Ex Parte Ono et al

Patent Trial and Appeal Board

May 29, 2018

13822387 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/822,387 03/12/2013
23400 7590 05/31/2018
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
FIRST NAMED INVENTOR
Y oshitomo Ono
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.
24_113_TN 7170
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/31/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @poszlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHITOMO ONO, YUMIKO AMINO,
TAICHI SUZUKI, and KIYOSHI KOIBUCHI 1
Appeal2017-000678
Application 13/822,3 87
Technology Center 1700
Before JULIA HEANEY, A VEL YN M. ROSS, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 2
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1---6, 11-20, and 23-26, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify the real party in interest as Lintec Corporation and
Honda Motor Co., Ltd. Appeal Br. 1.
2 In our Decision we refer to the Specification filed March 12, 2013
("Spec."), the Final Office Action appealed from dated July 15, 2015 ("Final
Act."), the Appeal Brief filed February 5, 2016 ("Appeal Br."), the
Examiner's Answer dated August 10, 2016 ("Ans.") and the Reply Brief
filed October 11, 2016 ("Reply Br.").
Appeal2017-000678
Application 13/822,3 87
STATEMENT OF THE CASE
The subject matter on appeal relates to a masking material for
masking a part to protect a portion of the part from the application of paint
during painting. Spec. i-f l. In particular, the masking material includes a
releasable protective layer that covers the exterior surface of the mask and
"allow[ s] the paint attached to the masking material to be removed, and
therefore, the releasing and the re-forming (re-applying) of this releasable
protective layer (releasable protective material) can be repeated to allow the
masking material to be repeatedly used many times." Id. i-f 12. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A mask for use in a heating process, the mask comprising:
a masking material configured to magnetically attach to a
metal part and to mask the metal part from application of a paint
to the metal part during a painting process, the masking material
having a structure consisting essentially of a base material having
a fixing surface configured to contact and magnetically fix the
mask to the metal part and a releasable protective layer in direct
contact with and continuously covering another surface of the
base material, the another surface of the base material being on a
side of the base material opposite the fixing surface, wherein
the base material comprises a resin and contains a
magnetic substance, the resin has a melting point higher than
120° C and higher than a temperature of the heating process, the
magnetic substance has a Curie temperature higher than the
temperature of the heating process, and the fixing surface of the
base material has a sufficient magnetic force for fixing the mask
onto the metal part at temperatures from 120° C to 160° C, and
the releasable protective layer is applied to the another
surface of the base material before painting, the releasable
protective layer comprises a releasable protective material and is
peelable from the base material after subjecting the masking
material to repeated cycles of the heating process, and the
releasable protective layer is a layer of material separate and
different from the paint used in the painting process.
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Appeal Br. 34 (Claims App'x).
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1---6, 11-20, and 23-26 stand rejected under 35
U.S.C. § 112 first paragraph as failing to comply with the
written description requirement. Final Act. 2-3.
B. Claims 1-5, 11-16, and 23-26 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Dunford3 in view of
Jeff, 4 Griffin, 5 Sasazawa, 6 and Williams 7 as evidenced by
Nylon 128 and Nylon 6. 9 Id. at 5.
C. Claims 5, 6, and 14--20 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Dunford in view of Jeff,
Griffin, Sasazawa, and Williams as evidenced by Nylon
12 and Nylon 6 and further in view ofYamamoto. 10 Id. at
12.
D. Claims 1-5, 11-16, and 23-26 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Dunford in view of
3 James Dunford, GB 2 168 650 A, published June 25, 1986 ("Dunford").
4 Jeff et al., US 3,420,692, issued January 7, 1969 ("Jeff').
5 Griffin et al., US 5,702,774, issued December 30, 1997 ("Griffin").
6 Sasawawa et al., US 2003/0034476 Al, published February 20, 2003
("Sasawawa").
7 Terry L. Williams, US 6,350,491 Bl, issued February 26, 2002
("Williams").
8 PAR GROUP, NYLON 12: TECHNICAL INFORMATION (undated) (''Nylon
12").
9 POLYMERPROCESSING.COM, NYLON-6: INFORMATION AND PROPERTIES
(2000) ("Nylon 6").
1° Kazumi Yamamoto, US 6,312,795 Bl, issued November 6, 2001
("Yamamoto").
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Application 13/822,3 87
Jeff, Griffin, N onnura 11 , and Williams as evidenced by
MGC MXD6. 12 Id. at 14.
