Ex Parte Biddulph et al

Board of Patent Appeals and Interferences

Aug 14, 2012

10774559 (B.P.A.I. Aug. 14, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/774,559 02/09/2004 Clifford F. Biddulph PVOZ 200015US01 8972
27885 7590 08/15/2012
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
ZHENG, LOIS L
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
08/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CLIFFORD E. BIDDULPH;
LEONARD L. DIADDARIO, JR.;
MICHAEL MARZANO; and ANTONIO ORITI III
________________

Appeal 2011-007276
Application 10/774,559
Technology Center 1700
________________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007276
Application 10/774,559

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The Examiner finally rejected claims 1-6, 8, 9, and 19-23 of
Application 10/774,559 as obvious under 35 U.S.C. § 103(a). Appellants
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM the rejection of these
claims.
Background
The ’559 application is related to chromate conversion coatings
employing trivalent chromium. Spec. 1. Metal objects often are coated with
a metal such as zinc or a zinc alloy to provide both a decorative finish and/or
corrosion resistance to the base metal object. Id. The corrosion resistance
can be enhanced by treating the zinc metal surface to a solution containing
chromic acid. Id. The acid solution dissolves a small amount of the metal
surface, raising the local pH at the liquid/metal interface. Id. This causes a
small amount of a metal complex of chromium and the coating metal to
precipitate onto the metal surface. Id. Such chromate conversion coatings
provide both enhanced corrosion resistance and can provide a decorative
finish in a variety of colors. Id.
Traditionally, chromium in the +6 oxidation state was used to create
the conversion coating. Id. Chromium(VI), however, is toxic, and its use
presents health and environmental risks. Id. There has, therefore, been a
need to develop processes that use chromium in some other oxidation state
as the source of chromium ions in a conversion coating process. Id.at 1-2.
The ’559 application describes a process for creating a conversion coating
that uses chromium(III) rather than chromium(VI).
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Application 10/774,559

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Claim 1 of the ’559 application is representative and is reproduced
below:
1. An aqueous acidic black chromate conversion coating
solution for use on zinc and zinc alloy comprising:
trivalent chromium ions in a concentration of about 0.02M to
about 0.2M;
phosphorous anions;
anions selected from the group of sulfate ions, nitrate ions, and
combinations thereof;
at least one transition metal or metalloid selected from groups
III, IVa, Va, or VIII;
an organic chelate selected from the group consisting of
carboxylic acids, polycarboxylic acids, and combinations
thereof;
wherein a concentration of said sulfate ions when present
comprise about 0.02 to about 0.5M and a concentration of said
nitrate ions when present comprise about 0.06 to about 0.6M;
wherein the organic chelate is present in a concentration of
from about 0.02M to about 0.3M; and
wherein said aqueous acidic black chromate conversion coating
solution produces a single layer black chromate conversion
coating.
App. Br. 13.
Rejections
1. The Examiner rejected claims 1-6, 8, 9, and 19-23 under 35 U.S.C.
§ 103(a) as obvious over WO 02/07902 (“Duprat,” published
January 31, 2002).
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Application 10/774,559

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2. The Examiner rejected claims 1-6, 8, 9, and 19-23 under 35 U.S.C.
§ 103(a) as obvious over U.S. Patent No. 6,719,852 B2 (“Oshima,”
issued April 13, 2004) in view of Duprat.
Discussion
Rejection 1. The Examiner rejected the ’559 application’s claims as
obvious over Duprat. Ans. 3. Duprat describes a two-step process for
producing a black anticorrosive coating on zinc alloys. Duprat 4.1 The first
step in Duprat’s process is treating the zinc alloy with a chromium(III)
containing solution. Id. The second step is applying a topcoating that may
include a black pigment. Id. at 5.
As the Examiner points out, the various acidic coating solutions
described in Duprat use of each of the components recited in claim 1 of the
’559 application in amounts that overlap the claimed ranges. Ans. 3-5. Thus,
the Examiner argues, Duprat renders the ’559 application’s claims obvious.
Id.
In response, Appellants advance two arguments: First, Appellants
argue that Duprat does not teach or suggest a single layer black chromium
coating solution. App. Br. 8. Because Duprat describes a two-step process
that ultimately creates a two-layer anticorrosive coating, Appellants argue
that the Examiner’s reliance on the chromate conversion solution used in the
first step of the process to render the claimed solution obvious amounts to
improper hindsight dissection of Duprat’s teachings. Id. at 9. Second,
Appellants argue that Duprat does not teach or suggest the use of the
claimed amounts of sulfate and/or nitrate anions. Id. at 10.

