Ex Parte He et al

Patent Trial and Appeal Board

Nov 15, 2017

11290064 (P.T.A.B. Nov. 15, 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.
1302-139 7266
EXAMINER
PAK, HANNAH J
ART UNIT PAPER NUMBER
1764
MAIL DATE DELIVERY MODE
11/290,064 11/30/2005 Lingyun He
52774 7590 11/16/2017
MOMENTIVE PERFORMANCE MATERIALS INC.
c/o Dilworth & Barrese, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
11/16/2017 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 LINGYUN HE,
DONALD W. WHISENHUNT JR., JEFFREY I. MELZER,
ANDREA KEYS EODICE, BRET CHISHOLM,
CHRISTOPHER M. CARTER, SHIU-CHIN H. SU,
KENDALL L. GUYER, and MATTHEW M. HUNTER
Appeal 2015-008148
Application 11/290,064
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 52—64. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
According to the Appellants, “[a] variety of compositions are known for
commercial applications to prepare metal surfaces.” Spec. 13. For example, the
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Application 11/290,064
Appellants disclose that chromium and heavy metal phosphate conversion coatings
are used in commercial applications to prepare metal surfaces prior to painting
operations. Growing concerns, however, are said to exist regarding the toxicity
profile of chromium and the pollution effects of chromates, phosphates, and other
heavy metals discharged into waterways from waste streams of those industrial
processes. Spec. 13. Thus, the Appellants disclose that “there is a need in the art
to provide an effective treatment to provide dried in place conversion or
passivation coating to inhibit metal surface corrosion and enhance adhesion of
paint on or other coatings that may be applied to the surface.” Spec. 14.
The Appellants’ invention is said to relate to “a no-rinse, non-chromate, non-
metal phosphate coating for steel, zinc coated steel, and aluminum surfaces
comprising a stabilizing agent to improve the adhesion of siccative coatings to the
surface and provide enhanced corrosion protection.” Spec. 12. Representative
claim 52 is reproduced below from the Claims Appendix of the Appeal Brief dated
January 20, 2015 (“App. Br.”).
52. An aqueous sol-containing composition for treating metal
surfaces to form a conversion or passivation coating thereon, said
composition consisting essentially of:
(a) colloidal cerium oxide particles in an amount of from
0.001 to 36 % by total weight of the composition;
(b) at least one ureido silane having the structure:
9 OR
...s'r~OK
on
and/or condensation product thereof wherein each R is
independently hydrogen or alkyl group of from 1 to 4 carbon atoms,
in an amount of from about 0.01 to 80% by total weight of the
composition; and,
2
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(c) water in an amount to provide the remainder of the total
weight of the composition.
App. Br. 35.
The claims on appeal stand rejected as follows:
(1) claims 52, 54—56, and 63 under 35 U.S.C. § 103(a) as unpatentable
over Tamori et al.;1
(2) claim 53 under 35 U.S.C. § 103(a) as unpatentable over Tamori in
view of Chane-Ching;2
(3) claims 57, 58, 60-62, and 64 under 35 U.S.C. § 103(a) as
unpatentable over Tamori in view of Chi;3 and
(4) claim 59 under 35 U.S.C. § 103(a) as unpatentable over Tamori in
view of Chi, and further in view of Chane-Ching.
B. DISCUSSION
1. Rejection (1)
a. Claim 52
The Examiner finds Tamori discloses an aqueous dispersion composition
used to provide coatings on metal substrates. Ans. 2.4 The Examiner finds the
composition comprises (1) a polymerization mixture of at least one selected from
an organosilane, a hydrolyzate of the organosilane, and a condensate of the
organosilane and a vinyl monomer, (2) a sol or a colloid of an inorganic
compound, and (3) water. Ans. 3.
The Examiner finds:
1 US 6,953,821 B2, issued October 11, 2005 (“Tamori”).
2 US 6,649,156 Bl, issued November 18, 2003 (“Chane-Ching”).
3 US 4,311,738, issued January 19, 1982 (“Chi”).
4 Examiner’s Answer dated July 10, 2015.
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While Tamori et al. do not mention employing ureidosilane
having a particular structure (i.e., ureidopropyltrimethoxysilane) and
colloidal cerium oxide particles with sufficient specificity to constitute
anticipation within [the] meaning of 35 USC 103, they do disclose
that the organosilane can be selected from, among others things,
gamma-ureidopropyltrimethoxysilane and gamma-
ureidopropylethoxysilane (Col. 4, lines 18-48), to obtain excellent
properties, including hardness, resistance to chemicals, and film
forming properties for treating metal substrates (Col. 5, lines 5-15).
