Ex parte Gaglani

Board of Patent Appeals and Interferences

Dec 23, 1999

08037485 (B.P.A.I. Dec. 23, 1999)

Application for patent filed March 24, 1993. According1
to appellant, this application is a continuation of
Application No. 07/821,240, filed January 10, 1992, now
abandoned; which is a continuation of Application No.
07/418,294, filed October 6, 1989, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 40
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KAMLESH GAGLANI
____________
Appeal No. 1996-2239
Application No. 08/037,4851
____________
HEARD: November 18, 1999
____________
Before JOHN D. SMITH, WALTZ, and LIEBERMAN, Administrative
Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1 through 15 and 17 through
Appeal No. 1996-2239 Page 2
Application No. 08/037,485
28 which are all the claims remaining in the application.
Claim 16 was canceled by amendment executed November 15, 1993.
THE INVENTION
The invention is directed to an article having a metal
surface with a coating thereon. The coating composition
comprises 0.5 to 7.5% by weight of an amino carboxylate of a
particular formula as a corrosion inhibitor. The coating
composition also contains a pigment, a binder and a solvent.
THE CLAIM
Claim 1 is illustrative of appellants’ invention and is
reproduced in the attached appendix.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the
following references.
Andersen 2,926,108 Feb. 23,
1960
Stephen et al. (Stephen) 4,077,941 Mar.
7, 1978
THE REJECTION
Appeal No. 1996-2239 Page 3
Application No. 08/037,485
Claims 1 through 15 and 17 through 28 stand rejected under
35 U.S.C. § 103 as unpatentable over Stephen in view of
Andersen.
Appeal No. 1996-2239 Page 4
Application No. 08/037,485
OPINION
We have carefully considered all of the argument advanced
by appellant and the examiner. We agree with the examiner that
the rejection of claims 1 through 5, 15, and 17 through 19 is
well founded. Accordingly, we will sustain that rejection. We
agree with the appellant that the aforementioned rejection over
Stephen in view of Andersen of claims 6 through 14, and 20
through 28 is not well founded. Accordingly, we will not
sustain that rejection.
The Rejection of Claims 1 through 5, 15, and 17 through 19
As an initial matter, appellants’ Brief contains a
statement that claims 5 and 19, Group II, and claims 6 through
14 and 20 through 28, Group III, do not stand or fall together
with claims 1 through 4, 15, and 17, and 18, Group I.
Accordingly, we will consider each set of claims separately.
During patent prosecution, claims are to be given their
broadest reasonable interpretation consistent with the
specification, and the claim language is to be read in view of
the specification as it would be interpreted by one of ordinary
Appeal No. 1996-2239 Page 5
Application No. 08/037,485
skill in the art. In re Morris, 127 F.3d 1048, 1053-1054, 44
USPQ2d 1023, 1027 (Fed. Cir. 1997). In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983); In re
Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976).
Our construction of the subject matter defined by
appellants’ claim 1 is that the claimed subject matter requires
a metal surface having a coating composition thereon comprising
an amino carboxylate salt, a pigment, a binder and a solvent
coated thereupon. Stephen discloses a composition comprising
the amino carboxylate salt of the claimed subject matter. See
column 1, lines 44 through 68. The amino carboxylate salt is
employed in an amount of 0.01% to about 5% by weight of the
stabilized composition. See column 3, lines 44 - 46. The
composition may be dissolved in suitable solvents as taught in
column 3, lines 59 - 61, and contain pigments, column 4, lines
12 - 13. We find that the composition is specifically designed
to be blended with cutting fluids. We refer to column 3, lines
25 - 32, wherein Stephen discloses that other materials can be
stabilized by the disclosed compounds including “cutting
fluids.”
Appeal No. 1996-2239 Page 6
Application No. 08/037,485
Webster’s Third New International Dictionary, G & C Merriam Co.2
Springfield, MA, page 362, 1971.
A “cutting fluid” is defined as a “fluid used esp. for
cooling lubrication, rust prevention, or chip finishing in a
machine metal cutting operation or for other special effects in
other metal working operations.” Based upon the above2
analysis, we conclude that the cutting fluid is a binder for
the amino carboxylate salts and coats the metal on which it is
placed. Our position is fully supported by appellant’s
specification, at pages 4 and 5, wherein appellants prepare
metal cutting fluids containing the amino carboxylate salt of
the claimed subject matter, solvents and other additives. We
conclude that “other additives” include pigments. Accordingly,
the cutting fluids of the specification act as binders in the
