Ex Parte Solomon et al

Patent Trial and Appeal Board

Aug 16, 2017

10585917 (P.T.A.B. Aug. 16, 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.
10/585,917 09/21/2007 Trevor Solomon 16-857-WO-US 1650
141081 7590 08/16/2017
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP/AkzoNobel
300 S. WACKER DRIVE
3 2ND FLOOR
CHICAGO, IL 60606
EXAMINER
WESTERBERG, NISSA M
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
08/16/2017 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 TREVOR SOLOMON,
JOHN DAVID SINCLAIR-DAY, and
ALISTAIR ANDREW FINNIE1
Appeal 2015-006305
Application 10/585,917
Technology Center 1600
Before TAWEN CHANG, RYAN H. FLAX, and TIMOTHY G. MAJORS,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
antifouling coating composition, which have been rejected as obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The Specification states that “[m]an-made structures such as boat
hulls, buoys, drilling platforms, oil production rigs, and pipes which are
1 Appellants identify the real party in interest as AKZO NOVEL
COATINGS INTERNATIONAL B.V. (Appeal Br. 1.)
Appeal 2015-006305
Application 10/585,917
immersed in water are prone to fouling by aquatic organisms such as green
and brown algae, barnacles, mussels, and the like.” (Spec. 1:8—10.) The
Specification further explains that “[a]n antifouling coating composition will
generally be applied as a top-coat on immersed areas of the structure to
inhibit the settlement and growth of aquatic organisms such as barnacles and
algae, generally by the release of a biocide for the aquatic organisms.” {Id.
at 1:22—25.) According to the Specification, “even though antifouling
coating compositions with acceptable properties are known in the art, there
is still need for coating composition with an increased . . . shelf life” and that
“can perform well in all aqueous environments, irrespective of salinity.” {Id.
at 3:22-4:3.) Further according to the Specification, these properties “can be
achieved by selecting a specific biocide with a specific metallic metal
content, wherein the composition should be substantially free of biocidal
zinc compounds and rosin.” {Id. at 5:6—11.)
Claims 1, 3—9, and 11—19 are on appeal. Claim 1 is illustrative and
reproduced below:
1. An antifouling coating composition comprising
20-100% by weight, calculated on the total amount of film-
forming components, of a film-forming polymer (A) having an acid
number of from 25 to 350mg KOH/g and having an acrylic backbone
bearing at least one terminal group of the formula:
n
wherein X represents
M is Cu, Zn or Te;
2
Appeal 2015-006305
Application 10/585,917
o
_J[
n is an integer of 1 when X is c'
o
0
, or 1 to 2 when
il/
X is ~1V
R represents an organic residue selected from
o
Q—C—R1 — O—C—R1
O s
O— R1 S—R1
and R1 is a monovalent organic residue, and
a copper-based biocide for aquatic organisms, said biocide
comprising one or more of cuprous oxide, cuprous thiocyanate,
cuprous sulphate and copper pyrithione; wherein the antifouling
coating composition comprises less than 1 wt.% of biocidal zinc
compounds and less than 1 wt.% of rosin, and the copper-based
biocide has a metallic copper content below 2% by weight, based on
the total weight of the copper-based biocide.
(Appeal Br. Claims App. 1.)
The Examiner rejects claims 1, 3—5, 8, 9, and 11—19 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Matsuda,2 Baker,3 and Hubbell.4
(Ans. 2.)
The Examiner rejects claims 1, 3—9, and 11—18 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Matsuda, Baker, Hubbell, and
Hani.5 (Ans. 6.)
2 Matsuda et al., U.S. Patent No. 5,880,173, issued Mar. 9, 1999.
3 Hubbell, U.S. Patent No. 2,420540, issued May 13, 1947.
4 Hani et al., U.S. Patent No. 5,185,033, issued Feb. 9, 1993.
5 Irvin Baker et al., Determination of Metallic Copper in Cuprous Oxide-
Cupric Oxide Mixtures, 18 Indus. &Eng’g Chemistry 124 (1946).
