Ex Parte Claffey et al

Board of Patent Appeals and Interferences

Apr 13, 2009

10934867 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM J. CLAFFEY, JOHN F. McINTYRE
and LESLIE M. BECK
____________________

Appeal 2009-2218
Application 10/934,867
U.S. Patent Publication 2005/0022907
Technology Center 1700
____________________

Decided1: April 14, 2009
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge,
and RICHARD TORCZON and SALLY GARDNER LANE, Administrative
Patent Judges.

McKELVEY, Senior Administrative Patent Judge.

DECISION ON APPEAL
1
A. Statement of the case 2

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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PPG Industries Ohio, Inc. ("PPG"), the real party in interest, seeks 1
review under 35 U.S.C. § 134(a) of a final rejection (mailed 25 January 2
2008). 3
Claim 18-24 are in the application. Claims 1-17 and 25 have been 4
cancelled. 5
The Examiner relies on the following prior art: 6
Lindert 4,963,596 16 Oct 1990
Claffey 5,711,996 27 Jan 1998
7
The reader is advised that "et al's" are not used in this opinion. 8
Lindert and Claffey are prior art under 35 U.S.C. § 102(b). 9
We have jurisdiction under 35 U.S.C. § 134(a). 10
11
B. Findings of fact 12
The following findings of fact are supported by a preponderance of 13
the evidence. 14
To the extent that a finding of fact is a conclusion of law, it may be 15
treated as such. 16
Additional findings as necessary may appear in the Discussion portion 17
of the opinion. 18
The invention 19
The invention relates to a process for coating compositions for 20
pretreating metal surfaces. Specification, ¶ 0001. 21
Pretreatment of metal surfaces such as aluminum, ferrous and zinc 22

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surfaces with inorganic phosphate compositions and/or coatings by 1
contacting such surfaces with an aqueous phosphating solution is well 2
known. Such phosphate pretreatment processes protect the metal surface to 3
a limited extent against corrosion, and serve as an effective base for the later 4
application of organic coating compositions such as paint, lacquer, varnish, 5
primer, synthetic resin, enamel, and the like. Specification, ¶ 0002. 6
While prior art pretreatment processes can be effective, according to 7
PPG they typically require processing conditions involving elevated 8
temperatures, and are typically useful for only selected metal substrates. 9
Specification, ¶ 0007. 10
PPG tells us that there is a need for a pretreatment process which can 11
be conducted at ambient conditions and which can provide effective 12
properties for a variety of substrate materials. Specification, ¶ 0008. 13
In one embodiment, the invention relates to a process for pretreating a 14
metal substrate. The process includes contacting the substrate with an 15
aqueous composition which includes: 16
[1] at least one hydroxy functional cyclic compound present in 17
an amount of at least about 500 ppm; 18
[2] phosphate ions; 19
[3] at least one oxidizer-accelerator; 20
[4] at least one Group IVB metal compound capable of 21
converting to a metal oxide upon application to the metal 22
substrate; and 23
[5] water. 24
Specification, ¶ 0011 25

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The polyhydroxy functional cyclic compound may be selected from 1
the group consisting of [1] polyhydroxy phenolic compounds and 2
[2] heterocyclic nitrogen-containing compounds having polyhydroxy 3
functionality. Specification, ¶ 0016. 4
The cyclic hydroxy compound is selected from cyclic polyhydroxy 5
compounds and substituted phenols. A variety of cyclic hydroxy 6
compounds can be utilized in the present invention and these include 7
phenolic compounds such as catechol, methylene-bridged 8
poly(alkylphenols), coumaryl alcohol, coniferyl alcohol, sinapyl alcohol, 9
lignin and tannic acid, or non-phenolic compounds such as ascorbic acid, 10
hydroxy alkyl celluloses such as hydroxy methyl cellulose, hydroxy ethyl 11
cellulose and hydroxy propyl cellulose, and heterocyclic nitrogen-containing 12
compounds also containing polyhydroxy functionality. Specification, 13
¶ 0017. 14
Tannin or tannic acid is a polyphenolic substance which is a preferred 15
example of the cyclic polyhydroxy compounds which are useful in the 16
aqueous coating compositions of the present invention. Tannins are 17
polyphenolic compounds which are extracted from various plants and trees, 18
which can be classified according to their chemical properties as 19
(a) hydrolyzable tannins; (b) condensed tannins; and (c) mixed tannins 20
containing both hydrolyzable and condensed tannins. Specification, ¶ 0019. 21
The composition used in the process of the invention contains at least 22
one metal compound which is capable of converting to a metal oxide upon 23
application to the metal substrate. The metal compound which is the 24
precursor of the formation of the metal oxide on the surface of the substrate 25

