Ex Parte ENDO et al

Patent Trial and Appeal Board

Feb 24, 2016

13032857 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/032,857 02/23/2011
23373 7590 02/26/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Y asuhiko ENDO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql22329 7740
EXAMINER
ZIMMER, MARC S
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUHIKO ENDO
and TOMIO SAKAI
Appeal2014-004668
Application 13/032,857
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's April
30, 2013 decision finally rejecting claims 35, 36, 38, 39, 47, 49, 50, 52-54,
and 56-59. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Roden Seimitsu Kako
Kenkyusho Co., Ltd. (Appeal Br. 2).
Appeal2014-004668
Application 13/032,857
CLAHvIED SUBJECT ivIATTER
Appellants' invention is directed to a chromium-free metal surface
treatment agent for rust prevention on galvanized metal products (Spec. i-f 1 ).
Claim 35 is representative and is reproduced below from the Claims
Appendix of the Appeal Brief (key claim limitations shown in italics):
35. A chromium-free metal surface treatment agent for a
galvanized metal product is a silica-based binder solution which
consists essentially of:
alkoxysilane oligomer having a weight averaged
molecular weight of 1,500 to 10,000;
an alcohol-soluble resin component of 0.2 to 2% by
weight;
a silane coupling agent having a vinyl or epoxy group as a
functional group; and the balance being an alcohol solvent,
wherein the alkoxysilane oligomer is obtained by
hydrolyzed condensation polymerization oftetraethoxysilane
by adding water and acid catalyst;
wherein the concentration of the alkoxysilane oligomer in
the silica-based binder solution constitutes 8 to 25% by
weight of the silica-based binder solution as silica component
which is formed when the chromium-free metal surface
treatment agent is applied and solidified; and
wherein the silane coupling agent is present in the amount
of 1 to 10% by weight of the chromium-free metal surface
treatment agent.
2
Appeal2014-004668
Application 13/032,857
REJECTIONS
The following rejections under 35 U.S.C. § 103(a) are appealed:
I. Claims 35, 36, 47, 49, 50, and 57-59 as unpatentable over
Hirabayashi2 in view of Shibuya,3 and further in view ofKanai4 and/or
Shimakura. 5
II. Claims 38, 39, 52-54, and 56 as unpatentable over Hirabayashi
in view of Shibuya, and further in view of Kanai and/ or Shimakura, and
further in view of Takeda. 6
Appellants' arguments focus on limitations recited in independent
claim 35 (Appeal Br. 6-11; Reply Br. 4--8). Accordingly, our discussion
will be directed to the rejection of claim 35 over Hirabayashi in view of
Shibuya, Kanai, and Shimakura.
DISCUSSION
With regard to Rejections I and II, the Examiner finds that
Hirabayashi teaches each of the limitations of claim 35, with the exception
of the particular alkoxysilane oligomer' s "molecular weight [range] of 1,500
to 10,000" and "a silane coupling agent" (Ans. 3).
The Examiner finds that Shibuya suggests the claimed range because
it teaches that condensates having a molecular weight ranging between 1,000
and 4,000 provide improved non-gelatinous film formation and a smoother
2 Hirabayashi et al., JP 58-185660A, published Oct. 29, 1983 (translation of
record).
3 Shibuya et al., U.S. 2004/0180223 Al, published Sept. 16, 2004.
4 Kanai et al., U.S. Patent No. 6,607,587 Bl, issued Aug. 19, 2003.
5 Shimakura et al., U.S. Patent No. 6,475,300 B2, issued Nov. 5, 2002.
6 Takeda et al., U.S. Patent No. 4,510,283, issued Apr. 9, 1985.
3
Appeal2014-004668
Application 13/032,857
coat surface (Ans. 3--4, citing Shibuya, i197). According to the Examiner, it
would have been obvious for the skilled artisan to modify Hirabayashi' s
condensate of an alkyl silicate to have a molecular weight within the range
taught by Shibuya to form a coating with improved stability and smoothness
(Ans. 4).
The Examiner finds that Kanai and/or Shimakura suggests the claimed
silane coupling agent because the references teach "numerous other
corrosion-resisting coatings comprising a silica solution as an integral
component" that can be added to the claimed alkoxysilane oligomer (Non-
Final Act.7 6). According to the Examiner, it would have been obvious for
the skilled artisan to modify Hirabayashi' s primer layer to include a silane
coupling agent, which contains chemical moieties that bond both a substrate
and a topcoat (Non-Final Act. 5).
Appellants contend that the Examiner has not established a prima
facie case and make the following principal arguments urging reversal of
obviousness rejections.
First, Appellants assert that Shibuya is non-analogous art because the
reference is not reasonably pertinent to the particular problem the present
invention is concerned with, i.e., providing a metal surface treatment agent
free of toxic and carcinogenic chromium (Appeal Br. 8-9; Reply Br. 4--5).
According to Appellants, it is dispositive that Shibuya makes no mention of
chromium (Appeal Br. 9; Reply Br. 5).
7 Non-Final Office Action, mailed Dec. 6, 2011. This finding was made
with specific reference to claims 37 and 51, which were subsequently
canceled (June 5, 2013 amendment), and their limitations were incorporated
into claims 35 and 47, respectively. The finding was not explicitly re-