E. Claims 5, 6, and 14--20 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Dunford in view of Jeff,
Griffin, Nomura, and Williams as evidenced by MGC
MXD6 and further in view of Yamamoto. Id. at 23.
Appellants seek our review of Rejections A-E. See generally Appeal
Br. We address Rejection A and Rejections B-E (together) below. Because
the basis for our reversal of prior art Rejections B-E-that is, no teaching or
suggestion of a releasable protective layer that is peelable from the base
material-is common to all claims, we focus our discussion of the prior art
rejections on claim 1.
OPINION
Rejection A- Written Description (claims 1-6, 11-16, and 23-26)
The Examiner rejects claims 1 and 2 as lacking necessary written
description because the recited "releasable protective layer [being] a layer of
material separate and different from the paint used in the painting process" is
not supported by the Specification. Final Act. 3.
Appellants generally argue that the Examiner's conclusory statement
that the Specification lacks disclosure of the identified claim limitations is
insufficient to establish by a preponderance of the evidence that the claims
lack written description. Appeal Br. 8. Appellants further argue that the
releasable protective layer being separate and different from the paint is fully
11 Nomura et al., JP 19880531 A, published May 31, 1988 ("Nomura").
12 MITSUBISHI GAS CHEMICAL COMPANY, INC., NYLON-MXD6: BASIC
PROPERTIES (undated) ("MGC MXD6").
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Application 13/822,3 87
supported by the Specification when understood in light of the opposite
purposes of the paint, to permanently adhere to the metal part, and the
releasable protective layer, to be easily removed. Id. at 9.
We are not persuaded by the Examiner's rationale. The test for
sufficiency of a written description is whether the disclosure "clearly
allow[ s] persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (citing Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562---63 (Fed. Cir. 1991)). An adequate written description
"does not require literal support for the claimed invention." Ex parte Parks,
30 USPQ2d 1234, 1236 (BPAI 1993). As such, "a lack of literal support
does not, in and of itself, establish a prima facie case for lack of adequate
descriptive support." Id. "Rather, it is sufficient if the originally-filed
disclosure would have conveyed to one having ordinary skill in the art that
an appellant had possession of the concept of what is claimed." Id.
Here, the Specification describes the releasable protective layer as a
layer that is applied to the base material that allows the paint attached to the
mask during the painting process to be removed and optionally reformed to
permit repeated painting applications, implying the layers are separate and
different. Spec. i-f 12. And, the releasable protective material is also
separately applied "in any step before painting." Id. i-f 19. The Specification
describes the protective layer as comprising a "sealing material or a
strippable paint for cars." Id. at i-f 34. Thus, the layers are formed
separately, and when the releasable protective material is a sealing material,
it comprises a material different from the paint. This understanding is
further supported by the figures which illustrates the positioning of the
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releasable protective layer 3 formed on the base layer prior to the application
of the separate paint layer. See Figs. 1 and 2.
We also do not find persuasive the Examiner's position (Final Act. 3)
that the Specification similarly lacks support for "a metal part," required by
claims 1, 2, 23, and 24, because the Specification describes only steel parts.
The Examiner requires a level of specificity the law does not require. All
that is required to satisfy the written description requirement is for the
specification to demonstrate, with reasonable clarity, to a person of ordinary
skill in the art that the inventor was in possession of the invention. Carnegie
Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
2008).
Here, the Specification describes the metal part that is to be masked
and then painted as comprising "a magnetic substance, such as [a] steel plate
or steel product." Spec. i-f 52; see also id. i-f56 ("The masking object may be,
but not limited to, a member that comprises a magnetic substance or steel
product"). The Specification further exemplifies "a steel plate for a car."
See e.g., Spec. i-fi-120, 44, 51, and 56. Appellants explain that magnetic
substances include "'metals' such as iron, nickel and cobalt, alloys (e.g.[,]
stainless steel), steel plate or steel product." Appeal Br. 10 (citing Spec. i-fi-1
27 and 29). The Examiner finds that Appellants' reliance on these magnetic
materials to provide written description support for the metal part is
insufficient because that disclosure relates to the magnetic material
comprising the base material resin and not the metal part to be painted. Ans.
