12850135 (P.T.A.B. Jan. 21, 2015)

Ex Parte Poole et al

Patent Trial and Appeal BoardJan 21, 2015

12850135 (P.T.A.B. Jan. 21, 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. 12/850,135 08/04/2010 James E. Poole 2226D1 9193 24959 7590 01/21/2015 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 EXAMINER PENNY, TABATHA L ART UNIT PAPER NUMBER 1712 MAIL DATE DELIVERY MODE 01/21/2015 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 JAMES E. POOLE, ANTHONY D. KULFAN, and RAPHAEL O. KOLLAH ____________ Appeal 2013-003905 Application 12/850,135 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHUNG K. PAK, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal to the Board under 35 U.S.C. § 134 from the decision of the Primary Examiner finally rejecting claims 14, 15, and 20–27 under 35 U.S.C. § 103(a): claims 14, 15, 20–23, and 27 over White (US 2003/0224174 Al, published Dec. 4, 2003) and claims 24–26 over White in view of Tsutsumi (US 4,247,708, published Jan. 27, 1981). Final Action2 2–6; Ans. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the Real Party in Interest is PPG Industries Ohio, Inc. App. Br. 1. 2 References to the Final Action are to the action mailed June 29, 2012. Appeal 2013-003905 Application 12/850,135 2 The claimed subject matter relates to a method of forming an abrasion-resistant coating on an electroconductive substrate. App. Br. 6 (claim 14). According to the Specification, the method is for coating decorative metal articles, such as hardware, jewelry and trim parts, by electrodeposition such that the articles have improved mar and scratch resistance. Spec. ¶¶ 1–3. The claimed subject matter is represented by claim 14—the sole independent claim—which is set forth below with the disputed limitation in bold: 14. A method of forming an abrasion-resistant coating on an electroconductive substrate comprising: (a) electrodepositing onto the substrate a curable electrodepositable composition comprising: (i) a curable resinous binder, (ii) inorganic particles, (iii) a surface active agent; (b) curing the composition to form a substantially continuous coating on the substrate with a surface exposed to the atmosphere while the inorganic particles migrate to the exposed surface region of the coating. OPINION Upon consideration of the evidence on this record, we agree with Appellants that the Examiner has not carried the burden of establishing a prima facie case of obviousness regarding the subject matter recited in the appealed claims within the meaning of 35 U.S.C. § 103(a). As correctly explained by Appellants, the Examiner errs in finding that White, common to both grounds of rejection, discloses electrodeposition as a method for Appeal 2013-003905 Application 12/850,135 3 applying a coating composition to a substrate—a feature common to all appealed claims. App. Br. 3–4, 6–8 (Claims App’x). We construe the term “electrodepositing” consistent with the preamble of claim 14, which states that the substrate to be coated is electroconductive, and consistent with the implicit definition provided in the Specification, which explains that, in electrodeposition, the substrate to be coated is placed in contact with an aqueous dispersion of the coating composition, and a voltage is applied between the substrate, serving as an electrode, and another electrode, such that an adherent film of the coating composition is deposited on the substrate. Spec. ¶ 57; see also id. at ¶ 9 (“the decorative substrates are preferably electroconductive which permits the application of the protective coating by electrodeposition”); id. at ¶¶ 53- 56 (describing preparation of electrodeposition bath). Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (“the specification is ‘the single best guide to the meaning of a disputed term,’ and that the specification ‘acts as a dictionary when it expressly defines terms used in the claims or when it defines term by implication’”); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) (“During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a complete exploration of the applicant’s invention and its relation to the prior art.”). The Examiner finds that White discloses electrodepositing a curable composition onto an electroconductive substrate, citing paragraph 51 of White, which discloses electrostatic spraying. Final Action 2; Ans. 2; White ¶ 51. According to the Examiner, Appellants’ Specification discloses Appeal 2013-003905 Application 12/850,135 4 electroplating, which is one type of electrodeposition, and electrostatic spraying, as disclosed in White, is another type of electrodeposition. Ans. 2. As support for this position, the Examiner cites Flanagan (US 2009/0264975 A1, published Oct. 22, 2009), which discloses various layer deposition processes, including “electrodeposition (e.g., electroplating, electrospray, etc.).” Flanagan ¶ 30. The Examiner acknowledges that Flanagan does not predate Appellants’ application, but relies upon it only for understanding a claim term. Ans. 2–3. We determine that the Examiner’s claim interpretation is inconsistent with the meaning of “electrodepositing” that is apparent from claim 14 and Appellants’ Specification as discussed supra. The Examiner does not take into account Appellants’ Specification in contending that electrostatic spraying, as disclosed in White, is the electrodeposition encompassed by the claims on appeal. Although not wholly irrelevant, Flanagan does not carry as much weight as Appellants’ Specification which in this case controls claim construction. See Phillips, 415 F.3d at 1318 (extrinsic evidence is generally “less reliable than the patent and its prosecution history” because it “is not part of the patent and does not have the specification’s virtue of being created at the time of patent prosecution for the purpose of explaining the patent’s scope and meaning”). We are therefore of the opinion that, as Appellants argue, the Examiner erred in construing the term “electrodepositing” in claim 14 as including electrostatic spraying, and thus erred in concluding that the claimed invention is suggested by the applied prior art. Accordingly, in the absence of a prima facie case of obviousness, we reverse the grounds of rejection of claims 14, 15, and 20–27 under 35 U.S.C. § 103(a). Appeal 2013-003905 Application 12/850,135 5 REVERSED sl