Ex Parte Kihira et alDownload PDFPatent Trial and Appeal BoardAug 18, 201512297508 (P.T.A.B. Aug. 18, 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. 12/297,508 02/13/2009 Hiroshi Kihira 103048-6 9410 27387 7590 08/18/2015 LONDA, BRUCE S. NORRIS MCLAUGHLIN & MARCUS, PA 875 THIRD AVE, 8TH FLOOR NEW YORK, NY 10022 EXAMINER HERNANDEZ-DIAZ, JOSE ART UNIT PAPER NUMBER 1717 MAIL DATE DELIVERY MODE 08/18/2015 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 HIROSHI KIHIRA, TAKEHIDE AIGA, ATSUMI IMAI, KANJIRO HIRAMATSU, YOSHIHIKO MITSUZUKA, MASANORI NAGAI, TAKAYUKI SATO and TSUYOSHI MATSUMOTO ____________ Appeal 2013-009451 Application 12/297,508 Technology Center 1700 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1 through 9. We have jurisdiction under 35 U.S.C. § 6. Appellants’ invention is directed to a method for highly durable repair-coating of a coated or coating-free steel structure. App. Br. 3. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A method for highly durable repair-coating of a coated or coating-free steel structure comprising the steps of: Appeal 2013-009451 Application 12/297,508 2 A. conditioning at least part of a surface of the steel structure to such an extent that the rate of exposed surface area of the steel structure surface is not less than 60%; and B. applying an aqueous solution of sodium carbonate having a concentration of not less than 5 g/L and not more than 500 g/L, as a prior or preliminary processing solution. Appellants (App. Br. 3) request review of the following rejections from the Examiner’s Final Office Action: I. Claims 1 and 4 rejected 35 U.S.C. § 103(a) as unpatentable over Eriksson (US 2006/0099332 A1 , published May 11, 2006) and Shepard (US 3,642,541, issued February 15, 1972). II. Claim 2 rejected 35 U.S.C. § 103(a) as unpatentable over Eriksson, Shepard, Kodani (US 7,744,447 B2, issued June 29, 2010) and Duescher (US 7,632,434 B2, issued December 15, 2009). III. Claims 3, 5 and 7–9 rejected 35 U.S.C. § 103(a) as unpatentable over Eriksson, Shepard, Oka (US 4,524,111, issued June 18, 1985) and Gichuhi (US 7,481,877 B2, issued January 27, 2009). IV. Claim 6 rejected 35 U.S.C. § 103(a) as unpatentable over Eriksson, Shepard, Oka, Gichuhi and Maze (US 7,078,076 B2, issued July 18, 2006). OPINION Prior Art Rejections Rejection I (claims 1 and 4) After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner’s prior art rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as unpatentable over Eriksson and Shepard for the reasons presented by the Examiner. We add the following for emphasis. Appeal 2013-009451 Application 12/297,508 3 The subject matter of independent claim 1 is drawn to a method for highly durable repair-coating of a coated or coating-free steel structure comprising a surface conditioning step followed by application of an aqueous solution of sodium carbonate having a concentration of not less than 5 g/L and not more than 500 g/L.1 The Examiner found Eriksson discloses a process for repairing a coating of a coated steel surface comprising conditioning the surface by pretreating and grinding a designated removal area to provide a blank metallic area that is in the range of 40 to 85% of the designated removal area. Final Act. 4; Eriksson ¶¶ 11, 25, 30, 163. The Examiner found Eriksson does not teach the subsequent application of an aqueous solution of sodium carbonate as claimed by Appellants. Final Act. 4. To remedy this difference, the Examiner turns to Shepard as disclosing a method of applying a corrosion resistant coating to a zinc-coated steel surface by first cleaning the zinc-coated steel surface with an aqueous solution containing 40 grams per liter of sodium carbonate to obtain a surface free of grease, dirt and any residual coatings or impurities which could inhibit coating of the substrate. Final Act. 4; Shepard Abstract, col. 3, ll. 4–27. The Examiner found it would have been obvious for a person ordinarily skilled in the art to modify the coating method of Eriksson by incorporating an aqueous solution of sodium carbonate to clean the steel surface to be repaired for the benefits disclosed by Shepard. Final Act. 4–5. 1 Appellants argue claims 1 and 4 together. See Appeal Brief, generally. We select independent claim 1 as representative of the rejected claims. Claim 4 will stand or fall with independent claim 1. Appeal 2013-009451 Application 12/297,508 4 Appellants argue Eriksson teaches away from a pretreatment step because Eriksson discloses surprisingly good corrosion resistance and paint adhesion when the repair coating is applied without a prior cleaning step. App. Br. 5–6; Eriksson ¶ 160. We are unpersuaded by these arguments and agree with the Examiner’s determination of obviousness. Appellants’ arguments are unavailing because it is well settled that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior art, including unpreferred embodiments, must be considered”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). As noted by the Examiner, Eriksson discloses a known technique (grinding and cleaning) to remove impurities form a steel surface prior to application of an anticorrosion coating in the working examples of their method. Ans. 16; Eriksson ¶¶ 4, 163. As also noted by the Examiner, Shepard discloses cleaning the surface prior to application of an anticorrosive coating, Shepard col. 1, ll. 6–12, col. 3, ll. 4–27. A person of ordinary skill in the art following the teachings of the cited art would have recognized the