Ex Parte He et al

Patent Trial and Appeal Board

Oct 25, 2012

11290064 (P.T.A.B. Oct. 25, 2012)

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.
11/290,064 11/30/2005 Lingyun He 020354 097P2 7266
52774 7590 10/25/2012
MOMENTIVE PERFORMANCE MATERIALS INC.
c/o Dilworth & Barrese, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
EXAMINER
PAK, HANNAH J
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
10/25/2012 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 LINGYUN HE, DONALD W. WHISENHUNT JR.,
JEFFREY I. MELZER, ANDREA KEYS EODICE,
BRET CHISHOLM, CHRISTOPHER M. CARTER,
SHIU-CHIN H. SU, KENDALL L. GUYER,
and MATTHEW M. HUNTER
__________

Appeal 2011-004844
Application 11/290,064
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004844
Application 11/290,064

2

A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 19-30, 32, 33, 36, and 38-51, which are all of the
pending claims.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is directed to a composition for treating metal
surfaces to form a conversion or passivation coating thereon. The composition
comprises an aqueous sol comprising colloidal oxide sol particles and a ureido
silane compound or hydrolyzates or condensates thereof. Claim 19 is illustrative.
19. Composition for treating metal surfaces to form a conversion or
passivation coating thereon, said composition comprising an aqueous
sol comprising (a) from 0.001 to 36 wt_% colloidal oxide sol
particles, and (b) from about 0.01 wt% to 80 wt% ureido silane
compound or hydrolyzates or condensates thereof; remainder
predominantly water.
App. Br., Claims Appendix.
The following grounds of rejection are before us on appeal:
(1) the provisional rejection of claims 19, 29, and 32 under the judicially
created doctrine of obviousness-type double patenting as unpatentable over claims
1 and 5 of copending Application 12/249,661 in view of Chi2 and Song3;

1 Pending claim 36 was not rejected in the Final Office Action dated October 6,
2009. However, there is no dispute on this record that claim 36 should have been
“finally rejected on the same grounds of obviousness as presented in Paragraph 5
of the Office action mailed April 26, 2009.” Examiner’s Answer dated October
27, 2010 (“Ans.”), at 2; see also Appeal Brief dated August 6, 2010 (“App. Br.”),
at 3. Therefore, the rejection of claim 36 will be considered on appeal.
2 US 4,311,738 issued January 19, 1982.
Appeal 2011-004844
Application 11/290,064

3

(2) the provisional rejection of claims 19-21, 28, 32, and 33 under the
judicially created doctrine of obviousness-type double patenting as unpatentable
over claims 1, 6, 10, 11, and 14 of copending Application 11/541,333 in view of
Chi and Song;
(3) the rejection of claims 19, 20, 22-25, 28-30, 32, 33, 36, 38-40, 45, 46,
and 49-51 under 35 U.S.C. § 103(a) as unpatentable over Chi in view of Song; and
(4) the rejection of claims 21, 26, 27, 41-44, 47, and 48 under 35 U.S.C.
§ 103(a) as unpatentable over Chi in view of Song and further in view of the
admitted prior art,4 Basil,5 and Heimann.6
These rejections are affirmed for the reasons set forth in the Examiner’s
Answer. We add the following for emphasis.
B. DISCUSSION
1. Rejection (3)
The Examiner finds Chi discloses a coating composition that imparts
corrosion resistance to metal substrates, such as aluminum. Ans. 4. Chi discloses
the composition “consists essentially of a dispersion of at least one colloidal metal
oxide in a water/polar organic solvent solution of a partial condensate of a silanol
having the average formula CH3Si(OH)3.” Chi, col. 5, ll. 36-42 (emphasis added).
The Examiner finds “Chi does not specifically mention employing other types of
silanes, such as the claimed ureido silane compound, hydrolyzates or condensates
thereof.” Ans. 4. However, the Examiner finds Song uses a “ureido silane

3 US 6,106,901 issued August 22, 2000.
4 Page 3 of the Appellants’ Specification.
5 US 4,799,963 issued January 24, 1989.
6 US 2003/0165627 A1 published September 4, 2003.
Appeal 2011-004844
Application 11/290,064

4

compound together with mult[i]-silyl-functional silanes, inclusive of silanols
taught by Chi, to improve corrosion resistance of metal substrates, such as
aluminum.” Id. The Examiner concludes “it would have been obvious to one of
ordinary skill in the art to employ the ureido silane compound taught by Song et al.
in the sol of Chi to provide aluminum substrates with enhanced corrosion
resistance.” Id. at 5.
The Appellants argue that Chi’s use of the phrase “consisting essentially of”
to describe the disclosed coating composition excludes “the partial condensates of
silanols derived from silanes other than methyltrialkoxysilanes (with the exception
of at most a few percent of the specific silanols [disclosed in column 6, lines 3-6 of
Chi]).” App. Br. 8. Thus, according to the Appellants, Chi teaches away from the
claimed composition which includes a ureido silane or a hydrolyzate or condensate
thereof. Id. at 9.
The Appellants’ argument is not persuasive of reversible error. It is well
settled that the phrase “consisting essentially of” limits the scope of a claim to the
specified ingredients and those that do not materially affect the basic and novel
characteristic(s) of a composition. In re Herz, 537 F.2d 549, 551-52 (CCPA 1976).
To the extent that Chi’s use of the phrase “consisting essentially of” in the
Specification can be said to teach away from components that materially affect the
basic and novel characteristics of the disclosed composition, the Appellants do not
identify any of the basic and novel characteristics of Chi’s composition. Thus, Chi
cannot be said to teach away from using the ureido silane disclosed in Song.7

