Ex Parte Wu

Board of Patent Appeals and Interferences

Sep 15, 2010

11187206 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/187,206 07/22/2005 Peter Hsiuen Wu 038190/295256 7709
67141 7590 09/15/2010
ALSTON & BIRD, LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
AMAKWE, TAMRA L
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
09/15/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER HSIUEN WU
__________

Appeal 2009-009484
Application 11/187,206
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-009484
Application 11/187,206

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-42, all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims on appeal are directed to a coated metal substrate. Claims
1 and 29, reproduced below, are illustrative.
1. A coated metal substrate, comprising

a metal substrate having an outer surface;

a maskant film adhered to at least a portion of the outer
surface of said metal substrate, the maskant film having a
pattern of scribed lines therein; and

a radiation-cured and substantially solvent-free line
sealant overlying said scribed lines in said maskant film.

29. A coated metal substrate, comprising

a metal substrate having an outer surface;

a radiation-cured and substantially solvent-free maskant
film adhered to at least a portion of the outer surface of said
metal substrate.

Appeal Brief dated June 16, 2008 (“App. Br.”), Claims Appendix (emphasis
added).
Claim 42, the only other independent claim, is directed to a coated
airplane fuselage panel comprising, inter alia, “a radiation-cured and
substantially solvent-free line sealant overlying said scribed lines in said
maskant film.” App. Br., Claims Appendix.
The following Examiner’s rejections are before us on appeal:
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Application 11/187,206

(1) Claims 29, 30, 32-34, and 36 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Gnanamuthu (US 4,716,270, issued December 29,
1987).
(2) Claim 35 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Gnanamuthu.
(3) Claims 1-7, 11-18, 20-28, 31, 33, and 37-42 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Gnanamuthu
and Bauer (CA 2,396,806 A1, published August 16, 2001).2
(4) Claims 8-10, 19, and 41 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Gnanamuthu, Bauer, and Al-Akhdar
(US 6,486,226 B2, issued November 26, 2002).
(5) Claims 27, 33, and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gnanamuthu, Bauer, and Brenneis (US
6,684,593 B2, issued February 3, 2004).
B. ISSUES
(1) Did the Examiner reversibly err in finding that Gnanamuthu
describes a coated metal substrate as recited in claim 29?
(2) Did the Examiner reversibly err in concluding that it would
have been obvious to one of ordinary skill in the art to use the radiation-
curable compositions disclosed in Bauer as maskants in the process of
Gnanamuthu?
(3) Did the Examiner reversibly err in concluding that the coated
metal substrate recited in claims 1 and 42, which comprises a line sealant

2 The Examiner relies on WO 01/58971 A3 as evidence of the disclosure of
CA 2,396,806 A1. See Office Action dated August 28, 2007, at 4. The
Appellant does not oppose. Therefore, we also refer to the disclosure of
WO 01/58971 A3 as evidence of the disclosure of CA 2,396,806 A1.
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Application 11/187,206

overlying scribed lines in the maskant film, would have been obvious to one
of ordinary skill in the art in view of the combined teachings of Gnanamuthu
and Bauer?
C. FINDINGS OF FACT
Gnanamuthu discloses a process for chemically etching or chemically
milling a metal part. Gnanamuthu 1:7-11.
According to the disclosed process, the metal part is coated with a
uniform layer of a maskant material comprised essentially of an organic
polymer. Gnanamuthu 2:52-56.
The maskant is then cured at ambient temperature or at a suitably
elevated temperature to reduce curing time. For example, the maskant can
be cured at room temperature over a period of about 4 hours, or can be cured
in an oven at 100°F. for 60 minutes, followed by treatment at 140°F. to
150°F. for 60 minutes. Gnanamuthu 3:63-4:2.
After curing, a laser beam is used to scribe a predetermined pattern in
the maskant. Gnanamuthu 2:56-63.
After the scribing operation is complete, the maskant within the
boundaries scribed by the laser beam is peeled from the surface to expose
the underlying metal, leaving the remaining portions of the maskant adhered
to the surface. Gnanamuthu 2:64-68.
The part is then immersed in a suitable etching or chemical milling
bath, removed from the etching solution, and the remaining maskant is
peeled from the part. Gnanamuthu 3:1-9.
Gnanamuthu discloses that preferred maskant compositions include
ADCOAT 820 and ADCOAT 850. Gnanamuthu 3:50-57.

