Ex Parte Weber

Patent Trial and Appeal Board

May 23, 2016

12746114 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121746,114 09/14/2010
7055 7590 05/25/2016
GREENBLUM & BERNSTEIN, PLC
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
James Weber
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.
P38504 6599
EXAMINER
ZIMMERMAN, JOHN J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
05/25/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES WEBER 1
Appeal2014-008553
Application 12/746,114
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8, 10, 12, and 14-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a multilayer anti-corrosive
coating for a metallic substrate such as an iron pipe. Spec. ,-i 4; Claim 1.
Claim 1 is reproduced below from page 47 (Claims Appendix) of the Appeal
Brief:
1 According to the Appellant, the Real Party in Interest is Sulzer Metco (US)
Inc. App. Br. 2.
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Application 12/746,114
1. A multilayer coating comprising:
a first coating layer, which is substantially a metal, having a
thickness of approximately 25 microns to approximately 200
microns deposited directly on and in contact with a substrate;
a second coating layer, which is a mixture of the metal and a
polymeric material, having a thickness of approximately 5
microns to approximately 200 microns deposited directly on and
in contact with the first coating layer; and
a third coating layer, which is substantially the polymeric
material, having a thickness of approximately 5 microns to
approximately 200 microns deposited directly on and in contact
with the second coating layer.
REJECTIONS ON APPEAL
1. Claims 1-8, 10, 12, and 14-20 stand rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1-27 of Owen et al. (US 8,293,378 B2, filed Oct. 23, 2012).
2. Claims 1-8, 10, 12, and 14-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Payne et al. (US 2003/0064234 Al, published
Apr. 3, 2003).
3. Claims 1-8, 10, 12, and 14-17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fujita (JP 64-18476, issued Jan. 23, 1989) in
view of Yamamoto et al. (US 4,695,598, issued Sept. 22, 1987).
ANALYSIS
Rejection 1
Claims 1-8, 10, 12, and 14-20 stand rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
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Application 12/746,114
1-27 of Owen. The Appellant does not argue the claims separately, so the
claims stand or fall together. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds:
Although the conflicting claims are not identical, they are not
patentably distinct from each other because the claims of the
pending application and the claims of the patent both require a
substrate, a first metal coating layer of 25-200 µm thickness, a
second coating layer of a mixture of metal and polymeric
material of 5-200 µm thickness and a third layer of polymeric
material of 5-200 µm thickness (e.g. see claims 1-27 of the
patent).
Ans. 2.
In the Appeal Brief, the Appellant argues:
[T]he claims of [Owen] do not recite the specific ranges or can
[sic] these claims be arguably understood to have even arguably
suggested the thicknesses for each of the first, second and third
coating layers. . . . As the patented claims do not recite any
arguable subject matter regarding the range of thickness for any
of the claimed layers, Appellant requests that the Board reverse
the Examiner's decision ....
App. Br. 10.
The Appellant's assertion that Owen does not recite the specific range
of thicknesses for each of the first, second, and third coating layers is
incorrect. Claim 1 of Owen recites precisely the same thicknesses for each
layer that are recited by the Appellant's claim 1. See Owen at 11: 10-26
(claim 1 ). Owen also explains that the first and second metals may be the
same, and that the first and second dielectric materials may be the same.
Owen at 5:38-39, 6:32-36. The Appellant's argument does not persuade us
of reversible error in the Examiner's rejection.
In the Reply Brief, the Appellant raises new arguments that were not
raised in the Appeal Brief. See Reply Br. 3-4. We decline to address those
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Application 12/746,114
arguments because the Appellant has not established good cause for failing
to raise them in the opening Appeal Brief. See 37 C.F.R. § 41.4l(b)(2).
We affirm the Examiner's rejection.
Rejection 2
Claims 1-8, 10, 12, and 14-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Payne. The Appeal Brief includes separate
sections for independent claims 1, 16, and 17. The arguments for claims 16
and 17 appear to be the same as those for claim 1, see App. Br. 18-31;
accordingly, claims 16 and 17 will stand or fall with claim 1. The Appeal
Brief also includes a separate section for the dependent claims and appears
to separately argue (1) claims 10, 12, and 14 as a group, (2) claims 2-8 as a
group, and (3) claims 19 and 20 as a group. See App. Br. 31-32. We limit
our discussion to claim 1 and the separately argued groups. Dependent
claims that are not separately argued will stand or fall with the independent
claim from which they depend. See 37 C.F.R. § 41.37(c)(l)(iv).
