Ex Parte Straus

Board of Patent Appeals and Interferences

Nov 12, 2009

10938232 (B.P.A.I. Nov. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARTIN L. STRAUS
____________

Appeal 2009-001398
Application 10/938,232
Technology Center 1700
____________

Decided: November 12, 2009
____________

Before EDWARD C. KIMLIN, CHUNG K. PAK, and MARK NAGUMO,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 41, all of the claims pending in the above-
identified application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of protecting a
zinc or zinc alloy surface of a metal artifact from “white corrosion.”
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(Spec. 1). Details of this method are recited in representative claims 1, 16,
31, and 40 reproduced below1:

1. A method for protecting a zinc surface of a metal artifact, which
comprises:

passivating the surface with an acid passivating solution; or activating
the surface with an acid activating solution;

applying to the surface an aqueous priming solution of an alkali metal
permanganate in the presence of halide ion, said solution having a pH of
about 1 to 8;

and then further applying to the surface a seal coating solution.

16. A method for protecting a zinc surface of a metal artifact, which
comprises:
passivating the surface with a solution comprising an oxidizing acid,
or activating the surface with an acid activating solution;
applying to the surface an aqueous priming solution of an alkali metal
permanganate and an alkali metal halide, said solution having a pH of about
1 to 6;
and then further applying to the surface a seal coating solution of a
lithium silicate, and a sodium or potassium silicate.
31. The method of claim 1 which is substantially free from the
presence of a rare earth compound.
40. A method for protecting a zinc surface of a metal artifact with a
yellow, iridescent coating, which comprises:

1 Pursuant to the requirements of 37 C.F.R. § 41.37(c)(1)(vii) (2007), we limit our
discussion to claims 1, 16, 31, and 40.

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passivating the surface with an acid passivating solution;
applying to the surface an aqueous priming solution of an alkali metal
permanganate in the presence of halide ion, said solution having a pH of
about 1-8;
and then further applying to the surface a seal coating solution.
As evidence of unpatentability, the Examiner has relied on the
following prior art references (the Answer mailed Feb. 5, 2008 (“Ans.”) 4-
5):
Greene US 4,298,404 Nov. 3, 1981
Wang US 5,354,458 Oct. 11, 1994
Hughes US 6,206,982 B1 Mar. 27, 2001
Buxton US 6,287,394 B1 Sep. 11, 2001
Savin US 6,638,628 B2 Oct. 28, 2003
Phelps US 2004/0020568 A1 Feb. 5, 2004
Hodgens US 6,756,134 B2 Jun. 29, 2004
Reuscher US 6,759,087 B1 Jul. 6, 2004
Hardin US 6,773,516 B2 Aug. 10, 2004

The Examiner has rejected the claims on appeal (Ans. 5-20) as
follows:

1) Claims 31 through 34 under 35 U.S.C. § 112, first paragraph, as
failing to describe the newly claimed limitation “substantially free from the
presence of a rare earth compound” in the original application disclosure;
2) Claims 1, 4 through 12, 16, 18, 19, 22, 23, 25, 27, 28, 35
through 38, and 40 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Hardin and Phelps;
3) Claims 2, 17, 24, 26, 39, and 41 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Hardin, Phelps, Reuscher,
and Savin;
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4) Claim 3 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Hardin, Phelps, Reuscher, Savin, and Greene;
5) Claims 13, 14, and 20 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Hardin, Phelps, Reuscher,
Savin, Hughes, and Buxton;
6) Claims 15, 21, 29, and 30 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Hodgens, Hardin, and Phelps;
7) Claims 36 through 38 and 40 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Hardin, Phelps, and Wang;
and
8) Claims 39 and 41 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Hardin, Phelps, Wang, Reuscher, and
Savin.
Appellant traverses the Examiner’s § 112 rejection, arguing that the
application disclosure, as originally filed, describes and provides examples
of two “embodiments,” one with a rare-earth compound and the other
without as recited in claims 31-34 (the Appeal Brief filed Nov. 28, 2007
(“App. Br.”) 7-16). In support of this contention, Appellant also refers to
certain statements in the Rule 132 Declaration executed by Robert L.
Heimann on November 27, 2006 attached to the Evidence Appendix section
of the Appeal Brief. (Id.)
Appellant also traverses the Examiner’s § 103(a) rejections, arguing
only that Hardin and Phelps would not have suggested employing a priming
solution containing an alkali metal permanganate (App. Br. 16-21).
Specifically, Appellant contends that (1) one of ordinary skill in the art
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would not have been led to employ the aqueous conversion coating solution
of Phelps as the aqueous conversion solution of the zinc surface protection
method taught by Hardin and (2) the conversion coating solutions taught by
Hardin and Phelps are not priming solutions. (Id.).
ISSUES AND CONCLUSIONS
With respect to the Examiner’s § 112 rejection, the dispositive
question raised in this case is: Has Appellant identified reversible error in
the Examiner’s finding that the application disclosure, as originally filed,
does not reasonably describe processes subject to the newly introduced
limitation “substantially free from the presence of a rare earth compound”
recited in claims 31 through 34 within the meaning of 35 U.S.C. § 112, first
paragraph? On this record, we answer this question in the negative.
With respect to the Examiner’s § 103(a) rejections, the dispositive
question raised in this case is: Has Appellant identified reversible error in
the Examiner’s determination that one of ordinary skill in the art would have
been led to employ Phelps’s aqueous conversion coating solution
corresponding to the claimed aqueous priming solution as the conversion
coating solution of the zinc surface protection process taught by Hardin,
with a reasonable expectation of successfully improving corrosion protection
properties? On this record, we answer this question in the negative.