suitability of using Shepard’s aqueous sodium carbonate solution to clean the steel surface in the process of Eriksson given that both references address coating of steel surfaces. Eriksson claim 14; Shepard col. 2, ll. 21–24. While Appellants argue Shepard fails to teach an alkaline cleaning solution of sodium carbonate used for removing corrosion-susceptible sites in the repair of old coatings or rust substrates (App. Br. 6), Appellants have Appeal 2013-009451 Application 12/297,508 5 not adequately explained why one skilled in the art would not have found the aqueous solution of sodium carbonate of Shepard suitable for cleaning the steel substrate in the process of Eriksson given that both references address coating of steel substrates. Eriksson claim 14; Shepard col. 2, ll. 21–24. Accordingly, we affirm the Examiner’s rejection of claims 1 and 4under 35 U.S.C. 103(a) as unpatentable over Eriksson and Shepard (Rejection I) for the reasons presented by the Examiner and given above. Rejection II (claim 2) Dependent claim 2 is directed to the use of a specific rotary grinding tool to condition the surface to be repaired. The Examiner relied on the teachings of Kodani and Duescher to establish the claimed rotary grinding tool as known. Final Act. 5–10. Appellants do not dispute the Examiner’s finding that the combined teachings of Kodani and Duescher disclose the claimed rotary grinding tool. App. Br. 7. Instead, in rebuttal, Appellants argue Examples in the Specification show using a rotary tool as claimed achieves unexpected and surprising results when compared to a method using a blasting process as described in Eriksson. Id. The Examples in question are Example 2, (using a 100g/L aqueous sodium carbonate solution and a surface density of the hard particles of 100 particles/cm2 on the rotary grinding tool) and Comparative Example 1 (using blasting to condition the surface). Spec. 36– 38. The burden of showing unexpected results rests on the person who asserts them. Appellants may meet their burden by establishing that the difference between the claimed invention and the closest prior art was an Appeal 2013-009451 Application 12/297,508 6 unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). According to the Specification, the data listed in Table 1 shows generation of rust along the crosscut line on the specimens of the Examples at a narrow width. Spec. 36. The data purports to demonstrate Appellants’ claimed method, exemplified by Example 1, is a repair-coating method excellent in the anticorrosive properties, equal to or rather superior to those accomplished by the optimum conventional method (Comparative Example 1) which comprises the blasting and water-washing steps. Id. at 37. The Examiner found the data in Example 2 using a surface density of the hard particles on the rotary grinding tool of 100 particles/cm2 was not commensurate in scope with surface density range for the particles of not less than 20 particles/cm2 of claim 2. Ans. 20. Moreover, Example 2 uses a 100g/L aqueous sodium carbonate solution to clean the surface, which is insufficient to support the claimed range, via dependency from independent claim 1, of 5–500 g/L. Spec. 36. Appellants’ showing in the Specification is premised on a single Example 2 comprising the use of a rotary grinding tool having a specific surface density of hard particles on the rotary grinding tool of 100 particles/cm2 and the application of only a 100g/L aqueous sodium Appeal 2013-009451 Application 12/297,508 7 carbonate solution to clean the surface. Id. at 36–37. Given the broad scope of the claims in terms of these two parameters and the limited number of tests, we agree with the Examiner that the showing is not commensurate with the scope of the claims. Ans. 19–20. Appellants have not adequately explained why the single Example 2 is representative of the entire scope of aqueous solution of sodium carbonate or of the surface density of hard particles by independent claim 1 and dependent claim 2. Further, Appellants describe the rust resistance of Example 2, summarized in Table 1, as equal to or rather superior to those accomplished by the optimum conventional method of Comparative Example 1. Id. at 37. The Specification does not state that the results from Table 1 are unexpected nor do Appellants provide any explanation in the Appeal Brief as to why the results are in fact unexpected. App. Br. 7. On this record, Appellants have not adequately shown why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. Accordingly, we affirm the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Eriksson, Shepard, Kodani and Duescher (Rejection II) for the reasons presented by the Examiner and given above. Appeal 2013-009451 Application 12/297,508 8 Rejections III (claims 3, 5 and 7–9) and IV (claim 6) With respect to Rejections III and IV, Appellants rely primarily on the arguments presented when discussing Rejection II. App. Br. 7–8. Appellants did not substantively address or further distinguish the additional cited secondary references based on the additional limitations of the dependent claims. Id. Therefore, we affirm the Examiner’s prior art rejections of claims 3 and 5–9 (Rejections III and IV) for the reason given above and presented by the Examiner. ORDER The Examiner’s prior art rejections of claims 1–9 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD 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). AFFIRMED kmm Copy with citationCopy as parenthetical citation