Analytical Specialties, Inc.

Patent Trials and Appeals BoardOct 26, 2020

2019006776 (P.T.A.B. Oct. 26, 2020)

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. 14/230,895 03/31/2014 Keith E. Eidschun 2730.01 6174 21901 7590 10/26/2020 Smith & Hopen (private clients) Attn: General Patent Matters 180 Pine Avenue North Oldsmar, FL 34677 EXAMINER CHUNG, HO-SUNG ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 10/26/2020 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): pair@smithhopen.com patents@smithhopen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEITH E. EIDSCHUN and JOSHUA CLOAKEY Appeal 2019-006776 Application 14/230,895 Technology Center 1700 Before TERRY J. OWENS, LINDA M. GAUDETTE, and KAREN M. HASTINGS, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge OWENS. Opinion Dissenting filed by Administrative Patent Judge HASTINGS. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5, and 6. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Analytical Specialties, Inc. (Appeal Br. 3). Appeal 2019-006776 Application 14/230,895 2 CLAIMED SUBJECT MATTER The claims are directed to a system for anodizing aluminum, magnesium or alloys thereof. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An anodizing system for use in anodizing of aluminum, magnesium or alloys thereof comprising: a metal substrate wherein the metal substrate is aluminum, magnesium or alloy thereof; and an anodizing solution comprising: an acid solution formed from at least one acid selected from the group consisting of sulfuric acid, nitric acid, phosphoric acid, hydrochloric acid, citric acid, boric acid, carboxylic acid, carbonic acid and combinations thereof diluted with deionized water; and at least one oxidizing agent selected from the group consisting of potassium permanganate, sodium permanganate, hydrogen permanganate, lithium permanganate, sodium orthovanadate and combinations thereof; wherein the at least one acid is present in the anodizing solution at a concentration of between about 10% w/v to about 20% w/v; wherein the at least one oxidizing agent is present in the anodizing solution at a concentration of between about 0.01% w/v to about 0.05% w/v. REFERENCES The prior art relied upon by the Examiner is: Appeal 2019-006776 Application 14/230,895 3 Name Reference Date Kuttner GB 329,190 May 15, 1930 Windsor-Bowen GB 396,743 Aug. 8, 1933 Schenk US 2,231,373 Feb. 11, 1941 Egan Ind. & Engr. Chem. June 1955 Takatani JP 61-235596 A Oct. 20, 1986 Hanson US 2003/0164350 A1 Sept. 4, 2003 Yui US 2005/0106403 A1 May 19, 2005 Liao US 2006/0141751 A1 June 29, 2006 Yang US 2011/0171600 A1 July 14, 2011 Hecker PF Directory Undated Sulfuric Acid Mettler Toledo Undated Potassium Permanganate Mettler Toledo Undated REJECTIONS The claims stand rejected under 35 U.S.C. § 103 as follows: 1) claims 1, 3, and 6 over Windsor-Bowen in view of a) Liao and/or Yang, and b) at least one of Kuttner, Schenk and Takatani, as evidenced by Mettler Toledo Sulfuric Acid and Mettler Toledo Potassium Permanganate; 2) claim 2 over Windsor-Bowen in view of a) Liao and/or Yang, b) at least one of Kuttner, Schenk and Takatani, and c) Yui, as evidenced by Mettler Toledo Sulfuric Acid and Mettler Toledo Potassium Permanganate; and 3) claim 5 over Windsor-Bowen in view of a) Liao and/or Yang, b) at least Appeal 2019-006776 Application 14/230,895 4 one of Kuttner, Schenk and Takatani, and c) Yui, as evidenced by Mettler Toledo Sulfuric Acid, Mettler Toledo Potassium Permanganate, and Egan. OPINION We need address only the sole independent claim, i.e., claim 1. Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Windsor-Bowen anodizes aluminum or aluminum alloys in an aqueous electrolyte solution containing 1) 25–55 wt% of a mixture of sulfuric acid and sodium sulfate in a weight ratio of 1 part sulfuric acid to 3.2 parts sodium sulfate, and 2) an oxidizing agent such as sodium nitrate, potassium nitrate, sodium persulfate, potassium persulfate, sodium perborate, or potassium perborate, preferably in a proportion of 1% or less, using a voltage of 80–100 volts and a current density of 1–5 amperes per square foot (p. 1, l. 84 – p. 2, l. 6; p. 2, ll. 22–44, 68–72).2 Kuttner forms a very thick and strong oxide coating on aluminum or an aluminum alloy electrolytically in an aqueous mixture of oxalic acid and potassium permanganate or any other oxidizing substance such as hydrogen peroxide, nitric acid, chromium acid, potassium bichromate, or hydrochloric 2 The Examiner relies upon Liao and/or Yang for a suggestion to use deionized water as the water in Windsor-Bowen’s aqueous electrolyte solution (Non-final Rej. 5), and relies upon Mettler Toledo for a disclosure of potassium permanganate solution properties (Non-final Rej. 6). Appeal 2019-006776 Application 14/230,895 5 acid, using a voltage of 120 volts (p. 1, ll. 9–12, 37–45, 53–65, 69–75; p. 2, ll. 39–42). The Examiner concludes that it would have been prima facie obvious to one of ordinary skill in the art to use as Windsor-Bowen’s oxidizing agent, Kuttner’s potassium permanganate without the oxalic acid which would not function as an oxidizing agent, because “due to the similarities between Windsor’s and Kuttner’s anodization processes, a person of ordinary skill in the art would have had a reasonable expectation of success substituting Kuttner’s potassium permanganate as Windsor’s oxidizing agent” (Ans. 9). The Examiner does not specifically identify those similarities, but finds that both Windsor-Bowen and Kuttner use an oxidizing agent when forming an oxide layer on aluminum by anodization (Ans. 8). Windsor-Bowen’s anodization in an aqueous electrolyte solution of a mixture of sulfuric acid and sodium sulfate in a weight ratio of 1 part sulfuric acid to 3.2 parts sodium sulfate differs from Kuttner’s anodization in oxalic acid containing an oxidizing agent or a strong inorganic acid, and Windsor-Bowen’s and Kuttner’s exemplified oxidizing agents do not overlap (Windsor-Bowen, p. 1, ll. 37–41; Kuttner p. 1, ll. 53–65). The Examiner does not establish that in view of the difference between Windsor- Bowen’s and Kuttner’s anodization systems and Kuttner’s use of potassium permanganate because it is particularly suited in admixture with oxalic acid which Windsor-Bowen’s anodization solution does not contain (Kuttner, p. 1, ll. 9–12, 53–56; Windsor-Bowen, p. 2, ll. 22–44), one of ordinary skill in the art would have had an apparent reason to use potassium permanganate as Windsor-Bowen’s oxidizing agent. Appeal 2019-006776 Application 14/230,895 6 Takatani anodizes magnesium, aluminum, or their alloys in a bath which contains carbonate of alkaline and/or alkaline earth metals and, to promote oxidation, can contain an acidic oxide such as potassium permanganate (p. 2). The Examiner finds that because both Windsor-Bowen and Takatani use an oxidation agent when forming an oxide layer on aluminum by anodization, one of ordinary skill in the art would have had a reasonable expectation of success in using Takatani’s potassium permanganate as Windsor-Bowen’s oxidizing agent (Ans. 5), and because Takatani discloses that potassium permanganate is an acidic oxide and functions as an oxidant in an alkaline solution (p. 2), one of ordinary skill in the art would have expected potassium permanganate to function as an oxidant in an acidic solution such as that of Windsor-Bowen (Ans. 7). The Examiner does not provide evidence which shows that one of ordinary skill in the art would have expected Takatani’s oxidant to be suitable in Windsor-Bowen’s solution merely because both Windsor-Bowen and Takatani form an oxide layer on aluminum by anodization, or would have expected an oxidant that is suitable in an alkaline anodizing solution to be suitable in an acidic anodizing solution. Schenk electrolytically forms on aluminum or an aluminum alloy an opaque, enamel-like film containing aluminum oxide and titanium dioxide, then whitens