Ex Parte Mertens et al

Patent Trials and Appeals Board

Jul 9, 2019

14200546 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/200,546 03/07/2014
159237 7590 07/11/2019
MacDermid Performance Solutions - Patents
c/o Carmody Torrance Sandak & Hennessey LLP
195 Church Street
P.O. Box 1950
New Haven, CT 06509-1950
Marc Mertens
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.
2156-901A 1340
EXAMINER
WONG,EDNA
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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):
mpspatents@carmodylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC MERTENS, RICHARD TOOTH, TREVOR PEARSON,
RODERICK D. HERDMAN, and TERENCE CLARKE
Appeal2018-000256
Application 14/200,546
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant 1 ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1, 3-9, 11-15, 21, and
23. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Applicant is "MacDermid Acumen, Inc." (Application Data Sheet
filed March 7, 2014, 6), which is also identified as the real party in interest
(Appeal Brief filed May 25, 2017 ("Appeal Br."), 2).
2 Appeal Br. 3-7; Reply Brief filed October 10, 2017 ("Reply Br."), 4--10;
Final Office Action entered April 28, 2017 ("Final Act."), 4--18; Examiner's
Answer entered August 10, 2017 ("Ans."), 2-16.
Appeal2018-000256
Application 14/200,546
I. BACKGROUND
The subject matter on appeal relates to a method of imparting
improved corrosion resistance to chromium-plated substrates (Specification
filed March 7, 2014 ("Spec."), 1, 11. 4--6). Representative claim 1, the sole
independent claim on appeal, is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A method of treating a substrate to provide improved
corrosion protection thereof, wherein the substrate comprises a
plated nickel layer and a chromium (III) plated layer, deposited
above the nickel plated layer, from a trivalent chromium
electrolyte, the method comprising the steps of:
(a) providing an anode and the substrate comprising the
chromium (III) plated layer as a cathode in a
passivate solution comprising (i) a trivalent
chromium salt; and (ii) a complexant; and (iii) a pH
adjuster to adjust pH to between 2 and 5; and
(b) passing an electrical current between the anode and
the cathode to deposit a passivate film over the
chromium (III) plated layer on the substrate, said
passivate film comprising hydrated chromium
compounds;
wherein the electrical current is between about 0.1 and
about 2.0 A/dm2 ;
wherein the molar ratio of chromium salt to complexant is
from 0.3: 1 to 0. 7: I [sic] based on chromium content; and
wherein the substrate after steps (a) and (b) has a
polarization resistance of at least 4.0 x 105 Q/cm2.
(Appeal Br. 8 ( emphasis added)).
2
Appeal2018-000256
Application 14/200,546
II. REJECTION ON APPEAL
Claims 1, 3-9, 11-15, 21, and 23 stand rejected under 35 U.S.C. § 103
as unpatentable over Martyak3 in view of Herdman et al. 4 ("Herdman") and
Hofmann et al. 5 ("Hofmann") ( Ans. 2-16; Final Act. 4--18).
III. DISCUSSION
1. The Examiner's Position
The Examiner finds that Martyak describes a method of treating a
substrate to improve its corrosion resistance but acknowledges several
differences between the prior art method and the method recited in claim 1
(Ans. 2-7). Regarding the electrical current limitation ("the electrical
current is between about 0.1 and about 2.0 A/dm2") recited in claim 1, the
Examiner finds that Martyak teaches a current density of about 50 ASP to
about 1300 ASP, which is calculated to be about 5.4 A/dm2 to about 140
A/ dm2, and that Martyak teaches the current density depends upon line
speed during production (id. at 6). The Examiner finds further that Hofmann
teaches a cathodic current density on the substrate during a passivating
treatment should preferably be from 0.05 to 10 A/dm2 (id.). Based on these
findings, the Examiner concludes:
It would have been obvious to one having ordinary skill in
the art before the effective filing date of the claimed invention to
have modified the electrical current described by Martyak with
wherein [sic] the electrical current is between about 0.1 and
about 2.0 A/dm2; and wherein the electrical current is between
about 0.5 and about 1.0 A/dm2 because:
3 US 6,004,448, issued December 21, 1999.
4 US 2010/0243463 Al, published September 30, 2010.
5 WO 2011/147447 Al, published December 1, 2011.
3
Appeal2018-000256
Application 14/200,546
(i) Martyak teaches "about 50 ASP" (= about 5.4 A/dm2).
The word "about" permits some tolerance or flexibility to the
claimed range. In re Ayers[, 154 F.2d 182, 185] 69 USPQ 109
[CCPA 1946] and In re Erickson[, 343 F.2d 778, 780 (CCPA
1965)] 145 USPQ 207 (MPEP § 2173.05(b)(A)).
(ii) WO '447 teaches passivating a metal or metal alloy
surface which teaches that the methods used to passivate the
metal or metal alloy surface are conventionally known to include
aiding the passivating treatment by connecting the substrate as a
cathode in the passivation solution and applying a cathodic
current density on the substrate in the range of from 0.05 to 10
A/dm2 (page 6, lines 1-4).
Known work in one field of endeavor may prompt
variations of it for use in either the same field or a different field
based on the function or property of the known work if the
