NISSHIN STEEL CO., LTD.

Patent Trials and Appeals Board

Dec 28, 2020

2020001965 (P.T.A.B. Dec. 28, 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.
15/001,425 01/20/2016 Shigeyasu MORIKAWA 3178-2.555BS 4388
126230 7590 12/28/2020
Brundidge & Stanger, P.C.
Carl I. Brundidge
WASH/ASSOC
1925 BALLENGER AVENUE, STE. 560
Alexandria, VA 22314
EXAMINER
SHOSHO, CALLIE E
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
12/28/2020 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHIGEYASU MORIKAWA,
TADASHI NAKANO, and MASAYA YAMAMOTO
____________

Appeal 2020-001965
Application 15/001,425
Technology Center 1700
____________
Before BEVERLY A, FRANKLIN, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 1 of Application 15/001,425. Non-Final
Act. (February 1, 2019). Because at least one of the appealed claims is
twice-rejected, we have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Nisshin Steel Co. as the real party in
interest. Appeal Br. 3.
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I. BACKGROUND
The ’425 Application describes coated shaped metal materials,
including composites comprising a molded thermoplastic resin article joined
to a coated shaped metal object. Spec. ¶ 2. According to the Specification,
“shaped metal materials” are products made of metal that have been shaped
by application of heat, force, or the like. Id. ¶ 3. After the metal product is
shaped, a predetermined coating is applied to its surface. Id. ¶ 8. The coating
material is selected to improve adhesion between a thermoplastic resin
article that is to be joined to the coated metal object. Id. ¶ 7.
Claim 1 is the only claim on appeal. We reproduce claim 1 below
from the Appeal Brief’s Claims Appendix.
1. A coated shaped metal material comprising:
a shaped metal material; and
a coating formed on a surface of the shaped metal material,
wherein:
the shaped metal material is a product made of a metal
and has a predetermined shape by applying heat or force
to the metal,
the coating comprises: a polyurethane resin containing a
polycarbonate unit; and an oxide, a hydroxide, or a
fluoride of a metal selected from the group consisting of
Zr, V, Mo, W, and a combination thereof,
a mass ratio of the polycarbonate unit to a total resin
mass in the coating is 15 to 80 mass%, and
the coating has a film thickness of 0.5 to 20 µm.
Appeal Br. 23 (emphasis added).
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II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yamaoka.2 Final Act. 2.
2. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
combination of Schmitt3 and Yamaoka. Final Act. 3.
III. DISCUSSION
A. Rejection of claim 1 over Yamaoka
In this appeal, Appellant challenges the Examiner’s calculations
regarding the amount of polycarbonate polyol present in the compositions
described or suggested by Yamaoka. Appeal Br. 7–15. In particular,
Appellant alleges that the Examiner erred twice in calculating the amount of
polycarbonate polyol suggested by Yamaoka. Id.
In rejecting claim 1 as obvious over Yamaoka, the Examiner found
that Yamaoka describes a polyester-based urethane resin coating
composition containing between 11.12 and 22.24 mass% polyester polyol.
Final Act. 3. The Examiner further found that it would have been obvious to
substitute a polycarbonate polyol for Yamaoka’s polyester polyol on a gram-
for-gram basis. Id. (citing Yamaoka ¶ 66).
First, Appellant argues that the Examiner erred in the calculation of
the amount of polyester diol present in the polyurethane resin of Yamaoka’s
Production Example 1. See Yamaoka ¶¶ 176–178 (describing Production
Example 1). The Examiner found that the amount of polyester diol present in

2 US 2013/0161062 A1, published June 27, 2013.
3 US 4,692,383, issued September 8, 1987.
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the polyurethane resin was about 22.24 weight % of the polyurethane resin.
Final Act. 3. According to Appellant, the Examiner erred by not including
the amount of acetone, water, triethylamine, and hexamethylene diamine
present during formation of the polyurethane resin. Appeal Br. 10.
This argument is not persuasive. As an initial matter, Yamaoka states
that at the end of the reaction, the acetone is distilled off under reduced
pressure. Yamaoka ¶ 178. Thus, the acetone is not present in the final
composition and its mass should not be included in the calculation of the
mass% of the polyol. Furthermore, as the Examiner points out, see Answer
6, the water, triethylamine, and hexamethylene diamine also are not part of
the final resin composition. Thus, the Examiner correctly excluded the mass
of these components from the calculation.4
Second, Appellant argues that the Examiner erred by finding that
Yamaoka describes the final coating composition as comprising between
11.12 and 22.24 mass% polyol. See Appeal Br. 10–11. According to
Appellant, if the Examiner’s calculation of the mass% polyol present in the
polyurethane resin is 22.24 mass%, the coating composition is between 7.39
and 11.12 mass% polyol. Id. at 11. This difference is important because the
range calculated by the Examiner overlaps with the claimed range, rendering
it prima facie obvious, while the range calculated by Appellant does not
overlap with the claimed range.