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can be any metal compound capable of converting to a metal oxide. The 1
metal compound is preferably selected from the Group IVB metals, most 2
preferably zirconium or titanium. Incorporation of the metal compound with 3
the cyclic compound, the phosphate ions and the oxidizer-accelerator in the 4
pretreatment composition is said to provide a synergistic effect, which is 5
further said to improve adhesion of subsequently applied top coats, and 6
permits treatment at ambient temperature. While not wishing to be bound by 7
any particular theory, PPG and its inventors believe that the pretreatment 8
composition allows for co-deposition of a metal oxide from the metal 9
compound, as well as the cyclic compound and phosphate ions. 10
Co-deposition is what is said to provide a synergistic effect for pretreatment 11
of metal substrates. Specification, ¶ 0026. 12
As will become apparent, use of the metal compound is the novel 13
feature of the invention. 14
The metal compound is selected from the Group IVB transition metals 15
of the Periodic Table of the Elements, such as those selected from the group 16
consisting of titanium, zirconium and hafnium ions and mixtures thereof. 17
The Group IVB metal, and in particular zirconium, is provided in ionic form, 18
which is easily dissolved in the aqueous composition. The metal ions may 19
be provided by the addition of specific compounds of the metals, such as 20
their soluble acids and salts, including, for example, nitrate, sulfate, fluoride, 21
acetate, citrate and/or chloride salts, and mixtures and combinations thereof. 22
Soluble alkali metal salts are particularly desirable. Examples of useful 23
compositions include fluorozirconic acid, fluorotitanic acid, ammonium 24
and alkali metal fluorozirconates and fluorotitanates, zirconium fluoride, 25

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zirconium nitrate, zirconium sulfate, and the like. Hexafluorozirconic acid 1
and hexafluorotitanic acid and their soluble salts are particularly preferred. 2
Examples of other particularly useful compounds include fluorotitanates and 3
fluorozirconates having coordination numbers from 4 to 7, such as 4
heptafluorozirconate, hexafluorozirconate, pentafluorozirconate, and 5
tetrafluorozirconate. Specification, ¶ 0027. 6
Claim 18 7
Independent claim 18 and dependent claims 19-24 are on appeal. 8
PPG does not single out any of dependent claims 19-24 for separate 9
consideration apart from independent claim 18. 10
Accordingly, we decide the appeal on the basis of independent 11
claim 18. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 12
Claim 18 (reproduced from the Claims Appendix of the Appeal Brief) 13
reads [bracketed matter added]: 14
18. A process for pretreating a metal substrate 15
comprising contacting the substrate with an aqueous 16
composition which comprises: 17
a) at least one hydroxy functional cyclic compound 18
present in an amount of at least about 500 ppm, said hydroxy 19
functional cyclic compound selected from the group consisting 20
of [1] hydroxy phenolic compounds and [2] heterocyclic 21
nitrogen-containing compounds having hydroxy functionality; 22
b) phosphate ions; 23
c) at least one oxidizer-accelerator selected from 24
[1] alkali metal chlorate, [2] alkali metal bromate, [3] alkali 25

