Ex Parte Silvernail et al

Patent Trials and Appeals Board

Feb 27, 2019

14269628 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/269,628
24959 7590
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
05/05/2014
02/28/2019
FIRST NAMED INVENTOR
Nathan James Silvernail
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.
13009233Al 6966
EXAMINER
MAYEKAR, KISHOR
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
02/28/2019 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 NATHAN JAMES SILVERNAIL, KRISTEN M. KRUSZEWSKI,
and KEVIN T. SYLVESTER
Appeal2018-005413
Application 14/269,628
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGIANNA W. BRADEN, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to reject claims 1-10 and 22 2. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, PPG Industries Ohio, Inc., which, according to
the Appeal Brief, is the real party in interest. Appeal Brief filed April 11,
2017 ("App. Br."), 1.
2 Claims 11-21 stand withdrawn from consideration. Non-Final Office
Action entered August 16, 2016 ("Office Act."), 1.
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Application 14/269,628
STATEMENT OF THE CASE
Appellant claims a composition for treating a metal substrate.
Independent claims 1 and 22 illustrate the subject matter on appeal and are
reproduced below with contested language italicized:
1. A composition for treating a metal substrate comprising:
(a) a Group IV(B) ion,
(b) a copper ion,
( c) a free fluoride ion present in the composition in an
amount of 20 ppm to 300 ppm based on elemental fluorine and
total weight of the composition, and
( d) an organophosphonic acid present in the composition
in an amount of 15 to 5 00 ppm based on elemental phosphorus
and on total weight of the composition,
wherein, upon contact with the substrate, the composition
reacts with and chemically alters the substrate surface and binds
thereto to form a protective layer.
22. A composition for treating a metal substrate consisting
essentially of
(a) a Group IV(B) ion,
(b) a copper ion,
( c) a free fluoride ion, and
( d) an organophosphonic acid,
wherein, upon contact with the substrate, the composition
reacts with and chemically alters the substrate surface and binds
thereto to form a protective layer.
App. Br. 10, 13 (Claims Appendix) (emphasis added and spacing
altered relative to original).
The Examiner maintains the rejection of claims 1-10 and 22 3
under 35 U.S.C. § 102(a)(l) as anticipated by, or alternatively, under
3 Although the Examiner does not include claim 22 in the heading for this
rejection on page 2 of the Office Action, the Examiner addresses claim 22 in
the body of the rejection on page 4 of the Office Action.
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35 U.S.C. § 103 as unpatentable over, Kolberg et al.
(US 2008/0127859 Al, published June 5, 2008 ("Kolberg")) in the
Examiner's Answer entered March 1, 2018 ("Ans.").
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejection of
claims 1-10 under 35 U.S.C. § 102(a)(l) for the reasons set forth in the
Appeal Brief and below, and affirm the Examiner's rejection of claim 22
under 35 U.S.C. § 102(a)(l), and rejection of claims 1-10 and 22 under
35 U.S.C. § 103, for the reasons set forth in the Office Action, the Answer,
and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each ground of rejection
the Appellant contests. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (Explaining that even if the
Examiner had failed to make a prima facie case, "it has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections.")).
Kolberg discloses aqueous compositions for coating metallic surfaces
that contain (a) at least one compound selected from silanes, silanols,
siloxanes, and polysiloxanes; (b) at least one compound containing titanium,
hafnium, zirconium, aluminium, and/ or boron; ( c) at least one type of cation
selected from cations of metals of subgroups 1 to 3 and 5 to 8 of the periodic
table of the elements, and/or at least one corresponding compound; (d)
phosphorus-containing compounds, anions of at least one phosphate, and/or
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anions of at least one phosphonate; and ( 5) water. Kolberg ,r,r 14--23.
Kolberg discloses that component (b) preferably contains at least one
complex fluoride of titanium, hafnium, and zirconium, among others, which
are complexes of a fluoride ion and a Group IVB metal ion. Id. ,r 127.
