Ex Parte Graves et al

Patent Trial and Appeal Board

Sep 29, 2017

13526860 (P.T.A.B. Sep. 29, 2017)

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.
13/526,860 06/19/2012 Matthew R. Graves GIPH0142PUS 7978
22045 7590 10/03/2017
RROOKS KTTSHMAN P C
EXAMINER
1000 TOWN CENTER KRUER, KEVIN R
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
docketing @brookskushman. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW R. GRAVES and KELLY L. MELAND
Appeal 2016-0020991
Application 13/526,8602
Technology Center 3600
Before WILLIAM V. SAINDON, PHILIP J. HOFFMANN, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134 from a rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Specification (“Spec.,” filed June 19,
2012), Corrected Appeal Brief (“Appeal Br.,” filed June 1, 2015), and
Reply Brief (“Reply Br.,” filed Nov. 24, 2015), as well as the Examiner’s
Non-Final Office Action (“Non-Final Act.,” mailed Oct. 6, 2014) and
Answer (“Ans.,” mailed Sept. 15, 2015).
2 Appellants identify Global IP Holdings, LLC as the real party in interest.
Appeal Br. 3.
Appeal 2016-002099
Application 13/526,860
SUBJECT MATTER ON APPEAL
The invention “relates in general to the field of plastic parts and, more
particularly, to plastic parts having a layered decorative, colored-metal finish
which may be used in a vehicle interior.” Spec. 11. Claims 1,15, and 18
are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A plastic part having a layered, decorative, colored-metal
finish, the part comprising:
a plastic substrate;
a base coat layer overlying the substrate;
a continuous decorative metal layer having a color and
overlying the base coat layer;
an intermediate, color layer having coloring agents and
overlying and in contact with the decorative metal layer, the
color layer including a UV absorber sufficient to stabilize the
coloring agents of the color layer by absorbing UV light without
adversely affecting the color of the color layer and wherein the
color of metal layer is the same or similar to the color of the color
layer; and
a clear top coat layer overlying, in contact with, and
protecting the color layer.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Leininger US 7,297,397 B2 Nov. 20,2007
Richert et al. (“Richert”) US 2012/0003487 A1 Jan. 5, 2012
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Application 13/526,860
REJECTIONS3
The Examiner rejects the claims on appeal as follows:
claims 1—20 under 35 U.S.C. § 103(a) as unpatentable over Leininger
and Richert; and
claims 12 and 13 under § 112, fourth paragraph, as being of improper
dependent form.
ANALYSIS
Obviousness
Independent claims 1, 15, and 18 and dependent claims 4—9, 17, and 20
In rejecting independent claim 1, the Examiner finds that Leininger
discloses the plastic part substantially as claimed. Non-Final Act. 3.
According to the Examiner, although Leininger discloses a laminate having
a top coat 10, Leininger does not disclose that the top coat comprises an
intermediate color layer having coloring agents and UV absorbers overlying
the decorative metal layer and a clear top coat layer overlying and protecting
the color layer. Id. The Examiner further finds that Richert teaches a
multicoat effect paint comprising a basecoat including a thermally curable
binder, pigment, and a UV absorber, and that Richert further teaches a UV
curable clearcoat. Id. The Examiner then determines it would have been
obvious to apply Richert’s coating to Leininger’s laminate to provide the
laminate with an aesthetic topcoat. Id.
As an initial matter, Appellants argue Richert is not analogous art to
the claimed invention. Appeal Br. 10—11, 14; Reply Br. 4—5. More
3 The Examiner has withdrawn the rejection of claims 1—20 under 35
U.S.C. § 112, second paragraph. Ans. 6.
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particularly, Appellants contend Richert is concerned solely with corrosion
of a metallic substrate and therefore has no teaching relevant to the field of
coating plastic parts and is not reasonably pertinent to the problem faced by
the inventors of the present invention. Appeal Br. 11, 14.
Two separate tests define the scope of analogous prior art: (1) whether
the reference is from the same field of as the inventor’s endeavor, regardless
of the problem addressed and, (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). With regard to the test implicating field
of endeavor, the Examiner finds the present invention and Richert are in the
same field of endeavor, namely decorative finishes for vehicular
components. Ans. 8. Indeed, Appellants’ Specification explains that the
invention relates to “plastic parts having a layered, decorative, colored-metal
finish which may be used in a vehicle interior” (Spec. 11), and Richert
describes multicoat color systems for automotive components (Richert H 1—
11, 136).
Appellants assert the field of endeavor for the present invention is
coating plastic parts, whereas the field of endeavor of Richert is corrosion
resistance for metallic substrates. Appeal Br. 14. We disagree. Although
Appellants’ Specification references plastic parts, the Specification further
describes that “the term ‘substrate’ refers to any flexible, semi-flexible or
rigid single or multilayer component having a surface to which a decorative
coating is or can be applied by the methods described herein such as,
without limitation, polymers and other plastics, as well as composite
materials.” Spec. 113. Similarly, Richert teaches a preference for
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substrates at least partly composed of metals, but also teaches the “substrates
may be composed of any of a very wide variety of materials and
combinations of materials,” including polymeric substrates adjacent to the
metallic substrates. Richert 1134. As such, the fields of endeavor for the
present invention and Richert are not limited to plastic and metal substrates,
respectively, and Appellants do not apprise us of error in the Examiner’s
finding that the field of endeavor for both the present invention and Richert
is decorative finishes for vehicular components. Given that we see no error
in the Examiner’s finding that the present invention and Richert are in the
same field of endeavor, and thereby analogous art, we need not consider
whether Richert is reasonably pertinent to the particular problem with which
the inventors are involved pursuant to the second test for determining
analogous art.
Appellants also argue that the Examiner culls radiation-cured layer 6
of Leininger and ignores leveling layer 4, despite Leininger’s teaching of an
interdependence between layers 4 and 6. Appeal Br. 13. Appellants’
argument is not persuasive because it is not responsive to the Examiner’s
rejection. As the Examiner explains, the Examiner is not proposing to
separate radiation-cured layer 6 from leveling layer 4 because independent
claim 1 does not require such a separation. Ans. 6—7. Independent claim 1
uses the transitional phrase “comprising,” which is inclusive or open-ended
and does not exclude additional, unclaimed elements, such as leveling
layer 4. See, e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed. Cir. 1977) (citing In re Baxter, 656 F.2d 679, 686 (CCPA 1981)
(“‘Comprising’ is a term of art used in claim language which means that the
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Application 13/526,860
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim.”).
We are also unpersuaded by Appellants’ naked assertion that the
Examiner’s reason for combining the teachings of Leininger and Richert,
i.e., to provide the laminate with an aesthetic topcoat, is conclusory and
lacks rational underpinning. Appeal Br. 14—15; Reply Br. 4. Richert’s
basecoat includes at least one color or effect pigment (Richert | 68), and the
Examiner’s reason for modifying Leininger’s laminate to include Richert’s
coating is supported by rational underpinnings. See also KSR Ini 7. Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (explaining a combination of known
elements performing their established functions that yields no more than
predictable results is obvious).
In view of the foregoing. Appellants do not apprise us of error in the
Examiner’s rejection of independent claim 1, and we sustain the rejection.
Appellants rely on the same arguments as independent claim 1 for
independent claims 15 and 18 (Appeal Br. 21, 22), and we sustain the
rejection of independent claims 15 and 18 for the same reasons as
independent claim 1. Appellants do not present arguments for claims 4-9,
17, and 20 apart from the arguments for the independent claims {id. at 16—
17, 21, 22), and we sustain the rejection of claims 4-9, 17, and 20 for the
same reasons as the independent claims.
Claims 2, 16, and 19
Claim 2 recites, “wherein the base coat layer is a PVD base coat layer
and the metal layer is a PVD layer.” Appeal Br., Claims App. The
Examiner finds that Leininger discloses a PVD base coat layer (Non-
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Final Act. 4 (citing Leininger 7:42 et seq.)) and a PVD metal layer (id.
(citing Leininger 8:24 et seq.)). Alternatively, the Examiner determines that
claim 2 recites the method for making the base coat layer and metal layer,
and that there is no indication that the recited method results in a material
difference between the claimed base coat and metal layers and Leininger’s
base coat and metal layers. Id.
At the outset, we note Appellants do not challenge the Examiner’s
finding that Leininger discloses a PVD base coat layer and a PVD metal
layer. Moreover, we are unpersuaded that the Examiner erred in
determining that the recited method of making the layers, i.e., PVD, does not
patentably distinguish the claimed layers from Leininger’s layers.
