Lin, Jun

Patent Trials and Appeals BoardJul 7, 2020

2019004283 (P.T.A.B. Jul. 7, 2020)

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. 13/499,993 04/03/2012 Jun Lin 176.0173US (FA1808USPCT) 1594 111787 7590 07/07/2020 LKGLOBAL (Axalta) 7010 E. Cochise Road Scottsdale, AZ 85253 EXAMINER STACHEL, KENNETH J ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 07/07/2020 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 JUN LIN ____________ Appeal 2019-004283 Application 13/499,993 Technology Center 1700 ____________ Before JEFFREY T. SMITH, DONNA M. PRAISS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 9, and 20–22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Axalta Coating Systems IP Co., LLC. Appeal Br. 1. Appeal 2019-004283 Application 13/499,993 2 The invention relates to a coating composition containing an organosilane condensate that provides a clear coat having improved scratch and mar resistance. Spec. 2. Claim 1 illustrates the subject matter on appeal and is reproduced below (formatting added): 1. A solvent-based coating composition comprising: A) a pre-formed organosilane condensate, wherein the pre-formed organosilane condensate consists of a reaction product that is formed by hydrolysis of a reaction mixture that consists of mixture ingredients (1) - (6) as follows: (1) a medium to long chain trialkoxy silane selected from the group consisting of: propyltrimethoxysilane and gamma-glycidoxypropyltrimethoxysilane, and combinations thereof, (2) water and optionally one or more solvents, (3) about 0.03 percent to about 1 percent by weight, based on total weight of the medium to long chain trialkoxy silane, of 3-(2- aminoethylamino)propyltrimethoxysilane, (4) at least one silicon-containing additional reactant compound including at least a tetraalkyl orthosilicate and optionally one or more of: at least one di-alkoxy or monoalkoxy silane, silane functional polymers, and colloidal silica, (5) at least one acid catalyst, and (6) optionally a further medium to long chain trialkoxy silane according to the formula: (RO)3-Si-R1, wherein R1 is an unsubstituted alkyl group having 3 to 20 carbon atoms, wherein the hydrolysis reaction is carried out by stirring the reaction mixture for more than two minutes up to 24 hours at a temperature of from 30°C to 90°C; Appeal 2019-004283 Application 13/499,993 3 B) a film-forming binder that is different from the pre- formed organosilane condensate, wherein the pre-formed organosilane condensate is present in an amount of from 1% to 30% by total weight of the film-forming binder; C) optionally one or more of moisture scavengers, UV stabilizers or screeners present in an amount of about 0.1% to 10% by total weight of the film-forming binder, pigments, and rheology control agents; and D) at least one organic solvent in addition to the optional one or more solvents of component A(1).2 The Examiner maintains the following rejections from the Final Office Action dated April 23, 2018 (Final Act. 2–16): I. Claims 1, 4, and 9 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Ono (AU 2006/237998 B2, published October 26, 2006), Tonaka (JP 2007-177314, published July 12, 2007, and relying on an English machine translation dated December 7, 2007), Domes (WO 2004/076717 A1, published September 10, 2004, and relying on US 2011/0039115 A1 to Domes, published February 17, 2011, as an English equivalent), Yoshikawa (EP 0 638 605 A1, published February 15, 1995), and Seo (US 2003/0129740 A1, published July 10, 2003). II. Claim 20 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Ono, Tonaka, Domes, Yoshikawa, Seo, and Endo (US 2011/0143130 A1, published June 16, 2011). III. Claim 21 rejected under pre-AIA 35 U.S.C. § 103(a) as 2 Claim 1’s recitation of A(1) in part (D) appears to be in error because it is component A(2) that contains “optionally one or more solvents.” Therefore, there may be an indefiniteness issue in the language of independent claim 1. Appellant is encouraged to review the claim language carefully to ensure that it particularly points out and distinctly claims the subject matter which the applicant regards as the invention. For the purposes of our review, we interpret part (D) of the claim as referring to component A(2). Appeal 2019-004283 Application 13/499,993 4 unpatentable