Ex Parte Matzdorf et al

Board of Patent Appeals and Interferences

Apr 30, 2010

11116165 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CRAIG A. MATZDORF and WILLIAM C. JR., NICKERSON
____________________

Appeal 2009-009912
Application 11/116,1651
Technology Center 1700
____________________

Decided: April 30, 2010
____________________

1 As Appellants point out at page 4 of the Appeal Brief, the subject matter in
this appeal is related to the subject matter in U.S. Patent Application Nos.
11/058,533 (filed Feb. 15, 2005), 11/058,715 (filed Feb. 15, 2005),
11/116,166 (filed Apr. 21, 2005), and 11/076,106 (filed Feb. 15, 2005).

Before: MICHAEL P. COLAIANNI, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.
Appeal 2009-009912
Application 11/116,165

2

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 17 through 40. Claims 1 through 16, the
other claims pending in this application, stand withdrawn from consideration
by the Examiner. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
The subject matter on appeal is directed to compositions for coating
metal substrates. Claim 17 is illustrative:
17. Compositions for coating metal substrates to
improve the corrosion protection and adhesion bonding
strength of said metal which comprise an acidic aqueous
solution having a pH ranging from about 1.0 to 5.5 and per
liter of said solution from about 0.01 to 100 grams of at least
one trivalent chromium compound, from about 0.01 to 24
grams of at least one fluorozirconate, an effective amount of at
least one water-soluble corrosion inhibitor selected from the
group consisting of triazobes, benzimidazoles, benzazoles,
benzoxazoles and mixtures of said inhibitors, from about 0.0
to 20 grams of divalent zinc compounds, from about 0.0 to 20
grams of surfactants, from about 0.0 to 20 grams of
thickeners, and effective amounts of a stabilizing compound
selected from the group consisting of polyhydroxy
compounds, carboxylic compounds and mixtures of
polyhydroxy and carboxylic compounds.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Lipinski US 4,138,353 Feb. 6, 1979
Redmore US 4,235,838 Nov. 25, 1980
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Crotty US 4,359,348 Nov. 16, 1982
Palmer US 4,719,035 Jan. 12, 1988
Guhde US 4,971,635 Nov. 20, 1990
Komiyama US 6,447,620 B1 Sep. 10, 2002
Gonzalez '427 US 2005/0126427 A1 Jun. 16, 2005
Gonzalez '062 WO 03/056062 Jul. 10, 2003

Claims 17-40 of copending U.S. Patent Application No. 11/116,166, filed
April 21, 2005.

The Examiner maintains the following rejections:
1) Claims 17-20, 23, 24, 29, 31, 32, 38, and 39 under 35 U.S.C. §
103(a) as unpatentable over Gonzalez '062, whose English equivalent is
Gonzalez '4272;
2) Claims 33 and 40 under 35 U.S.C. § 103(a) as unpatentable over
Gonzalez '062, and further in view of Palmer;
3) Claims 34 and 35 under 35 U.S.C. § 103(a) as unpatentable over
Gonzalez '062, and further in view of Redmore;
4) Claims 36 and 37 under 35 U.S.C. § 103(a) as unpatentable over
Gonzalez '062, and further in view of Lipinski;
5) Claims 21, 22, 25-28 and 30 under 35 U.S.C. § 103(a) as
unpatentable over Gonzalez '062, and further in view of Guhde as evidenced
by Crotty or Komiyama3;

2 With respect to rejection (1), Appellants do not dispute or question the
Examiner's statement at page 3 of the Answer that Gonzalez '427 (US
2005/0126427 A1) is the "English equivalent" or translation of Gonzalez
'062 (WO 03/056062). Thus, our reference to Gonzalez '062
is to the translation thereof (i.e., Gonzalez '427).
3 As is apparent from page 3 of the Final Rejection (mailed on April 8, 2008)
and pages 2-9 of the Answer, the Examiner has withdrawn the §103(a)
rejection of claims 21, 22, 25-28 and 30 over "Gonzalez, and further in view
of Guhde" and replaced it with this new ground of rejection.
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6) Claims 17-32 and 38-39 are provisionally rejected under
nonstatutory obviousness-type double patenting over claims 17-40 of
copending U.S. Patent Application No. 11/116,166 and Gonzalez '062;
7) Claims 33 and 40 are provisionally rejected under nonstatutory
obviousness-type double patenting over claims 17-40 of copending U.S.
Patent Application No. 11/116,166 and Gonzalez '062, and further in view of
Palmer;
8) Claims 34 and 35 are provisionally rejected under nonstatutory
obviousness-type double patenting as unpatentable over claims 17-40 of
copending U.S. Patent Application No. 11/116,166 and Gonzalez '062, and
further in view of Redmore; and
9) Claims 36 and 37 are provisionally rejected under nonstatutory
obviousness-type double patenting as unpatentable over claims 17-40 of
copending U.S. Patent Application No. 11/116,166 and Gonzalez '062, and
further in view of Lipinski.4

REJECTION (1)
With respect to rejection (1), Appellants' arguments focus on claims
17. Accordingly, we address Appellants' arguments regarding the
rejection with respect to claim 17 only. See 37 C.F.R. § 41.37(c)(1)(vii).

4 With respect to rejections (2) through (9), we note that the Examiner's
statements of the rejections made at pages 5 through 9 of the Answer
applying "Gonzalez" (i.e., Gonzalez '427 as defined by the Examiner at page
3 of the Answer) as a reference is harmless error since it is apparent from
pages 3 through 9 of the Answer that the rejections apply Gonzalez '062
(WO 03/056062) and merely employ Gonzalez '427 (US 2005/0126427 A1)
in the bodies of these rejections as the "English equivalent" or translation
thereof.
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ISSUE
Did the Examiner reversibly err in determining that Gonzalez '062
would have suggested compositions for coating metal substrates comprising,
inter alia, a trivalent chromium compound and a fluorozirconate as required
by claim 17 within the meaning of § 103?
We decide this issue in the negative.
FINDINGS OF FACT
1. The Examiner finds that "Gonzalez teaches using trivalent chromium
in paragraph [0046] and fluorozirconate in paragraph [0075]." (Ans.
11).
2. Gonzalez '062 teaches compositions for treating metal surfaces for,
inter alia, corrosion protection comprising
a) at least one polymer as component A, composed of
aa) at least one amino-containing polymer as component Aa;
ab) at least one aromatic compound as component Ab, being a
phenol or quinone or containing a phenolic or quinonoid
structural unit;
ac) if desired, an aldehyde as component
Ac;
b) water or another solvent suitable for dissolving, dispersing,
suspending or emulsifying the polymer (component A), as
component B;
c) if desired, surface-active compounds, dispersants, suspension
media and/or emulsifiers as component C.

(Gonzalez '427, ¶¶ [0001] and [0021]-[0027]). Gonzalez '062 teaches
that one of the ingredients of component Ab may be a "M+ [having] . . . a
cation with a valence of two or more, preferably . . . Cr(III)." (Gonzalez
'427, ¶ [0046], see also ¶¶ [0040]-[0045]).
3. Gonzalez '062 teaches that
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In one preferred embodiment, the composition of the invention is
used for the treatment of metal surfaces and comprises further to
components A, B and, where appropriate, C:
d) at least one salt, acid or base based on transition metal
cations, transition metal oxo anions, fluorometallates or
lanthanoids as component D, and/or
e) at least one acid selected from the group consisting of
phosphoric acid, sulfuric acid, sulfonic acids, nitric acid,
hydrofluoric acid, and hydrochloric acid, as component E,
and/or
f ) at least one further corrosion inhibitor as component F,
and/or
g) compounds of Ce, Ni, Co, V, Fe, Zn, Zr, Ca, Mn, Mo, W, Cr
and/or Bi as component G, and/or
h) further auxiliaries and additives as component H.

(Gonzalez '427, ¶¶ [0067]-[0072]). In this regard, Gonzalez '062 teaches
that "[s]uitable components D are salts, acids, and bases based on transition
metal cations, transition metal oxo anions, fluorometallates or lanthanoids.
Suitable transition metal cations are, in particular, fluorometallates of
Ti(IV), Zr(IV), Hf(IV) and/or Si(IV), and a particularly suitable lanthanoid
is Ce. Also suitable are tungstates and molybdates." (Gonzalez '427, ¶
[0075]).
ANALYSIS AND CONCLUSION
Appellants argue that
There is no teaching in the Gonzalez reference, for example, to
use a zirconate in combination with trivalent chromium. The
Examiner can not [sic] pick and choose certain compounds from an
unrelated reference to anticipate or suggest the claims after having the
benefit of applicants [sic] disclosure.

The Examiner uses a selective combination of compounds from
the Gonzalez et al. disclosure to suggest that the claimed invention is
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obvious without any reason other than hindsight taken from applicants
specification.

(App. Br. 16).
Contrary to Appellants' arguments, however, the Examiner correctly
finds that "Gonzalez teaches using trivalent chromium in paragraph [0046]
and fluorozirconate in paragraph [0075]." (FF 1). In this regard, Gonzalez
'062 teaches that its composition may comprise, inter alia, Cr(III) (i.e.,
trivalent chromium), and fluorometallates such as Zr(IV) (i.e.,
fluorozirconate). (FF 2 and 3).
In addition, Appellants argue that "Applicants are not using a
polymeric media or composition as taught by Gonzalez" but instead uses an
inorganic composition as required by the claims. (App. Br. 16-17).
We find this argument unpersuasive of reversible error because this
"inorganic" feature is not claimed and thus is not required by claim 17. As
the Examiner indicates, the claim uses the open-ended claim language
“comprising” which would not exclude polymeric media in addition to the
features claimed.
Thus, it follows that the Examiner did not reversibly err in
determining that Gonzalez '062 would have suggested compositions for
coating metal substrates comprising, inter alia, a trivalent chromium
compound and a fluorozirconate as required by claim 17 within the meaning
of § 103.
Accordingly, we sustain the Examiner's rejection (1).
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REJECTIONS (2) through (4)
With respect to rejections (2) through (4), Appellants argue that the
combination of the applied prior art references is improper because "[t]he
Examiner is attempting to pick and choose various components from a
number of unrelated secondary references of Palmer, Redmore and Lipinski,
and combining the teachings of these patents with the primary reference of
Gonzalez." (App. Br. 19).
Appellants, however, do not specifically dispute the Examiner's
findings or reasons stated at pages 5 and 6 in the Answer to combine the
teachings of Palmer, Redmore, or Lipinski with the teachings of Gonzalez
'062 to arrive the inventions recited in the rejected dependent claims of
rejections (2) through (4). Compare Ans. 5-6 with App. Br. 18-20 and Reply
Br. 12-15.
In addition, Appellants repeat arguments made in connection with
rejection (1). (App. Br. 18-20). For the reasons discussed above, we find
these arguments unpersuasive of reversible error.
Accordingly, we sustain the Examiner's rejections (2) through (4).

REJECTION (5)
With respect to rejection (5), Appellants focus their arguments on
claims 21 and 22. (Reply Br. 6-11). Accordingly, we address Appellants’
arguments with respect to claims 21 and 22. See 37 C.F.R. §
41.37(c)(1)(vii). For reasons evident below, we also address the rejection of
claims 25-28 and 30. See 37 C.F.R. § 41.37(c)(1)(vii).

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Claims 21 and 22
We begin by noting that claims 21 and 22 require, inter alia, glycolic
acid and lactic acid, respectively.
The Examiner states that
[r]egarding claims 21-22, since the coating solution of Gonzalez
already contain citric acid, one of ordinary skill in the art would have
found it obvious to have substituted the citric acid in the coating
solution of Gonzalez with other carboxylic acid such as glycolic and
lactic acids of Guhde with expected success since Guhde teach that
citric, glycolic and lactic acids are functionally equivalent carboxylic
acids in a chromium containing coating composition.

