Ex Parte Brier et al

Patent Trial and Appeal Board

Mar 25, 2013

11407846 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/407,846 04/20/2006 Duane A. Brier GP-307775-NAPD-LCH 7223
81466 7590 03/26/2013
MacMillan, Sobanski & Todd, LLC
One Maritime Plaza
720 Water Street
5th Floor
Toledo, OH 43604
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
03/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DUANE A. BRIER and PATRICK J. MC KERNAN
____________

Appeal 2011-012893
Application 11/407,846
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a non-final rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6.
Claims 1 and 2 are illustrative of the subject matter on appeal:
1. A method of producing a two tone paint
application on a surface comprising the steps of:
(a) initially preparing the surface in a first color area and
a second color area;
(b) applying a first base coat for a first color in the first
color area;
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Application 11/ 407,846

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(c) applying a first clear coat over the first base coat in
the first color area and over the second color area;
(d) applying a second base coat for a second color in the
second color area; and
(e) applying a second clear coat over the first clear coat
in the first color area and over the second base coat in the
second color area.

2. The method of claim 1 wherein step (d) is further
defined by masking the first color area prior to applying the
second base coat, allowing the second base coat to flash long
enough to skin over, and removing the masking after the second
base coat has skinned over.

Appellants (App. Br. 4) request review of the following obviousness
rejections from the Examiner’s Non-Final Office action:1
Claims 1, 2, 5, 7-11 and 14-16 are rejected under 35 U.S.C. § 102(b)
as unpatentable over Dunlop, (US Application 2004/0175551 A1). Claims
3 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dunlop
and Lin (US Application 2006/0045965 A1). Claims 4 and 6 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Dunlop and Lettmann (US
Application 2004/0063846 A1).

OPINION
After consideration of the Examiner’s rejections and Appellants’
responses we affirm the Examiner’s decision to reject claims 1 and 6-10.
However, we reverse the Examiner’s decision to reject claims 2-5, and 11-
16.

1 The Examiner in the Answer (pp. 4-5) indicated that claim 13 was
inadvertently rejected as anticipated under § 102(b). The Examiner
indicated that claim 13 is rejected as obvious under § 103(a).
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In a case such as this, we must analyze the claim language to
determine the scope and meaning of each contested limitation. See Gechter
v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997). The subject matter of
claim 1 specifies in part, applying a first clear coat over the first base coat in
the first color area and over the second color area, applying a second base
coat for a second color in the second color area; and applying a second clear
coat over the first clear coat in the first color area and over the second base
coat in the second color area.
The claim language does not specify that the first base coat and first
clear coat are not applied over the entire substrate (i.e., only to the first color
area). The claim language does not exclude the application of a mask in the
first color area after application of the first clear coat. The claim language
also does not require the removal of the mask from the first color area prior
to application of the second clear coat. This claim interpretation is
consistent with the description appearing in the Specification [0005] as well
as dependent claim 2 which describes the application of a mask and removal
of the mask prior to application of the second clear coat.
The Anticipation Rejection2
Claim 1
Utilizing the above claim interpretation, we agree with the Examiner
that the subject matter of claim 1 is anticipated by Dunlop. The Examiner
found that Dunlop (¶¶ [0005] [0006]) describes a two-toned painting process
that anticipates the subject matter of claim 1. Dunlop specifically discloses
the application of a primer layer to the substrate of the vehicle, the

2 Appellants did not provide substantive arguments addressing claims 7-10
which all depend upon independent claim 1. Accordingly, we select claim 1
as representative of these claims.
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application of the first color coat and first clear coat to the vehicle which are
allowed to dry to form a first base coat and first clear coat over substantially
the entire vehicle body. ([0005]). Dunlop discloses a main body portion
(first color area) is covered by a mask followed by application of the second
color coat to the unmasked portion of the vehicle body. “While the second
base coat composition is still wet, a second clear coat composition is
typically then applied over the second base coat composition and possibly
even some or all of the mask.” ([0006] emphasis added). The process of
applying the second clear coat over the vehicle body including the masked
portion anticipates the subject matter of claim 1. The subject matter of the
claim 1 does not require the direct application of the second clear coat on to
the first clear coat without intervening layers.
For the foregoing reasons, the Examiner's rejection of claims 1 and 7-
10 is affirmed.
Claims 2 and 113
The subject matter of claim 2 and independent claim 11 require
masking the first color area prior to applying the second base coat, removing
the masking after the second base coat has skinned over and subsequent
thereto application of the second clear coat over the first and second color
areas.
The Examiner incorrectly found that Dunlop ([0006]) describes this
method. (Ans. 5). Appellants correctly argue, contrary to the Examiner's
position, that Dunlop does not disclose the de-masking of the first color area
prior to application of the second clear coat. (App. Br. 6-8).

3 Appellants did not provide substantive arguments addressing claims 5 and
14-16 which all depend from either claim 2 or independent claim 11.
Accordingly, we select claims 2 and 11 as representative of these claims.
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For the foregoing reasons, the Examiner’s rejection of claims 2, 5, 11
and 14-16 is reversed.
The Obviousness Rejections
Claim 6
The subject matter of claim 6 further defines the subject matter of
claim 1 by requiring scuffing of the first clear coat prior to step (d).
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to use a scuffing method in between
application of various layers to improve adhesion. The Examiner found that
Lettmann describes scuffing a coating material would improve the adhesion
of subsequently applied layers. (Lettmann [0122]). Thus the Examiner
found that it would have been obvious to modify the process of Dunlop to
include a scuffing step to improve the adhesion of subsequently applied
layers. (Answer 6-7). A person of ordinary skill in the art would have
reasonably expected that the application of a layer to a substrate that had
been scuffed would have allowed better adhesion.

Claims 3, 4 and 12
We reverse the rejection of claims 3, 4 and 12 because these claims
depend on either claim 2 or 11. The additional references cited by the
Examiner do not address the distinguishing features discussed above for
claims 2 and 11.
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ORDER
The rejection of claims 1 and 7-10 under 35 U.S.C. § 102(b) is
affirmed.
The rejection of claim 6 under 35 U.S.C. § 103(a) is affirmed
The rejection of claims 2, 5, 11 and 14-16 under 35 U.S.C. § 102(b) is
reversed.
The rejections of claims 3, 4 and 12 under 35 U.S.C. § 103(a) are
reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED-IN-PART

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