Ex parte Spellane

Board of Patent Appeals and Interferences

Jul 27, 2001

08599840 (B.P.A.I. Jul. 27, 2001)

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The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of
the Board.
Paper No. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte PETER J. SPELLANE
______________

Appeal No. 1998-1573
Application 08/599,840
_______________

ON BRIEF
_______________

Before KIMLIN, PAK and WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 1 through 10, which are all of the claims in the application. Claim 1, as it stands of record, is
illustrative of the claims on appeal:
1. In a process in which the surface of a metal article is coated with a coating layer comprising
alkyl-substituted polyphenylene oxide (PPO) forming a PPO-coated article for corrosion protection of
the metal, wherein the improvement comprises heat treating of the PPO-coated metal article in air to
enhance the corrosion protection provided by the PPO to the metal surface in the PPO-coated metal
article.
Appeal No. 1998-1573
Application 08/599,840
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The appealed claims as represented by claim 11 are drawn to an improvement in the
known process of coating a metal article with an alkyl-substituted polyphenylene oxide (PPO) which
comprises at least heat treating the PPO-coated metal article in air to enhance the corrosion protection
of the PPO-coated metal article, that is, “as compared to an analogous coated metal article that has not
been heat treated” according to appellant (specification, page 4).
The references relied on by the examiner are:
Davis et al. (Davis) 3,455,736 Jul. 15, 1969
Whittemore et al. (Whittemore) 3,471,587 Oct. 7, 1969
Gay et al. (Gay) 5,271,891 Dec. 21, 1993
The examiner has advanced the following grounds of rejection on appeal:
claims 1 through 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over Whittemore;
claims 1 through 4 and 6 through 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Gay;
claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over Gay further in view of Davis;
and
claims 1 through 3 and 6 through 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
the admitted state of the art in appellant’s specification.
While we affirm the examiner's decision refusing to allow the claims based on Whittemore
because we agree with the examiner's conclusion that the claimed subject matter would have been
obvious over this reference, we designate our affirmance as involving a new ground of rejection pursuant
to 37 CFR § 1.196(b) (1997) since our reliance on Whittemore materially differs from that of the
examiner as set forth below, as to which appellant has not had an opportunity to respond. See In re
Eynde, 480 F.2d 1364, 1370-71, 178 USPQ 470, 474-75 (CCPA 1973).
We reverse all of the other grounds of rejection.
Rather than reiterate the respective positions advanced by the examiner and appellant, we refer
to the examiner’s answer and to appellant’s brief for a complete exposition thereof.
Opinion

