011/0214992 A1 published
Sept. 8, 2011) (hereinafter referred to as Kaylo).
OPINION
The dispositive issue on appeal is: Has Appellant established that the
transitional language “consisting essentially of’ recited in independent claim
18 excludes the addition of bismuth in the process of the present invention?2
2 Appellant presents arguments for independent claim 18 only. See Appeal
Brief, generally. Accordingly, we limit our discussion to independent claim
18.
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Appeal 2015-003961
Application 12/844,854
After review of the respective positions provided by Appellant and the
Examiner, we answer in the negative and AFFIRM the Examiner’s prior art
rejections of claims 18 and 19 under 35 U.S.C. § 102(e) for the reasons
presented by the Examiner and add the following for emphasis.
We refer to the Examiner’s Final Action for a complete statement of
the rejection. Final Act. 2-4.
The phrase “consisting essentially of’ limits the scope of a claim to
the specifically recited ingredients plus others that do not materially affect
the basic and novel characteristic(s) of a composition. AK Steel Corp. v.
Sollac, 344 F.3d 1234, 1239 (Fed. Cir. 2003) (The phrase “consisting
essentially of’ in a patent claim “has long been understood to permit
inclusion of components not listed in the claim, provided that they do not
‘materially affect the basic and novel properties of the invention.’”); PPG
Indus, v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998) (The
claim term “consisting essentially of’ is used in claim construction to
indicate, for example, that “the invention necessarily includes the listed
ingredients and is open to unlisted ingredients that do not materially affect
the basic and novel properties of the invention.”)
To resolve Appellant’s argument, we need to assess whether
Appellant’s argument and cited portions of the Specification are sufficient to
show that the additional ingredients taught by the prior art materially affect
the basic and novel characteristics of the claimed invention. In other words,
we need to determine whether Appellant has carried the burden by showing
what the basic and novel characteristics of the claimed process are and how
they would be materially changed by the ingredient of the prior art reference
sought to be excluded by Appellant’s use of such transitional term. See In re
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Appeal 2015-003961
Application 12/844,854
De Lajarte, 337 F.2d 870, 873—74 (CCPA 1964); Ex parte Hoffman, 12
USPQ2d 1061, 1063-64 (BPAI 1989).
According to Appellant, independent claim 18 defines a process for
preparing a curable, electrodepositable coating composition comprising,
inter alia, “(3) adding a catalyst composition consisting essentially of a tin
compound to the reactive mixture.” App. Br. 10.
Appellant does not dispute that Kaylo discloses a process for
preparing an electrodepositable coating composition comprising in addition
to a bismuth salt, an organotin catalyst. App. Br. 8; Final Act. 3; Kaylo
17, 23. Instead, Appellant contends the transitional language “consisting
essentially of’ in claim 18 excludes Kaylo’s bismuth salt catalyst, because a
bismuth salt catalyst “would require additional, essential process steps to
ensure inhibition of the bismuth’s catalytic activity and stability of the final
coating composition” and thereby materially affect the basic and novel
characteristics of the claimed invention. Id. at 9.
We are unpersuaded by Appellant’s arguments. Appellant has not
pointed to any portion of the Specification that establishes a bismuth catalyst
would affect the basic and novel characteristics of the claimed invention.
Contrary to Appellant’s argument, the Specification allows the inclusion of
additional components including catalysts. Spec. 1 69.
Thus, Appellant has not adequately established that the transitional
language “consisting essentially of’ recited in independent claim 18
excludes the bismuth catalyst component of Kaylo.
Accordingly, we sustain the Examiner’s prior art rejection of claims
18 and 19 under 35 U.S.C. § 102(e) for the reasons presented by the
Examiner and given above.
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Appeal 2015-003961
Application 12/844,854
ORDER
The Examiner’s prior art rejection of claims 18 and 19 under 35
U.S.C. § 102(e) 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. § 1.136(a)(1).
AFFIRMED
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