RELEVANT FINDINGS OF FACT
35 U.S.C. § 112, FIRST PARAGRAPH
1. Claims 31 through 34 recite “[t]he method of … which is substantially
free from the presence of a rare earth compound.”
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2. The Specification, as originally filed, alternatively describes an
aqueous priming solution (Spec. 5, 9, and 10) as follows
… an aqueous priming solution of
an alkali metal permanganate in the presence of halide, for example, as
provided by sodium chloride or aluminum chloride, the solution having a pH of
about 1 to 8.
…
…an aqueous priming solution of an alkali metal
permanganate, a soluble rare earth metal salt such as cerium chloride,
cerium acetate, cerium sulfate, or cerium nitrate, and a soluble aluminum salt
such as aluminum chloride, with the solution having a pH of about 1-8,
3. While original Specification Examples I-III, VIII-X, XII, and XIII
employ a priming solution having potassium permanganate and either
aluminum chloride or sodium chloride at a pH of 1.5 to 2.5 (with pH
adjusting nitric acid), original Specification Examples IV-VII and XI
employ a priming solution having potassium permanganate and
cerium sulphate (Spec. 12-17).
4. The above exemplified embodiments of the original application
disclosure relied upon by Appellant in the Appeal Brief and the Rule
132 Declaration only describe methods in which a priming solution
containing either a rare earth metal salt or a halide (not a rare earth
metal salt) is employed, without indicating the presence of any other
type of rare earth compound. (See the Examples at pages 12-17 of the
Specification).
5. The absence of a rare earth metal salt in the exemplified embodiments
relied upon by Appellant does not indicate that the inventors had
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possession of the same method employing some amount of a rare
earth compound encompassed by the newly added language
“substantially free from the presence of a rare earth compound”
recited in claims 31 through 34 (Spec. 12-17).
6. The type of a rare earth compound employed in the exemplified
embodiments is limited to a rare earth metal salt and does not include
any other rare earth compounds encompassed by the newly added
language in claims 31 through 34 (id).
7. Appellant has not identified any particular amount of a rare earth
compound, much less a rare earth metal salt, in the original
application disclosure, which is expressly or impliedly equated with
some amount of a rare earth compound encompassed by the newly
introduced relative language “substantially free from the presence of a
rare earth compound” recited in claims 31 through 34 (Br. 7-16).
8. The Rule 132 Declaration executed by Robert Heimann on November
27, 2006 relied upon by Appellant does not identify any particular
amount of a rare earth compound, much less a rare earth metal salt, in
the original application disclosure, which corresponds to some amount
of a rare earth compound encompassed by the relative language
“substantially free from the presence of a rare earth compound”
recited in claims 31 through 34 (Declaration 1-7).
9. Appellant has not shown, much less explained, why such exemplified
embodiments would have reasonably conveyed to one of ordinary
skill in the art that the inventors had possession of a “method…which
is substantially free from the presence of a rare earth compound”
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(emphasis added) recited in claims 31 through 34. See the Appeal
Brief and the Rule 132 Declaration in their entirety.
10. Both the statements in the Rule 132 Declaration and Appellant’s
arguments in the Appeal Brief do not identify any part of the original
application disclosure which provides written descriptive support for
the newly added language “method…which is substantially free from
the presence of a rare earth compound” recited in claims 31 through
34. See the Appeal Brief and the Rule 132 Declaration in their
entirety.

