Ex Parte Yoneda et al

Board of Patent Appeals and Interferences

Aug 24, 2010

11085578 (B.P.A.I. Aug. 24, 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.
11/085,578 03/22/2005 Yutaka Yoneda SHI-013 5757
32628 7590 08/24/2010
KANESAKA BERNER AND PARTNERS LLP
1700 DIAGONAL RD
SUITE 310
ALEXANDRIA, VA 22314-2848
EXAMINER
ZHENG, LOIS L
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
08/24/2010 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 YUTAKA YONEDA,
HAJIME ISERI, and
SHINTARO MORI
____________________

Appeal 2009-008409
Application 11/085,578
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL1

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 20. We have jurisdiction
pursuant to 35 U.S.C. § 6.

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 2009-008409
Application 11/085,578

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We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a corrosion inhibiting
method. Claim 1 is illustrative:
1. A corrosion inhibition method for a surface of an iron-based
metallic member of a water system, comprising:
adding at least one anticorrosive to the water system, said at least one
anticorrosive being selected from a group consisting of pyrophosphoric acids
and pyrophosphates,
adjusting initial pH at a start of an initial protective film formation
process to be 5 or more and less than 7, and
increasing the pH so that the pH at the end of the protective film
formation process becomes 7 or more, thereby forming a film of iron
pyrophosphate and a film containing phosphate and calcium on the surface
of the iron-based metallic member of the water system.

The Examiner maintains2 the following rejections:
1) Claims 1 and 8-16 under 35 U.S.C. § 103(a) over Ehrhardt (US
6,585,933 B1, issued Jul. 1, 2003) and Swalm (US 2,954,309, issued Sept.
27, 1960);
2) Claims 2-7 under 35 U.S.C. § 103(a) over Ehrhardt, Swalm, and
Freeman (US 5,531,934, issued Jul. 2, 1996); and
3) Claims 17-20 under 35 U.S.C. § 103(a) over Ehrhardt, and Swalm,
and Boies (US 3,081,146, issued Mar. 12, 1963).

2 As is apparent from page 3 of the Answer, the Examiner has withdrawn the
§ 103 rejection over Boies and Swalm set forth in the Final Office Action
mailed on April 14, 2008.
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Application 11/085,578

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Rejections (1) and (2)
With respect to rejection (1), Appellants focus their arguments on
features recited in claim 1. (App. Br. 9-10 and Reply Br. 1-4). Accordingly,
we address Appellants' arguments with respect to claim 1 only. See 37
C.F.R. § 41.37(c)(1)(vii).
With respect to rejection (2), Appellants provide no additional
argument for this rejection and instead refer to the arguments made
regarding the rejection of claim 1 in rejection (1). (App. Br. 10 and Reply
Br. 1-4). Therefore, the claims under rejection (2) stand or fall with our
decision regarding the rejection of claim 1 in rejection (1).

ISSUE
Did the Examiner err in determining that it would have been obvious
to one of ordinary skill in the art to select a starting pH close enough to 7 in
Ehrhardt’s process so that the pH rise would necessarily go over 7? We
decide this issue in the negative.

FINDINGS OF FACT (FF)
1. Swalm teaches using a phosphate solution comprising, inter alia,
pyrophosphate to form "phosphate coatings on . . . metal surfaces" for
corrosion resistance. (Swalm, col. 2, ll. 9-35).
2. Swalm teaches that "[the] pH [of this phosphate solution] . . . is
controlled by the relative amounts of . . . pyrophosphate present . . .
[and that this pH] will normally tend to increase during operation."
(Swalm, col. 3, ll. 9-18).
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Application 11/085,578

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3. The Examiner states that
as the treatment process of Ehrhardt progresses, the corrosion
inhibitors such as the claimed pyrophosphate would have been
consumed gradually overtime and deposited onto the iron based
metallic members of the water system and the pH of the aqueous
solution would have internally increased and as evidenced by the
teachings of Swalm.

(Ans. 8).
Additional findings of fact are made as necessary in the Analysis that
follows.

PRINCIPLES OF LAW
“[A]nalysis [of whether the subject matter of a claim would have been
obvious] 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.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
A slight overlap between the prior art and claimed ranges typically
establishes a prima facie case of obviousness. In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003).
"[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
“[W]hen the PTO shows sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990).
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Application 11/085,578

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ANALYSIS AND CONCLUSION
Appellants argue that "Swalm . . . limit[s] the pH to about 5 to 5.5,
thus preventing the claimed pH 7 or greater levels from being reached."
(App. Br. 9 and 10). In addition, Appellants argue that "Swalm . . . clearly
suggests that the pH be 'preferably' limited to 4.8-5.2 . . . [and thus] would
tend to teach away from a shift to a neutral or alkaline pH." (App. Br. 10).
In addition, Appellants argue that "Swalm clearly suggests . . . [a] pH
range of 5 - 5.5 and further suggests maintaining the same." (Reply Br. 2).
Specifically, Appellants argue that
there is no way that the drift, that is suggest[ed] would be
expected to occur, could in fact be expected from the cited
references when taken as a whole. The position that the person
of ordinary skill would assume a pH drift upon which the
rejection is founded, in light of the teachings of Swalm, would
not occur in light of the clear suggestion in Swalm that the
above mentioned acid level is intended to be maintained.

(Reply Br. 4).
Appellants' arguments are unpersuasive of reversible error because
Appellants have failed to address and thus failed to identify error with the
Examiner's stated case. Appellants' arguments misapprehend the
Examiner’s reliance on the teachings of Swalm that, unless the relative
amount of pyrophosphate is controlled, the pH will rise. (See FF 3). The
Examiner’s point is that the pH will rise in Ehrhardt’s process because
Ehrhardt does not teach adjusting pyrophosphate during the reaction.
In this regard, the Examiner's determination that Ehrhardt's aqueous
composition having a pH (initial pH) in the range from about 5 to about 12,
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Application 11/085,578

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which overlaps Appellants' claimed range of "5 or more and less than 7," is
the first critical finding in the prima facie case of obviousness. (Ans. 4).
See Peterson, 315 F.3d at 1329.
In addition, the Examiner determines at pages 4 and 5 of the Answer
that it would have been within the skill level of one of ordinary skill in the
art to select a pH (initial pH) close to and less than 7, which is within
Appellants' claimed range of "5 or more and less than 7," for the purpose of
limiting corrosion. KSR, 550 U.S. at 418.
While Ehrhardt does not explicitly teach the "increasing the pH [of the
water system]" feature or the "pH at the end of the protective film formation
process becomes 7 or more" feature required by claim 1, the Examiner
explains that
as the treatment process of Ehrhardt progresses, the corrosion
inhibitors such as the claimed pyrophosphate would have been
consumed gradually overtime and deposited onto the iron based
metallic members of the water system and the pH of the aqueous
solution would have internally increased and as evidenced by the
teachings of Swalm.

(FF 3, see also FF 2).
Thus, we agree with the Examiner that there is a reasonable basis to
believe that in Ehrhardt's process the pH increases, and, when starting at a
pH close to and less than 7, in accordance with, inter alia, Ehrhardt’s
teachings, the feature that the “pH at the end of the protective film formation
process becomes 7 or more" would be achieved, as required by claim 1. See
Spada, 911 F.2d at 708.
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Application 11/085,578

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Therefore, the burden shifted to Appellants to show that Ehrhardt's
process does not inherently possess the increase of the pH characteristic. Id.
However, on this record, Appellants have not done so.
Accordingly, we sustain the Examiner's rejections (1) and (2).

Rejection (3)
Appellants argue the claims as a group. (App. Br. 9-10 and Reply Br.
1-4). Accordingly, we address Appellants' arguments with respect to claim
17 only. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner err in determining that the addition of Boies to the
teachings of Ehrhardt and Swalm would have rendered obvious the subject
matter of claim 17, which includes adding anticorrosives into the water
system after the protective film formation process? We decide this issue in
the negative.
ADDITIONAL FINDINGS OF FACT (FF)
4. The Examiner states that
Boies teaches a 2-stage process of treating a metal surface[s] by
first forming a corrosion protective coating using an aqueous
coating composition comprising dehydrated phosphate (i.e.
pyrophosphate is a dehydrated phosphate), followed by
maintaining the protective coating using a lower concentration
aqueous coating composition also containing pyrophosphate
(co1. 2 lines 28-37). Boies further teaches that the aqueous
composition may contain organic wetting agent (i.e. high
molecular weight electrolyte in the film maintenance
process)(col. 7 lines 45-74).
(Ans. 7).
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5. The Examiner states that
one of ordinary skill in the art would have found it obvious to
have incorporated the second film maintenance step as taught
by Boies into the process of Ehrhardt in view of Swalm in order
to maintain the protective film over long period of time as
taught by Boies (co1. 2 lines 28-37).
(Ans. 7).
Additional findings of fact are made as necessary in the Analysis that
follows.

ANALYSIS AND CONCLUSION
Appellants argue that the "increasing the pH so that the pH at the end
of the protective film formation process becomes 7 or more" limitation
required by claim 1 is not suggested by Boies because "[Boies] discloses a
preferred pH range of 5.9-6.2 which further inhibits the realization of a
neutral value." (App. Br. 11).
Appellants' argument is unpersuasive of reversible error because
Appellants have failed to address and thus failed to identify error with the
Examiner's stated case.
As already discussed, the Examiner determines that that it would have
been obvious to one of ordinary skill in the art to select a starting pH close
enough to 7 in Ehrhardt’s process so that the pH rise would necessarily go
over 7.
Appellants have not shown that the Examiner's reliance on Boies for
the addition of an organic wetting agent as an anticorrosive is faulty, because
Appellants have not come forward with any credible evidence or persuasive
argument that, for example, the anticorrosive would have been expected to
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Application 11/085,578

9
be effective only in the pH range preferred by Boies. Accordingly,
Appellants' argument is unpersuasive of reversible error.
In addition, Appellants argue that a prima facie case of obviousness
has not been established and refer to their arguments made regarding the
rejection of claim 1 in rejection (1) in support of this argument. (App. Br.
10-11). For the reasons discussed above, we find these arguments
unpersuasive of reversible error.
Accordingly, we sustain the Examiner's rejection (3).

ORDER
In summary, rejections (1) through (3) are sustained.
Accordingly, the Examiner's decision is affirmed.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(2009).
AFFIRMED

cam

KANESAKA BERNER AND PARTNERS LLPS
1700 DIAGONAL ROAD
SUITE 310
ALEXANDRIA, VA 22314-2848