(Ans. 10) (emphasis added). We disagree.
While Gonzalez at paragraph [0106] teaches the use of citric acid, the
Examiner neither persuasively explains nor directs us to any credible
teaching that this citric acid is functionally equivalent to glycolic and lactic
acids as required by claims 21 and 22.
In this regard, Gonzalez teaches at paragraph [0106] that citric acid is
used as a complexing agent, which is known to form a complex with another
ingredient. Guhde teaches at column 4, lines 25-63 using an acid such as
citric, glycolic, and lactic as a reducing agent, which is known to function as
an electron donor in order to reduce another species.
Indeed, Appellants correctly state that
[t]he examiner states that since the coating of Gonzalez contains citric
acid, one of ordinary skill in the art would have found it obvious to
have substituted the citric acid in the coating of Gonzalez with other
carboxylic acid such as lacitic acids of Guhde with expected success,
since Guhde teaches that lactic acids are functionally equivalent to
carboxylic acids in a chromium-containing coating composition. . . .
[a]n examination of the Guhde reference fails to disclose that
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carboxylic acids and polyhydric alcohols are chemical [i.e.,
functional] equivalents.
(Reply Br. 9).
Accordingly, we reverse the Examiner's rejection of claims 21 and 22
under 35 U.S.C. § 103(a) over Gonzalez '062, and further in view of Guhde
as evidenced by Crotty or Komiyama.

Claims 25-28 and 30
ISSUE
Did the Examiner reversibly err in determining that the applied prior
art references would have suggested the inventions recited in claims 25-28
and 30 within the meaning of § 103?
We decide this issue in the negative.
ADDITIONAL FINDING OF FACT
4. Appellants do not specifically dispute the Examiner's determination
that
Gonzalez does not teach the claimed glyconic . . . acid. . . .
Guhde teach a corrosion inhibiting coating composition
comprising Cr(VI). Guhde further teaches using a combination of
carboxylic acid, such as citric, glycolic and lactic acids, and
polyhydric alcohol such as glycerol, to produce a low-cure
coating(abstract, col. 3 lines 55-58 and 62-63, col. 4 lines 26-29
and 57-59).
It is widely known and used in the chromium containing
reactive coating art that trivalent chromium and hexavalent
chromium are both corrosion inhibitors and can be used
interchangeably in a coating composition to form a protective
coating a metal surface for corrosion inhibition. Evidence of such
well known facts can be found in background teachings of Crotty
or Komiyama. The toxic nature of hexavalent chromium is also
well known as admitted by the instant specification. Replacing
hexavalent chromium with trivalent chromium in a chromium
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coating composition is also well known and widely practiced with
success as evidence by Crotty or Komiyama. Therefore, one of
ordinary skill in the art would have known to incorporate the same
coating components and additives for a hexavalent chromium
containing coating solution into a trivalent chromium containing
coating solution with expected success.
. . . .
Regarding claims 25-28 and 30, it would have been obvious to
one of ordinary skill in the art to have incorporated the
combination of carboxylic acids, such as citric, glycolic, and lactic
acids, and polyhydric alcohol such as glycerol as taught by Guhde
into the coating solution of Gonzalez in order to produce a low-
cure coating as taught by Guhde.

