Ex Parte Silvernail et alDownload PDFPatent Trial and Appeal BoardMay 14, 201814184998 (P.T.A.B. May. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/184,998 24959 7590 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 02/20/2014 05/14/2018 FIRST NAMED INVENTOR Nathan J. Silvernail 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. 13009297Al 2124 EXAMINER KATZ, VERA ART UNIT PAPER NUMBER 1784 MAILDATE DELIVERY MODE 05/14/2018 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 NATHAN J. SILVERNAIL, ADAM KOLCUN, BRIAN OKERBERG, THOR G. LINGENFELTER, and ROYE. DEAN Appeal2017-008685 Application 14/184,998 Technology Center 1700 Before LINDA M. GAUDETTE, RAEL YNN P. GUEST, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 2-5, 13, and 14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We cite the Specification ("Spec.") filed February 20, 2014; Final Office Action ("Final Act.") dated February 1, 2016; Appellant's Appeal Brief ("Br.") dated June 23, 2016; and Examiner's Answer ("Ans.") dated October 12, 2016. 2 Appellant is PPG Industries Ohio, Inc., which also is identified as the real party in interest. Br. 1. Appeal2017-008685 Application 14/184,998 BACKGROUND The invention relates to pretreatment of magnesium substrates prior to application of a coating. Spec. i-f 1. Claim 13-the sole independent claim-reads: 13. A consumer electronic device having a magnesium substrate that has been treated, prior to the application of a surface coating, with a pretreatment composition comprising: (a) a compound containing at least four phosphorus acid groups, and (b) a soluble alkaline earth salt. Br. 5 (Claims Appendix). REJECTION Claims 2-5, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kuniji3 and Koyama. 4 OPINION Appellant argues the claims as a group. See Br. 2--4. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 13 as representative and decide the appeal based on the representative claim alone. The Examiner finds, and Appellant does not dispute, that Kuniji discloses a magnesium alloy substrate that, prior to surface coating, is pretreated with a composition that satisfies (a) and (b) of claim 13. Compare Final Act. 3, with Br. 2-3. The Examiner also finds that Koyama teaches that magnesium alloys are useful in electronic devices. Final Act. 3. In light of these findings, the Examiner determines that it would have been 3 GB 2 037 328 A, published July 9, 1980 ("Kuniji"). 4 JP 2012-224929 A, published November 15, 2012 ("Koyama"), as translated. 2 Appeal2017-008685 Application 14/184,998 obvious to one of ordinary skill in the art to provide a consumer electronic device comprising a magnesium alloy substrate that has been pretreated as claimed. Id. Appellant argues that the Examiner improperly disregards the recited phrase, "consumer electronic device," as an intended use. Br. 2 (contending, "the Examiner has given no weight to this limitation"); id. at 3 ("[T]he term 'consumer electronic device' is a claim limitation that must be considered in distinguishing the invention over the prior art."). However, Appellant does not identify any particular structure attributable to the recited phrase that distinguishes the magnesium substrate over that taught by Kuniji. Moreover, we are not persuaded that the Examiner fails to give due weight to the recitation. Rather, the Examiner relies on Koyama solely to support the finding that magnesium alloy substrates were known to be used in electronic devices. Final Act. 3. In light of Koyama's teaching, the Examiner reasons that it would have been obvious to one of ordinary skill in the art to "provide a consumer electronic device" having Kuniji's treated magnesium alloy substrate. Appellant's contention that the Examiner disregarded the consumer electronic device recitation is not consistent with the Examiner's application of Koyama. Appellant further argues that Koyama's "electronic apparatus" is distinguishable from the claimed "consumer electronic device." Br. 3. Particularly, Appellant contends that "the term 'consumer electronic device' is well understood to those skilled in the art as to include cameras, PDAs, calculators, etc." Br. 3 (citing a Webopedia entry, a copy of which is provided in Appellant's Evidence Appendix to the Brief). However, Appellant presents no evidence or argument as to how one of ordinary skill 3 Appeal2017-008685 Application 14/184,998 would have viewed Koyama's electronic apparatus in a manner that would not have included consumer electronic devices. Nor does Appellant persuasively dispute the Examiner's finding that Koyama's teaching of providing magnesium components in an electronic apparatus would have provided a reason to use magnesium components in a consumer electronic device. For the foregoing reasons, we are not persuaded of reversible error. The rejection is sustained. DECISION The Examiner's rejection of claims 2-5, 13, and 14 is affirmed. 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 4 Copy with citationCopy as parenthetical citation