Ex Parte Malas

Patent Trial and Appeal Board

Nov 21, 2016

12241145 (P.T.A.B. Nov. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/241,145 09/30/2008
20411 7590 11/21/2016
The Linde Group
200 Somerset Corporate Blvd.
Suite 7000
Bridgewater, NJ 08807
FIRST NAMED INVENTOR
Akin MALAS
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P07155 6593
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
MAILDATE DELIVERY MODE
11/21/2016 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 AKIN MALAS
Appeal2015-005873
Application 12/241, 145
Technology Center 1700
Before LINDA M. GAUDETTE, ELIZABETH M. ROESEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005873
Application 12/241, 145
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 1, 2, 6-12, and 18. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
The invention relates to an improved gas wiping process for removing
excess coating from a product. Specification filed Sept. 30, 2008 ("Spec.") i-f 1.
According to the Specification, it was known in the art at the time of the invention
to apply a molten coating onto a metal sheet surface, and then remove excess
coating material by delivering low-pressure, high-volume air streams (i.e., a
wiping gas) to the coated metal sheet surface. Id. i-fi-12-3. It was also known in the
art to use nitrogen instead of air for coating removal. Id. i-f 5. The Specification
discloses that nitrogen provides a coating with improved surface quality as
compared to air, but a drawback of nitrogen is its relatively high cost. Id. The
inventor is said to have discovered a coating method that achieves improved
product quality, but at lower costs than known processes that utilize nitrogen alone
as the wiping gas. See Br. 7-8.
Claim 1, the sole independent claim on appeal, is reproduced below (Br. 20
(Claims App'x)):
1. A method for coating a product, comprising:
applying a molten coating to a surface of the product; and
removing an excess portion of the molten coating from said product,
said removing comprising:
1 Appellant identifies the real party in interest as Linde Aktiengesellschaft. Appeal
Brief filed Jan. 13, 2015 ("Br."), 3.
2 Final Office Action mailed July 11, 2014 ("Final Act.").
2
Appeal2015-005873
Application 12/241, 145
directing an air flow having a first composition to the product
for removing a majority portion of said excess portion from
said product,
and
directing an inert gas flow having a second composition
different than the first composition to the product after the
directing the air flow for removing a second portion of said
excess portion from said product
The claims stand rejected as follows:
1. Claims 1, 2, 6-12, and 18 are rejected under 35 U.S.C. § 112(a) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
2. Claims 1, 6-10, 12, and 18 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Tu (US 5,360,641, iss. Nov. 1, 1994) in view of
Pierson (US 3,611,986, iss. Oct. 12, 1971).
3. Claims 2 and 11 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Tu and Pierson, and further in view of Kurokawa et al. (US
3,607,366, iss. Sept. 21, 1971) ("Kurokawa").
Rejection under 35 USC§ 112, Jst paragraph
The Examiner provides persuasive evidence and reasoning in finding that
the Specification does not contain written descriptive support for a method for
coating a product that includes a step of "directing an air flow having a first
composition to the product for removing a majority portion of said excess portion
[of molten coating] from said product" (claim 1 (emphasis added)). See Final Act.
3. Appellant does not dispute the Examiner's finding, but requests that claim 1 be
amended to change the term "majority" to "major." Br. 10. Appellant's proposed
amendment to claim 1 is not authorized under the rules of practice before the
Board. See 37 C.F.R. § 41.33(b). In the absence of arguments refuting the
3
Appeal2015-005873
Application 12/241, 145
Examiner's finding that claim 1 does not comply with the written description
requirement of 35 U.S.C. § 112, we sustain the rejection of claim 1, and its
dependent claims 2, 6-12, and 18, under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph.
Rejections under 35 USC§ 103(a)
The Examiner finds the invention, as recited in claim 1, is disclosed in Tu' s
Figure 6 embodiment (Final Act. 5---6; Ans. 4), with the exception that "Tu does
not teach that the composition of the first gas stream is an air flow and the second
gas stream is an inert gas flow and that the air flow is directed to the product prior
to directing the inert gas" (Final Act. 6). The Examiner finds Pierson discloses that
air and nitrogen are both suitable wiping gases in a finishing process for a molten
metallic coating. See id. (citing Pierson 4:34--3 8). The Examiner finds that,
because Pierson teaches the interchangeability of air and nitrogen as wiping gases,
one of ordinary skill in the art at the time of the invention would have recognized
that "the use of the two gases together would have yielded predictable results," and
would have "use[d] air (which is comprised of nitrogen; an inert gas) as the first
wiping gas during the process of Tu and nitrogen (inert gas) as the second gas
