Ex Parte Silvernail et al

Patent Trial and Appeal Board

Sep 20, 2017

13323926 (P.T.A.B. Sep. 20, 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.
13/323,926 12/13/2011 Nathan J. Silvernail 10007147A1GC 3921
24959 7590 09/20/2017
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
TAI, XIUYU
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
09/20/2017 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 NATHAN J. SILVERNAIL, STEVEN D. PERRINE,
MICHAEL J. PAWLIK, and RICHARD F. KARABIN
____________

Appeal 2016-007497
Application 13/323,926
Technology Center 1700
____________
Before: CHUNG K. PAK, JEFFREY R. SNAY,
and MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1–4, 6–10, and 21 of Application
13/323,926 under 35 U.S.C. § 103(a) as obvious. Non-Final Act. (mailed
August 25, 2015) 2–7. Appellants seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a).1 We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.

1 PPG Industries, Inc. is identified as the real party in interest. Appeal Br. 1.
Appeal 2016-007497
Application 13/323,926
2
BACKGROUND
The present application relates to methods for treating metal
substrates, including ferrous substrates, such as cold rolled steel and
electrogalvanized steel. Abstract. The methods include three steps:
(a) contacting the substrate with a pretreatment composition including a
group IIIB or IVB metal and an electropositive metal, (b) contacting the
substrate with an anionic resin-based post rinse composition, and (c) electro-
phoretically depositing a coating composition on the substrate. Spec. ¶ 5.
The post rinse composition is taught to improve the throwpower of the
subsequently applied electrodepositable coating composition. Id. ¶ 38,
Abstract.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A method for coating a substrate comprising:
(a) contacting the substrate with a pretreatment solution
comprising no more than 5000 ppm of a group IIIB metal
and/or a group IVB metal and no more than 500 ppm of an
electropositive metal, and optionally no more than 5000 ppm of
a reaction accelerator, wherein an amount of nitrate introduced
to the pretreatment solution results from the introduction of the
group IIIB metal and/or group IVB metal in its nitrate form, the
electropositive metal in its nitrate form, the reaction accelerator
in its nitrate form, or a combination thereof;
(b) contacting the substrate with an anionic resin-based
post rinse composition comprising an anionic resin; and
(c) electrophoretically depositing a cationic
electrodepositable coating composition onto the substrate,
wherein the throwpower of the cationic
electrodepositable coating composition is increased by at least
6% compared to the throwpower of said cationic
Appeal 2016-007497
Application 13/323,926
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electrodepositable coating composition applied to a substrate
without step (b).
Appeal Br. 17 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 1–4, 6–10, and 21 are rejected under 35 U.S.C. § 103(a) as
obvious over Warburton et al. (US 2004/0079647 A1, pub. April 29, 2004)
(hereinafter “Warburton”) in view of Yoshida et al. (US 2011/0094630 Al,
pub. April 28, 2011) (hereinafter “Yoshida”). Non-Final Act. 2–7.
DISCUSSION
The Examiner rejected claims 1–4, 6–10, and 21 as obvious over
Warburton in view of Yoshida. Non-Final Act. 2–7. Appellants allege error
on several grounds. Appellants do not submit unique argument in support of
the patentability of any dependent claims. Appeal Br. 15. Accordingly,
independent claim 1 is selected as a representative claim and the remaining
claims will stand or fall with claim 1.

Reason to Combine / Impermissible Hindsight
Appellants allege that the Examiner engaged in impermissible
hindsight in combining the teachings of Warburton and Yoshida.
Warburton teaches a method of treating a metal substrate that includes
three separate steps: (a) application of a first pretreatment solution
comprising a Group IIIB and/or IVB metal-containing compound and
nitrate; (b) application of a resin-based composition; and (c)
electrodeposition of a coating composition. Warburton ¶¶ 4, 82. Yoshida
teaches a method of treating a metal substrate that includes applying a
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pretreatment composition comprising zirconium nitrate and copper nitrate to
the surface of the metal substrate to form a chemical conversion film and
then subjecting the surface of the metal structure to electrodeposition.
Yoshida Abstract, ¶¶ 87, 123.
The Examiner finds that Yoshida teaches that its pretreatment solution
“can improve corrosion resistance, coating adhesion to the metal surface,
and increase throwing power during electrodeposition.” Non-Final Act. 4
(citing Yoshida ¶ 86). The Examiner further finds that one of skill in the art
would have known that one may modify the primary reference, Warburton,
by using the pretreatment composition of Yoshida “in order to improve
corrosion resistance, coating adhesion and to increase throwing power
during electrodeposition.” Non-Final Act. 4.
Appellants argue that the Examiner has not articulated a sufficient
reason why one of skill in the art would treat a substrate with a resin-based
post rinse as taught by Warburton after treating the substrate with the
pretreatment composition of Yoshida. Appeal Br. 8–10.
Appellants further argue that there is no teaching of using a post rinse
resin composition in Yoshida. Id. at 8. Appellants additionally argue that
the Examiner did not articulate a specific reason “why any benefit would be
expected by treating a substrate with a resin-based post rinse as taught by
Warburton after treating the substrate with the pretreatment composition of
Yoshida.” Id. at 9. As a consequence of the foregoing, Appellants infer that
the Examiner must have engaged in hindsight reconstruction of the claims.
Id.
Appellants assert that, as the Office has not attributed any improved
results to the use of the resin-based post rinse of Warburton, one of skill in
the art would view that as an additional processing step without an identified
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benefit. Appellants similarly assert that, as Yoshida does not teach a resin-
based post rinse but still achieves the desired properties identified by the
Office, there is simply no reason for one of skill in the art to combine the
pretreatment of Yoshida with the resin-based post rinse of Warburton.
Although not stated as such, the thrust of Appellants’ argument is that
there is insufficient reason to add the post rinse resin step of Warburton (step
(b) of claim 1) to the method of Yoshida. This, however, is not the basis of
the Examiner’s rejection. Warburton is the primary reference. It teaches a
method said to achieve “excellent corrosion resistance.” Warburton ¶ 5.
The Examiner proposes a hypothetical modification of Warburton by
incorporation of the first step of Yoshida (step (a) of claim 1) and has stated
a basis for such modification. See Non-Final Act. ¶ 7;;see also Yoshida ¶ 87
(throwing power improved by deposition of copper on surface of metal).
Accordingly, Appellants have not shown error in the Examiner’s stated
reason to combine.

