Ex Parte Jaworowski et alDownload PDFPatent Trial and Appeal BoardJun 26, 201513198362 (P.T.A.B. Jun. 26, 2015) 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. 13/198,362 08/04/2011 Mark R. Jaworowski 0003456-US-AC(06-644-3) 7655 52237 7590 06/26/2015 Bachman & LaPointe, P.C. 900 Chapel St., Suite 1201 New Haven, CT 06510 EXAMINER EMPIE, NATHAN H ART UNIT PAPER NUMBER 1712 MAIL DATE DELIVERY MODE 06/26/2015 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 MARK R. JAWOROWSKI, SARAH ARSENALULT and JAMES T. BEALS ____________ Appeal 2013-005844 Application 13/198,362 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and RICHARD M. LEBOVITZ, Administrative Patent Judges. Opinion for the Board by LEBOVITZ, Administrative Patent Judge. Opinion concurring by NAGUMO, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to a process for providing a conversion coating on an aluminum alloy article. The Examiner has rejected the claims as indefinite 35 U.S.C. § 112, second paragraph, and as obvious under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 134. The Examiner’s rejections are AFFIRMED. STATEMENT OF CASE Claims 1–9 are pending. Claim 1 is an independent claim. Claims 2– 9 depend from it. All the claims stand rejected by the Examiner. Appellants Appeal 2013-005844 Application 13/198,362 2 appeal from the final rejection (“Final Act.”). Claims 1–9 stand rejected by the Examiner as follows: 1. Claims 1–9 under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Final Act. 2. 2. Claims 1 and 7–9 under 35 U.S.C. § 103(a) as obvious in view of Olding,1 Muller,2 and Lin.3 Final Act. 4. Claims 2, 4, and 6 under 35 U.S.C. § 103(a) as obvious in view of Olding, Muller, Lin, and Olding ’134.4 Final Act. 7. Claim 3 under 35 U.S.C. § 103(a) as obvious in view of Olding, Muller, Lin, and Iida.5 Final Act. 8. Claim 5 under 35 U.S.C. § 103(a) as obvious in view of Olding, Muller, Lin, and Seitzinger.6 Final Act. 9. Claim 1 is representative and reads as follow (emphasis added): 1. A process for providing a conversion coating on an aluminum alloy article, comprising: contacting an article with a first solution to produce a coated article, said first solution includes a solvent and at least one non-conductive material comprising at least one oxide of a metal; contacting with a second solution said coated article having at least one surface with a non-conductive material layer, said second solution includes a solvent and at least one conductive material comprising at least one of the foregoing: graphite, metals, conductive ceramics, semi-conductive 1 Olding (US 2007/0023738 A1, pub. Feb. 1, 2007). 2 Muller (US 5,085,696, iss. Feb. 4, 1992). 3 Lin (US 6,222,166 B1, iss. Apr. 24, 2001). 4 Olding ’134 (US 2002/0145,134 A1, pub. Oct. 10, 2002). 5 Iida (US 2004/0,253,091 A1, pub. Dec. 16, 2004). 6 Seitzinger (US 3,551,266, iss. Dec. 29, 1970). Appeal 2013-005844 Application 13/198,362 3 ceramics intermetallic compounds, and mixtures thereof, thereby producing a conversion coating on the aluminum alloy article; and drying said coated article comprising a conversion coating having at least one surface with a non-conductive material layer having said at least one conductive material in contact with the at least one surface of said non-conductive material layer and said at least one surface of said article, wherein the drying takes place at a temperature of between 25°C and 125°C. SECTION 112 REJECTION Claim 1 is rejected as indefinite under 35 U.S.C. § 112, second paragraph, because the Examiner found insufficient antecedent basis for the claim limitation “in contact with the at least one surface of said non- conductive material layer and said at least one surface of said article.” Final Act. 2. The Examiner found there is no prior recitation of “at least one surface of said article.” Id. Rather, the Examiner found there is antecedent basis for “at least one surface with a non-conductive material layer,” but not for an uncoated surface. Answer 3. Other § 112, second paragraph rejections had been made by the Examiner, but these were dropped by the Examiner in the Answer. Id. at 2. Applicants did not respond to the § 112 rejection in the Appeal Brief. In a Reply Brief submitted in reply to the Examiner’s Answer, Applicants acknowledged the § 112 rejection and responded to it. Reply Br. 1. This response in the Reply Brief shall not be considered because “[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” 37 C.F.R. Appeal 2013-005844 Application 13/198,362 4 § 41.41(b)(2). The response to the § 112 rejection was not raised in the appeal brief, it is not a response to an argument raised in the Answer, and Appellants have not presented good cause why it should be considered. Accordingly, we affirm the § 112, second paragraph rejection of claim 1, and dependent claims 2–9, for the reasons given by the Examiner. OBVIOUSNESS REJECTIONS The Examiner found that Olding describes the contacting and drying steps of the claimed method to produce a thick film heating element with conductive and non-conductive layers. Final Act. 4–5; Olding, Abstract, ¶¶ 22–24. However, the Examiner found that Olding does not describe performing the contacting and drying steps on an “aluminum alloy article” as claimed. Id. at 5–6. The Examiner found that Lin describes preparing a thick film heater with “via deposition of resistive and conductive layers.” Final Act. 6. The Examiner further found that Lin describes aluminum and its alloys as substrates for thick film heaters “since they have excellent thermal conductivity properties and uniform heat distribution (see, for example, col 1 lines 29-col 2 line 12, col 3 line 62–col 4 line 46).” Id. Because both Olding and Lin describe thick film heaters and similar deposition methods of coating them, the Examiner determined that it would have been obvious to one of ordinary skill in the art “to have incorporated an aluminum alloy in the method of Olding . . . to achieve the predictable result of forming a thick film resistive heater on a support with excellent thermal conductivity properties and uniform heat distribution.” Id. Appeal 2013-005844 Application 13/198,362 5 Appellants contend that the Examiner’s rejection is defective because the claim requires a “conversion coating” on the claimed aluminum alloy article, and Olding’s coating is applied to mica which “cannot, by definition, be a conversion coating.” Appeal Br. 9. According to Applicants, a conversion coating is a metal finishing process. Id. Since mica is not a metal, Applicants argue that Olding’s coating cannot there be a conversion coating. Id. Applicants contend that the modification to Olding proposed by the Examiner would “destroy the entire inventive concept of the Olding reference which is to employ a mica-based substrate.” Id. at 10. Applicants also argue that there is no suggestion that an aluminum substrate might be useful in Olding’s process. Id. at 12. Applicants’ arguments do not persuade us that the Examiner erred in rejecting the claims. An obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this case, as found by the Examiner, Lin teaches that a thick film on an aluminum substrate would be useful because of “aluminum’s thermal performance characteristics.” Lin, col. 2, ll. 9–12. Lin also teaches that aluminum alloys can be used in its thick film heaters. Id. at col. 4, ll. 33–43. Based on these teachings by Lin, one of ordinary skill in the art would have recognized that aluminum alloys are useful in thick film heaters, providing the skilled worker a reason to have substituted it for the mica in Olding’s process of making a thick film heater. “If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, Appeal 2013-005844 Application 13/198,362 6 using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 416. Thus, the skilled worker would have recognized that Olding’s process and thick film heating element could be improved by utilizing an aluminum alloy which is taught for the same purpose by Lin. Applicants’ arguments regarding the conversion coating are not persuasive. Even assuming that a conversion coating is a coating applied to a metal surface, once Olding’s process is applied to an aluminum alloy substrate, the coating would be present on a metal and therefore would meet Applicants’ definition of a conversion coating. While it is true that Olding describes mica as a substrate in its thick film heating element, the Examiner provided evidence that the heating element could be improved by replacing the mica with aluminum alloy for the advantage of aluminum’s thermal properties. In making an obviousness determination, it must be asked “whether the improvement is more than the predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. The evidence of record in this case is that aluminum alloy was known to be useful in the same type of heating element as described in Olding. Applicants did not provide sufficient arguments or evidence to dispel this finding nor the predictability of adding a coating to an aluminum alloy utilizing Olding’s method. For the foregoing reasons, we affirm the rejection of claim 1 as obvious in view of Olding, Muller, and Lin. Claims 2–9 were not argued separately. We affirm these rejections for the reasons given by the Examiner. Appeal 2013-005844 Application 13/198,362 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED rvb UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARK R. JAWOROWSKI, SARAH ARSENALULT and JAMES T. BEALS ____________ Appeal 2013-005844 Application 13/198,362 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and RICHARD M. LEBOVITZ, Administrative Patent Judges. NAGUMO, Administrative Patent Judge, concurring. I respectfully concur in the judgment. Appellants’ belated argument, that “line 8 of claim 1 does provide the proper antecedent basis” (Reply Br. 1), is untimely and therefore not entitled to consideration. In any event, it is not persuasive because claim 1 does not make clear with what surface, in addition to “the at least one surface of said non-conductive material,” the recited conductive material must be in contact. Put another way, it cannot be determined to what surface the phrase, “and said at least one surface of said article” (Appeal Br. 15 (Claims App)) refers. It is ordinarily improper to reject a claim over prior art when the meaning of a claim cannot be determined. As the predecessor to our Appeal 2013-005844 Application 13/198,362 2 reviewing court explained, “[a]ll words in a claim must be considered in judging the patentability of that claim against the prior art. If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious—the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). See also, In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (“As we have previously indicated, our analysis of the claims leaves us in a quandary as to what in fact is covered by them. We think the examiner and the board were wrong in relying on what at best are speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. § 103 thereon.”) In a commendable effort to advance examination, the Examiner read the limitation “said at least one surface article” as not containing the word “said,” and thus reading on any surface of said article. (Final Act. 3.) The Examiner then proceeded to apply prior art against the claimed invention based on a not unreasonable guess as to what Appellants might have intended to claim. The approach resulted in progress, in that some other problems of indefiniteness were resolved; this last problem, however, was not resolved. (Adv. Act., mailed 22 October 2012.) On appeal, evaluating whether harmful error has been demonstrated in the technical merits of a rejection over prior art of a claim that has been held indefinite would seem, in light of the court’s holdings and guidance in Wilson and in Steele, highly problematic. Once an exception is stated, however, others come to mind. For example, if the Appellant has shown that a limitation entirely distinct from the limitation (or combination of limitations) held indefinite, is not taught or suggested by the references, the rejection for obviousness cannot stand. Reversal by the Board in such a case Appeal 2013-005844 Application 13/198,362 3 resolves that issue, and may therefore be appropriate. Or, if the indefiniteness concerns a limit of a range, but the prior art is clearly in the center of the range, affirmance by the Board may be appropriate. In such cases, the issues dispositive of the obviousness rejection do not require consideration of the limitation (or the part of the limitation) held indefinite. Whether the Board should proceed in such cases is an exercise in discretion based on the unique circumstances and facts of each case. In the present case, the relations among certain layers are not specified clearly and unambiguously by the claims. The Examiner did not consider all the words in the claim “in judging the patentability of that claim against prior art.” Instead, the Examiner, and apparently the Majority, read the word “said” out of the claim in order to evaluate the patentability of the claim in view of the teachings of Olding and Lin. Therefore, the argued errors in the Examiner’s findings of fact are bound up with the nature of the layers. Until the claims are definite, this aspect of the claimed invention cannot be resolved by a decision based on the merits of the prior art. Thus, in my view, the Majority’s decision resolves, at best, the patentability over prior art of a hypothetical claim. There is, however, another class of arguments regarding harmful error that fail because they are insufficient as a matter of law, and do not depend on the resolution of particular limitations of a claim. The failure in the present appeal is the absence of cited and argued evidence supporting the legal conclusion advanced by Appellants.2 2 An argument may also be insufficient as a matter of law because it is based on an incorrect rule of law, but that is not the case here. Appeal 2013-005844 Application 13/198,362 4 The two major points of Appellants’ arguments are, as noted by the Majority (Op. at 5), that the appealed rejection would “destroy the entire inventive concept of the Olding reference which is to employ a mica-based substrate” (Appeal Br. 10) and that there is no suggestion that an aluminum substrate might be useful in Olding’s process. (Id. at 12.) These arguments are not persuasive because Appellants failed to come forward with evidence and argument demonstrating that their two major points are supported by the facts of the case, when viewed from the point of view of a person having ordinary skill in the relevant arts. Put another way, Appellants did not show harmful error in the Examiner’s findings of fact or the conclusions drawn from those findings. Indeed, I understand the Examiner’s response to the first point to be that the artisan would have understood that Olding’s heater, which is formed on a mica substrate, would be effective if the mica substrate were replaced by an aluminum substrate, as described by Lin. Thus, the Examiner’s response sweeps in the Appellants’ second point. Lacking evidence and argument, Appellants’ two major points are merely unsupported conclusions. Without implying or expressing any opinion on the substantive merits of the appealed rejections, I do not find Appellants’ arguments persuasive of harmful error in those rejections. I therefore concur, respectfully, in the judgment, and I join the affirmance of those rejections on that basis. em Copy with citationCopy as parenthetical citation