Ex Parte Schmidt et al

Patent Trial and Appeal Board

Jun 6, 2016

13140608 (P.T.A.B. Jun. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/140,608 08/09/2011
13897 7590 06/08/2016
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Helmut Schmidt
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.
3672-P40242 8663
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/08/2016 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HELMUT SCHMIDT, CARSTEN SCHMIDT,
and THOMAS DEMBSKI
Appeal2014-009099
Application 13/140,608
Technology Center 1700
Before, ELIZABETH M. ROESEL, MICHELLE N. ANKENBRAND, and
JENNIFER R. GUPTA, Administrative Patent Judges.
ROESEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 36-55. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART and REVERSE-IN-PART.
1 Appellants identify EPG (Engineered Nanoproducts Germany) AG as the
real party in interest. App. Br. 3.
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Application 13/140,608
STATEMENT OF THE CASE
Claimed Invention
Appellants claim a metallic substrate with a vitreous or glass-ceramic
pigmented protective layer (claim 3 6) and a method of improving the
stability of a protective coating on a metallic substrate toward alkali or its
machine dishwasher stability (claim 55). App. Br. 30, 34.
Claim 36 is illustrative of the subject matter on appeal and is
reproduced below from Appellants' Claims Appendix:
36. A metallic substrate with a vitreous or glass-ceramic
pigmented protective layer, wherein the substrate is obtainable
by applying a first alkali metal silicate-containing coating sol to
the substrate or a surface thereof to form a first layer and either
(i) thermally densifying the first layer, applying a second
alkali metal silicate-containing coating sol to the densified first
layer to form a second layer, and thermally densifying the
second layer, or
(ii) applying a second alkali metal silicate-containing
coating sol to the first layer to form a second layer and
thermally densifying the first layer and the second layer
together,
the first alkali metal silicate-containing coating sol
comprising at least one oxidic pigment that comprises at least
one element selected from Fe, Co, Ni, Cu, Zn, Nb, Ta, and
elements from the third and fourth main and subgroups of the
Periodic Table of Elements, and the second alkali metal silicate-
containing coating sol differing from the first alkali metal
silicate-containing coating sol in that it does not comprise the at
least one oxidic pigment.
App. Br. 30.
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Application 13/140,608
References
Akarsu et al., DE 10 2006 050 102 Al, published April 30, 2008, for
which US 2010/0003537 Al is relied upon as an English language
equivalent ("Akarsu");
Mennig et al., W02008/099008 A2, published August 21, 2008, for
which US 2010/0028631 Al is relied upon as an English language
equivalent ("Mennig"); and
Endres et al., W02005/066388 A2, published July 21, 2005, for
which US 2008/0118745 Al is relied upon as an English language
equivalent ("Endres").
Rejections
1. Claims 36-55 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Action 3--4.
2. Claims 36-55 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Akarsu in view of Mennig and Endres. Id. at 5-20.
ANALYSIS
Indefiniteness
"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994). Claims are indefinite "only ifit can be
concluded that one of ordinary skill in this art, having appellants' disclosure
and claims before him, would not be possessed of a reasonable degree of
certainty as to the exact subject matter encompassed within the claims."
In re Moore, 439 F.2d 1232, 1236 (CCPA 1971).
Claims 3 6 and 51
The Examiner determines that the language in the last paragraph of
claim 3 6 and the corresponding language of claim 51 is unclear as to
whether the limitation applies only to alternative (ii) or to both alternatives
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(i) and (ii). Final Action 3--4; Ans. 21-22 (citing Spec. 10:5-11 as support
for ambiguity).
Appellants argue that there is no ambiguity and that both the claim
language and the Specification demonstrate that the limitation applies to
both alternatives (i) and (ii). App. Br. 8; Reply Br. 2-3.
