Ex Parte Finley et al

Patent Trial and Appeal Board

Jul 18, 2016

11751328 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111751,328 05/21/2007
7590
Andrew C. Siminerio
PPG Industries, Inc.
Law Department, 39SW
One PPG Place
Pittsburgh, PA 15272
07118/2016
FIRST NAMED INVENTOR
James J. Finley
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.
1924Dl 1806
EXAMINER
MAYEKAR, KISHOR
ART UNIT PAPER NUMBER
1759
MAILDATE DELIVERY MODE
07/18/2016 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 JAMES J. FINLEY, DONALD W. BOYD, and
GARY J. MARIETTI1
Appeal2015-000987
Application 11/751,328
Technology Center 1700
Before PETER F. KRATZ, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection under§ 112, first paragraph of claims 1-10, 12, 13, 15-25, 27, 29,
and 31-33 as lacking written description and under§ 103(a) of claims 1-10,
12, 13, 15, 16, 18-25, 27, 29, and 31-33 as unpatentably obvious over
Arbab (US 4,716,086, issued Dec. 29, 1987) in light of Gillery
(US 4,710,426, issued Dec. 1, 1987), Stephens (US 4,898,789, issued Feb. 6,
1990), and DuPont (US 4,864,016, issued Sept. 5, 1989), and of claim 17 as
1 Appellants identify PPG Industries Ohio, Inc. is the real party in interest.
App. Br. 2.
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Application 11/751,328
unpatentably obvious in further light of Finley (US 4,898,789, issued Feb. 6,
1990). We have jurisdiction pursuant to 35 U.S.C. § 6.
BACKGROUND
Appellants' claimed invention is directed to methods of coating an
article-including non-conductive substrates-by providing a conductive
coating on the article and then electrodepositing a polymeric coating. Spec.
Abstract. Independent claims 1, 22, and 27 require that the coated article
formed is free of resinous primer.
Independent claim 1 is illustrative:
1. A method of making a coated article, comprising the steps of:
providing a substrate;
forming at least one conductive coating over at least a
portion of the substrate, the conductive coating having a
thickness in the range of greater than 0 A to less than 25,000 A;
and
forming at least one polymeric coating over at least a
portion of the conductive coating by an electrodeposition
process, wherein the conductive coating functions as an
electrode in the electrodeposition process,
wherein said conductive coating comprises a first
dielectric layer, and a first metal layer, said first dielectric layer
being interposed between said substrate and said first metal
layer,
said first dielectric layer comprising a first metal alloy
oxide film and a second metal oxide film, said first metal alloy
oxide film being interposed between said substrate and said
second metal oxide film,
said first metal alloy oxide film and said second metal
oxide film independently selected from the group consisting of
oxides of titanium, hafnium, zirconium, niobium, zinc, bismuth,
lead, indium, tin, zinc/tin alloy, and combinations thereof, and
said coated article is free of a resinous primer.
App. Br. (Claims Appendix) 11.
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DISCUSSION2
Appellants proffer arguments as to both the written description and
obviousness rejections. Upon consideration of the evidence and opposing
contentions of the Appellants and the Examiner, we are unpersuaded of
harmful error in the Examiner's decision rejecting the claims as unpatentable
for obviousness, but are persuaded the Examiner has failed to establish that
the claims are unpatentable for lack of written description.
"[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prim a facie case of unpatentability." In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
To prevail in an appeal to this Board, Appellant must adequately
explain or identify reversible error in the Examiner's rejection. See 37
C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make
a prima facie case, it has long been the Board's practice to require an
Appellant to identify the alleged error in the Examiner's rejection).
Written Description
The Examiner finds the Specification lacks sufficient written
description support for the "coated article [being] free of a resinous primer"
as recited in independent claims 1 and 22. Ans. 2, 5-6. The Examiner
considers the disclosure in the Specification detailing problems that can arise
when using pigmented resinous primers and metal-containing resinous
2 We refer to the Final Office Action mailed January 13, 2014 ("Final Act."),
the Appeal Brief filed June 16, 2014 ("App. Br."), the Examiner's Answer
mailed August 25, 2014 ("Ans."), and the Reply Brief filed October 27,
2014 ("Reply Br.").
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Application 11/751,328
primers to provide support for the exclusion of these particular resinous
primers; however, the Examiner finds that there is no support for excluding
other resinous primers. Ans. 2 (citing Spec. iii! 6-7). 3 Accordingly, the
Examiner determines that there is not sufficient support for excluding non-
conductive resinous primer containing neither paint nor metal particles.
Ans. 2, 6.
Appellants contend that the Examiner has erred because the
supporting disclosure need not be in the same words, but rather that it is
sufficient if the originally filed disclosure shows possession of the claimed
invention and the Specification does so. App. Br. 4-5 (citing Spec. iii! 7-8).
Appellants emphasize that the Specification describes difficulties arising
when resinous primers are used-including adverse effects on optical or
solar control properties and that resinous primer could decompose or
disintegrate upon heating-and that the disclosure is sufficient to support
excluding both conductive and non-conductive resinous primers. App. Br.
4-5 (citing Spec. iii! 7-8); Reply Br. 2--4 (Spec. iii! 6-8).
Having considered the record, we find the Examiner has not
established that excluding resinous primers from the coated article product
of the claimed method is a new concept that is not reasonably conveyed to
the skilled artisan by the Specification. Looking to the Specification, we
find it discloses various metals applied by chemical vapor or physical vapor
deposition to function as primer films. See, e.g., Spec. Abstract, iii! 30, 40,
43. The Examiner also fails to explain how the disclosure that the primer
3 The Examiner refers to paragraphs 7-8 of the published application.
Throughout the opinion, we refer to the original paragraph numbering of the
Specification of the as-filed application.
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Application 11/751,328
layers can be the various metals listed is not sufficient for excluding resinous
primers, whether conductive or non-conductive.
It follows that we do not sustain the Examiner's 35 U.S.C. § 112, first
paragraph rejection of the claims as lacking written description.
Obviousness
Appellants argue the rejection of claims over the cited prior art on the
basis of independent claim 1. App. Br. 6-9; Reply Br. 4-5. We, therefore,
limit our discussion to claim 1 and decide the appeal as to all claims as a
group. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner relies on a combination of teachings including that
from DuPont of a polymeric layer 22 as a protective layer applied by any
suitable coating technique such as by electrocoating. Ans. 3 (citing DuPont
col. 5, 11. 56-29). Critically, DuPont teaches that "a primer coating 24, such
as a silane adhesion promoter (a non-conductive resinous primer), may be
applied prior to application of the polymeric layer to increase the adhesion
of the polymeric layer." Ans. 3--4 (citing DuPont col. 5, 11. 22-33). The
Examiner finds the teaching that the resinous primer may be applied is a
teaching that it may be omitted, thereby, in combination with the other cited
reference, leading one of ordinary skill in the art to claimed invention. Ans.
3--4.
Appellants contend that the cited teaching from DuPont is insufficient
and that the Examiner has failed to provide the necessary explanation or
rationale for excluding resinous primer. App. Br. 6-9; Reply Br. 4-5.
Appellants further contend that the Examiner is relying on impermissible
hindsight. App. Br. 8-9. Appellants rely on DuPont's teachings at col. 5, 11.
26-29 that "primer coating 24 would generally increase the adhesion of the
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polyimide coating ... to the upper surface of the anti-reflective layer 20"
and at col. 6, 11. 25-26 that "[t]he polyimide film 22 thus formed is generally
a very thin layer, as is the silane primer film." Appellants also rely on the
Specification as disclosing the prior art teaches that primers are necessary in
order to use an electrodeposition process on non-conductive substrates.
App. Br. 9 (citing Spec. iJ 7).
On this record, we are not persuaded the Examiner has erred
reversibly in determining that one of skill in the art, at the time of the
invention, armed with the cited prior art, would have been led to a coating
method corresponding to representative claim 1.
Generally, Appellants' arguments fail to "take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). "A
person of ordinary skill is also a person of ordinary creativity, not an
automaton." Id. at 421.
The teaching from DuPont that using a primer coating would
generally increase the adhesion of the polyimide coating does not negate that
it also teaches omitting the primer coating even if doing so would have been
less preferred. Disclosure of a reference is not limited to preferred
embodiments. In re Mills, 470 F.2d 649, 651 (CCPA 1972) ("[A] reference
is not limited to the disclosure of specific working examples."); cf also In re
Susi, 440 F.2d 442, 445--46 (CCPA 1971) (disclosure of particularly
preferred embodiments does not teach away from broader disclosure).
Appellants' arguments also fail to squarely address the relied on
combination of teachings as set forth by the Examiner. In the combination
set forth by the Examiner, the polymeric coating is not applied to a non-
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conductive substrate, but rather to a conductive coating of titanium oxide
deposited by magnetron deposition. Ans. 3; App. Br. 7. Appellants fail to
explain the relevance of the Specification's disclosure that electrodeposition
"is not possible with a non-conductive substrate, such as glass" without
using a primer (Spec. iJ 7) to electrodeposition on an object with a
conductive coating. App. Br. 6-9; Reply Br. 4-5. Appellants' arguments
are, therefore, without persuasive merit because they are based on the
teachings of the references individually, notably on a single reference, rather
than the combination relied on by the Examiner. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references."); In re Keller, 642 F.2d 413, 425
( CCP A 19 81) (The test for obviousness "is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.").
Having found Appellants' arguments unpersuasive of reversible error
in the Examiner's factual findings or conclusions as explained above, we
are, thus, also unpersuaded that the Examiner relied on impermissible
hindsight. If the Examiner has articulated a reason having rational
underpinnings for making a proposed combination of prior art teachings,
then that articulated reasoning demonstrates the combination is not based on
hindsight. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
"some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness") (cited with approval in KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. at 419).
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Application 11/751,328
Being unpersuaded of reversible error in the Examiner's decision
rejecting representative claim 1 for obviousness by Appellants' arguments, it
follows we affirm the Examiner's obviousness rejections.
CONCLUSION
The Examiner's rejection of the claims under 35 U.S.C. § 112, first
paragraph is REVERSED.
The Examiner's rejections of the claims under 35 U.S.C. § 103(a) is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
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