MacDermid Acumen, IncDownload PDFPatent Trials and Appeals BoardMay 27, 202015134469 - (D) (P.T.A.B. May. 27, 2020) Copy Citation 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. 15/134,469 04/21/2016 Masahiro Hara 2156-912A (IS) 7202 159237 7590 05/27/2020 MacDermid Performance Solutions - Patents c/o Carmody Torrance Sandak & Hennessey LLP 195 Church Street P.O. Box 1950 New Haven, CT 06509-1950 EXAMINER WONG, EDNA ART UNIT PAPER NUMBER 1795 NOTIFICATION DATE DELIVERY MODE 05/27/2020 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): mpspatents@carmodylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MASAHIRO HARA and TATSUYA NISHIYAMA ____________ Appeal 2019-005760 Application 15/134,469 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1, 5, 7–11, 15–20, and 22–25 under 35 U.S.C. § 103 as unpatentable over Herdman (US 2010/0243463 A1) in combination with Barclay (US 4,161,432).2 An oral argument was conducted on May 18, 2020. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies MacDermid Acumen, Inc. as the real party in interest (Appeal Br. 1). 2 While the Examiner rejects each independent claim with its dependent claims in separate sections, the rejection is de facto the same rejection in each section (Ans. 1–15). Appeal 2019-005760 Application 15/134,469 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal (emphasis added to highlight key disputed limitations): 1. A trivalent chromium electrolyte comprising: i) trivalent chromium ions, ii) one or more complexants capable of maintaining the trivalent chromium ions in solution, which are not amino acids with a cationic side chain that includes nitrogen and is essentially free of sulfur; and iii) one or more amino acids that comprise a cationic side chain comprising nitrogen, wherein the cationic side chain is at least essentially free of sulfur, the one or more amino acids are selected from the group consisting of arginine, histidine, lysine, tryptophan, and combinations thereof, and the amino acids are present between about 1 g/l and 50 g/l; and wherein the electrolyte is substantially free of hexavalent chromium salts; wherein the electrolyte further comprises thiocyanate ions; wherein concentration of the amino acids in the electrolyte is such that a dark colored chromium deposit produced on a substrate, when the electrolyte is used to plate chromium on said substrate, has an L* value of 78.47 or lower as measured according to an L*a*b* colorspace system. Independent claims 11 and 25 are each directed to a “method of producing a dark colored chromium deposit on a substrate” using an electrolyte composition virtually the same as recited in claim 1 (Appeal Br. Claims Appendix 32–34). Appeal 2019-005760 Application 15/134,469 3 Appellant’s arguments are substantially the same for each independent claim, even though the arguments are repeated three times to correspond to the Examiner’s separate but similar rejection of each independent claim along with its dependent claims (see generally Briefs, Ans.). Accordingly, we shall focus on claim 1. OPINION Upon consideration of the evidence of record and each of Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply Brief, we determine that Appellant has not demonstrated reversible error in the Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). We sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. It has been established that “the [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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264– 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant’s main contentions are that (1) the prior art does not recognize that the selection of a particular amino acid will result in a dark Appeal 2019-005760 Application 15/134,469 4 colored deposit (for decorative coating purposes) (Appeal Br. 8, 9), (2) Herdman does not teach any benefit of supplementing the electrolyte composition with a second complexant of one of the claimed amino acids (Appeal Br. 10), (3) Barclay’s use of arginine and histidine is as a replacement for glycine, thus teaching away from the claimed invention, and there is no expectation that the resulting deposit will be dark (Appeal Br. 10, 11), and (4) the Specification’s Comparative Example 1 and Examples 1 and 2 “unequivocally demonstrate the nonobviousness of the claimed invention” because only the use of the claimed amino acids showed “dramatic and unexpectedly dark-colored deposits” (Appeal Br. 12). Appellant also de facto argues that there is no motivation to combine Herdman and Barclay (Appeal Br. generally). These arguments are reiterated in the Reply Brief. Appellant’s arguments are not persuasive of reversible error for reasons detailed by the Examiner (Ans. 15–50). Appellant’s arguments fail to consider the applied prior art as a whole and the inferences that one of ordinary skill in the art would have made therefrom. There is no dispute that both Herdman and Barclay produce an electrolytic chromium coating, and both teach