Ex Parte Chang et al

Patent Trial and Appeal Board

Jul 17, 2018

13816906 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/816,906 02/13/2013
64779 7590 07/19/2018
CARLSON GASKEY & OLDS
INTELLECTUAL PROPERTY DEPARTMENT
400 W MAPLE STE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Xiaoyuan Chang
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.
60469-502PUS1; 13585US 7287
EXAMINER
TATESURE, VINCENT
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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):
frederic.tenney@otis.com
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOYUAN CHANG and HONG YANG
Appeal2017-008301
Application 13/816,906
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-8, 12, 13 and 25-28. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a load bearing member having a protective
coating. Claim 1 is illustrative:
1. A load bearing member, comprising:
at least one elongated tension member comprising at least
one wire; and
a protective coating on the elongated tension member, the
protective coating including a first corrosion inhibitor selected
from a group consisting of oxide-forming metals and
Appeal2017-008301
Application 13/816,906
combinations thereof, a second corrosion inhibitor selected
from a group consisting of rare earth metals and combinations
thereof, and a third corrosion inhibitor comprising an organic
material.
Horton
Adriaens en
Yu
Kim
The References
US Re. 28,644
US 6,276,120 Bl
US 2004/0262580 Al
US 2007/0054061 Al
Dec. 9, 1975
Aug. 21, 2001
Dec. 30, 2004
Mar. 8, 2007
M.F. Montemor et al., Composition and corrosion behaviour of galvanised
steel treated with rare-earth salts: the effect of the cation, 44 Progress in
Organic Coatings 111-20 (2002) (hereinafter Montemor).
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1-
4, 6, 13, 27 and 28 over Adriaensen in view of Yu, claims 5, 7 and 12 over
Adriaensen in view of Yu and Montemor, claim 8 over Adriaensen in view
of Yu and Kim, claim 25 over Adriaensen in view of Yu and Horton and
claim 26 over Adriaensen in view of Yu, Horton and Montemor.
OPINION
We affirm the rejections.
Although the Examiner relies upon additional references in rejecting
some of the dependent claims, the Appellants argue the claims as a
group (App. Br. 3-5). We therefore limit our discussion to one claim, i.e.,
claim 1, which is the sole independent claim. That claim requires at least
one wire having a protective coating including three corrosion inhibitors:
1) oxide-forming metals and combinations thereof, 2) rare earth metals and
combinations thereof, and 3) an organic material.
2
Appeal2017-008301
Application 13/816,906
Adriaensen discloses a steel cable, which can be a vehicle brake, shift
lever or mirror-directing cable, having a corrosion-resistant zinc or zinc
alloy coating (col. 1, 11. 9--12; col. 3, 11. 4--7).
Yu coats a metal substrate, which can be an automotive substrate,
with a non-carcinogenic corrosion-inhibiting composition comprising 1) a
transition metal salt anodic corrosion inhibitor (which corresponds to the
Appellants' oxide-forming metal), 2) a rare earth metal or rare earth metal
compound cathodic corrosion inhibitor ( which corresponds to the
Appellants' rare earth metal), 3) a water soluble organic acid salt metal
complexing agent (which corresponds to the Appellants' organic material) to
increase the solubility of the corrosion-inhibiting additives, and 4) a soluble,
non-carcinogenic, anticorrosion additive which can be zinc molybdate
(which corresponds to Adriaensen's zinc alloy) (i1i114, 15, 19--22, 26). "The
anodic corrosion inhibitor is effective against general corrosion [(uniform
dissolution of base metal)] while the cathodic corrosion inhibitor is
particularly effective against pitting corrosion [ (localized corrosion of metal
resulting in the formation of corrosion pits)]" (i-f 19).
Yu would have led one of ordinary skill in the art, through no more
than ordinary creativity, to use Yu's corrosion-inhibiting composition
instead of or in addition to Adriaensen's steel cable corrosion-resistant
coating to obtain Yu's disclosed benefits of protection against general
corrosion and pitting corrosion. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398,418 (2007) (in making an obviousness determination one "can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ").
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Appeal2017-008301
Application 13/816,906
The Appellants assert that there is no evidence that Yu's coating
would be superior to Adriaensen's coating (Reply Br. 3).
Yu disclosure that the coating comprising anodic and cathodic
corrosion inhibitors inhibits general and pitting corrosion would have
indicated to one of ordinary skill in the art that Yu's composition comprising
those corrosion inhibitors and Yu's zinc alloy would provide better
corrosion inhibition than Adriaensen's corrosion-resistant zinc alloy alone.
Yu, therefore, would have provided one of ordinary skill in the art with an
apparent reason to use Yu's corrosion-inhibiting composition instead of or in
addition to Adriaensen's steel cable corrosion-resistant coating. See KSR,
550 U.S. at 418 (establishing a prima facie case of obviousness of an
invention comprising a combination of known elements requires "an
apparent reason to combine the known elements in the fashion claimed.").
Accordingly, we are not persuaded of reversible error in the
rejections.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1--4, 6, 13, 27 and 28
over Adriaensen in view of Yu, claims 5, 7 and 12 over Adriaensen in view
of Yu and Montemor, claim 8 over Adriaensen in view of Yu and Kim and
claim 25 over Adriaensen in view of Yu and Horton and claim 26 over
Adriaensen in view of Yu, Horton and Montemor are affirmed.
The Examiner's decision 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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