Ex Parte Xia et al

Board of Patent Appeals and Interferences

Aug 7, 2012

11382101 (B.P.A.I. Aug. 7, 2012)

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.
11/382,101 05/08/2006 Bo Xia LCS-106/DIV/US 5508
31217 7590 08/08/2012
Loctite Corporation
One Henkel Way
Rocky Hill, CT 06067
EXAMINER
SASTRI, SATYA B
ART UNIT PAPER NUMBER
1762
MAIL DATE DELIVERY MODE
08/08/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte BO XIA, JAMES MURRAY, DOUG FROST,
and CHARLES SCHUFT
________________

Appeal 2011-006627
Application 11/382,101
Technology Center 1700
________________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/382,101

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The Examiner finally rejected claims 1-8, 12, 13, 18, and 21 of
Application 11/382,101 as obvious under 35 U.S.C. § 103(a). Appellants
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
Background
The ’101 application is directed to corrosion-inhibiting compositions
that can be used to bond galvanized surfaces. Spec. ¶ [0001]. It is well
known in the art that it is difficult to use prior art compositions to bond
galvanized surfaces. Id. at ¶ [0004]. Prior art compositions exhibit poor
adhesion to the galvanized surface at room temperature. Id. Furthermore,
when exposed to hot and humid conditions, bonds formed with the prior art
compositions exhibit little, if any tensile strength. Id.
The compositions of the ’101 application allegedly solve these
problems, creating bonds with high tensile strength, even after aging under
hot and humid conditions. See, e.g., id. at ¶¶ [0087]-[0090], [0093]-[0094].
Claim 1 of the ’101 application is representative and is reproduced
below:
1. A corrosion inhibiting curable composition for bonding
galvanized surfaces comprising:
(a) a first part comprising:
(i) at least one curable (meth)acrylate component;
(ii) a free-radical initiator component:
(iii) a phosphate ester component; and
(iv) an organic acid component;
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(b) a second part comprising one or more of an accelerator
component, a carrier component, and a free radical initiator
component, wherein at 1east one of the first part or the second
part further comprises a corrosion inhibitor selected from metal
phospho-silicates, alkali metal phospho-silicates, strontium zinc
phosphosilicate, phosphate, phosphosilicate, calcium
phosphosilicate, dialkylamino alkanoate metal salt, calcium
silico phosphate, barium metaborate, ammonium benzoate,
Vapor Phase Corrosion Inhibitor, benzothiazole succinate, 8-
hydroxyquinoline, and combinations thereof, and wherein at
least one of the phosphate ester component and the organic acid
component are present in an amount sufficient to achieve a
tensile strength on a galvanized surface of at least about 1000
psi when measured after humidity aging at 85% relative
humidity and a temperature of 85°C for a period of time of 250
hours or of at least about 2500 psi at room temperature.
App. Br. 13.
Rejections
1. The Examiner rejected claims 1-8, 12, and 21 under 35 U.S.C.
§ 103(a) as obvious over U.S. Patent No. 6,433,091 B1 (“Cheng,”
issued Aug. 13, 2002) in view of either U.S. Patent No. 6,359,058
B1 (“Clarke,” issued March 19, 2002) or U.S. Patent No.
4,943,604 (“Okuri,” issued July 24, 1990).
2. The Examiner rejected claims 13 and 18 under 35 U.S.C. § 103(a)
as obvious over Cheng in view of either Clarke or Okuri and
further in view of U.S. Patent No. 4,322,509 (“Zalucha,” issued
March 30, 1982).
Discussion
Rejection 1. The Examiner rejected claims 1-8, 12, and 21 as obvious
over Cheng in view of either Clarke or Okuri. We address these alternative
rejections in turn.
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We begin with the rejection of these claims as obvious over the
combination of Cheng and Clarke. The Examiner asserts that Cheng
describes every component of the two part adhesive composition of claim 1,
except the corrosion inhibitor. Ans. 4. The Examiner, however,
acknowledges that the components described in Cheng are not divided
between the first and second parts in the manner called for by the claims. Id.
Cheng, moreover, does not disclose a corrosion inhibitor selected from the
Markush group in claim 1. Id.
To remedy this deficiency, the Examiner cites Clarke as disclosing
anti-corrosive phosphosilicate pigments based on calcium, strontium, and
zinc. Id. 5. The Examiner also notes that Cheng states that it is well known
in the art that there is wide latitude for selecting the ingredients of the first
and second parts of a two part adhesive, so long as the ingredients that
initiate the curing reaction are kept separate from the ingredients with which
they react. Id. 4 (citing Cheng, col. 4, ll. 43-50).
Appellants advance three arguments against this rejection. We need
only consider the first argument, which is sufficient to lead us to reverse the
rejection over the combination of Cheng and Clarke.
Appellants first argue that the Examiner’s reliance on Clarke is
improper because Clarke is not from an analogous art. App. Br. 6. Noting
that Clarke describes pigment dispersants for emulsion paints (including
acrylic latex paints), Appellants argue that Clarke is neither in Appellants’
field of endeavor nor reasonably pertinent to the particular problem which is
addressed by the ‘101 application. Id.
The Examiner has the initial burden of demonstrating that the
challenged reference is in an art that is analogous to the field of the
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applicant’s invention. The Examiner attempted to meet this burden by
arguing that Cheng describes a composition to which pigments may be
added, and that it would therefore have been within the level of ordinary
skill in the art to add a pigment such as that taught by Clarke to Cheng’s
adhesive. Final Office Action 6 (Dec. 30, 2009), Ans. 9-10.
This argument does not address the test established by the case law.
“Two criteria have evolved for determining whether prior art is analogous:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed, and (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992). “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” Id. at 659. Because “familiar items may have
obvious uses beyond their primary purposes,” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 420 (2007), we must consider not just the inventor’s specific
problem, but the problems in general in the inventor’s art that might have led
an ordinary artisan to consider the reference.
Appellants defined the field of their endeavor as follows:
The present invention relates generally to compositions for
bonding galvanized surfaces and articles of manufacture that
contain such compositions. The present invention also relates to
methods for preparing the aforementioned compositions and
methods of using such compositions. Moreover, the present
invention relates to processes for inhibiting corrosion on a
galvanized surface.
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Spec. ¶ [0001].
The Examiner has not articulated any explanation as to how Clarke,
which describes pigment dispersal agents for use in a variety of paints, either
(1) is within the field described by Appellants, (2) is reasonably pertinent to
the problem addressed by the claimed invention, or (3) addresses well
known problems in the inventor’s art. The Examiner’s explanation, rather
than explaining how Clarke is from an analogous art, explains why a person
of ordinary skill in the art would have been motivated to combine the
teachings of the particular references. This is a legally distinct requirement
from the analogous art test.
The Examiner has not met the burden of establishing that Clarke is
from an art that is analogous to the inventor’s field of endeavor. Therefore,
we cannot sustain the rejection of claims 1-8, 12, and 21 as obvious over
Cheng in view of Clarke.
We now turn to the rejection of these claims as obvious over the
combination of Cheng and Okuri. As discussed above, Cheng does not
disclose a corrosion inhibitor selected from the Markush group in claim 1.
The Examiner therefore cited Okuri as disclosing rust inhibiting pigments
including aluminum metaphosphate and barium metaborate, which are in
claim 1’s Markush group. Ans. 5.
Appellants advance two arguments against this rejection. First,
Appellants argue that the chemical systems described in Cheng and Okuri
are so different that a person of ordinary skill in the art would not have had
any motivation to combine their teachings. App. Br. 7.
“[M]ere identification in the prior art of each element is insufficient to
defeat the patentability of the combined subject matter as a whole.” In re
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Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006). “Rather, to establish a prima facie
case of obviousness based on a combination of elements disclosed in the
prior art, the [Examiner] must articulate the basis on which it concludes that
it would have been obvious to make the claimed invention.” Id.; see also In
re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).
The Examiner argues that Cheng describes its composition as being
open to the inclusion of a variety of additional ingredients, including
pigments. Ans. 8 (citing Cheng, col. 4, ll. 30-33). Furthermore, Okuri
describes a structural adhesive that includes a rust-inhibiting pigment. Id.
(citing Okuri, col. 2, ll. 45-47; col. 4, ll. 49-51). As the Examiner explains, a
person of ordinary skill in the art would have been motivated to combine the
pigments described in Okuri with the adhesive described by Cheng to obtain
the corrosion resistance. Id. at 8-9, 11.
Thus, the Examiner has articulated an adequate motivation to combine
Cheng and Okuri.
Second, Appellants argue that chemistry is a sufficiently unpredictable
art that a person of ordinary skill in the art would not have had a reasonable
expectation that the combined teachings of Cheng and Okuri would work for
the intended purpose and would meet the property limitations of Claim 1.
App. Br. 8-10. A combination of references only renders a claimed invention
obvious if the skilled artisan would have had a reasonable expectation that
the combination would work for its intended purpose. Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007); In re Rinehart, 531 F.2d 1048,
1053-54 (CCPA 1976). Here, Appellants note that Cheng describes a
polymethacrylate adhesive and Okuri describes a rubber modified epoxy
adhesive. App. Br. 8. Because the chemistries of these types of adhesives
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differ, Appellants argue that there is no certainty that pigments suitable for
use in Okuri’s epoxy adhesives can be used in Cheng’s composition to
achieve the tensile strengths set forth in claim 1. Id. at 8-9.
In response, the Examiner merely asserts that the modified Cheng
compositions must necessarily have the claimed properties. Ans. 5. In other
words, the Examiner assumes that the addition of the pigments disclosed in
Okuri to the adhesive described in Cheng always creates an adhesive having
the claimed properties. The Examiner sets forth no basis for this naked
assertion, and articulates no reason why a person of ordinary skill in the art
would have had such an expectation in the absence of Appellants’
disclosure.1 The Examiner, therefore, has not met the burden of establishing
a reasonable expectation of success.
Because the Examiner has not articulated a reason why the person of
ordinary skill in the art would have had a reasonable expectation of success,
we cannot sustain the rejection of claims 1-8, 12, and 21 as obvious over
Cheng in view of Okuri.
Rejection 2. The Examiner rejected claims 13 and 18 as obvious over
Cheng in view of either Clarke or Okuri and further in view of Zalucha. In
arguing against this rejection, Appellants rely upon the arguments made in
support of patentability of claim 1. App. Br. 11.
For the reasons set forth in our discussion of Rejection 1, we cannot
sustain the rejection of claims 13 and 18 as obvious over the combination of
Cheng, Clarke, and Zalucha and also cannot sustain the rejection of claims
13 and 18 as obvious over the combination of Cheng, Okuri, and Zalucha.

1 Nor does the Examiner argue that the claimed tensile strength limitations
are result effective variables that would be the subject of routine
experimental optimization.
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Conclusion
For the reasons set forth above, we cannot sustain the Examiner’s
rejection of claims 1-8, 12, 13, 18, and 21 of the ’101 application.

REVERSED

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