Ex Parte Wegner et al

Patent Trials and Appeals BoardApr 24, 2019

14111042 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/111,042 02/05/2014 Egon Wegner 48394 7590 04/26/2019 SERVILLA WHITNEY LLC 33 WOOD A VE SOUTH SUITE 830 !SELIN, NJ 08830 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. BCM0061 (PAT0001648US02) CONFIRMATION NO. 1160 EXAMINER WEDDLE, ALEXANDER MARION ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 04/26/2019 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): docket@dsiplaw.com lmurphy@dsiplaw.com hservilla@dsiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EGON WEGNER and PETER MA YENFELS Appeal2018-005857 Application 14/111,042 Technology Center 1700 Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and JANEE. INGLESE, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision finally rejecting, under 35 U.S.C. Â§ 103(a), claims 1-7 and 10-21 as unpatentable over Weikard2 in view ofBlasko, 3 Johnson, 4 and TGT, 5 and 1 Appellants identify BASF Coatings GmbH as the real party in interest (Appeal Br. 3). 2 Weikard et al., US 2007/0123613 Al, published May 31, 2007 ("Weikard"). 3 Blasko et al., US 5,098,956, issued March 24, 1992 ("Blasko"). 4 Johnson et al., US 4,954,553, issued September 4, 1990 ("Johnson"). 5 The Glass Transition, <> ("TGT"). Appeal2018-005857 Application 14/111,042 claims 8, 9, and 16 over this combination and adding Chretien6 and Rukavina. 7 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 8 STATEMENT OF THE CASE The invention relates to a solvent-containing clearcoat composition, as well as to the preparation and use of this composition (Spec. 1:4--10). The composition comprises at least two OH-functional (meth)acrylate copolymers as binders, at least one kind of synthetic polyamide wax particles, at least one urea compound as an adduct of a polyisocyanate and a monoamine, and a crosslinking agent having functional groups that are reactive toward OH groups (id.). The two OH-functional (meth)acrylate copolymers include one having a glass transition temperature Tg of I5Â°C to 100Â°C and one having a glass transition temperature Tg of -100Â°C to -20Â°C (id. at 4: 13-21 ). Appellants disclose that the composition provides a clearcoat having high optical quality, high resistance to condensation and blushing, and good circuit-line stability, making the composition particularly suitable for use in the automobile finishing segment (id. at 3:30-4:8). Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. The limitations at issue are italicized. 6 Chretien et al., US 2010/0112232 Al, published May 6, 2010 ("Chretien"). 7 Rukavina et al., US 2009/0280329 Al, published November 12, 2009 ("Rukavina"). 8 Our Decision refers to the Specification ("Spec.") filed October 10, 2013, the Examiner's Final Office Action ("Final Act.") dated June 16, 2017, Appellants' Appeal Brief ("Appeal Br.") filed November 15, 2017, the Examiner's Answer ("Ans.") dated April 5, 2018, and Appellants' Reply Brief ("Reply Br.") filed May 18, 2018. 2 Appeal2018-005857 Application 14/111,042 1. A solvent-containing clearcoat coating composition compnsmg: (A) an OH-functional ( meth )acrylate ( co )polymer component comprising: (Al) 30o/o-99% by weight, based on the mass of the nonvolatile fraction of the OH-functional (meth)acrylate ( co )polymer component (A), of at least one OH-functional (meth)acrylate ( co )polymer having an OH number of 60-200 mg KOH/g and a glass transition temperature Tg of l 5Â°C to 100Â°C, and (A2) 1 o/o-70% by weight, based on the mass of the nonvolatile fraction of the OH-functional (meth)acrylate ( co )polymer component (A), of at least one OH- functional (meth)acrylate ( co )polymer having an OH number of 60-200 mg KOH/g and a glass transition temperature Tg of-100Â°C to -20Â°C; (B) a crosslinker component comprising at least one crosslinking agent having functional groups that are reactive toward OH groups; (C) 0.02o/o-l.2% by weight, based on the mass of the nonvolatile fraction of the OH-functional (meth)acrylate ( co )polymer component (A), of at least one polyamide; and (D) 0.04o/o-2.9% by weight, based on the mass of the nonvolatile fraction of the OH-functional (meth)acrylate ( co )polymer component (A), of at least one urea compound comprising an adduct of a polyisocyanate and benzylamine. Independent claim 10 recites a process for preparing the composition of claim 1. Independent claim 14 recites a process of using the composition of claim 1. Independent claim 17 recites a multicoat coating system comprising at least one coating of the composition of claim 1. ANALYSIS A dispositive issue in the appeal before us in this case is whether Appellants have identified reversible error in the Examiner's conclusion- 3 Appeal2018-005857 Application 14/111,042 that a clearcoat composition as recited in claim 1 comprising a blend of two OH-functional (meth)acrylate (co)polymers, one of which has a Tg of 15Â°C to 100Â°C and the other of which has a Tg of -100Â°C to -20Â°C-would have been obvious to one of ordinary skill in the art over the combined teachings ofWeikard, Blasko, Johnson, and TGT. We answer this question in the affirmative and, therefore, do not sustain the Examiner's obviousness rejections of claims 1-21. The Examiner finds that Weikard teaches a solvent-containing clearcoat coating composition comprising an OH-functional methacrylate copolymer component having an OH number of 20-300 mg KOH/g, a crosslinker, a polyamide, and an urea compound which is an adduct of a polyisocyanate and benzylamine (Final Act. 3). The Examiner also finds that Weikard "evidences that glass transition temperature is a result-effective variable affecting block resistance" (id.). However, the Examiner acknowledges that Weikard fails to teach a blend of at least two different OH-functional methacrylate copolymers, one of which has a Tg of 15Â°C to 100Â°C and the other of which has a Tg of -100Â°C to -20Â°C (id.). The Examiner turns to Blasko for a teaching of a coating composition including polyol blends of low Tg and high Tg acrylic copolymers to provide good overall performance for an air-dryable, high solids coating composition with reduced viscosity and extended pot life (id. at 3--4). The Examiner finds Blasko teaches the low Tg copolymer has a Tg of about -10Â°C to about 20Â°C and the high Tg copolymer has a Tg of about 25Â°C to about 100Â°C (id.). Therefore, the Examiner concludes that it would have been obvious to modify Weikard's composition as a blend of low and high Tg copolymers in 4 Appeal2018-005857 Application 14/111,042 order to provide a superior clear coating that is air-dryable, with high solids content, and has reduced viscosity and extended pot life (id. at 4). The Examiner acknowledges that Weikard as modified in accordance with Blasko' s teaching, fails to teach one of the copolymers in the blend has a Tg of -100Â°C to -20Â°C (Final Act. 4). For this feature, the Examiner turns to Johnson and TGT, finding that Johnson suggests adding Tg modifiers with a T g of about -100Â°C to about 0Â°C to a resin for improving the resin's flexibility, while encouraging filming and air-drying at room temperature, while TGT evidences that Tg is related to flexibility in the polymer backbone (id. at 4--5). Therefore, the Examiner concludes that it would have been obvious to further modify Weikard's composition such that one of the copolymers of the blend has a Tg of -100Â°C to 0Â°C in order to flexibilize the resin and to encourage filming and air drying at room temperature (id. at 5). Appellants argue that Weikard teaches away from the above modifications because Weikard's purpose is to provide block-resistant coatings and teaches that polymers having low Tg below 40Â°C provide insufficient block-resistance (Appeal Br. 10-11; Reply Br. 2-3). Appellants also argue that Blasko's blend is specifically limited to a copolymer having a Tg of -10Â°C to 20Â°C and a copolymer having a Tg of25Â°C to 100Â°C in order to achieve the desirable properties relied on by the Examiner (Appeal Br. 11-12; Reply Br. 3--4). In addition, Appellants argue that Johnson's teaching is limited to the use of a Tg modifier for a phenoxy resin (Appeal Br. 12-13). Lastly, Appellants argue that Blasko and Johnson are concerned with an air-dryable coating which is not relevant to the dual cure coatings of Weikard (id. at 13-14). 5 Appeal2018-005857 Application 14/111,042 Appellants' arguments are persuasive of reversible error in the Examiner's conclusion of obviousness. Although the Examiner finds that "Blasko' s teaching is a relatively general reference which suggests a coating which includes blend of both high ... and low Tg acrylic copolymers ... in order to achieve a coating composition with a number of advantages, including extended pot-life, improved weathering, good hardness, and improved viscosity" (Ans. 4), Blasko teaches that the improved coating composition is achieved "provided that certain conditions are met" (Blasko 8:22-27). Blasko teaches that "[o]ne such condition is that the low-Tg, high -hydroxyl number acrylic copolymer have ... ( 4) a glass-transition temperature (Tg) of about -10Â°C to about +20Â°C" (id. at 8:28-36). Blasko further teaches that "[a]nother condition is that the high-Tg, low-hydroxyl number acrylic copolymer have ... (4) a Tg of about +25Â°C to about + 100Â°C" (id. at 8:49-55). Moreover, Blasko contrasts this improved coating composition from a prior blend of acrylic copolymers of low Tg below -10Â°C and high Tg of -10Â°C to+ 10Â°C (id. at 4: 18-58). Thus, rather than providing a general teaching of the desirability of blending low and high Tg acrylic copolymers to achieve any of a variety of advantages, Blasko's teaching limits the scope of selections of low and high Tg acrylic copolymers to those specified as conditions that must be met to achieve the disclosed improved pot-life, weathering, hardness, and viscosity. Additionally, the Examiner fails to adequately respond to Appellants' argument that W eikard teaches away from the use of an acrylic copolymer having a low Tg of -100Â°C to -20Â°C. Although the Examiner finds that Weikard does not address the question of whether it would have been obvious to use a blend of high and low Tg polymers (Ans. 3), Weikard 6 Appeal2018-005857 Application 14/111,042 specifically teaches that the use of polymers of high Tg above 40Â°C improves block resistance and desires a block-resistant composition (Weikard ,r,r 5, 6, 14). These teachings suggest that Weikard's composition would have a Tg above 40Â°C, although the Examiner is correct that Weikard does not teach away from the use of a blend of low and high Tg whose composite Tg is above 40Â°C. Nonetheless, the Examiner fails to take into account Weikard's teaching regarding Tg and block resistance. As to Johnson, the Examiner finds that Johnson evidences that flexible coatings have lower viscosities and that a Tg of -120Â°C to 30Â°C will provide a flexibilizing effect on a polymer coating (Ans. 5). The Examiner also finds TGT further evidences a general relationship between Tg and polymer flexibility (id.). However, Johnson specifically teaches the use of a modifier whose Tg is below that of waterborne phenoxy resin in order to impart the flexibilizing effect (Johnson 13:65-14:5). Johnson also prefers to reduce the Tg of the blend to 60Â°C or below to attain the desired flexibility generally, using modifiers whose Tg is below room temperature (id. at 14:5- 46). As Appellants argue, these teachings are specific to the use of a modifier for a specific resin, a waterborne phenoxy resin. While the Examiner correctly finds that TGT does indeed teach a relationship between polymer flexibility and Tg, the Examiner fails to direct our attention to any teaching in Johnson or TGT suggesting the use of an acrylic copolymer having a Tg of -100Â°C to -20Â°C in a blend with an acrylic copolymer having a Tg of l 5Â°C to 100Â°C in a clearcoat composition. We note Appellants separately argue against the rejections of claims 7-9, 11, 16, 18, and 19 (Appeal Br. 14--19). Because we are persuaded of reversible error in the Examiner's obviousness conclusion with regard to 7 Appeal2018-005857 Application 14/111,042 claim 1 over the combination of Weikard, Blasko, Johnson, and TGT, and because the Examiner does not rely on Chretien or Rukavina to remedy the deficiencies in this combination, we need not address these additional arguments. Accordingly, we will not sustain the Examiner's obviousness rejection of claims 1-21 based on Weikard in view of Blasko, Johnson, and TGT, alone or further in view of Chretien or Rukavina. DECISION Upon consideration of the record, and for the reasons given above and in the Appeal and Reply Briefs, the decision of the Examiner rejecting claims 1-21 is reversed. REVERSED 8