26. However, the Specification provides examples of known magnetic
materials regardless of context. Further, the skilled artisan would readily
understand what class of metals are "magnetic substances" useful for vehicle
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Application 13/822,3 87
parts. See Space Systems/Loral, Inc. v. Lockheed Martin Corp., 405 F.3d
985, 987 (Fed. Cir. 2005) (explaining that the written description need not
include information that is already known and available to the experienced
public so long as it is described in sufficient detail to indicate possession by
the applicant of the subject matter claimed). Appearance of a claim in the
specification in ipsis verbis does not guarantee that the written description
requirement is satisfied, see, e.g., Enzo Biochem, Inc. v. Gen-Probe Inc., 323
F.3d 956, 968 (Fed. Cir. 2002), nor does a failure to meet that standard
require a finding that a claim does not comply with the written description
requirement, In re Edwards, 568 F.2d 1349, 1351-52 (Fed. Cir. 1978).
Finally, the Examiner rejects claims 25 and 26-----each requiring that
the releasable protective material is peelable from the base material without
the use of a solvent-as failing to comply with the written description
requirement. Final Act. 3.
Appellants contend that the Specification's description of a solvent
resistant film (Spec. i-f 7), the general understanding that the use of a solvent
for removing paint layers was known, and the details in the Specification
regarding the strength needed to peel the painted layers (id. i-fi-138), provide
adequate support to show Appellants were in possession of the claimed
subject matter. Appeal Br. 10.
We agree with Appellants. The mere absence of a positive recitation
in the originally filed description, i.e., a negative limitation, is not a basis for
exclusion. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter.
1993); MPEP § 2173.05(i).
In this case, the Specification describes prior art masks that include a
solvent resistant thin film that allows for paint attached to the film to be
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Application 13/822,3 87
removed from the laminated film. Spec. i-f 7. The film being "solvent
resistant" suggests that a solvent may be used to remove the paint without
damage to the film. Further, the Specification explains that "[t]he strippable
paint for cars may be ... water soluble or solvent-based" further suggesting
that a solvent may or may not be used to remove the releasable protective
layer. Id. i-f 37. Therefore, we find adequate written description to support
the "releasable protective material [being peelable] ... from the base
material ... without [the use of a] solvent," as required by claims 25 and 26.
For the reasons discussed above, we reverse the Examiner's rejection
of claims 1---6, 11-16, and 23-26 under 35 U.S.C. § 112.
Rejections B-E- Obviousness
Regarding Rejection B, the Examiner rejects claim 1, among others,
as obvious over Dunford, in view of Jeff, Griffin, Sasazawa, and Williams,
as evidenced by Nylon 12 and Nylon 6. Final Act. 5. The Examiner finds
that Dunford describes a reusable, magnetic masking layer, i.e., a stencil,
applied to a metal part during painting. Id.; see also Ans. 29 (same). The
Examiner finds that Jeff teaches a paint composition "that allows for low
curing ('baking') temperatures and teaches that the amount of heat applied to
cure the paint may be less than 250 F (approximately 121 C), with lower
temperatures being usable if additional time is provided for curing .... " Id.
The Examiner reasons that the person skilled in the art would have reason to
combine Dunford and Jeff "because of the lower energy and temperatures
required to cure the paint from Jeff." Id. at 6. The Examiner finds that
Griffin similarly describes magnetic masking materials for paint applications
where "the mask may be used over and over again with the paint applied in
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Application 13/822,3 87
each cycle accumulating prior to the next use, until the accumulated paint is
finally removed" which would have been desirable to improve cost "by
requiring less time/energy due to cleaning between cycles." Id. The
Examiner also finds that "Sasazawa teaches a resin/magnetic composition
that has improved flexibility, reduced strength deterioration, and resistance
to cracking" made of strontium ferrite and possesses the temperature profile
claimed. Id. at 7. Lastly, the Examiner finds that Williams teaches use of
spray coatings to completely and evenly cover the articles to be painted,
where the coatings may be different, i.e., a base color and a clear coat. Id. at
8.
The Examiner's rejection of claims 1-5, 11-16, and 23-26 under
Rejection D differs from Rejection B only in that the Examiner relies on
Nomura (as opposed to Sasazawa) to teach the claimed magnetic base
material. Id. at 15-23; see Ans. 29 (stating that "[t]he two rejections differ
in the reference cited for the particular magnetic material composition
(Sasazawa or Nomura, with different corresponding evidentiary
references)."). The Examiner finds that the magnetic composition of
Nomura comprises strontium ferrite and nylon MXD6 which possesses the
claimed temperature parameters. Id. The Examiner reasons that the skilled
artisan would use Nomura in the modified masking material of Dunford "to
impart improved heat-resistance, dimensional stability, and water stability."
Id. at 18.
Appellants present several arguments in support of claim 1. See
generally Appeal Br. We agree with Appellants' argument that the
combination of references fails to suggest a protective layer that is peelable
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Application 13/822,3 87
from the base material, and therefore, we do not address Appellants'
remaining arguments.
In particular, Appellants argue that the Examiner's reliance on Griffin
to suggest a peelable protective layer is misplaced because it is the "smooth
polyvinyl film or coating 27 [that] provides the releaseability of the painted
layers by the use of a solvent" in Griffin. Id. at 20. This polyvinyl coating
27 in Griffin is adhered and not "releasable" from the base material. Id.
Appellants argue that because the peelable nature of Griffin is due to a non-
releasable polyvinyl film, no releasable protective layer is taught by the
combination of references. Id.
We agree with Appellants. Here, Griffin makes clear that the masking
material disclosed includes a vinyl backing film that is exposed to the paint
during the painting process. Griffin explains that the ability to reuse the
masking members of Griffin is made possible by the vinyl backing film. For
example, Griffin states that
[t]he reuse of the magnetic masking members may be repeated
in masking the brake heads and after a number of painting
operations, the excess paint which has accumulated on the vinyl
side of the masking members by simply peeling off and wiping
the surface clean a suitable solvent or the like.
Griffin, col. 4, 11. 21-24; see also id. Abstract ("an exterior vinyl film
backing which may be cleaned of excessive paint after a number of reuses
and repeated paintings."). The Examiner explains that Griffin "was simply
cited for the idea of reusing the masking material for multiple painting
operations before cleaning off the accumulated paint." Final Act. 26; see id.
at 6; Ans. 31. The Examiner expressly states that "the [vinyl film] material
of Griffin is not being used in the combination of references." Ans. 32
(emphasis added). Rather, the Examiner identifies the first layer of paint as
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Application 13/822,3 87
the releasable, i.e., peelable, protective layer and explains that "[t]he first
paint layer (like all the paint layers) is removable from the magnetic stencil
by design (as taught by Griffin and because the whole point of the magnetic
stencil is to allow the paint that sticks to the stencil to be removed)." Ans.
30-31. However, in the absence of the polyvinyl film of Griffin, there is no
expectation or teaching that the first paint layer identified by the Examiner
as the releasable protective layer would in fact peel away from the base
material. 13
Therefore, on this record, we cannot sustain the Examiner's rejections
of claims 1-5, 11-16, and 23-26 as obvious based on the references cited in
Rejections B-E.
CONCLUSION
Appellants have identified a reversible error in the Examiner's
rejection of claims 1---6, 11-20, and 23-26 under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
Appellants have identified a reversible error in the Examiner's
rejection of claims 1-5, 11-16, and 23-26 under 35 U.S.C. § 103(a) as
unpatentable over Dunford in view of Jeff, Griffin, Sasazawa, and Williams
as evidenced by Nylon 12 and Nylon 6.
13 The Examiner also states that "since the magnetic 'base material' of the
cited references is the same as in the present specification, it would also
inherently allow the subsequent paint layers to be removed." Ans. 33.
However, without more, the Examiner has failed to provide the necessary
basis in fact or technical reasoning to support a finding of inherency, i.e.,
that the characteristic of the paint to peel away necessarily follows from the
teachings in the prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat.
App. & Inter. 1990).
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Application 13/822,3 87
Appellants have identified a reversible error in the Examiner's
rejection of claims 5, 6, and 14--20 under 35 U.S.C. § 103(a) as unpatentable
over Dunford in view of Jeff, Griffin, Sasazawa, and Williams as evidenced
by Nylon 12 and Nylon 6 and further in view of Yamamoto.
Appellants have identified a reversible error in the Examiner's
rejection of claims 1-5, 11-16, and 23-26 under 35 U.S.C. § 103(a) as
unpatentable over Dunford in view of Jeff, Griffin, Normura, and Williams
as evidenced by MGC MXD6. Id. at 14.
Appellants have identified a reversible error in the Examiner's
rejection of claims 5, 6, and 14--20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Dunford in view of Jeff, Griffin, Nomura, and Williams
as evidenced by MGC MXD6 and further in view of Yamamoto.
DECISION
For the above reasons, the Examiner's rejection of claims 1-6, 11-20,
and 23-26 is reversed.
REVERSED
12