Appellants acknowledge that claim 2 recites a product-by-process limitation
and argue that an obviousness rejection of such a claim is improper.
Appeal Br. 15. According to Appellants, there is no prior art product that
anticipates the claim, and the Examiner cannot rely on a combination of
references to reject a claim including a product-by-process limitation. Id.
Contrary to Appellants’ argument, there is no prohibition against
rejecting a claim including a product-by-process limitation for obviousness.
According to our reviewing court, if the product in a product-by-process
limitation is the same as or obvious from a product of the prior art, the
limitation is not patentably distinct from the prior art even though the prior
art product was made by a different process. In re Thorpe, 111 F.2d 695,
697 (Fed. Cir. 1985). Once the Examiner has made a prima facie case that
the claimed product and the product of the prior art reasonably appear to be
the same, the burden shifts to Appellants to prove the prior art product does
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not necessarily or inherently possess the characteristics of the claimed
product. Id. at 698.
Here, the recited process, i.e., PVD, defines the base coat layer and
the metal layer. The Examiner finds that Leininger discloses the claimed
base coat and metal layers, and that Leininger’s radiation-cured layer 6 and
metal layer 8 appear to be the same as the claimed base coat layer and metal
layer, respectively. Indeed, Leininger’s radiation-cured layer 6 overlies a
substrate, and Leininger teaches a decorative metal layer 8 overlying
radiation-cured layer 6. Leininger, 2:38-49, Pig. 1. As such, the Examiner
findings are reasonable, and Appellants have the burden of showing
Leininger’s radiation-cured layer 6 and metal layer 8 do not possess the
characteristics of PVD layers. Appellants do not make such showing and
consequently fail to carry their burden.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s rejection of claim 2, and we sustain the rejection. Claims 16 and
19 recite the same limitation as claim 2 (Appeal Br., Claims App.), and
Appellants rely on the same arguments as claim 2 for claims 16 and 19 (id.
at 21, 22). We, therefore, sustain the rejection of claims 16 and 19 for the
same reasons as claim 2.
Claim 3
Claim 3 recites, “wherein the metal layer is a VM layer.” Appeal Br.,
Claims App. The Examiner finds Leininger discloses a VM metal layer.
Non-Pinal Act. 4 (citing Leininger 8:24 et seq.). Alternatively, the Examiner
determines that claim 3 recites the method for making the metal layer, and
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Application 13/526,860
that there is no indication that the recited method results in a material
difference between the claimed metal layer and Leininger’s metal layer. Id.
Appellants do not challenge the Examiner’s finding that Leininger
discloses a VM metal layer, but argue that the Examiner’s obviousness
rejection of claim 3, which recites a product-by-process limitation, is
improper for the same reasons as claim 2. Appeal Br. 16. For the reasons
discussed above in regard to claim 2, Appellants do not apprise us of error in
the Examiner’s rejection of claim 3, and we sustain the rejection.
Claim 10
Claim 10 recites, “wherein the base coat layer is in contact with the
substrate.” Appeal Br., Claims App. The Examiner relies on Leininger for
disclosing the subject matter of claim 10. Non-Final Act. 5.
Appellants argue that the Examiner relies on Leininger’s radiation-
cured layer 6 for disclosing the base coat layer in independent claim 1, but
relies on leveling layer 4 for disclosing the base coat layer in claim 10,
which depends from independent claim 1. Appeal Br. 18. According to
Appellants, the Examiner improperly picks and chooses various teachings of
Leininger and uses hindsight to construct the claimed subject matter. Id.
Contrary to Appellants’ argument, the Examiner is not relying on
leveling layer 4 for disclosing the base coat layer. Rather, the Examiner
relies on Leininger’s substrate 1 and leveling layer 4, collectively, for
disclosing the claimed substrate. Non-Final Act. 5; Ans. 10.
Furthermore, the Examiner is not proposing to modify the teachings
of Leininger to disclose the subject matter of claim 10, but rather the
Examiner is construing the language of claim 10 and applying it to
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Leininger. Namely, the Examiner construes the claim term “substrate” to
include multiple layers, namely Leininger’s substrate 1 and leveling layer 4.