1 Citations to Duprat are to the pages of the official translation that is of
record in this case.
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Application 10/774,559

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We are not persuaded by either of these arguments for
nonobviousness. First, Appellants are claiming an “aqueous acidic black
chromate conversion coating solution for use on zinc and zinc alloy.” Claim
1. Duprat describes such solutions. Ans. 8-9. Furthermore, Duprat states that
the result of the first step of its process is a black chromate conversion
coating with anticorrosion properties. Duprat specifically states that the use
of a black pigment in the topcoating process is optional. Id. at 9 (citing
Duprat 5); see also Duprat 9, 10. Furthermore, Duprat describes the result of
the first step of its process as producing a uniform black anticorrosive
coating. Duprat 16, 17.
Second, as the Examiner points out, Duprat describes the use of nitric
and/or sulfuric acid to adjust the pH of the coating solution. Ans. 10 (citing
Duprat 5). Because the pH of the coating solution affects the coating process
and quality, a person of ordinary skill in the art would have been motivated
to adjust the pH of Duprat’s solutions using either sulfuric or nitric acid and
would have created solutions with the claimed levels of sulfate and/or nitrate
anions. Id.
For these reasons, we sustain the Examiner’s rejection of claims 1-6,
8, 9, and 19-23 as obvious over Duprat.
Rejection 2. The Examiner also rejected claims 1-6, 8, 9, and 19-23
as obvious over Oshima in view of Duprat. Ans. 6. Oshima generally
describes an acidic aqueous coating solution comprising chromium(III) ions,
organic chelating agents such as oxalic acid, cobalt ions, silicon compounds,
inorganic salts of nitric or sulfuric acid, and phosphorus oxyacids. Oshima,
Col. 4, ll. 7-67. The particular concentrations of these components specified
in Oshima fall within the ranges set forth in the ’559 application’s claims.
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Oshima, however, describes the color of the chromate conversion
coating produced through the use of its solution as pale blue. Id. at col. 10,
Table 4. Oshima does not specifically teach a method for producing a
conversion coating that is black in color. Ans. 6.
To remedy this deficiency, the Examiner looks to Duprat, which
teaches that the use of phosphate, iron, cobalt, molybdenum, and/or nickel to
encourage the formation of a dark conversion layer. Ans. 7 (citing Duprat 7-
8).
As Appellants point out, Oshima teaches that the color of the final
product of its treatment process can be controlled by use of a dye in an
optional topcoating process. App. Br. 11-12. Furthermore, use of the
topcoating process improves the corrosion resistance of the final product.
Oshima, col. 6, ll. 22-51. Oshima, therefore, teaches away from modifying
the conversion coating solution to achieve a desired color. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) (explaining that a reference teaches away
when it would lead a person of ordinary skill in the art in a divergent
direction from the invention). A person of ordinary skill in the art reading
Oshima would not be motivated to look toward Duprat for a description of
how to modify the color of the conversion coating produced by Oshima’s
process.
For this reason, we cannot sustain the Examiner’s rejection of the ’559
application’s claims over the combination of Oshima and Duprat.
Conclusion
For the reasons set forth above, we sustain the rejection of claims 1-6,
8, 9, and 19-23 as obvious over Duprat. We, however, do not sustain the
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rejection of these claims as obvious over Oshima in view of Duprat. In sum,
the rejection of claims 1-6, 8, 9, and 19-23 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

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