Ex Parte Silvernail et al

Patent Trial and Appeal Board

May 14, 2018

14184998 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/184,998
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
02/20/2014
05/14/2018
FIRST NAMED INVENTOR
Nathan J. Silvernail
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.
13009297Al 2124
EXAMINER
KATZ, VERA
ART UNIT PAPER NUMBER
1784
MAILDATE DELIVERY MODE
05/14/2018 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 NATHAN J. SILVERNAIL, ADAM KOLCUN,
BRIAN OKERBERG, THOR G. LINGENFELTER, and ROYE. DEAN
Appeal2017-008685
Application 14/184,998
Technology Center 1700
Before LINDA M. GAUDETTE, RAEL YNN P. GUEST, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 2-5, 13, and 14. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We cite the Specification ("Spec.") filed February 20, 2014; Final Office
Action ("Final Act.") dated February 1, 2016; Appellant's Appeal Brief
("Br.") dated June 23, 2016; and Examiner's Answer ("Ans.") dated October
12, 2016.
2 Appellant is PPG Industries Ohio, Inc., which also is identified as the real
party in interest. Br. 1.
Appeal2017-008685
Application 14/184,998
BACKGROUND
The invention relates to pretreatment of magnesium substrates prior to
application of a coating. Spec. i-f 1. Claim 13-the sole independent
claim-reads:
13. A consumer electronic device having a magnesium
substrate that has been treated, prior to the application of a
surface coating, with a pretreatment composition comprising:
(a) a compound containing at least four phosphorus acid
groups, and
(b) a soluble alkaline earth salt.
Br. 5 (Claims Appendix).
REJECTION
Claims 2-5, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kuniji3 and Koyama. 4
OPINION
Appellant argues the claims as a group. See Br. 2--4. In accordance
with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 13 as representative and
decide the appeal based on the representative claim alone.
The Examiner finds, and Appellant does not dispute, that Kuniji
discloses a magnesium alloy substrate that, prior to surface coating, is
pretreated with a composition that satisfies (a) and (b) of claim 13.
Compare Final Act. 3, with Br. 2-3. The Examiner also finds that Koyama
teaches that magnesium alloys are useful in electronic devices. Final Act. 3.
In light of these findings, the Examiner determines that it would have been
3 GB 2 037 328 A, published July 9, 1980 ("Kuniji").
4 JP 2012-224929 A, published November 15, 2012 ("Koyama"), as
translated.
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Appeal2017-008685
Application 14/184,998
obvious to one of ordinary skill in the art to provide a consumer electronic
device comprising a magnesium alloy substrate that has been pretreated as
claimed. Id.
Appellant argues that the Examiner improperly disregards the recited
phrase, "consumer electronic device," as an intended use. Br. 2 (contending,
"the Examiner has given no weight to this limitation"); id. at 3 ("[T]he term
'consumer electronic device' is a claim limitation that must be considered in
distinguishing the invention over the prior art."). However, Appellant does
not identify any particular structure attributable to the recited phrase that
distinguishes the magnesium substrate over that taught by Kuniji.
Moreover, we are not persuaded that the Examiner fails to give due
weight to the recitation. Rather, the Examiner relies on Koyama solely to
support the finding that magnesium alloy substrates were known to be used
in electronic devices. Final Act. 3. In light of Koyama's teaching, the
Examiner reasons that it would have been obvious to one of ordinary skill in
the art to "provide a consumer electronic device" having Kuniji's treated
magnesium alloy substrate. Appellant's contention that the Examiner
disregarded the consumer electronic device recitation is not consistent with
the Examiner's application of Koyama.
Appellant further argues that Koyama's "electronic apparatus" is
distinguishable from the claimed "consumer electronic device." Br. 3.
Particularly, Appellant contends that "the term 'consumer electronic device'
is well understood to those skilled in the art as to include cameras, PDAs,
calculators, etc." Br. 3 (citing a Webopedia entry, a copy of which is
provided in Appellant's Evidence Appendix to the Brief). However,
Appellant presents no evidence or argument as to how one of ordinary skill
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Appeal2017-008685
Application 14/184,998
would have viewed Koyama's electronic apparatus in a manner that would
not have included consumer electronic devices. Nor does Appellant
persuasively dispute the Examiner's finding that Koyama's teaching of
providing magnesium components in an electronic apparatus would have
provided a reason to use magnesium components in a consumer electronic
device.
For the foregoing reasons, we are not persuaded of reversible error.
The rejection is sustained.
DECISION
The Examiner's rejection of claims 2-5, 13, and 14 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).
AFFIRMED
4