Ex Parte Ludwig et al

Patent Trial and Appeal Board

Sep 24, 2013

11405315 (P.T.A.B. Sep. 24, 2013)

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.
11/405,315 04/17/2006 Robert J. Ludwig COL-Y 3928
28862 7590 09/25/2013
HUDAK, SHUNK & FARINE, CO., L.P.A.
2020 FRONT STREET
SUITE 307
CUYAHOGA FALLS, OH 44221
EXAMINER
ZHENG, LOIS L
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
09/25/2013 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 ROBERT J. LUDWIG and ANDREW C. RECKER
____________

Appeal 2012-003729
Application 11/405,315
Technology Center 1700
____________

Before ANDREW HAROLD METZ, CHARLES F. WARREN, and
KAREN M. HASTINGS, Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1 through 8 and 56 through 67, which are all the
claims remaining in the application. We have jurisdiction under 35 U.S.C. §
6.
We AFFIRM.

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THE INVENTION
Claim 1 is believed to be adequately representative of the appealed
subject matter and is reproduced below for a more facile understanding of
the claimed invention.
1. An aqueous acidic zinc or zinc alloy coated iron substrate
conversion solution, comprising:

from about 0.5 to about 130 g/L of said zinc or zinc alloy coated
iron substrate conversion solution of a chromium(III) ion;

from about 1 to about 100 g/L of said zinc or zinc alloy coated iron
substrate conversion solution of one or more of a non-halide salt
anion;

from about 1 to 35 g/L of said zinc or zinc alloy coated iron
substrate conversion solution of one or more monocarboxylic acids
selected from the group consisting of formic acid, acetic acid,
propionic acid, butyric acid, isobutyric acid, valeric acid, isovaleric
acid, hexanoic acid, heptanoic acid, octanoic acid, nonanoic acid,
and decanoic acid;

from 1 to about 10 g/L of said zinc or zinc alloy coated iron
substrate conversion solution of one or more non-chromium metal
ions comprising Groups 1, 2, 4, 5, 6, 7, 8, 9, 10, 12, 13 or 14 of the
Periodic Table;

from about 0.1 to about 30 g/L of said zinc or zinc alloy coated
iron substrate conversion solution of one or more halide ions;

said zinc or zinc alloy coated iron substrate conversion solution
containing an amount of chromium(VI) ion of about 10 or less
mg/L of said conversion result; and

wherein said zinc or zinc alloy coated iron substrate conversion
solution is substantially free of chromium(III) chelates including
chelates derived from dicarboxylic acids.
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The references of record which are being relied on by the Examiner as
evidence of obviousness are:

Gyllenspetz et al. (Gyllenspetz) RE. 29,749 Aug. 29, 1978
Barnes et al. (Barnes) 4,196,063 Apr. 01, 1980
Diaddario, Jr. et al. (Diaddario) US 2006/0266438 A1 Nov. 30, 2006

