HENKEL AG & CO. KGAA

Patent Trials and Appeals Board

Jun 17, 2020

13705576 - (D) (P.T.A.B. Jun. 17, 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.
13/705,576 12/05/2012 Kirk KRAMER H 50271 PCT/US 1446
31217 7590 06/17/2020
Henkel Corporation
One Henkel Way
Rocky Hill, CT 06067
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
rhpatentmail@henkel.com
trish.russo@henkel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIRK KRAMER, LISA K. MILLER, SHAWN E. DOLAN, and
PATRICK A. SCALERA
Appeal 2019-003663
Application 13/705,576
Technology Center 1700
Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1

1 This Decision includes citations to the following documents: Specification
filed December 5, 2012 (“Spec.”); Final Office Action mailed June 6, 2018
(“Final Act.”); Appeal Brief filed October 29, 2018 (“Appeal Br.”);
Examiner’s Answer mailed February 15, 2019 (“Ans.”); and Reply Brief
filed April 5, 2019 (“Reply Br.”).
Appeal 2019-003663
Application 13/705,576

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 4, 6–11, 13–15, and 21–30. See Appeal
Br. 8–23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a sol-gel surface coating that
imparts corrosion resistance. Spec. ¶ 2. Claim 7, reproduced below, is
illustrative of the claimed subject matter (Appeal Br., Claims Appendix 1):
7. A method for improving corrosion resistance of a metallic
substrate, the method comprising steps of:
providing an aqueous organo sol-gel composition consisting
essentially of components of:
acid in an amount such that the pH of the aqueous organo sol-
gel composition is from 2.5 to 5;
metal acetate selected from the group consisting of zirconium
acetate, magnesium acetate, and a combination thereof;
organosilane; and
water;
with the proviso that all zirconium and magnesium present
in the aqueous organo sol-gel composition is from said metal
acetate;
depositing the composition on an aluminum or aluminum
alloy substrate; and
allowing the composition to dry at temperatures less than
100° Celsius to form a sol-gel coating on the substrate,

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Henkel AG & Co.
KGAA. Appeal Br. 1.
Appeal 2019-003663
Application 13/705,576

3
wherein the coated metallic substrate shows no corrosion
after at least 500 hours salt spray testing according to ASTM
B117.

Claims 15 and 25 are also independent and recite methods for
improving corrosions resistance of a metallic substrate. Id. at 2–4.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kissel US 5,028,489 July 2, 1991
Matsumura et al.
hereinafter
“Matsumura”
US 6,197,101 B1 March 6, 2001
Chung et al.
hereinafter “Chung” US 2003/0024432 A1 February 6, 2003
Le Blanc et al.
hereinafter “Le
Blanc”
US 2009/0148711 A1 June 11, 2009
Hazel et al.
hereinafter “Hazel” US 2009/0239061 A1 September 24, 2009
Young
Overview of Sol-Gel Science
and Technology, Army Research
Laboratory ARL-TR-2650
January 2002

REJECTIONS
1. The Examiner rejected claims 4, 7–11, 13, 14, 21–27, and 29 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Le Blanc, Kissel,
and Young. Final Act. 2–6.
2. The Examiner rejected claim 15 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Le Blanc, Kissel, Young, and Chung. Id. at 6.
Appeal 2019-003663
Application 13/705,576

4
3. The Examiner rejected claim 6 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Le Blanc, Kissel, Young, Chung, and Hazel.
Id. at 6–7.
4. The Examiner rejected claim 28 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Le Blanc, Kissel, Young, and Hazel. Id. at
7–8.
5. The Examiner rejected claim 30 under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Le Blanc, Kissel, Young, and Matsumura. Id.
at 8.
OPINION
REJECTION 1
Appellant presents separate argument with respect to claims 7, 8–11,
and 22–24. See Appeal Br. 6, 16–18. We select claims 7, 8, 15, and 22–24
as representative for disposition of this rejection, with the patentability of the
other claims standing or falling with claims 7, 8, 15, and 22–24. 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 7
The Examiner’s Rejection
As to claim 7, the Examiner found Le Blanc discloses a method for
improving corrosion resistance of a metallic substrate by providing an
aqueous organo sol-gel composition including an acid, organosilane, water,
a nonaqueous solvent, and which can comprise a metal acetate. Final Act. 2,
citing Le Blanc, ¶¶ 3, 4, 43, 60, and 227. The Examiner determined it would
have been obvious to have included the metal acetate of Le Blanc in the
coating composition because Le Blanc teaches metal acetates are suitable for
use in the composition. Id. The Examiner found Le Blanc does not
Appeal 2019-003663
Application 13/705,576