Applying the relevant legal standard, we agree with Appellants that it
is reasonably clear from claims 36 and 51 that the final paragraph requiring a
pigmented first layer and an unpigmented second layer applies to both
alternatives (i) and (ii). Our conclusion is supported by the structure and
wording of the claims, wherein the antecedent for "the first alkali metal
silicate-containing coating sol" in the final paragraph is an "alkali metal
silicate-containing coating sol" in the first paragraph of each of claims 36
and 51.2 Because the first paragraph of the claim applies to both alternatives
(i) and (ii) and because the antecedent for the final paragraph is recited, in
part, in the first paragraph, it is reasonably clear that the final paragraph of
the claim likewise applies to both alternatives.
We do not agree with the Examiner that the Specification, page 10,
lines 5-11 results in ambiguity in claims 3 6 and 51. Ans. 21. The
Specification is consistent with our interpretation that the limitation
requiring a pigmented first layer and an unpigmented second layer applies to
both alternatives (i) and (ii). We are supported in this conclusion by the
Specification's description of steps (t) and (h), in which an unpigmented
second layer is applied as an overcoat on a pigmented layer, after either
2 We note that, in the first paragraph of claim 51, the word "first" is missing
as a modifier of "alkali metal silicate-containing coating sol" and suggest
that this word be inserted, e.g., by Examiner's amendment, before allowance
of the claim.
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drying of the first layer or drying and baking of the first layer. Spec. 7:30-
10: 11.
We, therefore, do not sustain the rejection of claims 3 6 and 51 under
35 U.S.C. § 112, second paragraph.
Claim 39
The Examiner determines that the phrase, "the alkali metal silicate-
containing coating sol," in claim 39 lacks antecedent basis, resulting in
uncertainty as to whether the limitation of claim 39 applies to the first sol or
the second sol recited in claim 36. Final Action 4; Ans. 22-23.
Appellants argue that it is apparent to one of ordinary skill in the art
that the quoted phrase of claim 39 refers to both the first sol and the second
sol recited in claim 36. App. Br. 8-9 (citing Specification Examples 1--4).
Applying the relevant legal standard, we agree with the Examiner that
claim 3 9 is unclear as to whether the phrase, "the alkali metal silicate-
containing coating sol," applies to the first sol or the second sol recited in
claim 36. We are persuaded by the Examiner's reasoning that the quoted
phrase uses the word "sol" in the singular and would not require one of
ordinary skill in the art to interpret the phrase as applying to both the first
and second sols, especially when these sols can differ from one another.
Ans. 22-23. Appellants argue that, in Examples 1--4 of the Specification,
the first and second sols differ "only by the addition of interference
pigment." The claims, however, are not limited to the Examples, and
claim 36 does not recite that pigment is the only difference between the first
sol and the second sol. App. Br. 30 (claim 36: "the second alkali metal
silicate-containing coating sol differing from the first alkali metal silicate-
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containing coating sol in that it does not comprise the at least one oxidic
pigment").
In our view, Appellants' argument as to the scope of their invention is
not adequately reflected in the language of claim 39. See In re Packard, 7 51
F.3d 1307, 1314 (Fed. Cir. 2014) (arguments that focus on the disclosure,
rather than the claim language, are not persuasive to address indefiniteness);
see also Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211(BPAI2008)
(precedential) (PTO is "justified in using a lower threshold showing of
ambiguity" than used by post-issuance reviewing courts "because the
applicant has an opportunity and a duty to amend the claims during
prosecution to more clearly and precisely define the metes and bounds of the
claimed invention").
We, therefore, sustain the rejection of claim 39, as well as its
dependent claims 40-43, under 35 U.S.C. § 112, second paragraph.
Claims 42 and 43
The Examiner determines there is insufficient antecedent basis for the
phrase, "the starting silanes," in each of claims 42 and 43, Final Action 4,
resulting in a lack of clarity as to whether the phrase refers to a precursor to
the silanes of formula (I) or to a subset of the silanes of formula (I), Ans. 23.
Appellants argue that it is apparent to one of ordinary skill in the art
that "the starting silanes of formula (I)" in claims 42 and 43 "can only be the
'silanes of general formula (I)' recited in claim 39" from which claims 42
and 43 each depends. App. Br. 9.
