Ex Parte Duprez et al

Patent Trial and Appeal Board

Feb 28, 2018

12747105 (P.T.A.B. Feb. 28, 2018)

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.
12/747,105 11/08/2010 Lode Duprez 704.1006 4467
23280 7590 03/02/2018
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte LODE DUPREZ, PHILIPPE GOUSSELOT, MARC LEVEAUX,
and JAVIER GONZALEZ JIMENEZ1
Appeal 2017-003739
Application 12/747,105
Technology Center 1700
Before BEVERLY A. FRANKLIN, MICHAEL P. COLAIANNI and
MICHAEL G. McMANUS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—4, 8, 10-13, and 15-38. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as ArcelorMittal France
Appeal 2017-003739
Application 12/747,105
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. A steel sheet or part comprising:
a composition of the steel sheet or part being suitable for
enameling, the composition including carbon in an amount of 0.08%
or less by weight; and
a coating on at least one side of the steel sheet or part including
non-oxide ceramic particles and a polymer, wherein:
the non-oxide ceramic particles are homogeneously dispersed in
the polymer,
a coating weight of the-non-oxide ceramic particles is between
0.001 and 0.250 g/m2,
a melting point of the non-oxide ceramic is above 600°C, and
the polymer, when heated from ambient temperature to 800°C in
air, gets burned at more than 80% by weight at 440°C and is
completely burned at 600°C.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Olt US 2,602,758 Jul. 08, 1952
Sepeur US 2010/0098956 A1 Apr. 22, 2010
Sepeur WO 2007/076766 A2 Jul. 07, 2007
Bramfitt, Mechanical Engineers ’ Handbook: materials and mechanical
Design, Vol. 1, Third Edition, Chapter 1, pp. 1-38.
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Appeal 2017-003739
Application 12/747,105
THE REJECTION
Claims 1—4, 8, 10-13, and 15-38 are rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Sepeur (using Sepeur (US
2010/0098956) as the English language equivalent), in view of Olt and
Bramfitt.
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied art. Accordingly, we
sustain the Examiner’s rejection on appeal for the reasons set forth in the
Final Office Action and in the Answer, and affirm, with the following
emphasis.
Appellants argue that the downstream processes disclosed by Sepeur
in Tf24 (phosphatizing and cataphoretic dip coating) are different than
enameling. Appeal Br. 8. However, we agree with the Examiner that such
arguments are unpersuasive because Sepeur only gives these as example
downstream coating processes, and not that these are the only customary
downstream processing that are usable. Ans. 2
Appellants also argue that ^ 17 of Sepeur implies that the steel of
Sepeur is only used for welding, not for enameling. Appeal Br. 8-9, 15.
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Appeal 2017-003739
Application 12/747,105
However, as explained by the Examiner, the enameling discussed in
T|17 of Sepeur is a different type of enameling than that of Olt. Ans. 2-3.
The Examiner explains that the description of an organic coating with zinc
pigment discussed in 17 of Sepeur refers to an enamel paint, not a glass
enamel coating. Further, the Examiner explains that this disclosure is a
discussion that the primer coating disclosed by Sepeur is preferable to an
organic enamel paint primer, not that downstream processes cannot be glass
enamel. Ans. 2-3.
Appellants then argue that because Examples 1, 2, and 4 of Sepeur use
graphite powder (a carbon containing material), the steel of Sepeur must
contain carbon. Appeal Br. 9. However, we agree with the Examiner that
Sepeur is not so limited. The Examiner points out that graphite 36)
is taught as one of the usable greases, not as a required element of Sepeur.
Ans. 3. The Examiner points out that tungsten disulphide, for example, one
of the other disclosed usable greases in Sepeur, does not contain carbon. Id.
Appellants also argue that because Bramfitt teaches that steel for
enameling should be low-carbon steel, that the steel of Sepeur would not be
usable for enameling because it contains carbon. Appeal Br. 9.
However, we agree with the Examiner’s response made on page 3 of
the Answer wherein the Examiner states that the steel of Sepeur is not
required to contain carbon. The Examiner also explains that the teachings of
Bramfitt were used in the rejection to teach a specific type of steel to be used
as the steel for Sepeur in view of Olt, not that Sepeur itself explicitly
disclosed low carbon steel as characterized by Appellants. Ans. 3.
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Appeal 2017-003739
Application 12/747,105
Appellants next argue that Sepeur does not disclose steel with an
enamel coating, and that the use of steel suitable for enameling would be
hindsight picking and choosing and circular reasoning. Appeal Br. 10.
