Ex Parte Wang et al

Patent Trial and Appeal BoardOct 31, 2018

13838851 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/838,851 27569 7590 PAUL AND PAUL FILING DATE 03/15/2013 11/02/2018 1717 Arch Street Three Logan Square SUITE 3740 PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Jianguo Wang 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. 2017-048 3294 EXAMINER SHUKLA, KRUPA ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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): INFO@PAULANDPAUL.COM claire@paulandpaul.com fpanna@paulandpaul.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JIANGUO WANG, SUE WANG, and NAR WANG Appeal2018-005095 Application 13/838,851 1 Technology Center 1700 Before MARK NAGUMO, WESLEY B. DERRICK, and JEFFREY R. SNAY, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE2 Appellant seeks review under 35 U.S.C. Â§ 134 from the Examiner's maintained, final rejection under 35 U.S.C. Â§ 103 of claims 1-3, 5, 6, 10, 19, 20, 22, 23, and 26-28 over Sutherland3 in view of Stoffer4 and Amberjet5 1 Appellant is the applicant AnCatt Company, and AnCatt Inc. is identified as the real party in interest. Appeal Br. 1 2 We refer to the Specification filed March 15, 2013 ("Spec."), the Final Office Action dated June 28, 2017 ("Final Act."), the Appeal Brief filed December 19, 2017 ("Appeal Br."), the Examiner's Answer dated February 23, 2018 ("Ans."), and the Reply Brief filed April 19, 2018 ("Reply Br."). 3 Sutherland, US 3,899,624, issued August 12, 1975. 4 Stoffer et al., US 2004/0249023 Al, published December 9, 2004. 5 AMBERJETâ„¢ 1300 Na Data Sheet, Rohm Haas (2008). Appeal2018-005095 Application 13/838,851 and of claims 13 and 14 in further view of De Zeeuw. 6 An oral hearing was held on September 26, 2018. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. CLAIMED SUBJECT MATTER The subject matter of the claims on appeal relates to an anticorrosion coating system. Spec. Abstract. Independent claim 1 is directed to a coating composition comprising a topcoat layer having a cation exchange pigment with the exchangeable cation being either a proton or a metal ion selected from potassium, sodium, and calcium, and a primer layer. Independent claim 22 is directed to a coating composition consisting of a topcoat layer having a cation exchange pigment and a primer layer. Independent claims 1 and 22 are reproduced below: 1. A corrosion inhibiting coating composition for coating a metal substrate comprising: a topcoat layer having a cation exchange pigment with exchangeable cation being either a proton or a metal ion selected from potassium, sodium and calcium, and a primer layer having a resin binder, wherein the cation exchange pigment forms a heterogeneous cation exchange membrane in the topcoat layer. 22. A corrosion inhibiting coating composition for coating a metal substrate consisting of: a topcoat layer having a cation exchange pigment, and a primer layer, wherein the cation exchange pigment forms a heterogeneous cation exchange membrane in the topcoat layer. Appeal Br. 28-29. 6 De Zeeuw et al., US 2009/0214883 Al, August 27, 2009. 2 Appeal2018-005095 Application 13/838,851 DISCUSSION On this record, having reviewed the maintained grounds of rejection set forth by the Examiner, Appellant's arguments and proffered evidence, and the Examiner's response, we are not persuaded of harmful error in the Examiner's decision rejecting the claims over the cited prior art. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections," citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)). "[T]he burden of showing that the error is harmful normally falls upon the party attacking the agency's determination." In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009)). Sutherland in view of Stoffer and Amberjet Sutherland relates to organic metal finishes incorporating ion exchange resins. See, e.g., Sutherland, Abstract, col. 2, 11. 9-10, 25, 35-36. The "incorporat[ed] ion exchange resins [are] regenerated with anti-fouling and anti-corrosion ions." Id. Abstract. The Examiner relies on Sutherland for its disclosure of organic metal finishes comprising cation exchange resins, particularly "polymer[ s] containing sulfonic, carboxylic, ... groups as an integral part of the resin and an equivalent amount of cations." Ans. 3 (citing Sutherland, Abstract, col. 2, 11. 9-10, 44--48); see also Sutherland, col. 2, 11. 25, 35-36. The Examiner also relies on Sutherland's "metal finish includ[ing] 1 to 25 wt% of ion exchange resin" and having a thickness of "5 to 100 micrometers." Ans. 3 (citing Sutherland, col. 3, 11. 