THE REJECTIONS
Claims 1 through 5 and 56 through 60 stand rejected as being
unpatentable under 35 U.S.C. § 103(a) as the subject matter claimed therein
would have been obvious at the time Appellants made their invention from
the disclosure of Gyllenspetz.
Claims 6 through 8 and 61 through 63 stand rejected as being
unpatentable under 35 U.S.C. § 103(a) as the subject matter claimed therein
would have been obvious at the time Appellants made their invention from
the disclosure of Gyllenspetz considered with Diaddario.
Claims 64 through 67 stand rejected as being unpatentable under 35
U.S.C. § 103(a) as the subject matter claimed therein would have been
obvious at the time Appellants made their invention from the disclosure of
Gyllenspetz considered with Barnes.
OPINION
In the Answer at pages 3 and 4, the Examiner has withdrawn the
following rejections: the rejection of claims 1 through 5 and 56 through 60
under 35 U.S.C. 103 (a) as being unpatentable from the disclosure of
Hashimoto; the rejection of claims 6 through 8 and 61 through 63 under 35
U.S.C. 103 (a) as being unpatentable from the disclosure of Hashimoto
considered with Diaddario; and, the rejection of claims 1, 2, and 6 under 35
U.S.C. 103 (a) as being unpatentable from the disclosure of Diaddario.
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Accordingly, these rejections are no longer before us and form no issue in
this appeal.
Appellants’ invention is claimed as an aqueous acidic solution
comprising five recited components. Specifically, the claimed solution
comprises from 0.5 to 130 g/L of a chromium(III) ion; from about 1 to 100
g/L of one or more non-halide salt anions; from about 1 to about 35 g/L of
one or more carboxylic acids; from 1 to about 10 g/L of one or more non-
chromium metal ions; and from about 0.1 to about 30 g/L of one or more
halide ions. The solution is “substantially free of chromium(VI) ions, that is,
10 or less mg/l of chromium(VI) ions and the solution is also “substantially
free of chromium(III)- chelates” or 0.25 moles or less of chelant per mole of
chromium(III)-ions (Spec., page 11, lines 15 through 17).
Each of the Examiner’s rejections relies on the disclosure of
Gyllenspetz, either alone, or considered with other prior art (Gyllenspetz
with Diaddario and Gyllenspetz considered with Barnes). Appellants argue
that the proffered rejections would not have rendered the claimed subject
matter obvious in the sense of the statute because each of the rejections
relies on Gyllenspetz which is directed to trivalent chromium electroplating
baths not aqueous acidic conversion solutions as claimed. Moreover,
Appellants argue that the problem solved by Gyllenspetz, a solution for the
electrodeposition of chromium from aqueous solution, is so different from
what Appellants’ intended utility is for the claimed aqueous solutions as to
render Gyllenspetz non-analogous art. The Examiner has responded to
Appellants’ argument by observing that the claimed subject matter is
aqueous acidic solutions and how the prior art solutions are ultimately used
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does not necessarily render the prior art relied on irrelevant or non-
analogous prior art. The Examiner concludes that because, materially, the
aqueous acidic chromium(III) containing solutions of Gyllenspetz are so
similar to the claimed aqueous acidic chromium(III) containing solutions the
claimed compositions would have been obvious to the hypothetical person
of ordinary skill in the art.
We reject Appellants’ argument that Gyllenspetz is non-analogous
prior art. A reference is considered to be from analogous prior art if (1) the
reference is within the field of Appellants’ endeavor. If the answer to that
question is “yes” the reference is considered to be “analogous” prior art and
may be relied on as evidence of obviousness. If the answer is “no” then we
must ask (2) if the reference is reasonably pertinent to the problem
Appellants were trying to solve. If the answer to the second question is “yes”
then the reference is “analogous” and may be used as evidence of
obviousness. See In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992); In re
Wood, 599 F.2d 1032, 1036 (CCPA 1979). We find Gyllenspetz to be from
within the field of Appellants’ endeavor, that is, from the field of
chromium(III) containing, chromium(VI) “free” aqueous acidic solutions for
treating metals.
Appellants have not meaningfully challenged any of the Examiner’s
factual findings for what Gyllenspetz describes as set forth on pages 4 and 5
of her Answer. We find, as correctly observed by the Examiner, the
solutions of Gyllenspetz include the same components as claimed by
Appellants and include amounts which include or overlap the amounts
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claimed by Appellants. Accordingly, we find the Examiner has made out a
prima facie case of obviousness of the claimed subject matter.
To the extent Appellants argue that Gyllenspetz requires a formate or
acetate as essential additives for their aqueous acidic solution and that the
claims do not require either a formate or acetate, we observe that as
“comprising” claims, Appellants’ claims do not exclude either formates or
acetates. Furthermore, the fact that some of the components taught in the
prior art are optional does not lessen the obviousness of optionally using
them as provided by Gyllenspetz. Gyllenspetz’s disclosure from column 6,
lines 25 through 28, that the required anionic components may be added as
bases and combined with separate additions of the acids such as formic or
acetic acids, satisfies the claim limitation for from 1 to about 35 g/L of
solution of one or more carboxylic acids.
Appellants’ argument that the borates required by Gyllenspetz “are
known chelators” finds no basis in the record and is considered to be
attorney argument. Further, the claims do not exclude chromium(III)
chelates entirely but allow for up to 0.25 moles of chromium(III) chelates
per mole of chromium(III) ion in solution. Thus, assuming, arguendo, that
borates are “known chelators” Gyllenspetz’s disclosure of adding 0.1 mole
of borate to their solution falls within Appellants’ definition of “substantially
free of chromium(III) chelates.”
Claims 64 through 67 require that the “non-halide salt anion” of claim
1 comprises phosphate. The Examiner has relied on the disclosure of
Gyllenspetz considered with Barnes to reject those claims. We agree with
the Examiner’s finding that the hypothetical person of ordinary skill in the
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art would have been motivated to add phosphate anions from Barnes’
aqueous acidic chromium(III) solutions to the solution of Gyllenspetz with
the reasonable expectation that the solution would form a black chromium
coating as taught by Barnes. Appellants urge that the rejection does not
present a prima facie case of obviousness and repeat their earlier argument
that the references on which the Examiner has relied are from “non-
analogous” art in support of that argument. Because we have already
rejected that argument we shall affirm the Examiner’s rejection of claims 64
through 67.
In their Brief, under the heading “Summary”, Appellants allude to a
showing submitted under 37 C.F.R. § 1.132 during the prosecution as
evidence that the use of free carboxylic acid gives superior results in
chromium conversion layers compared with the results obtained using a salt
of a monocarboxylic acid. The Examiner has responded to this evidence by
pointing out that the declaration was submitted to address the rejections
founded on Hashimoto which has been withdrawn. Additionally, the
Examiner observes that unlike the withdrawn prior art, Gyllenspetz
specifically provides for the presence of both acetate and formate
compounds and free monocarboxylic acid. The Examiner repeats the
observation that there are too many uncontrolled variables in the proposed
comparison to conclude that the results obtained are due to the presence of
free monocarboxylic acid. We agree with the Examiner’s conclusions.
The mere presentation of evidence of nonobviousness does not in and
of itself mandate a finding of patentability. Rather, the burden rests on the
party presenting the evidence to establish that the comparison made is
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representative of the prior art and truly probative. In attempting to show that
the subject matter claimed possesses properties that are “unexpected” or
“surprising” Appellants bore the burden of demonstrating that actual
differences in properties exist between what is claimed and the prior art and
that the differences are meaningful and truly “unexpected.” This Appellants
have failed to do. Additionally, we find that because Gyllenspetz discloses
the conjoint use of monocarboxylic acid salt and free monocarboxylic acid
the proposed showing is not probative.
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)(1)(iv).
AFFIRMED

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