Ex Parte Ha

Patent Trial and Appeal Board

Jan 19, 2017

13129154 (P.T.A.B. Jan. 19, 2017)

United States Patent and Trademark Office
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.
13/129,154 05/13/2011 Sang Hoon Ha PK0380585 6499
105857 7590 01/23/2017
NOVTfTC KTM fr T FF PT T C EXAMINER
3251 Old Lee Highway, Suite 404
Fairfax, VA 22030
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
01/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANG HOON HA
Appeal 2016-000658
Application 13/129,154
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1—8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our opinion below, we refer to the Specification filed May 13, 2011
(“Spec.”); the Supplemental Declaration of Seokhwan Seo and Seongbeom
Kwon submitted November 14, 2014 under 37 C.F.R. § 1.132 (“Supp.
Dec.”); the Final Action mailed November 28, 2014 (“Final Act.”); the
Advisory Action mailed January 29, 2015 (“Advis. Act.”); the Appeal Brief
filed January 29, 2015 (“App. Br.”); and the Examiner’s Answer mailed July
29, 2015 (“Ans.”). A Reply Brief was not filed.
2 Appellant is the real party in interest. App. Br. 3.
1
The claims are directed to a cooking vessel processing method.
Claims 1,5. Claim 1, reproduced below with disputed limitations
emphasized, is illustrative of the claimed subject matter:
1. A cooking vessel processing method, suitable for
forming a coating layer on each of a base and a top, the method
comprising:
pre-heating the base of a cooking vessel to 50-60°C and
then forming a base-coating layer on the base using a sol-gel
derived silica ceramic material,
primarily dry curing the cooking vessel including the
base-coating layer at 100-200°C for 30-40 min;
pre-heating the cured cooking vessel to 50-60°C and
then forming a top-coating layer using a transparent ceramic
material, and
secondarily dry curing the cooking vessel including the
top-coating layer at 100-200°C for 30 40 min.
App. Br. 14 (Claims App’x).
2
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
appeal:
Buffard et al. US 6,551,693 B1 Apr. 22, 2003
(“Buffard”)
Phillips et al. US 2003/0165637 Al Sept. 4, 2003
(“Phillips”)
Lazaroff et al. US 2006/0081639 Al Apr. 20, 2006
(“Lazaroff’)
Jeon et al. US 2007/0218297 Al Sept. 20, 2007
(“Jeon”)
Perillon et al. US 2010/0181322 Al July 22,2010
(“Perillon US”)3
Perillon et al. FR2 915 205 Oct. 24, 2008
(“Perillon”)
REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows: claim
1 over Perillon in view of Jeon; claims 2—3 over Perillon in view of Jeon and
further in view of Buffard; claim 4 over Perillon in view of Jeon and further
in view of Phillips; claim 5 over Perillon in view of Jeon and further in view
of Lazaroff; claims 6—7 over Perillon in view of Jeon and Lazaroff and
further in view of Buffard; and claim 8 over Perillon in view of Jeon and
Lazaroff and further in view of Phillips. Final Act. 2, 4, and 6—8.
3 Perillon US is cited of record as an English translation of an application
related to Perillon. Final Act. 2.
3
OPINION
Appellant argues the patentability of claims 1—8 as a group. We select
claim 1 as representative of the group. Claims 2—8 will stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(iv) (2014).
The Examiner rejects independent claim 1 as obvious over Perillon in
view of Jeon, and the remaining claims as obvious over the combination
Perillon, Jeon, and one or more additional references. Final Act. 2, 4, 6—8.
The Examiner finds that Perillon teaches all limitations of claim 1 except for
(1) preheating the base of the original and primarily cured cooking vessel to
50-60° C prior to each sol-gel coating treatment, and (2) curing for 30-40
minutes. Id. at 3. The Examiner finds that Jeon teaches a method of
forming non-stick ceramic coatings via sol-gel deposition for cooking
vessels, and that the sol-gel deposited coatings have improved thickness and
adhesion with the vessel substrate if the vessel is preheated to 35^45° C. Id.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art at the time of the invention to have incorporated the step of
preheating the vessel prior to each sol-gel deposition into the method of
Perillon since preheating would predictably improve the adhesion and
thickness of the resulting coating. Id. at 3^4.
Appellant contends that the claimed preheating temperature of 50—
60° C is critical, relying on a Supplemental Declaration to support that this
preheating temperature range produces unexpected results. App. Br. 7.
Appellant has the burden of establishing “superior,” “surprising,” and
unexpected results. In re Geisler, 116 F.3d 1465, 1469-1470 (Fed. Cir.
1997) (whether evidence shows unexpected results is a question of fact and
party asserting unexpected results has the burden of proving that the results
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are unexpected). An examination for unexpected results is a factual,
evidentiary inquiry. In re Inland Steel, 265 F.3d 1354, 1366 (Fed. Cir.
2001).
The Supplemental Declaration provides the results of five aluminum
specimens, each preheated to a temperature between 44.9° C and 65° C,
spray coated with a “sol-gel d[e]rived silica ceramic material” to a coating
thickness of 20-25 pm on the base and 10—12 pm on the top, and cured for
about 35 minutes at a temperature of 200° C. Supp. Dec. 1—3. The tests
show that (1) streaks appeared on the surface of the coated specimens when
they were preheated to 44.9° C, but not when preheated to higher
temperatures; (2) micro-cracks appeared on the surface of the coated
specimens when they were preheated to 65° C, but not when preheated to
lower temperatures; the hardness was lower (8H) and adhesion was lower
(99/100) for specimens preheated to 44.9° C and 65° C than for specimens
preheated to 52° C, 54.9° C, or 58.1° C, which have hardness of 9H and
adhesion of 100/100. Id. at 11.
Appellant contends that the Supplemental Declaration is sufficient to
demonstrate the criticality of the preheating temperature range, and testing