1 Appellant state in their brief (page 3) that “all of the appealed claims stand or fall together.” Thus, we
decide this appeal based on appealed claim 1. 37 CFR § 1.192(c)(7) (1995).
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Application 08/599,840
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As an initial matter, we must interpret claim 1, giving the terms thereof the broadest reasonable
interpretation in light of the specification as it would be interpreted by one of ordinary skill in this art.
See generally, In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
We interpret claim 1 to be a “Jepson” type claim which is an implied admission by appellant that
processes of coating a metal article with an alkyl-substituted polyphenylene oxide as set forth in the
preamble of this claim were known. We find no disclosure in appellant’s specification which indicates
that such a process, other than the modification thereof with respect to heat treating the alkyl-substituted
polyphenylene oxide coated metal article in air to enhance the corrosion protection of this coated metal
article as claimed, is appellant’s own work. See generally, Pentec, Inc. v. Graphic Controls Corp.,
776 F.2d 309, 315, 227 USPQ 766, 770 (Fed. Cir. 1985); In re Fout, 675 F.2d 297, 299-301, 213
USPQ 532, 535-36 (CCPA 1982); In re Ehrreich, 590 F.2d 902, 909-10, 200 USPQ 504, 510
(CCPA 1979). The transitional term “comprising” opens the improvement to any additional steps and
materials. See, e.g., In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981).
We further interpret the language “heat treating of the [alkyl-substituted polyphenylene oxide]-
coated metal article in air to enhance the corrosion protection provided by the [alkyl-substituted
polyphenylene oxide] to the metal surface in the [alkyl-substituted polyphenylene oxide ]-coated metal
article” in light of the specification to require heating the alkyl-substituted polyphenylene oxide-coated
metal article in air at any temperature and any period of time necessary to obtain at least a measurable
improvement in “the corrosion resistance of the coated article as compared to an analogous coated
metal article that has not been heat treated” (specification, page 4). We find no basis in the record on
which a specific limitation with respect to the time and/or temperature of the “heating” step can be read
into claim 1 (see specification, sentence bridging pages 4-5). In re Priest, 582 F.2d 33, 37, 199
USPQ 11, 15 (CCPA 1978), citing In re Prater, 415 F.2d 1393, 1405, 162 USPQ 541, 551
(CCPA 1969) (“We have consistently held that no ‘applicant should have limitations of the specification
read into a claim where no express statement of the limitation is included in the claim.’”).
The known processes of coating metal articles with alkyl-substituted polyphenylene oxide,
including poly(2,6-dimethyl-1,4-phenylene oxide), are acknowledged in appellant’s specification to
include processes in which additional materials can be included with alkyl-substituted polyphenylene
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Application 08/599,840
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oxide and the metal surface treated prior to the application of the alkyl-substituted polyphenylene oxide
(specification, page 2, lines 7-25; see also pages 1-2), which processes would be encompassed by the
recitation in the preamble of claim 1. The acknowledged processes “known in the prior art to coat
metal surfaces with various phenylene oxide polymers to form coatings which provide some degree of
corrosion protection to the metal surfaces” include those that use unsubstituted polyphenylene oxide
(id., pages 1-2).
We find that Whittemore discloses spraying unsubstituted polyphenylene oxide onto the surface
of aluminum plates, drying the coated aluminum plates at 120° C. and baking the coated article at 285°
C. for about ½ hour (col. 7, lines 42-51), and further discloses in Example 8 thereof a similar process in
which an unprimed polished aluminum panel is sprayed with unsubstituted polyphenylene oxide in a
halobenzene solvent, air drying the coated article at 120° C. and baking the coated article at 315° C.
for about ½ hour. We further find that one of ordinary skill in this art would have recognized from the
data that is reported in the accompanying tables (cols. 7 and 10) that the purpose of the baking step is
to harden the surface of the unsubstituted polyphenylene oxide coated surface.
In comparing the knowledge in the prior art with the claimed process of appealed claim 1, we
determine that, prima facie, one of ordinary skill in this art armed with the knowledge that metal articles
can be coated with unsubstituted polyphenylene oxide as well as alkyl- substituted polyphenylene oxide
would have found in the teachings of Whittemore the reasonable suggestion to air dry an alkyl-
substituted polyphenylene oxide coated metal article at 120° C. and then baking the coated article at
between 285° C. or 315° C. for about ½ hour in the reasonable expectation of obtaining a hardened
surface. Indeed, one of ordinary skill in this art would have reasonably expected an alkyl-substituted
polyphenylene oxide, particularly methyl substituted polyphenylene oxide, to exhibit the same or similar
properties as a metal coating as unsubstituted polyphenylene oxide. Cf. In re Zickendraht, 319 F.2d
225, 228, 138 USPQ 22, 24-25 (CCPA 1963) (“[I]t is the closeness of . . . [the structural
relationship], a question of fact, which is indicative of the obviousness or unobviousness of the new
compound); In re Lohr, 317 F.2d 388, 389 &n.2, 137 USPQ 548, 549 &n.2 (CCPA 1963) (“The
important fact is that there is present here a close structural similarity, whether or not the compounds are
adjacent homologs.”). With respect to the limitation in appealed claim 1 that the surface of the coated
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metal article must be heated to the extent necessary to increase the corrosion resistance of the coated
metal article, it reasonably appears to us that a hardened surface would be more corrosion resistant than