same manner as those taught by Stephen. Moreover as lubricants
and rust preventatives they coat the metals upon which they are
placed.
The examiner’s position is further supported by Andersen
who teaches corrosion inhibition of metallic substances by
coating metals with a protective coating, See column 1, lines
28 - 30. Accordingly, we conclude that the examiner has
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Application No. 08/037,485
established a prima facie case of obviousness over the claimed
subject matter.
As to appellants’ argument that there is no disclosure
that the amino carboxylates are corrosion inhibitors, it is our
conclusion that although the claimed subject matter requires
their presence, it is silent as to their function. Therefore,
the teaching of their presence by the references of record is
sufficient to meet the requirements of the claimed subject
matter.
With respect to claims 5 and 19, we find that Stephen
discloses amino carboxylates wherein R and R are alkyl having1 2
1 to 18 carbon atoms. See column 2, lines 3-4. We conclude that
it would have been obvious to one of ordinary skill in the art
to have chosen particular alkyl groups from among those
disclosed by Stephen.
The Rejection of claims 6 through 14 and 20 through 28
“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case of unpatentability.” See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner
Appeal No. 1996-2239 Page 8
Application No. 08/037,485
relies upon Stephen for a disclosure of amino-carboxylate salts
as light stabilizers for coating various substrates. It is the
examiner’s position that the coating compositions comprise
resinous materials. See Answer, page 4. Andersen is relied
upon as teaching amino-carboxylates as coating materials for
preventing corrosion by covering the surface of a metallic
surface with a protective coating. See Answer, pages 5 and 6.
Accordingly, “the ordinary practitioner would have found it
obvious to formulate a metal article having a coating thereon
which comprises an amino-carboxylate salt, a pigment a binder
and a solvent.” See Answer, page 7. As to this set of claims
we disagree with the examiner’s analysis and conclusions.
The organic materials required by the claimed subject
matter are polymeric materials. Stephen teaches polymeric
materials at column 2, line 62- column 3, line 24. When the
amino-carboxylates are added to a polymeric substrate, they may
be blended before or after polymerization or sprayed on the
surface of polymeric films, fabrics, or filaments. See column
3, lines 50 - 64. However, there is no disclosure, suggestion
or teaching of utilizing the amino-carboxylates together with
the polymeric materials of Stephen as a coating composition.
Appeal No. 1996-2239 Page 9
Application No. 08/037,485
Either the amino-carboxylates are mixed with polymeric material
or sprayed thereon.
Similarly, Andersen contains no suggestion of including a
polymeric binder. Accordingly, the references neither
disclose, nor teach a coating composition containing a
polymeric binder as required by the claimed subject matter.
Therefore, we are constrained to agree with appellants
that the examiner has failed to establish a prima facie case of
obviousness. The examiner has not provided any evidence or
scientific explanation on this record why one of ordinary skill
in the art would have found in the disclosure of the combined
teachings of Stephen and Andersen a suggestion to prepare a
coating composition using amino-carboxylates and polymeric
binder. The examiner must show reasons that the skilled
artisan, confronted with the same problems as the inventor and
with no knowledge of the claimed invention, would select the
elements from the cited prior art references for combination in
the manner claimed. We determine that there is no reason,
suggestion, or motivation to combine the references in the
manner proposed by the examiner. Accordingly, the examiner has
not established a prima facie case of obviousness. See In re
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Application No. 08/037,485
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1458 (Fed. Cir.
1998).
Appeal No. 1996-2239 Page 11
Application No. 08/037,485
DECISION

The rejection of claims 6 through 14 and 20 through 28
under 35 U.S.C. § 103 as unpatentable over Stephen in view of
Andersen is reversed.
The rejection of claims 1 through 5, 15, and 17 through 19
under 35 U.S.C. § 103 as unpatentable over Stephen in view of
Andersen is affirmed.
The decision of the examiner is affirmed-in-part.
AFFIRMED-IN-PART
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Appeal No. 1996-2239 Page 12
Application No. 08/037,485
)
PAUL LIEBERMAN )
Administrative Patent Judge )
PENNIE & EDMONDS
1155 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-2711
Appeal No. 1996-2239 Page 13
Application No. 08/037,485
APPENDIX