Kolberg discloses that the fluoride anion content in the aqueous
compositions ranges from 0.001 to 12 g/1, calculated asp- without including
complex fluorides. Id. ,r 160. Kolberg discloses that the cation component
(c) is preferably copper, among others. Id. ,r,r 134, 137. Kolberg discloses
that the phosphorus-containing compound component ( d) is preferably
orthophosphate, oligomeric and/or polymeric phosphate, and/or
phosphonate, and Kolberg discloses that the phosphonate can be one or more
phosphonic acids, such as, for example, one or more alkyldiphosphonic
acids. Id. ,r 148. Kolberg discloses that the content of the phosphorus-
containing compounds in the aqueous compositions ranges from 0.01 to 20
g/1, calculated as the sum of the phosphorus-containing compounds. Id. ,r
148.
Because Appellant presents separate arguments for the alternative
rejections under 35 U.S.C. § 102(a)(l) and 35 U.S.C. § 103, we address each
rejection separately.
Rejection under 35 U.S.C. § 102(a)(l)
Claims 1-10
Claim 1 requires the recited composition to include, in part, an
organophosphonic acid in an amount of 15 to 500 ppm, based on elemental
phosphorus and the total weight of the composition.
The Examiner finds that Kolberg discloses a method for coating
metallic surfaces with an aqueous composition that comprises, in part, a
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phosphorus-containing compound comprising a phosphonate, such as
alkyldiphosphonic acid, in an amount of 0.01 to 20 g/1. Office Act. 2-3
(citing Kolberg Abst., ,r,r 127, 135, 137, 148, and 160). The Examiner
provides calculations to show that 0.01 g/1 alkyldiphosphonic acid
corresponds to 1.78 ppm, and 20 g/1 alkyldiphosphonic acid corresponds
to 3 5 63 ppm, and the Examiner finds that these amounts of
alkyldiphosphonic acid anticipate the range of 15 to 500 ppm of an
organophosphonic acid recited in claim 1. Office Act. 3. The Examiner also
finds that the aqueous compositions of examples E 15 and E 16 of Kolberg
contain 0.05 g/1 phosphonate, which the Examiner finds corresponds to 17.8
ppm "in the case of the phosphonate being alkyldiphosphonic acid." Ans. 3-
4 ( citing Kolberg Table 1 ). The Examiner finds that Kolberg thus "discloses
the content of phosphorous-containing compound in the aqueous
composition and its specific examples falling within the claimed range."
Ans. 4.
Anticipation requires each claim element to not only be disclosed in a
single prior art reference, but requires the elements to be "arranged or
combined in the same way as recited in the claims." In re Smith Int 'l, Inc.,
871 F.3d 1375, 1381 (Fed. Cir. 2017) ("A patent claim is anticipated 'only if
each and every element is found within a single prior art reference, arranged
as claimed."' (Quoting Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d
1283, 1294 (Fed. Cir. 2015)).
The Examiner does not identify any disclosure in Kolberg of a
composition including components arranged or combined as recited in
claim 1. The Examiner does not point to a composition disclosed in Kolberg
that contains a Group IVB ion, a copper ion, a free fluoride ion, and an
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organophosphonic acid in an amount of 15 to 500 ppm based on elemental
phosphorus and the total weight of the composition, as recited in claim 1.
Although the Examiner asserts that the aqueous compositions of
examples E15 and E16 of Kolberg contain 0.05 g/1 phosphonate, which the
Examiner asserts corresponds to 1 7. 8 ppm "in the case of the phosphonate
being alkyldiphosphonic acid," the compositions of examples E15 and E16
do not include a copper ion as required by claim 1, and thus, do not
anticipate the claimed composition, regardless of the phosphonate
concentration in the compositions. Kolberg 11 (Table 1 ).
We note further that as Appellant points out (Reply Br. 2), Kolberg
indicates only that the compositions of examples E 15 and E 16 contain
"phosphonate," and Kolberg does not identify the type of phosphonate
included in the compositions, making it impossible to determine the amount
of organophosphonic acid in the compositions based on elemental
phosphorus and the total weight of the compositions, as recited in claim 1.
Kolberg 11 (Table 1 ). Indeed, the Examiner speculates as to the identity of
the phosphonate in the compositions of examples E 15 and E 16 by asserting
that "in the case of the phosphonate being alkyldiphosphonic acid" the
concentration of 0.05 g/1 phosphonate in the compositions would correspond
to 17 .8 ppm. Ans. 3--4. Such speculation is not a valid basis for finding
anticipation, however. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
("The Patent Office ... may not ... resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis."); see In re Sporck, 301 F.2d 686, 690 (CCPA 1962).
