ECO-GREEN COATINGS, LLC

Patent Trials and Appeals Board

Jan 21, 2021

2019005466 (P.T.A.B. Jan. 21, 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.
14/553,864 11/25/2014 William D. KRIPPES 208884.00038 6785
143534 7590 01/21/2021
Kegler Brown Hill & Ritter Co., LPA
65 East State Street
Suite 1800
Columbus, OH 43215
EXAMINER
SU, XIAOWEI
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
01/21/2021 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):
patents@keglerbrown.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM D. KRIPPES, THEODORE JAROSZ,
MIKE SERAFINI, and WILLIAM CAPIZZANO

Appeal 2019-005466
Application 14/553,864
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–12, 15–33, 36–55, 58–76, and 79–87.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Nov. 25, 2014
(“Spec.”), the Final Office Action dated Sept. 5, 2018 (“Final Act.”), the
Appeal Brief filed Feb. 27, 2019 (“Appeal Br.”), the Examiner’s Answer
dated May 2, 2019 (“Ans.”), and the Reply Brief filed July 1, 2019 (“Reply
Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Chemcoaters, LLC as the real party in
interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The invention relates to a process for making a corrosion-resistant
coating for zinc or zinc-alloy coated substrates that meets the American
Society of Testing and Materials International ASTM B1117-11 (ASTM
B1117) standard for continuous salt spray tests of metals and coated metals.
Spec. ¶ 2. According to the Specification, zinc coatings protect the
underlying steel by providing both a physical barrier and cathodic
protection, however, existing hot-dip coating processes produce hazardous
by-products which, in turn, require laborious and expensive disposal. Id.
¶¶ 6, 11. The Specification states the disclosed process provides for a dry-in-
place application, negating the requirement for hazardous waste disposal. Id.
¶ 12. Claim 1, reproduced below, is illustrative of the subject matter on
appeal (disputed limitations italicized).
1. A process for making a corrosion-resistant metal
component comprising the steps of:
combining water, at least one zinc phosphate forming
compound and at least one chromium forming compound to
form a first solution;
separately combining at least one silicate compound with
water to form a second solution;
combining the first solution with the second solution such as
to form a mixed aqueous solution;
combining the mixed aqueous solution with at least one
acrylic resin to form a coating mixture; and
applying the coating mixture to a metal substrate having a
zinc or zinc-alloy surface to form a coating on the metal
substrate that reacts with the zinc or zinc-alloy surface of the
metal substrate forming a covalent bond with the zinc or zinc-
alloy
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surface, and the coating providing chemical resistance for at
least 150 hours in accordance with ASTM B117 standards
where the zinc or zinc-alloy coating of the metal substrate has a
weight of 0.04 oz/ ft2 (12.20 g/ m2).
Appeal Br. 21 (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(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.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections.
The Examiner maintains the rejection of claims 1–12, 15–33, 36–55,
58–76, and 79–87 under 35 U.S.C. § 103(a) over the following prior art
references:
Name Reference Date
Tsutsui US 4,169,916 Oct. 2, 1979
Krippes US 2013/0136947 A1 May 30, 2013

Appellant argues claims 1–12, 15–33, 36–55, 58–76, and 79–87
subject to the rejection as a group. Appeal Br. 3–8. Therefore, claims 2–12,
15–33, 36–55, 58–76, and 79–87 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant contends the Examiner erred in rejecting claim 1 for two
reasons: (1) Krippes is not prior art because the claims are fully supported by
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(and therefore entitled to the priority date of) its earlier filed disclosure, and
(2) the combination with Tsutsui would not have been obvious based on
unexpected results (superior corrosion resistance) and because it would have
rendered Krippes unsatisfactory for its intended purpose. Appeal Br. 10–19.
Appellant’s arguments do not persuade us the Examiner reversibly erred in
rejecting claim 1 as obvious over the teachings of Krippes in view of
Tsutsui.
Krippes is Prior Art to Claim 1
The Examiner finds that Appellant’s application is not entitled to the
benefit of Krippes’ filing date (and therefore Krippes is prior art) because
Krippes “discloses using zinc phosphate to make a solution containing zinc
phosphate,” whereas claim 1 “recite[s] using [a] zinc phosphate forming
compound to make a solution containing zinc phosphate.” Final Act. 4
(emphasis omitted). The Examiner determines that the scope of claim 1,
therefore, is broader than the scope of Krippes. Id. The Examiner further
finds that although Krippes has written description support for using zinc
phosphate to make a solution containing zinc phosphate, Krippes does not
have written description support for “using a compound that is not zinc
phosphate to make a zinc phosphate containing solution.” Id.
Appellant argues a person having ordinary skill in the art would
“interpret” Krippes’ “zinc phosphate compound” to be “a compound that
provides for the [same] reaction between the coating mixture and the zinc or
zinc-alloy surface of the metal substrate” that is disclosed in Appellant’s
Specification. Appeal Br. 12–13 (citing Spec. ¶ 14). Appellant directs us to
Krippes’ disclosure of a reaction between the coating mixture and the
surface of the metal substrate. Id. at 13 (quoting Krippes ¶ 13 (“The coating
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mixture is capable of reacting with the zinc or zinc-alloy surface of the metal
substrate forming a chemical bond with the zinc or zinc-alloy surface.”));
Reply Br. 3–5.
Appellant argues the Examiner’s interpretation of claim 1’s “zinc
phosphate forming compound” meaning “using [a] zinc phosphate forming
compound to make a solution containing zinc phosphate” lacks support in
the Specification because “the phosphate would not be able to react with the
zinc or zinc-alloy surface of the metal component.” Appeal Br. 14.
According to Appellant, the Specification’s “rewording of the term ‘zinc
phosphate compound’ to ‘zinc phosphate forming compound’ did not change
the meaning of the term, and thus, does not constitute new matter.” Id.
(emphasis omitted). Appellant further contends that Krippes reasonably
conveys to a person having ordinary skill in the art that the inventors had
possession of the claimed invention as of Krippes’ filing date because the
Specification and Krippes share the same data and drawings. Id. at 15.
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. Agilent Techs.,
Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379 (Fed. Cir. 2009); Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). The possession test
alone, however, is not always sufficient to meet the written description
requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed.
Cir. 2002). Rather, “the written description requirement is satisfied by the
patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.’”
Id. (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
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1997)). Importantly, it is not a question of whether a person having ordinary
skill in the art might perform the claimed invention based on the disclosure’s
teachings, but whether the application necessarily discloses the claimed
invention. Lockwood, 107 F.3d at 1572.
Appellant’s arguments relate to the recited “coating mixture” and its
function rather than the recited “zinc phosphate forming compound,” which
is contained in “a first solution.” Appeal Br. 21 (Claims Appendix). The first
solution is then combined with “a second solution” and “at least one acrylic
resin” to ultimately “form a coating mixture.” Id. Focusing on the “zinc
phosphate forming compound” recited in claim 1 instead, and comparing it
to Krippes’ “zinc phosphate compound” that is used to form “a first
solution,” we agree with the Examiner that the claimed “zinc phosphate
forming compound” has a broader scope than Krippes’ “zinc phosphate
compound.” Ans. 4. As the Examiner explains, the first solution combines
water with a zinc phosphate forming compound, thus, “zinc phosphate
forming compound” encompasses “anything that contains PO43- and/or Zn.”
Id. The Examiner’s claim construction is consistent with the Specification,
which discloses a compound containing PO43-, such as phosphoric acid, may
be the phosphate coating component or “zinc phosphate forming
compound.” Id. (citing Spec. ¶ 45).
The overlap between the disclosures in Krippes and the Specification
to which Appellant directs us is not persuasive of error because the pertinent
inquiry is whether Krippes’ “zinc phosphate compound” reasonably conveys
possession of a “zinc phosphate forming compound” in the first solution. In
the Reply Brief, Appellant states that if “zinc phosphate forming compound”
means a compound containing PO43- and Zn and Krippes’ “zinc phosphate
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compound” means “zinc phosphate,” then the term is fully supported by
Krippes’ disclosure. Reply Br. 2. However, the term “zinc phosphate