Tamori et al. also disclose that the colloid of an inorganic compound
can be selected from, among other things, cerium oxide (Ce02)
particles, and is added to impart desired characteristics of the coating
film for metal substrates (Col. 19, lines 55-60).
Ans. 3.
Based on the foregoing, the Examiner concludes:
[I]t would have been obvious to one of ordinary skill in the art to
select the claimed specific ureidosilane and colloidal cerium oxide
particles as one of the organosilanes and sol or colloidal inorganic
compounds in the aqueous dispersion composition suggested by
Tamori et al., with a reasonable expectation of successfully obtaining
desired properties useful for treating metal substrates.
Ans. 3.
The Appellants argue that the claims on appeal require a composition that is
capable of forming a conversion or passivation coating on a metal surface. App.
Br. 5—6. According to the Appellants, the coating compositions disclosed in
Tamori “are incapable of functioning as conversion/passivation coatings on the
surface of metals.” App. Br. 7 (emphasis omitted). More specifically, the
Appellants direct our attention to the following disclosure in Tamori:
The coating specification varies depending on the kind and state
of substrate and the coating method. For example, in the case of the
metallic substrate, an undercoat layer such as a primer or a sealer is
provided, if rust prevention is required. . . .
4
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The undercoat layers include a filler-free primer used for the
purposes of securing adhesion to the substrate or the coating
composition, preventing rust, preventing efflorescence, preventing the
permeation of water, and so forth, and a filler-containing sealer used
for the purpose of decorating the appearance of the coating film, in
addition to the above-mentioned purposes. There is no particular
limitation on the kinds of primer and sealer, which can be selected
according to the kind of substrate, the purpose of use and so forth.
App. Br. 14 (quoting Tamori, col. 24,11. 27—31, 42—51 (emphasis omitted)).
Based on that disclosure in Tamori, the Appellants argue that Tamori clearly
teaches that “when it is desired to prevent rust in the case of a metallic substrate, an
undercoat layer as a primer or sealer is to be applied to the metal surface.” App.
Br. 14 (footnote omitted). Thus, the Appellants argue that one of ordinary skill in
the art would understand that the coating compositions disclosed in Tamori “are
not themselves capable of functioning as rust preventatives, such being the role of
the undercoat layer.” App. Br. 14—15.
The Appellants’ arguments are not persuasive of reversible error. The
claims on appeal are directed to a composition “for treating metal surfaces to form
a conversion or passivation coating thereon.” App. Br. 35. According to the
Appellants, a conversion or passivation coating is “a coating that inhibits surface
corrosion of metals and/or enhances adhesion of paint or other coatings to metal
surfaces such as steel and aluminum.” App. Br. 3 (citing Spec. 4—7) (emphasis
added). Significantly, the claims on appeal do not limit “inhibit[ing] surface
corrosion of metals” to inhibiting the formation of rust.
5
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Application 11/290,064
Tamori discloses that exemplary metal substrates include iron, aluminum,
and stainless steel.5 Tamori, col. 24,11. 4—5. Tamori discloses that the inventive
compositions exhibit, inter alia, “resistance to alkalis, resistance to organic
chemicals, resistance to moisture, [and] resistance to weather.” Tamori, col. 32,11.
33—40; see also Ans. 3^4 (finding that Tamori teaches that “their aqueous
dispersion composition is excellent in resistance to organic chemicals and alkalis”
and is “useful for coating metal substrates”). Moreover, Tamori discloses that the
dispersion compositions may be included in the primer. Tamori, col. 24,11. 58—61.
Based on the foregoing, a preponderance of the evidence supports a finding that
Tamori’s compositions, which are resistant to alkalis, organic chemicals, moisture,
and weather, are capable of preventing corrosion on at least aluminum and
stainless steel surfaces.
The Appellants also argue that of the approximately 70 silane species
disclosed in Tamori, “only two, 3-ureidopropyltrimethoxysilane and 3-
ureidopropyltriethoxysilane, come within the genus of ureido silanes of
Appellants’ claims.” App. Br. 16 (emphasis omitted). Similarly, the Appellants
argue that of the approximately 100 inorganic powder species disclosed in Tamori,
“only one is cerium oxide which in colloidal form is recited in Appellants’ claims.”
App. Br. 17 (emphasis omitted). Therefore, the Appellants argue that Tamori fails
to suggest the claimed composition.
The Appellants’ argument is not persuasive of reversible error. As stated in
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), the
fact that the prior art “discloses a multitude of effective combinations does not
5 The Appellants contend that “[i]n the technical sense, of the three metallic
substrates disclosed in Tamori et al., only one, iron, is subject to ‘rust.’” App. Br.