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D. ANALYSIS
1. Issue (1)
Claim 29 is directed to a coated metal substrate comprising “a
radiation-cured and substantially solvent-free maskant film” adhered to the
metal substrate. App. Br., Claims Appendix.
The Appellant discloses that “[t]he term ‘substantially solvent-free’ is
intended to encompass any ‘100% solids’ composition, wherein the
composition is substantially free of water or volatile organic solvents that
evaporate from the composition during curing.” Spec. 5:25-27. Thus, we
interpret the term “substantially solvent-free” to mean that the composition,
after curing, is “substantially free” of water or volatile organic solvents. The
Appellant does not disclose a numerical value or range that corresponds to
“substantially free.”
The Examiner concluded that the phrase “radiation-cured and
substantially solvent-free” is a process limitation. See In re Thorpe, 777
F.2d 695, 697 (Fed. Cir. 1985) (in a product-by-process claim, determination
of patentability is based on the product itself). The Examiner found that the
solvent in the maskant composition of Gnanamuthu evaporates during curing
and results in a cured, substantially solvent-free maskant film that is
indistinguishable from the maskant film recited in claim 29. Examiner’s
Answer dated September 30, 2008 (“Ans.”), at 11-12.
The Appellant argues that the maskant film disclosed in Gnanamuthu
is “solvent-based.”3 App. Br. 5. According to the Appellant, “[i]t is widely

3 The Appellant directs our attention to a Material Safety Data Sheet for
“AC-850 Maskant” made by Adcoat, Inc. (included in the Evidence
Appendix) to establish that the maskant film disclosed in Gnanamuthu is
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Application 11/187,206

accepted, that curing or drying of solvent-based compositions, including
maskant compositions, would not result in removing all of the solvent.”
Reply Brief dated December 1, 2008 (“Reply Br.”), at 4-5. Therefore, the
Appellant contends that the resulting maskant film of Gnanamuthu would
not be comprised of 100% solids but would include “some solvent.” Reply
Br. 4.
The Appellant’s argument is not persuasive of reversible error for at
least the following reasons. First, the term “substantially solvent-free” refers
to volatile organic solvents and does not require their complete removal
during curing. See Ans. 11 (“substantially solvent-free” is not necessarily
100% solvent-free). Rather, according to the Specification, “substantially
solvent-free” permits an unidentified amount of volatile organic solvent. See
Spec. 5:25-27; In re Nehrenberg, 280 F.2d 161, 165 (CCPA 1960) (“We are
not aided by the specification herein in determining what degrees are
included within the broad term ‘substantially.’”); see also Seattle Box Co.,
Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984)
(when a word of degree is used, it must be determined whether the
specification provides some standard for measuring that degree).
Furthermore, the Appellant has not directed us to any evidence
establishing that all of the volatile organic solvent would not be removed
from the maskant of Gnanamuthu during the disclosed curing process. See
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in
a brief cannot take the place of evidence.”). In any event, to the extent that
“some” volatile organic solvent does remain after curing, the Appellant has

“solvent-based.” App. Br. 6. There appears to be no dispute that “AC-850”
and “ADCOAT 850” refer to the same product.
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failed to direct us to any evidence establishing that this amount is more than
the amount of volatile organic solvent in a “substantially solvent-free”
maskant.
In sum, the Examiner had a reasonable basis for finding that the
maskant composition of Gnanamuthu, once cured, would be “substantially
free” of volatile organic solvents. Thus, the burden properly shifted to the
Appellant to establish that the Examiner’s finding is erroneous. On this
record, the Appellant has failed to satisfy that burden. See In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977) (where the claimed and prior art products
are substantially identical, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of the claimed product). Therefore, the § 102(b) rejection will be affirmed.
Claims 35 depends from claim 29. The Appellant does not separately
argue the patentability of claim 35. See App. Br. 7-8. Therefore, the
§ 103(a) rejection of claim 35 will also be affirmed.
2. Issue (2)
Claim 37 indirectly depends from claim 29 and recites that the
maskant film comprises a particular radiation-cured polymer component.
Claim 38 depends directly from claim 29 and recites that the maskant film is
formed by radiation curing of a composition comprising “at least one
polymerizable monomer or oligomer and a photoinitiator.” App. Br., Claims
Appendix.
The Examiner finds that Gnanamuthu does not disclose a maskant
comprising the particular components recited in claims 37 and 38. Ans. 6-7.
However, the Examiner contends that Bauer discloses a radiation-curable
maskant composition comprising the claimed components which “exhibits
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excellent adhesion to metal.” Ans. 7. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to use the radiation-
curable compositions disclosed in Bauer as maskants in the process of
Gnanamuthu in view of their “excellent adhesiveness onto a metal
substrate.” Ans. 7-8.
The Appellant recognizes that Bauer discloses radiation-curable
polymer compositions that can be adhered to metal. However, the Appellant
argues that Bauer does not suggest that the coatings would be suitable for
use as a peelable maskant film in the process of Gnanamuthu because the
coatings are said to be “strongly adherent” to a metal substrate. App. Br. 8-
9; Bauer 1:3-8.
In response, the Examiner states that “Bauer was simply added to
show the state of the art in the coating industry.” Ans. 14. However, the
Examiner then reiterates that the coating of Bauer “strongly adheres” to a
metal substrate. Ans. 14.
On this record, the Examiner has failed to explain why the coatings of
Bauer would be suitable as maskants in the process of Gnanamuthu which
uses maskants that have a “controllable degree” of adherence and are
“readily removable by hand stripping.” Gnanamuthu 3:35-43. For this
reason, the § 103(a) rejection of claims 37 and 38 cannot be sustained.
Claims 39-41 depend from claim 38. Therefore, the § 103(a)
rejections of these claims will not be sustained. As to the § 103(a) rejection
of claim 41 based on the combination of Gnanamuthu, Bauer, and Al-
Akhdar, the Examiner has failed to explain why the teachings of Al-Akhdar
cure the deficiencies identified above.

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3. Issue (3)
The Examiner finds that Gnanamuthu does not teach a radiation-cured
line sealant overlying scribed lines of a maskant film as recited in claims 1
and 42. The Examiner contends that Bauer discloses a radiation curable and
substantially solvent-free sealant that may be adhered to metal substrates.
Ans. 6-7. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art to modify the coated metal substrate of
Gnanamuthu with a sealant as claimed “because Bauer teaches a solvent-free
ultraviolet-curable resin film or sealant [that] exhibits excellent adhesiveness
onto a metal substrate.” Ans. 7-8.
The Appellant argues that there is:
no teaching in the Bauer reference regarding line sealers, which
are compositions applied over scribed lines in an underlying
maskant composition. The Bauer reference is not directed to
maskant compositions of any sort, and does not generally
describe scribing of maskants. Thus, the Bauer reference also
does not teach the need for any line sealer compositions . . . .

App. Br. 11. The Appellant’s position is supported by the record on appeal.
Significantly, the Examiner has failed to direct us to any disclosure in
the prior art of record suggesting that it would have been desirable to apply a
sealant overlying the scribed lines in the maskant film of Gnanamuthu. For
this reason, the § 103(a) rejections will be reversed.
E. DECISION
The rejection of claims 29, 30, 32-34, and 36 under 35 U.S.C.
§ 102(b) as anticipated by Gnanamuthu is affirmed.
The rejection of claim 35 under 35 U.S.C. § 103(a) as unpatentable
over Gnanamuthu is affirmed.
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Application 11/187,206

The rejection of claims 1-7, 11-18, 20-28, 31, 33, and 37-42 under
35 U.S.C. § 103(a) as unpatentable over the combination of Gnanamuthu
and Bauer is reversed.
The rejection of claims 8-10, 19, and 41 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gnanamuthu, Bauer, and Al-Akhdar is
reversed.
The rejection of claims 27, 33, and 42 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gnanamuthu, Bauer, and Brenneis is
reversed.
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-IN-PART

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ALSTON & BIRD, LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
10