Ex Parte Slawikowski et al

Patent Trial and Appeal BoardApr 27, 2016

12210667 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/210,667 24959 7590 PPG Industries, Inc, IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 09/15/2008 04/27/2016 FIRST NAMED INVENTOR Mark Slawikowski 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. OC-6401Al 7036 EXAMINER STACHEL, KENNETH J ART UNIT PAPER NUMBER 1787 MAILDATE DELIVERY MODE 04/27/2016 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 MARK SLAWIKOWSKI and DONALD J. ALGRIM 1 Appeal2014-008050 Application 12/210,667 Technology Center 1700 Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL 2 1 According to Appellants, the real party in interest is PPG Industries Ohio, Inc. (App. Br. 1 ). 2 In our opinion below, we refer the Final Office Action mailed April 30, 2013 (Final Act.), the Amendment/Response to Office Action filed August 30, 2013 (Amendment), the Examiner entering the Amendment After Final mailed September 16, 2013 (Amendment Entered), the Advisory Action mailed September 16, 2013 (Advisory Act.), the Appeal Brief filed December 30, 2013 (App. Br.), and the Examiner's Answer mailed May 20, 2014 (Ans.). Appeal2014-008050 Application 12/210,667 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 5, 7-12, 14--15, 17-21, and 23-31. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. The Invention The claims are directed to coating composition and a reflective coating system. Claim 1, reproduced below, is exemplary of the claimed subject matter: 1. A coating composition which forms a cured film having a transparency of at least 75% as measured according to ASTM 1746, and a solar reflectivity of at least 55% as measured according to ASTM E 1918 and ASTM E903, wherein said coating composition is substantially free from chromate and comprises: a self-crosslinking resin; zinc phosphate; and an interference pigment which comprises mica having a solar reflective coating disposed thereon. Appeal Brief 28 (Claims App'x). The claims as provided m Appellants' Claims Appendix accurately state the pending claims. 3 3 On August 30, 2013, Appellants sought to amend the claims after the Final Office Action mailed April 30, 2013. (Amendment 2---6). The claims were entered on September 16, 2013. (Amendment Entered). Although the Examiner appears to believe that independent claims 1 and 14 include a limitation that the zinc phosphate is from "0.01 to 5% of the total weight of the composition," (see Ans. 4) this limitation was removed by Appellants in the amendment that was entered on September 16, 2013. For reasons apparent, the limitation on the percentage of zinc phosphate in the claims is irrelevant to our Opinion. 2 Appeal2014-008050 Application 12/210,667 Lee Caldwell et al., hereinafter "Caldwell" Hegedus et al., hereinafter "Hegedus" Guo Glausch et al., The References us 4,029,478 us 4,532,159 us 5,202,367 us 5,534,598 us 5,749,946 hereinafter "Glausch" Schuhmacher et al., hereinafter "Schuhmacher" US 6,582,781 Bl The Rejections4 June 14, 1977 July 30, 1985 Apr. 13, 1993 July 9, 1996 May 12, 1998 June 24, 2003 The Examiner withdrew the rejection of claims 1-5, 7-12, 14--15, 17- 21, and 23-30 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. (Ans. 2). The claims stand rejected under 35 U.S.C. Â§ 103(a) as follows: claims 1--4, 7-12, 14--15, 17-21, 23-26 and 29-30 are rejected as being unpatentable over Glausch in view of Schuhmacher; claim 5 is rejected as being unpatentable over Glausch in view of Schuhmacher and further in view of Guo; claim 20 is rejected as being unpatentable over Glausch in view of Schuhmacher and further in view of Lee; and claims 27-28 and 31 are rejected as being unpatentable over Glausch in view of Schuhmacher and further in view of either Caldwell or Hegedus. (Ans. 3-15). 4 Appellants cancelled claims 13 and 16 in the Amendment of April 30, 2013. The Examiner's acknowledgement that these claims were cancelled is shown in the Advisory Action dated September 16, 2013. 3 Appeal2014-008050 Application 12/210,667 OPfNION We reverse the rejections under 35 U.S.C. Â§103(a). We need address only the independent claims 1, 14, and 27, which are rejected as obvious over Glausch in view of Schuhmacher. (Claim 27 is rejected further in view of Caldwell or Hegedus, but we need not reach those references.) All of the pending claims require a coating composition or reflective coating composition which forms a cured film having a transparency of at least 75% as measured according to ASTM 1746. App. Br. 28-33 (Claims App'x). The coating is comprised of a self-crosslinking resin, zinc phosphate, and an interference pigment which comprises mica having a solar reflective coating disposed thereon. The