Ex Parte Turner et al

Patent Trial and Appeal BoardOct 31, 2018

13700079 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/700,079 11/26/2012 Heidi M. Turner 111787 7590 11/02/2018 LKGLOBAL (Axalta) 7010 E. Cochise Road Scottsdale, AZ 85253 UNITED ST A TES OF AMERICA 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. 176.0598US 5410 EXAMINER MCKINNON, LASHAWNDA T ART UNIT PAPER NUMBER 1789 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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): axalta@lkglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEIDI M. TURNER, GLEN 0. VETTER, ANDREA ANDERSON, and WALLACE KESLER Appeal2018-000144 Application 13/700,079 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's September 26, 2016 decision finally rejecting claims 1-20. 1 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the real party in interest as Valspar Sourcing, Inc. (Appeal Br. 3). Appeal2018-000144 Application 13/700,079 CLAIMED SUBJECT MATTER Appellants' invention is directed to infrared-reflective coatings (Spec. ,r 2). Independent claims 1 and 12 are representative and are reproduced below from the Claims Appendix of the Appeal Brief: 1. A two-part aqueous coating composition whose first part comprises a waterborne active hydrogen-functional latex binder and whose second part comprises a water-dispersible polyisocyanate, wherein one or both of the first and second parts comprise non-infrared-absorptive colored pigment, and wherein a mixture of the first and second parts contains less than about 10 wt. % volatile organic compounds based upon the total liquid coating composition weight, and when coated atop a vinyl substrate will cure to form a vinyl-adherent, infrared- reflective colored protective film. 12. A coated building component comprising a thermoplastic, thermoplastic-containing or thermoplastic-clad substrate having thereon a wet coating comprising a waterborne mixture of active hydrogen-functional latex binder, water- dispersed polyisocyanate and non-infrared-absorptive colored pigment, which coating contains less than about 10 wt. % volatile organic compounds based upon the total liquid coating composition weight, and when coated atop a substrate will cure to form a substrate-adherent and infrared-reflective colored protective film. DISCUSSION The only rejection on appeal is the rejection of claims 1-20 under 35 U.S.C. Â§ I03(a) as unpatentable over Zehner2 in view of Wu3 and further in view of Sullivan. 4 Appellants do not offer separate arguments in support of the dependent claims. Arguments are directed to limitations recited in 2 Zehner et al., US 7,186,457 Bl, issued March 6, 2007. 3 Wu et al., US 2008/0139775 Al, published June 12, 2008. 4 Sullivan et al., US 6,416,868 Bl, issued July 9, 2002. 2 Appeal2018-000144 Application 13/700,079 independent claims 1 and 12 (see generally Appeal Br. 8-15; Reply Br. 2- 4). Accordingly, our discussion will focus on the rejection of claims 1 and 12. 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that Zehner' s disclosure teaches the building component recited in claim 12 except that Zehner does not teach that a coated building component has thereon the claimed coating composition recited in claims 1 and 12 (Ans. 3 ( citing Zehner Abstract, claim 1, 2:54-- 67)). The Examiner finds that Wu teaches a two component aqueous wet top coating composition whose first part comprises a water-dispersible polyol component with reactive hydrogen groups ([i.e., the claimed] waterborne active hydrogen functional latex binder) ... and whose second part comprises [the claimed] water dispersible polyisocyanate component with pigments in the mixture ... in order to provide abrasion resistance. (Ans. 3 (citing Wu Abstract; ,r,r 5, 92, 99, 121; Examples 1--4)). The Examiner notes that Zehner and Wu are silent with respect to the specific pigment in the claimed amount (Ans. 4). However, the Examiner finds that Sullivan teaches "using 0.1 to 50 percent colored IR reflective alkaline earth-manganese oxides ([i.e., the claimed] non-infrared absorptive colored pigment) as pigments in order to reduce infrared heat buildup ... and is free of infrared absorptive pigments" (id. ( citing Sullivan Abstract)). Appellants make the following principal arguments urging reversal of the obviousness rejection: (1) Zehner "provides no indication as to whether any particular coating composition would adequately adhere to Zehner' s composite," nor does Zehner mention coating composition pigments (Appeal Br. 8); (2) there is no motivation for using Wu's composition because Wu does not mention vinyl substrates, pigment use in both of the first and second parts, 3 Appeal2018-000144 Application 13/700,079 nor attribute abrasion resistance to the pigments or polyurethane used (id. at 9, 1 O); (3) Sullivan is silent regarding two-part aqueous coating compositions and fails to recommend using the disclosed pigments in a coating on vinyl (id. at 9); ( 4) the Examiner has not shown that abrasion