Reasonable Expectation of Success / Teaching Away
For their second argument, Appellants contend that one of skill in the
art would not have had a reasonable expectation of success in modifying the
method of Warburton with the pretreatment step of Yoshida. Appeal Br.
11–13.
Appellants rely upon a declaration to support their contentions that the
application of a resin-based post rinse yields unpredictable results with
respect to corrosion resistance and that even if a resin-based post rinse
results in improvement in one paint system, it can’t necessarily be expected
to improve a second paint system. Id. at 11 (citing Declaration of Mark
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Application 13/323,926
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McMillen (filed July 16, 2015) ¶¶ 10, 11, under 37 C.F.R. § 1.132).2 In
view of the foregoing, and the declarant’s view that Warburton teaches that a
nitrate additive results in improved corrosion resistance, the declarant
concludes that “as one skilled in the art I would not expect the that the
inclusion of the pretreatment composition of McMillen in the method of
Warburton would result in improved corrosion performance of a metal
substrate treated by the process of that combination.” Appeal Br. 12 (citing
McMillen Declaration ¶ 12).
Appellants further assert that the examples in the Specification do not
show improved corrosion performance arising from the use of a resin-based
post rinse. Rather, they show “comparable corrosion resistance.” Appeal
Br. 12.
“Ordinarily, the PTO accepts statements in declarations at face value.
However, like other judicial and quasi-judicial tribunals, the PTO need not
accept at face value a statement in a declaration when there is objective
evidence in the record for questioning the statement.” Ex parte Daniels, 40
USPQ2d 1394, 1409 n.14 (Bd. Pat. App. Int. 1996), reversed on other
grounds, see In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998). Although a
declarant’s opinion on the ultimate legal issue is not evidence in the case,
“some weight ought to be given to a persuasively supported statement of one
skilled in the art on what was not obvious to him.” In re Lindell, 385 F.2d
453, 456 (CCPA 1967). The submission of objective evidence of
patentability does not mandate a conclusion of patentability in and of itself.

2 Hereinafter referred to as “McMillen Declaration.”
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In re Chupp, 816 F.2d 643 (Fed. Cir. 1987). Here, there is evidence in the
record contrary to the McMillen Declaration.
First, Yoshida describes a pretreatment composition that includes a
resin-based composition. See Yoshida ¶ 133 (“Preferably, the chemical
conversion solution for a metal structure of the present invention further
comprises a cationic water-soluble resin (G).”) (emphasis added).
Second, Table 5 of Warburton (presenting data where the resin-based
post rinse step is omitted) indicates that the resin-based post rinse step does
lead to improved corrosion resistance for the solventborne topcoat tested
therein. No data was presented regarding the effect of omitting the resin-
based post rinse step for electrodepositable coatings. Nonetheless, the stated
results tend to contradict statements cited by Appellants regarding resin-
based post rinse composition not improving corrosion resistance.
Accordingly, we find no error in the Examiner’s determination that a
person of ordinary skill in the art would have a reasonable expectation of
success in combining the teachings of Warburton and Yoshida to achieve
improved corrosion resistance. See Velander v. Garner, 348 F.3d 1359,
1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to
subsequent conclusory statements by experts, the Board acted well within
[its] discretion.”); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010)
(Board has discretion to give more weight to one item of evidence over
another “unless no reasonable trier of fact could have done so”).
The foregoing is in response to the Examiner’s finding that the
combination of Warburton and Yoshida would be expected to yield better
corrosion resistance. The Examiner additionally found that such
combination would be expected to yield improved adhesion and
throwpower. Non-Final Act. 4. In this regard, Appellants argue that one of
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skill in the art would have expected the intervening resinous film layer to
insulate the substrate and to diminish adhesion and throwpower of the
electrodepositable coating. Therefore, they argue, one of skill in the art at the
time the invention was made would not have reasonably expected improved
adhesion and throwpower from the proposed combination. Appeal Br. 13.
In the same vein, Appellants assert Yoshida teaches away from the
use of a resin-based post rinse as it would place an intervening layer between
its pretreatment film and the electrodepositable coating. Appeal Br. 13–14.
Yoshida attributes the improved adhesion and throwpower of its method to
the conductive nature of the germanium, tin and/or copper deposited on the
surface of the substrate by treatment with the pretreatment composition. Id.
(citing Yoshida ¶ 140). Appellants cite to Yoshida’s statement that the
“germanium, tin, or copper is preferably present at the outermost surface of
the film.” Appeal Br. 14.
Appellants reason that Yoshida teaches away from an intervening
layer because an “[a]n intervening layer between the germanium, tin and/or
copper would necessarily prevent any of those metals from being ‘present at
the outermost surface of the film.’” Appeal Br. 14. Appellants argue as
follows:
one of skill in the art would have expected that including an
intervening resinous film layer between the pretreatment film
and the subsequent electrodepositable coating would act as an
insulating layer that would diminish conductivity and hence the
adhesion and throwpower properties resulting from combining
the pretreatment composition taught by Yoshida with the
method taught by Warburton.

Appeal Br. 14.
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“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citing Optivus Tech.,
Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)).
However, merely falling outside of a preferred embodiment “does not teach
away [as] it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (citing In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Here, it is only the Appellants’ inference that Yoshida teaches away
from a resin-based post rinse composition. Answer 11. Appellants have not
cited to any portion of Yoshida that can be said to “criticize, discredit, or
otherwise discourage” a resin-based post rinse composition. Indeed, as
above, it appears that Yoshida describes a pretreatment composition that
includes a resin-based composition. See Yoshida ¶ 133.
Accordingly, we find that Appellants have failed to show error in the
Examiner’s finding that one of skill in the art at the time of the invention
would have had a reasonable expectation of success in combining the
teachings of Warburton and Yoshida so as to yield a treatment with
improved corrosion resistance, or, in the alternative, in adhesion and
throwpower. We additionally find that Appellants have not shown that
Yoshida teaches away from inclusion of a resinous film layer.

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Unexpected Results
Appellants additionally contend that they have demonstrated
unexpected and surprising results. Appeal Br. 14–15.
“Although it is well settled that comparative test data showing an
unexpected result will rebut a prima facie case of obviousness, the
comparative testing must be between the claimed invention and the closest
prior art.” In re Fenn, 639 F.2d 762, 765 (CCPA 1981). Moreover, the
applicant’s showing of unexpected results must be commensurate in scope
with the claimed range. See In re Greenfield, 571 F.2d 1185, 1189 (CCPA
1978) (“Establishing that one (or a small number of) species gives
unexpected results is inadequate proof, for ‘it is the view of this court that
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support.’”); see also In re
Peterson, 315 F.3d 1325, 1330–31 (Fed. Cir. 2003).
Here, Appellants cite to a portion of the Specification which provides
test results for three different anionic post rinse compositions (designated as
Post rinses 1, 2, and 4) that appear to be within the scope of claim 1 applied
after a single type of pretreatment (designated as Pretreatment 2) within the
scope of the claim. This data is not commensurate with the scope of claim 1.
The pretreatment solution limitation of claim 1 provides as follows:
(a) contacting the substrate with a pretreatment solution
comprising no more than 5000 ppm of a group IIIB metal
and/or a group IVB metal and no more than 500 ppm of an
electropositive metal, and optionally no more than 5000 ppm of
a reaction accelerator, wherein an amount of nitrate introduced
to the pretreatment solution results from the introduction of the
group IIIB metal and/or group IVB metal in its nitrate form, the
electropositive metal in its nitrate form, the reaction accelerator
in its nitrate form, or a combination thereof.

Appeal 2016-007497
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Appeal Brief 17 (Claims App.). This limitation may encompass up to 5000
ppm of a group IIIB and/or a group IVB metal or none at all. Similarly, the
limitation may include 500 ppm of an electropositive metal or none at all.
Likewise, the reaction accelerator term is explicitly made optional. If
present, the reaction accelerator must be limited to 5000 ppm. Further, the
amount of nitrate may vary. Thus, limitation (a) of claim 1 is quite broad.
The Specification, however, provides data for only a single pretreatment
within the scope of the claims, Pretreatment 2, described in the Specification
as “ZIRCOBOND®.” Spec. ¶ 105. Similarly, there are a large number of
anionic resins that may fall within the scope of limitation (b) but the
Specification provides data for only 3.
Accordingly, Appellants have not demonstrated surprising result
commensurate with the scope of the claims at issue.

CONCLUSION
The rejections of claims 1–4, 6–10, and 21 as obvious over Warburton
in view of Yoshida are 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).
AFFIRMED