Ex Parte Morris

Patent Trial and Appeal Board

Apr 17, 2018

12272686 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/272,686
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
11/17/2008
04/17/2018
FIRST NAMED INVENTOR
Eric L. Morris
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DEFT-15409-1 6767
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
MAILDATE DELIVERY MODE
04/17/2018 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 ERIC L. MORRIS
Appeal2016-005357
Application 12/272,686
Technology Center 1700
Before JEFFREY T. SMITH, JULIA HEANEY, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
32--40, 42-50, and 58. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 PPG Industries, Inc. is identified as the real party in interest. (Appeal Brief,
filed November 12 2015 ("App. Br."), 1.)
2 Final Rejection mailed March 10 2015 ("Final Act."). In this decision, we
also refer to the Examiner's Answer mailed March 2 2016 ("Ans."), and the
Reply Brief filed May 2 2016 ("Reply Br.").
Appeal2016-005357
Application 12/272,686
CLAIMED SUBJECT MATTER
The claims are directed to corrosion resistant conversion coatings.
Spec. 2:26-3:3. 3 Claims 32 and 58, reproduced below, are illustrative of the
claimed subject matter:
32. A composition comprising an aqueous solution for
coating a metal substrate, the aqueous solution comprising:
a) a Cerium-cation and an yttrium cation;
b) first and second anions; and
c) water.
58. A composition comprising an aqueous solution for
coating a metal substrate, the aqueous solution comprising:
first and second rare earth element salts; and
water, the aqueous solution being free of an oxidizing
agent other than the first and
second rare earth element salts, wherein the composition
is free of chromium.
Claims Appendix 1, 4.
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Crotty
Hardin
Stoffer
US 4,578,122 May 25, 1986
US 2002/0096230 Al Jul. 25, 2002
US 2004/0249043 Al Dec. 9, 2004
REJECTIONS
Claims 32--40 and 42--46 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Hardin. Final Act. 3.
3 U.S. Patent Application No. 12/272,686 ("Spec."), Corrosion Resistant
Conversion Coatings.
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Application 12/272,686
Claims 47-50 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Hardin and Stoffer. Final Act. 4.
Claims 58 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable Hardin in view of Crotty. Final Act. 5.
The complete statement of the rejections on appeal appears in the
Final Office Action. Final Act. 2-5.
OPINION
Claim 32
The Examiner rejects claim 32 based on Hardin which discloses an
"aqueous acidic solution ... containing at least one rare earth element"
("REE") "of a mixture of REE wherein the ratio of cerium to total REE is at
least 5% by weight" and that the REE are elements from La to Lu "plus
scandium and yttrium." Hardin, claims 1 and 7, i-f 14 (cited in Final Act. 2-
3, 6-7); see also Final Act. 3 (citing Hardin i-f 3 8 for the disclosure of the
cerium cations). Finding that Hardin discloses seventeen REEs and an
aqueous REE mixture solution having cerium and other REEs, the Examiner
finds that a skilled artisan would have arrived at the composition recited in
claim 1. Final Act. 2-3.
Appellant argues that the Examiner erred because Hardin does not
teach or suggest a composition comprising a cerium-cation and an yttrium
cation as recited in claim 32. App. Br. 7; see also Reply Br. 2. More
specifically, Appellant acknowledges that Hardin teaches an REE mixture
which includes cerium and argues that Hardin does not teach a combination
of these particular two rare earth elements. App. Br. 8. Appellant's
argument is not persuasive of reversible error in the Examiner's analysis
because the argument is not commensurate in scope with claim 32. Claim
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Application 12/272,686
32, as it is currently written, recites "comprising" and is an-open ended
claim. "In the patent claim context, the term 'comprising' is well
understood to mean 'including but not limited to."' CIAS, Inc. v. Alliance
Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007). Because claim 32 is
not limited to only the cerium cation and yttrium cation recited, Appellant's
argument that Hardin does not disclose a solution having only cerium and
yttrium (App. Br. 8; see also Reply Br. 2) is not commensurate in scope with
claim 32 and does not persuade us of reversible error in the Examiner's
analysis.
Appellant next argues that the Examiner erred by failing to explain
why a skilled artisan would have chosen the recited cerium and yttrium from
the seventeen REEs disclosed in Hardin. App. Br. 8; see also Reply Br. 2.
Appellant argues that Hardin's teaching of seventeen REEs amounts to
131,070 possible combinations which is a genus so broad that it renders the
recited composition patentable. App. Br. 8-9. We are not persuaded that
the Examiner reversibly erred in finding that Hardin allows one skilled in the
art to "at once envisage each member of [a] limited class." In re Petering,
301F.2d676, 681-82 (CCPA 1962) (holding that disclosure of small genus
of 20 members can anticipate claim directed to any single member of the
genus). In this case, Hardin teaches seventeen REEs, one of which is
cerium. Hardin i-f 14. Hardin also teaches that cerium may be mixed with
other REEs to form an REE mixture. Hardin claims 1 and 7. As indicated
above, claim 32 is not limited to a composition having only cerium and
yttrium but can include additional REEs.
Appellant also argues that the Examiner reversibly erred by finding
that there is a reasonable expectation of success. App. Br. 9-10. Appellant
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Application 12/272,686
