The Sherwin Williams Company

Patent Trials and Appeals BoardMar 30, 2021

2020005731 (P.T.A.B. Mar. 30, 2021)

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. 14/267,479 05/01/2014 Urban Castelberg 16305.0005USWO 8926 163057 7590 03/30/2021 Merchant & Gould - Sherwin P.O. Box 2903 Minneapolis, MN 55402 EXAMINER DAVIS, ZACHARY M ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 03/30/2021 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): USPTO163057@MerchantGould.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte URBAN CASTELBERG and KURT HANS ASCHWANDEN Appeal 2020-005731 Application 14/267,479 Technology Center 1700 Before TERRY J. OWENS, N. WHITNEY WILSON, and LILAN REN, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s August 29, 2019 decision to finally reject claims 1–5, 8–10, 12– 18, 21–24, 28–49, 51, and 52 (“Final Act.”). A telephonic hearing was held on March 2, 2021, a transcript of which will be made part of the record. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 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 The Sherwin-Williams Company (Appeal Br. 2). Appeal 2020-005731 Application 14/267,479 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to a coating composition for use on aluminum monobloc containers, which are described as typically being formed from an aluminum slug using an impact extrusion process (Abstract, Spec. ¶ 4). The coating composition comprises a polyester polymer which preferably includes one or more heterocyclic groups including a nitrogen atom and a carbonyl group. Details of the claimed invention are shown in claim 1, which is reproduced below from the Claims Appendix: 1. An article, comprising: a pressurized aluminum monobloc container or a portion thereof; and a coating applied on at least a portion of an interior surface of the container or a portion thereof, the coating formed from a spray applied coating composition that includes at least 15 weight percent of a polyester polymer based on the total nonvolatile weight of the coating composition wherein the polyester polymer includes at least 5 weight percent of one or more heterocyclic-group-containing segments of the below Formula (I): wherein: each n is independently 0 or 1; R1 is an organic group; each R2, if present, is independently an at least divalent organic group, with the proviso that no more than one R2 of the segment of Formula (I) is a monovalent organic group; one or more R1 and/or R2 groups can optionally join to form one or more cyclic groups; and Appeal 2020-005731 Application 14/267,479 3 the coating composition is a thermoset coating composition and includes a liquid carrier, which is a nonaqueous carrier. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Tada et al. US 5,750,223 May 12, 1998 Adachi et al. US 2010/0221442 A1 September 2, 2010 Stenson et al. US 2010/0260954 A1 October 14, 2010 Malotky et al. US 2011/0195263 A1 August 11, 2011 Otsuki2 JP H11-116895 A April 27, 1999 Lubrizol 2063 Technical Data Sheet (June 4, 2007) REJECTIONS 1. Claims 1–5, 8–10, 12, 14–18, 29, and 30 are rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki. 2. Claim 13 is rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki, and further in view of Adachi. 3. Claim 21 is rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki, and further in view of Lubrizol. 4. Claims 22, 23, and 25–28 are rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki. 5. Claims 31–33, 35, 37, 38, 42–48, and 51 are rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki. 6. Claims 34 and 36 are rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki, and further in view of Malotky. 2 We refer, as do Appellant and the Examiner, to the English-translation of record. Appeal 2020-005731 Application 14/267,479 4 7. Claim 39 is rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki, and further in view of Adachi. 8. Claims 40 and 41 are rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki, and further in view of Stenson. 9. Claims 49 and 52 are rejected under 35 U.S.C. §103(a) as unpatentable over Tada in view of Otsuki, and further in view of Lubrizol. OPINION Appellant limits its arguments to the rejection of claim 1 (see, Appeal Br. 13, 27).3 Accordingly, we will focus our analysis to the rejection of claim 1. The remaining claims will stand or fall with claim 1. We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue — or, more broadly, on a particular rejection — the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). 3 Appellant makes a separate argument for claim 29 in the Reply Brief (Reply Br. 3). However, we will not consider this argument as it was not raised in the Appeal Brief, and Appellant has not provided any explanation for why this argument could not have been raised earlier. 37 C.F.R. § 41.41(b)(2) Appeal 2020-005731 Application 14/267,479 5 The Examiner’s findings are set forth at pages 2–4 of the Final Action. The Examiner finds that Tada discloses an aerosol monobloc aluminum container with a coated interior surface (Final Act. 2, citing Tada, 1:19–21, 4:28, and 9:41). The Examiner further finds that the coating is not the same as the coating described in claim 1, but that Otsuki discloses a composition for coating the inside of a can which meets the requirements of the claimed coating (Final Act. 3, citing Otsuki ¶¶ 6, 10, 19). The Examiner determines that it would have been obvious to use Otsuki’s coating composition in Tada’s can because Otsuki indicates that its composition yields “excellent acid resistance, retort resistance, adhesion, and processability” (Final Act. 4, citing Otsuki, ¶ 1). Appellant states that Tada’s coating is the traditional polyamide-imide (PAI) technology, which has good performance when in contact with aggressive propellants, but is beginning to encounter regulatory concerns because of potential health issues resulting from the use of a solvent – n-methyl-pyrrolidone (NMP) – needed for use with PAI (Appeal Br. 14). According to Appellant, the claimed coating provides similar performance to PAI coatings, without the need to use NMP as a solvent (Appeal Br. 14–15). Appellant does not contest the Examiner’s findings with respect to the teachings of either Tada or Otsuki (see, Appeal Br. 15). However, Appellant argues that the Examiner has not established an adequate reason to combine the teachings of the references (Appeal Br. 16). In order to establish obviousness, the Examiner must, inter alia, articulate some “reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This reasoning must show that “there was an apparent reason to Appeal 2020-005731 Application 14/267,479 6 combine the known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). As noted above, the Examiner determines that it would have been obvious to use Otsuki’s coating in Tada’s container, because Otsuki’s coating composition is said to yield excellent acid resistance, retort resistance, adhesion, and processability (Final Act. 4). In analyzing Appellant’s arguments that the Examiner has not established an adequate reason to combine, we must be mindful that the question is not whether the combination would have been obvious to Appellant but whether it would have been obvious to a person of ordinary skill in the art. Any need or problem known in the field of endeavor at the time of invention can provide a reason for combining the elements in the manner claimed. KSR 550 U.S. at 420 (2007). The analysis is not limited only to the problems Appellant was trying to solve (id.) Appellant argues that “retort resistance” would not be a reason a person of skill in the art would have used Otsuki’s coating in Tada’s can, because retort sterilization in food processing is used to sterilize foods with steam or other heating methods after sealing them in a container, and that a person of skill in the art would not have used this process on a pressurized aluminum monobloc container because of an explosion risk (Appeal Br. 16). In response, the Examiner finds that retort resistance can be important in other applications besides heating of closed pressurized containers, including cleaning of empty containers, and that Otsuki is not limited to food sterilization methods (Ans. 16). Appellant does not challenge the findings that retort resistance can have applicability outside treatment of sealed food containers or that Otsuki is not limited to food sterilization methods (see, Reply Br. 5) and, therefore, does not show error in them. Appeal 2020-005731 Application 14/267,479 7 Second, Appellant argues that Tada reports that its coatings (the PAI coatings) have excellent adhesion and workability, so that a person of skill in the art would not have look to Otsuki’s coatings to improve those properties (Appeal Br. 17). However, the Examiner determines that a person of skill in the art who was aware of Tada’s statements would have been interested in adhesion and workability and, therefore, would have looked to additional art (such as Otsuki) to seek further improvement (Ans. 16). Appellant does not challenge this determination (see, Reply Br. 5–6) and, therefore, does not show reversible error in it. Appellant contends that the Examiner’s reasoning is merely hindsight reconstruction and is simply conclusory (Reply Br. 6). We do not agree because, in this instance, a person of skill in the art would certainly be interested in the adhesion and workability of the coatings based on the disclosures of Tada, so it would have been obvious to look to Otsuki’s coatings, which are said to have those properties, in an effort to improve Tada’s system. Appellant next argues that the Examiner’s determination that a person of skill in the art would have combined Otsuki’s coating with Tada’s can because the coating provides improved acid resistance is not sufficient to support a conclusion of obviousness. In particular, Appellant contends that good acid resistance, as disclosed by Otsuki, would not suggest good resistance against alkaline packaged products or dimethyl ether mediated corrosion (Appeal Br. 18). However, as explained by the Examiner (Ans. 17), both Tada and Otsuki disclose that their containers can be used for hair dye products (see, Otsuki 1:49–58, and Tada, ¶ 3). Thus, a person of skill in the art would have had reason to think that Otsuki’s coating would be useful in Tada’s system. Appeal 2020-005731 Application 14/267,479 8 Appellant also argues that because Tada teaches that its coating requires a certain absorbancy ratio R, and that Otsuki’s coatings cannot have that ratio because their chemical makeup is different from Tada’s coating, a person of skill in the art would have been led away from combining Otsuki’s coating with Tada’s system (Appeal Br. 23–25). This argument is not persuasive of reversible error, because it does not address the specific rejection made by the Examiner. That is, the rejection contemplates replacing Tada’s coating with Otsuki’s coating, for the reasons described above. That the replacement coating does not meet the requirements of the specific coating disclosed in Tada does not indicate reversible error in the rejection. For the foregoing reasons, we conclude that the preponderance of the evidence of record supports the rejection of claim 1 over Tada in view of Otsuki, and affirm the rejections on appeal. Appeal 2020-005731 Application 14/267,479 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 8–10, 12, 14–18, 29, 30 103(a) Tada, Otsuki 1–5, 8–10, 12, 14–18, 29, 30 13 103(a) Tada, Otsuki, Adachi 13 21 103(a) Tada, Otsuki, Lubrizol 21 22, 23, 25– 28 103(a) Tada, Otsuki 22, 23, 25– 28 31–33, 35, 37, 38, 42– 48, 51 103(a) Tada, Otsuki 31–33, 35, 37, 38, 42– 48, 51 34, 36 103(a) Tada, Otsuki, Malotky 34, 36 39 103(a) Tada, Otsuki, Adachi 39 40, 41 103(a) Tada, Otsuki, Stenson 40, 41 49, 52 103(a) Tada, Otsuki, Lubrizol 49, 52 Overall Outcome 1–5, 8–10, 12–18, 21– 24, 28–49, 51, 52 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED