Ex Parte Song

Patent Trial and Appeal Board

Aug 30, 2016

12954091 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121954,091 11/24/2010
72823 7590
Quinn Law Group, PLLC
39555 Orchard Hill Place
Suite 520
Novi, MI 48375
09/01/2016
FIRST NAMED INVENTOR
Guangling Song
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.
P009940-RD-MJL 4718
EXAMINER
LEONG, NATHAN T
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
mjb@quinnlawgroup.com
amb@quinnlaw group .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GU ANGLING SONG
Appeal2015-004058
Application 12/954,091
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1 through 4, 6 through 11, and 13. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
The subject matter on appeal is directed to, inter alia, a method of
preparing a magnesium alloy substrate for a surface treatment that comprises
1 Appellant identifies the Real Party in Interest as GM Global Technology
Operations LLC (Appeal Brief filed October 15, 2014 ("App. Br.") at 3.)
Appeal 12/954,091
Application 2015-004058
cleaning the magnesium alloy substrate with a wet solution, whereby a
magnesium hydroxide layer is formed on the magnesium alloy substrate, and
heating the magnesium alloy substrate to a temperature of at least two
hundred degrees Celsius (200°C) to transform the magnesium hydroxide
layer into a magnesium oxide layer. (Spec. i-fi-17, 13, 14.)
Details of the appealed subject matter are recited in representative
claim 8, which is reproduced below from the Claims Appendix to the Appeal
Brief:
8. A method of preparing a magnesium alloy substrate for a
surface treatment, the method comprising:
cleaning the magnesium alloy substrate with a wet
solution, whereby a magnesium hydroxide layer is formed on
the magnesium alloy substrate; and
heating the magnesium alloy substrate to a temperature
of at least two hundred degrees Celsius (200°C) to transform
the magnesium hydroxide layer into a magnesium oxide layer.
Appellant seeks review of the following grounds of rejection
maintained by the Examiner in the Answer entered on December 2, 2014
("Ans."):
Claims 8, 9, 11, and 13 under 35 U.S.C. § 103(a) as unpatentable over
the disclosure of U.S. Patent 6,328,530 Bl, issued in the name of Kato et al.
on December 11, 2001 (hereinafter referred to as "Kato") in view of U.S.
Patent 5,401,442, issued in the name of Miyata on March 28, 1995
(hereinafter referred to as "Miyata");
Claim 10 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Kato in view of Miyata and U.S. Patent 5,756,218, issued in the name of
Buchheit et al. on May 26, 1998 (hereinafter referred to as "Buchheit");
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Appeal 12/954,091
Application 2015-004058
Claims 1, 2, 4, 6, and 7 under 35 U.S.C. § 103(a) as unpatentable over
the disclosure of U.S. Patent 5,264,113, issued in the name ofBartak et al.
on November 23, 1993 (hereinafter referred to as "Bartak") in view of Kato,
U.S. Patent 2,313,754, issued in the name of Loose on March 16, 1943
(hereinafter referred to as "Loose") and Miyata; and
Claim 3 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Bartak in view of Kato, Loose, Miyata, and Buchheit.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the arguments advanced by the Examiner and Appellant, we concur with
Appellant that the Examiner does not carry the burden of establishing a
prima facie case of obviousness regarding the subject matter recited in
claims 1--4, 6-11, and 13 within the meaning of 35 U.S.C. § 103(a).
Accordingly, we reverse the Examiner's§ 103(a) rejections of these claims
for the reasons set forth in the Appeal and Reply Briefs. We add the
discussion below primarily for emphasis and completeness. 2
The Examiner has the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in the claims on appeal. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[The] [patent] examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability."); see also In re Jung, 637
F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that while "the applicant
2 For the purposes of this appeal, we select claim 8, the broadest claim on
appeal, as representative, and decide the propriety of the rejections under 35
U.S.C. § 103(a) based on this claim alone.
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Appeal 12/954,091
Application 2015-004058
must identify to the Board what the examiner did wrong, ... the examiner
retains the burden to show invalidity"). As explained by Appellant, the
Examiner does not meet the burden of establishing prima facie obviousness
because the Examiner fails to articulate an apparent reason or suggestion that