PRINCIPLES OF LAW AND ANALYSIS
35 U.S.C. § 112
The question of whether subject matter is described in a specification
is a question of fact. In re Alton, 76 F.3d 1168, 1171-72 (Fed. Cir. 1996).
As our reviewing court stated in Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563 (Fed. Cir. 1991):
“The purpose of the ‘written description’ requirement [under 35
U.S.C. § 112, first paragraph,] is broader than to merely explain how
to ‘make and use’; the applicant must also convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or
she was in possession of the invention. The invention is, for purposes
of the ‘written description’ inquiry, whatever is now claimed.”
“One shows that one is ‘in possession’ of the invention by describing the
invention, with all its claimed limitations, not that which makes it obvious.”
Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(emphasis added; original emphasis not reproduced). “Although the exact
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terms need not be used in haec verba,..., the specification must contain an
equivalent description of the claimed subject matter.” Id.
Newly added claims 31 through 34 subject to the Examiner’s written
description rejection under 35 U.S.C. § 112, first paragraph, recite “[t]he
method of … which is substantially free from the presence of a rare earth
compound.” The Examiner correctly determined that the phrase
“substantially free from the presence of a rare earth compound” has a
relative meaning and embraces the presence of some amount of a rare earth
compound in the claimed method (Ans. at pages 23 and 24). Compare
Seattle Box Co. v. Industrial Crafting & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984).
It is well settled that patent applicants, when faced with a written
description rejection under § 112, first paragraph, must respond by placing
on the record where, by column and line number in the Specification or
supporting documents, the descriptive support for each disputed claim
limitation maybe found. Hyatt v. Doll, 576 F.3d 1246, 1286 (Fed. Cir.
2009). However, on the present record, Appellant has not carried this
burden.
Both the statements in the Rule 132 Declaration and Appellant’s
arguments in the Appeal Brief do not identify original disclosure which
provides written descriptive support for the full scope of the newly added
language “substantially free from the presence of a rare earth compound”
recited in claims 31 through 34 within the meaning of 35 U.S.C. § 112, first
paragraph. The exemplified embodiments of the original application
disclosure relied upon by Appellant and the Rule 132 Declaration only
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describe methods in which a priming solution containing either a rare earth
metal salt (not a generic rare earth metal compound) or an alkali metal- or
aluminum-halide is employed, without indicating the presence of any other
type of rare earth compound. The examples do not provide any explicit
support for the newly added limitation recited in claims 31 through 34. Nor
has Appellant shown, much less explained, why such exemplified
embodiments would have reasonably conveyed to one of ordinary skill in the
art that the inventors had possession of “method…which is substantially free
from the presence of a rare earth compound” recited in claims 31 through
34. The absence of a rare earth metal salt in the exemplified embodiments
relied upon by Appellant certainly does not indicate that the inventors had
possession of the same method employing some amount of a rare earth
compound encompassed by the newly added language “substantially free
from the presence of a rare earth compound” recited in claims 31 through
34. See In re Wertheim, 541 F.2d 257, 263-64 (CCPA 1976). Moreover, the
type of rare earth compound employed in the exemplified embodiments is
limited to a rare earth metal salt and does not include any other rare earth
compounds encompassed by the newly added language in claims 31 through
34.
Accordingly, Appellant has failed to identify reversible error in the
Examiner’s finding that the application disclosure, as originally filed, does
not reasonably convey to one of ordinary skill in the art that the inventors, at
the time the application was filed, had possession of the newly introduced
limitation “substantially free from the presence of a rare earth compound”
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recited in claims 31 through 34 within the meaning of 35 U.S.C. § 112, first
paragraph.

RELEVANT FINDINGS OF FACT
35 U.S.C. § 103
11. Hardin, like Appellant, teaches a process for treating surfaces of
metallic materials, such as those having zinc or zinc alloy surfaces, for
the purpose of imparting corrosion protection properties. (Compare
Hardin, col. 1, ll. 9-31 and col. 4, ll. 10-51 with Appellant’s Spec. 1-
3).
12. Hardin teaches a conversion coating process which comprises, inter
alia, deoxidizing the surface of a zinc or zinc alloy object with an
acidic solution, such as a solution containing nitric acid and
hydrofluoric acid, applying a chromate-free conversion coating
solution to such surface, and then applying a solution containing a
sealant, such as a silicate, to the conversion solution coated surface
(col. 4, ll. 21-62).
13. Hardin teaches that its conversion coating solution contains, inter
alia, Ce3+ cations and/or cerium (III) salts, an oxidizer (a peroxidic
compound, such as hydrogen peroxide) for precipitating Ce3+ cations
and/or cerium (III) salts as a cerium (IV) containing compound
(Ce4+compound), water, a small quantity of chloride (halide), and a
pH adjusting acid, such as nitric acid. (col. 5, ll. 35-62, col. 7, ll. 37-
41, and col. 8, ll. 1-9 and 43-67).
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14. Hardin teaches that its water containing (aqueous) conversion coating
solution has a pH value of 1 to 2.9 (col. 8, ll. 8-10).
15. Hardin’s conversion coating solution, like the claimed priming
solution, forms a thin layer (a thin coating) on the surface of a metallic
object prior to being coated with a sealant containing solution (col. 4,
ll. 58-61).
16. Hardin’s conversion coating solution shows a good adhesion to the
metal, provides good corrosion protection, and is an excellent paint
base (primer) for providing adhesion of the paint film to the metal
(col. 10, ll. 32-40).
17. Hardin does not expressly mention employing an alkali metal
permanganate in its conversion coating solution.
18. Phelps, like Hardin, teaches employing non-toxic chromate-free
conversion coatings on metals, such as zinc and zinc alloys, for the
purpose of imparting corrosion protection properties (p.1, paras.
0002-0003).
19. Phelps teaches that its chromium-free conversion coating solution
contains Ce3+ or Ce4+ precursors (cerium in trivalent (3+) or
tetravalent (oxidation) state), water, an oxidizer (peroxidic
compound), such as hydrogen peroxide or a permanganate, a valence
stabilizer source, an optional preparation agent source, such as alkali
metal halides, and an optional solubility agent (pp. 4 and 6-9, paras.
0030-0032, 0046-0048, 0057-0058, 0062-0067, and 0073).
20. Phelps exemplifies employing an alkali metal permanganate or
hydrogen peroxide as an oxidation source (oxidizer) for its water
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containing (aqueous) chromium-free conversion coating solution (pp.
154-155, para. 0744, Table 4).
21. Phelps teaches that its chromium-free conversion coating solution has
preferably a pH of 1 to 6, which is inclusive of the pH value of
Hardin’s chromium-free conversion coating. (p. 160, para. 0754).
22. Phelps teaches that its chromium-free conversion coating solution
represents a significant improvement over conventional cerium-based
conversion coatings, inclusive of that taught by Hardin, in terms of
inhibiting corrosion (p. 4, paras. 0030-0033).
23. Phelps, like Hardin, teaches (p. 1, para. 009) that:
A conversion-coated surface may be left bare or afforded
further protection by the application of additional films or
coatings. Conversion coatings need to adhere to the substrate
and should result in a surface that will promote the formation of
a strong bond with subsequently applied coatings…. Depending
on the intended application, a conversion coating, as described
herein, may be considered to be an “adhesion promoter” and
vice versa.

24. Appellant does not dispute the Examiner’s determination that the
additional prior art references, i.e., Reuscher, Savin, Greene, Wang,
Hodgens, Hughes, and Buxton, relied upon by the Examiner would
have rendered the limitations recited in claims 2, 3, 13 through 15, 17,
20, 21, 24, 26, 29, 30, 36 through 41 obvious within the meaning of
35 U.S.C. § 103(a).

