Ex Parte Dingwerth et al

Patent Trial and Appeal Board

Aug 11, 2016

13125357 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/125,357 04/21/2011
23908 7590 08/15/2016
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Bjorn Dingwerth
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.
ATODP0109US 4447
EXAMINER
TIJROCY, DAVID P
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BJORN DINGWERTH and ANDREAS NOACK
Appeal2015-002263
Application 13/125,357
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
N. WHITNEY WILSON, 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 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a process for treating a zinc or zinc alloy
surface. Claim 11 is illustrative:
11. A process for the treatment of a zinc or zinc alloy
surface, characterized in that the surface to be treated is dipped
into a treatment solution comprising
at least one source of Cr3+ ions and
at least one organic compound selected from the group
consisting of
Appeal2015-002263
Application 13/125,357
Ries
~:iO;,
·:R-....., __ .... ~/~~ .... / .. F~·,
., R ... J!',i::>·~-' R"
R'
0
'R '-.,/ . .:1,, __ ..... R.,
n r
. ,Ft .. ·',;r·"" .... R:
0
R
:::~::::(
(?
''R,,, .. N '"'" \,(
'R ... i.,o.J'R'
IL m.
0
R,r)t,f:Q
R' .·,._r;·.:'--.,R .
R
v.
where R 1 to R5 are each, independently of one another,
a) a hydrogen atom or an alkyl group which has from 1 to
10 carbon atoms and may be linear or branched or
b) an -NR2, -N02, -COOR, -OR, -S03R group where
R = -H or an alkyl group which has from 1 to 5 carbon atoms
and may be linear or branched,
with the proviso that from 0 to 2 radicals R 1 to R5 are
selected from group b) and with the further proviso that the
aqueous treatment solution does not contain any free nitrate ion.
Hu var
Yamamoto
Krizova1
The References
us 3,682,713
us 4,349,392
US 2008/0210341 Al
WO 2008/107039 Al
Aug. 8, 1972
Sep. 14, 1982
Sep.4,2008
Sep. 12,2008
The Rejections
The claims stand rejected as follows: claims 1-8, 10-18 and 20-23
under 35 U.S.C. §§ 102(b) and 103 over Ries, claims 9 and 19 under
35 U.S.C. § 103 over Ries in view of Huvar, claims 1-23 under
1 Citations herein to Krizova are to US 2010/0133113 Al (published June 3,
2010) which the Examiner relies upon as an English language equivalent of
WO 2008/107039 Al (Non-final Act. mailed July 19, 2013, pp. 2-3).
2
Appeal2015-002263
Application 13/125,357
35 U.S.C. § 103 over Huvar in view of Ries and claims 1-21 under
35 U.S.C. § 103 over Yamamoto in view ofKrizova.
OPINION
We affirm the rejections over Ries, alone or with Huvar, and reverse
the rejection over Yamamoto in view of Krizova.
The Appellants argue the claims as a group (App. Br. 7-15). We
therefore limit our discussion of the affirmed rejections to one claim, i.e.,
claim 11. Claims 1-10 and 12-23 stand or fall with that claim. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
Rejection under 35 U.S.C. § 102(b) over Reis
"Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference." Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Ries forms a corrosion protection coating on a zinc or zinc galvanized
surface by applying thereto diluted chromic acid which contains Cr3+ ions, is
practically free of chromium(VI), and contains an oxidizing agent which
preferably is m-nitrobenzene sulfonate (which falls within the Appellants'
Formula I) and can be nitrophenols (which fall within the Appellants'
Formula I), quinone (which falls within the Appellants' Formula IV),
nitrates or nitrites (col. 2, 11. 23-31; col. 2, 1. 62 - col. 3, 1. 4; col. 3, 11. 21-
22, 62---65; col. 4, 11. 22-26).
The Appellants argue, in reliance upon the Declaration under
37 C.F.R. § 1.132 of Andreas Noack, that because the coating solution in
3
Appeal2015-002263
Application 13/125,357
each of Ries' s examples contains nitrate or nitrite, 2 "the skilled person
would not have found it at all obvious to exclude nitrate ions from the
treatment solution, and would not have found it obvious to replace the nitrate
ions with the claimed organic oxidizing agents" (App. Br. 8). Noack asserts
that "[a]s a person skilled in the art, the teachings of the examples carry
much more weight than passing statements in the specification and the
skilled person would follow the examples in reaching an understanding of
the teachings of this reference" (Deel. i-f 4 ).
Ries is not limited to its examples. See In re Fracalossi, 681 F.2d
792, 794 n.1(CCPA1982); In re Mills, 470 F.2d 649, 651(CCPA1972).
Noack provides no evidence or reasoning which establishes that one of
ordinary skill in the art, in view of the totality of Ries' s disclosure, would
not have used one of Ries' s oxidizing agents which fall within the
Appellants' Formulas I-V without using a nitrate or nitrite oxidizing agent
(which are optional) (col. 2, 1. 62 - col. 3, 1. 4).
Accordingly, we are not persuaded of reversible error in the rejection
under 35 U.S.C. § 102(b) over Ries.
Rejections under 35 U.S. C. § 103 over Ries,
alone or with Huvar
Huvar discloses a composition for forming a passivating coating on
zinc or a zinc alloy, comprising chromium ions, substantially all of which
are in the trivalent state, a mineral acid, and an oxidizing agent, the preferred