4 Although neither Yamaoka nor the Examiner so state, the vacuum
distillation process also will remove at least a portion of any excess triethyl
amine.
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The source of the dispute over the proper calculation arises from
differing interpretations of Yamaoka’s paragraph 81. The language in
question reads:
As already explained, the precoating-use composition (β)
which is used for formation of the coating film (α) of the
present invention includes the resin (A1) in an amount with
respect to the nonvolatiles of 50 to 100 mass%. The
nonvolatiles which are contained in the precoating-use
composition (β) other than the resin (Al) include, as explained
in detail later, a silane coupling agent (s), a curing agent (C),
cross-linking agent, polyphenol compound, phosphoric acid and
hexafluorometal acid, phosphate compound, metal oxide
particles, and other various rust preventive agents etc. The
contents of these compounds in the coating film (α) after
formation, as explained later, are in preferable ranges with
respect to the total mass of the resins (Al) and (A2Si), so when
preparing the precoating-use composition (β) which contains
these compounds, the amounts are adjusted so that these fall in
the preferred ranges of content in the coating film (α) after
formation.
Yamaoka ¶ 81 (emphasis added); see also ¶ 94.
The Examiner interprets the phrase “in an amount with respect to the
nonvolatiles of 50 to 100 mass %” as meaning that the coating composition
contains between 0 and 50 mass% of the specified nonvolatiles. Final Act. 3.
Appellant, on the other hand, interprets the phrase as meaning that the
coating composition has nonvolatiles present in an amount between 100 and
200 mass% of the polyurethane resin, meaning that the polyurethane resin is
between 33 and 50 mass% of the coating composition. Appeal Br. 11.
We agree with Appellant’s interpretation. The phrase “in an amount
with respect to the nonvolatiles” requires comparison of the amount of
polyurethane resin with the amount of nonvolatiles present in the coating
composition. Moreover, further review of Yamaoka reveals that the
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minimum preferred amounts of the curing agent, polyphenol compound,
phosphoric acid and hexafluorometal acid, phosphate compound, and metal
oxide particles are all non-zero. See Yamaoka ¶¶ 112, 132, 135, 138, 141.
This is consistent with Appellant’s interpretation and inconsistent with the
Examiner’s interpretation.
Because we have determined that the Examiner’s interpretation of
Yamaoka’s paragraph 81 is erroneous, we determine that the Examiner erred
in finding that Yamaoka establishes a prima facie case of obviousness for
claim 1.
In view of the foregoing, we need not consider whether the Examiner
has provided a sufficient basis with a rational underpinning for the gram-for-
gram substitution of a polycarbonate polyol for the polyester polyol in
Yamaoka’s Production Example 1.
For the reasons set forth above, we reverse the rejection of claim 1 as
obvious over Yamaoka.
B. Rejection of claim 1 over the combination of Schmitt and
Yamaoka
For the reasons set forth below, Appellant has not persuaded us that
the Examiner erred by rejecting claim 1 as obvious over the combination of
Schmitt and Yamaoka.
1. Appellant has not demonstrated that the Examiner erred
in calculating the polycarbonate content of the total resin
mass
The Examiner found that Schmitt describes a polycarbonate polyol-
based polyurethane resin-containing coating composition having a
polycarbonate polyol content (26.33 mass%) falling within the claimed
range. Final Act. 4 (discussing Schmitt Ex. I, Ex. III).
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Appellant alleges that the Examiner’s calculations are erroneous.
Appeal Br. 16–19. Appellant calculates that the polycarbonate is about
8.3 mass% of the total resin mass. Id. at 18.
Appellant’s argument is not persuasive. As the Examiner points out,
Answer 7, Appellant’s calculations include the amount of methylamine
ketone and diacetone alcohol present in the formulation of the polyurethane
resin and the coating composition, respectively. These compounds are
present as solvents and do not form part of the total resin mass. Thus,
Appellant has not persuaded us that the Examiner erred by excluding the
mass of these compounds from the calculations.
2. Appellant has failed to present evidence of unexpected
results commensurate in scope with claim 1
Appellant argues that the invention of claim 1 achieves unexpected
results over the combination of Schmitt and Yamaoka. Appeal Br. 19–21.
Specifically, Appellant argues that the claimed mass ratio of the
polycarbonate unit to total resin mass achieves an unexpected improvement
of adhesion of a molded thermoplastic resin article to the coating of the
shaped metal material. Id. at 19–20 (citing Spec. ¶¶ 25, 76,5 Table 4).
The existence of unexpected results is a question of fact. In re Mayne,
104 F.3d 1339, 1343 (Fed. Cir. 1997). A showing of unexpected results must
be based upon evidence rather than argument or speculation. Id. at 1343‒44.
To establish the existence of unexpected results, Appellant must establish
(1) that there actually is a difference between the results obtained through
the claimed invention and those of the closest prior art and (2) that the

5 We cite the paragraph numbers of the as-filed Specification rather than the
PG Publication cited in the Appeal Brief.
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difference would have been unexpected by a person having ordinary skill in
the art. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). “[T]he
applicant’s showing of unexpected results must be commensurate in scope
with the claimed range.” In re Peterson, 315 F.3d 1325, 1330–31 (Fed. Cir.
2003).
In this case, Appellant’s attempt to show the existence of unexpected
results fails because Appellant has not established that the results achieved
through use of the claimed coating compositions would not have been
expected by a person having ordinary skill in the art at the time of the
invention. Although the data presented in Table 4 suggests that a coated
shaped metal material in which the coating meets the limitations recited in
claim 1 achieves superior results to the comparative examples, superiority
alone is not sufficient to show that the result is unexpected. Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (“[A]ny superior
property must be unexpected to be considered as evidence of non-
obviousness.” (emphasis in original)). Appellant has not pointed us to any
evidence in the record demonstrating that the reported results would have
been unexpected.
For the reasons set forth above, we affirm the rejection of claim 1 as
unpatentable over the combination of Schmitt and Yamaoka.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 103(a) Yamaoka 1
1 103(a) Schmitt, Yamaoka 1
Overall Outcome 1
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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