Non-Final Act. 5; Ans. 10. In doing so, the Examiner determines that
Appellants’ Specification supports the construction of “substrate” to include
multiple layers because the Specification describes the substrate may be any
multilayer component. Ans. 10. Indeed, as set forth above in regard to
independent claim 1, paragraph 13 of the Specification explains “the term
‘substrate’ refers to any flexible, semi-flexible or rigid single or multilayer
component.” Apart from arguing paragraph 13 does not explain that the
substrate can be a multilayer component (Reply Br. 7), Appellants do not
explain why the Examiner’s construction of “substrate” to include multiple
layers is erroneous.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s rejection of claim 10. We, therefore, sustain the rejection.
Claim 11
Claim 11 recites, “wherein the metal layer is in contact with the base
coat layer.” Appeal Br., Claims App. The Examiner relies on Leininger for
disclosing the subject matter of claim 11. Non-Final Act. 5 (citing Leininger
6:20 et seq.).
Appellants argue that the Examiner relies on Leininger’s leveling
layer 4 for disclosing the base coat layer in regard to claim 10, but relies on
radiation-cured layer 6 for disclosing the base coat layer in claim 11.
Appeal Br. 18. As set forth above in regard to claim 10, the Examiner is not
relying on leveling layer 4 for disclosing the claimed base coat layer, but
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rather relies on leveling layer 4 in conjunction with substrate 1 for disclosing
the claimed substrate. Non-Final Act. 5.
Nevertheless, in regard to claim 11, the Examiner relies on
Leininger’s radiation-cured layer 6 being adhered to metal layer 8 for
disclosing the claimed subject matter. Appellants do not address this finding
and, consequently, do not apprise us of error in the Examiner’s rejection.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s rejection of claim 11. We, therefore, sustain the rejection.
Claim 12
Claim 12 recites, “wherein the color layer is in contact with the metal
layer.” Appeal Br., Claims App. The Examiner finds that “Leininger
teaches a top coat may be applied in contact with the metal layer (col 8, lines
50+) and the secondary reference teaches a top coat comprising a color layer
and a top coat layer is in contact with the color layer.” Non-Final Act. 5.
Appellants argue that the Examiner’s rejection does not address the
language of the claim. Appeal Br. 18; Reply Br. 6. We disagree. In the
Answer, the Examiner specifically determines that the combined teachings
of Leininger and Richert would result in Richerf s color layer being in
contact with Leininger’s metal layer, as claimed. Ans. 11.
Appellants do not address the Examiner’s determination set forth in
the Answer, and, therefore, do not apprise us of error in the Examiner’s
rejection. Accordingly, we sustain the rejection of claim 12.
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Claim 13
Claim 13 recites, “wherein the top coat layer is in contact with the
color layer.” Appeal Br., Claims App. Like claim 12, Appellants argue that
the Examiner’s rejection fails to focus on the language of the claim 13.
Appeal Br. 19. This argument is similarly unpersuasive here because the
Examiner finds that Richert teaches a top coat layer in contact with a color
layer, as claimed. Non-Final Act. 5. Given that Appellants do not apprise
us of error, we sustain the Examiner’s rejection of claim 13.
Claim 14
Claim 14 recites, “wherein the metal layer is in contact with the base
coat layer and the color layer.” Appeal Br., Claims App. To reject claim 14,
the Examiner relies on the analysis for claims 12 and 13. Non-Final Act. 5.
Appellants argue the rejections for claims 12 and 13 are not
transferrable to claim 14 because there is no teaching of a metal layer in
contact with a base coat layer and a color layer in the cited references.
Appeal Br. 20-21. Appellants’ argument is not persuasive because it does
not address the Examiner’s rejection. The Examiner is not relying a
particular reference to teach the claimed subject matter, but rather, as
explained in the Answer, the Examiner is relying on the combined teachings
of Leininger and Richert. Ans. 11. Appellants do not address the
Examiner’s proposed combination, and, therefore, do not apprise us of error.
We sustain the rejection of claim 14.
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Improper Dependent Form
Appellants concede this rejection. Appeal Br. 25. Accordingly, we
summarily sustain the rejection.
DECISION
The Examiner’s decision to reject claims 1—20 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s decision to reject claims 12 and 13 under 35 U.S.C.
§112, fourth paragraph, 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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