oxidizing agents including hydrogen peroxide (which is one of Ries' s
oxidizing agents (col. 2, 11. 69-72)) (col. 1, 1. 66 - col. 2, 1. 34).
2 Nitrite is equivalent to nitrate because nitrate is reduced to nitrite during
formation of the coating (Spec. 3 :29-32).
4
Appeal2015-002263
Application 13/125,357
The Appellants assert that "none of the prior art recognizes the
problem addressed and solved by the present invention's exclusion and
replacement of nitrate ions, i.e., the generation of nitrogen monoxide, NO,
gas" (App. Br. 8-9).
To establish a prima facie case of obviousness, references need not be
combined for the purpose of solving the problem solved by the Appellants.
See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir.
1990) (en bane); In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972).
The Appellants assert that the examples in their Table 1 (Spec. 13)
show that absence of nitrate ions results in an unexpected increase in
corrosion protection (App. Br. 11).3
We have begun our obviousness analysis anew and determined that
due to the following deficiencies in the evidence relied upon by the
Appellants, the totality of the evidence and argument supports a conclusion
of obviousness of the claimed process. See In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976).
First, the Appellants' showing of unexpected results does not provide
a comparison of the claimed invention with the closest prior art, which is
Ries's Example 1. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
3 The Appellants do not argue that it would not have been prima facie
obvious to one of ordinary skill in the art to substitute one of Ries' s
oxidizing agents which fall within the Appellants' Formulas I-V (col.2, 1. 62
- col. 3, 1. 4) for Hu var' s hydrogen peroxide oxidizing agent (col. 4, 11. 6-
10).
5
Appeal2015-002263
Application 13/125,357
Second, the evidence is not commensurate in scope with the claims.
See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622
F.2d 1029, 1035 (CCPA 1980). The Appellants test only three compounds
out of an extremely large number of compounds encompassed by their
Formulas I-V. We find in the evidence of record no reasonable basis for
concluding that the great number of materials encompassed by the
Appellants' claims would behave as a class in the same manner as the
particular materials tested. See In re Lindner, 457 F.2d 506, 508 (CCPA
1972); In re Susi, 440 F.2d 442, 445-46 (CCPA 1971).
Third, the cause-and-effect relationship between use of the
Appellants' organic oxidizing agents (instead of sodium nitrate) and
increased corrosion protection is lost in multiple unfixed variables because
the tests use a much larger amount of organic oxidizing agent than sodium
nitrate. See In re Heyna, 360 F.2d 222, 228 (CCPA 1966); In re Dunn, 349
F.2d 433, 439 (CCPA 1965).
Hence, we affirm the rejections under 35 U.S.C. § 103 over Ries,
alone or with Huvar.
Rejection over Yamamoto in view of Krizova
Yamamoto forms a chromium(VI)-free conversion coating on zinc or
a zinc alloy by applying thereto a solution comprising a trivalent chromium
ion and a chelating agent which is capable of forming a water soluble
complex with the trivalent chromium ion and can be formic acid, oxalic
acid, malonic acid or succinic acid (i-fi-f 8-13, 21).
Krizova discloses a solution for producing a substantially
chromium(VI)-free conversion coating on a zinc alloy, comprising specified
relative amounts of Cr3+, nitrate, a first carboxylic acid which can be formic
6
Appeal2015-002263
Application 13/125,357
acid or nitrobenzoic acid (which falls within the Appellants' Formula l), and
a second carboxylic acid which can be oxalic acid, malonic acid or succinic
acid (iTiT 12-24, 29-33).
The Examiner asserts that one of ordinary skill in the art would have
used Krizova' s first and second carboxylic acids as Yamamoto' s chelating
agent 1) "to successfully provide a homogeneous coloration of the surface"
(Ans. 9), 2) as a simple substitution (id.), and 3) because "one skilled in the
art could have combined the elements as claimed by known methods with no
change in their respective functions, and the combination would have
yielded predictable results to one of ordinary skill in the art at the time of the
invention" (Ans. 9-10).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Krizova' s composition requires the combination of nitrate and the first
and second carboxylic acids (iTiT 12-24). The Examiner does not establish
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to use Krizova's first and second carboxylic acids,
but not the required nitrate (which is excluded by the Appellants' claims), in
Yamamoto' s composition.
Hence, we reverse the rejection over Yamamoto in view of Krizova.
DECISION/ORDER
The rejections of claims 1-8, 10-18 and 20-23 under
35 U.S.C. §§ 102(b) and 103 over Ries, claims 9 and 19 under
35 U.S.C. § 103 over Ries in view of Huvar and claims 1-23 under
7
Appeal2015-002263
Application 13/125,357
35 U.S.C. § 103 over Huvar in view of Ries are atlirmed. The rejection of
claims 1-21under35 U.S.C. § 103 over Yamamoto in view ofKrizova is
reversed.
It is ordered that 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
8