argues that unlike other REEs, yttrium is colorless and therefore has
different properties. Id. As the Examiner points out, however, Appellant
has not adequately responded as to why the color of yttrium would be
relevant in the obviousness inquiry of claim 32 which does not recite any
particular properties of the composition. Compare Ans. 4, with Reply Br. 1-
4. No reversible error has therefore been identified.
Dependent Claims 33-35
Claims 33-35 depend from claim 32 and recite respective weight
percentages of the anions and cations ranging from at least about 0.04 to 8
weight percent. For example, claim 35 recites "wherein the combined
anions and cations are present in solution in about 8 weight percent."
Appellant argues that the cited portion of Hardin is directed to the
coating instead of a solution as recited in claim 32. App. Br. 10 (citing
Hardin i-f 17). As the Examiner points out, Hardin teaches using an aqueous
coating solution to form a coating over a surface and that the "conversion
coating preferably contains at least 5% by weight of a rare earth compound."
Final Act. 4 (citing Hardin i-f 17); Ans. 2; see also Hardin i-f 16. The
Examiner reasons that a skilled artisan would understand that a coating
solution having at least 5 weight percent of REE would result in a coating
having at least 5 weight percent of REE. Ans. 2. Appellant's argument,
directed to the prior art term "coating solution" which Appellant asserts is
patentably distinguishable from the recited "solution" does not address the
Examiner's reasoning and does not identify reversible error in the
Examiner's analysis. See Eiselstein v. Frank, 52 F.3d 1035 (Fed. Cir. 1995)
(noting that the prior application need not describe the claimed subject
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Application 12/272,686
matter in exactly the same terms as used in the claims; it must simply
indicate to persons skilled in the art that as of the earlier date the applicant
had invented what is now claimed).
Dependent Claim 3 6
Claim 3 6 depends from claim 3 2 and recites "further comprising a
second cerium cation." The cited portion of Hardin describes a solution
having Ce3+ cations as well as a solution having Ce4+ "as Ce3+ is oxidized" in
the solution. Hardin i-f 38 (cited in Final Act. 3 and cited in App. Br. 10).
Other than an unelaborated statement of disagreement with the Examiner,
Appellant does not identify error in the Examiner's reasoning-namely,
when the Ce3+ is undergoing oxidation, the solution may contain both Ce3+
and Ce4+. Compare App. Br. 10, with Final Act. 3. Argument that the prior
art composition is patentably distinguishable from the recited composition
must be supported by more than bare assertion. See In re Kemps, 97 F.3d
1427 (Fed. Cir. 1996). Appellant has not identified reversible error here. 4
Claims 47-50
Claim 4 7 depends from claim 3 2 and recites "a conversion coating
prepared from the composition according to claim 32" and "a topcoat."
In addition to the arguments we addressed with respect to claim 32,
Appellant argues that Stoffer's disclosure about a "topcoat, self-priming
topcoat, and enhanced self-priming topcoat" (Stoffer i-fi-127, 28) does not
teach or suggest the conversion coating or topcoat recited in claim 4 7. App.
4 We further note that the claim term "a second cerium cation" is not limited
to a second type of cerium cation as Appellant appears to be arguing.
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Br. 12. Appellant does not address the fact that Stoffer specifically discloses
applying a topcoat to a substrate. Id. Appellant does not dispute that Hardin
discloses treating a surface with a conversion coating formed on a metallic
surface. See Hardin i-f 1; see also App. Br. 12. Appellant does not
adequately explain why claim 4 7 is patentably distinguished from the
combined teachings (App. Br. 12) and we find that no reversible error has
been identified with regard to the rejection of claim 47.
Appellant does not argue separately for the patentability of the
remaining dependent claims (see App. Br. 10-11) and does not identify
reversible error for the same reasons as provided with respect to claim 32.
See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claim 58
With regard to the rejection of claim 58 based on Hardin and Crotty,
Appellant states: "the Examiner has failed to identify his basis for rejection
with respect to the limitation 'wherein the composition is free of chromium,'
recited in Appellant's Claim 58." App. Br. 13. Appellant argues a person of
ordinary skill in the art would not have combined the teachings of Hardin
with those of Crotty which teaches an aqueous acidic chromium passivating
solution. Id. Appellant's arguments are not persuasive. Appellant
acknowledges "Hardin's composition does not contain chromium." App.
Br. 14; Reply Br. 4--5. The Examiner cites Crotty for suggesting oxidizing
agents containing rare earth element salts and excluding hydrogen peroxide.
While it is acknowledged that Crotty' s solution includes chromium, this
does not detract from the disclosure of utilizing oxidizing agent only from
rare earth element salt. Consequently, a person of ordinary skill in the art
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would have recognized that it was not necessary to include hydrogen
peroxide as an oxidizing agent. A person of ordinary skill in the art would
have reasonably expected that hydrogen peroxide could have been excluded
from the oxidizing agent in Hardin's solution.
DECISION
The Examiner's rejections of claims 32--40, 42-50, and 58 are
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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