COMMISSIONER'S DECISION
Section 36, Breadth of Claims: Aqueous Coating Compositions Comprising Polymers
and Cross Linkers. The claims are supported by the disclosure and since there
is no evidence of lack of utility of any of the species disclosed, the claims
are acceptable. Suggestion that a sample be submitted is withdrawn. Rejection
reversed.
****
Patent application 253,678 (class 400-47) was filed on play 31, 1976 for an
invention with the title "Aqueous Coating Compositions Comprising Acrylic
Oligomers, High Molecular Weight Polymers and Crosslinkers." The inven-
tors are Richard Martorano and William H. Brendly Jr. assignors to Rohm
and Haas Company. The Examiner in charge of the application on April 6,
1981 took a Final Action on that date refusing to allow the application to
proceed to patent.
The application describes and claims aqueous compositions useful in high
speed, direct roll coating and lower speed direct and reverse roll coating
applications. The aqueous compositions are said to avoid the noxious and
fire-hazard related problems associated with organic media and to provide
coatings having high gloss, mar resistance, hot stacking resistance and
also resistance to deterioration or extraction under pasteurization con-
ditions. The compositions claimed are combinations of a binder, consisting
of an aqueous alkaline blend of a copolymer and an oligomeric copolymer,
with a cross-linking agent reactive with both copolymer and oligomer,
the entire composition being in the form of a dispersion or solution in
water. The compositions are further characterised by their constituents,
concentration ranges and weight-average molecular weight ranges. The cross-
linking agent may be selected from a large number of conventional cross-
linking agents. The blend of copolymer and oligomer is further described by
its solids content, its volatiles content and its viscosity.
In the Final Action the Examiner rejected claims on two grounds and also
suggested that Applicant produce a sample of the claimed coating composition.
The first objection, applied by the Examiner to claims 2, 4, 7, 8 and 13, was
that essential elements were missing from these claims. Applicant subse-
quently offered to amend these claims in the manner suggested by the
Examiner. The Board considers this amendment will overcome the first ground
for the rejection of claims 2, 4, 7, 8 and 18 and recommends that this
amendment should be accepted.
The second objection, applied by the Examiner to all the claims, was that
the claims are too broad in scope because of the large number of compounds
covered by the general definitions of the constituents in the claims.
Applicant submitted a partial amendment to claim 1 indicating that the
carboxyl group-containing monomer is alpha-beta unsaturated but he argued
against the Examiner's further requirements for restriction on this ground.
In support of his position he said:
If the Examiner should feel that many or most of the
compounds within the general definition given in Claims
1, 2, 7, 11 or 17 and in the broad statement of invention
and description given in pages 7-9, 11-13, 15-16 and 19-24
of the disclosure, would be of little or no use in forming
copolymers or as crosslinking agents (as the case may be)
for the thermosettable composition of this invention, then
it is up to him to furnish clear and unmistakable evidence
that at least some of the compounds falling within the
broad definition of monomers and crosslinking agents in
Claim 1 would not be useful for the intended purpose; if
the Examiner cannot do so, applicants submit that there
is no valid basis for any possible objection by the Examiner
that the definitions which applicants have used in the
claims represents mere speculative claiming.
and he continued:
In the present case the Examiner has not furnished clear and
uncontrovertible evidence that compounds falling within the
scope of the general definition of monomers and crosslinking
agents given in Claim 1 would be useless in forming the thermo-
settable compositions of the present invention, thus he has
no valid basis, applicants contend, for making the objection
to the claims as being broader than the invention disclosed.
Applicant then went on to discuss a number of cases to argue that this
specification, being addressed to a person skilled in the art rather than
to a member of the general public, satisfies Section 36 of the Patent Act
because a person skilled in the art would find sufficient description of
the monomers and cross-linking agents to enable him to carry out the cross-
linking described. In particular he relied upon Monsanto v Commissioner of
Patents (1979) 2 S.C.R. 1108 and Ciba-Geigy v Commissioner of Patents, F.C.C.
May 28, 1982.
After reviewing the prosecution of this application, the Board is of the
opinion that the insertion of a qualifying statement into the description of
the cross linking agent in claim 1 so that the claim reads in part (with the
insertion shown underlined)
...a water-soluble or water-dispersible cross
linking agent reactive with the carboxyl groups....
which is entirely in accordance with the disclosure, when read together with
the limitation in the claims that the entire composition is in the form of a
dispersion or solution in water, would restrict the definition of the cross
linking agents to those which are clearly practical for the described purpose
and would exclude those not practical. On the objection to the number of copolymer
and oligomers covered by the claims, the Board agrees with the Applicant that
in the absence of any evidence of inutility of any of the claimed subject
matter, he should be permitted to make the claims.
With these considerations in mind we contacted the Patent Agent, Mr. Pole, to
discuss the case with him. On February 26, 1982 a proposed amendment was
submitted which would amend claim 1 in the manner discussed above, amend claim
4 to remove some ambiguous wording from that claim, amend claim 24 to avoid
indefiniteness and, in addition, would make a number of editorial changes
throughout the specification. The Board considers that the proposed amendment
overcomes the objections to the claims and recommends that it be accepted.
In the Final Action the Examiner indicates that submission of a sample would
suffice to overcome his objection based on breadth of claiming but did not
require a sample to be provided, Furthermore he did not make that suggestion
until the time of the Final Action. Since we have concluded that the claims
as amended are not too broad, there is in fact no need for the sample.
G.A. Asher A. McDonough
Chairman Member
Patent Appeal Board, Canada
I have reviewed the prosecution of this application and concur with the
reasoning and findings of the Patent Appeal Board. Accordingly, I direct
that prosecution should be resumed on the basis of the amended specification.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 9th, day of November, 1982
Agent for Applicant
Gowling & Henderson
Box 466, Terminal A,
Ottawa, Ont.