December, Timothy S. et al.Download PDFPatent Trials and Appeals BoardDec 11, 201914358107 - (D) (P.T.A.B. Dec. 11, 2019) Copy Citation 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. 14/358,107 05/14/2014 Timothy S. December 27843-1072 0000071746US0 4091 76656 7590 12/11/2019 Patent Docket Department Armstrong Teasdale LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 EXAMINER ZHANG, MICHAEL N ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 12/11/2019 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): USpatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TIMOTHY S. DECEMBER, GREGORY MENOVCIK, SCOTT SWAIN, ZENON PAUL CZORNIJ, BRIAN MCDERMOTT, MARK LALAMA, PAUL DUDEK, and JOSEPH FRYE ____________ Appeal 2019-003199 Application 14/358,107 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 1 In this Decision, we refer to the Specification filed May 14, 2014 (“Spec.”); Final Office Action dated July 6, 2018 (“Final Act.”); Appeal Brief filed Nov. 27, 2018 (“Appeal Br.”); Examiner’s Answer dated Jan. 31, 2019 (“Ans.”); and Reply Brief filed Mar. 7, 2019 (“Reply Brief”). Appeal 2019-003199 Application 14/358,107 2 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 3–6, 22, 24, and 28–32.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant’s disclosure relates to a liquid metal composition, a multi-layered coating system, and a method of forming the multi-layered coating system. Spec. ¶¶ 1, 10, 11. The liquid metal composition includes a binder comprising an acrylic resin and a cellulose acetate butyrate, a wax, an organic solvent, and an aluminum pigment comprising PVD aluminum flake. Spec. ¶¶ 9, 22; Abstract. The multi-layer coating system includes a substrate, a liquid metal layer disposed about the substrate and formed from the liquid metal composition, and a topcoat layer disposed about the liquid metal layer and formed from a topcoat composition. Spec. ¶ 10. Claim 1 illustrates the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: Claim 1. A multi-layered coating system having a flop index of greater than 10, said multi-layered coating system comprising: (A) a substrate; (B) a liquid metal layer disposed about said substrate and formed from a liquid metal composition having an application percent solids in the range of greater than 10% to 35% and comprising: 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies BASF Coatings, Gmbh as the real party in interest. Appeal Br. 1. 3 Claims 7–17 and 19–21 are withdrawn. Appeal Br. 2. Appeal 2019-003199 Application 14/358,107 3 a binder comprising an acrylic resin and a cellulose acetate butyrate and a melamine formaldehyde resin, the cellulose acetate butyrate being present in an amount greater than 20% by weight of the binder and having a number average molecular weight (Mn) from 20,000 to 80,000, a wax, an organic solvent, and an aluminum pigment comprising PVD aluminum flake proximal to the substrate and oriented substantially parallel to the substrate within the liquid metal layer; and (C) a topcoat layer disposed about said liquid metal layer and formed from a topcoat composition; wherein the multi-layered coating system is effective to provide a liquid metal appearance; and wherein a ratio of said aluminum pigment to said binder in the liquid metal composition is less than 0.25. Appeal Br. 11 (key disputed claim language italicized and bolded). REFERENCES The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Name Reference Date Kasari US 4,781,949 Nov. 1, 1988 Josephy et al. (“Josephy”) US 2002/0041047 A1 Apr. 11, 2002 Fechtenkoetter et al. (“Fechtenkoetter”) US 2005/0131131 A1 June 16, 2005 Ma et al. (“Ma”) US 2008/0319134 A1 Dec. 25, 2008 Low et al. (“Low”) US 2010/0151139 A1 June 17, 2010 Bhattacharya et al. (“Bhattacharya ’859”) WO 2010/110859 A1 Sept. 30, 2010 Appeal 2019-003199 Application 14/358,107 4 Historic Developments, in Automotive Paints and Coatings, 1–11 (2001) (2d ed., Wiley-VCH) (Hans-Joachim Streitberger & Karl-Friedrich eds., 2010) (“Streitberger”). PCI Paint & Coatings Industry, PVD Aluminum Pigments: Superior Brilliance for Coatings & Graphic Arts (June 1, 2000) http://www.pcimag.com/articles/print/84559-pvd-luminum-pigments- superior-brilliance-for-coatings-graphic-arts (last visited Dec. 11, 2014) (“PCI”). Eastman™ Cellulose Acetate Butyrate (CAB-381-20), Technical Data Sheet (Aug. 22, 2006) (“Eastman”). Ineos Melamines® Resime 755, Technical Data Sheet (Apr. 2007) (“Ineos”). REJECTIONS On appeal, the Examiner maintains (Ans. 3) the following rejections: 1. Claims 1, 3, 6, 22, 24, 28, 31, and 32 are rejected under 35 U.S.C. § 103 as being unpatentable over Ma in view of Bhattacharya ’859,4 Eastman, Fechtenkoetter, PCI, Kasari, and Low (“Rejection 1”). Ans. 3. 2. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, and Low in view of Josephy (“Rejection 2”). Id. at 9. 3. Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, and Low in view of Streitberger (“Rejection 3”). Id. at 9. 