However, the Examiner explains that the rejection was not that Sepeur
alone teaches enamel covered steel, but that the coated steel of Sepeur with
the initial coating acting as a primer could be downstream coated with the
enamel of Olt to provide a glossy surface coating. Ans. 3—4.
In response to Appellants’ argument that the Examiner's conclusion
of obviousness is based upon improper hindsight reasoning (Appeal Br. 11),
the Examiner reiterates that the motivation to combine the references is that
Sepeur teaches the coating on the steel can be a primer for downstream
processing, and Olt teaches a downstream enameling process for steel that
provides a glossy surface coating. The Examiner explains that the steel of
Sepeur with the glossy enamel coat of Olt is now enamel coated steel and
Bramfitt provides guidance on the proper steel to choose for an enameled
product. Thus, it is the Examiner's position that the rejection is not based on
hindsight, but rather is based on the motivation to combine found in the
references themselves. Ans. 4. We agree.
Appellants also argue that the coating weight of the particles has
criticality and that the range of Sepeur is far broader than claimed. Appeal
Br. 11-13. However, the Examiner states that cited statement found in ^37
of the Specification is only a conclusionary statement of the benefits of the
claimed coating range, and that Appellants have not provided data
commensurate in scope with the claims to show any unexpected result for
the claimed range in order to overcome the overlapping range of Sepeur.
Ans. 4.
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Appeal 2017-003739
Application 12/747,105
Appellants also argue that the disclosure in Sepeur of an amount of
filler in the coating does not equate to the claimed coating weight. Appeal
Br. 13-14. However, the Examiner explains that the rejection was not that
the amount alone overlapped the claimed range, but rather, that the
coating thickness of Sepeur can be in the lower micron range 23) and
given the amount of the tungsten disulphide filler and the coating thickness,
the teachings of Sepeur encompass coating weights as claimed. We agree.
Ans. 5.
Appellants argue that the low micron thickness of Sepeur is restricted
to the 10 to 40 micron thickness of the examples. Appeal Br. 12. However,
the Examiner states that Appellants cannot merely rely on the examples.
The Examiner points out that Sepeur (^23) does not limit the coating method
or the thickness to these values. Ans. 5.
Appellants then provide a calculation of the coating weight of
tungsten disulphide using example thicknesses and a purportedly preferable
filler weight and another calculation replacing the graphite grease of an
example with tungsten disulphide. Appeal Br. 12. However, the Examiner
reiterates that the teachings of Sepeur are not limited to the
example thicknesses and weights. Ans. 5.
Appellants also argue that Sepeur teaches away from the claimed
coating weight. Appeal Br. 13. However, as explained by the Examiner on
page 6 of the Answer, a prior art reference does not teach away if the
“disclosure does not criticize, discredit, or otherwise discourage the solution
claimed”. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants also argue that because Sepeur discloses a broad range of
filler, Sepeur teaches away because the amount of filler does not matter in
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Appeal 2017-003739
Application 12/747,105
Sepeur. Appeal Br. 13. However, the Examiner rightfully points out that
Appellants have not provided data to show the criticality of the claimed
range. Ans. 6.
Appellants next argue that the Examiner did not address the amount of
non-oxide particles in claim 37. Appeal Br.14, 16. However, the Examiner
points out that this limitation was addressed when discussing the rejection
involving claims 1 and 15, and that the discussion on page 5 of the Final
Office Action was only to address the limitations in claim 37 that had not
already been previously addressed in the rejection. Ans. 6-7.
Appellants argue that the steel of Sepeur would not be coated with
enamel since it is subjected to high temperature processing and welding.
Appeal Br. 15. However, we agree with the Examiner that these
processes fl|24) are carried out prior to the downstream process such as
enameling where the coating of Sepeur would then function as primer. Ans.
6.
Notably, there is no reply brief in the record that disputes the
Examiner’s aforementioned response to Appellants’ arguments.
In view of the above, we affirm the rejection.
DECISION
The rejection is affirmed.
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Appeal 2017-003739
Application 12/747,105
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(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
ORDER
AFFIRMED
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