Ex Parte Chen et al

Board of Patent Appeals and Interferences

Sep 26, 2003

09746474 (B.P.A.I. Sep. 26, 2003)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GUOCUN CHEN and STEPHEN R. MOYSAN III
__________
Appeal No. 2003-2003
Application No. 09/746,474
__________
ON BRIEF
__________
Before KIMLIN, GARRIS, and WALTZ, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 1-14 as amended subsequent to the final
rejection. These are all of the claims in the application.
The subject matter on appeal relates to an article having on
its surface a nickel colored coating comprising a color layer
comprised of refractory metal nitride or refractory metal alloy
nitride wherein the nitrogen content is a substoichiometric
amount of from about 6 to about 45 atomic percent. This appealed
Appeal No. 2003-2003
Application No. 09/746,474
1 In the “GROUPING OF CLAIMS” section of the brief, the
appellants state that “[a]ll the claims on appeal stand or fall
together” (brief, page 3). For this reason and because
separately rejected dependent claims 8-11 have not been
separately argued by the appellants, we will focus on claim 1,
(continued...)
2
subject matter is adequately represented by independent claim 1
which reads as follows:
1. An article having on at least a portion of its surface a
coating having the color of nickel comprising:
at least one basecoat layer comprised of nickel;
color layer comprised of refractory metal nitride or
refractory metal alloy nitride wherein the nitrogen content of
said refractory metal nitride or refractory metal alloy nitride
is a substoichiometric amount of from about 6 to about 45 atomic
percent.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Moysan, III et al. (Moysan ‘233) 5,552,233 Sep. 3, 1996
Moysan, III et al. (Moysan ‘972) 5,626,972 May 6, 1997
Welty et al. (Welty) 6,132,889 Oct. 17, 2000
Meckel 6,196,936 Mar. 6, 2001
(filed Jul. 25, 1997)
Claims 1-7 and 12-14 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Welty and Meckel; claims 8 and 9 are
correspondingly rejected over these references and further in
view of Moysan ‘972; and claims 10 and 11 are correspondingly
rejected over Welty and Meckel and further in view of Moysan
‘233.1
Appeal No. 2003-2003
Application No. 09/746,474
1(...continued)
the sole independent claim on appeal, in assessing the merits of
the rejections before us. See In re Wood, 582 F.2d 638, 642, 199
USPQ 137, 140 (CCPA 1978) and compare In re McDaniel, 293 F.3d
1379, 1382-85, 63 USPQ2d 1462, 1464-66 (Fed. Cir. 2002). Also
see 37 CFR § 1.192(c)(7)(8)(2002).
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Rather than reiterate the respective positions advocated by
the appellants and by the examiner, we refer to the brief (i.e.,
Paper No. 19, filed February 7, 2003) as well as the reply brief
and to the answer as well as the final Office action (i.e., Paper
No. 10, mailed May 15, 2002) for a complete exposition thereof.
OPINION
For the reasons set forth in the answer (as well as the
final Office action) and below, we will sustain each of the above
noted rejections.
We share the examiner’s conclusion that it would have been
obvious for one with an ordinary level of skill in the art to
provide Welty’s coated article with a coating having a nickel or
lustrous gray or silver color such as a titanium aluminum
nitride, a chromium nitride or a di-titanium nitride coating of
the type taught by Meckel (e.g., see lines 6-9 in column 8)
wherein this last mentioned coating contains a substoichiometric
amount of nitrogen in a range of from about 6 to about 45 atomic
percent. As explained by the examiner (and not contested by the
Appeal No. 2003-2003
Application No. 09/746,474
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appellants), this proposed combination would have been motivated
by the commercial desirability of a finish or coating having the
aforementioned color.
In support of their contrary view, the appellants argue that
“[n]owhere does Meckel disclose or suggest a nickel color” and
that “[n]owhere does Meckel disclose or suggest a
substoichiometric amount of nitrogen” (brief, page 5). In this
latter regard, the appellants further argue that “[c]olumn 8,
lines 2-9 [of Meckel, upon which the examiner relies in support
of his obviousness conclusion,] is a one sentence disclosure on
using excess nitrogen to vary color” (brief, page 5). Thus, it
is the appellants’ contention that “[t]he passages of Meckel
[i.e., the aforementioned disclosure at lines 2-9 in column 8]
teach doing just the opposite of what Appellant has [sic,
Appellants have] done, i.e., using excess nitrogen rather than
using Appellants’ substoichiometric amount of nitrogen!” (brief,
page 10).
Like the examiner, we perceive no distinction between the