3
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Application 10/585,917
DISCUSSION
Issue
The Examiner rejects claims 1, 3—5, 8, 9, and 11—19 under pre-AIA 35
U.S.C. § 103(a) as obvious over Matsuda, Baker, and Hubbell and further
rejects claims 1, 3—9, and 11—18 under pre-AIA 35 U.S.C. § 103(a) as
obvious over Matsuda, Baker, Hubbell, and Hani. The same issues are
dispositive for these rejections, and we discuss them together.
The Examiner finds that Matsuda teaches an antifouling paint
composition comprising (1) an antifouling agent and (2) a “substrate resin
metalized with an organic monobasic acid” that reads on the film-forming
polymer (A) recited in claim 1. (Ans. 2—3.) The Examiner finds that
Matsuda discloses “[a] list of antifouling agents includ[ing] a number of
copper containing biocides such as copper oxides and copper dialkyl
dithiocarbamates.” (Id. at 3.) The Examiner finds that Matsuda further
teaches that, “[particularly when combined with copper-based antifouling
pigments such as cuprous oxide or copper rhodanide, the interaction between
[Matsuda’s] vehicle resin and the antifouling pigment is remarkably
retarded,” leading to improved film performance. (Id.) The Examiner finds
that Matsuda suggests antifouling compositions without biocidal zinc
compounds or rosin. (Id. at 4.)
The Examiner finds that Matsuda “does not disclose the amount of
metallic copper present” in the copper-based biocide described in Matsuda.
(Id. at 4.) However, the Examiner finds that Hubbell teaches that “metallic
copper tends to hasten the corrosion of steel plates when [antifouling] paint
is applied over steel due to a galvanic corrosive effect upon exposure to sea
water,” and Baker describes commercial cuprous oxide products having less
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Appeal 2015-006305
Application 10/585,917
than 2% metallic copper. (Id. at 4—5.) The Examiner finds that a skilled
artisan would have reason to use a cuprous oxide containing “as little
metallic copper as possible, such as less than 2%,” in Matsuda’s antifouling
paint composition with a reasonable expectation of success, because Hubbell
teaches that metallic copper can hasten erosion on contact with sea water
and Baker teaches cuprous oxide pigments having varying levels of metallic
copper. (Id. at 5.)
Appellants contend that the prior art does not suggest using copper-
based biocide having metallic copper content below 2% by weight. (Appeal
Br. 4.) Appellants further contend that the prior art does not suggest an
antifouling composition having the recited combination of polymer A, less
than 1 wt.% of biocidal zinc compounds and less than 1 wt.% of rosin. (Id. )
Appellants further contend that the claimed subject matter exhibits
unexpected results. (Id. at 13—14.)
Appellants do not separately argue the claims, and we limit our
analysis to claim 1 as representative. The issues with respect to this
rejection are (1) whether the evidence of record supports the Examiner’s
finding that the cited prior art suggests an antifouling coating composition
comprising less than 1 wt.% of biocidal zinc compounds, less than 1 wt.% of
rosin, and a copper-based biocide having a metallic copper content below
2% by weight, and (2) if so, whether Appellants have provided evidence of
unexpected results that, when considered together with evidence of
obviousness, shows claim 1 to be non-obvious.
Findings of Fact
1. Matsuda teaches a hydrolysable metal-containing resin formed
by (1) producing a substrate resin having pendant acid groups by
5
Appeal 2015-006305
Application 10/585,917
“copolymerizing an acrylic or methacrylic ester of which alcoholic residue
includes a bulky hydrocarbon radical or a soft segment” and (2) metallizing
the substrate resin together with an organic monobasic acid such that the
pendant acid group and the organic monobasic acid group are bound to the
same metal ion. (Matsuda Abstract.) Matsuda also teaches incorporating its
resin into “self-polishing antifouling paint formulations together with an
antifouling pigment such as cuprous oxide.” (Id. )
2. Matsuda teaches that
[t]he metal-containing resin according to [its] invention is comprised
of, in its free acid (substrate resin) form, a copolymer consisting
essentially of
(a) from 5 to 70% by weight of a member selected from the group
consisting of a (meth)acrylic acid ester having as the ester
residue a branched alkyl of four or more carbon atoms having at
least one branch on a carbon atom at second to fourth positions
from the distal end of the principal chain, a (meth)acrylic acid
ester having as the ester residue a cycloalkyl residue having six
or more carbon atoms, a polyalkylene glycol
mono(meth)acrylate, a polyoxyalkylene glycol monoalkyl ether
mono(meth)acrylate, and an adduct of 2-hydroxyethyl
(meth)acrylate with caprolactone;
(b) a proportion of a polymerizable unsaturated organic acid
monomer corresponding to an acid number of the resin from 25
to 350 mg KOH/g as solid; and
(c) the balance of another polymerizable neutral monomer.
