Ex Parte VILATO et al

Patent Trials and Appeals Board

Mar 29, 2019

12554414 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/554,414 09/04/2009 Pablo VILATO
22850 7590 04/02/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
347420USOCONT 8475
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PABLO VILA TO and SERGIO MOREIRA
Appeal2017-006266
Application 12/554,414
Technology Center 3700
Before BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and
SEAN P. O'HANLON, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Pablo Vilato and Sergio Moreira ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-17 and
19. Claim 18 has been canceled. An Oral Hearing in accordance with
3 7 C.F .R. § 41.4 7 was held on March 7, 2019. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The subject application was previously before the Patent Trial and Appeal
Board in Appeal No. 2013-001694. See Decision ("Dec."), dated July 27,
2015. In that Decision, the adverse decision of the Examiner was
AFFIRMED. Following that Decision, Appellants reopened prosecution.
Appeal2017-006266
Application 12/554,414
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a glass-ceramic plate intended
especially for covering heating elements, in particular one intended to be
used as a hob." Spec. 1 :3-5.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A glass-ceramic plate comprising at least one face,
wherein at least a portion of said face is coated with paint
having a degradation temperature greater than 350°C and
comprising at least one silicone resin.
REJECTI0NS 2
Claims 1-7, 9, 10, 16, and 19 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Wennemann (US
7,009,150 B2, issued Mar. 7, 2006), Kornbluth (US 2,843,559,
issued July 15, 1958), Martin (US 2,866,720, issued Dec. 30,
1958), or Awano (US 4,529,644, issued July 16, 1985).
Claims 8, 11, and 13-15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wennemann, Kornbluth, Martin,
or Awano and Shimatani (US 5,866,239, issued Feb. 2, 1999)
or Sakamoto (US 5,691,254, issued Nov. 25, 1997).
Claims 12 and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over W ennemann, Kornbluth, Martin, or
2 Appellants present additional evidence in the Declarations of co-inventor
Pablo Vilato filed under 37 C.F.R. § 1.132 on February 21, 2012 ("Vilato
Declaration I") and on September 22, 2015 ("Vilato Declaration II").
2
Appeal2017-006266
Application 12/554,414
Awano, and Krause (US 6,914,223 B2, issued July 5, 2005) or
Poumey (US 4,833,288, issued May 23, 1989).
ANALYSIS
Discussion about Paints and Enamels
Appellants contend that in the prior Board Decision, "the Board
indicated its belief that insufficient evidence existed to demonstrate that
paints can never have glass frits." Br. 3. 3 In particular, Appellants cite to
page 5 of the prior Board Decision where it states, "[N]owhere in the
Declaration [Vilato Declaration I] does Mr. Vilato say that paints can never
have glass frits. Thus, the evidence does not support the actual argument
('Paints do not have glass frits. ') that Appellants rely upon (Tr. 5:21---6:4)."
Br. 3; see also Dec. 5; Vilato Declaration I; Vilato Declaration II ,r 2 ( stating
that the difference between paints and enamels was explained in the§ 1.132
Declaration filed on February 21, 2015 (Vilato Declaration I). "However, in
the Board Decision dated July 27, 2015, the Board found this explanation in
the§ 1.132 Declaration wanting because nowhere did [the Declarant] say
that paints can never have glass frits.").
Appellants contend that to address the Board's concerns, Appellants
submitted evidence demonstrating that: ( 1) "Paints are organic-based,
whereas enamels are inorganic-based. (Rule 132 declaration submitted
September [22], 2015 4 [Vilato Declaration II] at par. 8; see also Rule 132
declaration submitted February 21, 2012 [Vilato Declaration I] at par. 3)"
3 Appeal Brief ("Br."), filed Nov. 2, 2016. A Reply Brief has not been
submitted.
4 We note the Patent and Trademark Office's PE2E system indicates that the
Vilato Declaration II was submitted on September 22, 2015, not September
21, 2015.
3
Appeal2017-006266
Application 12/554,414
and (2) "Paints do not contain glass frits. (Rule 132 declaration submitted
September [22], 2015 [Vilato Declaration II] at par. 8)." Br. 4.
According to Appellants, "the issue is whether [the Vilato Declaration
II] presents evidence of a difference between enamels and paints" and "[t]he
[Vilato Declaration II] demonstrates that such a difference exists: paints are
organic-based and do not contain glass frits; enamels are inorganic-based
and can contain glass frits." Br. 4.
In paragraph 3 of the Vilato Declaration II, Mr. Vilato states:
To further demonstrate the difference between paints and
enamels, and in particular, that paints do not contain glass frits, I
refer to the following publication: Organic Coatings Science
and Technology, Third Edition, by Zeno W. Wicks, Jr., Frank N.
Jones, S. Peter Pappaas, and Doublas A. Wicks, John Wiley &
Sons, Inc. (2007) ('Wicks').
Vilato Declaration II ,r 3.
The portions in chapter 1 of Wick cited in the Vilato Declaration II
discuss the "multiple meanings of the term coating," "the difference between
a coating and a paint," and "[o]rganic coatings" being "complex mixtures of
chemical substances that can be grouped into four broad categories:
(1) binders, (2) volatile components, (3) pigments, and (4) additives." Vilato
Declaration II ,r,r 4, 5. Paragraph 6 of the Vilato Declaration II includes a
table of "resin types used in coatings" and paragraph 7 of the Vilato
Declaration II includes a discussion of "silicone resins." Vilato Declaration
II ,r,r 6, 7.
None of the portions of Wick cited in the Vilato Declaration II even
mentions the term "glass frits" let alone that "paints do not contain glass
frits." Vilato Declaration II ,r,r 3-8. As the portions of Wick cited in the
4
Appeal2017-006266
Application 12/554,414
Vilato Declaration II do not include a discussion of "glass frit," we disagree
with Appellants that the cited portions of Wick are indicative of "organic
coatings [] not compris[ing] glass frit" or of "inorganic glass frit [] not
[being] a binder, volatile component, pigment or additive." Vilato
Declaration II ,r 8; see also id. ,r,r 3-7; Br. 5. In addition, we agree with the
conclusion of the prior Board Decision that "nowhere in the [Vilato
Declaration I] does Mr. Vilato say that paints can never have glass frits."
Dec. 5. We also note Appellants do not refute the prior Board Decision's
finding of "insufficient evidence" to establish that paints can never have
glass frits. See Br. 3--4; see also Vilato Declaration II ,r,r 2, 3; Dec. 5. For
these reasons, the evidence does not support Appellants' argument that
"[p ]aints do not contain glass frits." Br. 4--5; see also; Vilato Declaration II
,r,r 3-8.
Appellants contend that "paints differ from enamels -- they are
compositions having different components and different properties. In
particular, enamels contain glass frits which affect the structure of the
enamel and also affect the processing of the enamel . . . . Paints do not have
glass frits." Br. 6. As discussed above, Appellants' evidence does not
support the argument that "[p]aints do not contain glass frits." See Br. 4--5;
see also Vilato Declaration II ,r,r 3-8. Further, as pointed out in the prior
Board Decision, although Appellants' Specification "explains generally
about the compositions of the 'paint' and 'enamel' used in the embodiments
of the invention (see Spec. 6:21-8:20), it does not say that paints can never
have glass frits" and claim 1 recites nothing that "limit[ s] the broad term
5
Appeal2017-006266
Application 12/554,414
'paint' to exclude glass frits." Dec. 4--5; see also Ans. 5; Vilato Declaration
II,I9. 5
Moreover, although the portion of chapter 1 of Wick cited in the
Vilato Declaration II mentions the term "enamel," the discussion focusses on
"porcelain" enamels and "porcelain enamels" as coatings not having
"organic chemical binders." Vilato Declaration II ,r 4. We acknowledge
that the portion of chapter 1 of Wick cited in the Vilato Declaration II
appears to distinguish between "porcelain" enamels and paints as coatings.
Vilato Declaration II ,r,r 4, 8. However, there is no discussion in the portions
of Wick cited in the Vilato Declaration II that distinguishes between
"enamels" in general and "paints." Vilato Declaration II ,r,r 3-8. Based on
the foregoing reasons, Appellants' arguments to distinguish "paints" from
"enamels" are not persuasive.
Obviousness over Wennemann and Kornbluth 6
Claims 1-7, 9, 10, and 16
Appellants do not offer arguments in favor of claims 2-7, 9, 10, and
16 separate from those presented for independent claim 1. See Br. 3-10.
We select claim 1 as the representative claim, and claims 2-7, 9, 10, and 16
5 Examiner's Answer ("Ans."), dated Jan. 5, 2017.
6 Appellants state that "[ n Jone of the asserted art, alone or in combination,
would lead one of ordinary skill in the art to combine elements in the required
manner with a reasonable expectation of success. Instead, the asserted art
teaches away from the required result." Br. 10. We address Appellants'
"teach away" and "expectation of success" arguments in view of Kornbluth
below. Appellants do not present "teach away" or "expectation of success"
arguments for any of the additional cited references. See Br. 3-10.