5
explicitly disclose magnesium or zirconium acetate as recited in claim 7, but
found Kissel discloses magnesium acetate as a suitable salt for providing
corrosion protection properties in a sol gel. Id. at 3–4, citing Kissel, col. 5,
ll. 45–62. The Examiner determined it would have been obvious to modify
the metal acetate salt of Le Blanc to further include a magnesium acetate as
suggested by Kissel in order to provide a salt suitable for the enhancement of
the corrosion protection of the coating composition. Id. at 4.
Appellant’s Contentions
Appellant argues for claim 7, that the transitional phrase “consisting
essentially of” does not allow for the addition of the “organometallic”
compounds such as those of zirconium, aluminum, and titanium required by
Le Blanc. 3 Appeal Br. 6–7. Appellant contends also that claim 7 requires
all of the zirconium and magnesium present in the sol-gels be derived from
zirconium acetate and magnesium acetate and therefore, the
“organometallic” zirconium compounds required by Le Blanc are excluded
by the claim. Id. at 7, 12.
Appellant contends Le Blanc and Kissel cannot be combined because
Kissel is non-analogous art. Id. at 9–10. Appellant argues also Le Blanc
discloses films with sufficient corrosion resistance without the incorporation
of anti-corrosion agents, such that Le Blanc teaches away from the
Examiner’s combination. Id. at 11. Appellant contends there is insufficient
reasoning to support the combination of Le Blanc and Kissel, because the

3 Le Blanc appears to be using the term “organometallic” in a non-traditional
manner (see Appeal Br. 5, 13 (FN6), 23–24) and expressly discloses
formulas where there is no metal carbon bond. Le Blanc ¶¶132–136, 150–
152 (see Formula I (¶ 132) where x=4 (¶ 133)).
Appeal 2019-003663
Application 13/705,576

6
composition of Kissel is different than the compositions of Le Blanc and the
claims. Id. at 10–16. Appellant contends that none of the references teaches
or suggests the claimed pH range. Id. at 14. Appellant argues the claimed
invention presents surprising and unexpected results and satisfies a long felt
need in the industry. Id. at 3–4; Reply Br. 3–4.
Discussion
“Consisting essentially of”
At the outset, we are not persuaded by Appellant’s argument that the
transitional phrase “consisting essentially of” in claim 7, by itself excludes
the hydrolyzable “organometallic” compounds of zirconium, aluminum, or
titanium disclosed in Le Blanc. Although Appellant asserts such compounds
disclosed in Le Blanc materially affect the basic and novel characteristics of
the invention, we have not been directed to sufficient evidence to support
Appellant’s contentions.
In this regard, the Specification uses the transitional phrases
“comprising,” “consisting essentially of,” and “consisting of” in sequence
when setting forth the various embodiments of the invention (see, e.g., Spec.
¶¶ 9–16, 31–39) without any explanation as to what potential ingredients
may fall outside the scope of the “middle ground” of “consisting essentially
of” between open and closed transitional phrases “comprising” and
“consisting of.” The Specification clearly allows for “other conventional
sol-gel components” including “corrosion inhibitors” in the compositions
according to the invention. Id. at ¶ 28. Accordingly, we are not persuaded
that the “organometallic” compounds disclosed in Le Blanc would be
excluded by the term “consisting essentially of.”
Appeal 2019-003663
Application 13/705,576