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metal perchlorate, [4] alkali metal chlorite, [5] alkali metal 1
nitrite, [6] alkali metal perborate, [7] ammonium chlorate, 2
[8] ammonium bromate, [9] ammonium perchlorate, 3
[10] ammonium chlorite, [11] ammonium nitrite, 4
[12] ammonium perborate, [13] hydrogen peroxide, 5
[14] nitroguanidine, [15] halo- or nitro-substituted benzene 6
sulfonic acids, [16] alkali metal salts of halo- or nitro-7
substituted benzene sulfonic acids, [17] ammonium salts of 8
halo- or nitro-substituted benzene sulfonic acids, and 9
[18] mixtures thereof; 10
d) at least one Group IVB metal compound capable of 11
converting to a metal oxide upon application to the metal 12
substrate; and 13
e) water, and rinsing the metal substrate with an aqueous 14
solution containing a silane after contact with the aqueous 15
composition. 16
Prior art 17
(1) Claffey 18
Claffey describes all the elements of claim 18 except using a Group 19
IVB metal compound. Appeal Brief, page 4. 20
Claffey also describes using a source of fluoride in the compositions 21
of its process. Id. 22
The suitable fluoride compounds include [1] alkali metal fluorides 23
such as sodium fluoride, [2] ammonium fluoride salts such as ammonium 24
fluoride and ammonium bifluoride, [3] other inorganic fluoride salts such as 25

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sodium silicofluoride, [4] ammonium silicofluoride, [5] hydrofluoric acid, 1
[6] hydrofluorosilicic acid and [7] fluroboric acid. Id. 2
Hydrofluorosilicic acid is also known as hexafluorosilicic acid. Id. 3
None of the Claffey fluoro compounds contains a Group IVB metal. 4
To PPG's description of the scope and content of Claffey, we add the 5
following. 6
The aqueous composition described by Claffey for pre-treating 7
surfaces includes a cyclic polyhydroxy compound. Col. 2:32-34. 8
Tannin is described as being a suitable cyclic polyhydroxy compound. 9
Col. 3:36. 10
According to Claffey, the fluoride compound is added to introduce 11
fluoride ions into the coating compositions. Col. 5:9-10. 12
(2) Lindert 13
Lindert describes treating a metal substrate with an aqueous coating 14
composition comprising tannin. Appeal Brief, page 4. 15
Tannin is a species within the genus of element a) of claim 18. Id. 16
To improve the water solubility of tannin (which contains amine 17
functionality), an acid neutralizing agent may be used. Id.; Lindert, 18
col. 8:17-39. 19
Specifically, Lindert discloses [co. 8:10-39]: 20
These Polymer Materials [, e.g., tannin,] of the present 21
invention may be made soluble or dispersible in water or 22
organic solvent-type carriers. They may therefore be employed 23
as a treatment solution when dissolved in water or in an organic 24

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solvent such as, for example, ethanol. Preferably, the Polymer 1
Material selected is used in aqueous solution as a carrier. 2
Accordingly, it is highly desirable to provide or improve 3
the water solubility or water dispersibility of the selected 4
Polymer Material. In addition to employing the 5
polyhydroxyalkyl-amine functionality, this is preferably done 6
with an acid used for neutralization and/or complexation of a 7
"Z" moiety thereof. Such acids may be organic or inorganic. 8
Useful and preferred acids for this purpose carbonic acid, acetic 9
acid, citric acid, oxalic acid, ascorbic acid, phenylphosphonic 10
acid, chloromethylphosphonic acid; mono, di and 11
trichloroacetic acid, trifluoroacetic acid, nitric acid, phosphoric 12
acid, hydrofluoric acid, sulfuric acid, boric acid, hydrochloric 13
acid, hexafluorosilicic acid, hexafluorotitanic acid, 14
hexafluorozirconic acid, and the like; these may be employed 15
alone or in combination with each other and may be neutralized 16
by conventional acid-base reactions or by complexing. In a 17
highly preferred embodiment, the addition of water to the 18
neutralized, overneutralized or partially neutralized treatment 19
compounds mentioned above results in a water soluble or 20
dispersible solution or emulsion of the polymer useful for metal 21
treatment. 22
23
C. Discussion 24
1. Introduction 25

