Ex Parte Kerluke et al

Board of Patent Appeals and Interferences

Dec 23, 2008

10896962 (B.P.A.I. Dec. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID R. KERLUKE, RICHARD GALLOWAY, and
MARSHALL R. CLELAND
____________

Appeal 2008-5312
Application 10/896,962
Technology Center 1700
____________

Decided: December 23, 2008
____________

Before LINDA M. GAUDETTE, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appeal 2008-5312
Application 10/896,962

Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 11-23.1 (Examiner’s Answer entered
January 24, 2008, hereinafter “Ans.”). We have jurisdiction pursuant to 35
U.S.C. § 6(b) (2002).
The Appeal was heard on December 10, 2008.
We AFFIRM.
THE INVENTION
Appellants’ claimed invention is directed to a method for curing one
or more coatings on an object made from a sheet material that is curved,
bent, or folded into a three dimensional structure. The method includes
coating the object with at least one electron beam or X-ray curable coating
and moving the object one or more times through one or more medium to
high power, medium to high energy electron beams or X-ray fields. (Spec.
7, ll. 10-19; 10, l. 18 – 14, l. 5). The electron beam or X-ray field is capable
of penetrating through multiple layers of the sheet material to cure areas of
coating outside the line of sight of the beam or field. (Spec. 8, ll. 5-7; 13, ll.
15-27).

Claims 11 and 21, reproduced below, are representative of the subject
matter on appeal.
11. The method of claim 21 where the object is an automotive
body, the coating is X-ray curable and the automotive body is
moved one or more times through one or more X-ray fields
generated by striking a metal target with a medium to high
power, medium to high energy electron beam.

1 Claims 1-10 and 24-26 have been withdrawn from consideration.
(Amended Appeal Brief filed February 21, 2007, hereinafter “Br.,” 3).
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21. A method for curing one or more coatings on an object
made from a sheet material that is curved, bent or folded into a
three dimensional structure comprising: (i) coating the object
with at least one electron beam or X-ray curable coating; and
(ii) moving the object one or more times through one or more
medium to high power (at least lkW), medium to high energy
(at least 1 MeV) electron beams or X-ray fields, where at least
one electron beam and/or X-ray field is capable of penetrating
through multiple layers of said sheet material to cure areas of
coating outside the line of sight of said beam or field.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cullity, “Elements of X-Ray Diffraction,” Chapter 1, pp. 1-28 1956
Ansdell, “Automotive Paints,” p. 416, Fig. 10.3 1999
Horibe US 6,231,984 May 15, 2001

The Examiner rejected claims 11-23 under 35 U.S.C. § 103(a) (2002)
as being unpatentable over Horibe in view of Ansdell and Cullity. The
Examiner found that Horibe does not expressly teach that: (i) the objects are
moved through the X-ray field; (ii) the X-ray field is medium to high power
and medium to high energy; (iii) the X-ray field is capable of penetrating
through multiple layers to cure areas of coating outside the line of sight of
the X-ray field; and (iv) the X-rays are generated by striking a metal target
with a medium to high power, medium to high energy electron beam. (Ans.
4 and 5). The Examiner found that Ansdell teaches that automobile bodies
are moved through an automated coating line. (Ans. 4). The Examiner
concluded that it would have been obvious to modify Horibe’s process to
perform the coating and curing on an automated coating line to successfully
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coat and cure the body part. (Ans. 4). The Examiner found that Cullity
teaches that X-rays penetrate objects including pieces of metal where the
intensity of an X-ray decreases proportionally to the distance traveled
through a substance. (Ans. 4 and 5). The Examiner found that Cullity
suggests that the higher the power and energy of the X-ray, the farther it will
penetrate the object. (Ans. 4). The Examiner found that claim 21 defines
power and energy using only lower limits. (Ans. 4). The Examiner
concluded that it would have been obvious to modify the process of Horibe
to utilize X-rays of the highest practicable power and energy in order to
achieve maximum penetration through the entire thickness of the coated
film. (Ans. 5). The Examiner also found that Cullity teaches that X-rays are
produced when high speed electrons collide with a metal target. (Ans. 4 and
5). The Examiner concluded that it would have been obvious to modify
Horibe’s process to generate X-rays by striking a target with a high energy
electron beam. (Ans. 5).
Appellants contend that Horibe teaches heat curing as the only way to
cure the outside line of sight portions of the substrate and as a result, Horibe
does not suggest omitting this heating step. (Br. 6 and 7). Appellants argue
that Horibe does not recognize curing the outside the line of sight portions of
the coating as a problem. (Br. 10). Appellants contend that Cullity does not
teach or suggest the use of X-rays for curing applications. (Br. 7 and 8).
Appellants contend that Horibe identifies certain body parts of an
automobile, but does not teach an automotive body as required in claim 11.
(Br. 11). Appellants argue that Ansdell teaches movement of the body or
part from one discrete stage to the next and not movement during one
particular stage. (Br. 8 and 9). Appellants argue that Horibe does not teach
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or suggest that X-ray fields are generated by striking a metal target with an
electron beam and that Horibe fails to teach what power and energy
requirements would be necessary to irradiate the outside the line of sight
portions of the object. (Br. 11 and 12).

ISSUE
Have Appellants shown that the Examiner erred in determining that
the claimed method would have been obvious over Horibe in view of Cullity
and Ansdell?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Horibe describes a method for curing a coating film having one or
more coatings by actinic radiation and heating. (Col. 1, ll. 4-11
and 43-52).
2. Horibe teaches that the substrates coated are “not particularly
limited” and that the invention is particularly useful for coating
automobile body panels. (Col. 1, l. 66 - col. 2, l. 7).
3. Horibe discloses that X-rays and electron beams may be used as
the actinic ray. (Col. 8, ll. 22-24).
4. Horibe discloses that “it is difficult to uniformly irradiate the
actinic ray through the whole intermediate coating surface
according to the shape of the substrate.” (Col. 8, ll. 36-39).
5. Horibe discloses that as a result of insufficient irradiation, “curing
by crosslinking by heating is necessary.” (Col. 8, ll. 49-60).
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6. Cullity discloses that X-rays are known to pass through “quite
thick pieces of metal, and other ‘opaque’ objects.” (P. 1).
7. Cullity discloses that “the fractional decrease in intensity I of an x-
ray beam as it passes through any homogenous substance is
proportional to the distance traversed.” (p. 10).
8. Cullity discloses that “x-rays are produced whenever high-speed
electrons collide with a metal target.” (p. 17).
9. Ansdell discloses that an automobile is moved through different
stages when coated. (Fig. 10.3).
10. Appellants’ Specification states:
In the mid 1990’s, Ion Beam Applications, S.A. (IBA)
introduced a family of revolutionary medium to high power,
medium to high energy electron beam accelerators.
(Spec. 3, ll. 29-30).

11. Appellants’ Specification defines “automotive body” as
the main portion of a car, truck, bus, motorcycle, or any other
automotive transportation vehicle, including at least the frame
or shell, but optionally including other parts such as doors,
hood, trunk, axles, etc.
(Spec. 7, ll. 20-23).

12. Appellants’ Specification states:
In one embodiment, the car body is rotated at a fixed angle (e.g.
45º) as it passes through the treatment zone, in order to improve
the dose uniformity. One pass through two beams with this
body orientation should be sufficient. Alternatively, two passes
at half the total dose per pass (i.e. twice the conveyor speed)
could be applied to opposite rotations of the body to obtain a
more uniform dose distribution. Two passes are routinely done
at many electron beam facilities today.
(Spec. 15, ll. 8-13) (emphasis added).

