Ex Parte Van Buskirk et al

Patent Trial and Appeal Board

Nov 10, 2016

13784858 (P.T.A.B. Nov. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/784,858
24959 7590
PPG Industries, Inc,
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
03/05/2013
11/14/2016
FIRST NAMED INVENTOR
Ellor James Van Buskirk
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.
09006720Al 7384
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
MAILDATE DELIVERY MODE
11/14/2016 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 ELLOR JAMES VAN BUSKIRK, CRAIG A. WILSON, and
RICHARD F. KARABIN 1
Appeal2015-005443
Application 13/784,858
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to electrodepositable film-
forming compositions. E.g., Spec. i-f 1; Claim 1. Claim 1 is reproduced
1 According to the Appellants, the real party in interest is PPG Industries
Ohio, Inc., which is a wholly owned subsidiary of PPG Industries, Inc. App.
Br. 2.
Appeal2015-005443
Application 13/784,858
below from page 16 (Claims Appendix) of the Appeal Brief (some
paragraph breaks and indentation added):
1. An electrodepositable film-forming composition comprising a
resinous phase dispersed in an aqueous medium, said resinous
phase comprising:
(1) an ungelled active hydrogen-containing, cationic resin
derived from a polyepoxide;
(2) a cationic acrylic resin containing urethane functional
groups; and
(3) an at least partially blocked polyisocyanate curing agent,
wherein the acrylic resin comprises a reaction product of a
reaction mixture comprising:
(i) an acrylic resin having functional groups that are
reactive with amines and
(ii) a urethane functional amine compound,
wherein the urethane functional amine compound comprises a
reaction product of a reaction mixture comprising
(a) a polyamine having at least one primaPJ amino group
and at least one secondary amino group; and
(b) a cyclic carbonate.
REJECTIONS ON APPEAL
1. Claims 1--4 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McCollum et al. (US 2003/0054193 Al, published Mar.
20, 2003) in view of Jacobs III et al. (US 4,897 ,435, issued Jan. 30, 1990).
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over McCollum in view of Jacobs, further in view of Swamp et al. (US
6,245,855 Bl, issued June 12, 2001).
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Application 13/784,858
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final Act.
2-13; Ans. 3-16.
Rejection 1
The Examiner finds that McCollum teaches an electrodepositable
coating composition comprising each element of claim 1, including a
cationic acrylic resin having epoxide functional groups, except that (1)
McCollum's cationic acrylic resin does not contain urethane functional
groups, and (2) McCollum's cationic acrylic resin does not comprise the
reaction product recited by claim 1. Ans. 3--4. The Examiner finds that
Jacobs discloses "a hydrophilic polymer formed by reaction of polyamines
with cyclic carbonate to provide a hydroxyl alkyl carbonate group-
containing secondary amine (i.e. urethane functional amine compound)
which is reacted with a suitable epoxy resin." Ans. 4. The Examiner further
finds that the polymer of Jacobs "ha[ s] indefinite shelf life stability and
produce[s] coatings which are not sensitive to water." Id. The Examiner
concludes:
[I]t therefore would have been obvious ... to prepare urethane-
functional amine compound from a reaction mixture comprising
hexamethylene triamine and propylene carbonate [as disclosed
by Jacobs] (i.e. cyclic carbonate), and then react aforementioned
urethane-functional amine compound with the acrylic resin
having epoxy functional groups (i.e. acrylic resin having
functional groups that are reactive with amine) of McCollum et
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al. in order to improve shelf life stability of polymers and
produce water-resistant coatings, and thereby arrive at the
claimed invention.
Id. at 5.
The Appellants argue that a person of ordinary skill in the art would
not have been motivated to react the epoxide functional groups of
McCollum' s acrylic resin with a urethane functional amine compound
because McCollum discloses that its "epoxide functional groups are present
on the acrylic polymer for conversion to cationic salt groups." See App. Br.
10. Relatedly, they argue that "[i]f one were to react the epoxide functional
acrylic polymers in McCollum ... with the [urethane functional amine
compound] taught by Jacobs ... , the [resulting] acrylic polymer could not
be rendered cationic as required by McCollum ... in order to be
electrodepositable." Id. at 11. They also argue that "there is no indication in
the McCollum reference that epoxide groups on the acrylic polymer should
be used for anything other than the formation of cationic salt groups." Id.
