11427944 (B.P.A.I. Nov. 29, 2011)

Ex Parte Greene et al

Board of Patent Appeals and InterferencesNov 29, 2011

11427944 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/427,944 06/30/2006 Jeffrey A. Greene 2130A1 3261 24959 7590 11/30/2011 PPG INDUSTRIES INC INTELLECTUAL PROPERTY DEPT ONE PPG PLACE PITTSBURGH, PA 15272 EXAMINER AHVAZI, BIJAN ART UNIT PAPER NUMBER 1761 MAIL DATE DELIVERY MODE 11/30/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JEFFREY A. GREENE and RONALD A. KOEHLER ________________ Appeal 2010-007470 Application 11/427,944 Technology Center 1700 ________________ Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and RAE LYNN P. GUEST, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007470 Application 11/427,944 2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 6, 8, 12, 13, and 18 through 21. We have jurisdiction pursuant to 35 U.S.C. § 6. We REVERSE. STATEMENT OF THE CASE The subject matter on appeal is directed to a method for scale removal and leak detection. Claim 6 is illustrative: 6. A method for scale removal and leak detection in an aqueous metal pretreatment system containing metal phosphates comprising plumbing to contain and recirculate scale-causing components in the system comprising: (a) treating the system with a composition comprising an acidic scale removal agent and a fluorescing agent so as to remove scale from the system, (b) inspecting the exterior surfaces of the system by shining ultraviolet light incident to the exterior surface to detect any perforations in the system as evidenced by fluorescence of the fluorescing agent leaking through the perforation. The Examiner maintains the following rejections: 1) claims 6, 8, 12, 13, 18, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over Doumit (US 4,439,339, issued Mar. 27, 1984), Werner (US 2007/0125156 A1, published Jun. 7, 2007), and Vonk (US 5,588,989, issued Dec. 31, 1996); and 2) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Doumit, Werner, and Vonk and further in view of Ikeda (US 5,269,957, issued Dec. 14, 1993). Appeal 2010-007470 Application 11/427,944 3 REJECTION (1) ISSUE Did Appellants establish that the Examiner reversibly erred in determining that the applied prior art references would have rendered obvious a method for scale removal and leak detection using an aqueous metal pretreatment system containing metal phosphates as required by claim 6 within the meaning of § 103? We decide this issue in the affirmative. PRINCIPLES OF LAW “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). “A factfinder should be aware . . . of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). FACTUAL FINDINGS, ANALYSIS, AND CONCLUSION Appellants argue that the Examiner has provided no credible reason to combine the acidic scale removal agent of Doumit and fluorescing agent of Werner with the aqueous metal pretreatment method of Vonk. (App. Br. 5). We agree. Doumit teaches a method of removing phosphate scale in fresh water production equipment such as a heat exchanger via an acid solution, which may include hydrochloric acid. (Doumit, abstract, col. 1, ll. 6-35; col. 2, ll. 50-65; and col. 3, ll. 15-20). Appeal 2010-007470 Application 11/427,944 4 Werner teaches a method of leak detection of a heat exchanger using a fluorescent dye. (Werner, paras. [0001] and [0026]). Vonk teaches a method of forming a zinc phosphate coating on, for example, automobile bodies or parts via an aqueous acidic zinc phosphate composition. (Vonk, col. 1, ll. 15-29 and 65-67). Vonk teaches that its aqueous acidic zinc phosphate composition may be contained in a bath and applied via a dipping or spraying process. (Id. at col. 3, l. 65 to col. 4, l. 2 and col. 10, ll. 31-40). The Examiner states that it would have been obvious to employ Vonk’s aqueous metal pretreatment system and its aqueous acidic zinc phosphate composition in the method suggested by Doumit and Werner in order to provide simultaneous leak detection and scale removal in addition to a stable zinc phosphate coating that will not decompose in the acidic environment and is environmentally acceptable (Ans. 4). However, the Examiner has not adequately explained why one of ordinary skill in the art would have selected these leak detection and scale removal teachings from the heat exchanger art and would have applied them in an aqueous metal pretreatment system such as taught by Vonk. Rather, the Examiner’s reasoning for the combination appears to be based on impermissible hindsight. The Examiner simply fails to direct us to any credible evidence or provide any persuasive explanation why it would have been obvious to combine Doumit and Werner with Vonk absent hindsight. Accordingly, we do not sustain the Examiner’s rejection (1). Appeal 2010-007470 Application 11/427,944 5 REJECTION (2) The Examiner relies on the same factual findings and determinations discussed above and does not provide any additional findings or determinations as to how the addition of Ikeda would have rendered the invention recited in claim 6 obvious within the meaning of § 103. Therefore, for the reason stated above, we do not sustain the Examiner’s rejection (2). ORDER The Examiner’s decision is reversed. REVERSED bar