6
Appeal2017-006266
Application 12/554,414
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). We address claim 19
separately below.
Appellants contend that Kornbluth teaches away from the subject
invention. Br. 8-9. In particular, Appellants contend that "Kornbluth
teaches that the addition of a silicone polymer to a coating cannot prevent
excessive deterioration that occurs at temperatures above 350°C, such as a
temperature of 750°F [398°C], because such coatings only provide
protection up to approximately 575°F [30I.6°C]." Br. 8 (citing Kornbluth
8:36-49). Thus, according to Appellants, "Kornbluth teaches that coatings
with silicone resin are unacceptable at temperatures above 575°F [30I.6°C]"
and "Kornbluth teaches that paints (without glass frits) containing silicone
resin are ineffective at the relevant temperatures." See id. at 8-9.
Kornbluth discloses:
[T]he present invention provides a protective coating for metals
which possesses a good appearance and excellent protection for
metals at normal atmospheric temperatures and to continue to
provide these properties when exposed to temperatures for
prolonged periods of time up to approximately 1600° F. This is
accomplished in accordance with the present invention by
incorporating combinations of ceramic or vitreous frits.
Kornbluth 2: 18-26 ( emphasis added). Kornbluth also disclose that "heat-
resistant paints employing ... silicone polymers as the principal component
of the vehicle ... afford excellent protection to metal surfaces, in some
instances up to approximately 575° F. [30I.6°C]"; however, when "such
paints are heated to higher temperatures, for example, of the order from
approximately 750° F. to 1200° F. [398.8°C to 648.8°C], they crack, peel,
and disintegrate into a loose dust" and "[a]s an improvement over such
materials, it is found in practice that the coating composition prepared in
7
Appeal2017-006266
Application 12/554,414
accordance with the present invention affords excellent protection to metal
substrate surfaces when heated through 1500° F. and even as high as
approximately 1600° F." Kornbluth 8:36-46 (emphasis added), 57-62
( emphasis added); see also Br. 8-9.
In this case, Kornbluth's disclosure would appear to support a finding
that paints including silicone polymers without the incorporation of ceramic
or vitreous frits would provide ineffective protection to metal surfaces at a
temperature greater than 3 50°C. Thus, we agree with Appellants that
"Kornbluth teaches that coatings with silicone resin are unacceptable at
temperatures above 575°F [30I.6°CJ" for metal surfaces and that "Kornbluth
teaches that paints ( without glass frits) containing silicone resin are
ineffective at the relevant temperatures [i.e., at a temperature greater than
350°C]" for metal surfaces. See Br. 8-9. However, claim 1 is directed to a
"glass-ceramic" plate, not a "metal" plate. Br. 11, Claims App. In this case,
the Examiner relies on the teachings of Wennemann for the "glass-ceramic"
plate. See Final Act. 2. 7 The Examiner relies on the teachings of Kornbluth
merely to "show that it is well known in the art that a paint material contains
silicone resin and a solvent." Id. As claim 1 is directed to a "glass-ceramic"
plate rather than a "metal" plate, we fail to see how Kornbluth teaches away
from the subject invention.
Accordingly, we sustain the Examiner's rejection of claim 1 as
unpatentable over W ennemann and Kornbluth. We further sustain the
rejection of claims 2-7, 9, 10, and 16, which fall with claim 1.
7 Final Office Action ("Final Act."), dated Apr. 21, 2016.
8
Appeal2017-006266
Application 12/554,414
Claim 19
Appellants contend that "the asserted art's teachings relating to
enamels containing glass frits are not relevant to the present invention
requiring the presence of paint (lacking glass frits ), and the pending
rejection[] based on 'enamel' prior art such as Kornbluth ... should be
reversed" and that "the expectation would have been that the combination
would have been unsuccessful because Kornbluth teaches that paints
(without glass frits) containing silicone resin are ineffective at the relevant
temperatures. This is particularly true for claim 19 which requires the paint
to 'consist essentially of' solvent and silicone polymer." Br. 6, 9.
First, as discussed above, Appellants' evidence does not support the
argument that "[p]aints do not contain glass frits." See Br. 4--5; see also;
Vilato Declaration II ,r,r 3-8. Second, as also discussed above, we agree
with Appellants that "Kornbluth teaches that coatings with silicone resin are
unacceptable at temperatures above 575°F [30I.6°C]" for metal surfaces and
that "Kornbluth teaches that paints ( without glass frits) containing silicone
resin are ineffective at the relevant temperatures [i.e., at a temperature
greater than 350°C]" for metal surfaces. See Br. 8-9. However, as claim 19
is directed to a "glass-ceramic" plate rather than a "metal" plate, we fail to
see how the expectation of the combined teachings of W ennemann and
Kornbluth "would have been unsuccessful." See Br. 9.
Further, in response to Appellants' argument, the Examiner states:
It is [] noted that term "consisting essentially of' is
deemed construed as "comprising" (MPEP 2111.03) wherein the
applied art also shows the paint that comprises or consist[ s]
essentially of silicone and solvent wherein other parts included
or shown by the applied art does not materially affect the basic
9
Appeal2017-006266
Application 12/554,414
characteristics of paint that 1s known to provide high
temperature/heating resistance.
Ans. 5. Appellants do not apprise us of error.
Accordingly, we sustain the Examiner's rejection of claim 19 as
unpatentable over W ennemann and Kornbluth.
Obviousness over Wennemann and Martin
Claims 1-7, 9, 10, and 16
Appellants do not offer arguments in favor of claims 2-7, 9, 10, and
16 separate from those presented for independent claim 1. See Br. 3-10.
We select claim 1 as the representative claim, and claims 2-7, 9, 10, and 16
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). We address claim 19
separately below.
Appellants state that "the Examiner relied on ... Martin as evidence
that it is well known in the art that enamel materials contain silicone resins
as the binder or vehicle solvent" and that "the asserted art's teachings
relating to enamels containing glass frits are not relevant to the present
invention requiring the presence of paint (lacking glass frits ), ... the
pending rejection[] based on 'enamel' prior art such as ... Martin should be
reversed." Br. 6-7.
First, as discussed above, Appellants' evidence does not support the
argument that "[p]aints do not contain glass frits." See Br. 4--5; see also;
Vilato Declaration II ,r,r 3-8. Second, although Martin is directed to an
"enamel" base (see Martin 1: 17-23), we could not find any disclosure in
Martin to the term "glass frits." See Martin, passim; see also Dec. 6. Third,
Appellants do not apprise us as to why Martin's "enamel" base does not
10
Appeal2017-006266
Application 12/554,414
constitute the "paint" as claimed. See Br. 6-7. Thus, Appellants do not
apprise us of error in the Examiner's proposed combination of the teachings
of W ennemann and Martin.
Accordingly, we sustain the Examiner's rejection of claim 1 as
unpatentable over Wennemann and Martin. We further sustain the rejection
of claims 2-7, 9, 10, and 16, which fall with claim 1.
Claim 19
Appellants contend that "the asserted art's teachings relating to
enamels containing glass frits are not relevant to the present invention
requiring the presence of paint (lacking glass frits ), and the pending
rejection[] based on 'enamel' prior art such as ... Martin should be
reversed" and that "[t]his is particularly true for claim 19 in which the paint
'consists essentially of silicone resin and solvent." Br. 6.
First, as noted above, Appellants' evidence does not support the
argument that "[p]aints do not contain glass frits." See Br. 4--5; see also;
Vilato Declaration II ,r,r 3-8. Second, as noted above, although Martin is
directed to an "enamel" base (see Martin 1: 17-23), we could not find any
disclosure in Martin to the term "glass frits." See Martin, passim; see also
Dec. 6. Third, as noted above, Appellants do not apprise us as to why
Martin's "enamel" base does not constitute the "paint" as claimed. See Br.
6-7. Thus, Appellants do not apprise us of error in the Examiner's proposed
combination of the teachings of W ennemann and Martin.
Further, in response to Appellants' argument, the Examiner states:
It is [] noted that term "consisting essentially of' is
deemed construed as "comprising" (MPEP 2111.03) wherein the
applied art also shows the paint that comprises or consist[ s]
11
Appeal2017-006266
Application 12/554,414
essentially of silicone and solvent wherein other parts included
or shown by the applied art does not materially affect the basic
characteristics of paint that is known to provide high
temperature/heating resistance.
Ans. 5. Appellants do not apprise us of error.
Accordingly, we sustain the Examiner's rejection of claim 19 as
unpatentable over W ennemann and Martin.