The Appellants' arguments do not persuade us of reversible error in
the Examiner's rejection. The Appellants do not identify any teaching in
McCollum that disparages or otherwise criticizes the use of acrylic resins
containing urethane functional groups. As the Examiner explains, Jacobs-
not McCollmn-motivates the use of such functional groups in order to
enhance the shelf life and water resistance of the coatings. See Ans. 5;
Jacobs at 2:15-28.
McCollum is directed to an "electrodepositable coating." E.g.,
McCollum at Title. A person of ordinary skill in the art would have known
that, in order for the coating to remain electrodepositable, at least some, but
not necessarily all, of the epoxide functional groups would need to be used
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for conversion to cationic salt groups. See McCollmn il 54. Thus, as the
Examiner explains, see Ans. 7, it would have been obvious to convert some
of the epoxide groups to cationic salt groups for purposes of maintaining the
electrodepositability of the composition, as suggested by McCollum, and to
react some epoxide groups with the urethane functional amine compound of
Jacobs in order to impart to the composition the increased shelf life and
water resistance benefits taught by Jacobs. The Appellants provide no
persuasive basis to doubt that a person of ordinary skill in the art reasonably
would have expected the resulting composition to be both electrodepositable
and to possess the benefits described by Jacobs.
In the Reply Brief, the Appellants argue that McCollum makes no
suggestion of converting some epoxide groups to salt groups and reacting
other epoxide groups with urethane functional amine compounds, and they
allege that the Examiner proposed that on the basis of the Appellants'
Specification. See Reply Br. 4--5. Although we agree with the Appellants
that McCollum alone does not suggest the composition proposed by the
Examiner, as explained above, the Examiner also relies on Jacobs. The
Appellants do not persuasively argue that it would have been beyond the
ordinary level of skill in the art to convert some epoxide groups to cationic
salt groups to maintain electrodepositability, and to react other epoxide
groups with urethane functional amine compounds to improve shelf life, as
proposed by the Examiner. The fact that the Examiner cites the Appellants'
Specification as being consistent with the Examiner's proposed
modification, see Ans. 7; Reply Br. 4--5, does not establish that the proposed
modification would have been beyond the level of ordinary skill in the art.
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The Examiner relies on McCollum and Jacobs as providing the motivation to
make the modification; not on the Appellants' Specification. See Ans. 7.
The Appellants also argue that Jacobs "does not disclose any acrylic
resins," that Jacobs teaches a "self-crosslinkable" polymer that "is taught to
be used by itself in a coating composition," and that "[t]here is no indication
in the reference that epoxy functional acrylic resins would even be suitable
in the making of the polymers of [Jacobs] or that the polymers of [Jacobs]
would be suitable for use in an electrodepositable composition such as that
of [McCollum]." App. Br. 10-12.
We are not persuaded by those arguments. The Examiner does not
propose the use of Jacobs' polymer. The Examiner acknowledges that
Jacobs does not teach a cationic acrylic resin containing urethane functional
groups. See Ans. 9. Jacobs does, however, teach the reaction of an epoxy
resin with a urethane functional amine compound in order to produce a
composition having the desirable properties described above. E.g., Jacobs at
2:15-28. Jacobs teaches that its urethane functional amine compound "is
reacted with a suitable epoxy resin or the like." Id. at 2:21-22. The
Appellants identify nothing persuasive in Jacobs that would have suggested
to a person of ordinary skill in the art that the urethane functional amine
compound of Jacobs could not be reacted with the epoxide group of
McCollum's cationic acrylic resin. Based on the plain teachings of the
references, we agree with the Examiner that a person of ordinary skill would
have had a reasonable expectation of success in combining McCollum and
Jacobs, notwithstanding the fact that Jacobs itself may not teach an acrylic
resin having an epoxide group. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) ("[O]ne cannot show non-obviousness by attacking references
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individually where, as here, the rejections are based on combinations of
references.").
The fact that the polymer of Jacobs is self-crosslinkable and used by
itself is not persuasive of reversible error in the Examiner's rejection. Nor
does it "teach[] away from the use of isocyanate crosslinking agents that are
present in the coating compositions of McCollum." See App. Br. 12. As the
Examiner explains, the polymer of McCollum is not the same as the polymer
of Jacobs, and the Examiner does not propose the use of the polymer of
Jacobs. See Ans. 11-12. The Examiner relies on Jacob for the teaching of
the reaction of a urethane functional amine compound with an epoxy resin to
produce a composition having desirable properties. See id. The Appellants'
arguments provide no persuasive explanation as to why the polymer of
Jacobs would have discouraged a person of ordinary skill in the art from
pursuing the combination proposed by the Examiner. See Keller, 642 at
426; see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (to "teach
away," reference must criticize, discredit, or otherwise discourage the
claimed solution).
On the record before us, we agree with the Examiner that a person of
ordinary skill in the art would have been motivated to modify the cationic
acrylic resin of McCollum to include urethane functional groups as taught by
Jacobs with a reasonable expectation of achieving the shelf life and water
resistance benefits taught by Jacobs.
Rejection 2
Claim 5 depends from claim 1 and further recites "wherein the acrylic
resin is a polymerization product of a monomer mixture comprising styrene,
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glycidyl methacrylate, hydroxyethyl acrylate, hydroxyethyl methacrylate,
and methyl styrene dimer."
The Examiner finds that McCollum teaches that the acrylic resin may
be a monomer mixture of "styrene, glycidyl methacrylate, hydroxyallryl
acrylate, hyroxylal/ryl methacrylate, and a-methyl styrene dimer." Ans. 5-6
(emphasis added). The Examiner acknowledges that, while McCollum
teaches hydroxyal/ryl acrylate and hyroxylal/ryl methacrylate, it does not
disclose the specific hydroxyethyl species that are claimed. Id. at 6. The
Examiner, however, finds that Swamp teaches that "it is well known that
acrylic polymer can be prepared from hydroxyl functional monomers such
as hydroxyethyl methacrylate, hydroxyethyl acrylate, etc. to impart hydroxyl
functionality to the acrylic material." Id. The Examiner concludes that the
use ofhydroxyethyl methacrylate and hydroxyethyl acrylate in the
composition of McColl um would simply have been the obvious use of
known materials according to their established functions. Id.
The Appellants argue that Swamp concerns an "automotive clear
coat," while the composition of McCollum is "applied directly to a substrate
under a primer." App. Br. 14 (emphasis in original). The Appellants argue
that a person of ordinary skill "would not reasonably look to the clear coat
compositions of Swamp ... in order to modify the electrodepositable
compositions of McCollum ... , since each of these two types of automotive
coatings is designed with different chemistries to provide completely
different properties .... " App. Br. 14.
We are not persuaded by those arguments. The Appellants do not
dispute the Examiner's finding that McColl um discloses the use of an acrylic
resin that is a polymerization product of a monomer mixture comprising
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hydroxyalkyl acrylate and hyroxylalkyl methacrylate. As Swamp confirms,
the ethyl species of hydroxyalkyl acrylate and hyroxylalkyl methacrylate are
well known in the art, and they are specifically known to be useful in the
formation of acrylic polymers. See Swamp at 2:66-3:4.
The Appellants' argument that Swamp and McCollum concern
compositions applied at different stages of the coating process provides no
basis to conclude that a person of ordinary skill in the art would not have
been motivated to use known species of the genus disclosed by McCollum in
the composition of McCollum. 2 Absent persuasive evidence to the contrary,
we agree with the Examiner's determination that it would have been obvious
to use hydroxyethyl acrylate and hydroxyethyl methacrylate where
McCollum expressly discloses the use of hydroxyalkyl acrylate and
hyroxylalkyl methacrylate, and where Swamp discloses that hydroxyethyl
acrylate and hydroxyethyl methacrylate are known species for use in acrylic
polymers. The use of known elements according to their established
functions typically does not result in nonobvious subject matter. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007) ("The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results."); see also id. at 416 ("[W]hen
a patent claims a structure already known in the prior art that is altered by
the mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result."); see also In re
2 In fact, in view of McCollum's disclosure ofhydroxyalkyl acrylate and
hyroxylalkyl methacrylate, a person of ordinary skill in the art immediately
would have been able to envision the specific "ethyl" species of those
"alkyl" genera, even in the absence of Swamp's disclosure.
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Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence.").
We affirm the rejection of claim 5.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-6.
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
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