Ex Parte Veronesi et alDownload PDFPatent Trials and Appeals BoardOct 20, 201412090260 - (D) (P.T.A.B. Oct. 20, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM A. VERONESI, MARK R. JAWOROWSKI, and HUGH J. O’DONNELL ____________________ Appeal 2012-008482 Application 12/090,260 Technology Center 3600 ____________________ Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and JAMES P. CALVE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 1, 4–12, and 15–31. App. Br. 2. Claims 2, 3, 13, and 14 are cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2012-008482 Application 12/090,260 2 CLAIMED SUBJECT MATTER Claims 1, 12, and 27 are independent. Claim 1 is reproduced below. 1. A load bearing member for use in an elevator system comprising: at least one elongated steel tension member; and a conversion coating on the elongated steel tension member, the conversion coating including at least one of chromium phosphate, black iron oxide, or nickel phosphate. REJECTIONS Claims 1, 4–10, 12, 15, 16, 18–21, 24, and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bourgois (US 2003/0150167 A1; pub. Aug. 14, 2003), Yamaguchi (US 6,500,558 B2; iss. Dec. 31, 2002), and Cable (US 4,644,029; iss. Feb. 17, 1987). Claims 11, 17, 27, and 31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bourgois, Yamaguchi, Cable, and Zelley (US 3,595,985; iss. July 27, 1971). Claims 22, 25, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bourgois, Yamaguchi, and Cable, and further in view of Gamblin (US 4,554,219; iss. Nov. 19, 1985) and Cuyler (US 6,835,460 B2; iss. Dec. 28, 2004). Claims 23, 26, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bourgois, Yamaguchi, Cable, and further in view of Ravenscroft (US 6,695,931 B1; iss. Feb. 24, 2004). Appeal 2012-008482 Application 12/090,260 3 ANALYSIS Claims 1, 4–10, 12, 15, 16, 18–21, 24, and 28 unpatentable over Bourgois, Yamaguchi, and Cable The Examiner found that Bourgois discloses a load bearing member, as recited in claim 1, including at least one elongated steel tension member and a conversion coating of zinc or zinc alloy, but does not disclose one of the claimed conversion coatings of chromium phosphate, black iron oxide, or nickel phosphate. Ans. 4–5, 7. The Examiner found that Yamaguchi teaches a load bearing member with a conversion coating of chromium phosphate, iron oxide, or nickel phosphate to increase adhesion of an organic resin film to aluminum material. Id. at 5. The Examiner determined that it would have been obvious to modify Bourgois with Yamaguchi’s teachings to use a conversion coating to increase the adhesion of the organic resin of Bourgois. The Examiner found that Cable teaches inventive chrome coatings that can be brushed onto metals such as aluminum or steel. Id. at 5–6. The Examiner also found that Cable teaches the use of conversion coatings such as those disclosed in Yamaguchi for use with metals including aluminum and steel. Id. at 12–13.1 Appellants argue that Cable is directed to a paint-on compound that is brushed onto a metal surface and allowed to dry before the surface is painted whereas Yamaguchi uses an electrolyzing coating treatment that applies an electric current to a liquid solution to form a coating. App. Br. 3. Appellants 1 Claim 12 recites a method of making a load bearing member comprising “coating an elongated steel tension member with a conversion coating, the conversion coating including at least one of chromium phosphate, black iron oxide, or nickel phosphate.” The Examiner determined that it would have been obvious to perform the method of claim 12 when producing the device of Bourgois, Yamaguchi, and Cable in the usual, expected fashion. Ans. 7. Appeal 2012-008482 Application 12/090,260 4 also argue that because the electrolyzing technique of Yamaguchi is different from the brushing technique of Cable, a skilled artisan would see Cable as being incompatible with Yamaguchi. Id. Appellants also assert that Cable distinguishes other coatings and techniques so a skilled artisan would not view these other coatings and techniques as interchangeable. Reply Br. 2. The Examiner has not established, by evidence or technical reasoning, a sufficient factual basis to reasonably support the conclusion that a skilled artisan would have had a reason to use the chromate-phosphate coatings of Yamaguchi on steel tension members of Bourgois based on teachings of Cable of brushable hexavalent chromium and trivalent chromium conversion coatings. Cable, col. 2, ll. 5–7. Cable recognizes that it is well known to form conversion coatings by spraying or dipping with phosphate solutions or by immersion in a treatment solution. Id. at col. 1, ll. 5–18. However, Cable teaches coatings that are brushed onto convex external surfaces of metals such as aluminum and steel that cannot be coated by conventional coating techniques. Id. at col. 1, l. 15 to col. 2, l. 2; col. 3, ll. 47–55. The Examiner has not explained why a skilled artisan would have had a reason to apply a chromate-phosphate or chromium conversion coating of Yamaguchi, which coatings are applied by electrolyzation to aluminum materials under selected conditions, to steel tension members of Bourgois based on Cable’s teaching of brushing hexavalent chromium and trivalent chromium compositions onto metals such as aluminum and steel, or an expectation of success in doing so. The Examiner’s reasoning lacks rational underpinning. We do not sustain the rejection of claims 1, 4–10, 12, 15, 16, 18–21, and 24.2 2 Because claim 28 depends from claim 27, we address the rejection of claim 27 as part of our review of the rejection of claims 11, 17, 27, and 31 below. Appeal 2012-008482 Application 12/090,260 5 Claims 11, 17, 27, and 31 unpatentable over Bourgois, Yamaguchi, Cable, and Zelley The Examiner found that Bourgois teaches a zinc conversion coating, but Bourgois, Yamaguchi, and Cable are silent regarding a zinc coating that is placed below their conversion coating, as recited in claims 11, 27, and 31. Ans. 9. The Examiner found that Zelley teaches the application of a zinc coating onto a tension member and subsequent treatment of the zinc coating with a conversion coating. Id. The Examiner determined that it would have been obvious to modify Bourgois, Yamaguchi, and Cable with teachings of Zelley to provide ancillary surface protection to a tension member for enhanced surface protection and service life. Id. Zelley does not overcome the deficiencies of Bourgois, Yamaguchi, and Cable discussed supra. See App. Br. 4. We do not sustain the rejection of claims 11, 17, 27, and 31. We also do not sustain the rejection of claim 28, which depends from claim 27 and was rejected as unpatentable over Bourgois, Yamaguchi, and Cable for the reasons discussed supra. Claims 22, 25, and 30 unpatentable over Bourgois, Yamaguchi, and Cable, further in view of Gamblin and Cuyler The Examiner relied on Gamblin and Cuyler to disclose conversion coatings of nickel phosphate, as recited in claims 22, 25, and 30, and not to overcome any deficiencies of Bourgois, Yamaguchi, and Cable as to claims 1, 12, and 27 from which claims 22, 25, and 30 depend, respectively. Ans. 9–10; see App. Br. 5. Accordingly, we do not sustain the rejection of claims 22, 25, and 30. Appeal 2012-008482 Application 12/090,260 6 Claims 23, 26, and 29 unpatentable over Bourgois, Yamaguchi, Cable, and Ravenscroft The Examiner relied on Ravenscroft to teach conversion coatings that include black iron oxide (magnetite), as recited in claims 23, 26, and 29, and not to overcome deficiencies of Bourgois, Yamaguchi, or Cable as to claims 1, 12, and 27, from which claims 23, 26, and 29 depend. Ans. 11; see App. Br. 6. Accordingly, we do not sustain the rejection of claims 23, 26, and 29. DECISION We REVERSE the rejections of claims 1, 4–12, and 15–31. REVERSED hh Copy with citationCopy as parenthetical citation