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At the outset, we express our appreciation for the way in which 1
Mr. Uhl, counsel for PPG, presented the appeal. He forthrightly, candidly 2
and—from our point of view—refreshingly acknowledged that there is only 3
one difference between claim 18 and Claffey. In presenting the argument, 4
counsel came right to the point. Mr. Uhl's approach also allowed the 5
Examiner to come right to the point. In our view, Mr. Uhl's approach would 6
serve as a model for others. 7
2. The obviousness of the claimed invention 8
The issue in the appeal as its reaches the Board can be broadly stated 9
as follows: Where a first prior art reference describes including a "first" 10
compound in a composition to accomplish a "first" purpose, and a second 11
prior art reference describes the use of a "similar" but different compound in 12
similar compositions for a "second" purpose, would it be obvious to 13
substitute the "similar" compound for the "first" compound of the first prior 14
art reference? On the facts in this case, we conclude: "No." Unfortunately, 15
the "No" does not end the obviousness inquiry. 16
Claim 18 calls for "at least one Group IVB metal compound capable 17
of converting to a metal oxide upon application to the metal substrate." 18
PPG's purpose in adding the Group IVB metal is plain from the claim. 19
Claffey describes use of various compounds to "introduce the fluoride 20
ion into the coating compositions." Col. 5:9-10. As noted earlier, suitable 21
fluoride compounds described by Claffey include [1] alkali metal fluorides 22
such as sodium fluoride, [2] ammonium fluoride salts such as ammonium 23
fluoride and ammonium bifluoride, [3] other inorganic fluoride salts such as 24

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sodium silicofluoride, [4] ammonium silicofluoride, [5] hydrofluoric acid, 1
[6] hydrofluorosilicic acid and [7] fluoroboric acid. Col. 5:11-16. 2
Hydrofluorosilicic acid would be a non-metal compound—silicone 3
being a non-metal. The same is true of fluoroboric acid—boron also being a 4
non-metal. 5
Lindert on the other hand describes the use of various compounds—6
some Group IVB metal containing compounds and some not Group IVB 7
metal containing compounds—added to compositions similar to PPG's, but 8
for the purpose of providing or improving "the water solubility or water 9
dispersibility of the selected Polymer Material" [e.g., tannin]. Col. 8:18-39. 10
As noted earlier, suitable compounds include [1] carbonic acid, [2] acetic 11
acid, [3] citric acid, [4] oxalic acid, [5] ascorbic acid, [6] phenylphosphonic 12
acid, [7] chloromethylphosphonic acid; [8] mono, [9] di and [10] 13
trichloroacetic acid, [11] trifluoroacetic acid, [12] nitric acid, [13] 14
phosphoric acid, [14] hydrofluoric acid, [15] sulfuric acid, [16] boric acid, 15
[17] hydrochloric acid, [18] hexafluorosilicic acid, [19] hexafluorotitanic 16
acid, and [20] hexafluorozirconic acid. 17
Hexafluorotitanic acid and hexafluorozirconic acid would be Group 18
IVB metal compounds. 19
The remaining compounds described by Lindert would not be Group 20
IVB metal compounds. 21
As a general proposition in resolving obviousness issues, it will often 22
be necessary to determine where there was an apparent reason in the prior art 23
to combine the known elements of one prior art reference (e.g., Lindert) with 24

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the known elements of another prior art reference (e.g., Claffey). Cf. KSR 1
Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 127 S.Ct. 1727, 1740 (2007). 2
In the case before us there is a reason to combine the known elements. 3
One skilled in the art seeking to provide or improve water solubility or 4
water dispersibility of the tannin described by Claffey would have known 5
that the compounds described by Lindert could be added to the Claffey 6
compositions. By adding the Lindert compounds to the Claffey composition 7
one would get exactly what Lindert predicts—improved solubility or 8
dispersibility. 9
What we have not been able to find on this record is a reason why one 10
would substitute the Lindert compounds for the Claffey compounds. The 11
described purpose of the Lindert compounds is different from the purpose of 12
the Claffey compounds. So one skilled in the art reasonably could ask: 13
"Why would I want to substitute the Lindert compounds for the Claffey 14
compounds?" On this record, we have no cogent answer. 15
One other factor needs to be considered. PPG maintains that to 16
"reach" the claimed invention, one skilled in the art would have to pick and 17
choose from the Lindert compound list and not all compounds are Group 18
IVB metal compounds. Appeal Brief, page 6. 19
The fact is one skilled in the art is taught for Lindert's purpose to use 20
any of the Lindert compounds, including the two Group IVB metal 21
compounds. The use for Lindert's purpose is in the public domain and 22
therefore one skilled in the art has a public domain right to pick and choose 23
any of the Lindert compounds to accomplish Lindert's purpose. When the 24
two Group IVB metal compounds are used, inherently PPG's function of 25