the opaque layer by treating it with an oxidant such as persulfate, potassium permanganate, bichromate, chlorate, concentrated nitric acid, acid solution of hydrogen peroxide, or perborate (p. 1, left col. ll. 13–19, 29–34; p. 3, left col., ll. 38–43). Appeal 2019-006776 Application 14/230,895 7 The Examiner finds that “a person having ordinary skill in the art would have recognized that persulfate works in anodization from Windsor’s teachings and also works in the whitening treatment from Schenk’s teachings” (Ans. 11), and that “a person having ordinary skill in the art would have reasonably expected that if persulfate works in both as an oxidizing agent and if potassium permanganate works as an oxidizing agent in whitening, then potassium permanganate would also work in anodization” (id.). Those findings are not well taken due to lack of evidentiary support. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not. . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”). Thus, the Examiner has not established that one of ordinary skill in the art would have had an apparent reason to modify Windsor-Bowen to arrive at the Appellant’s claimed anodizing system. Accordingly, we reverse the rejections. CONCLUSION The Examiner’s rejections are reversed. Appeal 2019-006776 Application 14/230,895 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 6 103 Windsor-Bowen, Liao, Yang, Kuttner, Schenk, Takatani, Mettler Toledo Sulfuric Acid, Mettler Toledo Potassium Permanganate 1, 3, 6 2 103 Windsor-Bowen, Liao, Yang, Kuttner, Schenk, Takatani, Yui, Mettler Toledo Sulfuric Acid, Mettler Toledo Potassium Permanganate 2 5 103 Windsor-Bowen, Liao, Yang, Kuttner, Schenk, Takatani, Yui, Mettler Toledo Sulfuric Acid, Mettler Toledo Potassium Permanganate, Egan 5 Overall Outcome 1–3, 5, 6 REVERSED Appeal 2019-006776 Application 14/230,895 9 HASTINGS, Administrative Patent Judge, dissenting. I respectfully dissent. Upon consideration of the evidence in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply Brief, I determine that Appellant has not demonstrated reversible error in the Examiner’s rejections (e.g., see generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s rejection). I would sustain the rejections for the reasons expressed by the Examiner in the Final Office Action and the Answer. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264– 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant’s arguments mainly focus on its belief that the Examiner has not provided sufficient evidence that the potassium permanganate oxidizing agent taught in Kuttner, Schenk, and/or Takatani would have been expected to work as an alternative oxidizing agent for the oxidizing agent, e.g., potassium persulfate, discussed in Windsor-Bowen. I believe, however, that one of ordinary skill in the art, using no more than ordinary creativity, would have used potassium permanganate as a known oxidizing agent in Windsor-Bowen’s process for the reasons established by the Examiner. A Appeal 2019-006776 Application 14/230,895 10 person of ordinary skill in the art would have readily appreciated and implemented the use of a known alternative oxidizing agent, that is potassium permanganate as exemplified to be a known oxidizing agent in the applied prior art (Kuttner, Schenk, and/or Takatani) for the non-limiting examples of oxidizing agents, e.g., potassium persulfate discussed in Windsor-Bowen. Thus, in my view, Appellant has not shown reversible error in the Examiner’s obviousness determination of the claimed system. See KSR, 550 U.S. at 417 (the predictable use of known prior art elements or steps performing the same functions they have been known to perform is normally obvious; the combination of familiar elements/steps is likely to be obvious when it does no more than yield predictable results); Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ) (emphasis omitted). Accordingly, I would affirm all of the Examiner’s rejections on appeal.