Applying the relevant legal standard, we agree with Appellants that it
is reasonably clear that the phrase, "the starting silanes of formula (I)," in
each of claims 42 and 43 refers to the "silanes of general formula (I)" in
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claim 39. When claims 42 and 43 are read in the context of claim 39, it is
reasonably clear that the word, "starting," in each of claims 42 and 43 refers
to the role of the "silanes of general formula (I)" as a substance that
undergoes hydrolysis and polycondensation to obtain an alkali metal silicate-
containing sol, as recited in claim 39. We are supported in this conclusion
by the Specification, which describes "the starting silanes of the formula (I)"
and the hydrolysis and polycondensation of such silanes. Spec. 17:25-37.
Nevertheless, because claims 42 and 43 depend from rejected
claim 39, we sustain the rejection of claims 42 and 43 under 35 U.S.C.
§ 112, second paragraph, for the reasons discussed above with respect to
claim 39.
Claims 44-46 and 55 ("the first coating sol'')
The Examiner determines that there is insufficient antecedent basis for
the phrase, "the first coating sol," in each of claims 44--46 and 55, Final
Action 4, resulting in a lack of clarity as to "whether the alkali metal silicate
of the sol is replaced by the particular amount of oxidic pigment as a 'first
coating sol,"' Ans. 23 (claims 44--46); see also id. at 25 (claim 5 5).
Appellants argue that it is apparent to one of ordinary skill in the art
that "the first coating sol" recited in each of claims 44--46 can only be the
"first alkali metal silicate-containing coating sol" recited in claim 36 (the
parent of claims 44--46) and claim 55. App. Br. 9, 10.
Applying the relevant legal standard, we agree with Appellants that it
is reasonably clear that the phrase, "the first coating sol," in each of
claims 44--46 and 55 refers to the "first alkali metal silicate-containing
coating sol" recited in claims 36 and 55. We disagree with the Examiner's
determination regarding a lack of clarity as to whether alkali metal silicate is
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being replaced by pigment. In our view, each of claims 44--46 is reasonably
interpreted to mean that the sol contains the specified amount of pigment
based on the total weight of the sol.
We, therefore, do not sustain the rejection of claims 44--46 under
35 U.S.C. § 112, second paragraph. We do, however, sustain the rejection
of claim 55 under 35 U.S.C. § 112, second paragraph, for the reasons
discussed below.
Claim 50
The Examiner determines that there is insufficient antecedent basis for
the phrase, "the combinations," in claim 50. Final Action 4. The Examiner
further determines that the phrase, "the combinations Na/K, Na/Cs, and
Na/Li," is unclear because no binary combinations are recited in claim 36
(from which claim 50 depends), and it is unclear "whether the combinations
are of the individual alkali metals of: Na/Kor Na/Cs or Na/Li or the
combinations are of two or more of these such as: Na/Kand Na/Cs or Na/K
and Na/Cs and Na/Li and likewise." Ans. 24.
Appellants argue that it is apparent to one of ordinary skill in the art
that "the combinations" recited in claim 50 can only be "the combinations
Na/K, Na/Cs, and Na/Li," as recited in the claim. App. Br. 9.
Applying the relevant legal standard, we agree with Appellants that it
is reasonably clear that the phrase, "the combinations," refers to "the
combinations Na/K, Na/Cs, and Na/Li," as recited in claim 50, rather than
combinations of two or more of these pairs, as suggested by the Examiner.
We are supported in our conclusion by the wording of the claim: "wherein
an alkali metal component of the second alkali metal silicate-containing
coating sol is selected from the combinations Na/K, Na/Cs, and Na/Li."
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App. Br. 33 (claim 50). Because each of the listed items is a combination of
two alkali metals and because the words, "two or more," are absent from the
claim, we do not agree with the Examiner's determination that the claim is
unclear as to the meaning of "the combinations."