(Compare Ans. 9-10 with App. Br. 18-20 and Reply Br. 12-15).
ADDITIONAL PRINCIPLE OF LAW
“[T]he law does not require that the references be combined for the
reasons contemplated by the inventor.” In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992).
ANALYSIS AND CONCLUSION
We begin by noting that the Examiner's rejection of claims 25-28 and
30 stands on a different footing than the Examiner's rejection of claims 21
and 22 because the Examiner articulates a different reason for combining the
applied prior art references to arrive at the inventions recited in claims 25-28
and 30. (See FF 4).
Turning our attention to the merits of the Examiner's rejection of
claims 25-28 and 30, Appellants argue that "[b]efore combining four
unrelated prior art patents to reach a conclusion that the claimed subject
matter is obvious, there should be some teaching or suggestion to one skilled
in the art to combine each of these references." (Reply Br. 11). In addition,
Appellants argue that "there is no teaching that would suggest the . . .
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hydroxy-carboxy compounds claimed by appellants to the primary reference
of Gonzalez." (Reply Br. 8).
These arguments, however, fail to address and thus fail to identify
reversible error in the Examiner's stated findings and reason for combining
Gonzalez and Guhde5 to arrive at the claimed inventions. (FF 4).
Thus, we agree with the Examiner's determination that, with respect to
claims 25-28 and 30, "it would have been obvious . . . to have incorporated
the combination of carboxylic acids, such as citric, glycolic, and lactic acids,
and polyhydric alcohol such as glycerol as taught by Guhde into the coating
solution of Gonzalez in order to produce a low-cure coating as taught by
Guhde." (FF 4) (emphasis added).
In addition, Appellants also argue that "Guhde reference fails to
disclose that carboxylic acids and polyhydric alcohols are chemical
equivalents as thought [sic, taught] by applicants for a specific use and
therefore would [not] be obvious to add the combination of carboxy and
hydroxy compounds to the coating of Gonzalez to produce a low-curing
coating." (Reply Br. 9-10) (emphasis added).
While it is true that Guhde does not disclose that carboxylic acids and
polyhydric alcohols are chemical equivalents for Appellants’ disclosed use,
it is well settled that “[t]he law does not require that the references be
combined for the reasons contemplated by the inventor.” See Beattie, 974
F.2d at 1312. In this regard, as stated above, Appellants do not specifically
dispute the Examiner's reason for combining Gonzalez and Guhde, which is

5 We note that the Examiner relies on Crotty and Komiyama as evidence to
show that it is known to "incorporate the same coating components and
additives for a hexavalent chromium containing coating solution into a
trivalent chromium containing coating solution." (FF 4).
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different from Appellants' reason, to arrive at the claimed invention. (See FF
4).
In addition, Appellants repeat the arguments made in the above
rejections. (Reply Br. 8). For the reasons discussed above, Appellants'
arguments are without persuasive merit.
Thus, it follows that the Examiner did not reversibly err in
determining that the applied prior art references would have suggested the
inventions recited in claims 25-28 and 30 within the meaning of § 103.
Accordingly, we sustain the Examiner's rejection of claims 25-28 and
30 under 35 U.S.C. § 103(a) over Gonzalez '062, and further in view of
Guhde as evidenced by Crotty or Komiyama.

REJECTIONS (6) through (9)
Appellants argue that
it is applicants['] contention that the claims of this application . . . and
the claims of SN: 11/116,166 . . . are mutually exclusive in that the
claims of this application (SN: 11/116,165) recite the use of inhibitors
i.e. the triazoles, benzimidazoles, benazaoles, benzoxazoles and
mixtures of these inhibitors together with the other compounds as set
forth in the claims.
(App. Br. 22).
Appellants, however, do not specifically dispute the Examiner's
findings or reasons stated at pages 7 through 9 in the Answer that claims 17-
40 would have been an obvious variation of claims 17-40 of copending U.S.
Patent Application No. 11/116,116 in light of the disclosures of the applied
prior art references. (Compare Ans. 7-9 with App. Br. 21-24 and Reply Br.
12-15). Thus, Appellants' arguments are unpersuasive of reversible error.
Accordingly, we sustain the Examiner's rejections (6) through (9).
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ORDER
In summary, the Examiner's rejections (1) through (4) and (6) through
(9) are sustained. With respect to rejection (5), we sustain the Examiner's
rejection of claims 25-28 and 30 and reverse the Examiner's rejection of
claims 21 and 22.
Accordingly, the decision of the Examiner is affirmed-in-part.
TIME PERIOD
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) (2009).

AFFIRMED-IN-PART

kmm

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