would have prompted one of ordinary skill in the art to modify the applied
prior art in such a way as to arrive at the claimed method.
The Examiner finds that Kato discloses a process for forming a
magnesium oxide and/ or a hydroxide film on a magnesium alloy base
member that comprises immersing the base member in an aqueous solution
H202 solution, corresponding to the cleaning step recited in claim 8, and
then heating the coated base member to a temperature up to 80QC to effect
dehydration and stabilization of the coating. (Ans. 3.)
Recognizing that Kato does not disclose "heating the magnesium
alloy substrate to a temperature of at least two hundred degrees Celsius
(200°C)" as recited in claim 8, the Examiner refers to the disclosure of
Miyata. (Id.) The Examiner finds that Miyata discloses that magnesium
hydroxide has a dehydration temperature of about 340°C. (Id.)
The Examiner then concludes that it would have been obvious to one
of ordinary skill in the art to heat Kato' s coated magnesium alloy base
member to at least 340°C as taught by Miyata to effectively dehydrate the
coating, with a reasonable expectation for success. (Ans. 3--4.)
However, we agree with Appellant that the Examiner does not
demonstrate that one of ordinary skill in the art would have been led to heat
Kato' s oxide-coated magnesium alloy base member to a temperature of at
least 200QC, as recited in claim 8.
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Appeal 12/954,091
Application 2015-004058
Kato discloses a process for forming an anticorrosive magnesium
oxide film on a Mg alloy member that involves contacting the surface of the
Mg alloy with an aqueous acidic solution containing a heavy metal oxoacid
compound, washing the coated member with water, and then drying it by
"natural drying" or "by heat treatment at a temperature of not more than
80QC to effect dehydration and stabilization". (Kato col. 1, 11. 4--12; col. 3,
11. 15-18; col. 7, 11. 1-9, 41--42; col. 8, 11. 60-67 (emphasis added).)
Despite Kato' s requirement for heating the specifically coated and
washed Mg alloy at a temperature of not more than 80QC for the purpose of
effectuating dehydration and stabilization as indicated supra, the Examiner
relies upon Miyata to justify heating Kato' s particularly coated and washed
Mg alloy at a temperature at least four times higher than the maximum
temperature taught by Kato. (Ans. 3--4.) Miyata, however, is directed to
forming flame-retardant resin and rubber compositions that contain a
composite metai hydroxide, rather than forming a magnesium aiioy having
an anticorrosive magnesium oxide film. (Miyata col. 1, 11. 10-18.) Miyata
discusses the temperature at which metal hydroxides decompose, which
Miyata refers to as the "decomposition, i.e., dehydration temperature," and
indicates that magnesium hydroxide has a dehydration (decomposition) start
temperature of about 340QC. (Miyata col. 3, 11. 20-37 .)
Nevertheless, on this record, the Examiner does not demonstrate that
Miyata's magnesium hydroxide decomposition temperature of about 340QC
is useful for not only dehydrating, but also stabilizing, the particularly
formed film on the magnesium alloy taught by Kato to render it corrosion
resistant. See generally Ans. Stated differently, the Examiner does not
establish that one of ordinary skill in the art would have been led to dry and
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Appeal 12/954,091
Application 2015-004058
stabilize Kato' s particularly formed film on a Mg alloy base member at a
temperature that Miyata discloses to be the temperature at which magnesium
hydroxide starts to decompose (340QC). In re Schulpen, 390 F.2d 1009,
1013 (CCP A 1968) (explaining that an obviousness rejection cannot stand
when the modification proposed by the Examiner would run counter to the
teaching of a prior art reference). To do so would destroy the invention on
which Kato is based, namely, the use of a temperature at least four times
higher than the maximum temperature taught by Kato. Ex parte Hartman,
186 USPQ 366, 367 (Bd. App. 1974)("Reynold cannot properly be
combined with Graham et al relative to the employment of continuous
monofilaments since to do so would destroy that on which the invention of
Graham et al. is based, namely, the use of very short fibers.")
Accordingly, on this record, we are constrained to reverse the
Examiner's rejections of claims 1--4, 6-11, and 13 under 35 U.S.C. § 103(a).
ORDER
In view of the reasons set forth in the Appeal Brief and above, the
Examiner's§ 103(a) rejections of claims 1 through 4, 6 through 11, and 13
are reversed.
REVERSED
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