7
Thus, regardless of whether it was Appellant’s intention to exclude
the hydrolyzable “organometallic” compounds of zirconium, aluminum, or
titanium disclosed in Le Blanc (Reply Br. 2–3), Appellant’s position is not
sufficiently supported. In view of the above, Appellant’s position that the
Examiner is “clearly incorrect” to have treated the transitional phrase
“consisting essentially of” as “comprising” for purposes of examination
(Reply Br. 2–3) lacks merit. See MPEP § 2111.03 (II), citing In re
Herz, 537 F.2d 549, 551-52, (CCPA 1976).
Obviousness
We are not persuaded by Appellant’s argument that Kissel is non-
analogous art. Appellant argues that the field of endeavor of Kissel is
improving corrosion protection on metal surfaces employing polymer
coatings (paints) whereas Appellant’s field of endeavor is a method of
improving corrosion protection on aluminum substrates. Appeal Br. 10.
Determining whether a reference is non-analogous art is a two-fold
inquiry. First, we must decide if the reference is within the field of the
inventor’s endeavor; if it is not, we proceed to determine whether the
reference is reasonably pertinent to the particular problem with which the
inventor was involved. See In re GPAC Inc., 57 F.3d 1573, 1578 (Fed. Cir.
1995); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
We agree with the Examiner that Appellant’s arguments are
insufficient to establish that Appellant’s invention and Kissel, which both
relate to providing corrosion resistance for metallic surfaces, are in different
fields of endeavor. Ans. 7. Indeed, Appellant states, with respect to Le
Blanc, “[l]ike the present application, Le Blanc is concerned with providing
corrosion resistant coatings on metals, including aluminum.” Appeal Br. 5.
Appeal 2019-003663
Application 13/705,576

8
Similarly, Kissel discloses sol or gel compositions for enhancing corrosion-
protection of surfaces including aluminum. Kissel, col. 1, ll. 15–37.
Accordingly, the presence of polymer in Kissel’s disclosure (col. 1, ll. 60–
68) does not mean Kissel is in a different field of endeavor.
In this regard, Le Blanc provides evidence that one of ordinary skill in
the art would have recognized that sols used for corrosion protection of
metal surfaces may be employed as primers, paints, and sol-gel coatings that
may or may not contain polymers. Le Blanc ¶¶ 60, 203–207, 258. Thus, we
are of the view that Kissel is in the same field of endeavor as Appellant’s
invention.
We are not persuaded by Appellant’s argument that because Le
Blanc’s film achieves corrosion protection “in spite of the fact that no anti-
corrosion agents are incorporated into the film according to the invention,”
Le Blanc teaches away from incorporating Kissel’s magnesium acetate into
the films as in the rejection. Appeal Br. 11, Le Blanc ¶ 62 (emphasis
omitted). Although Appellant contends none of the salts disclosed in Le
Blanc are described as having anti-corrosion effect (Appeal Br. 11, citing Le
Blanc ¶¶ 213, 214, 227), the Kramer Declaration expressly states the
lanthanide series metals disclosed in Le Blanc are known corrosion
inhibitors. Kramer Decl. ¶ 8, see Le Blanc ¶¶ 213, 214.
Thus, rather than teaching away from additional corrosion inhibitors,
Le Blanc expressly contemplates the use of additional corrosion inhibitors.
This is consistent with the Examiner’s position that Le Blanc does not
criticize, discredit, or otherwise discourage the use of corrosion inhibitors
such as the salts described in Kissel. Ans. 9.
Appeal 2019-003663
Application 13/705,576

9
In addition, we disagree with Appellant’s assessment that in
combining Le Blanc and Kissel, the Examiner did not provide sufficient
support for selecting Kissel’s magnesium acetate for use as the metal salt in
Le Blanc. Appeal Br. 13–14. Le Blanc discloses one or more metal salts
may be added, and although Le Blanc does not expressly disclose
magnesium acetate, the metal salts exemplified therein are non-limiting. Le
Blanc ¶ 227. Kissel discloses the addition of metal salt for enhancing
corrosion protection, and expresses a preference for magnesium cations and
acetate anions. Kissel, col. 5, l. 45 – col. 6, l. 11. As discussed above,
because Le Blanc discloses also the addition of polymers to the sols, we are
not persuaded that Kissel’s compositions are totally different than Le
Blanc’s compositions as Appellant asserts (Appeal Br. 11).
Moreover, Appellant’s attorney argument that “magnesium acetate is
more widely known to function as a corrosive agent, not a corrosion
preventative agent” (Appeal Br. 16), is not only unsupported by any
evidence, but is in direct contradiction to the express teachings of Kissel.
See Ans. 14. Arguments of counsel cannot take the place of factually
supported objective evidence. In re Huang, 100 F.3d 135, 139–40 (Fed. Cir.
1996).
Thus, we are not persuaded by Appellant’s arguments regarding
Kissel and Le Blanc and the particular manner by which Appellant argues
one of ordinary skill in the art would have to combine the teachings of the
two references.
Regarding the presence of “organometallic” compounds of zirconium,
aluminum, or titanium in Le Blanc, as discussed above, the transitional
phrase “consisting essentially of” in claim 7, does not, by itself exclude such
Appeal 2019-003663
Application 13/705,576

10
compounds as argued by Appellant. However, claim 7 additionally recites a
proviso that “all zirconium and magnesium present in the aqueous organo
sol-gel composition is from said metal acetate.”
In arguing the proviso of “all zirconium and magnesium present in the
aqueous organo sol-gel composition is from said metal acetate” excludes the
hydrolyzable “organometallic” compounds of zirconium, aluminum, or
titanium disclosed in Le Blanc (Appeal Br. 12), Appellant fails to take into
account Le Blanc’s full disclosure, which does not require the presence of
zirconium, but rather only requires one of zirconium, titanium, or aluminum
“organometallic” compounds. Le Blanc, ¶ 41. Thus, as the Examiner points
out (Ans. 10), Le Blanc requires only one of such compounds to be present,
such that Le Blanc discloses compositions including “organometallic”
compounds of aluminum or titanium, which satisfies the proviso because no
“organometallic” zirconium compounds would be present that would
provide a source of zirconium to the sol-gel composition.
Therefore, Appellant’s arguments regarding the difference between
the claimed acetates and organometallic compounds in order to support the
position that the Examiner has formulated the rejections based on improper
hindsight reasoning (Appeal Br. 12–14), are not persuasive.
Claims 7, 23, 24
We are not persuaded by Appellant’s arguments that none of the
references discloses or suggests the pH range recited in claims 7, 23, and 24,
and, in particular, Young’s pH range of 0–14 encompasses the entire pH
range such that there is no suggestion to employ the range recited in claim 7
of 2.5–5, claim 23 of 3–4, and claim 24 of 3.2–3.5 to favor either hydrolysis
or condensation. Appeal Br. 14, 17–18. Appellant does not address the
Appeal 2019-003663
Application 13/705,576

11
clear effect of pH on hydrolysis and condensation rates as shown in Young’s
Figure 6. Young 7. Appellant fails to explain why such a teaching is
insufficient to support the Examiner’s position that pH is a result effective
variable that may be adjusted to optimize the desired hydrolysis and
condensation rates of the sol-gel. Ans. 12. Moreover, the Specification does
not appear to assign any particular criticality to the pH ranges recited in the
claims. Spec ¶ 22.
Regarding Appellant’s arguments with respect to long felt need and
unexpected results, we agree with the Examiner that Appellant has not
provided any objective evidence to support such contentions. Ans. 3–4.
Establishing long-felt need requires objective evidence showing existence of
a persistent problem recognized by those of ordinary skill in the art for
which a solution was not known. In re Gershon, 372 F.2d 535, 539 (CCPA
1967). Our reviewing court has emphasized repeatedly that “[i]t is well
settled that unexpected results must be established by factual evidence.
Mere argument or conclusory statements in the specification does not
suffice.” In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984), quoted with
approval in In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
Further, Appellant argues that the results are surprising and
unexpected based in part on the coating produced through the use of the
claimed composition being “relatively thin” compared to the coatings in Le
Blanc. Reply Br. 3–4. Yet, the thicknesses disclosed in Le Blanc (500 nm
to 20 µm) and those disclosed in the Specification (0.6–2.5 µm) overlap. Le
Blanc ¶ 63; Spec. ¶ 17. Thus, we are not persuaded by Appellant’s
contentions.
Appeal 2019-003663
Application 13/705,576