PRINCIPLES OF LAW AND ANALYSIS
35 U.S.C. § 103
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Appellant has the procedural burden of showing harmful or reversible
error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness”). However, Appellant has not
carried such burden. Specifically, Appellant has not shown reversible error
in the Examiner’s determination that one of ordinary skill in the art would
have been led to employ Phelps’s aqueous conversion coating solution
corresponding to the claimed priming solution as the conversion coating
solution of the zinc surface protection process taught by Hardin, with a
reasonable expectation of successfully improving corrosion protection
properties.
As indicated supra, Hardin teaches a process for protecting a surface
of a metal object, such as zinc or zinc alloy, which comprises, inter alia,
deoxidizing the surface of a zinc or zinc alloy object with an acidic solution,
applying an aqueous chromate-free conversion coating solution having a pH
of 1 to 2.9 to such surface, and then applying a solution containing a sealant
to the conversion solution coated surface. Appellant does not dispute that
Hardin’s deoxidizing step corresponds to the claimed activation or
passivation step employing an acidic solution. Hardin’s aqueous chromate-
free conversion coating solution contains, inter alia, Ce3+ cations and/or
cerium (III) salts, an oxidizer (a peroxidic compound, such as hydrogen
peroxide) for precipitating Ce3+ cations and/or cerium (III) salts as a cerium
(IV) (Ce4+) containing compound, a small quantity of chloride (halide), and
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pH adjusting nitric acid. According to the Examiner at pages 6 and 7 of the
Answer, Hardin’s conversion coating solution corresponding to the claimed
priming solution has all of the claimed ingredients, except for the claimed
alkali metal permanganate.
However, Phelps not only teaches that its alkali metal permanganate,
like hydrogen peroxide used in Hardin’s conversion coating solution, is a
conventional peroxidic oxidizer for converting trivalent cerium (Ce3+) in a
conversion coating solution into cerium in tetravalent (oxidation) state
(Ce4+), but also teaches that its aqueous chromate-free conversion coating
solution contains, inter alia, cerium in trivalent state (Ce3+), an oxidizer,
such as the claimed alkali metal permanganate, for converting cerium in
trivalent state into tetravalent (oxidation) state (Ce4+), a valence stabilizer,
and an alkali metal halide. Phelps further teaches that its aqueous chromate-
free conversion coating solution has the claimed pH value which is also
inclusive of the pH of the chromate-free conversion coating solution taught
by Hardin. According to Phelps, its aqueous cerium based conversion
coatings are significantly better than conventional cerium-based conversion
coatings, inclusive of that taught by Hardin, in terms of corrosion protection
properties for metallic objects, such as zinc or zinc alloy objects.
Given the above teachings, notwithstanding Appellant’s arguments to
the contrary, one of ordinary skill in the art would have been led to employ
Phelps’s aqueous chromate-free conversion coating solution corresponding
to the claimed priming solution as the conversion coating solution of the
zinc surface protection process taught by Hardin, with a reasonable
expectation of successfully improving corrosion protection properties. KSR
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Int’l Co., v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”)
Appellant contends that the conversion coating solutions taught by
Phelps and Hardin are not priming solutions. However, Hardin teaches that
its conversion coating solution shows a good adhesion to the metal, provides
good corrosion protection, and is an excellent paint base (primer) for
promoting adhesion of the paint film to the metal. Phelps, like Hardin,
teaches (p. 1, para. 009) that:
A conversion-coated surface may be left bare or afforded
further protection by the application of additional films or
coatings. Conversion coatings need to adhere to the substrate
and should result in a surface that will promote the formation of
a strong bond with subsequently applied coatings…. Depending
on the intended application, a conversion coating, as described
herein, may be considered to be an “adhesion promoter” and
vice versa.

Both Hardin and Phelps teach that their conversion coating solutions not
only provide corrosion protection properties, but also serve as a primer (a
priming solution) for a subsequent coating. Thus, we concur with the
Examiner that both Hardin and Phelps teach conversion coating solutions
which are encompassed by the phrase “priming solution” recited in claims 1,
16, and 40. Appellant has not identified any definition or meaning of the
claimed aqueous priming solution in the Specification, which would have
distinguished the claimed priming solution from the conversion coating
solution taught or suggested by Phelps and Hardin. In re Icon Health and
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Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give
claims 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.)
Thus, based on the record, including due consideration of Appellant’s
arguments and evidence, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of 35
U.S.C. § 103(a).
DECISION
In view of the foregoing, we affirm the Examiner’s decision rejecting
claims 31 through 34 under 35 U.S.C. § 112, first paragraph, and rejecting
claims 1 through 30 and 35 through 41 under 35 U.S.C. § 103(a).
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

PL Initial:
sld

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