Moreover, although the Examiner relies on Kolberg's general
disclosure that the content of phosphorus-containing compounds in the
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compositions described in the reference ranges from 0.01 to 20 g/1, Kolberg
indicates that this concentration is "calculated as the sum of the phosphorus-
containing compounds." See Kolberg ,r 148. The Examiner does not
establish that such a concentration necessarily corresponds to 15 to 500 ppm
of an organophosphonic acid, based on elemental phosphorus and the total
weight of a composition, as recited in claim 1. Although the Examiner
provides calculations that ostensibly convert 0.01 to 20 g/1 phosphorus-
containing compounds to ppm, these calculations are not based on an actual
composition disclosed in Kolberg containing an organophosphonic acid, and
instead appear convert 0.01 to 20 g/1 methyldisposphonic acid to ppm.
Office Act. 3. Kolberg, however, does not disclose a particular composition
that includes methyldisposphonic acid. Rather, as discussed above, Kolberg
discloses that the phosphorus-containing compounds in Kolberg's
compositions can be one or more phosphonic acids, such as one or more
alkyldiphosphonic acids. Kolberg ,r 148. Similar to the situation discussed
above for Kolberg' s examples E 15 and E 16, Kolberg' s general disclosure of
"phosphonic acids" and "alkyldiphosphonic acids," divorced from disclosure
of an actual composition containing a specific type of phosphonic acid, does
not provide the necessary specificity to determine the amount of
organophosphonic acid in a composition based on elemental phosphorus and
the total weight of the composition, as recited in claim 1.
Thus, the Examiner does not identify any disclosure in Kolberg of a
composition containing an organophosphonic acid in an amount that would
necessarily correspond to 15 to 500 ppm based on elemental phosphorus and
the total weight of the composition, as required claim 1. Consequently, on
this appeal record, the Examiner does not provide a sufficient factual basis to
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establish that Kolberg discloses a composition for treating a metal substrate
as recited in claim 1. We, accordingly, do not sustain the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(a)(l), nor of claims 2-10, which
depend from claim 1.
Claim 22
Independent claim 22 recites, in part, a composition for treating a
metal substrate consisting essentially of a Group IV(B) ion, a copper ion, a
free fluoride ion, and an organophosphonic acid.
Appellant argues that "Kolberg requires silane and therefore cannot
anticipate independent [ c ]laim 22, which specifically excludes silane by
reciting the closed term 'consisting essentially of in the preamble." App.
Br. 5---6. Appellant argues that the presence of silane in the composition of
claim 22 would affect the basic and novel characteristics of the composition,
in view of the disclosures in paragraphs 3, 6, and 53 of the Appellant's
Specification, and Appellant argues that claim 22 should, therefore, be
interpreted to exclude silane as disclosed in Kolberg. Reply Br. 3--4.
The transitional phrase "consisting essentially of' in claim 22 has long
been interpreted to include "the listed ingredients and ... unlisted
ingredients that do not materially affect the basic and novel properties of the
invention." PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354
(Fed. Cir. 1998). Appellant has the burden of showing that additional
components-such as the silane disclosed in Kolberg-that are not recited in
claim 22 would materially affect the basic and novel properties of the
claimed composition. In re De Lajarte, 337 F.2d 870, 873-74 (CCPA
1964).
On this appeal record, as the Examiner correctly finds (Ans. 4),
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Appellant does not meet this burden because the relied-upon portions of
Appellant's Specification do not support Appellant's assertion that silanes
would materially affect the basic and novel characteristics of the
composition of claim 22. Specifically, paragraph 3 is in the "Background of
the Invention" section of the Specification and indicates, when read in view
of the discussion in paragraph 2, which continues into paragraph 3, that
pretreatment coatings based on a Group IVB metal compound have been
used on metal substrates to improve corrosion resistance and paint adhesion.
