Ex Parte HaDownload PDFPatent Trial and Appeal BoardJan 19, 201713129154 (P.T.A.B. Jan. 19, 2017) Copy Citation 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. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): skim@nkllaw.com docket @ nkllaw .com hno vick @ nkllaw .com 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 4 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 5 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- 6 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. 8 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 9 Copy with citationCopy as parenthetical citation