iterated in the April 30, 2013 Final Office Action.
4
Appeal2014-004668
Application 13/032,857
In order to be properly relied upon in an obviousness analysis, a prior
art reference must qualify as "analogous art," i.e., it must satisfy one of the
following conditions: (1) the reference must be from the same field of
endeavor as the claimed invention; or (2) the reference must be reasonably
pertinent to the particular problem with which the inventor is involved.
Innovention Toys, LLC v. MGA Entm 't, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011). "A reference is reasonably pertinent if it, as a result of its subject
matter, 'logically would have commended itself to an inventor's attention in
considering his problem."' K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364,
1375 (Fed. Cir. 2012) (quoting Innovention Toys, 637 F.3d at 1321).
Appellants' argument that Shibuya is non-analogous art is not
persuasive because it does not address the Examiner's reasoned
determination that Shibuya would have commended itself to Appellants'
attention in considering the recognized problem of low-film formation and
gelation (Ans. 3--4). Appellants state that outside of the claimed molecular
weight range, alkoxysilane oligomers are unstable and gelatinous (Spec.
i-f 30). Hirabayashi does not provide a molecular weight for the disclosed
ethyl silicate used in Manufacturing Vehicle 1 (Hirabayashi 1 ). However,
Appellants have not explained why a person of skill in the art who was faced
with the problem of gelation of alkoxysilane oligomers would not have
identified Shibuya' s teaching as reasonably pertinent when it discloses what
Hirabayashi does not-a molecular weight range at which the claimed
alkoxysilane oligomer does not gel.
Appellants further argue that no prima facie case of obviousness has
been established because there was no motivation to combine the references
because Hirabayashi relates to a rust resisting priming paint and Shibuya
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Appeal2014-004668
Application 13/032,857
relates to an insulating layer for a semiconductor (Appeal Br. 8-10).
According to Appellants, a skilled artisan would not have been motivated to
modify the teachings of Hirabayashi with the teachings of Shibuya because
they "are directed to two different technologies and concepts" (id. at 10).
However, the Supreme Court has held that
[i]n determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . [A ]ny need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419-20 (2007). The Examiner
has provided a reasoned finding that the skilled artisan would have been
motivated to modify Hirabayashi's condensate of an alkyl silicate to be
within Shibuya's molecular weight range because both references
"essentially [teach] coating compositions comprising as a major component
an alkoxvsilane condensate in solution" (Ans. 3). Therefore. for the reasons
el ' / /
well expressed by the Examiner in the Answer, we determine that
Appellants have not demonstrated reversible error in the Examiner's prima
facie case of obviousness.
With regard to Appellants' assertion that they have adequately
rebutted the prima facie showings of obviousness by virtue of their
demonstration of the unexpected results produced by the claimed invention
(Appeal Br. 10-11; Reply Br. 6-7), the burden of showing unexpected
results rests on the person who asserts them by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). Further, the showing of unexpected results must be commensurate in
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Appeal2014-004668
Application 13/032,857
scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed.
Cir. 2003).
Appellants have not shown reversible error in the Examiner's detailed
explanation that: ( 1) the experimental data set forth in the Specification is
not commensurate in scope with the breadth of claim 35 (Ans. 5---6) and
(2) the experimental data set forth in the Rule 132 Declaration relied upon
by Appellants does not compare the claimed invention to the closest prior art
(Ans. 6-8). Therefore, neither the Specification nor the Rule 132
Declaration relied upon by Appellants is persuasive evidence of non-
obviousness. Accordingly, we sustain the Examiner's§ 103(a) rejections of
independent claims 35 and 47.8
In the absence of arguments specific to their patentability, dependent
claims 36, 38, 39, 54, and 58 fall with claim 35 and dependent claims 49, 50,
52, 53, 56, 57, and 59 fall with claim 47. 37 C.F.R. § 41.37(c)(iv).
The Examiner's decision is affirmed.
CONCLUSION
We AFFIRM the rejection of claims 35, 36, 47, 49, 50, and 57-59
under 35 U.S.C. § 103(a) over Hirabayashi in view of Shibuya, and further
in view of Kanai and/or Shimakura.
We AFFIRM the rejection of claims 38, 39, 52-54, and 56 under 35
U.S.C. § 103(a) over Hirabayashi in view of Shibuya, and further in view of
Kanai and/or Shimakura, and further in view of Takeda.
8 Appellants' arguments urging reversal of the obviousness rejections focus
on limitations common to both independent claims 35 and 47 (Appeal Br.
11; see generally Appeal Br. 6-12, Reply Br. 4--8).
7
Appeal2014-004668
Application 13/032,857
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).
AFFIRMED
8