11-13). As relied on by the Examiner, Stoffer discloses "a primer coating composition having good adhesion to metals ... and improved corrosion 3 Appeal2018-005095 Application 13/838,851 resistance of metal substrates." Id. at 4 ( citing Stoffer, Abstract, ,r 21 ). The Examiner also relies on Stoffer as disclosing further that its primer coating can include an organic polymer, that is, a resin binder. Id. ( citing Stoffer ,r 26). The Examiner also relies on Stoffer for teaching the inclusion of calcium ions in maintaining that "Stoffer has been combined with Sutherland to teach primer that provides corrosion resistance of metal substrates [that] contains metal ions such as calcium, strontium, barium, etc." Id. at 20 (citing Stoffer ,r 21). The Examiner further determines both that "calcium can function as [an] antifouling agent" and that "calcium ion can function as [an] anticorrosive ion." Id. Stoff er also discloses including cation exchange resins "that have been pre-exchanged or reacted with ... [inter alia] calcium sulfate" in its primer compositions (Stoffer ,r 22) and that calcium sulfate has "been incorporated into commercially available primer formulations as corrosion inhibitors" (id. ,r 25). As relied on by the Examiner, Amberjet "disclose[ s] a strong acid cation exchanger containing sulfonic acid group[s] and sodium cation (metal ion) as [an] exchangeable cation." Ans. 4. The Examiner further relies on Amberjet having desired or suitable "capacity, physical and chemical stability, and oxidation resistance." Id. at 4--5. The Examiner concludes that one of ordinary skill in the art at the time of the invention would have found it obvious to include a primer layer containing resin binder as taught by Stoffer to improve adhesion of Sutherland's coating to the metal substrate and to include protective ions in both the primer and top coating, where calcium ions are known protective ions. Id. at 4, 20-21. The Examiner also determines that the two layers 4 Appeal2018-005095 Application 13/838,851 would be expected to provide better corrosion resistance than Sutherland's layer alone. Id. at 14. The Examiner also determines that the relied on combination would meet the further limitation of forming a heterogeneous cation exchange membrane in the topcoat layer, as the topcoat layer of the combination is identical to that claimed. Id. at 5. Appellant largely argues the rejected claims as a group (Appeal Br. 17-24 ), with separate argument limited to claim 10 (id. at 21 ). Accordingly, the claims stand or fall together on the basis of the arguments in common, with the exception of the further argument as applied to claim 10. Appellant contends, in effect, that Sutherland is limited to the use of heavy metal anticorrosion pigments. Id. at 15, 17, 21-22. Appellant maintains that "the ion exchange resin per se is not an 'anticorrosion agent' ... [and that] [t]he 'protective ions' taught or suggested by Sutherland are the cations of copper, zinc, cadmium, aluminum, tin, and mixtures thereof and anions including chromates, molybdates, vanadates, tungstates, and mixtures." Id. at 17. Appellant further maintains that "[t]he Examiner's rejection is based on erroneous fact-finding ... [because] [c]alcium is not an anticorrosive ion." Reply Br. 5. As set forth by the Examiner, we do not find Sutherland is limited to heavy metal ion cations, or ions of heavy metal compounds, but is open to use of other cations with its cation exchange resins. See, e.g., Ans. 12 (citing Sutherland, col. 2, 11. 35-38). Further, as discussed above, Stoffer reasonably teaches the use of calcium ion as a protective ion, including in conjunction with a cation exchange resin, which belies the position that calcium cation was not itself recognized as a protective agent. See Stoffer ,r 22. Appellant's arguments that the Examiner erred in so finding, and that 5 Appeal2018-005095 Application 13/838,851 calcium is not an anticorrosive ion, are untenable in light of the Specification's disclosure of what was known in the art. See, e.g., Spec. ,r,r 4---6. The Specification highlights that "[t]he use of cation exchange pigments as an anticorrosive pigment [was] known," including the use of "calcium ion exchanged amorphous silica gel" in which the calcium "cations are bound to the surface of the pigment particles by an ion exchange process." Id. at 6. Further, even had Sutherland been limited to the use of toxic heavy metal ions as "protective ions," Appellant's arguments fail to squarely address that Stoffer reasonably teaches the inclusion of calcium ions for their anti-corrosive effect. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."); see also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994 (quoting In re Samour, 571 F.2d 559,562 (CCPA 1978)) ("[A] prior art reference must be 'considered together with the knowledge of one of ordinary skill in the pertinent art."')). The argument is, therefore, unpersuasive of reversible error. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness is ... what the combined teachings of the references would have suggested to those of ordinary skill in the art."). As claim 22 does not recite exchangeable cation (Appeal Br. 29), Appellant's arguments are further without merit as to the rejection of that claim because it is open to including Sutherland's preferred cations. Appellant also contends that the Examiner erred in modifying Sutherland to include a primer layer between the ion-exchange coating and 6 Appeal2018-005095 Application 13/838,851 the metal surface because doing so "would destroy the direct contact which [is] apparently responsible for the beneficial effect" observed in Sutherland. Appeal Br. 19. In particular, Appellant relies on Sutherland being understood to provide a protective effect by delivering protective cation to the metal surface, even though Appellant maintains that "Sutherland does not give any explanation on why or how zinc ion [the provided protective ion] can protect metals from corrosion." Id. at 17-19. Appellant's argument, however, fails to address that the primer layer in the combination itself includes calcium cation, which is a known protective cation, as explained above. Moreover, Stoffer discloses primers that include, as explained above, a cation exchange resin that has been pre- exchanged or reacted with calcium sulfate, i.e., a calcium cation source. Appellant provides neither persuasive argument nor evidence how a primer according to Stoffer acts as a barrier to calcium cations from an overlying coating, or that the overlying coating including a protective cation would only have been expected to provide a protective effect when in direct contact with the metal. See generally Appeal Br.; Reply Br. The notion that overlying coatings necessarily have no protective effect is also contrary on its face to applying multiple coats of the same coating to provide a thicker protective coating, and Appellant provides no argument why one of ordinary skill would not have expected a greater protective effect with a thicker protective coating. See id. As to use of both a primer coat and a top coat, Appellant contends both that Sutherland teaches away from the use of a primer and that Sutherland's coating itself does not function as a primer. Appeal Br. 17-20. Appellant's teaching away arguments are grounded on Sutherland teaching a 7 Appeal2018-005095 Application 13/838,851 "metal finish" and the interpretation that this term indicates a finish applied directly to the surface of the metal, "without the benefit of a primer or other intermediate." Id. at 19-20. Appellant argues that the Examiner errs in construing the meaning of the phrase "metal finish" as used in Sutherland too broadly. Id. at 19. We are not persuaded that the Examiner erred reversibly in modifying Sutherland to include a primer. Even if Sutherland's "metal finish" were limited to coatings applied directly to the coated metal, we are directed to no teaching or technical explanation that including an intervening layer of primer would not work. See generally Appeal Br.; Reply Br. Thus, we are not persuaded that there is a teaching away. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) ("We will not read into a reference a teaching away from a process where no such language exists."); See also In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (Whether a reference teaches away from a claimed invention is a question of fact.). As to the contended failure of Sutherland's coating to function as a primer because it delaminated under Appellant's testing, such a failure would reasonably support including a primer layer for the benefit of increasing adhesion of Sutherland's coating to the metal, not teach away from using a primer. Moreover, to the extent the relied-on testing evidences any deficiency, it is inapposite to the question of whether the cited references teach away. To the extent Appellant is contending, in effect, that Sutherland's coating is itself a primer, but functions poorly in that role, we are directed to nothing that identifies reversible error in using Stoffer's primer that includes a resin binder for the benefit of improved adhesion. 8 Appeal2018-005095 Application 13/838,851 Appellant also contends patentability on the basis of improved results, i.e., avoiding delamination and improved corrosion protection (Appeal Br. 18-19, 21), and industry recognition and awards (id. at 16, 21, 24). Nascent arguments as to avoiding delamination fall short because there is insufficient evidence that the result would not have been expected. See Ans. 13-14. Similarly, there is insufficient evidence that improved corrosion resistance would not reasonably be expected with two layers containing cationic exchange pigment. See id. at 14. Tables 1 and 2 relied on by Appellant do not support patentability over the cited prior art. In Table 1, each example includes a primer that does not include added anticorrosive pigment, and a topcoat without ( example 8) or with ( examples 9-11) a cation exchange resin or pigment. In Table 2, each example includes a primer with added anticorrosive pigment ZP A, and a topcoat without ( example 12) or with ( examples 13-15) a cation exchange pigment resin or pigment. While including a cation exchange resin or pigment in the topcoat improves corrosion resistance, there is, again, insufficient evidence that these results would have been unexpected. As to Appellant's contention that "[t]he rejection of claim 10, in particular should be reversed" because "[t]he present invention improves water-borne systems" (Appeal Br. 21 ), we find it without merit because, as highlighted by the