(Id. at 2:1-20.)
3. Matsuda teaches that “a substrate resin containing certain types
of neutral monomers may exhibit, when compared with the corresponding
substrate resin not containing such a neutral monomer, enhanced film
performance including anti-cracking, adhesive, self-polishing and other
properties after metallizing and formulating into an antifouling paint with an
6
Appeal 2015-006305
Application 10/585,917
antifouling pigment.” (Id. at 1:54—60.) Matsuda teaches that “[i]n order to
impart [antifouling] paint films with improved adhesion, anti-cracking and
other properties, a (meth) acrylic ester monomer containing a bulky group or
soft segment in the ester residue is copolymerized.” (Id. at 2:61—64.)
Matsuda teaches that “[pjolyoxyalkylene chains produced by the ring­
opening polymerization of an alkylene oxide such as ethylene oxide or
propylene oxide are known to be a soft segment.” (Id. at 7—9.)
4. Matsuda teaches that having a proportion of acid monomer in
the composition of the substrate resin “corresponding to an acid number of
the resulting copolymer of from 25 to 350 mg KOH/g” optimizes the
“durability and dissolution rate (self-polishing rate) of paint films.” (Id. at
2:50-60.)
5. Matsuda teaches that “[mjetals forming a salt with the substrate
resin are chosen from elements of groups 3A to 7A, 8, IB and 2B of the
periodic chart. Cobalt, nickel, copper, zinc, tellurium and manganese are
preferable among others.” (Id. at 3:55—58.) Matsuda teaches that “[i]t is
desirable for the antifouling paint of the present invention that the
hydrolyzable resin occurs as a salt with a metal having ionization tendency
lower than that of alkali metals, e.g., the zinc, copper or tellurium salt” so
that “the paint films . . . will be gradually hydrolyzed and dissolved out into
weakly alkaline sea water” and “exhibit[]. . . antifouling and other
performance for a long period of time.” (Id. at 5:27—33, 41 44.)
6. Matsuda teaches that
particular advantages are achieved when the hydrolyzable, metal-
containing resin of [its] invention is combine [d] with a copper-based
antifouling pigment such as cuprous oxide or copper rhodanide. This
is because the interaction between the vehicle resin and the antifouling
7
Appeal 2015-006305
Application 10/585,917
pigment is remarkably retarded when compared to the corresponding
resin not containing a neutral monomer as defined herein. As a result,
the film performance including integrity, adhesion strength and self-
polishing property may be significantly improved.
{Id. at 5:49-58; see also id. at claim 6 (antifouling agent is cuprous oxide or
copper rhodanide).)
7. Matsuda teaches that “[t]he antifouling paint composition
according to [its] invention may contain the following conventional
additives”: antifouling agent including powders or flakes of zinc and zinc
compounds, plasticizer, hydrolysis regulator, pigment, solvent, viscosity
regulator, and other additives including “[mjonobasic organic acids such as
rosin.” {Id. at 4:23—5:21.)
8. Matsuda teaches embodiments of its paint composition that do
not contain biocidal zinc compounds or rosin. {Id. at 10:23—37; Appeal Br.
8 (conceding that Matsuda provides specific paint examples comprising
cuprous oxide biocide, no zinc, and no rosin).)
9. Hubbell teaches that metallic copper in powdered form has
been used as “the toxic ingredient in antifouling paints.” (Hubbell 1:20—30.)
10. Hubbell teaches producing a novel cupreous powder having a
much greater surface area as compared to copper powder commercially
available at the time, and where individual copper particles are covered by
thin protective films of cuprous oxide such that the “mass of copper particles
are rendered relatively stable in the air against oxidation, permitting the
product to be stored for relatively long periods of time without oxidation and
yet to retain its original efficient and high reactivity to various reagents.”
{Id. at 1:36-51.)
