Ex Parte Dunlop et al

Patent Trial and Appeal Board

Mar 26, 2013

12276783 (P.T.A.B. Mar. 26, 2013)

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.
12/276,783 11/24/2008 Alyson Marie Dunlop FCHM 0147 PUS1 4784
28395 7590 03/28/2013
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
03/28/2013 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 PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte ALYSON MARIE DUNLOP, AARON M. FIALA,
CHRISTOPHER ANTHONY TALLON, JACOB BRASLAW,
JOHN MICHAEL PURCELL, MARY ELLEN ROSENBERGER,
STEPHEN JOSEPH BARRETT, JAMES SCOTT GILLAND,
SAMUEL A. SMITH, TIMOTHY S. YOUNG
and WARREN PHILLIP BULLOCK
______________

Appeal 2011-012391
Application 12/276,783
Technology Center 1700
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM and
DONNA M. PRAISS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims 1, 2,
4-13 and 21-28. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2010).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a method of painting an
article having two or more base coats, and is representative of the claims on
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appeal:
1. A method of painting an article having two or more base coats,
said method comprising:
providing an electrocoat onto a first and second area of the article;
applying a primer coat composition to the electrocoat;
applying a first base coat composition to the first area of the article
while the primer coat composition is wet;
curing the primer coat composition and the first base coat composition
to form a primer coat and a first base coat;
masking at least a portion of the first base coat;
applying a second base coat composition to the second area of the
article;
removing the masking;
applying a clear coat composition to the first and second area of the
article; and
curing the second base coat composition and the clear coat
composition to form a second base coat and a clear coat.
App. Br. Claim App’x.
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1, 4-7, 11-13 and
21-28 over Verardi (US 6,180,181 B1) and Syron (US2007/0141260 A1),
and claims 2 and 8-10 over Verardi, Syron and Ogasahara (US 6,777,032
B2). App. Br. 3; Ans. 4, 6.
Appellants do not argue any particular claim. Thus, we decide this
appeal based on claim 1 and 26 with respect to the first ground of rejection
as argued by Appellants. See App. Br. 10. 37 C.F.R. § 41.37(c)(1)(vii)
(2010).
OPINION
We are of the opinion Appellants’ arguments do not establish that the
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evidence in the totality of the record weighs in favor of the nonobviousness
of the claimed method of painting an article encompassed by claims 1 and
26. In this respect, we are in agreement with the Examiner’s analysis of the
evidence in Verardi and Syron, and the findings of fact and conclusions of
law stated in the Answer, to which we add the following for emphasis with
respect to Appellants’ arguments.
We cannot agree with Appellants that the Examiner erred in
determining that one of ordinary skill in the art would have combined the
teachings of Verardi and Syron, and thence would have been led to a method
of painting an article with at least two base coats comprising at least the
steps of applying the individual coatings arranged as specified in
representative claim 1. Ans. 4-5, 8; App. Br. 6-8; Reply Br. 2.
We determine that claim 1 specifies a method of painting an article in
which a primer coat is applied to an electrocoated article; a first base coat is
applied to a first area of the wet primer coat; the primer coat and the first
base coat are cured; at least a portion of the first base coat is masked; a
second base coat is applied to a second area of the now cured primer coat;
the mask is removed; a clear coat is applied to the first and second areas; and
the second base coat and the clear coat are cured.
We find Verardi would have disclosed to one of ordinary skill a
method of painting an article including the steps of applying a primary
coating composition, which can contain pigments, to at least a portion of a
substrate having an electrodeposited surface coating; applying a secondary
coating, which is a base coat and can contain pigments, on at least a portion
of the wet primary coating; applying at least a clear coating on at least a
portion of the wet secondary coating; and curing the primary coating, the
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secondary coating and the clear coating. Verardi col.1 l.64 to col.2 l.16,
col.2 l.64 to col.3 l.25, col.14 ll.41-65, col.15 l.43 to col.16 l.47, col.17
ll.13-64, col.18 ll.7-52. Verardi would have disclosed that “the primary
coating composition can be the same as the secondary coating composition,”
and that “multiple secondary coating compositions can be applied to develop
the optimum appearance.” Verardi col.16 ll.46-47, col.17 ll.28-29. Verardi
describes the disclosed painting method of applying the primary coat, the
secondary coat and the clear coat without an intermediate curing step as
“wet-on-wet-on-wet (‘WOWOW’).” Verardi col.1 ll.52-61. Verardi would
have acknowledged the prior art “wet-on-wet (‘WOW’)” painting method in
which an electrodeposited coating is applied to a substrate and cured, a
primary coat is applied and cured, and a colored basecoat coat and a clear
coat are successively applied and cured. Verardi col.1 ll.24-35.
We find Syron would have acknowledged a two tone painting method
known in the art wherein the coordinating color basecoat is applied to a
substrate and cured, the cured basecoat is masked, the main color basecoat is
applied, the mask removed, the entire substrate is clear coated, and the main
color base coat and the clear coat are cured. Syron ¶ 0007. Syron would
have described the known method as a “‘wet pull process’” which can
produce adjoining colors. Syron ¶ 0007.
The Examiner determines that one of ordinary skill in the art would
have modified Verardi’s multiple coating painting method by using the two
tone painting process known in the art as acknowledged by Syron, thus
applying a coordinating color basecoat and a main color basecoat in two
tone painting an article, thus arriving at a method of painting an article
encompassed by claim 1. Ans. 4-5.
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According to the Examiner, one of ordinary skill in the art would have
recognized that Verardi would have disclosed applying a colored basecoat to
a wet primer coat, and applying a clear coat to a wet colored basecoat, the
latter step used in the prior art two tone painting process, thus allowing a
reduction in the number of curing steps used in the prior art two tone process
by eliminating the curing step following application of the primary coating,
as taught by Verardi, while using the masking and mask removal steps of the
prior art two tone painting process to separate colors applied by different
basecoats to separate areas of the article. Ans. 8.
We disagree with Appellants that one of ordinary skill in the art would
not have combined Verardi’s method and the prior art two tone method
acknowledged by Syron because Verardi would not have taught multiple
coloring basecoats or applying a clear coat composition after a first base coat
composition and a primer coat composition have been cured. App. Br. 7;
Reply Br. 2. As the Examiner points out, one of ordinary skill in the art
would have combined Verardi’s teachings of wet-on-wet applications of
primer and basecoat and of base coat and clear coat with the prior art two
tone painting method. We are of the view that one of ordinary skill in the art
would have been armed with the knowledge in the art that a curing step can
be used or omitted between primer and base coat, and base coat and clear
coat as evidenced by the WOW and WOWOW methods disclosed and
acknowledged by Verardi and the known two tone painting method
acknowledged by Syron. We are reinforced in our view by Verardi’s
disclosure that the primary coating and secondary basecoat coating can be
the same, and that multiple colored basecoats can be used. Thus, we are of
the opinion that one of ordinary skill in the art would have reasonably been
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led to use Verardi’s wet-on-wet primary and second basecoat and wet-on-
wet basecoat and clear coat steps along with the steps of curing the first
colored basecoat prior to masking an area of the cured basecoat for
application of a second colored basecoat and removal of the mask for
application of a clear coat to the cured first basecoat and wet second
basecoat in the prior art two tone painting method, with a reasonable
prediction of success of obtaining a two tone painted articles while
eliminating a curing step. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 402-03 (2007) (“When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to pursue the
known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.”); In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir.
2006); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on
the part of one of ordinary skill in the art); In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is . . . what the combined teachings
of the references would have suggested to those of ordinary skill in the
art.”); see also, e.g., In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)
(“For obviousness under § 103, all that is required is a reasonable
expectation of success.” (citations omitted)).
We determine that independent claim 26 specifies a method
comprising at least the same steps as representative claim 1 and further
specifies that “the primer coat composition is provided with a sag level of at
least 2 mils when measured in accordance with FLTMBI-122-02.”
According to the disclosure in the Specification, “the predetermined
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rheology of the primer coat composition . . . is such that the minimum
acceptable sag level of the primer coat composition is at least 2 mils” as
measured by the industrial standard FLTMBI-122-02. Spec. 9:25-31.
Appellants disclose ‘[t]he rheology of the primer coat composition . . .
can be controlled by adjusting one or more of the viscosity, the solvent
blend, or the pigment-to-binder ratio of the primer coat . . . or by other such
methods as are known by those of ordinary skill in the art.” Spec. 9:31 to
10:2.
We agree with the Examiner’s finding that the sag level of the primer
coat was recognized in the art as a result effective variable and that one of
ordinary skill in the art would have known how to adjust the rheology of the
primer coat to achieve sag level specified by industrial standard
FLTMBI-122-02. Ans. 5-6, 9. We are of the view that, contrary to
Appellants’ position, the existence of the industrial standard evinces that the
sag level is a result effective variable, and Appellants acknowledge that one
of ordinary skill in the art can adjust the rheology of the primer coat to
satisfy the industrial standard by methods known in the art. App. Br. 8-9.
See, e.g., In re Nomiya, 509 F.2d 566, 570-71, 571 n.5 (CCPA 1975)
(Appellants’ representations in their application should be accepted at face
value as admissions that Figs. 1 and 2 may be considered “prior art” under §
103, conceding what is to be considered as prior art in determining
obviousness of their improvement). Thus, one of ordinary skill in the art
would have determined the workable or optimum range for the sag level of
the primer coat by routine experimentation. See, e.g., In re Boesch, 617 F.2d
272, 275-76 (CCPA 1980) (“[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the art.”
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(citations omitted)); In re Aller, 220 F.2d 454, 456-58 (CCPA 1955)
(“[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.”).
Appellants rely on the same arguments with respect to the ground of
rejection over Verardi, Syron and Ogasahara. App. Br. 10.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Verardi and Syron, alone or combined with
Ogasahara, with Appellants’ countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 1, 2, 4-13 and 21-28 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
The Primary 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)(1)(iv).
AFFIRMED

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