Ex Parte Fruge et al

Patent Trial and Appeal Board

Jul 31, 2015

12743719 (P.T.A.B. Jul. 31, 2015)

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.
12/743,719 09/01/2010 Daniel Ray Fruge W9772-01 6209
30633 7590 07/31/2015
W.R. GRACE & CO.-CONN.
7500 GRACE DRIVE
COLUMBIA, MD 21044
EXAMINER
DIGGS, TANISHA
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
07/31/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL RAY FRUGE, YOSHITAKA SUGIMOTO
and QI SUN
____________

Appeal 2013-010794
Application 12/743,719
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–3, 5–10, 12–17, 19–24, 26–31, and 33–35.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
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We focus our discussion on independent claim 1, which reads
(emphasis provided):
1. An anticorrosion composition comprising:
solvent;
colloidal particles; and
at least one multivalent metal ion, wherein the weight
ratio of metal ion to colloidal particle is greater than about
0.001 up to about 0.1, wherein the at least one multivalent
metal ion consists of Al, Ga, Ti, Zr, Hf, Zn, Mg, Ca, Nb, Ta, Fe,
Cu, Sn, Co, W, Ce, or mixtures thereof.

The Examiner maintains the following rejections:1:
(a) claims 1–3, 6–10, 13–17, 20, 21, 29–31, 34, and 35 rejected under
35 U.S.C. § 102(b) as anticipated by Choby, Jr. ((US 4,032,366, issued June
28, 1977) (hereinafter “Choby”);

(b) claims 7, 15–17, 20, 21, and 35 rejected under 35 U.S.C. § 103(a)
as unpatentable over Choby2;

(c) claims 5, 12, 19, and 33 rejected under 35 U.S.C. § 103(a) as
unpatentable over Choby and Kanamaru et al. (US 4,897,317, issued January
30, 1990) (hereinafter “Kanamaru”); and

(d) claims 1–3, 5–10, 12–17, 19–24, 26–31, and 33–35 rejected under
35 U.S.C. § 103(a) as unpatentable over Bittner et al. (US 2003/0185990 Al,
published October 2, 2003) (hereinafter “Bittner”).

1 The Examiner withdrew the rejection of claims 1–3, 5–10, 12–17, 19–21,
and 33–35 under 35 U.S.C. § 103(a) over Cole (US 2006/0147734 A1,
published July 6, 2006). Ans. 8. Accordingly, this rejection is not before us
for review on appeal.
2 The Examiner modified this rejection in the Answer to address only claims
7, 15–17, 20, 21, and 35. Cf. Final Act. 4 and Ans. 3.
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Rejections based on Choby (Rejections (a)-(c))
For Rejection (a), Appellants present separate arguments for
independent claim 15 which further recites “wherein the composition
remains stable for at least 8 hours at 25°C.” Claims App’x; App. Br. 23, 16.
Claims argued separately will be addressed separately. Claims not
separately argued stand or fall with their respective independent claim. We
select claim 1 as representative.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of claim 1 is unpatentable. Accordingly, we sustain
the Examiner’s prior art rejection for the reasons explained in the Answer,
and we add the following primarily for emphasis.

ANALYSIS
Independent claim 1 requires an anticorrosion composition
comprising at least one multivalent metal ion, “wherein the at least one
multivalent metal ion consists of Al, Ga, Ti, Zr, Hf, Zn, Mg, Ca, Nb, Ta, Fe,
Cu, Sn, Co, W, Ce, or mixtures thereof” (emphasis added).
The Examiner found Choby’s coating composition of 6% magnesium,
5 to 34% colloidal silica and water anticipates the subject matter of
independent claim 1. Final Act. 3; Choby Table II, col. 3, ll. 20–29.
Appellants argue that Choby’s anticorrosion composition requires the
presence of chromium while the subject matter of independent claim 1 does
not. App. Br. 16; Choby Abstract, Table II. According to Appellants, claim
1 is limited to the multivalent metal ion(s) listed in the clause having the
transitional language “consists of,” a listing that does not include Choby’s
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disclosed chromium. App. Br. 16. Appellants further argue the transitional
language “comprising” in the preamble of claim 1 does not permit the
addition of multivalent metal ions not included in the listing of the above
noted clause, such as Choby’s disclosed chromium. Id.
We are unpersuaded by these arguments and agree with the
Examiner’s finding of anticipation. Contrary to Appellants’ arguments, the
Examiner correctly determined that claim 1, by virtue of using the
transitional term “comprising” in the preamble, does not exclude the
presence of other unclaimed multivalent metal ion(s), such as the unclaimed
chromium taught by Choby. Gillette Co. v. Energizer Holdings, Inc. 405
F.3d 1367, 1371–1372 (Fed. Cir. 2005) (“The word ‘comprising’
transitioning from the preamble to the body signals that the entire claim is
presumptively open-ended.”); In re Baxter, 656 F.2d 679, 686–87 (CCPA
1981) (“As long as one of the monomers in the reaction is [the claimed]
propylene, any other monomer may be present, because the term ‘comprises’
permits the inclusion of other steps, elements, or materials.”) Appellants
have not shown that the term “consisting of” used in the context of
“multivalent metal ion(s)” recited in claim 1 would have precluded the
presence of the other multivalent metal ion(s) in the anticorrosion
composition of claim 1. See, e.g., In re Crish, 393 F.3d 1253, 1257 (Fed.
Cir. 2004) (explaining that the “reasonable interpretation of the claims
containing both of the terms ‘comprising’ and ‘consists’ is that the term
‘consists’ limits the ‘said portion’ language to the subsequently recited
numbered nucleotides, but the earlier term ‘comprising’ means that the claim
can include that portion plus other nucleotides.”).
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On this record, Appellants have not referred to any disclosure in the
Specification that would have disavowed or disclaimed the unclaimed
chromium taught by Choby. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 906 (Fed. Cir. 2004) (“[T]he claims of the patent will not be
read restrictively unless the patentee has demonstrated a clear intention to
limit the claim scope using ‘words or expressions of manifest exclusion or
restriction.’”). In fact, the Specification describes examples of the
multivalent metal ions include, but are not limited to, Al, Ga, Ti, Zr, Hf, Zn,
Mg, Ca, Nb, Ta, Fe, Cu, Sn, Co, W, Ce, Ba, Mn, Mo, V and the like
(emphasis added). Spec. ¶ 23.
With respect to independent claim 15, which further recites “wherein
the composition remains stable for at least 8 hours at 25°C,” Appellants
argue there is no mention in Choby regarding the stability of the
composition because chromium is well recognized in the art as providing
instability to colloidal silica. App. Br. 16.
We are again unpersuaded for the reasons presented by the Examiner.
Final Act. 3; Ans. 10–11. As noted by the Examiner, Appellants have
proferred no evidence in support of the argument that chromium provides
instability to colloidal silica. Ans. 11. Appellants have not adequately
distinguished the claimed anticorrosion composition from the composition
of Choby.
Therefore, we affirm the Examiner’s § 102 rejection (Rejection (a))
for the reasons presented by the Examiner and given above.
With respect to Rejections (b) and (c), Appellants rely substantially on
the arguments presented with respect to the presence of chromium in
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Choby’s anticorrosion composition when discussing Rejection (a). App. Br.
17–19. These arguments have been addressed above.
Therefore, we also affirm the Examiner’s § 103 rejections (Rejections
(b) and (c)) for the reasons presented by the Examiner and given above.