resistance would have been needed on Zehner' s composite panel, which already offers superior wear and tear resistance (id. at 11; Reply Br. 3--4); (5) the Examiner has not established that the proposed composition would have been the same or substantially similar to the claimed composition (Appeal Br. 12); (6) neither Zehner nor Wu includes data regarding the adherence of any coating to vinyl (id.); and (7) Wu's ,r 127 disclosure regarding "'a variety of substrates' and 'plastic' is not a disclosure of vinyl substrates" (id. at 13; Reply Br. 3). We have reviewed the arguments and evidence presented by Appellants in the Appeal Brief and the Reply Brief seeking reversal of the obviousness rejection, and conclude that Appellants have not shown reversible error in the appealed rejection, essentially for the reasons set forth in the Answer. We add the following primarily for emphasis. Appellants' arguments (1), (2), and (3) explain why each of the cited references differs from the claimed invention. However, it is well established that "one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on a combination of references." In re Keller, 642 F.2d 413,426 (CCPA 1981). Based on the Examiner's findings set forth above and in the Answer, we agree with the Examiner that it would have been obvious for one of ordinary skill in the art to use Wu's coating composition on Zehner's composite siding in order to provide abrasion resistance thereon (Ans. 3). We further agree with the Examiner that it would have been obvious to the 4 Appeal2018-000144 Application 13/700,079 ordinary skilled artisan to use Sullivan's non-infrared absorptive colored pigment in the combination of Zehner's building component and Wu's coating composition in order to reduce infrared heat buildup (id. at 4 ). Appellants' argument (4) is unpersuasive because Zehner discloses that "there is a need for durable and weatherable cellulosic composite siding" (Zehner 1 :25-26). Therefore, one of ordinary skill in the art would have understood that abrasion resistance is desired in or on a vinyl substrate to withstand weather, elements, pressure washing, etc. due to its exposed location on a building's exterior (see also Final Act. 10). We are not persuaded by Appellants' arguments (1), (5), and (6) because the cited prior art discloses each element of the two-part aqueous composition and the coated building component recited in claims 1 and 12. It is well established that when claimed and prior art products are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). This is true whether the rejection is under 35 U.S.C. Â§ 102 (anticipation) or 35 U.S.C. Â§ 103 (obviousness), and is based on the fact that the PTO is not in a position to manufacture products or to obtain and compare prior art products. Id. In this instance, Appellants have not met their burden in demonstrating that the two-part aqueous composition resulting from the Examiner's proposed combination does not possess the claimed capability to 5 Appeal2018-000144 Application 13/700,079 form a vinyl-adherent, infrared-reflective colored protective film when coated and cured atop a vinyl substrate. With regard to Appellants' argument (7), Wu discloses that the "[t]wo-component water-based hydrophilic coatings ... may be used on a variety of substrates, for example, cement, plastic, paper, wood, metal, or any substrate where abrasion resistance is desired" (Wu ,r 127 (emphasis added)). Appellants' arguments (3) and (7) are unpersuasive because we agree with the Examiner that "Wu teaches the use of his composition on plastic substrates[,] which includes vinyl substrates" (Ans. 10). Moreover, Appellants admit that one of ordinary skill in the art would have understood that vinyl siding is a plastic material (see, e.g., Spec. ,r 4 ( disclosing that "[i]n recent years, paints designed for application onto installed thermoplastic building components ( e.g., paints for vinyl siding) have also become available" ( emphasis added))). We note that Sullivan provides that "various types of substrates may be coated with the present pigments, such as ... plastic and composite substrates" (Sullivan 6:49--51 ). Furthermore, Zehner describes including PVC and thermoplastic materials as suitable components in composite siding (see Zehner Abstract; 2:59--60). Thus, Appellants have not identified reversible error in the Examiner's findings that Wu and Sullivan teach the application of each of their respective compositions on vinyl siding. These teachings are part of the art of record. In re Fritch, 972 F .2d 1260, 1264 (Fed. Cir. 1992) ("It is well settled that a 6 Appeal2018-000144 Application 13/700,079 prior art reference is relevant for all that it teaches to those of ordinary skill in the art."). Accordingly, we sustain the rejection of claims 1 and 12 under Â§ 103(a). CONCLUSION We AFFIRM the rejection of claims 1-20 under 35 U.S.C. Â§ 103(a) over Zehner in view of Wu and further in view of Sullivan. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7