with additional parameters is not required, because the unexpected results
are commensurate in scope with the claimed temperature range. App. Br. 7.
The Examiner finds the Supplement Declaration to be insufficient
because test results are provided for only one type of sol-gel derived silica
formulation which is undisclosed in the declaration. Ans. 3. The Examiner
finds that numerous variables would influence qualities of the cooking
vessel coating, such as adhesion and aesthetic. Id. These variables include:
coating thickness applied, specific coating precursor chemistry
type, coating concentration, [and] mode of application all readily
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contribute to a final coatings properties (such as uniformity,
roughness, degree of cracking, etc[.]), and similarly the type of
material overcoating and mode of its application.
Id. The Examiner finds that any one, or a combination, of these variables
could be a requirement for achieving the unexpected results. Id. On this
basis, the Examiner concludes that Appellant has not provided “an adequate
basis to support the conclusion that other embodiments falling within the
claim will behave in the same manner.” Id. at 4.
The coating formulations are described in the Specification as
follows:
The top-coating layer is formed of a transparent ceramic
material and includes a blend comprising oxides of iron,
magnesium, cobalt, etc., and thus the blend is displayed in the
form of a hologram when viewed at different angles by a user.
Spec. 2.
[A] top-coating layer is formed on the base-coating layer and
includes a blend of iron, magnesium, cobalt, etc., which are
reactive to magnets, so that various patterns are displayed as
holograms on the cooking vessel depending on the viewing
angle.
Id. at 3.
Accordingly, a colloidal state (sol) is prepared, and is
converted into a liquid-phase network (gel) when the sol gels,
thus forming an inorganic network. A precursor for
synthesizing the colloid is composed of a material in which
metal or metalloid elements are surrounded by various reactive
ligands.
As such, metal alkoxides are mainly used because they
are easily reacted with water. The metal alkoxides which are
widely available include alkoxysilane, namely
tetramethoxysilane (TMOS) and tetraethoxysilane (TEOS).
Recently, however, a variety of metal alkoxides are
mainly used for a sol-gel process in order to synthesize a high-
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temperature superconductor or ferroelectric material. In this
case, two or more kinds of metal alkoxides are mixed and
reacted to thus prepare a sol, control stoichiometry of materials.
Id. at 16. However, here, the Appellant incorrectly restricts the analysis to
the scope of the claimed preheating temperature range, rather than the scope
of the claims. See, e.g., App. Br. 9.
The Examiner finds that Appellant provided evidence for only one
sol-gel derived silica formulation, which, although undisclosed, has specific
components/precursors at specific ratios to one another, a specific mode of
application, a coating thickness, a specific overcoating type, and a method of
application. Advis. Act. 2. The Examiner finds that this is insufficient
evidence to support that the sol-gel derived silica formulation tested would
produce the same results for preheating temperatures under conditions other
than those tested. Id. When only one mixture of ingredients is tested, but
the claims are much broader in scope, there is no “adequate basis for
reasonably concluding that the great number and variety of compositions
included by the claims would behave in the same manner as the single test
composition.” In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
The data in the Supplemental Declaration appears to be derived from
testing of a single sol-gel derived silica formulation, the composition of
which is undisclosed. Supp. Decl. 2 (“Coating material: Sol-gel d[e]rived
silica ceramic material,” Supp. Dec. 2). The claims, however, encompass a
base-coating layer formed from any sol-gel derived ceramic material and a
top-coating layer formed from any transparent ceramic material. See, e.g.,
claim 1, App. Br. 14.
Given the breadth of the formulations disclosed in the Specification
and covered by the claims, the Supplemental Declaration does not provide
7
an adequate basis for reasonably concluding that formulations other than the
single one tested would produce the same results as the test material. See
Lindner, 457 F.2d at 508; see also In re Freeman, 474 F.2d 1318, 1324-25
(CCPA 1973) (“the fact that the prior art contains indications that similar
phosphating compositions would have been expected to operate effectively
on various metals including aluminum, we conclude that appellants have not
established as a general proposition that the substitution of ammonium for
alkali metal ions results in a composition which gives unexpectedly
improved coatings on aluminum.”).
Moreover, Appellant has not shown that the asserted superior results
would have been unexpected to one of ordinary skill in the art at the time of
the invention. “It is not enough to show that results obtained differ from
those obtained in the prior art—any difference must be shown to be an
unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
See also, Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007)
(“[A]ny superior property must be unexpected to be considered as evidence
of non-obviousness.” (emphasis in original)). There is no statement in the
Supplemental Declaration that the results obtained by testing would have
been unexpected. For this reason as well, the declaration fails to rebut that
the claimed invention would have been obvious.
On the record before us, Appellant has not established that the
Examiner erred in rejecting claim 1 as obvious. Claims 2—8 stand rejected
for the same reasons as claim 1.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—8 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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