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PRINCIPLES OF LAW
Determining whether a reference is non-analogous art is a two-fold
inquiry. First, we must decide if the reference is within the field of the
inventor’s endeavor; if it is not, we proceed to determine whether the
reference is reasonably pertinent to the particular problem with which the
inventor was involved. See In re GPAC Inc., 57 F.3d 1573, 1577 (Fed. Cir.
1995); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is
reasonably pertinent if, even though it may be in a different field of
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
In an obviousness rejection, the combination of references must be
considered as a whole, rather than the specific teaching of each reference. In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); In re Simon, 461 F.2d
1387, 1390 (CCPA 1972).
The Court in KSR stated:
The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee was
trying to solve. The Court of Appeals failed to recognize that
the problem motivating the patentee may be only one of many
addressed by the patent's subject matter. The question is not
whether the combination was obvious to the patentee but
whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
The second error of the Court of Appeals lay in its assumption
that a person of ordinary skill attempting to solve a problem
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will be led only to those elements of prior art designed to solve
the same problem.

KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007) (Internal
citations omitted).

ANALYSIS
Appellants’ argument that Horibe does not recognize outside the line
of sight curing as a problem in need of solution is unpersuasive. Horibe
acknowledges that complete curing of a three-dimensional substrate through
actinic radiation is a problem due to the shape of the substrate. (FF 4). The
only reason that Horibe employs a heat-curing step is to cure those portions
of the shaped substrate that are outside the line of sight of the actinic ray.
(FF 5). Appellants take the position that if Horibe has defined curing the
outside the line of sight portions of a substrate as a problem to be solved, it
is solved through the use of heat curing. (Br. 10). However, Appellants
have failed to consider that one of ordinary skill in the art is not limited to
solving a problem in the same manner as the prior art. Since Horibe
specifically teaches the use of X-rays for curing a substrate and Cullity
teaches that X-rays penetrate through layers of metal, one of ordinary skill in
the art would have had a reasonable expectation of success in applying well-
known prior art X-ray techniques in curing the portions of the substrate that
are out of the line of sight of the X-ray field. (See Ans. 5; FF 3, 6 and 7).
Although Cullity does not expressly address curing though X-rays, Cullity
would have commended itself to the inventor’s attention due to the
description of the properties and methods of generating X-rays described
therein. Thus, Appellants’ argument that Horibe does not teach how the X-
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rays are generated does not consider what the prior art as a whole would
have conveyed to one of ordinary skill in the art.
In addition, Appellants’ argument that Horibe does not teach the
power and energy requirement of the claims also fails to consider the
rejection as a whole. Appellants have not shown error in the Examiner’s
determination that the highest practicable power and energy of X-rays would
have been above the lower limits of power and energy presently claimed.
(See Ans. 4 and 5). Indeed, Appellants’ Specification states that medium to
high power, medium to high energy electron beam accelerators, used to
produce X-rays, have been known since the 1990’s. (FF 10). Therefore,
Appellants’ argument is not persuasive.
Appellants have failed to show that moving an automobile body
through an X-ray field would not have been obvious to one of ordinary skill
in the art in view of Ansdell. The Examiner found that Ansdell shows that
moving an automobile body through an automated coating line is known in
the art. (Ans. 4). Appellants’ Specification is consistent with the
Examiner’s finding. (FF 12). Thus, the claimed movement would have
been readily obvious depending on the specific process requirements for a
given coating and curing application.
Appellants have failed to show that Horibe does not suggest coating
an entire automobile body as defined in the Specification and recited in
claim 11. Horibe does not limit the substrates to portions of an automobile
body and Ansdell demonstrates that automobile body substrates are known
in the art. (See Ans. 8; FF 2 and 9). In addition, Appellants have not shown
any unexpected advantages to coating the entire automobile substrate as
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opposed to the individual panels. Therefore, Appellants’ arguments are not
persuasive.

CONCLUSION
Appellants failed to demonstrate that the Examiner erred in
determining that the claimed method would have been obvious over Horibe
in view of Cullity and Ansdell.

ORDER
We affirm the Examiner’s decision rejecting claims 11-23 under 35
U.S.C. § 103(a) as being unpatentable over Horibe in view of Ansdell and
Cullity.
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

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P.O. BOX 1018
SOMMERVILLE, NJ 08876

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