lustrous gray and silver colors explicitly disclosed by Meckel
and the nickel color required by appealed independent claim 1.
Significantly, the appellants have offered no explanation in
support of their unembellished position that these colors of
Appeal No. 2003-2003
Application No. 09/746,474
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Meckel do not satisfy the nickel color requirement of claim 1.
It appears, therefore, that the appellants’ position amounts to
nothing more than the observation that patentee does not use the
word “nickel” in his description of color which is
indistinguishable from the here claimed color. Such an
observation, though factually accurate, simply does not militate
against a nonobviousness conclusion.
We also share the examiner’s view that the appellants have
erroneously characterized Meckel as teaching the use of excess
nitrogen for each of the color coatings including the lustrous
gray and silver color coatings disclosed in lines 2-9 of column
8. As correctly explained by the examiner, patentee’s teaching
of excess nitrogen relates only to providing a greenish tinge to
the champagne color of a zirconium nitride coating. It follows
that the appellants are factually incorrect in arguing that
Meckel teaches “doing just the opposite of what Appellant has
[sic, Appellants have] done, i.e., using excess nitrogen rather
than using Appellants’ substoichiometric amount of nitrogen”
(brief, page 10).
With respect to the here claimed requirement that the color
layer contain a substoichiometric amount of nitrogen, we remind
the appellants that, generally speaking, it would have been
Appeal No. 2003-2003
Application No. 09/746,474
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obvious for an artisan with ordinary skill to develop workable or
even optimum ranges for an art-recognized, result-effective
parameter. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936-37 (Fed. Cir. 1990); In re Boesch, 617 F.2d 272, 276, 205
USPQ 215, 219 (CCPA 1980); In re Aller, 220 F.2d 272, 276, 205
USPQ 233, 235 (CCPA 1955). Here, Meckel repeatedly discloses
that varying the ratios and amounts of his coating composition
ingredients including nitrogen results in varying colors (e.g.,
see lines 40-49 in column 2, lines 21-28 in column 7, and lines
2-14 in column 8). Because the Meckel patent evinces that the
amount of ingredients including nitrogen in color coating
compositions is an art-recognized, result-effective parameter
vis-à-vis color, we conclude that it would have been obvious for
the artisan to develop workable or even optimum ranges for the
parameter of nitrogen content, thereby yielding a nitrogen
content for patentee’s lustrous gray or silver color coatings
which is in the substoichiometric range as required by the
independent claim on appeal.
Finally, in an apparent attempt to support their
nonobviousness position, the appellants state that “Meckel
teaches, varying both the nitrogen content and carbon content in
the carbonitride coating” (brief, page 10). As properly
Appeal No. 2003-2003
Application No. 09/746,474
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indicated by the examiner, this statement has no apparent
relevance to Meckel’s lustrous gray or silver color coatings
which do not contain carbon. In any event, the “comprised of”
language in appealed independent claim 1 permits the inclusion of
other unrecited elements and thus does not exclude carbon as
implied by the appellants’ statement. See In re Baxter, 656 F.2d
679, 686, 210 USPQ 795, 802 (CCPA 1981).
In light of the foregoing and for the reasons expressed by
the examiner, it is our determination that the Welty and Meckel
references establish a prima facie case of obviousness with
respect to the independent claim on appeal which the appellants
have failed to successfully rebut with arguments and/or evidence
of nonobviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). It follows that we will
sustain the examiner’s section 103 rejection of claims 1-7 and
12-14 as being unpatentable over Welty and Meckel. The
additional section 103 rejections of claims 8-11 as being
unpatentable over these references and further in view of the
Moysan references likewise will be sustained since these
rejections have not been contested by the appellants on the
record before us.
Appeal No. 2003-2003
Application No. 09/746,474
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The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Thomas A. Waltz )
Administrative Patent Judge )
BRG:tdl
Appeal No. 2003-2003
Application No. 09/746,474
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Myron B. Kapustij
Masco Corporation
21001 Van Born Road
Taylor, MI 48180