A. Claim 1
The Examiner finds that Payne teaches "a thermal spray process [that]
can be used to make graded or layered coatings wherein the composition
changes from A to A+B to B," and that "[t]he A portion would correspond
with the claimed first coating, the A+B portion corresponds with the claimed
second coating[,] and the B portion corresponds with the claimed third
coating." Ans. 2-3 (citing Payne ,-i,-i 16, 28). The Examiner further finds
that "Payne may differ from the pending claims in that Payne may not
require A, A+B[,] and B to be a 'metal', a 'mixture of the metal and a
polymeric material[,]' and 'polymeric material', but since Payne clearly
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Application 12/746,114
teaches that A and B consist of 'metallic, ceramic, cermet or polymeric
materials', the selection of the metal and polymeric materials would be
obvious" and "[ d]etermining the order of deposition would be a matter of
determining the properties desired by the coated article ... and would be
well within the purview of one of ordinary skill in the art." Id. at 3 (citing
Payne iJ 30). Concerning the thicknesses of the layers, the Examiner finds
that "Payne teaches that typical coating thicknesses range from 100-500
microns," and that "optimizing the thickness of each individual layer to meet
the requirements of the end use article would be obvious to one of ordinary
skill in the art." Id. at 3--4.
The Appellant argues that Payne does not teach three discrete layers
as recited by claim 1. See App. Br. 13-18. Specifically, the Appellant
argues that Payne teaches "'zones' ... composed of a number of layers
having gradually changing compositions" and "continuous spraying with a
gradual compositional change to achieve a desired grading of the component
materials, A, and B." Id.
That argument does not persuade us of reversible error in the
Examiner's obviousness rejection. Paragraph 21 of Payne teaches a
"deposited coating" that has "a gradation in composition from
predominantly A to A+B to predominantly B." The existence of graded
transitions between the layers A, A+B, and B does not show that Payne's
composition does not meet the limitations of claim 1. Additionally,
Paragraph 21 teaches that "[ w ]hile this invention includes coatings that are
continuously graded in composition ... it also includes coatings in which
one or more layers of the coating is maintained constant for a given
thickness." Paragraph 28 of Payne includes a similar teaching:
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Application 12/746,114
The coatings of this invention include, but are not limited to,
coatings that are virtually continuously graded from the
composition of one constituent in the powder mixture to that of
another constituent and also coatings grading from one
constituent to another with zones of virtually constant
composition for a given thickness. The gradation may have a
very sharp transition zone such that the coating's composition
changes from A to B with little discemable intermediate mixed
zone. Alternatively, the transition may be very gradual from A
to A+B to B with the A+B zone gradually changing from
predominantly A to predominantly B.
Thus, Payne teaches two embodiments: The embodiment focused on by the
Appellant, which involves gradation; and the embodiment largely ignored by
the Appellant, in which "one or more layers of the coating is maintained
constant for a given thickness." Payne iJ 21.
We agree with the Examiner that a person of ordinary skill in the art
would have understood Payne to teach or suggest a multilayer coating
comprising three layers, as recited by claim 1.
The Appellant's argument that "PAYNE expressly discloses that
applying discrete layers ... is 'unsuccessful,"' see App. Br. 16, does not
persuade us otherwise. The portion of Payne relied upon by the Appellant is
a single example that involves alumina, "alumina plus chromium carbide
plus nichrome," and "chromium carbide plus nichrome" as its three layers.
See Payne iJ 31. That example does not purport to establish whether a metal,
metal plus polymer, and polymer coating composition would be successful if
applied as discrete layers. Nor does it negate the fact that Payne teaches
both continuous gradations and "coatings in which one or more layers of the
coating is maintained constant." E.g., Payne iii! 21, 28; see also In re Mills,
470 F.2d 649, 651 (CCPA 1972) ("[A] reference is not limited to the
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disclosure of specific working examples."). Moreover, the Appellant does
not persuasively explain why the first, second, and third "zone[ s ]" of
Payne's example do not render obvious first, second, and third "coating
layer[ s ]" as described by claim 1. The Appellant's arguments focus on
whether Payne expressly teaches three discrete layers. While we disagree
with the Appellant's position for the reasons stated above, we further note
that the Appellant's arguments do not meaningfully address whether the
claimed layers would have been obvious in view of Payne. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) ("[T]he [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.").
The Appellant also argues that "the Examiner has not identified (nor
can he identify) any specific examples suggesting a combination that
includes a polymeric material ... and certainly not a combination that
includes metal and a polymeric material .... " App. Br. 14. The Appellant
acknowledges that Payne "discloses that A and B can be 'metallic, ceramic,
cermet, or polymeric materials, alloys thereof, or in any combination,"' but
argues that "this does not render obvious the specifically recited
arrangement of layers set forth in ... claim 1." Id. at 17.
We disagree. As explained above, Payne teaches a coating
comprising three layers: A, A+B, and B. E.g., Payne ,-i,-i 21, 28. Payne
teaches that the "coatings of this invention may consist of metallic, ceramic,
cermet, or polymeric materials," id. ,-i 29, and it teaches that "[m]ost
commonly, the layer of coating next to the substrate [i.e., layer A] is a
metallic alloy ... ,"id. ,-i 19. In light of those teachings, we agree with the
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Examiner that a multilayer coating comprising three layers, A, A+B, and B,
in which A is a metal and B is a polymeric material, would have been
obvious to a person of ordinary skill in the art.
In connection with that argument, the Appellant makes reference to
the "dimensions" of claim 1. E.g., App. Br. 17. The Appellant's
unembellished reference to "dimensions" does not apprise us of error
because it merely identifies a limitation of the claim and asserts, with no
explanation, that the prior art does not disclose that limitation. See 37
C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding
that "the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art"). The Examiner made specific findings concerning
whether the thickness ranges recited by claim 1 would have been obvious in
view of Payne, e.g., Ans. 3--4, 7, and the Appellant's reference to
"dimensions," with no supporting argument, provides no basis to reject those
findings. To the extent that the Appellant raises new arguments in the Reply
Brief, see Reply Br. 7-8, we deem those arguments to be waived because the
Appellant has not established good cause for failing to raise them in the
opening Appeal Brief. See 37 C.F.R. § 41.4l(b)(2).
For those reasons, the Appellant's arguments concerning Payne do not
persuade us of reversible error in the Examiner's obviousness rejection.
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B. Claims 2-8
The Appellant argues that "claims 2-8 are separately patentable"
because "the Examiner has not identified any express or implied disclosure
in PAYNE of the specifically recited materials for the substrate, first coating
layer, the second coating layer, or the third coating layer." App. Br. 31.
The Examiner, however, makes findings concerning specific
materials. See Ans. 7-8. In particular, the Examiner finds that the selection
of specific materials would have been obvious to one of ordinary skill in the
art, that the specific materials claimed are "common," and that, because
"Payne clearly explains the function of the coating materials ... it would be
within the level of ordinary skill in the art to select appropriate combinations
[of] common materials for different end uses and properties." Id. The
Appellant's unembellished arguments do not establish reversible error in the
Examiner's conclusion that the materials recited in claims 2-8, which are
common metals and polymers, would have been obvious to a person of
ordinary skill in the art. See KSR, 550 U.S. at 418-19; Lovin, 652 F.3d at
1357 (bald assertion that prior art elements are not found in the prior art,
with no explanation, is not persuasive).
C. Claims 10, 12, and 14
The Appellant argues that "claims 10, 12, and 14 are separately
patentable" because Payne "discloses continuous application/transition of
the components, and expressly disclaims discrete layers." App. Br. 31. For
the reasons set forth above, we disagree. We therefore affirm the
Examiner's rejection of claims 10, 12, and 14.
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D. Claims 19 and 20
The Appellant argues that "claims 19 and 20 are separately
patentable" because Payne "is disclosed as a continuous process, [and] the
Examiner has not identified any express or implied disclosure in PAYNE
that arguably describes the embodiments recited in at least claims 19 and
20." App. Br. 31-32. For the reasons set forth above, we disagree with the
Appellant's assertion that Payne is limited to a continuous gradation.
However, the Examiner makes no findings concerning the limitations of
dependent claims 19 and 20 (i.e., "heating the substrate to approximately the
fusion temperature of the [metal/polymeric material] when applying the
[first/third] coating layer."), notwithstanding the fact that, in the Appeal
Brief, the Appellant identifies that apparent deficiency in the Examiner's
rejection. Because the Examiner fails to address certain limitations in claims
19 and 20, the Examiner fails to make out a prima facie case of obviousness
for those claims. Accordingly, we are constrained to reverse the Examiner's
rejection of claims 19 and 20.
* * *
In summary, we affirm the Examiner's rejection of claims 1-8, 10, 12,
and 14-18, but we reverse the Examiner's rejection of claims 19 and 20.
Rejection 3
Claims 1-8, 10, 12, and 14-17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fujita in view of Yamamoto. The Appeal
Brief includes separate sections for independent claims 1, 16, and 17. The
arguments for claims 16 and 1 7 appear to be the same as those for claim 1,
see App. Br. 36--44; accordingly, claims 16 and 17 will stand or fall with
claim 1. The Appeal Brief also includes a separate section for the dependent
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claims and appears to separately argue (1) claims 10, 12, and 14 as a group,
and (2) claims 2-8 as a group. See App. Br. 44--46. We limit our discussion
to claim 1 and the separately argued groups. Dependent claims that are not
separately argued will stand or fall with the independent claim from which
they depend. See 37 C.F.R. § 41.37(c)(l)(iv).
A. Claim 1
The Examiner finds that Fujita teaches "that a fuel tank can be
protected by applying [a] first layer comprising a mixture of epoxy and Zn
powder and then applying a second layer of epoxy resin." Ans. 4. The
Examiner notes that this differs from the claims in that it "may not require a
metal layer between the mixed metal powder/epoxy layer and the fuel tank
substrate." Id. However, the Examiner finds that Yamamoto teaches "that
zinc plated steel (galvanized steel) is a conventional material for fuel tank
substrates," and concludes that "it would have been obvious ... to use zinc
plated steel for the ±hel tank substrate of Fujita." Id.
The Appellant argues that none of the references disclose "three
distinct coating layers" and, therefore, that the references do not render
claim 1 obvious. App. Br. 34-35. That argument does not address the
Examiner's rationale. The Appellant does not dispute the Examiner's
finding that that Fujita teaches "that a fuel tank can be protected by applying
[a] first layer comprising a mixture of epoxy and Zn powder and then
applying a second layer of epoxy resin." Ans. 4. Nor does the Appellant
dispute the Examiner's finding that Yamamoto teaches "that zinc plated
steel (galvanized steel) is a conventional material for fuel tank substrates."
Id. If the zinc-plated fuel tank of Yamamoto were substituted for the fuel
tank of Fujita and coated with the layers taught by Fujita, as proposed by the
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Examiner, "[t]his would clearly result in a substrate with a zinc plating layer,
a mixed metal/epoxy layer, and an epoxy resin layer." Ans. 9. The
Appellant's argument does not identify reversible error in that reasoning or
persuasively explain why the fuel tank of Fujita as modified by Yamamoto
does not include the claimed layers. Cf KSR, 550 U.S. at 416 ("[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.").
The Appellant also argues that "neither FUJITA nor YAMAMOTO
provides any express or implied teaching of dimensions for the discrete
layers of their containers." App. Br. 35. The Examiner, however, finds
"that it would have been obvious to one of ordinary skill in the art at the
time of the invention was made to optimize the thickness of each layer of
Fujita for corrosion resistance verses [sic] weight and material cost," and
that "applicant's disclosure shows no factual evidence of patentable
distinction for any particular thickness over any other thickness." Ans. 9.
We further note that Fujita's claim 3 teaches a layer thickness range of 10-
60 microns, which overlaps the claimed ranges. The Appellant's argument
does not persuade us of reversible error in the Examiner's rejection. See
KSR, 550 U.S. at 418-19; cf also In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) ("The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other variable within
the claims .... [and] in such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range." (citations
omitted)); Lovin, 652 F.3d at 1357.
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In the Reply Brief~ the Appellant argues that Fujita's first layer is zinc,
copper,2 and an epoxy resin, and that the inclusion of copper removes it from
the scope of claim l's recitation of "a mixture of the metal and a polymeric
material" because "the metal" of Yamamoto is zinc alone. See Reply Br. 10.
Earlier in the Reply Brief, the Appellant argues that claim l's
recitation of "a mixture of the metal and a polymeric material" is "an open-
ended recitation," see id. at 4, which is inconsistent with their new argument
that Fujita' s mixture of zinc, copper, and epoxy falls beyond the scope of
claim 1 because it is not limited to zinc and epoxy. The Appellant appears
to be correct that claim l's recitation of "a mixture of' is open-ended and
does not exclude ingredients beyond the single metal and the single polymer.
See Mars, Inc. v. H.J. Heinz Co., L.P., 377 F.3d 1369, 1376 (Fed. Cir. 2004)
("The use of the term 'mixture' does not exclude additional, unnamed
ingredients .... There is nothing within the ordinary meaning of 'mixture'
that bars additional, unnamed ingredients."). Thus, the Appellant's
argument fails to establish reversible error in the Examiner's rejection.
B. Claims 2-8
The Appellant argues that "claims 2-8 are separately patentable"
because "the Examiner has not identified any express or implied disclosure
in FUJITA or YAMAMOTO of the specifically recited materials for the
substrate, first coating layer, the second coating layer, or the third coating
layer." App. Br. 45.
Fujita expressly teaches, for example, the use of specific claimed
materials such as zinc. E.g., Fujita at 4. Moreover, as explained above, the
2 Presumably, the Appellant meant to say nickel. See, e.g., Fujita at 2
(Claim 1 ).
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Examiner finds that the selection of specific materials would have been
obvious to one of ordinary skill in the art, that the specific materials claimed
are "common," and that "it would be within the level of ordinary skill in the
art to select appropriate combinations [of] common materials for different
end uses and properties." Id. While those findings were made with respect
to Rejection 2, they apply equally to Rejection 3, as the references relied
upon in Rejection 3 are likewise concerned with coatings to reduce
corrosion. E.g., Yamamoto at Abstract; Fujita at 2 (Title). The Appellant's
unembellished arguments do not establish reversible error in the Examiner's
conclusion that the materials recited in claims 2-8 would have been obvious
to a person of ordinary skill in the art. See KSR, 550 U.S. at 418-19; Lovin,
652 F.3d at 1357.
C. Claims 10, 12, and 14
The Appellant argues that "claims 10, 12, and 14 are separately
patentable" because "neither FUJITA nor YA1\1Al\10TO discloses
continuous application/transition of the components, and expressly disclaims
discrete layers." App. Br. 44.
That section of the Appeal Brief appears to be pasted from the section
of the Appeal Brief concerning Payne, see App. Br. 31, as the Appellant's
only discussion of "continuous application/transition of the components"
and "discrete layers" applies to Payne, not Fujita or Yamamoto, and the
Appellant cites nothing in either Fujita or Yamamoto that is relevant to that
argument. Accordingly, we do not find that argument to be persuasive.
* * *
In summary, we affirm the Examiner's rejection of claims 1-8, 10, 12,
and 14-17 as unpatentable over Fujita in view of Yamamoto.
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CONCLUSION
We AFFIRM the Examiner's rejection of claims 1-8, 10, 12, and 14-
20 on the ground of nonstatutory obviousness-type double patenting as
unpatentable over claims 1-27 of Owen.
We AFFIRM the Examiner's rejection of claims 1-8, 10, 12, and 14-
18 as unpatentable over Payne, but we REVERSE the Examiner's rejection
of claims 19 and 20 as unpatentable over Payne.
We AFFIRM the Examiner's rejection of claims 1-8, 10, 12, and 14-
17 as unpatentable over Fujita in view of Yamamoto.
Because the rejection of every claim on appeal is affirmed under at
least one of the Examiner's stated grounds of rejection, we AFFIRM
Examiner's rejection of claims 1-8, 10, 12, and 14-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIR1\1ED
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