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converting the metal to a metal oxide would result. In essence, the question 1
becomes: "Which of the Lindert compounds do I have on the shelf today 2
that I can use to get better solubility or dispersibility?" Two options of the 3
twenty offered by Lindert fall within the scope of PPG's claims. On this 4
record, no reason is apparent why one skilled in the art should not be able to 5
use any of the twenty Lindert compounds. 6
We recognize that Lindert's purpose differs from PPG's. However, 7
neither the particular motivation nor the avowed purpose of the applicant 8
controls. See KSR, 127 S. Ct. at 1741-42; In re Dillon, 919 F.2d 688 (1990) 9
(en banc); and In re Kemps, 97 F.3d 1427 (Fed. Cir. 1996). 10
3. Further proceedings 11
While we affirm the Examiner's decision to reject the claims as 12
unpatentable under § 103(a), we have not been able to agree with the 13
Examiner's rationale in support of the rejection. Therefore, our rationale is 14
different from that of the Examiner. 15
PPG argued the appeal on the basis that it would not have been 16
obvious to substitute the Lindert compounds for the Claffey composition. 17
On the other hand, we decide the appeal on the basis that it would have been 18
obvious to add the Lindert compounds to the Claffey composition. 19
PPG states that its invention accomplishes certain objectives which 20
are said not to be accomplished in the prior art. Specification ¶¶ 0007-0008. 21
In various examples, PPG says it compares prior art coating compositions 22
with coating compositions of the invention. Specification ¶ 0061. The 23
examples may or may not show that use of the two Lindert Group IVB metal 24
compounds to achieve conversion of metal to metal oxide involves 25

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unpredictability. The more unpredictability involved, the better the odds of 1
non-obviousness and vice versa. 2
While we recognize the presence of the examples, we do not feel it 3
appropriate to evaluate the example evidence in the first instance without 4
input from both the Examiner and PPG. Moreover, given our rationale, PPG 5
may wish to supplement the examples with additional Rule 132 evidence. 6
Lastly, PPG may also wish to add a limitation in claim 18 whereby 7
"contacting" occurs "at ambient temperatures" as described at ¶ 0008, and 8
possibly other parts, of the specification. 9
Consistent with procedural due process and fundamental fairness, we 10
designate our affirmance as a new ground of rejection. 11
D. Decision 12
Upon consideration of the appeal, and for the reasons given herein, 13
it is 14
ORDERED that the decision of the Examiner rejecting 15
claims 18-24 over the prior art is affirmed. 16
FURTHER ORDERED that since our rationale for affirmance 17
differs from that of the Examiner's rejection, our affirmance is designated as 18
a new rejection. 37 C.F.R. § 41.50(b) (2006). 19
FURTHER ORDERED that our decision is not a final agency 20
action. 21
FURTHER ORDERED that within two (2) months from the 22
date of our decision appellant may further prosecute the application on 23
appeal by exercise one of the two following options: 24

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1. Request that prosecution be reopened by submitting 1
an amendment or evidence or both. 37 C.F.R. § 41.50(b)(1) (2006). 2
2. Request rehearing on the record presently before the 3
Board. 37 C.F.R. § 41.50(b)(2) (2006). PPG is authorized to include in any 4
request for rehearing a discussion of why the evidence of record supports 5
unpredictability. In the event PPG exercises this option, we may enter an 6
order remanding the application obtain input on unpredictability from the 7
Examiner. 8
FURTHER ORDERED that no time period for taking any 9
subsequent action in connection with this appeal may be extended under 10
37 C.F.R. § 1.136(a)(1)(iv) (2008). 11

AFFIRMED
New ground of rejection-37 C.F.R. § 41.50(b) (2008)

MAT

PPG Industries, Inc.
Intellectual Property Department
One PPG Place
Pittsburgh PA 15727