Examiner finds that Glausch discloses a pigment preparation comprising (i) a plateletlike support material which is coated with a metal oxide, and (ii) an active pigment. Ans. 3 (citing Glausch 4:64--5:4). The active pigment in Glausch may be zinc phosphate, which is an element of claim 1. Id. (citing Glausch 6:6-15); see also App. Br. 28 (Claims App'x). The Examiner finds the "plateletlike support material coated with a metal oxide" in Glausch corresponds to claim l's "interference pigment which comprises mica having a solar reflective coating disposed thereon." Id. 5. Appellants identify Si02 as a solar reflective coating (id. (citing Spec. i-f 24)), and Glausch identifies Si02 as one of the metal oxide coatings for the plateletlike support material (id. (citing Glausch 5:23-36)). Thus, the Examiner views Glausch's "plateletlike support material coated with a metal oxide" such as Si02 to be the same as claim l's interference pigment comprising mica and a solar reflective coating, wherein the solar reflective coating is Si02. 4 Appeal2014-008050 Application 12/210,667 The Examiner then addresses the claims' requirements for ( 1) transparency of at least 75% as measured according to ASTM 1746, and (2) an interference pigment which comprises mica having a solar reflective coating disposed thereon, by stating that "Glausch as modified discloses that the plateletlike pigments are transparent at Col. 5, lines 13-15." (Final Act. 7; Ans. 6). The cited part of Glausch (bolded) and preceding text states: Preferred plateletlike support materials are mica and plateletlike pigments prepared in accordance with the international application PCT /EP92/02 3 51. They consist of a transparent, inorganic plateletlike matrix, preferably silicon dioxide. The above text is the only instance of the word "transparent" in Glausch. The Examiner also draws attention to Glausch at column 5, lines 23-24: The plateletlike support materials can be coated with, e.g., Ti02, Fe203, Cr203, Zr02, Si02, Ab03 and ZnO. Based on these two sections of Glausch, the Examiner finds that the reference discloses: preferred plateletlike support materials are mica and the plateletlike pigments are prepared by a process and they consist of a transparent, inorganic plateletlike matrix preferably silicon dioxide. The 'they' must refer to a plurality such as support materials and plateletlike pigments. In addition, if the transparent matrix is silicon dioxide, then the coating which is also Si02 or silicon dioxide would also be transparent to provide a transparent pigment. Final Act. 21 (emphasis added). Thus, the Examiner interprets the "they" in Glausch to mean a combination of plateletlike support materials (such as mica) and plateletlike pigments (such as silicon dioxide) must be transparent. Id.; see also Glausch 5: 13-15. 5 Appeal2014-008050 Application 12/210,667 The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254--55 (CCPA 1977); see also Crown Operations Int 'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. Â§ 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, (Fed. Cir. 1995) (affirmed a 35 U.S.C. Â§ 103 rejection based in part on inherent disclosure in one of the references). "In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original). Based on the record, we agree with the Appellants that the Examiner has not adequately established that the composition of Glausch as modified by Schuhmacher is necessarily transparent, as required to find the reference inherently discloses the claimed transparency requirement. For example, it is not clear from the plain teachings of Glausch if the plateletlike pigment necessarily is transparent or if the combination of plateletlike support material and plateletlike pigment necessarily is transparent, to what degree one or the other are transparent, if one or the other maintains its transparency after being coated, or if one or the other maintains its transparency after combination with a resin and a zinc phosphate, as recited by claim 1. The Appellants have cited a number of references in support of their position that 6 Appeal2014-008050 Application 12/210,667 the composition of Glausch as modified by Schuhmacher would not necessarily meet the limitations of claim 1. App. Br. 10-11. On this record, we are not persuaded that a preponderance of the evidence supports the Examiner's rejections. The Examiner does not rely upon the other cited references for any disclosure that remedies the deficiency in Glausch, which applies to all of the Examiner's stated grounds of rejection. Accordingly, we reverse the rejections. DECISION/ORDER For the above reasons, the Examiner's rejection of claims 1-5, 7-12, 14--15, 17-21, and 23-31 is reversed. REVERSED 7