We, therefore, do not sustain the rejection of claim 50 under
35 U.S.C. § 112, second paragraph.
Claim 55
The Examiner determines that the recitation of "improved" in
claim 55 is a term of degree for which the Specification does not provide a
standard for determining whether the limitation is met. Final Action 4;
Ans. 25. The Examiner acknowledges the Specification's discussion of
hydrolytic stability and a machine dishwasher test, but asserts that the
Specification "does not provide any indication of what the dishwasher test is
or how the dishwasher test is conducted so others can determine the meaning
of improving the stability of a protective coating." Ans. 25 (citing
Spec. 4:34--5:5).
Appellants argue that "improving" in the preamble of claim 55 is not
indefinite because none of the recited method steps is indefinite. App.
Br. 10.
Appellants emphasize that the term, "improving," appears in the
preamble, but that alone is not a sufficient basis for concluding that the term
is not a limitation of the claim. See Tom Tom, Inc. v. Michael Adolph, 790
F.3d 1315, 1323 (Fed. Cir. 2015) ("Whether to treat a preamble as a claim
limitation is determined on the facts of each case in light of the claim as a
whole and the invention described in the patent."). Appellants do not
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challenge the Examiner's determination that "improving" is a word of
degree for which a standard must be provided in the Specification. See
Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F .2d
818, 826 (Fed. Cir. 1984) ("When a word of degree is used the district court
must determine whether the patent's specification provides some standard
for measuring that degree.").
In our view, the Examiner has issued a well-grounded rejection that
identifies the way in which the language of claim 55 is unclear, and
Appellants fail to provide a satisfactory response to the Examiner's
rejection. We sustain the indefiniteness rejection of claim 55 on that basis.
In re Packard, 751 F.3d at 1311 ("when the USPTO has initially issued a
well-grounded rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant fails to
provide a satisfactory response, the USPTO can properly reject the claim as
failing to meet the statutory requirements of§ 112(b )"). 3
We, therefore, sustain the rejection of claim 55 under 35 U.S.C. § 112,
second paragraph.
Obviousness
The appealed claims recite a metallic substrate coated with a
pigmented first layer and an unpigmented second layer, where both the first
and second layers are formed by applying an "alkali metal silicate-
containing coating sol" and thermally densifying the layers. App. Br. 30, 34
(independent claims 36 and 55).
3 The Packard decision refers to 35 U.S.C. § 112(b ), which is the current
designation for 35 U.S.C. § 112, second paragraph. 751 F.3d at 1309 n.1.
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Regarding claim 36, the Examiner finds that Akarsu discloses a
metallic substrate having a pigmented protective coating comprising
basecoat and/or topcoat layers obtained by applying a coating sol and
thermally densifying the layers. Final Action 5---6 (citing Akarsu claim 29
and i-fi-f 19-21, 32, 34, 37, 41, 43, 44). The Examiner further finds that
Akarsu discloses "a coating sol comprising alkali silicate" and "alkali metal
and silicate containing ... layers." Final Action 5-6 (citing Akarsu i1 31 ).
The Examiner also finds that "the alkali metal and silicate layers are
inherently alkali metal silicate containing coatings." Id. at 6 (citing Endres
i-f 17).
The Examiner repeats the same findings for claim 55 as are presented
for claim 3 6. Compare Final Action 5-6 (claim 3 6), with id. at 16-17 (claim
55).
Appellants argue that Akarsu neither teaches nor suggests a basecoat
(first layer) and/or topcoat (second layer) containing alkali metal silicates, as
recited in claims 36 and 55. App. Br. 11. Appellants assert that Akarsu's
protective coating is "based on oxide layers, i.e., an oxide layer comprising
silicon and boron as a basecoat and an oxide layer comprising silicon as a
topcoat." Id. at 12 (citing Akarsu Abstract and claim 1). According to
Appellants, "a mixed oxide (Si02/B203) and an oxide of Si (Si02) [as
disclosed in Akarsu] are different from an alkali metal silicate," as recited in
claim 36. Id. (citing Akarsu i151).
We are persuaded by Appellants' argument that the Examiner errs in
finding, as a matter of fact, that Akarsu teaches or suggests an "alkali metal
silicate-containing coating sol," as recited in each of claims 36 and 55.