8
Appeal 2015-006305
Application 10/585,917
11. Hubbell teaches that “[cjuprous oxide has proven to be more
desirable than metallic copper for general use as an antifouling pigment in
antifouling paints because of the tendency of the metallic copper to hasten
the corrosion of the steel plates when the paint is applied over steel, this
galvanic corrosive effect being produced upon exposure to the sea water.”
{Id. at 7:68-74.)
12. Figure 2 of Hubbell is reproduced below:
(Hubbell Fig. 2.) Hubbell’s Figure 2 “illustrates . . . the relation between the
increase in viscosity of an antifouling paint embodying [Hubbell’s] cupreous
powder and the cuprous oxide content of the cupreous powder.” (Id. at
8:41—46.)
13. Hubbell teaches that
[w]hen [its] cupreous powder is utilized as the antifouling pigment in
an antifouling paint, . . . the relationship between the amount of
cuprous oxide in the . . . powder has an important effect upon the
viscosity of the paint into which it is incorporated. All prior copper or
copper oxide powders when embodied in antifouling paints appear to
develop an undesirable jellying or substantial increase in viscosity
after standing. . . . [W]hen the amount of cuprous oxide [in Hubbell’s
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Appeal 2015-006305
Application 10/585,917
cupreous power] is decreased to the neighborhood of 10%, the
thickening or undesirable increase in viscosity of the paint rises very
rapidly. Accordingly, it is preferred that cuprous oxide content of the
present cupreous powder for most desirable results as an antifouling
pigment should be at least about 10% and preferably slightly more.
{Id. at 8:31-54.)
14. Table IV of Baker is reproduced below:
Tafei* IV. Anutiyiftv of Comni*?d«l Copper and Cuprous Oxide Pigments
L«t- Ny, 29 ilia T-ST::. 928 sm 2S7 S3SH 1
Typ* A
CiisO
CCy-d:' B
C ihspasrsv (.hayO
■Qfiais ii Q .'& ci s A
CVsO Piamsiiti
1:1!
CMS
1:S If:! . IS 1:1 3.97:2U4 1:1
a. n
4.39
1:1 li
77, !>
??,4
is. 58
0.58
5 >:■> 80,8 70.8
0.71 a. ss &.m 3,89 i:l 75,8 7 6.»
78.0
(t.:m a. as "7,.3 0, 68 5. AS 4.3S
9,50 ?r.-4 0 VI 5 SO a..§» 4.85 so, *
Ay, OVi 77,3 ■o, m S.SO SVS4 4.31 83.4 75,8
Av, %
redlining
Tots! (eiecijyv.
SyjSaaSjO
HV
87,8
*0,30
sau.
88, .5
*0.1
1:1
1.3
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98.9
t!
*9.85
j-aca
*0,04.
93,0
as. a
S.4
-*8,03
101,4
8(5,8
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190. G
ass
*0 1
183,8
90,8
97. S
o.s
T9.8
8.7
87.7
6.1
SI. 7
1,3
9. 1
0,3
IS, C5
0,7
(Baker 125, Table IV.) Baker’s Table IV “lists the results of metallic copper
determinations on a number of commercial antifouling pigments.” {Id. at
126, right column.)
Analysis
Prima Facie Case
Except as otherwise noted,6 we adopt the Examiner’s findings of fact
and reasoning regarding the scope and content of the prior art as applied to
6 The Examiner states that Matsuda teaches that, “[particularly when
combined with copper-based antifouling pigments . . . the interaction
between [Matsuda’s] vehicle resin and the antifouling pigment is remarkably
retarded when compared to resin with the neutral monomer.” (Final Act. 5
(emphasis added); Ans. 3 (emphasis added).) Matsuda in fact teaches that
the interaction between its vehicle resin and copper-based antifouling
pigments is retarded when compared to resin without a neutral monomer as
10
Appeal 2015-006305
Application 10/585,917
claim 1 (Final Act. 3—7, 8—10; Ans. 2—5, 7—12; FF1—FF14) and agree that
the claim 1 is prima facie obvious over the cited art. We address Appellants’
arguments below.