variations are predictable to one of ordinary skill in the art with
a reasonable expectation of success.
(id. at 6-7).
In the "Response to Argument" section of the Answer, the Examiner
posits that "[i]fMartyak used a current density of 3 A/dm2, which is about
5.4 A/dm2 as proposed, this current density is deemed close to the current
density of 'about 2 A/dm2['] as presently claimed" (id. at 11). According to
the Examiner, "[a] prima facie case of obviousness exists where claimed
ranges and prior art ranges do not overlap but are close enough that one
skilled in the art would have expected them to have the same properties"
(id.).
2. The Appellant's Position
Regarding the current density limitation recited in claim 1, the
Appellant states that "[t]he Examiner concedes that Martyak [itself] does not
disclose or render obvious this claim limitation" (Appeal Br. 6). The
Appellant then contends it would not have been obvious to a person having
ordinary skill in the art to use Hofmann's current density in Martyak's
4
Appeal2018-000256
Application 14/200,546
process because Martyak discloses a process for depositing chrome oxide
coating on a chromium deposit to improve adhesion, whereas Hofmann
discloses a process for depositing chrome oxide on a zinc, aluminum, or
magnesium surface to achieve corrosion resistance (id. (relying on
"DECLARATION OF RODERICK DENNIS HERDMAN" filed April 14,
2017 ("Herdman Declaration" or "Herdman Deel."), ,r 8)). Regarding the
Examiner's position that Martyak' s current of "about" 5 .4 A/ dm2 reads on a
hypothetical current of 3 A/dm2, which would be "close" to the upper
current density limit of "about 2.0 A/dm2" as recited in claim 1, the
Appellant argues that "the Examiner has not explained why 'some' tolerance
and flexibility would have motivated one of ordinary skill in the art to
dramatically reduce the current density taught by Martyak by over half (i.e.,
from about 5.4 A/dm2 to about 2.0 A/dm2)" (Reply Br. 6).
3. Opinion
We agree with the Appellant that the Examiner's rejection is not well-
founded. Our reasons follow.
Martyak describes a process for electrolytically depositing a
chromium oxide coating on a metal substrate from a bath containing a
trivalent chromium compound (Martyak col. 1, 11. 15-18). Martyak teaches
that the metal substrate comprises iron, steel, chromium, nickel, tin, zinc,
copper, aluminum, magnesium, or titanium (id. at col. 1, 11. 65----67 ( claim
13)) and also discloses that "the substrates can comprise a metal or an alloy .
. . or a non-metal where either is coated with one or more of the foregoing
metals" (id. at col. 6, 11. 5-7). As the Appellant points out (Appeal Br. 4), an
important goal in Martyak is to produce chromium oxide layers with
improved adhesion of other materials to the chromium surface (Martyak,
5
Appeal2018-000256
Application 14/200,546
col. 1, 11. 20-27; col. 8, 1. 53---col. 9, 1. 8). Martyak teaches that the current
density, although dependent on production line speed, "may be anywhere
from about 50 ASP to about 1300 ASP" (id. at col. 7, 11. 53-56), which,
according to the Examiner, calculates to about 5.4--140 A/dm2 (Ans. 6). No
other current densities are disclosed or suggested in Martyak.
Hofmann, by contrast, discloses a two-step process for producing a
corrosion-inhibiting coating on substrates having a surface consisting of
zinc, magnesium, aluminum, or alloys thereof (Hofmann 1, 11. 3-5; 3, 1. 19-
4, 1. 13}-not a substrate comprising a plated nickel layer and a chromium
(III) plated layer as required by claim 1 or as suggested in Martyak. Thus,
although Hofmann teaches that the cathodic current density is preferably
0.05-10 A/dm2 (id. at 6, 11. 2--4), the Examiner fails to explain why a person
having ordinary skill would have implemented such a current density in
Martyak, which is concerned with improving not only corrosion resistance,
but also adhesion, on a different type of substrate (Herdman Deel. ,r 8).
Moreover, the Examiner's expansive interpretations of both "about
2.0 A/dm2" (claim 1) and "about" 5.4 A/dm2 (Martyak) as encompassing a
hypothetical current density of 3.0 A/dm2 lack proper foundations and
inappropriately read out the specified numerical values in both instances.
The Examiner cites to MPEP § 2173 .05(b) (Ans. 7), but even that authority
states that "one must consider the context of the term as it is used in the
specification and claims of the application." No such consideration or
analysis has been offered for either the upper current density limit in claim 1
or Martyak's disclosed lower limit. See also Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995) (explaining that the
use of the word "about" avoids a strict numerical boundary to the specified
6
Appeal2018-000256
Application 14/200,546
parameter, but that the degree of latitude or tolerance must be ascertained by
consulting, e.g., the descriptions in the relevant specification).
For these reasons, we cannot sustain the Examiner's rejection.
IV. SUMMARY
The Examiner's rejection under 35 U.S.C. § 103 of claims 1, 3-9, 11-
15, 21, and 23 as unpatentable over Martyak in view of Herdman and
Hofmann is not sustained. Therefore, the Examiner's final decision to reject
claims 1, 3-9, 11-15, 21, and 23 is reversed.
REVERSED
7