Examiner, claim 10 instead recites "a solvent borne topcoat" (Ans. 17). As to the improvement to a water-borne system being "an industry acknowledged advance in respect to a long-felt but previously unsolved problem" (Appeal Br. 21 ), we are unpersuaded on this record. Appellant has not established: ( 1) that the awards and reviews relied on are directed to the invention as claimed; and (2) that there was a long felt, but unsolved need. 9 Appeal2018-005095 Application 13/838,851 We are directed to no evidence tying the cited accolades to a coating composition falling within the scope of the claims. See generally Appeal Br.; Reply Br; Cf DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999) ("A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record."). The required showing should further establish that the relied on results are reasonably commensurate with the scope of the claims. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). The requisite showing to establish a long-felt, but unsolved need is also wholly lacking for the reasons set forth by the Examiner. Ans. 24--25. Appellant's argument contrasting commercial solvent- and water-borne paints' resistance to corrosion (Appeal Br. 20-21) falls short, even as to water-borne coatings, because it is neither evidence of a long-felt need, nor that the shortcoming has not been met by another. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ... cannot take the place of evidence."). Appellant contends that because "Sutherland's goal is to provide 'protective ions' in the metal finish," one of ordinary skill in the art "us[ing] Amberjet 1300 in Sutherland's metal finish would 'charge' the resin with one or more of the 'protective ions' disclosed by Sutherland." Appeal Br. 21-22 (citing Sutherland, col. 2, 11. 35--40). Appellant's argument fails because, as explained above, calcium cations are known protective ions. Sutherland explicitly states that "[a]ny suitable protective metal ion may be used" ( col. 2, 1. 35), and only lists the particular cations relied on by Appellant in the argument----copper, zinc, cadmium, aluminum, tin, or mixtures thereof-as examples (id. 11. 36-38). 10 Appeal2018-005095 Application 13/838,851 Appellant further contends the Examiner erred in explaining why one of ordinary skill in the art would employ Amberjet 1300 Na. Appeal Br. 22- 23. In particular, Appellant argues there is no sufficient motivation for using Amberjet because the oxidation resistance is that of the resin itself, not an oxidation resistance provided to the underlying metal. Appeal Br. 22-23. Appellant's argument fails, however, to squarely address that the capacity, physical and chemical stability, and oxidation resistance of the resin itself would be reasons to use the particular resin. See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("As long as some motivation ... is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor."). Failing to address these reasons, the argument does not address the rejection as set forth by the Examiner and is, accordingly, unpersuasive of reversible error. As to Appellant's related assertion that the Examiner has merely assumed that the resin of Amberjet would have the same physical properties (Appeal Br. 23), we are directed to neither persuasive argument nor evidence that the relied on physical properties of capacity, physical and chemical stability, and oxidation resistance of the resin would not have been expected when including calcium ion (see generally Appeal Br.; Reply Br.). Appellant proffers no particular argument in the Appeal Brief that the cation exchange pigment in the relied on combination would not form a heterogeneous cation exchange membrane in the topcoat layer. See generally Appeal Br. As to organic metal finishes incorporating ion exchange resins regenerated with protective ions, Appellant proffers further arguments grounded on contended errors in Sutherland's results. Reply Br. 1-2. 11 Appeal2018-005095 Application 13/838,851 Appellant also cites to Leidheiser as having "found that the cations transport through the coatings is the rate determining step of delamination." Id. at 2. Appellant also contends "that the content of ion exchanger resin [in Stoffer' s primer] is only 0.1-5.0 wt% (claim 139) ... [and] [s]uch a low content of the resin should not make the coating a cationic membrane." Reply Br. 3. Appellant adds to these arguments contentions that the Examiner erred in relying on references cited as evidence that calcium can function as an anticorrosive ion, in particular, Abou-Nemeh (US 2007/0213426 Al) and Kawarai (US 2012/0234797). Id. at 4--5. The Examiner's reliance on Sutherland and its teaching as to regenerating ion exchange resins with protective ions was fully set forth in the Final Office Action (Final Act. 3-5, 12-14), as was the determination that the top coat in the combination formed a heterogeneous cation exchange membrane in the topcoat layer (id. at 5), and the reliance on Abou-Nemeh and Kawarai as evidence (id. at 14). Appellant provides no good reason why these arguments could not have been raised in the Appeal Brief. See generally Reply Brief. We deem these arguments waived for purposes of the present appeal. 