Appellants contend that it would not have been obvious to a skilled
artisan to use cuprous oxide that contains less than 2% metallic copper as an
antifouling agent, because “none of the cited references disclose an
antifouling composition containing copper-based biocide having a metallic
copper content below 2% by weight” and there is no motivation to modify
the art to arrive at the claimed invention. (Appeal Br. 5; Reply Br. 2—3.7)
In particular, Appellants argue that “the Examiner’s assertion . . . that a
metallic copper content of less than 2 wt.% is an inherent feature of
Matsuda’s cuprous oxide . . .is both legally and factually incorrect.”
(Appeal Br. 6; see also Reply Br. 2 4.) Appellants argue that Matsuda
provides no guidance that the level of elemental copper in a biocidal copper
compound has an effect on the coating’s properties and that a skilled artisan
“would not, as a matter of standard procedure, choose a low metallic copper
content on the basis that he/she would like the cuprous oxide to be as pure as
defined by Matsuda. (FF6.) Likewise, the Examiner finds that Matsuda
does not “explicitly prepare a coating composition with both the metallized
polymer and a copper-based biocide.” (Final Act. 5; Ans. 3.) We note,
however, that Matsuda’s Examples 13—24 are of paint compositions
comprising the varnishes of Examples 1—12 and cuprous oxide and that
Matsuda teaches applying these paints to a test panel and steel plate to a dry
film thickness of 100 or 200 pm (i.e., coating). (Matsuda 10:23—11:59.)
Accordingly, we do not adopt the Examiner’s findings with respect to these
particular aspects of Matsuda’s disclosure, which are not necessary to affirm
the Examiner’s rejection of claim 1.
7 The Reply Brief is not paginated; we cite herein by counting its pages
consecutively.
11
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Application 10/585,917
possible,” since low metallic copper containing cuprous oxide may have
other impurities. (Id. at 7.)
We agree with Appellants that Matsuda does not inherently disclose
cuprous oxide with a metallic content of less than 2 wt.% and do not adopt
the Examiner’s findings, if any, regarding such inherency. Nevertheless, we
are not persuaded by Appellants’ argument that a skilled artisan would not
find the claimed antifouling coating obvious. As the Examiner points out,
Hubbell teaches that “[cjuprous oxide has proven to be more desirable than
metallic copper for general use as an antifouling pigment in antifouling
paints” because metallic copper has a galvanic corrosive effect upon
exposure to sea water and that cuprous oxide thus. (FF11; Ans. 8; Final At.
6—7.) We agree with the Examiner that a skilled artisan reading Matsuda
and Hubbell would find it obvious to minimize the amount of metallic
copper in the cuprous oxide used in Matsuda’s example paint compositions
in light of Hubbell’s disclosure of metallic copper’s galvanic corrosive
effect. Baker shows that minimizing metallic copper content in cuprous
oxide to the claimed “below 2%” is technically feasible. (FF14.)
Accordingly, a skilled artisan would have a reasonable expectation of
success at arriving at the claimed invention comprising as an antifouling
agent cuprous oxide having a metallic copper content below 2% by weight.
Appellants argue that the Examiner mischaracterized Hubbell’s
teachings. (Appeal Br. 10; Reply Br. 3, 5.) Appellants first argue that,
while Hubbell teaches that metallic copper tends to hasten the corrosion of
steel plates and that cuprous oxide has thus been preferred over metallic
copper for general use as antifouling pigment, it also teaches that Hubbell’s
own product, comprising copper powder covered by a film of cuprous oxide
12
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Application 10/585,917
and which thus contain “far greater than 2 wt.% metallic copper,” is superior
to cuprous oxide. (Appeal Br. 10-11; Reply Br. 5.) Appellants argue that
Hubbell in fact teaches away from the use of copper oxide powders (i.e.,
cuprous oxide and cupric oxide) because it teaches that prior copper oxide
powders when embodied in antifouling paints “appear to develop an
undesirable jellying or substantial increase in viscosity after standing” and
thus “lead to an unstable paint.” (Appeal Br. 11; see also Reply Br. 6.)
Appellants argue that, “[i]f [a] skilled artisan had started from a composition
according to Matsuda containing [cuprous] oxide (CU2O) and was to modify
the composition in line with the teaching in Hubbell,” he or she would
substitute the cuprous oxide of Matsuda with the cuprous oxide-covered
copper particles taught by Hubbell, rather than simply try to decrease the
metallic copper content of cuprous oxide. (Appeal Br. 12.)
We are not persuaded. As an initial matter, the evidence does not
make it clear that a skilled artisan reading Hubbell and Matsuda would
understand that Hubbell’s statement regarding undesirable jellying or
increases in viscosity applied to Matsuda’s example formulations containing
cuprous oxide. First, Hubbell’s statement related to “prior copper or copper
oxide powders,” and Matsuda is dated fifty years after Hubbell. Second,
Hubbell teaches that, with regard to its own product, it is when the amount
of cuprous oxide is decreased to the neighborhood of 10% that the
thickening or undesirable increase in viscosity rapidly rises. (FF12, FF13.)
Furthermore, Appellants essentially argue that a skilled artisan would not
have attempted to minimize the metallic copper content to below 2% in the
cuprous oxide used in Matsuda’s formulation because Hubbell teaches a
copper based biocide that is superior. However, “[an] obvious composition
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Appeal 2015-006305
Application 10/585,917
does not become patentable simply because it has been described as
somewhat inferior to some other product for the same use.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
cited by Appellants in the Reply, which stands for the undisputed
proposition that references must be considered in their entireties, does not
suggest to the contrary. 721 F.2d 1540, 1550 (Fed. Cir. 1983). We also
note, but are not persuaded by, Appellants’ argument that a skilled artisan
would not be motivated by Hubbell’s disclosure to minimize metallic copper
content in cuprous oxides used in antifouling paint, because he or she
“would recognize that antifouling coating compositions are not typically
applied over steel, but rather as a topcoat over an anti-corrosive primer.”
(Reply Br. 6.) Hubbell explicitly teaches that cuprous oxide has been
preferred over metallic copper as an antifouling pigment because metallic
copper’s tendency to corrode steel. (FF11.)
Appellants argue that, while Baker shows that certain cuprous oxide
and cuprous oxide mixtures in 1946 had metallic copper content of less than
2%, Baker provides no data on metallic cooper content in cuprous oxides at
the time of the invention and provides no suggestion for selecting cuprous
oxides having metallic copper content below 2 wt.%. (Appeal Br. 9—10;
Reply Br. 6—7.) Appellants argue that they have submitted material safety
data sheets for cuprous oxides at the time of the invention showing metallic
copper content of 2 wt.% or more. (Appeal Br. 6, 10; Reply Br. 6—7.)
We are not persuaded. As discussed above, Hubbell provides a reason
for a skilled artisan to minimize metallic copper content in cuprous oxides
used in antifouling paint compositions. Neither does the fact that Baker was
published in 1946 decrease its relevance, as it shows that a skilled artisan
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Application 10/585,917
would have a reasonable expectation of success in minimizing metallic
copper content in cuprous oxide to below 2 wt.%, as recited in claim 1.
Finally, we note that the material safety data sheets for cuprous oxides
Appellants submitted appear to show commercially available cuprous oxides
having 2 wt.% metallic copper, i.e., just above the range recited in instant
claim 1 of below 2% by weight. {Id. at Evidence App.) Obviousness may
also exist “when the claimed range and the prior art range do not overlap but
are close enough such that one skilled in the art would have expected them
to have the same properties.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003).
Appellants further argue that the cited art does not suggest the
combination of an antifouling coating comprising (1) copper-based biocide
having below 2 wt.% metallic copper content, (2) less than 1 wt.% biocidal
zinc compound, and (3) less than 1 wt.% rosin. (Appeal Br. 7—8; Reply Br.
4—5.) Appellants argue that no upper limit in the amount of biocidal zinc
compound or rosin is taught in the cited art: Matsuda teaches that there may
be more than one biocide in its composition and that zinc biocides and rosin
are conventional additives, while Hubbell teaches an example paint
formulation that contained 21% rosin. (Appeal Br. 7—8, 12.)