forming compound” is not limited to a compound containing PO43- and Zn.
Instead, the term means a compound containing PO43- and/or Zn, which is
broader than Krippes’ disclosure of PO43- and Zn (zinc phosphate). Ans. 4.
Appellant does not direct us to any specific examples of a zinc phosphate
compound in Krippes’ disclosure to suggest zinc phosphate compound is
broader than zinc and phosphate. Therefore, claim 1 does not have written
description support in Krippes’ disclosure and is not entitled to Krippes’
earlier filing date.
Having determined that it is appropriate to consider the Examiner’s
rejection based on Krippes as a prior art reference, we turn to the Examiner’s
combination of Krippes and Tsutsui.
Obviousness over the Prior Art
The Examiner finds Krippes’ teaches all of claim 1’s limitations,
except that Krippes discloses incorporating zinc phosphate in the first
solution instead of incorporating a zinc phosphate forming compound in the
first solution, as claim 1 recites. Non-Final Action dated Feb. 8, 2018 (“Non-
Final Act.”) 4–5; see Final Act. 3 (rejecting the claims over Krippes and
Tsutsui “for the same reasons as stated in the previous Office action dated
02/08/2018”). The Examiner finds that Tsutsui teaches a composition for
zinc-coated metal that contains, inter alia, phosphoric acid. Non-Final Act.
5. The Examiner further finds that Tsutsui “discloses that both phosphoric
acid and phosphate can be used to improve the corrosion resistance” and
concludes that it would have been obvious to one of ordinary skill in the art
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to replace Krippes’ zinc phosphate with phosphoric acid to make a coating
composition having high corrosion resistance. Id. at 6.
Appellant argues Krippes’ zinc phosphate cannot be replaced with
Tsutsui’s teaching to use phosphoric acid in a coating composition having
high corrosion resistance because Tsutsui’s Example 1 achieved corrosion
resistance for 70 hours and the claimed method’s superiority and unexpected
results (“chemical resistance for at least 150 hours”) rebuts a prima facie
case of obviousness. Appeal Br. 17–18. Appellant asserts that comparing
Krippes’ coating properties to Tsutsui’s Example 1 is appropriate because
neither the testing standards used nor the zinc-coating amounts used
distinguish the two. Id. at 18.
Appellant also contends that Tsutsui’s coating solution contains at
least one or more lithium silicates, which allegedly are highly reactive and
would lead to the formation of unwanted compounds. Id. at 19. For this
reason, Appellant argues that Tsutsui not only teaches away from the
claimed method, but renders modification of Krippes unsatisfactory for its
intended purpose. Id.
Appellant’s arguments are not persuasive of error because the record
supports the Examiner’s finding that Tsutsui teaches the interchangeability
of using either phosphoric acid or phosphate to improve corrosion resistance.
Ans. 9; Tsutsui 3:35–45 (“For the purpose of further improving corrosion
resistance, at least one agent selected from . . . phosphoric acid and
phosphate are added to the above-mentioned solution.”). In view of
Tsutsui’s teaching, a person having ordinary skill in the art would have
expected Krippes’ coating to exhibit corrosion resistance regardless of
whether phosphoric acid or phosphate is used in the first solution. In other
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words, based on the cited record in this Appeal, a person of ordinary skill in
the art would have expected phosphate and phosphoric acid to be
equivalents.
Appellant has not adequately explained why its claimed coating is
unexpectedly superior with respect to corrosion resistance. Ans. 8. Appellant
directs us to Tsutsui’s Example 1 having corrosion resistance of 70 hours,
which is less than half of the 150 hours recited in claim 1 (Appeal Br. 17),
however, Appellant does not show that Tsutsui’s Example 1includes either
phosphate or phosphoric acid. Thus, Appellant does not compare its results
with the closest prior art. “[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closes prior art.” In re Baxter Travenol Labs., 952 F2d 388, 392
(Fed. Cir. 1991).
Appellant’s argument that Tsutsui’s coating contains lithium silicate,
which would have led to the formation of unwanted compounds and
rendered modification of Krippes unsatisfactory for its intended purpose is
not persuasive of error because it is not supported by evidence. It is well
settled that arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, the
record does not support Appellant’s position. The record supports the
Examiner’s finding that Tsutsui teaches the lithium ion itself contributes to
the formation of a film with superior corrosion resistance. Ans. 9; Tsutsui
2:44–56. Appellant does not dispute this finding in the Reply Brief.
The preponderance of the evidence in this appeal record, therefore,
supports the Examiner’s conclusion that the claimed subject matter would
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have been obvious over Krippes’ method in view of Tsutsui’s teaching the
interchangeability of using either phosphoric acid or phosphate to improve
corrosion resistance. Accordingly, we affirm the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a) for the above reasons.
Because we find Appellant’s arguments unpersuasive of error in the
Examiner’s rejection of claim 1 for the reasons discussed above, we likewise
affirm the Examiner’s rejection of claims 2–12, 15–33, 36–55, 58–76, and
79–87 for the same reasons.
CONCLUSION
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 1–12, 15–33, 36–55, 58–76, and 79–87 under
35 U.S.C. § 103(a) as obvious over the cited prior art references.
DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–12, 15–33,
36–55, 58–
76, 79–87
103(a) Krippes, Tsutsui
1–12, 15–33,
36–55, 58–76,
79–87

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)(1)(iv).

AFFIRMED