Ex Parte Veronesi et al

Patent Trials and Appeals Board

Oct 20, 2014

12090260 - (D) (P.T.A.B. Oct. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM A. VERONESI,
MARK R. JAWOROWSKI, and HUGH J. O’DONNELL
____________________

Appeal 2012-008482
Application 12/090,260
Technology Center 3600
____________________

Before: EDWARD A. BROWN, CHARLES N. GREENHUT,
and JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 4–12, and 15–31. App. Br. 2. Claims 2, 3, 13, and 14 are
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-008482
Application 12/090,260

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CLAIMED SUBJECT MATTER
Claims 1, 12, and 27 are independent. Claim 1 is reproduced below.
1. A load bearing member for use in an elevator
system comprising:
at least one elongated steel tension member; and
a conversion coating on the elongated steel tension
member, the conversion coating including at least one of
chromium phosphate, black iron oxide, or nickel
phosphate.

REJECTIONS
Claims 1, 4–10, 12, 15, 16, 18–21, 24, and 28 are rejected under
35 U.S.C. § 103(a) as unpatentable over Bourgois (US 2003/0150167 A1;
pub. Aug. 14, 2003), Yamaguchi (US 6,500,558 B2; iss. Dec. 31, 2002), and
Cable (US 4,644,029; iss. Feb. 17, 1987).
Claims 11, 17, 27, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bourgois, Yamaguchi, Cable, and Zelley (US 3,595,985;
iss. July 27, 1971).
Claims 22, 25, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bourgois, Yamaguchi, and Cable, and further in view of
Gamblin (US 4,554,219; iss. Nov. 19, 1985) and Cuyler (US 6,835,460 B2;
iss. Dec. 28, 2004).
Claims 23, 26, and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bourgois, Yamaguchi, Cable, and further in view of
Ravenscroft (US 6,695,931 B1; iss. Feb. 24, 2004).

Appeal 2012-008482
Application 12/090,260

3
ANALYSIS
Claims 1, 4–10, 12, 15, 16, 18–21, 24, and 28 unpatentable over Bourgois,
Yamaguchi, and Cable
The Examiner found that Bourgois discloses a load bearing member,
as recited in claim 1, including at least one elongated steel tension member
and a conversion coating of zinc or zinc alloy, but does not disclose one of
the claimed conversion coatings of chromium phosphate, black iron oxide,
or nickel phosphate. Ans. 4–5, 7. The Examiner found that Yamaguchi
teaches a load bearing member with a conversion coating of chromium
phosphate, iron oxide, or nickel phosphate to increase adhesion of an organic
resin film to aluminum material. Id. at 5. The Examiner determined that it
would have been obvious to modify Bourgois with Yamaguchi’s teachings to
use a conversion coating to increase the adhesion of the organic resin of
Bourgois. The Examiner found that Cable teaches inventive chrome
coatings that can be brushed onto metals such as aluminum or steel. Id. at
5–6. The Examiner also found that Cable teaches the use of conversion
coatings such as those disclosed in Yamaguchi for use with metals including
aluminum and steel. Id. at 12–13.1
Appellants argue that Cable is directed to a paint-on compound that is
brushed onto a metal surface and allowed to dry before the surface is painted
whereas Yamaguchi uses an electrolyzing coating treatment that applies an
electric current to a liquid solution to form a coating. App. Br. 3. Appellants

1 Claim 12 recites a method of making a load bearing member comprising
“coating an elongated steel tension member with a conversion coating, the
conversion coating including at least one of chromium phosphate, black iron
oxide, or nickel phosphate.” The Examiner determined that it would have
been obvious to perform the method of claim 12 when producing the device
of Bourgois, Yamaguchi, and Cable in the usual, expected fashion. Ans. 7.
Appeal 2012-008482
Application 12/090,260