We remain unpersuaded. As discussed above, Hubbell and Baker
provide skilled artisans a reason and reasonable expectation of success to
modify Matsuda’s example formulations such that its cuprous oxide has a
metallic copper content of less than 2 wt.%. Neither does Matsuda’s
disclosure that antifouling paint compositions may contain zinc biocides or
rosin, or Hubbell’s disclosure of an example comprising 21% rosin, render
non-obvious a composition without such compounds, since Matsuda teaches
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Appeal 2015-006305
Application 10/585,917
that such ingredients are optional. (FF8.) “[E]ven a slight overlap in range
establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d at
1329. Here, Matsuda discloses at least a range of zinc biocide and rosin
concentrations (e.g., 0%) that overlaps the claimed concentrations (less than
1 wt.%.) Finally, we note, but are not persuaded by, Appellants’ argument
that there is no “compelling rationale for making [an antifouling coating
composition having] the specific combination of the claimed copper copper-
based biocide [having] a metallic copper content below 2% by weight, less
than 1 wt.% of biocidal zinc compounds, and less than 1 wt.% of rosin.”
(Reply Br. 2—3.)
Unexpected Results
Having concluded that claim 1 is prima facie obvious over Matsuda,
Hubbell, and Baker, we turn to the issue of whether Appellants have
provided evidence of unexpected results that, when considered together with
evidence of obviousness, shows claim 1 to be non-obvious.
Citing Examples 1, 2, 3, and 5 in the Specification, Appellants argue
that “[t]he claimed invention . . . provides . . . unexpected advantages,” in
particular “good, long-term storage-stability in the liquid state (shelf-life)”
combined with “the ability to perform well in all aqueous environments,
irrespective of salinity.” (Appeal Br. 13—14; see also Reply Br. 6.) More
particularly, Appellants first argue that Example 1 “clearly shows that
reducing the metallic copper content of the copper based biocide in the
coating composition improves stability, contrary to the explicit teaching of
Hubbell” and that Example 3 “shows that coatings according to the
invention have good antifouling performance[] and . . . better antifouling
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Appeal 2015-006305
Application 10/585,917
performance when the metallic copper content of the copper-based biocide is
reduced even within the claimed range.” (Appeal Br. 13—14.)
We are not persuaded. As an initial matter, Appellants have not
shown that it is unexpected that reducing metallic copper content in copper
based biocide will improve formulation stability. Hubbell, for instance,
teaches that reducing cuprous oxide content in its cupreous powder below
10% (and therefore presumably increasing metallic copper content) leads to
rapid rise of thickening and undesirable increase in viscosity of the
formulation. (FF12—13.) Furthermore, Example 1 only compared
composition A, containing cuprous oxide having metallic copper content of
0.6 wt.%, with composition B, containing cuprous oxide having metallic
copper content of 2.7 wt.%. (Spec. 19:10-20:23.) Thus, Appellants have
not shown unexpected results commensurate with the scope of its claim (i.e.,
up to but not including 2 wt.% metallic copper content).8
Appellants also argue that Examples 2 and 5 “shows improved film
properties of the coatings of the invention when the coating is immersed in
fresh water as compared to the coating comprising a biocidal zinc
8 Example 3 compares composition A, which in addition to 40.7% cuprous
oxide having 0.6 wt.% metallic copper also contains as a biocide 4.5%
copper pyrithione essentially free of metallic copper, and composition G,
with 50% cuprous oxide having 0.6 wt.% metallic copper content. (Spec.
19:10-20:2, 22:4—23:3.) Appellants have not persuasively argued that any
difference in antifouling performance is due to overall lower metallic copper
content rather than, as explained in the Specification, the inclusion of a
different copper based biocide, or that the compositions had unexpectedly
superior performance as compared to the prior art. (Spec. 23:1—3
(concluding that “coating compositions of the present invention exhibit
superior antifouling performance when copper pyrithione is included in the
formulation”).)
17
Appeal 2015-006305
Application 10/585,917
compound.” (Appeal Br. 13.) This argument suffers from the same defects
as the argument above. Appellants tested the water uptake of only
embodiments containing no zinc based biocides (compositions A, H, I, and
J) against compositions containing between 1.1^4.4% zinc-based biocides
(compositions C—F); thus, even if the results were considered unexpected,
Appellants have not shown unexpected results commensurate with the scope
of claim 1 (i.e., up to but not including 1 wt.% of biocidal zinc compounds).
Accordingly, we affirm the Examiner’s rejection of claim 1 as
obvious over Matsuda, Hubbell, and Baker. For the same reasons, we affirm
the Examiner’s rejection of claim 1 as obvious over Matsuda, Hubbell,
Baker, and Hani. Claims 3—9 and 11—19 are not separately argued and fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1, 3—9, and 11—19.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
18