14, n.8.
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render any particular formulation less obvious.” This is especially true here
because the compositions disclosed in Tamori are said to exhibit resistance to
alkalis, organic chemicals, and moisture (i.e., factors related to surface corrosion of
metals). See Merck, 874 F.2d at 807; see also Ans. 10-11.
The Appellants acknowledge the application of Merck to the facts of this
case. See App. Br. 19. Nonetheless, the Appellants argue that the Examiner’s
conclusion of obviousness is based on an “obvious to try” rationale. App. Br. 19.
Relying on Leo Pharm. Prods., Ltd. v Rea, 723 F.3d 1346 (Fed. Cir. 2013), the
Appellants argue that the numerous combinations in Tamori would not have
rendered the Appellants’ claimed composition “obvious to try.” App. Br. 20—21.
The facts in Leo are inapposite to the facts in this case. In Leo, the claimed
pharmaceutical composition was rejected based on a combination of three prior art
references. Leo, 723 F.3d at 1351. In this case, the Examiner rejects the claimed
composition based on a single prior art reference (i.e., Tamori) which discloses the
claimed components.6 We recognize that Tamori discloses numerous examples for
the organosilane and the inorganic compound. However, in contrast to Leo, we
find one of ordinary skill in the art would have understood that each of the
organosilanes and each of the inorganic compounds disclosed in Tamori would be
suitable for use in the disclosed coating. See Ans. 9.
6 Tamori discloses that “[sjpecific examples” of the organosilane represented by
formula (I) (Tamori, col. 4,1. 17) include “3-ureidopropyltrimethoxysilane and 3-
ureidopropyltriethoxysilane” (Tamori, col. 4,11. 48-49). See Ans. 9. Moreover,
Tamori discloses that “[cjomponent (F) is a powder and/or a sol or a colloid of an
inorganic compound” (Tamori, col. 19,11. 54—55) and “[sjpecific examples of
compounds constituting components (F) include . . . CeCE . . .” (Tamori, col. 19,11
59-61). See Ans. 9.
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The Appellants argue that Tables 2A and 2B in the Specification show that
the addition of a silane, such as the silanes listed in Tamori, that are outside the
scope of the claimed ureido silane component do not inhibit surface corrosion of
metals. See App. Br. 11. More specifically, the Appellants argue that gamma-
aminopropyltriethoxysilane (i.e., an aminosilane listed in Tamori) in combination
with Tamori’s colloidal cerium oxide particles and gamma-
ureidopropyltrimethoxysilane has “the effect of essentially canceling out the
conversion/passivation usefulness of the coating compositions.”7 App. Br. 11, n.6.
According to the Appellants, Table 2B8 shows that formulations C2, D2, and
E2 (i.e., compositions containing a mixture of ureidopropyltrimethoxysilane,
aminopropyltriethoxysilanes, and colloidal cerium oxide particles, colloidal silica
particles, and water) exhibit “a significant loss of conversion/passivation
properties” on hot dipped galvanized steel (HDG) panels. App. Br. 26. Table 2B,
however, also reports results for formulations C2, D2, and E2 on cold rolled steel
(CRS) panels. App. Br. 25. Significantly, the Appellants do not address whether
formulations C2, D2, and E2 inhibit corrosion resistance on CRS panels. In that
regard, we note the claims on appeal are not limited to a particular metal surface.
7 The Appellants also argue that gamma-aminopropyltriethoxysilane is excluded by
the phrase “consisting essentially of’ in claims 52—64 because it renders the
claimed sol-containing coating composition unsuitable for its intended purpose.
App. Br. 11; see also In re Herz, 537 F.2d 549, 551—52 (CCPA 1976) (the “phrase
‘consisting essentially of limits the scope of a claim to the specified ingredients
and those that do not materially affect the basic and novel characteristic(s) of a
composition”). For the reasons discussed infra, the Appellants’ argument is not
supported by a preponderance of the evidence. Moreover, the Appellants have not
directed us to any portion of Tamori teaching that gamma-
aminopropyltriethoxysilane is a required component in the disclosed compositions.
8 App. Br. 25.
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In an attempt to rebut the prima facie case of obviousness, the Appellants
direct our attention to Tables 1 A, IB, 2 A, and 2B of the Specification. App. Br.
22—27. According to the Appellants, “Table 1A contains one composition within
the scope of Appellants’ claims (formulation El).”9 App. Br. 23. The Appellants
argue that Table IB shows “superior performance, i.e., the least creep, for
Appellants’ claimed formulation El over all of the other coating compositions.”