4 For each of the above rejections, the Examiner refers and cites to Bhattacharya et al., US 2011/0020559 A1 (published Jan. 27, 2011), which is the U.S. patent application publication version of the Bhattacharya ’859 reference, which is a WIPO publication. See Ans. 3. Appeal 2019-003199 Application 14/358,107 5 4. Claims 29 and 30 are rejected under 35 U.S.C. § 103 as being unpatentable over Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, and Low in view of Ineos (“Rejection 4”). Id. at 10. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner’s rejections based on the fact-finding and reasoning set forth in the Answer and Final Office Action, which we adopt as our own. We add the following primarily for emphasis. Rejection 1 The Examiner rejects claims 1, 3, 6, 22, 24, 28, 31, and 32 under § 103 as obvious over the combination of Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, and Low (Ans. 3–8), which we refer to as Rejection 1. In response to the Examiner’s rejection, Appellant presents arguments for the patentability of claims 1, 3, 6, 22, 24, 28, 31, and 32 as a group. Appeal Br. 5, 8. We select claim 1 as representative, and the remaining claims subject to the Examiner’s rejection stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines that the combination of Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, and Low suggests a multi-layered coating system satisfying all of the limitations of claim 1 and concludes the combination would have rendered the claim obvious. Ans. 3–7. Regarding the recitation “PVD aluminum flake proximal to the substrate,” the Examiner relies on Kasari for teaching or suggesting that Appeal 2019-003199 Application 14/358,107 6 element of the claim. Id. at 6. In particular, the Examiner finds that Kasari teaches a metallic coating method comprising applying an aluminum flake pigment layer on a substrate, wherein the metallic flake pigment layer is placed on and oriented parallel to the substrate. Id. at 6, 11 (citing Kasari, Abstract, 1:41–67, 4:10–25, 5:15–20). Appellant argues that the Examiner’s rejection of claim 1 should be reversed because the cited art does not disclose or suggest “PVD aluminum flake proximal to the substrate and oriented substantially parallel to the substrate within the liquid metal layer,” as recited in the claim. Appeal Br. 5–7; Reply Br. 1–3. In particular, Appellant contends that Kasari does not disclose or suggest PVD aluminum flake that is “positioned proximal” to the substrate. Appeal Br. 7. Rather, Appellant contends Kasari discloses a metallic coating system with three layers in which the layer closest to the substrate is free of metallic flake and, therefore, the metallic flake pigment is not positioned proximal to the substrate. Id. at 8; see also Reply Br. 3 (arguing “the layer closest to the substrate is free of metallic flake”). Essentially, Appellant argues the Examiner’s rejection should be reversed because the Examiner’s interpretation of the term “proximal” is overly broad and inconsistent with the term’s meaning when read in light of the specification. Reply Br. 1. Appellant contends that the term “proximal” should be construed to mean, “next to or nearest the point of attachment or origin, a central point, or point of view,” i.e., the pigment is directly touching the substrate or there are no intervening layers between the substrate and pigment layer, which Appellant maintains a person of ordinary skill in the art would have understood the term to mean. Id. at 2–3. Appeal 2019-003199 Application 14/358,107 7 We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection based on the fact-finding and reasoning provided by the Examiner at pages 3–7 and 11–12 of the Answer and pages 2–6 of the Final Office Action. In particular, we find a preponderance of the evidence and sound technical reasoning support the Examiner’s findings and determination that the cited art teaches or suggests a multi-layered coating system satisfying all of the limitations of claim 1, including “PVD aluminum flake proximal to the substrate” (see Kasari, Abstract, 1:41–67, 3:25–40, 4:10–25, 4:55–67, 5:15–20, 5:30–43), and conclusion that the combination would have rendered the claim obvious, and that the Examiner’s interpretation of the term “proximal” constitutes the broadest reasonable interpretation consistent with the Specification. During prosecution, claims are given their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read in light of the specification, as they would have been interpreted by one of ordinary skill in the art at the time of the invention. Id. As the Examiner points out (Ans. 11), the Specification does not provide a specific definition of the phrase “proximal to the substrate” or the term “proximal” beyond the language recited in the claim. Appellant also does not identify or direct us to any description in Specification indicating that “proximal” as recited in claim 1, must be construed narrowly to mean nearest the point of attachment or origin or requiring that the pigment be directly touching the substrate. Thus, absent any special or scope-limiting definition in the Specification, and based on the fact-finding and reasons provided by the Appeal 2019-003199 Application 14/358,107 8 Examiner at pages 11–12 of the Answer, we find the Examiner correctly applied the broadest reasonable interpretation consistent with the Specification of the term “proximal” to mean situated close to. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[W]e look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”). This interpretation is also consistent with, for example, Figures 4 and 6 of Appellant’s Specification, which depict PVD aluminum flake 18 not directly contacting substrate 10. Moreover, applying the broadest reasonable interpretation of the recitation “proximal to the substrate,” we discern no reversible error in the Examiner’s finding that Kasari teaches or suggests that element of the claim. In particular, we find a preponderance of the evidence supports the Examiner’s finding (Ans. 6, 11) that Kasari teaches a metallic coating comprising an aluminum flake pigment layer located on a substrate (Kasari, Abstract, 1:41–67, 4:10–25, 5:15–20) and, because the aluminum flake pigment within the pigment layer is situated close to the substrate, it falls within the scope of “proximal to the substrate,” as recited in the claim. Appellant’s contentions at pages 5–9 of the Appeal Brief and pages 2–3 of the Reply Brief are not persuasive because they are conclusory and, without more, do not reveal reversible error in the Examiner’s factual findings and analysis in this regard. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer’s arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). Appellant’s contentions in this regard are also not well-taken because they are premised Appeal 2019-003199 Application 14/358,107 9 on Appellant’s incorrect interpretation as to what the term “proximal” should be construed to mean. Appellant’s contentions that “Kasari teaches away from a multi-layered coating system having PVD aluminum flake oriented proximal to the substrate” (Appeal Br. 8) and “a person skilled in the art would not combine the cited references because the cited references teach away from the asserted combination” (id. at 9) are not persuasive because they are conclusory and Appellant does not direct us to persuasive evidence in the record to support them. De Blauwe, 736 F.2d at 705 (Fed. Cir. 1984); see also In re Fulton, 391 F.3d 1195, 1201 (finding that there is no teaching away where the prior art’s disclosure “does not criticize, discredit, or otherwise discourage the solution claimed”). We will not read into the prior art a teaching away where no such language exists. Cf. DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Moreover, as the Examiner explains at page 12 of the Answer, Appellant’s teaching away argument is misplaced because it too is based upon Appellant’s incorrect interpretation of the term “proximal.” Accordingly, we affirm the Examiner’s rejection of claims 1, 3, 6, 22, 24, 28, 31, and 32 under 35 U.S.C. § 103 as obvious over the combination of Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, and Low. Rejections 2, 3, and 4 In response to the Examiner’s § 103 rejections of claim 4 as obvious over the combination of Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, Low, and Josephy (Ans. 9), which we refer to as Rejection 2; claim 5 as obvious of the combination of Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, Low, and Streitberger (id. at 9–10), which we Appeal 2019-003199 Application 14/358,107 10 refer to as Rejection 3; and claims 29 and 30 as obvious over the combination of Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, Low, and Ineos (id. at 10–11), which we refer to as Rejection 4, Appellant does not present any new or additional substantive arguments. Rather, Appellant relies on the same arguments previously presented above in response to the Examiner’s rejection of claim 1. Thus, based on the fact-finding and reasoning provided by the Examiner at pages 3–12 of the Answer, and for principally the same reasons discussed above for affirming the Examiner’s rejection of claim 1, we affirm the Examiner’s Rejections 2, 3, and 4 stated above. Appeal 2019-003199 Application 14/358,107 11 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 6, 22, 24, 28, 31, 32 103 Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, Low 1, 3, 6, 22, 24, 28, 31, 32 4 103 Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, Low, Josephy 4 5 103 Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, Low, Streitberger 5 29, 30 103 Ma, Bhattacharya ’859, Eastman, Fechtenkoetter, PCI, Kasari, Low, Ineos 29, 30 Overall Outcome 1, 3–6, 22, 24, 28–32 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation