Ex Parte Myers

Patent Trial and Appeal Board

May 30, 2017

12830618 (P.T.A.B. May. 30, 2017)

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.
12/830,618 07/06/2010 Frederick Alan Myers 1606001/0374644 1915
26874 7590 06/01/2017
FROST RROWN TODD T T C EXAMINER
3300 Great American Tower SHAH, SAMIR
301 East Fourth Street
CINCINNATI, OH 45202 ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
patents @ fbtlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK ALAN MYERS
Appeal 2016-005289
Application 12/830,618
Technology Center 1700
Before BEVERLY A. FRANKLIN, MONTE T. SQUIRE, and
AVELYN M. ROSS, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals the Examiner’s decision rejecting claims 1—3, 6—
11, and 16—19. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 In this decision, we refer to the Specification filed July 6, 2010 (“Spec.”);
the Non-Final Office Action appealed from, dated March 13, 2015 (“Non-
Final Act.”); the Appeal Brief dated September 15, 2015 (“App. Br.”); the
Examiner’s Answer to the Appeal Brief dated February 16, 2016 (“Ans.”);
and the Reply Brief dated April 18, 2016 (“Reply Br.”).
2 Appellant identifies AK Steel Properties, Incorporated as the real party in
interest. App. Br. 3.
Appeal 2016-005289
Application 12/830,618
The Claimed Invention
Appellant’s disclosure relates to a polymer coating composition and
method for applying the coating to a metal substrate to form a continuous
film. Spec. 12; Abstract. Claim 1 is illustrative of the claimed subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief (App. Br. 16) (key disputed claim language bolded and
italicized):
1. A composite material comprising a metallic substrate and a
coating on at least one side of the metallic substrate, wherein the
coating comprises an acrylic or styrene-acrylic based polymer
and has a dried thickness of less than about 0.2 mils, wherein
the polymer has a molecular weight of 50,000 to 1,000,000, a
glass transition temperature (Tg) of 50-80°C, and comprises 90-
100 wt. % of the total solids in the coating, and further wherein
the composite material is formable into a 1 inch deep drawn
modified Swift cup without galling, flaking, peeling, or
powdering, and the coating has a coefficient of friction of less
than 0.5 and a weight of 50 to 350 mg/sq ft.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Sabata et al., US 5,783,622
(hereinafter “Sabata”)
Yoshida et al., US 2002/0037403 Al
(hereinafter “Yoshida”)
Barsotti et al., US 2006/0100353 Al
(hereinafter “Barsotti”)
Poulet et al., US 7,232,479 B2
(hereinafter “Poulet”)
Whiteley et al., US 2008/0249207 Al
(hereinafter “Whiteley”)
July 21, 1998
Mar. 28, 2002
May 11,2006
June 19, 2007
Oct. 9, 2008
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Appeal 2016-005289
Application 12/830,618
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1—3, 6—11, 16, 17, and 19 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Barsotti in view of Yoshida,
Poulet, and Sabata (“Rejection 1”). Non-Final Act. 2; Ans. 2.
2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Barsotti in view of Yoshida, Sabata, and Poulet and
further in view of Whiteley (“Rejection 2”). Non-Final Act. 11; Ans. 2.
OPINION
Rejection 1
The Examiner determines that the combination of Barsotti, Yoshida,
Poulet, and Sabata suggests a composite material satisfying all of the
limitations of claim 1 and that the combination would have rendered claim 1
obvious. Non-Final Act. 2—5.
The Examiner finds that Barsotti discloses the majority of the
limitations of claim 1, but that Barsotti does not disclose that the coating
thickness is “less than about 0.2 mils,” as recited in the claim. Non-Final
Act. 3 (citing Barsotti || 1, 22, 23, 77, 108). The Examiner, however, relies
on Yoshida for disclosing this missing limitation. Id. at 3. In particular, the
Examiner finds that Yoshida discloses a polymer coating for a metal
substrate having a thickness of 5 to 500 nm (0.0002-0.02 mils). Id. at 3, 4
(citing Yoshida 1, 45).
Based on the above findings, the Examiner concludes that
It would have been obvious to use the coating thickness
disclosed by Yoshida et al. [because] Yoshida et al. teaches that
excellent adherence by the laminated film is not obtained at
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Appeal 2016-005289
Application 12/830,618
coating thicknesses below 5 nm, while exceeding 500 nm has a
high potential for impairing the color of the metal. Therefore, one
of ordinary skill in the art would be motivated to use the coating
thickness disclosed by Yoshida et al. to produce a laminated film
with excellent adherence without impairing the color of the
metal.
Non-Final Act. 4 (citing Yoshida 145).
Appellant argues that the Examiner’s rejection should be reversed
because the Examiner has failed to establish a prima facie case of
obviousness. App. Br. 7. In particular, Appellant argues that the Examiner
has failed to provide sufficient rationale or analysis under KSR as to why one
skilled in the art would have been motivated to modify the thickness of
Barsotti’s coating based on the thickness of Yoshida’s coating to arrive at
the claimed coating thickness. Id. at 10, 11.
We agree with Appellant’s argument in this regard. On the record
before us, we are not persuaded that the Examiner has provided adequate
technical reasoning or identified sufficient evidence to explain why one of
skill in the art would have combined the coating thickness of Yoshida with
the coating of Barsotti to arrive at the claimed coating thickness. See KSR
Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (requiring . .
reasoning with some rational underpinning to support the legal conclusion of
obviousness’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner
bears the initial burden of establishing a prima facie case of obviousness).
The Examiner does not adequately explain why one of ordinary skill
would have been motivated to modify or combine the teachings of the cited
references to arrive at the claimed invention. As Appellant correctly points
out (App. Br. 11), Yoshida teaches a polymer coating having a thickness of
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Appeal 2016-005289
Application 12/830,618
5 to 500 nm (0.0002-0.02 mils) and cautions that exceeding a coating
thickness of 500 nm (0.02 mils) has a high potential for impairing the color
of the metal to be coated. Yoshida, |45. Barsotti, on the other hand,
teaches a polymer coating having a thickness ranging from 10 to 200
micrometers (Barsotti, 179), which equates to 0.4 to 8 mils, or 20 to 40,000
times the coating thickness of Yoshida’s polymer coating.
The Examiner also does not identify evidence in the record sufficient
to support a finding that a skilled artisan would have had a reasonable
expectation of success in combining the coating thickness of Yoshida with
the coating of Barsotti to arrive at the claimed coating thickness. In
particular, the Examiner does not meaningfully address the significant
differences between Barsotti’s and Yoshida’s coating thicknesses or direct
us to any teaching or suggestion in the prior art regarding the technical
feasibility and capability of Barsotti’s coating being reduced from 10 to 200
micrometers to a coating thickness of less than 0.2 mils based on Yoshida’s
teaching regarding coating thicknesses orders of magnitude (20 to 40,000
times) smaller in size, and why one of ordinary skill in the art would have
had a reasonable expectation of success in doing so.
The Examiner’s assertion that “one of ordinary skill in the art would
be motivated to use the coating thickness disclosed by Yoshida et al. to
produce a laminated film with excellent adherence without impairing the
color of the metal” (Ans. 6) is conclusory and, without more, insufficient to
sustain the Examiner’s obviousness rejection in this regard. See Kahn, 441
F.3d at 988 (holding “rejections on obviousness grounds cannot be sustained
by mere conclusory statements”).
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Appeal 2016-005289
Application 12/830,618
Accordingly, we reverse the Examiner’s rejection of claims 1—3, 6—
11, 16, 17, and 19 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Barsotti, Yoshida, Poulet, and Sabata.
Rejection 2
Because claim 18 depends from claim 1 and the foregoing
deficiencies in the Examiner’s findings and conclusions regarding the
combination of Barsotti and Yoshida are not remedied by the Examiner’s
findings regarding the additional references or combination of references
cited in support of the second ground of rejection, we also reverse Rejection
2.
DECISION
The Examiner’s rejections of claims 1—3, 6—11, and 16—19 are
reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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