37 C.F.R. Â§ 41.4I(b)(2). "[A]n issue not raised by an [A]ppellant in its opening brief ... is waived." Optivus Tech., Inc. v. Ion Beam Appl'ns S.A., 469 F.3d 978,989 (Fed. Cir. 2006) (citations and internal quotations omitted); Cf Carbino v. West, 168 F.3d 32, 34--35 (Fed. Cir. 1986) ( explaining how permitting an appellant to raise issues or arguments in a reply brief would be unfair to the appellee, because it does not have an opportunity to respond, and to the court, because of the risk of an improvident or ill-advised opinion). 12 Appeal2018-005095 Application 13/838,851 Appellant also sets forth the same, or similar, arguments as set forth earlier in the Appeal Brief, addressed above. Reply Br. 3-6. The repeated arguments are not persuasive for the same reasons they were not persuasive when proffered in the Appeal Brief. Further, as to calcium ion functioning as a protective, anticorrosive ion, as explained above, this is reasonably taught by Stoffer. Also as explained above, Appellant's arguments that calcium ion is not an anticorrosive ion are untenable in light of the Specification's disclosure of what was known in the art. 7 See, e.g., Spec. ,r,r 4---6. In sum, on this record, Appellant has failed to identify harmful error in the Examiner's decision rejecting claims 1-3, 5, 6, 10, 19, 20, 22, 23, and 26-28 over Sutherland in view of Stoffer and Amberjet. Accordingly, we affirm the rejection. Sutherland in view of Stoffer, Amberjet, and De Zeeuw The Examiner relies on Sutherland, Stoffer, and Amberjet as set forth above. Ans. 9-10. De Zeeuw relates to curable corrosion protection compositions that contain at least one corrosion protection pigment and at least one organic polymer. De Zeeuw, Abstract. The Examiner relies De Zeeuw for disclosing a metal strip coated with corrosion protection primer, and that "the primer can be coated with at least one additional decorative coating or 7 We note that U.S. Patent No. 4,419,137, cited in paragraph 6 of the Specification, discloses in its abstract that "[ c ]orrosion inhibiting particles comprise an inorganic oxide which is silica or alumina, having corrosion inhibiting cations, particularly calcium or zinc cations, chemically bound to the particles" ( emphasis added). 13 Appeal2018-005095 Application 13/838,851 corrosion protection coating, i.e. at least one interlayer can be coated over the primer layer." Id. at 9-10 (citing De Zeeuw, Abstract, ,r,r 222, 224). As to claim 13, which recites "at least one inter layer between the primer layer and the topcoat layer," the Examiner concludes that one of ordinary skill in the art at the time of the invention would have found it obvious "to use at least one interlayer such as [the] corrosion protection coating of Dee Zeeuw [sic] between the primer and the topcoat layer in [ the combination] in order to improve corrosion protection, and thereby arrive at the claimed invention." Id. at 10. As to claim 14, which recites "the at least one inter layer includes a cation exchange pigment," the Examiner relies on Sutherland's teaching that organic metal finishes comprising cation exchange resins have improved corrosion resistance and concludes that one of ordinary skill in the art would have found it obvious at the time of the invention to have included "a cation exchange pigment in the interlayer in order to improve corrosion resistance, and thereby arrive at the claimed invention." Id. at 10. Appellant relies on the dependency of claims 13 and 14 from independent claim 1, in the main, adding only the further contention that while "[a]pply[ing] an interlayer is well known in anticorrosion coating art, ... none declare an interlayer which is cation exchanger pigmented coating of which the cations of the exchanger is proton, sodium, potassium and calcium ions or the mixture thereof." Appeal Br. 26. We are not persuaded of reversible error in the rejection of claims 13 and 14. As discussed above, Appellant does not apprise us of reversible error in the rejection of independent claim 1. Appellant's further contention also does not identify any reversible error. Claim 13 does not require the 14 Appeal2018-005095 Application 13/838,851 interlayer to include a cation exchanger. Claim 14, similarly, does not require the interlayer to include cations, or that they be particular cations. As such, the "arguments fail from the outset because ... they are not based on limitations appearing in the claims." In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Moreover, the argument fails to address the combination as set forth by the Examiner. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also Keller, 642 F.2d at 425. Accordingly, we affirm the rejection of claims 13 and 14 over Sutherland in view of Stoffer, Amberjet, and De Zeeuw. DECISION The Examiner's decision rejecting claims 1-3, 5, 6, 10, 13, 14, 19, 20, 22, 23, and 26-28 under 35 U.S.C. Â§ 103(a) is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 15