during the process of Tu." Id. at 6-7.
Appellant argues the Examiner reversibly erred in determining the invention
of claim 1 would have been obvious because Tu and Pierson, alone or in
combination, do not disclose or suggest removing an excess portion of molten
coating from a product using two separate gas streams having "different"
compositions (see claim 1, last paragraph). See Br. 13-14. The Examiner
disagrees, contending Tu explicitly teaches that "gas jet 14 & gas jet 11 can be
supplied by two separate gas supplies" and, therefore, given Pierson's teaching that
nitrogen and air are art recognizable suitable wiping gases, one of ordinary skill in
4
Appeal2015-005873
Application 12/241, 145
the art would have used air for gas jet 11 and nitrogen for gas jet 14. Ans. 6-7. As
further explained below, based on our review of the evidence relied on by the
Examiner (see, e.g., Final Act. 6 (citing Tu 5:24--48; Pierson 4:34--38)), we are
persuaded by Appellant's argument.
Tu discloses various embodiments for achieving a required strength
relationship between two or more separate gas streams, including: (1) using the
same gas source, but "varying the respective nozzle's outlet widths and spacings
from the [coated product]" (Tu 5 :28-31; see also id. at 5 :41--46); and (2) feeding
each nozzle from separately controllable gas supplies (id. at 5:24--28), so that the
strengths can be separately adjusted by control of respective supply pressures or by
varying nozzle widths and spacings from the coated product (id. at 5:34--38). We
disagree with the Examiner's reading of this disclosure as a teaching or suggestion
of supplying each nozzle with a different gas composition.
Pierson discloses that "[p ]reheated air, superheated steam, or other oxidizing
gases are preferred as the wiping agent since the oxide produced on the coating is
beneficial in resisting the sagging of the coating." Pierson 4:34--36. Pierson
further states that "[o]ther gases such as nitrogen and argon can be used." Id. at
4:37. Appellant argues "Pierson is in no way directed or even considers using two
gas streams." Br. 14. Even assuming, however, that the Examiner is correct in
finding the ordinary artisan would have understood Pierson's disclosure as
teaching that a combination of gases could be used as wiping gases (see Final Act.
6-7), the Examiner has not explained sufficiently why the ordinary artisan would
have had a reason to supply gas having one composition (e.g., air) to Tu's gas jet
11 and gas having a different composition (e.g., an inert gas) to Tu's gas jet 14 (see
Ans. 4). Because the Examiner has not explained the rationale for making this
5
Appeal2015-005873
Application 12/241, 145
modification to Tu's method, we determine the Examiner relied on improper
hindsight reasoning.
Appellant also argues the Examiner reversibly erred in determining the
invention of claim 1 would have been obvious because "both Tu and Pierson
disclose that the major portion of any excess coating is removed during the second
or later aspect or stage of their respective processes," i.e., "the opposite of what is
called for in claim 1 [:] ... a first composition air flow to remove a major portion of
the excess portion of the molten coating from the product ... , followed by ... an
inert gas with a second composition ... for removing a second portion of the
molten coating." Br. 14. The Examiner contends Appellant's argument is not
persuasive because it is based on a comparison of the strengths of gas jets 11 and
18, whereas the rejection is based on the relative positions and strengths of gas jets
11 and 14. Ans. 4.
Tu describes smoothing a coating layer with weak jet 18, followed by
stripping with strong jet 11. Tu 5:19-24; see also id. at 5:45--46 (stating that the
stripping jet stream has a stronger effect than the smoothing jet stream). As
depicted in Figure 6, jet 11 is positioned between jet 18 and jet 14. Jet 14,
however, is not described as affecting the coating layer. Rather Tu describes jet
stream 14 as "merely cooperat[ing] with the stripping jet stream 11 to maintain a
stabilising gas pressure," and having "no substantial effect on the thickness of the
reduced coating layer." Id. at 4:34--36, 38-39. Accordingly, we are persuaded by
Appellant's argument that a preponderance of the evidence fails to support the
Examiner's finding that Tu discloses a method wherein a gas flow is used to
remove a majority (or major) portion of excess coating and, thereafter, a gas flow
is used to remove a second portion of excess coating.
6
Appeal2015-005873
Application 12/241, 145
In sum, for the reasons discussed above, Appellant has argued persuasively
that the Examiner's conclusion of obviousness as to independent claim 1 is not
supported by a preponderance of the evidence on this appeal record. We further
agree with Appellant that the Examiner's findings with respect to Kurokawa do not
cure the deficiencies in the Examiner's rejection of independent claim 1.
Accordingly, we do not sustain the rejections of claims 1, 2, 6-12, and 18 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
7