the use of amino acids as complexing agents. Herdman also teaches the use of non-amino acid complexing agents, and explicitly the use of more than one complexing agent, and teaches an amount of complexing agent that overlaps the claimed range (Herdman ¶55; Final Act. 13; Ans. 21). Appellant has not shown reversible error in the Examiner’s position that it would have been obvious for one of ordinary skill to have used a known amino acid complexing agent as exemplified in Barclay for the Appeal 2019-005760 Application 15/134,469 5 electrolytic chromium coating including another complexing agent of Herdman in amounts that fall within the claimed range (e.g. Ans. 21, 22). See KSR, 550 U.S. at 417 (the predictable use of known prior art elements or steps performing the same functions they have been known to perform is normally obvious; the combination of familiar elements/steps is likely to be obvious when it does no more than yield predictable results); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ) (emphasis omitted); see also In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is [generally considered] prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose.”).3 3 Likewise, Appellant’s argument that Barclay teaches away from use of two different complexing agents (e.g., Appeal Br. 10) is not persuasive. Whether the prior art teaches away from the claimed invention is a question of fact, In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well established that a prior art reference must be considered in its entirety, i.e., as a whole, when determining if it would lead one of ordinary skill in the art away from the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). One of ordinary skill in the art would have readily appreciated that more than one complexing agent may be used as discussed in Herdman. Cf. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments); Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (Even a “statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.”). Appeal 2019-005760 Application 15/134,469 6 Likewise, any argument that may be considered as a lack of motivation to combine the cited art is also unpersuasive for the reasons given above. That is, the arguments fail to account for “the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR, 550 U.S. at 418. Furthermore, the Supreme Court has stated that it is error to “look only to the problem the patentee [or applicant] was trying to solve.” KSR, 550 U.S. at 420; see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[T]he law does not require that the references be combined for the reasons contemplated by the inventors.”). Appellant’s contention that the inventors discovered a small number of amino acid complexing agents (4 out of 15 common amino acids) that unexpectedly produce a desirable dark color is also not persuasive of reversible error in the Examiner’s rejection (e.g., Appeal Br. 13, 14; Reply Br. 11). Appellant has not sufficiently explained why the results would have been unexpected by one of ordinary skill in the art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). It is only the inventors who characterize this discovery as “unexpected.”4 “Unsupported statements in the specification . . . cannot support a finding of unexpected results.” Tyco Healthcare Group LP v. Mutual Pharm. Co., 642 F.3d 1370, 1377 (Fed. Cir. 2011) (relying on 4 While Appellant states that Barclay describes the production of a “bright” coating (e.g., Appeal Br. 11), the Examiner aptly points out that Appellant’s Specification admits that the electrolyte composition of Barclay “naturally produces a dark deposit” (Ans. 16; Spec. 9:16-18). Appeal 2019-005760 Application 15/134,469 7 “the patent specification’s description of the inventor's experimental results as ‘unexpected’”) (citing In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). In any event, we agree with the Examiner that the discovery of a previously unappreciated property of a known or obvious composition is not a sufficient basis for patentability (e.g., Ans. 15, 16). In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc., 480 F.3d at 1372 (“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”). Here, the case of obviousness established by the Examiner is strong such that when the teachings of the reference are weighed against Appellant’s alleged unexpected results/discovery, the preponderance of the evidence of record still weighs in favor of a conclusion of obviousness. Accordingly, we sustain the Examiner’s rejection of independent claims 1, 11 and 25, as well as all claims dependent thereon, noting that no dependent claims are separately argued (Appeal Br. generally). Appeal 2019-005760 Application 15/134,469 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 7–11, 15–20, 22–25 103 Herdman, Barclay 1, 5, 7–11, 15– 20, 22–25 TIME PERIOD FOR RESPONSE 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)(iv). AFFIRMED Copy with citationCopy as parenthetical citation