Ex Parte Chapaneri et alDownload PDFPatent Trial and Appeal BoardMar 11, 201613593690 (P.T.A.B. Mar. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/593,690 08/24/2012 Roshan V. CHAPANERI 34238 7590 03/15/2016 ARTHUR G. SCHAIER CARMODY TORRANCE SANDAK & HENNESSEY LLP 195 CHURCH STREET P.O. BOX 1950 NEW HAVEN, CT 06509-1950 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2156-675B 4361 EXAMINER WONG, EDNA ART UNIT PAPER NUMBER 1759 NOTIFICATION DATE DELIVERY MODE 03/15/2016 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): patents@carmodylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROSHAN V. CHAP ANERI, RICHARD G. TOOTH, RODERICK D. HERDMAN, and STACEY L. HANDY Appeal2014-000519 Application 13/593,690 Technology Center 1700 Before MARK NAGUMO, N. WHITNEY WILSON, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's June 10, 2013 decision finally rejecting claims 15-25 ("Final Act"). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). An oral hearingwas held on February 29, 2016. We reverse. 1 Appellants identify the Real Party in Interest as MacDermid Acumen, Inc. (Appeal Br. 2). Appeal2014-000519 Application 13/593,690 CLAIMED SUBJECT MATTER Appellants' invention is directed to an aqueous acidic trivalent chromium electrolyte for electrodepositing chromium onto a substrate (Abstract). Independent claim 15 is representative of the claims on appeal and is reproduced below from the Claims Appendix of the Appeal Brief (key language in italics): 15. An aqueous acidic trivalent chromium electrolyte for electrodepositing chromium onto a substrate, the chromium electrolyte comprising trivalent chromium ions and a complexing agent for maintaining the trivalent chromium ions in solution, wherein the aqueous acidic trivalent chromium electrolyte further comprises a dispersion of colloidal silica. REJECTIONS I. Claims 15, 18-20, 22, 24, and 25 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Inoue '432.2 In particular, it appears as though claims 15, 18-20, 22, and 24 are rejected as anticipated by Inoue '432, while claim 25 is rejected as being unpatentable over Inoue '432 (Ans. 4). II. Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inoue in view of Wada. 3 III. Claims 21and23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Inoue '432 in view of Inoue '185.4 DISCUSSION 2 Inoue et al., EP 1 484 432 Al, published December 8, 2004. 3 Wada et al., U.S. Patent Pub. 2003/0190492 Al, published October 9, 2003. 4 Inoue, U.S. Patent Pub. 2009/0020185 Al, published January 22, 2009. 2 Appeal2014-000519 Application 13/593,690 Anticipation/Obviousness over Inoue '432. "A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In this instance, Appellants contend, inter alia, that Inoue '432 does not disclose an electrolyte "for electrodepositing chromium onto a substrate" (Appeal Br. 4). In particular, Appellants argue that Inoue's composition deposits chromate coatings (i.e. chromium oxide coatings), rather than chromium (id., Reply Br. 3, citing Inoue '432, iJ 39). The Examiner takes the position that the claim phrase "for electrodepositing chromium onto a substrate" is merely a statement of intended use of the composition, and is not pertinent to determining the patentability of the claim (Ans. 10, citing MPEP 21 l l.02(II)). Whether a preamble constitutes a limitation to a claim is a matter to be determined by the facts of each case in view of the claimed invention as a whole. See In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). While the preamble of a claim does not limit the scope of the claim when it merely states the intended use of the invention (In re Pearson, 494 F.2d 1399, 1403 (CCPA 1974)), terms in a preamble are construed as limitations when they give life and meaning to the invention claimed. See Gerber Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 688 (Fed. Cir. 1990); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896 (Fed. Cir. 1984). "Although no 'litmus test' exists as to what effect should be accorded to words contained in a preamble, review of a patent [application] in its entirety should be made to determine whether the inventors intended such language 3 Appeal2014-000519 Application 13/593,690 to represent an additional. .. limitation or mere introductory language." In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1994) (citing Corning Glass Works v. Suitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)). In this instance, the Specification explicitly states that the claimed composition is for depositing chromium metal onto a substrate, and that ability of the claimed composition to deposit chromium metal is a key feature of the invention (Spec. 1:8-22; 3:1-11; 4:4-17, 27-30; 8:14-15). Moreover, the Examiner has not directed our attention to any disclosure in the Specification that warrants interpreting the term "chromium" in the claims as referring to chromium compounds. Thus, we determine that the words "for electrodepositing chromium onto a substrate" as used in the preamble to claim 15 limit the claimed composition to those suitable for the stated function of depositing chromium metal. Paulsen, 30 F.3d at 1479. Inoue '432 discloses that its composition is suitable for depositing chromate salts (,-i 39), not chromium metal. The Examiner has not found otherwise. Accordingly, we agree with Appellants that the Examiner reversibly erred in finding that Inoue '432 anticipates claim 15. This conclusion also compels reversal of the anticipation rejections and obviousness rejections of the dependent claims, as none of the Examiner's additional findings cure this deficiency in Inoue '432. CONCLUSION We REVERSE the rejections of claims 15-25. REVERSED 4 Copy with citationCopy as parenthetical citation