MacDermid Acumen, Inc

Patent Trials and Appeals Board

May 27, 2020

2019005760 (P.T.A.B. May. 27, 2020)

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).
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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).
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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
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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
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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.”).

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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).
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“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).
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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