Ex Parte Poole et al

Board of Patent Appeals and Interferences

Jun 30, 2010

11776102 (B.P.A.I. Jun. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES E. POOLE, ANTHONY D. KULFAN, and
RAPHAEL O. KOLLAH
____________

Appeal 2009-013027
Application 11/776,102
Technology Center 1700
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Decided: June 30, 2010
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Before CHARLES F. WARREN, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-9 and 11-13 (Final Office Action
(“Final”), mailed Jul. 24, 2008, 1), the only claims pending in the
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Application 11/776,102

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Application. (Appeal Brief (“Br.”), filed Sep. 8, 2008, 1-2.) We have
jurisdiction under 35 U.S.C. § 6(b).
Claims 1 and 11 are illustrative of the invention and are reproduced
below from the Claims Appendix to the Appeal Brief:
1. A coated article comprising:

(a) a decorative metal substrate having a specular gloss
greater than 100,

(b) a transparent cured coating adhered directly to the
decorative metal substrate containing a resinous binder,
inorganic particles, and 0.5 to 10 percent by weight of a surface
active agent based on total solids weight in which the
concentration of particles in the exposed surface region of the
cured coating is greater than the bulk region of the cured
coating.

11. The coated article of claim 1 in which the surface
active agent is a polysiloxane.

The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Feb.
24, 2009, 3-12), and Appellants request review of (Br. 3), the following
grounds of rejection:
1. claims 1-9 under 35 U.S.C. § 103 as unpatentable over White
(US 2003/0224174 A1, published Dec. 4, 2003) as evidenced by Hogge (US
2006/0089419 A1, published Apr. 27, 2006) and PapaJohn’s Tool Box
(http://www.hobbytool.com/buffing.htm, published Sep. 13, 2004);
2. claims 11 and 12 under 35 U.S.C. § 103 as unpatentable over
White as applied to claim 1 in view of Nakos (US 5,063,254, issued Nov. 5,
1991); and
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3. claim 13 under 35 U.S.C. § 103 as unpatentable over White and
Nakos in view of Williams (US 4,956,240, issued Sep. 11, 1990).
We adopt the Examiner’s factual findings as set forth in the Final and
Answer as our own. We have considered the arguments advanced by
Appellants in support of patentability of the appealed claims. 1 However, we
are not persuaded of error in the Examiner’s obviousness determination for
the reasons expressed in the Examiner’s Answer (Ans. 3-20), which we
adopt as our own in support of our affirmance of all three grounds of
rejection. We add the following discussion of the underlying claim
interpretation issues for the sake of completeness:
Appellants’ principal contention is that the Examiner erred in reading
the language in claim 1, paragraph (a) on a metallic substrate coated with a
colored pigmented coating (Br. 5), e.g., an automotive substrate coated with
a pigmented base coat (see Ans. 3-4 (citing White, e.g. ¶ [0057])).
Appellants’ arguments raise the following claim interpretation issues:
1. Did the Examiner err in failing to properly interpret the claim
language “a decorative metal substrate” as limited to an uncoated metal (see
Br. 3)?
2. Did the Examiner err in applying an overly broad interpretation
of claim 1 as encompassing a metal substrate having “a specular gloss
greater than 100” achieved by the adhered coating (see Br. 4)?

1 With respect to the first ground of rejection, we note that we
separately considered Appellants’ arguments in support of patentability of
claim 3 (see Br. 5). Claims 2 and 4-9 were deemed to stand or fall with
claim 1.

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Application 11/776,102

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During prosecution, claims are given “their broadest reasonable
construction consistent with the specification. . . . Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007). The broadest reasonable interpretation of the
claims must also be consistent with the interpretation that those skilled in the
art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999).
According to the Specification, “[t]he decorative substrates of the
invention have a bright shiny appearance as measured by their specular
reflectance.” (Spec. [0007].) The Specification does not explicitly define
“decorative metal substrate.” The Specification states that the decorative
substrates are preferably metals, and lists the following examples of
“decorative metals”: “polished steel and aluminum, copper, polished
bronze, brass, precious metals such as gold and silver, and substrates that
have been plated or coated to give a bright shiny metal appearance such as
chrome plated steel or nickel plated steel and copper plated substrates.”
(Spec. [0007].)
In our view, the above-quoted language from ¶ [0007] of the
Specification (in particular, “substrates that have been . . . coated”) supports
the Examiner’s interpretation of the claim language “decorative metal
substrate” as encompassing both coated and uncoated metals. We do not
find, nor have Appellants directed us to any evidence (see generally, Br.),
which supports narrowly interpreting the claim language “decorative metal
substrate” as excluding a metal substrate such as an automobile hood or
refrigerator door which has been coated (cf. Ans. 4 (finding that the ordinary
artisan would have recognized a disclosure of these substrates in White)).
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We likewise agree with the Examiner’s interpretation of the claim
language as encompassing a metal substrate wherein “a specular gloss
greater than 100” is achieved by the adhered coating. We note the
Specification explicitly states that the decorative metal may be a “substrate”
that has been coated to have a “bright shiny metal appearance” (Spec.
[0007]). (See Ans. para. bridging 16-17.) The Examiner has provided
convincing evidence, i.e., Hogge and PapaJohn’s, that the ordinary artisan at
the time of the invention was aware that a coating could be used to achieve a
bright shiny metal appearance, and would have understood from the
Specification that the claims encompass a coated substrate wherein specular
reflectance in the claimed range is achieved by the coating. (Compare Ans.
14-16 (providing a detailed discussion in support of the Examiner’s finding
that gloss is a result effective variable) with Br. 4 (arguing that the
references do not explicitly teach substrates having a specular gloss greater
than 100).) As indicated above, Appellants have not identified evidence
which supports the more narrow claim interpretation on which they base
their traversal of the Examiner’s obviousness determination.
In sum, we conclude that the Examiner did not apply an overly broad
claim interpretation in rejecting the claims under 35 U.S.C. § 103(a). We
affirm all three grounds of rejection for the reasons expressed in the
Examiner’s Answer.
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

Appeal 2009-013027
Application 11/776,102

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