a softer metal surface in the absence of evidence to the contrary.
Thus, we are of the opinion that, prima facie, the knowledge in the art, as established above,
combined with the teachings of Whittemore set forth above would have reasonably suggested the
claimed process encompassed by claim 1, including all of the limitations thereof, to one of ordinary skill
in this art at the time the claimed invention was made.
Accordingly, in view of the prima facie case of obviousness established above, the burden of
going forward has shifted to appellant to submit argument and/or evidence in rebuttal. See generally, In
re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have again evaluated all of the evidence of obviousness and nonobviousness based on the
record as a whole, giving due consideration to the weight of appellant’s arguments as they pertain to the
ground of rejection set forth above. Appellant has recognized that Whittemore does teach heating a
metal article coated with “conventional PPO,” that is, unsubstituted polyphenylene oxide, as set forth
above, but contends that the reference “completely skips over the possibility that an alkyl-substituted
PPO material could be used instead of its mandatory fluroraliphatic-substituted PPO resin” (brief, page
5 n.2). Thus, appellant submits that Whittemore did not appreciate the claimed invention and therefore
the “PTO cannot rely upon such unappreciated inherency to support obviousness” (id.). We cannot
agree with appellant’s position.
The issue here is whether the one of ordinary skill in this art would have applied the process of
hardening the surface of unsubstituted polyphenylene oxide coated metal articles shown in Whittemore
to alkyl-substituted polyphenylene oxide coated metal articles that were known in the art as recognized
in the preamble to appealed claim 1, in order to harden the so coated metal surface, and not one of
inherency in the sense that appellant intends. Appellant has couched the extent of heating that must be
employed in the claimed process in the requirement that the coated metal article must be heated to the
extent that the corrosion resistance of the coated metal is increased. Appellant’s choice of claim
language to describe their claimed process alone is not sufficient to patentably distinguish the claimed
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invention over the knowledge in the art acknowledged by appellant in styling the claim and as shown in
Whittemore. In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975). (“Appellants have
chosen to describe their invention in terms of certain physical characteristics . . . . Merely choosing to
describe their invention in this manner does not render patentable their method which is clearly obvious
in view of [the reference]. [Citation omitted.]”); cf. In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936 (Fed. Cir. 1990) (“It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable. [Citations omitted.]”).
The extent to which inherency is considered here is whether the process of Whittemore applied
to alkyl-, particularly methyl-, substituted polyphenylene oxide coated metal articles would heat that
article to the extent that the corrosion resistance thereof is inherently increased. Skoner, 517 F.2d 947
at 950-51, 186 USPQ at 82-83. We expressed above the view that that a hardened surface would
reasonably appear to be more corrosion resistant than a softer metal surface in the absence of evidence
to the contrary. See id.
Accordingly, having considered appellant’s arguments of record as they pertain to the new
ground of rejection which we have applied above, we remain of the opinion that the claimed invention
encompassed by the appealed claims is prima facie obvious over Whittemore. Thus, the burden of
going forward with respect to this ground of rejection remains with appellant. See Johnson, supra;
Piasecki, supra.
With respect to the remaining grounds of rejection maintained on appeal by the examiner, we
have carefully reviewed the record and based thereon find ourselves in agreement with appellant that
these grounds cannot be sustained. While we agree with the examiner that one of ordinary skill in this
art would have been motivated to use an alkyl-substituted polyphenylene oxide in place of an
unsubstituted polyphenylene oxide in the process of Gay for essentially the reasons we stated above, on
this record, we cannot determine whether the heating of the coating on the metal particles which occurs
as the metal particles are recirculating during the coating process (e.g., col. 3, lines 45-56, and col. 5,
line 16, to col. 6, line 31) would inherently increase the corrosion resistance of the coated articles. See
Skoner, 517 F.2d 947 at 950-51, 186 USPQ at 82-83. Thus, we reverse the two grounds of
rejection based on Gay. Finally, with respect to the ground of rejection based on the admitted state of
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Application 08/599,840
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the art in appellant’s application and as admitted in the preamble of claim 1, we find that the examiner
has not explained and supported the position that “almost all coating methods which apply resins [sic]
coatings require elevated temperatures” vis-à-vis the claimed process encompassed by claim 1, and
thus we reverse this ground of rejection. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or
principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior
art in order to arrive at appellant’s claimed invention has not been explained).
We have denominated our affirmance of the examiner’s ground of rejection over Whittemore as
a new ground of rejection under 37 CFR § 1.196(b) (1997) and have reversed all other grounds of
rejection.
The examiner’s decision is affirmed.
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b)(amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE
DATE OF THE DECISION, must exercise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the Board of Patent Appeals
and Interferences upon the same record. . . .

No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136(a).
Appeal No. 1998-1573
Application 08/599,840
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AFFIRMED
37 CFR § 1.196(b)

EDWARD C. KIMLIN )
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS AND
) INTERFERENCES
CHARLES F. WARREN )
Administrative Patent Judge )

Pak, Administrative Patent Judge, Concurring:
Appeal No. 1998-1573
Application 08/599,840
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I agree with my colleagues in this case. However, I respectfully offer the following additional
comments.
The claimed subject matter is directed to a process for coating the surface of a metal article with
a coating layer comprising alkyl-substituted polyphenylene oxide. See claim 1. The novelty of the
invention lies in heat-treating the alkyl-substituted polyphenylene oxide coated metal article in air to
enhance the corrosion protection. Id. According to the specification, the claimed heat treatment is to
enhance the adhesion of the coating to the metal article. See, e.g., page 4. When the adhesion of the
coating of the metal article is enhanced, the corrosion resistance of the coated metal article naturally
follows. Id. A[T]he heat treatment can range anywhere from above about room temperature up to
about 200 oC (emphasis mine).@ See page 5.
Claim 1 is written in Jepson format. Thus, the subject matter recited in the preamble of claim 1
is impliedly admitted to be old in the art. In re Ehrreich, 590 F.2d 902, 909, 200 USPQ 504, 510
(CCPA 1979); In re Aldrich, 398 F.2d 855, 857, 158 USPQ 311, 312 (CCPA 1968). In other
words, it is known to coat the surface of a metal article with a coating layer comprising alkyl-substituted
polyphenylene oxide. What is allegedly not known is the subsequent claimed heat treatment.2
However, I find that Whittemore recognizes the importance of insuring good adhesion between a
coating layer and a substrate. See column 4, lines 68-71. I find that Whittemore teaches coating a
polyphenylene oxide on metal articles and then drying and baking at 120 oC and about 280 oC,
respectively or 120 oC and about 315 oC, respectively. See column 7, lines 42-60. column 9, line 46
to column 10, line 27.
Given these teachings, I agree with my colleagues that one of ordinary skill in the art would have
been led to the claimed heat-treatment of the alkyl-substituted polyphenylene oxide coated metal article,
motivated by a desire to improve adhesion and hardness of the coating. This is especially true in the
present situation since the claimed heat-treatment embraces conventional air drying, which is necessary
for removing solvent from the wet coating on a metal article resulting from a conventional solution
coating technique. One of ordinary skill in the art would have had a reasonable expectation that
Appeal No. 1998-1573
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structurally similar chemicals, such as polyphenylene oxide and methyl-substituted polyphenylene oxide,
would have imparted the same or substantially the same properties after the claimed heat-treatment. In
re Lamberti, 545 F.2d 747, 751, 192 USPQ 278, 281 (CCPA 1976); Zickendraht, 319 F.2d at
228, 138 USPQ at 24-25
In reaching this conclusion, we recognize that Whittemore does not mention improving corrosion
resistance as recited in the appealed claims. However, corrosion resistance is another advantage, which
admittedly naturally results from good adhesion. This additional advantage, therefore, would have
naturally flowed from the suggestion of Whittemore. Skoner 517 F.2d at 950, 186 USPQ at 83
(explaining that unpatentable subject matter does not become patentable Amerely through the
employment of descriptive language not chosen by the prior art@); Ex parte Obiaya, 227 USPQ 58, 60
(Bd. Pat. App. & Int. 1985)(holding that the recognition of another advantage flowing naturally from
following the suggestion of the prior art cannot be the basis for patentability when the difference would
otherwise be obvious). .
The fact that Whittemore teaches halide alkyl-substituted polyphenylene oxide coatings adhering
well to a metal article after heating further supports obviousness. When both halide alkyl-substituted
polyphenylene oxide and polyphenylene oxide coatings adhered well to a metal article after heating, one
of ordinary skill in the art would have reasonably expected that an alkyl (inclusive of methyl)-substituted
polyphenylene oxide coating likewise would adhere well to a metal article after heating. One of ordinary
skill in the art would have interpolated from these teachings that heating, especially at least conventional
drying, is necessary and useful for improving adhesion and hardness of the alkyl-substituted
polyphenylene oxide coating.

CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND

2 The claimed heat treatment includes conventional air drying which is normally used to drive off solvent
in a liquid coating after an article is coated.
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Application 08/599,840
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) INTERFERENCES

Richard P. Fennelly
Akzo Nobel Inc
Patent and Trademark Department
7 Livingstone Avenue
Dodds Ferry NY 10522-3401