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The Examiner relies on paragraph 31 of Akarsu, which discloses in
pertinent part:
The coating composition may where appropriate comprise
further components, examples being hydrolyzable compounds
or salts of other elements for the matrix . . . Other hydrolyzable
compounds as well can be used, such as those of elements of
main groups I and II of the Periodic Table (e.g., Na, K, Ca and
Mg) ...
Akarsu i-f 31. As evidence that alkali metal silicates are inherently disclosed
by Akarsu, the Examiner relies on paragraph 1 7 of Endres, which discloses:
The alkali metal silicate-containing coating sol used is
preferably a coating composition which is obtained by
hydrolysis and polycondensation of at least one organically
modified hydrolyzable silane in the presence of alkali metal
oxides or alkaline earth metal oxides or alkali metal hydroxides
or alkaline earth metal hydroxides and optionally nanoscale
Si02 particles.
Endres i-f 17.4
\Ve agree with Appellants that the evidence provided by the Examiner
is not sufficient to support the Examiner's implicit finding that hydrolysable
compounds of alkali metals and alkaline earth metals, as disclosed in Akarsu
paragraph 3 1, include alkali metal oxides or alkali metal hydroxides, as
disclosed in Endres paragraph 17. Compare Final Action 6, with Reply Br.
4--5. Although the Examiner equates Akarsu's hydrolysable alkali metal and
alkaline earth metal compounds with "oxides and hydroxides," Ans. 32-33,
4 Although Endres discloses a metallic substrate having a vitreous coating
obtainable by applying an alkali metal silicate-containing coating sol to the
substrate and thermally densifying the layer, compare Endres Abstract, with
App. Br. 30, 34 (claims 36 and 55), the Examiner makes no finding that
Endres discloses a pigmented first layer and an unpigmented second layer,
as recited in the appealed claims.
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the present record is not sutlicient to support a finding that the latter is
suggested by or included within the former.
This evidentiary deficiency is not remedied by the Examiner's
additional finding that Akarsu discloses magnesium oxide (MgO) particles
as a constituent of the topcoat. Ans. 33 (citing Akarsu i-fi-136, 37). Although
the Examiner finds that "Na or K oxide would be a substitute for MgO as an
inorganic particle in the topcoat," Ans. 33, that finding is not sufficiently
supported by Akarsu or other record evidence. Akarsu paragraph 31 teaches
hydrolysable compounds of Na, K, Ca and Mg. There is no suggestion,
however, that Na or K oxide would be a substitute for MgO as an inorganic
particle in the topcoat.
In short, the obviousness rejection of claims 36-55 hinges on the
Examiner's finding that Akarsu's disclosure of "other hydrolyzable
compounds," Akarsu i1 31, corresponds to Endres' disclosure of "alkali
metal oxides or alkaline earth metal oxides or alkali metal hydroxides or
alkaline earth metal hydroxides." Final Action 6; Ans. 32-33. On this
record, the evidence is not sufficient to support the Examiner's finding.
The deficiency in the Examiner's findings regarding Akarsu is not
remedied by the Examiner's findings regarding Mennig or Endres, neither of
which is relied upon as teaching or suggesting first and second layers, both
of which are formed by applying an "alkali metal silicate-containing coating
sol," as recited in the appealed claims. Final Action 7-10, 18-20 (findings
regarding Mennig and Endres).
We therefore determine that a preponderance of the evidence does not
support the Examiner's conclusion of obviousness with respect to
independent claims 36 and 55 and dependent claims 37-54, and we do not
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sustain the rejection of these claims over Akarsu in view of Mennig and
Endres.
CONCLUSION OF LAW AND DECISION
The Examiner's decision rejecting claims 39--43 and 55 under
35 U.S.C. § 112, second paragraph, is AFFIRMED.
The Examiner's decision rejecting claims 36-38 and 44--54 under
35 U.S.C. § 112, second paragraph, is REVERSED.
The Examiner's decision rejecting claims 36-55 under 35 U.S.C.
§ 103(a) as unpatentable over Akarsu in view of Mennig and Endres is
REVERSED.
AFFIRMED-IN-PART and REVERSED-IN-PART
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