App. Br. 24.
As for Table 2 A, the Appellants argue that formulation A2 is the only
composition within the scope of the Appellants’ claims.10 App. Br. 27. The
Appellants argue that “the experimental creep measurement data in Table 2B
show, Appellants’ formulation A2 far outperformed all of the other tested
formulations.”* 11 App. Br. 27.
Significantly, the Appellants do not direct us to any evidence establishing
that the results reported in Tables IB and 2B would have been “unexpected.” See
In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir, 1997) (attorney argument is not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“Mere
argument or conclusory statements in the specification does not suffice.”). To the
extent that the decrease in creep exhibited by formulations El and A2 on certain
9 According to Table 1 A, formulation El is 5% ureidopropyltrimethoxysilane, 2%
colloidal cerium oxide (20%), and 93% water. App. Br. 22.
10 According to Table 2A, formulation A2 is 2% cerium oxide (20%), 2.5%
gamma-ureidopropyltrimethoxysilane, 1% active colloidal silica (12%), and 94.5%
water. App. Br. 25.
11 As discussed above, Table 2B reports results for hot dipped galvanized steel
(HDG) panels and cold rolled steel (CRS) panels. The Appellants, however, only
discuss the results for the HDG panels. As noted above, the claims on appeal are
not limited to a particular metal surface.
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metal surfaces is an improvement over other prior art compositions, a mere
improvement is not sufficient to establish that the results would have been
“unexpected” by one of ordinary skill in the art. See In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973) (in order for a showing of‘“unexpected results’” to be
probative evidence of non-obviousness, the applicant must establish that the
difference between the results obtained through the claimed invention and those of
the prior art would not have been expected by one skilled in the art at the time of
invention).
Moreover, the Appellants’ showing is not commensurate in scope with the
claims on appeal. As explained by the Examiner, the claims recite compositions
containing 0.001—36% by weight of colloidal cerium oxide particles and
ureidosilanes, other than the ureidopropyltrimethoxysilane in formulation El in
Table 1A and gamma-ureidopropyltrimethoxysilane in formulation A2 in Table 2A
and formulation C in Su Table 1 A,12 in an amount of 0.01—80% by weight. Ans.
12. In response, the Appellants point out that claim 55 is directed to a single
ureido silane species, i.e., y-ureidopropyltrimethoxysilane. Reply Br. 10.13
However, claim 55, by virtue of its dependence on claim 52, encompasses broad
amounts of that ureido silane species as well as broad amounts of any and all types
of colloidal cerium oxide particles.
12 See Declaration of Shiu-Chin H. Su dated December 19, 2012 (“Su Deck”). The
Appellants compare the results of Panel Set 2 and Panel Set 3 from Table IB of the
Su Declaration to show unexpected results. App. Br. 28. According to the Su
Declaration, Panel Set 2 was coated with Sample A. Su Deck 11. Sample A is
said to be a combination of methyltrimethoxysilane and titanium oxide. Su Deck
9; App. Br. 28. Panel Set 3 was coated with Sample B. Su Deck 11. However,
Sample C, not Sample B, is said to be representative of the Appellants’ claimed
invention. SuDecl. 9—10.
13 Reply Brief dated September 9, 2015.
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The Examiner also finds that the Appellants “have not shown that the
alleged unexpected properties applicable to the specific compositions exemplified
in the Specification and [Su] declaration are applicable to the myriad of other
materially different compositions embraced by the claims.” Ans. 12. That is, the
Appellants have not shown that a trend exists in the exemplified data. See In re
Kollman, 595 F.2d 48, 56 (CCPA 1979) (in certain instances, the unobviousness of
a broader claimed range can be proven by a narrower range of data where “one
having ordinary skill in the art may be able to ascertain a trend in the exemplified
data which would allow him to reasonably extend the probative value thereof’).
On balance, a preponderance of the evidence weighs most heavily in favor
of the Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection of
claims 52, 54, 55, and 63 is sustained.14
b. Claim 56
Claim 56 depends from claim 52 and recites that the composition is
“substantially free of chromium and phosphate.” App. Br. 36. The Appellants
argue that Tamori teaches that chromium-containing and phosphate-containing
materials are useful in the disclosed coating compositions. App. Br. 30—31. In
particular, the Appellants direct our attention to:
alkylphosphate ester salt surfactants/emulsifiers at col. 8, lines 47-48
and phosphate dispersing agents at col. 21, line 27; chromium oxide
(CrCE) and chromium silicide (CrSf) inorganic powder Components
F at col. 19, lines 62 and 67, respectively; and, chromium oxide,
chrome green, cobalt chrome green, chrome yellow and chrome
vermillion fillers/pigments at col. 20, lines 49-64.
