Ex Parte MyersDownload PDFPatent Trial and Appeal BoardMay 30, 201712830618 (P.T.A.B. May. 30, 2017) 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. 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 2 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 3 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 4 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”). 5 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 6 Copy with citationCopy as parenthetical citation