Paragraph 3 further indicates that pretreatment compositions based on Group
IVB metal compounds, particularly those containing copper ions, when used
to treat metal substrates before application of a cationic electrodepositable
coating composition, result in relatively poor throwpower of the
electrodepositable coating composition. Paragraph 53 of the Specification
defines "throwpower" as the ability of an electrodepositable coating
composition to coat interior recesses of a substrate, at a given temperature
and voltage. Paragraph 53 goes on to state that a "higher 'throwpower'
means that the electrodepositable coating composition is further 'thrown'
into the recesses of a recessed substrate. Higher throwpower therefore is
synonymous with greater surface coverage on hard to reach recessed areas of
a substrate."
Paragraph 4 of the Specification states that Appellant's invention is
directed to a composition for treating metal substrates comprising a Group
IV(b) metal ion, a copper ion, a fluoride ion, and an organophosphonic acid.
Paragraph 6 of the Specification states that the organophosphonic acid was
found to increase the throwpower of a subsequently applied cationic
electrodepositable coating composition, compared to pretreating a metal
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substrate with a pretreatment composition that did not include an
organophosphonic acid.
Although Appellant asserts that these disclosures in the Specification
demonstrate that the presence of silane in the composition of claim 22 would
affect the basic and novel characteristics of the composition, these
paragraphs of the Specification discuss throwpower, and indicate that the
composition of Appellant's invention increases the throwpower of a
subsequently applied cationic electrodepositable coating composition
relative to conventional pretreatment compositions. Appellant does not
identify any disclosure in the Specification indicating that the presence of
silane in the composition of claim 22 would materially affect the
throwpower of a subsequently applied cationic electrodepositable coating
composition, or any other basic and novel characteristic of the composition
of claim 22. Reply Br. 3; PPG Indus., 156 F.3d at 1354--357 (Patentees
"could have defined the scope of the phrase 'consisting essentially of' for
purposes of its patent by making clear in its specification what it regarded as
constituting a material change in the basic and novel characteristics of the
invention. The question for our decision is whether PPG did so."). Nor does
Appellant provide sufficient evidence to show that silanes as taught by
Kolberg would be materially affect the basic and novel characteristics of the
composition of claim 22. Reply Br. 3.
Accordingly, on this appeal record, Appellant does not meet the
burden of establishing that "consisting essentially of' as recited in claim 22
excludes silanes as disclosed in Kolberg. Appellant's arguments are,
therefore, unpersuasive of reversible error in the Examiner's rejection of
claim 22 under 35 U.S.C. § 102(a)(l) as anticipated by Kolberg, which we
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accordingly sustain.
Rejection under 35 U.S.C. § 103
Appellant first presents arguments directed to both claims 1 and 22,
and then presents separate arguments for each of claims 4, 8, and 22. App.
Br. 6-9. We, accordingly, address each of the separately argued claims, and
the remaining claims stand or fall with the argued claims. 37 C.F.R.
§ 4I.37(c)(l)(iv).
We note initially that because we sustain the rejection of claim 22
under 35 U.S.C. § 102(a)(l) as anticipated by Kolberg as discussed above,
we also sustain the rejection of claim 22 under 35 U.S.C. § 103 as
unpatentable over Kolberg. Connell v. Sears, Roebuck & Co., 722 F.2d
1542, 1548 (Fed. Cir. 1983) (citing In reFracalossi, 681 F.2d 792 (CCPA
1982)) (Anticipation is the epitome of obviousness.). Nonetheless, for the
sake of completeness, we address Appellant's arguments for the rejection of
claim 22 under 35 U.S.C. § 103.
Claims 1-3, 5-7, 9, 10, and 22
Appellant argues that the compositions of claims 1 and 22 "omit" a
silane, silanol, siloxane, and/or polysiloxane, which Appellant argues
Kolberg expressly teaches to be essential to its composition to impart greater
lacquer adhesion and/or higher affinity for a subsequent lacquer layer. App.
Br. 6-7 (citing Kolberg ,r 37). Appellant argues that because the
compositions of claims 1 and 22 retain the function of corrosion
performance and adhesion, omission of Ko lb erg's silane, silanol, siloxane,
and/or polysiloxane from the compositions of claims 1 and 22 renders the
compositions non-obvious. App. Br. 6-7 (citing MPEP § 2144.04(II)(B)
and In re Edge, 359 F.2d 896 (CCPA 1966)).
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Contrary to Appellant's arguments, however, Kolberg does not
disclose that a silane, silanol, siloxane, and/or polysiloxane is "essential" to
Kolberg's compositions to impart greater lacquer adhesion and/or higher
affinity for a subsequent lacquer layer. Rather, the portion of Kolberg cited
by Appellant indicates that "[p]articularly preferably, at least one silane
and/or at least one corresponding compound having at least one amino
group, urea group and/or ureido group is added to the aqueous composition
because the coatings produced therewith often exhibit a greater lacquer
adhesion and/or a higher affinity for the subsequent lacquer layer." Kolberg
,r 37 (emphasis added). The relied-upon disclosure in Kolberg, therefore,
indicates that inclusion of silane or a corresponding compound in Kolberg' s
compositions is preferred-rather than essential-because coatings
produced from such compositions often, but not always, exhibit greater
lacquer adhesion and/or a higher affinity for the subsequent lacquer layer.
In addition, the relied-upon disclosure of Kolberg makes no mention
of corrosion resistance. Rather, Kolberg explicitly discloses that "[i]t has
now also been found, surprisingly, that an addition of phosphonate to the
aqueous composition according to the invention noticeably improves the
corrosion resistance of aluminium-rich surfaces." Kolberg ,r 150. Kolberg
also discloses that "[i]t has now been established, surprisingly, that a good
multimetal treatment with a single aqueous composition is only possible if a
complex fluoride has been used." Id. ,r 131. Contrary to Appellant's
arguments, Kolberg thus teaches that phosphonate-rather than a silane,
silanol, siloxane, and/or polysiloxane-imparts corrosion resistance, and a
complex fluoride-rather than a silane, silanol, siloxane, and/or
polysiloxane-is essential for a good multimetal treatment with a single
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aqueous composition.
Accordingly, Kolberg suggests that retention of corrosion resistance
and adhesion is possible without the presence of a silane, silanol, siloxane,
and/or polysiloxane and, thus, the "omission" of a silane, silanol, siloxane,
and/or polysiloxane does not render the claimed compositions non-obvious.
Furthermore, as the Examiner correctly determines, claim 1 does not
exclude a silane, silanol, siloxane, and/or polysiloxane as disclosed in
Kolberg due to the "comprising" transition recited in the claim. Ans. 5.
And as discussed above, Appellant does not meet the burden of establishing
that "consisting essentially of' as recited in claim 22 excludes a silane,
silanol, siloxane, and/or polysiloxane as disclosed in Kolberg.
Appellant further argues for claim 22 that Kolberg, when considered
as a whole, teaches away from "a composition containing only a single
Group IVB metal as recited in [ c ]laim 22" because Kolberg teaches that
"[ s ]urprisingly, if a combination of complex fluorides based on titanium and
zirconium is used rather than a complex fluoride based only on titanium or
only on zirconium, the results obtained are always noticeably better than in
the case of only one of these additions." App. Br. 7 (citing Kolberg ,r 121)
( emphasis omitted). Appellant argues that Kolberg does not disclose, teach,
or suggest a composition containing a single Group IVB metal because
Kolberg expressly teaches a composition containing "at least two
compounds selected from compounds containing titanium, hafnium,
zirconium, aluminum and/or boron," and Kolberg further teaches that
a very good multimetal treatment with a single aqueous
composition is only possible if at least two different complex
fluorides are used, e.g. those based on titanium and zirconium.
In a very wide variety of experiments, the complex fluorides
used individually never gave results equivalent to those for the
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combination of these two complex fluorides, independently of
what other additions were made.
App. Br. 7-8 (citing Kolberg Abst. and ,r 122 (emphasis added)).
As discussed above, however, Kolberg discloses that component (b)
of the compositions described in the reference preferably contains at least
one complex fluoride of titanium, hafnium, and zirconium, among others.
Kolberg ,r 127. Kolberg also discloses that "a good multimetal treatment
with a single aqueous composition is only possible if a complex fluoride has
been used." Id. ,r 131. As Appellant points out, Kolberg further indicates
"that a very good multimetal treatment with a single aqueous composition is
only possible if at least two different complex fluorides are used, e.g. those
based on titanium and zirconium." Id.
Contrary to Appellant's arguments, because Kolberg discloses that a
good multimetal treatment can be obtained from a composition containing a
single complex fluoride (with titanium, hafnium, or zirconium), Kolberg
does not teach away from a composition containing a single Group IVB
metal. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (A claimed
product "'does not become patentable simply because it has been described
as somewhat inferior to some other product for the same use."' (Quoting In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994))); see also In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed.").
Furthermore, we find that Kolberg' s disclosure that a good multimetal
treatment can be obtained with a single aqueous composition containing a
complex fluoride (with titanium, hafnium, or zirconium) reasonably would
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have led one of ordinary skill in the art to produce such a composition for
coating a metallic surface. PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d
1186, 1197-98 (Fed. Cir. 2014) (Explaining that obviousness "does not
require that the motivation be the best option, only that it be a suitable option
from which the prior art did not teach away.").
Moreover, Appellant does not argue, much less sufficiently establish,
that the "consisting essentially of' transition recited in claim 22 excludes
more than one Group IVB metal from the claimed composition, as the
Examiner correctly finds (Ans. 5). See App. Br. 7-8; PPG Industries, 156
F.3d at 1354; De Lajarte, 337 F.2d at 873-74.
Accordingly, considering the totality of the evidence relied upon in
this appeal, a preponderance of the evidence weighs in favor of the
Examiner's conclusion of obviousness. We, accordingly, sustain the
Examiner's rejection of claims 1 and 22 under 35 U.S.C. § 103, and also of
claims 2, 3, 5-7, 9, and 10, which depend from claim 1.
Claim 4
Claim 4 depends from claim 1 and recites that the organophosphonic
acid is a monophosphonic acid.
As discussed above, Kolberg discloses that the phosphorus-containing
compound component ( d) of the compositions described in the reference is
preferably orthophosphate, oligomeric and/or polymeric phosphate, and/or
phosphonate, and Kolberg discloses that the phosphonate can be one or more
phosphonic acids, such as one or more alkyldiphosphonic acids. Kolberg
,r 148. The Examiner finds that "the selection of any of known phosphonic
acids would have been within the level of ordinary skill in the art," rendering
a monophosphonic acid as recited in claim 4 prima facie obvious. Office
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Act. 3--4.
Appellant argues that Kolberg does not teach or suggest a
monophosphonic acid, and Appellant contends that "Kolberg is limited to
alkyldiphosphonic acids." App. Br. 8. Appellant argues that the Examiner
does not point to any teaching or suggestion of a monophosphonic acid in
Kolberg, and Appellant argues that the Examiner's assertion that the
selection of any of known phosphonic acids would have been within the
level of ordinary skill in the art "is a conclusory statement without any
articulated reasoning, which is a prohibited grounds of rejection." App.
Br. 8 (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007); MPEP
§ 2142); Reply Br. 2.
Contrary to Appellant's arguments, however, Kolberg's disclosure of
phosphonic acids is not limited to alkyldiphosphonic acids. Rather, Kolberg
discloses that alkyldiphosphonic acids are one exemplary type of phosphonic
acid suitable for use in the compositions described in the reference. Kolberg
,r 148.
Furthermore, Kolberg's disclosure that the phosphonate component of
the compositions described in the reference can be one or more phosphonic
acids would have suggested to one of ordinary skill in the art that the
phosphonic acid could be either a diphosphonic acid, as explicitly
exemplified in Kolberg, or a monophosphonic acid, because the ordinarily
skilled artisan would have understood that all phosphonic acids are either
diphosphonic acids or monophosphonic acids. In re Gleave, 560 F.3d 1331,
1337-38 (Fed. Cir. 2009) (Explaining that "when the class of compounds
that falls within the genus is so limited that a person of ordinary skill in the
art can 'at once envisage each member of this limited class.' In that limited
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circumstance, a reference describing the genus anticipates every species
within the genus" (citation omitted).); Bristol-Myers Squibb Co. v. Ben
Venue Labs., Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001) ("[T]he disclosure
of a small genus may anticipate the species of that genus even if the species
are not themselves recited."); Perricone v. Medicis Pharm. Corp., 432 F.3d
1368, 1377 (Fed. Cir. 2005); In re Schaumann, 572 F.2d 312,315 (CCPA
1978); In re Petering, 301 F.2d 676, 682 (CCPA 1962).
Accordingly, as the Examiner correctly finds, Kolberg's disclosure of
"phosphonic acids" reasonably would have suggested a monophosphonic
acid to one of ordinary skill in the art at the time of Appellant's invention,
given the limited number of different types of phosphonic acids.
Appellant's arguments are, therefore, unpersuasive of reversible error in the
Examiner's rejection of claim 4 under 35 U.S.C. § 103, which we
consequently sustain.
Claim 8
Claim 8 depends from claim 1 and recites that the copper ion is
present in the composition in amounts of 5 to 40 ppm based on elemental
copper and the total weight of the composition.
The Examiner finds that Kolberg discloses that copper is a preferred
cation for use as the cation component of the compositions described in the
reference, and finds that Kolberg discloses including copper in the
compositions in an amount of 0.01 to 20 g/1, corresponding to 10 to 20,000
ppm. Office Act. 4 (citing Kolberg ,r 135 4); Ans. 5 (citing Kolberg ,r 134
4 Although the Examiner cites paragraph 135 of Kolberg, paragraph 136,
rather than paragraph 135, discloses that the composition has a cation
content ranging from 0.01 to 20 g/1, calculated as the sum of the metals.
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and claim 3 7).
Appellant argues that although Kolberg lists copper in a laundry list of
possible cations, Kolberg also teaches that "'an addition of only 0.02 g/1 ...
of copper ions has not yet been shown to have a significant influence."'
App. Br. 8 (citing Kolberg ,r,r 134, 1385). Appellant argues that this
disclosure in Kolberg teaches away from the composition of claim 8 because
it teaches that an amount of copper within the range recited in claim 8 ( 5 to
40 ppm) does not have a significant influence. App. Br. 8. Appellant argues
that any teaching in Kolberg of copper in an amount of from 0.01 g/1 to 20
g/1 (10 ppm to 20,000 ppm) does not overcome this deficiency. App. Br. 8-
9.
Contrary to Appellant's arguments, however, Kolberg's disclosure
that "an addition of only 0.02 g/1 of copper ions has not yet been shown to
have a significant influence" does not teach away from the composition of
claim 8, particularly when viewed in light of Kolberg's disclosures as a
whole. Kolberg ,r 138. The quoted statement in Kolberg occurs in the
context of a discussion of the surprising discovery that the addition of
magnesium ions to the compositions described in Kolberg was shown to be
particularly advantageous because it was found to promote the deposition of
titanium and/or zirconium compounds on metallic surfaces, and in so doing,
markedly improved the properties of coatings produced from such
compositions. See Kolberg ,r 138. Kolberg then states that "an addition of
only 0.02 g/1 of copper ions has not yet been shown to have a significant
influence." Id.
5 Appellant corrected the erroneous citations to Kolberg presented in the
Appeal Brief in the Reply Brief.
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Kolberg thus discloses that inclusion of a single amount of copper
ions----0.02 g/1 or 20,000 ppm-in the compositions described in Kolberg
was not shown to have a significant influence on the deposition of titanium
and/or zirconium compounds on metallic surfaces. This disclosure does not
detract from Kolberg's explicit disclosure that copper is a preferred cation
for use as the cation component of Kolberg' s compositions, as the Examiner
correctly finds. Ans. 5 (citing Kolberg ,r 134). Nor does this statement
detract from Kolberg's explicit disclosure that copper ions an amount of
0.01 g/1 to 20 g/1 (10 ppm to 20,000 ppm) are suitable for use in Kolberg's
compositions. See Kolberg ,r 136; see Winner Int'! Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another.").
Consequently, contrary to Appellant's arguments, we find that
Kolberg's disclosures as a whole do not teach away from use of copper ions
in an amount of 0.01 g/1 to 20 g/1 (10 ppm to 20,000 ppm) in a composition
for coating metallic surfaces. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed.
Cir. 201 7) (Explaining that teaching away requires "clear discouragement"
from implementing a technical feature.).
We, accordingly, sustain the Examiner's rejection of claim 8 under
35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claim 22 under 35 U.S.C.
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§ 102(a)(l) and rejection of claims 1-10 and 22 under 35 U.S.C. § 103. We
reverse the Examiner's rejection of claims 1-10 under 35 U.S.C.
§ 102(a)(l).
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
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