December, Timothy S. et al.

Patent Trials and Appeals Board

Dec 11, 2019

14358107 - (D) (P.T.A.B. Dec. 11, 2019)

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”).
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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.
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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
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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.
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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
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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.
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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
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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
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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
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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.
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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