4
also argue that because the electrolyzing technique of Yamaguchi is different
from the brushing technique of Cable, a skilled artisan would see Cable as
being incompatible with Yamaguchi. Id. Appellants also assert that Cable
distinguishes other coatings and techniques so a skilled artisan would not
view these other coatings and techniques as interchangeable. Reply Br. 2.
The Examiner has not established, by evidence or technical reasoning,
a sufficient factual basis to reasonably support the conclusion that a skilled
artisan would have had a reason to use the chromate-phosphate coatings of
Yamaguchi on steel tension members of Bourgois based on teachings of
Cable of brushable hexavalent chromium and trivalent chromium conversion
coatings. Cable, col. 2, ll. 5–7. Cable recognizes that it is well known to
form conversion coatings by spraying or dipping with phosphate solutions or
by immersion in a treatment solution. Id. at col. 1, ll. 5–18. However, Cable
teaches coatings that are brushed onto convex external surfaces of metals
such as aluminum and steel that cannot be coated by conventional coating
techniques. Id. at col. 1, l. 15 to col. 2, l. 2; col. 3, ll. 47–55. The Examiner
has not explained why a skilled artisan would have had a reason to apply a
chromate-phosphate or chromium conversion coating of Yamaguchi, which
coatings are applied by electrolyzation to aluminum materials under selected
conditions, to steel tension members of Bourgois based on Cable’s teaching
of brushing hexavalent chromium and trivalent chromium compositions onto
metals such as aluminum and steel, or an expectation of success in doing so.
The Examiner’s reasoning lacks rational underpinning. We do not sustain
the rejection of claims 1, 4–10, 12, 15, 16, 18–21, and 24.2

2 Because claim 28 depends from claim 27, we address the rejection of claim
27 as part of our review of the rejection of claims 11, 17, 27, and 31 below.
Appeal 2012-008482
Application 12/090,260

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Claims 11, 17, 27, and 31 unpatentable over Bourgois, Yamaguchi, Cable,
and Zelley
The Examiner found that Bourgois teaches a zinc conversion coating,
but Bourgois, Yamaguchi, and Cable are silent regarding a zinc coating that
is placed below their conversion coating, as recited in claims 11, 27, and 31.
Ans. 9. The Examiner found that Zelley teaches the application of a zinc
coating onto a tension member and subsequent treatment of the zinc coating
with a conversion coating. Id. The Examiner determined that it would have
been obvious to modify Bourgois, Yamaguchi, and Cable with teachings of
Zelley to provide ancillary surface protection to a tension member for
enhanced surface protection and service life. Id.
Zelley does not overcome the deficiencies of Bourgois, Yamaguchi,
and Cable discussed supra. See App. Br. 4. We do not sustain the rejection
of claims 11, 17, 27, and 31. We also do not sustain the rejection of claim
28, which depends from claim 27 and was rejected as unpatentable over
Bourgois, Yamaguchi, and Cable for the reasons discussed supra.
Claims 22, 25, and 30 unpatentable over Bourgois, Yamaguchi, and Cable,
further in view of Gamblin and Cuyler
The Examiner relied on Gamblin and Cuyler to disclose conversion
coatings of nickel phosphate, as recited in claims 22, 25, and 30, and not to
overcome any deficiencies of Bourgois, Yamaguchi, and Cable as to claims
1, 12, and 27 from which claims 22, 25, and 30 depend, respectively. Ans.
9–10; see App. Br. 5. Accordingly, we do not sustain the rejection of claims
22, 25, and 30.

Appeal 2012-008482
Application 12/090,260

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Claims 23, 26, and 29 unpatentable over Bourgois, Yamaguchi, Cable, and
Ravenscroft
The Examiner relied on Ravenscroft to teach conversion coatings that
include black iron oxide (magnetite), as recited in claims 23, 26, and 29, and
not to overcome deficiencies of Bourgois, Yamaguchi, or Cable as to claims
1, 12, and 27, from which claims 23, 26, and 29 depend. Ans. 11; see App.
Br. 6. Accordingly, we do not sustain the rejection of claims 23, 26, and 29.

DECISION
We REVERSE the rejections of claims 1, 4–12, and 15–31.

REVERSED

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