Ex Parte Finley et alDownload PDFPatent Trial and Appeal BoardJul 18, 201611751328 (P.T.A.B. Jul. 18, 2016) Copy Citation 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. Appeal2015-000987 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. 2 Appeal2015-000987 Application 11/751,328 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."). 3 Appeal2015-000987 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. 4 Appeal2015-000987 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 5 Appeal2015-000987 Application 11/751,328 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- 6 Appeal2015-000987 Application 11/751,328 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). 7 Appeal2015-000987 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 8 Copy with citationCopy as parenthetical citation