7 The coating compositions disclosed in Chi and Song are used for the same
purpose, i.e., to protect metal substrates, such as aluminum, from corrosion. See,
e.g., Chi, col. 4, ll. 59-62; Song, col. 1, ll. 6-17.
Appeal 2011-004844
Application 11/290,064

5

The Appellants also argue that one of ordinary skill in the art would be
“inclined against” combining a colloidal oxide with a ureido silane because the
combination of silanes disclosed in Song is said to eliminate the need for “an
underlying layer of silicates, aluminates.” App. Br. 11.
We disagree. The disclosure referred to by the Appellants does not relate to
Song’s coating composition but rather is directed to an “underlying layer” that is
separate from the coating composition. Song, col. 3, ll. 17-20. Moreover, the
Appellants’ argument fails to appreciate the rejection on appeal, i.e., Chi in view of
Song. The Examiner merely relies on Song as evidence that other silanes, in
addition to the silanes disclosed in Chi, would have been useful in Chi’s corrosion
resistant coating composition. Significantly, the Appellants have not directed us to
any disclosure in the prior art of record which would have led one of ordinary skill
in the art away from the combination proposed by the Examiner.
In an attempt to rebut the prima facie case of obviousness, the Appellants
direct us to two compositions within the scope of claim 19, i.e., formulation E1 in
Example 1 and formulation A2 in Example 2, and argue these compositions exhibit
“unexpected” results, i.e., an “unexpected” decrease in creep. App. Br. 10-11.
Significantly, the Appellants have failed to direct us to any evidence
establishing that these results would have been “unexpected.” See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir, 1997) (attorney argument is not the kind of factual
evidence that is required to rebut a prima facie case of obviousness); see also In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“Mere argument or conclusory
statements in the specification does not suffice.”). To the extent that the decrease
in creep exhibited by formulations E1 and A2 may have been an improvement over
other prior art compositions, a mere improvement is not sufficient to establish that
Appeal 2011-004844
Application 11/290,064

6

the results would have been “unexpected.” See In re Freeman, 474 F.2d 1318,
1324 (CCPA 1973) (in order for a showing of “unexpected results” to be probative
evidence of non-obviousness, the applicant must establish that the difference
between the results obtained through the claimed invention and those of the prior
art would not have been expected by one skilled in the art at the time of invention).
Moreover, the Appellants’ showing is not commensurate in scope with the
claims on appeal. The Examiner correctly explains that “the claims are directed to
a broad range of 0.01-80 wt. % of any and all types of ureido silanes and a broad
range of 0.001-36 wt. % of any and all types of colloidal sol oxide particles.” Ans.
11. The Appellants point out that claim 24 is directed to a single ureido silane
species, i.e., γ-ureidopropyltrimethoxysilane. App. Br. 11-12. However, claim 24,
by virtue of its dependence on claim 19, encompasses broad amounts of this ureido
silane species as well as broad amounts of any and all types of colloidal oxide sol
particles.
We recognize that a trend in results may be shown where the full scope of a
claim has not been tested. In re Kollman, 595 F.2d 48, 56 (CCPA 1979).
However, in this case, the Appellants have failed to direct us to any evidence
establishing that the results for formulations E1 and A2 are representative of the
broad range of compositions encompassed by the claims on appeal.
Finally, the Appellants have failed to explain, in any detail, why the
comparative compositions disclosed in the Appellants’ Specification constitute the
closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991) (“results must be shown to be unexpected compared with the closest prior
art”).
Appeal 2011-004844
Application 11/290,064

7

Based on the foregoing, the preponderance of the evidence weighs most
heavily in support of the Examiner’s conclusion of obviousness. Therefore, the
§ 103(a) rejection of claims 19, 20, 22-25, 28-30, 32, 33, 36, 38-40, 45, 46, and 49-
51 will be sustained.
2. Rejection (4)
The Appellants argue Basil does not disclose or suggest a composition
containing a ureido silane or a hydrolyzate or condensate thereof and Heimann
does not disclose a coating containing a mixture of colloidal oxide, ureido silane,
and alkoxysilane. App. Br. 17.
The Appellants’ arguments fail to consider the prior art as a whole. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (the test for obviousness is what the
combined teachings of the prior art would have suggested to one of ordinary skill
in the art). The Examiner merely relied on Basil to establish that it would have
been obvious to add cerium oxide to the composition of Chi to improve its
abrasion resistance and Heimann to establish that it would have been obvious to
add TEOS to the composition of Chi to improve its corrosion resistance. Ans. 6-7.
The Appellants have failed to demonstrate that the Examiner’s position is
erroneous. Therefore, the § 103(a) rejection of claims 21, 26, 27, 41-44, 47, and
48 will be sustained.
3. Rejections (1) and (2)
On appeal, the Appellants do not contest either obviousness-type double
patenting rejection.8 Therefore, both provisional obviousness-type double

8 As for the rejection based on Application 11/541,333, the Appellants state they
“choose not to argue the rejection.” App. Br. 6. As for the rejection based on
Appeal 2011-004844
Application 11/290,064

8

patenting rejections will be sustained for the reasons set forth in the Examiner’s
Answer.
C. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

bar

Application 12/249,661, this rejection appears to be a new ground of rejection in
the Examiner’s Answer. The Appellants did not file a petition under 37 C.F.R.
§ 1.181(a) or file a Reply Brief. Therefore, any arguments related to this rejection
have been waived. See MPEP § 1207.03(IV) (8th ed., Rev. 9, Aug. 2012).