12
Claims 8–11
Claim 8 depends from claim 7 and recites “the substrate comprises
aluminum and has a metallic oxide coating thereon, the sol-gel coating being
disposed on the metallic oxide coating to form a seal over the metallic oxide
coating.”
The Examiner found Le Blanc teaches applying two layers of its sol-
gel coating such that the first coating or “under-layer” would meet the
limitation of the recited metallic oxide coating. Final Act. 4, citing Le
Blanc, claim 64.
Appellant contends Le Blanc does not disclose depositing a metal
oxide coating, but, rather, a coating that deposits in large part, an organo-
modified silica. Appeal Br. 16.
We agree with Appellant. In particular, we observe that claim 8
recites the substrate “has a metallic oxide coating thereon” and not “a
coating comprising metal oxides.” The presence of an organic substituent in
the organosilanes disclosed in Le Blanc (¶¶ 42, 155–173) indicates that even
if Le Blanc’s sol is applied in two separate layers (Le Blanc, claim 64), the
first layer would still contain an metal-carbon bond. Thus, we are not
persuaded the Examiner has provided a sufficient basis to support the
position that such a coating would meet the recitation in claim 8 of a
“metallic oxide coating.”
As a result, we reverse the Examiner’s rejection of claim 8 and claims
9–11 dependent therefrom.
Claim 22
Appellant contends claim 22, which recites “metal acetate 1.75 to 4 as
solids” and “organosilane 10 to 25” as weight percentages would not have
Appeal 2019-003663
Application 13/705,576

13
been obvious over Le Blanc because Le Blanc requires the combination of
minimally 30 weight percent or more of hydrolyzable “organometallic”
compound and organosilane, which is greater than the maximum 29 percent
by weight of metal acetate and organosilane in claim 22. Appeal Br. 17,
citing Le Blanc ¶ 45.
We are not persuaded by this argument for the reasons expressed by
the Examiner in the Answer. Ans. 15. Namely, Appellant’s argument relies
on Le Blanc’s teachings with respect to the combination of organosilane and
hydrolyzable “organometallic” compound, but the Examiner does not rely
on this hydrolyzable “organometallic” compound for the metal acetate
recited in the claims. See Final Act. 5, citing Le Blanc, Abs., ¶ 228. Thus,
Appellant’s arguments do not address the Examiner’s rejection.
Summary of Rejection 1
In sum, we affirm the Examiner’s rejection of claims 7 and 25, as well
as claims 4, 13, 14, 21–27, and 29 dependent therefrom. However, we
reverse the Examiner’s rejection of claims 8–11.

REJECTION 2
The Examiner’s Rejection
Regarding independent claim 15, the Examiner relied on similar
disclosures in Le Blanc and Kissel as discussed above for independent claim
7. Final Act. 6. The Examiner found that Le Blanc discloses acetic acid and
zirconium alkoxides. Id. citing Le Blanc, ¶¶ 51, 152. The Examiner found
the combined references do not explicitly teach glacial acetic acid, but
Chung teaches that it is desirable to use glacial acetic acid in sols containing
zirconium alkoxides in order to stabilize the zirconate center and teaches the
Appeal 2019-003663
Application 13/705,576

14
acidic catalyst promotes the hydrolysis reaction over condensation. Id.,
citing Chung, ¶¶ 26, 27. The Examiner determined it would have been
obvious to modify the acetic acid of the combined references to be a glacial
acetic acid as suggested by Chung in order to stabilize the fast reacting four
coordinate zirconate center in the zirconium alkoxide sol to promote
hydrolysis over condensation. Id.
Appellant’s contentions
Regarding independent claim 15, Appellant acknowledges claim 15
recites the open-ended transitional phrase “comprising,” which allows for
the presence of a hydrolysable zirconium, aluminum, or titanium compound,
but argues that because no such hydrolysable metal compounds are
described in the specification, they are excluded from the claims. Appeal
Br. 8.
In addition to the arguments addressed above with respect to Le Blanc
and Kissel, which we found unpersuasive, Appellant argues Chung is
different than Appellant’s composition, because Chung does not utilize an
aqueous solution. Id. at 19. Appellant contends Chung’s compositions only
contain enough water to hydrolyze the hydrolyzable zirconium compound
and the organosilane to produce the mixed, organo-substituted
zirconium/silicon oxide sol. Id. citing Chung ¶ 36. Appellant contends
Chung “cannot be compared with Appellants’ invention where significant
amounts of water are present, and the glacial acetic acid, which is added is
rapidly diluted to lower concentrations.” Id.
Discussion
Initially, we are not persuaded by Appellant’s argument that the
transitional phrase “comprising” excludes the “organometallic” compounds
Appeal 2019-003663
Application 13/705,576

15
disclosed in Le Blanc. Appellant’s argument appears to be that because the
Specification is silent as to such “organometallic” compounds, the broadest
reasonable interpretation of the claims excludes such compounds. Yet, the
Specification discloses additives may be added to the composition. Spec.
¶ 28. Therefore, in contrast to Appellant’s argument, that the claims would
allow for certain “organometallic” compounds disclosed in Le Blanc to be
present is not unreasonable based on the Specification. Thus, we agree with
the Examiner that the term “comprising” does not exclude the
“organometallic” compounds disclosed in Le Blanc. Ans. 6.
As to the presence of glacial acetic acid in claim 15, we are not
persuaded by Appellant’s arguments, because as the Examiner points out,
claim 15 does not contain a concentration of water or glacial acetic acid.
Ans. 17. Thus, although Appellant points out alleged differences between
Chung’s compositions and those recited in claim 15, such differences are not
commensurate in scope with the claims. In addition, although Appellant
points out certain potential differences between Chung and Appellant’s
compositions, Appellant does not sufficiently explain why such differences
would mean the Examiner’s rejection is in error. Indeed, in describing
aqueous sol-gel formulations including silane, Le Blanc discloses glacial
acetic acid as an example of an acetic acid hydrolysis catalyst. Le Blanc
¶¶ 20, 23.
As a result, we affirm the Examiner’s rejection of claim 15.

Appeal 2019-003663
Application 13/705,576

16
REJECTION 3
The Examiner’s Rejection
Claim 6, the subject of Rejection 3, depends from claim 7 and recites,
inter alia, “the metal acetate comprises zirconium acetate.” The Examiner
relied on Le Blanc and Kissel as discussed above for claim 7. Final Act. 6–
7. The Examiner relied on Chung for the teaching of glacial acetic acid as
discussed above with respect to Rejection 2. Id. at 7. The Examiner found
that although Le Blanc discloses zirconium alkoxides, Le Blanc does not
disclose zirconium acetate. Id. citing Le Blanc ¶ 152. The Examiner found
Hazel discloses a corrosion resistant sol-gel coating where zirconium acetate
is disclosed as an equivalent to zirconium propoxide. Id. citing Hazel ¶ 41.
The Examiner determined it would have been obvious to modify the
composition of Le Blanc to further include zirconium acetate as suggested
by Hazel because Hazel discloses zirconium acetate as a suitable salt for use
in corrosion resistant sol-gels. Id.
Appellant’s Contentions
Appellant’s arguments with respect to Le Blanc, Kissel, and Chung
(Appeal Br. 19–20) have been addressed above. Regarding the Examiner’s
reliance on Hazel, Appellant contends the Examiner’s position that Hazel’s
use of zirconium acetate makes zirconium acetate an equivalent to Le
Blanc’s “organometallic” zirconium compound is not supported and is
“completely at odds scientifically and technologically with the chemical and
physical characteristics of organometallic zirconium compounds such as
zirconium methoxide and compounds such as zirconium acetate.” Appeal
Br. 20. Appellant contends Hazel forms an aqueous solution, not a sol, no
acetic acid is present, and the solution is then sprayed onto a substrate at 250
Appeal 2019-003663
Application 13/705,576

17
°C to form a ceramic coating. Id. at 20–21, citing Hazel ¶¶ 41, 45.
Appellant contends the solution dries to form a gel coating, and that under
this process, which relies on the formation of ceramic metal oxides, any
source of zirconium, no matter the counter ion or counter group (covalently
bonded radical), is equivalent. Id. at 21.
Discussion
We agree with Appellant. That is, Hazel discloses “[s]uitable ceramic
metal precursors include, but are not limited to, zirconyl nitrate, zirconium
acetate, zirconia oxychlorate, zirconium n-propoxide and combinations
thereof.” Hazel, ¶ 41. Hazel discloses the coating composition may be
applied at room temperature, but then “the film is heat treated at a
temperature from about 250 °C. to about 1080 °C. to convert the polymer
precursor solution to an oxide ceramic comprising ceramic corrosion
resistant coating.” Id. at ¶ 43.
We acknowledge that Le Blanc allows for a “ceramic melting
treatment” up to 2500 °C. Le Blanc, ¶ 60. Nevertheless, we agree with
Appellant that one of ordinary skill in the art would not have had a sufficient
reason to turn to Hazel’s disclosure of ceramic precursors including
zirconium acetate when formulating Le Blanc’s compositions to allow for
compositions to dry at less than 100 °C as required in claim 7, from which
claim 6 depends. Although the Examiner stated that high temperature
processing is not excluded by the claims (Ans. 20), the Examiner has not
provided sufficient reasoning why one of ordinary skill in the art would
perform a high temperature processing step, which appears necessary to
support the Examiner’s position of equivalency, as well as a drying step less
than 100 °C as required in claim 7, from which claim 6 depends.
Appeal 2019-003663
Application 13/705,576

18
Accordingly, we reverse the Examiner’s rejection of claim 6.

REJECTION 4
Claim 28, the subject of Rejection 4, and which depends from claim
25, and recites “the metal acetate is zirconium acetate or a combination of
zirconium acetate and magnesium acetate,” the Examiner relies on Hazel for
similar reasons as discussed above for Rejection 3. Final Act. 8. Appellant
relies on similar arguments as discussed above with respect to claim 6.
Appeal Br. 21–22.
We reverse the Examiner’s decision to reject claim 28 for the same
reasons as discussed above regarding claim 6.

REJECTION 5
The Examiner’ Rejection
Claim 30, the subject of Rejection 5, is dependent from claim 25 and
recites “wherein the solvent is a glycol ether.” The Examiner relied on the
combination of Le Blanc, Kissel, and Young as discussed above for
Rejection 1, but found that the combined references, while disclosing the use
of glycol solvents, were silent as to the specific glycol solvent. Final Act. 8;
see id. at 3, citing Le Blanc ¶ 43. The Examiner found Matsumura discloses
a sol-gel solvent where a small amount of organic solvent such as alcohol or
glycol ether may be added for enhancing film formability. Id., citing
Matsumura, col. 10. l. 64 – col. 11, l. 15. As a result, the Examiner
determined it would have been obvious to use a glycol solvent in the sol-gel
coating compositions of the combined references in order to obtain a coating
with desired film formability. Id.
Appeal 2019-003663
Application 13/705,576

19
Appellant’s Contentions
Appellant contends Matsumura is directed to a coating composition
comprising silicone resin and a photooxidation catalyst for use in
construction materials, and the photooxidation catalyst sols are not reactive
solutions such as those claimed, and as such, Matsumura’s disclosure does
not imply that glycol ethers can be used in other sols. Appeal Br. 22–23.
Discussion
We are not persuaded by Appellant’s arguments. Although Appellant
observes certain differences between the specific compositions disclosed in
Le Blanc and Matsumura, we are not persuaded one of ordinary skill in the
art would not have looked to Matsumura for a disclosure of common glycol
solvents, particularly where, as discussed above, Le Blanc discloses
additional organic binders may be added (¶ 203), which overlap with the
film forming agents that may be added to the compositions of Matsumura
(col. 10, l. 64 – col. 11, l. 4).
Accordingly, we affirm the Examiner’s rejection of claim 30.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
4, 7–11, 13,
14, 21–27,
29
103 Le Blanc, Kissel, Young
4, 7, 13, 14,
21–27, 29 8–11
15 103 Le Blanc, Kissel, Young, Chung 15
Appeal 2019-003663
Application 13/705,576

20
Claim(s)
Rejected
35 U.S.C.
§ References/Basis Affirmed Reversed
6 103
Le Blanc, Kissel,
Young, Chung,
Hazel
6
28 103 Le Blanc, Kissel, Young, Hazel 28
30 103 Le Blanc, Kissel, Young, Matsumura 30
Overall
Outcome
4, 7, 13–15,
21–27, 29,
30
6, 8–11, 28
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART