Application of Smith
| Decision Date | 18 May 1972 |
| Docket Number | Patent Appeal No. 8590. |
| Citation | 173 USPQ 679,458 F.2d 1389 |
| Parties | Application of Richard G. SMITH. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Herbert B. Keil, Richard L. Johnston, Johnston, Root, O'Keeffe, Keil, Thompson & Shurtleff, Chicago, Ill., attorneys of record, for appellant.
S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
Before RICH, ALMOND, BALDWIN and LANE, Judges, and RAO, Judge, United States Customs Court, sitting by designation.
This appeal is from the decision of the Board of Appeals sustaining the examiner's rejection of claims 1, 2, 12-18, 20 and 21 of appellant's application, Serial No. 430,468, filed February 4, 1965, for "Glossy Emulsion Coating Compositions Containing Surface Treated Pigments of Oilophilic Nature and Method." This application is asserted to be a continuation of an application filed in 1956,1 which was a continuation-in-part of a 1951 application,2 which in turn was a continuation-in-part of Serial No. 774,897, filed September 18, 1947. We affirm the board's decision.
The invention is directed to the compounding of a glossy water base emulsion paint. In his brief before this court, appellant distinguishes between single phase, oil base paints and dual phase, water base emulsion paints wherein there is a continuous phase of water in which globules of oil are suspended. By "oil" is meant "those natural and synthetic fluid organic water insoluble compounds commonly used as a whole or part of the vehicle or binder in coating compositions." Whereas oil base paints are said to be naturally glossy, water base emulsion paints tend to be "flat." Various advantages are claimed for water base paints, and the object of this invention was to produce a glossy water base emulsion paint.
Appellant postulates that the reason for flatness in a water base paint is "the fact that it contains two phases, the water phase preferentially wetting some of the pigment so that some pigment is contained in the volatile water phase." The concept underlying the present invention was the appreciation that "if the pigment used in these paints could be surface coated in such a way that it would be wholly wetted by the oil phase and not be permitted to migrate into the water phase," the problem would be solved.
The claims reflect this approach. Claims 1 and 2 are drawn to an emulsion coating composition having a continuous water phase and a discontinuous oil phase dispersed therein. The pigment is dispersed in the discontinuous oil phase and is maintained in that phase as a result of a surface coating of an organic compound which renders the pigment "oilophilic," i. e., having an affinity for oil, and, particularly, having a preferential affinity for oil as compared to water. The organic compounds with which the pigment may be coated are described in the specification as follows:
They are monomeric organic compounds characterized by at least one non-polar organic hydrophobic group containing at least eight carbon atoms in a hydrocarbon structure which in the form of its monocarboxylic acid is soluble in oleoresinous varnishes and insoluble in water, and at least one polar group preferably selected from the class consisting of carboxylic acids, salts of said carboxylic acids, esters of said carboxylic acids and cationic ammonium and amine surface active groups containing an ionizable negative radical of a water soluble acid. Such polar groups are effective in causing said organic compounds to adhere to the pigment surface, especially where the latter are hydrophilic.
Claim 1, subdivided for convenience, reads as follows:
Claim 2 further defines the organic compound by the general formula:
A series of composition claims more limited with respect to the pigment and the organic compound with which it is coated were allowed by the examiner.
The process of making the composition is also claimed. Claim 12, which is representative of the process claims on appeal, reads in pertinent part as follows:
12. A process of preparing emulsion coating compositions comprising essentially a continuous aqueous phase and a discontinuous water insoluble oil phase containing a pigment dispersed in said discontinuous phase which comprises surface coating a pigment with an organic compound effective to render said pigment oilophilic and adding water to said pigment, thereafter adding an oil phase and emulsifying said surface coated pigment to form a water-in-oil, pigment-in-oil emulsion and converting said water-in-oil, pigment-in-oil emulsion to a pigment-in-oil, oil-in-water emulsion * * *.
The remaining process claims, 13-18, 20 and 21, define the method in varying degrees of specificity. Several process claims limited to a specific pigment and organic compound were allowed.
Baldwin3 discloses modifying the surface energy characteristics of a pigment by "causing precipitated suspensions of water repellant metallic organic compounds to become adherent upon the surface of the pigment in the form of a thin film covering each pigment particle." Among the coating compounds disclosed are those used by appellant. The patentee was primarily concerned with improving pigments for use in a variety of systems, but specific advantages of pigments made by the disclosed method are stated to be "smoother and glossier paints * * *."
Iliff et al. (Iliff),4 a patent issued on May 4, 1948, on an application filed April 11, 1944, involves aqueous emulsion coating compositions. Patentees state:
Iliff et al. refer to various methods of treating the pigments already in the prior art as of the time their application was filed which essentially involve coating the pigments with inorganic compounds, but also disclose that "other treatments which may impart organophilic properties to titanium pigments are not to be precluded from the present invention."
Cassel5 relates to improvements in the dyeing of textile fabrics with pigments wherein the problem of pigment adherence to such fabrics is solved by the addition of controlled quantities of a "pigmented lacquer-in-water emulsion" to the fabrics. In example 3 of the Cassel patent the emulsion is prepared by forming an aqueous "pulp" of blue pigment, adding it to an alkyd resin-in-oil solution to give a water-in-lacquer emulsion, and inverting the emulsion by pouring it into an aqueous solution of sodium lauryl sulfate to give a lacquer-in-water emulsion. The solicitor summarizes this process as comprising the sequence of mixing an untreated pigment with water, adding oil to give a water-in-oil emulsion, and adding water and emulsifier to convert the water-in-oil emulsion to an oil-in-water emulsion.
The examiner additionally relied upon patents to Berry6 and Machlin,7 but the board dismissed these as cumulative. The solicitor agrees that they are not before us, and we do not consider their teachings.
In its original decision, the board treated the method claims as standing or falling with the composition claims and held all of the claims on appeal to be unpatentable under 35 U.S.C. § 103 over Iliff in view of Baldwin. Appellant requested reconsideration urging that the claimed method was patentably distinct from the composition and should be treated separately. The board did reconsider its position and concluded that "except for the specific pigment-coating step," Cassel, a reference previously applied by the examiner but dropped in the examiner's answer, "shows the manipulative steps of claim 12." A fair reading of the board's decision on reconsideration indicates that it was of the view that the substitution of the claimed coated pigment, believed to have been suggested by Iliff and Baldwin, for the untreated pigment used in the Cassel process would have been obvious to one of ordinary skill in the art.
Appellant asserts that inasmuch as the examiner dropped Cassel,...
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