App. Br. 31.
14 The Appellants do not present arguments in support of the separate patentability
of any of claims 54, 55, and 63.
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Application 11/290,064
The Appellants’ argument is not persuasive of reversible error. The
surfactants disclosed in Tamori are not limited to alkylphosphate ester salts but
rather include other surfactants that do not contain phosphate. See Tamori, col. 8,
11. 45—62. Likewise, the dispersing agents are not limited to phosphate dispersing
agents (see Tamori, col. 21,11. 10-29), component (F) is not limited to inorganic
compounds that contain chromium (see Tamori, col. 19,1. 53—col. 20,1. 11), and
the disclosed fillers are not limited to chromium-containing fillers (see Tamori, col.
20,1. 41—col. 21,1. 9). Thus, one of ordinary skill in the art would have understood
that the coating compositions disclosed in Tamori include compositions
substantially free of chromium and phosphate as recited in claim 56.
The § 103(a) rejection of claim 56 is sustained.
2. Rejections (2) and (4)
Claim 53 depends from claim 52 and recites “wherein colloidal cerium oxide
particles (a) are selected from the group consisting of colloidal cerium oxide nitrate
particles and colloidal cerium oxide acetate particles.” App. Br. 35.
The Appellants argue:
In discussing the technological background of their invention,
Chane-Ching states that “cerium oxide sols can be used in a multitude
of applications such as . . . anticorrosion coatings and paints” (col. 1,
11. 14-31). Chane-Ching go on to describe the invention as a
composition comprising a sol or a colloidal dispersion of cerium oxide
particles, optionally containing residual amounts of bound or absorbed
ions such as nitrates, acetates, citrates or ammonium ....
App. Br. 31—32.
The Appellants argue “[tjhere is nothing in Chane-Ching to suggest its
combination with Tamori.” App. Br. 32; see also App. Br. 34 (relying on the
arguments made in response to the rejection of claim 53).
According to the Examiner,
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Given the above usefulness and advantages of using the
claimed colloidal cerium oxide nitrate particles taught by Cha[n]e-
Ching, it would have been obvious to one of ordinary skill in the art to
employ such specific colloidal cerium oxide particles taught by
Cha[n]e-Ching as one of the colloidal cerium oxide particles in the
aqueous sol dispersion of the type suggested by Tamori et al.
Non-Final Act. 6.15
In the Appeal Brief, the Appellants do not direct us to any error in the
Examiner’s findings of fact or conclusion of obviousness. In the Reply Brief,
however, the Appellants argue for the first time on appeal that Chane-Ching “does
not disclose a metallic substrate amongst the myriad possibilities encompassed by
the generic term‘substrate.’” Reply Br. 12. Therefore, the Appellants argue there
is nothing in Chane-Ching to suggest combining the disclosed colloidal cerium
oxide particles with Tamori’s coating composition “such as would provide a
conversion/passivation coating composition, i.e., a composition which by
definitions is applied directly to the surface of a metallic substrate.” Reply Br. 12.
The Appellants’ argument is not responsive to an argument raised in the
Examiner’s Answer, and the Appellants do not show good cause why their
argument could not have been raised in the Appeal Brief. Therefore, the
Appellants’ argument is untimely and will not be considered on appeal. See 37
C.F.R. §41.41(b)(2) (2011).
Rejections (2) and (4) are sustained.
3. Rejection (3)
The Appellants do not direct us to any error in the Examiner’s factual
findings or legal conclusions in rejection (3). See App. Br. 32—33. Rather, the
15 Non-Final Action dated August 13, 2013 (incorporated by reference into the
Final Office Action dated May 19, 2014).
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Appellants argue that the Su Declaration shows that a coating composition within
the scope of the claims on appeal exhibits “far superior corrosion resistance”
compared to a coating composition according to the combined teachings of Tamori
and Chi. App. Br. 33. For the reasons discussed above, the Appellants have failed
to show that the alleged improved corrosion resistance demonstrates that the
claimed invention exhibits “unexpected” results.16 See Freeman, 474 F.2d at 1324.
Rejection (3) is sustained.
C. DECISION
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)(1).
AFFIRMED
16 As discussed above, Sample C is said to be representative of the Appellants’
claimed invention. SuDecl. 10. On appeal, the Appellants do not compare the
results of Sample C to the prior art compositions.
14