over Ono, Tonaka, Domes, Yoshikawa, Seo, and Tamori (US 2003/0073779 A1, published April 17, 2003). IV. Claim 22 rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Ono, Tonaka, Domes, Yoshikawa, Seo, Choi (US 6,610,872 B1, issued August 26, 2003), Birot (FR 2 741 626 A1, published May 30, 1997 and relying on an English machine translation entered in the record on August 2, 2014), and Ackermann (US 2007/0078250 A1, published April 5, 2007). OPINION After review of the respective positions that Appellant presents in the Appeal and Reply Briefs and Examiner presents in the Final Office Action and the Answer, we REVERSE the Examiner’s prior art rejections of claims 1, 4, 9, and 20–22 under 35 U.S.C. § 103(a) for the reasons the Appellant presents. We add the following. Independent claim 13 is directed to a solvent-based coating composition comprising a film-forming binder. We refer to the Examiner’s Final Office Action for a complete statement of the rejection of claim 1. Final Act. 2–10. Briefly, the Examiner finds that the combined teachings of Ono and Tonaka disclose a clear coating composition comprising a chemical treatment agent consisting of epoxysilane and aminosilane agents that differs from the subject matter of claim 1 in that the combined teachings do not expressly disclose a film-forming binder. Final Act. 2–6. The Examiner turns to Domes for this missing feature. The Examiner finds that Domes 3 We limit our discussion to independent claim 1. Appeal 2019-004283 Application 13/499,993 5 discloses a solvent-based coating for metal substrates comprising an organic film former, Final Act. 9. The Examiner determines that it would have been obvious to one skilled in the art to modify the coating from the combined teachings of Ono and Tonaka to include Domes’s organic film former to provide a coating suitable for metallic surfaces that can be used largely or completely without chromium (VI) compounds. Final Act. 10. Appellant argues that the Examiner benefitted from impermissible hindsight in combining the teachings of the cited art to arrive at the claimed invention. Appeal Br. 5, 8. Specifically, Appellant argues that the Examiner relied on to make the relatively simple clear coat of Ono become the much more detailed coating composition claimed, and that Domes does not disclose a composition of a binder with Appellant’s pre-formed organosilane condensate. Id. at 8–9. Appellant further argues that the Office Action selectively takes one part of a completely different composition and “stacks” it onto the simple disclosure of Ono. Id. at 9. We agree with Appellant that there is reversible error in the Examiner’s determination of obviousness. The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appeal 2019-004283 Application 13/499,993 6 As Appellant argues, Ono discloses the use of an aminosilane type and/or epoxysilane type chemical conversion treating agent in a solvent- based coating composition because these agents provide a coating that adheres satisfactorily to the surface onto which it is applied once baked and dried. Appeal Br. 6; Ono 6. That is, Ono already includes a film-forming binder. Given this disclosure, the Examiner does not explain adequately why one skilled in the art would add Domes’s binder to Ono’s solvent-based coating composition. Nor does the Examiner provide an adequate technical explanation why one skilled in the art would have found Domes’s binder suitable for Ono’s composition. Thus, the Examiner has not provided an adequate reasoning with the requisite rational underpinning explaining why one skilled in the art, absent impermissible hindsight, would have combined the teachings of the cited art to arrive at the claimed invention. Accordingly, we REVERSE the Examiner’s prior art rejections of claims 1, 4, 9, and 20–22 under 35 U.S.C. § 103(a) for the reasons the Appellant presents and we give above. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 9 103(a) Ono, Tonaka, Domes, Yoshikawa, Seo 1, 4, 9 20 103(a) Ono, Tonaka, Domes, 20 Appeal 2019-004283 Application 13/499,993 7 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Yoshikawa, Seo, Endo 21 103(a) Ono, Tonaka, Domes, Yoshikawa, Seo, Tamori 21 22 103(a) Ono, Tonaka, Domes, Yoshikawa, Seo, Choi, Birot, Ackermann 22 Overall Outcome 1, 4, 9, 20– 22 REVERSED