Obviousness over Wennemann and Awano
Claims 1-7, 9, 10, and 16
Appellants do not offer arguments in favor of claims 2-7, 9, 10, and
16 separate from those presented for independent claim 1. See Br. 3-10.
We select claim 1 as the representative claim, and claims 2-7, 9, 10, and 16
stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). We address claim 19
separately below.
Appellants contend that "Awano relates to coated fibers -it is non-
analogous art because it is from a different field of endeavor than the
invention plates, methods and devices." Br. 9.
The Federal Circuit has laid out two separate tests to determine
whether a reference is analogous art to the claimed invention, i.e., whether
one of ordinary skill in the art would even look to the teachings of Awano.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). They are: "(1) whether
the art is from the same field of [the inventor's] endeavor" and "(2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved." Id.; see also In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011).
12
Appeal2017-006266
Application 12/554,414
In the Answer, the Examiner points out that "the paint, disclosed by
Awano, which provides a heat resistance as high as 600-800° C is
reasonably pertinent to the problem concerned by the [A]ppellant[s] that [is]
provid[ing] a paint that can withstand high heating temperatures." Ans. 5.
Appellants do not apprise us of error in the Examiner's determination that
Awano is reasonably pertinent to the particular problem with which
Appellants were concerned. In addition, we note A wano discloses "heat
treatment processes in ceramic industries" and the use of a silicone resin
heat resistant paint at temperatures as high as 60~00° C "to improve
wear resistance and impact resistance while maintaining the initial form of
the pad body to elongate the service life of the pad." See A wano 1 : 8-12
(emphasis added); see also id. at 2:43--48, 4:4--16; Final Act. 2. For these
reasons, Appellants do not apprise us of error in the Examiner's proposed
combination of the teachings of Wennemann and Awano.
Accordingly, we sustain the Examiner's rejection of claim 1 as
unpatentable over Wennemann and Awano. We further sustain the rejection
of claims 2-7, 9, 10, and 16, which fall with claim 1.
Claim 19
Appellants contend claim 19 "requires the paint to 'consist essentially
of' solvent and silicone polymer." Br. 9.
Appellants' statement does not specifically address the Examiner's
findings with respect to the disclosure of Awano, or point out why the
Examiner's findings are in error. Thus, Appellants' statement does not
constitute a separate argument for patentability of claim 19 under 37 C.F.R.
§ 4I.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
13
Appeal2017-006266
Application 12/554,414
(holding that the Board had reasonably interpreted 37 C.F.R. § 41.37 as
requiring "more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art"). Further, in response to
Appellants' argument, the Examiner states:
It is [] noted that term "consisting essentially of' is
deemed construed as "comprising" (MPEP 2111.03) wherein the
applied art also shows the paint that comprises or consist[ s]
essentially of silicone and solvent wherein other parts included
or shown by the applied art does not materially affect the basic
characteristics of paint that is known to provide high
temperature/heating resistance.
Ans. 5. Appellants do not apprise us of error.
Accordingly, we sustain the Examiner's rejection of claim 19 as
unpatentable over Wennemann and Awano.
Obviousness over Wennemann, Kornbluth, Martin or Awano, and
Shimatani or Sakamoto
Claims 8, 11, and 13-15
Appellants contend that neither Shimatani nor Sakamoto "teach or
suggest combining the required silicone resin and the required degradation
temperature in a paint" or "disclose or suggest a paint containing silicone
resin." Br. 9. However, as discussed above, we find no deficiencies in the
Examiner's obviousness rejections of independent claim 1. Accordingly, for
the reasons discussed above for claim 1, we likewise sustain the Examiner's
rejection of claims 8, 11, and 13-15 as obvious over Wennemann,
Kornbluth, Martin, or Awano, and Shimatani or Sakamoto.
14
Appeal2017-006266
Application 12/554,414
Obviousness over Wennemann, Kornbluth, Martin or Awano, and
Krause or Poumey
Claims 12 and 17
Appellants contend that neither Krause nor Poumey "teach or suggest
combining the required silicone resin and the required degradation
temperature in a paint" or "disclose or suggest a paint containing silicone
resin." Br. 9-10. However, as discussed above, we find no deficiencies in
the Examiner's obviousness rejections of independent claim 1. Accordingly,
for the reasons discussed above for claim 1, we likewise sustain the
Examiner's rejection of claims 12 and 17 as obvious over Wennemann,
Kornbluth, Martin, or Awano, and Krause or Poumey.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-1 7 and
19 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
15