Rejection based on Bittner (Rejection (d))
We have reviewed each of Appellants’ arguments for patentability.
However, we are in agreement with the Examiner that the claimed subject
matter of claim 1 is unpatentable under § 103(a) in view of the applied prior
art.3 Accordingly, we sustain the Examiner’s prior art rejection for the
reasons explained in the Answer, and we add the following primarily for
emphasis.
The Examiner found Bittner discloses anticorrosive coatings
comprising an aqueous dispersion of inorganic particles in the form of
colloidal silica, water, organic binders and ions of Cu and/or Zn. Final Act.
9–10; Bittner ¶¶ 12, 36, 81, 118, 193, 266. The Examiner found Bittner does
not disclose the weight ratio of metal ion to colloidal particle and the
stability of the composition. Final Act 10. The Examiner found it would
have been obvious to one of ordinary skill in the art to reasonably expect the
weight ratio of metal ion to colloidal particle of Bittner to be within the
claimed range because Bittner discloses the use of silica in the range from
0.1 to 80 g/l and zinc ions in a preferable range of 0.2 to less than 50 g/l.
Final Act. 10; Bittner ¶¶ 81, 188. Thus, the Examiner found it would have

3 Appellants do not argue any claim separate from the other in this rejection.
App. Br. 20. We select independent claim 1 as representative and limit our
discussion to this claim. Claims 2, 3, 5–10, 12–17, 19–24, 26–31, and 33–
35 stand or fall with independent claim 1.
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been obvious to one of ordinary skill in the art to optimize the proportions of
the Zn ion and silica in the composition through routine experimentation.
Final Act. 10. With regard to the stability of the composition, the Examiner
found it would have been obvious to one of ordinary skill in the art to
reasonably expect the same stability in Bittner’s composition as in the
claimed composition because the compositions are similar. Id. at 11.
Appellants argue Bittner discloses a weight ratio of multivalent metal
ions to inorganic particles in Examples 67–77 of around 1.0 that is
significantly higher than the claimed range of greater than about 0.001 up to
about 0.1 recited in claim 1. App. Br. 20; Bittner Examples 67–77. ¶¶ 79,
80, 82. Appellants further argue there is no motivation to modify the
amounts of multivalent metal ions in Bittner’s composition so as to arrive to
the claimed weight ratio because the artisan may have expected the
anticorrosion properties of the composition to be unacceptable at such low
concentrations. App. Br. 20.
We are unpersuaded by these arguments. As noted by the Examiner,
Bittner discloses broad ranges of concentrations for both the multivalent
metal ions (0.2 to less than 50 g/l for the exemplary zinc) and silica (0.1 to
80 g/l). Final Act. 10; Ans. 11–12; Bittner ¶¶ 81, 188. The Examiner
calculated that concentrations of 5 wt% of the hexafluoro zirconium cation
complex and of 50 wt% of colloidal silica result in a weight ratio of 0.1,
overlapping the upper limit of the claimed weight ratio. Id. Thus, the
Examiner provided a reasonable basis to establish that Bittner’s broad
concentrations for multivalent metal ions and inorganic particles result in a
weight ratio range of multivalent metal ions to inorganic particles that
overlaps the claimed weight ratio range. See In re Peterson, 315 F.3d 1325,
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1329–30 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and
our predecessor court have consistently held that even a slight overlap in
range establishes a prima facie case of obviousness” and further explained
that when “the claimed ranges are completely encompassed by the prior art,
the conclusion is even more compelling than in cases of mere overlap.”). It
has been consistently held the Appellants must show that the particular range
is critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d at
1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). On this record,
Appellants have proffered no evidence in support of any criticality of the
weight ratio claimed. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellants’ argument that Bittner’s Examples 67–77 result in a
significantly higher ratio of multivalent metal ions to inorganic particle than
claimed is also unavailing because it is well established that a reference is
not limited to its examples or preferred embodiments. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of
the prior art, including unpreferred embodiments, must be considered”)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Therefore, we affirm the Examiner’s rejection of claims 1–3, 5–10,
12–17, 19–24, 26–31, and 33–35 under 35 U.S.C. § 103(a) as unpatentable
over Bittner for the reasons presented by the Examiner and given above.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED