Ex Parte Kihira et al

Patent Trial and Appeal Board

Aug 18, 2015

12297508 (P.T.A.B. Aug. 18, 2015)

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:
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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.
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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.
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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
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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
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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
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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.

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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
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