GLOBAL IP HOLDINGS, INC.

Patent Trials and Appeals Board

Dec 8, 2021

2021002673 (P.T.A.B. Dec. 8, 2021)

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.
15/813,568 11/15/2017 Matthew R. GRAVES GIPH0142PUS1 6126
22045 7590 12/08/2021
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
KRUER, KEVIN R
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/08/2021 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW R. GRAVES and KELLY L. MELAND
____________

Appeal 2021-002673
Application 15/813,568
Technology Center 3600
____________

Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
JEREMY M. PLENZLER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 21, 35, 36, 38, 39, 41, and 42. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Global IP Holdings, LLC as the real
party in interest. Appeal Br. 1.
Appeal 2021-002673
Application 15/813,568

2
CLAIMS
“This invention relates in general to the field of plastic parts and,
more particularly, to plastic parts having a layered, decorative, colored-metal
finish which may be used in a vehicle interior.” Spec. ¶ 1.
Claims 21, 35, and 38 are independent. Appeal Br. (Claims App.).
Claim 21 illustrates the claimed subject matter and is reproduced below with
reference letters added in brackets:
21. A plastic part having a layered, decorative, colored-metal
finish, the plastic part comprising:
[A] a plastic substrate;
[B] a single physical vapor deposition (PVD) base coat
layer applied as a liquid onto the plastic substrate, the base coat
layer being radiation-cured to form a resin film, the base coat
layer consisting essentially of a polymeric film forming
material, a radiation sensitive monomer having polymerizable
unsaturated bonds, and a photopolymerization initiator;
[C] a PVD vacuum metalized colored-metal layer
overlying and adhering to the resin film;
[D] an intermediate, color layer having coloring agents,
the color layer applied onto the colored-metal layer and being
thermally cured, the color layer containing a UV absorber,
wherein the adhesion of the colored-metal layer to the base coat
layer is sufficient to withstand thermally curing the color layer;
and
[E] a radiation-cured clear top coat layer overlying and
contacting the thermally cured intermediate, color layer.
Id.

REJECTIONS ON APPEAL
Claims 21, 35, 36, 38, 39, 41, and 42 are rejected under 35 U.S.C.
§ 112(b) as being indefinite.
Appeal 2021-002673
Application 15/813,568

3
Claims 21, 35, 36, 38, 39, 41, and 42 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Kitagawa (US 6,767,435 B1, issued July
27, 2004), Richert (US 2012/0003487 A1, published Jan. 5, 2012), and
Leininger (US 7,297,397 B2, issued Nov. 20, 2007).

ANALYSIS
Indefiniteness (Claims 21, 35, 36, 38, 39, 41, and 42)
Claim 38 recites the limitation quoted by the Examiner “wherein
adhesion of the PVD vacuum metalized metal layer to the cured resin film is
sufficient to withstand thermally curing the intermediate color layer,” and
claims 21 and 35 recite similar limitations. Final Act. 2; Appeal Br. (Claims
App. 1–3) (emphasis added; herein, “adhesion limitation”). The Examiner
submits that it is unclear how one of ordinary skill in the art would
objectively determine if the adhesion limitation is satisfied. Final Act. 2.
The Examiner questions: “What is meant by ‘sufficient’? What conditions
of thermal curing are utilized?” Id.
In contrast, Appellant contends that one of ordinary skill in the paint
coatings art would understand, in light of the Specification, that “thermally
curing the intermediate color coat (depending upon the materials selected)
must be performed at a temperature that would not interfere with the
adhesion of the PVC [sic] vacuum metalized layer to the cured resin film.”
Appeal Br. 7. According to Appellant, “[d]epending upon the materials used
in the PVC [sic] vacuum metalized layer and the cured resin film, the
melting points and adhesive temperature tolerances are known to those of
skill in the art.” Id. Appellant points out that the Specification states, “‘the
color layer is preferabl[y] thermally cured in the range of 75–85° C for
Appeal 2021-002673
Application 15/813,568

4
approximately 10 minutes,’” and the Specification “even goes so far as to
provide a specific preferred product.” Id. at 7–8; see Spec. ¶ 452. In the
Reply Brief, Appellant asserts:
In the claim the limitation “. . . sufficient to withstand
thermal curing of the intermediate color coat” is supported by a
specific example in the specification relating to a selected and
disclosed resin. From this disclosure, one of ordinary skill in
the art could conduct tests to determine whether the adhesion of
the metalized layer to the base coat could withstand the thermal
curing step of the intermediate color coat.
Reply Br. 5 (emphasis added).
A claim is properly rejected as being indefinite, if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
bounds of the claim are unclear because it “contains words or phrases whose
meaning is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
We understand that the Examiner construes the claim term “sufficient” as a
term of degree or approximation. See MPEP § 2173.05(b) (9th ed., rev.
08.2017, Jan. 2018) (Section I Terms of Degree, Section III
Approximations). “Claim language employing terms of degree has long
been found definite where it provided enough certainty to one of skill in the
art when read in the context of the invention.” Interval Licensing LLC v.
AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). Accordingly, “[t]he
claims, when read in light of the specification and the prosecution history,
must provide objective boundaries for those of skill in the art.” Id. at 1371
(citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 911 & n.8
(2014)).

2 We refer to the Specification filed on November 15, 2017 as the
“Specification” or “Spec.”
Appeal 2021-002673
Application 15/813,568

5
To the extent Appellant is referring to the cited description in
paragraph 45 of the Specification as the “specific example,” this description
is unpersuasive. See Appeal Br. 7–8. Paragraph 45 states:
The thermally-cured intermediate, pigmented (or other
coloring agents) color layer 18 is applied onto and overlies the
metal layer 16. The color layer 18 provides a smooth surface
that exhibits excellent adhesion to the metal layer 16. A
preferred product “Eureka Primer R#382” (urethane type
middle) is available from Yoolim Special Chemical Co. Ltd.
The color of the pigments in the layer 18 is typically the same
or similar to the color of the layer 16 to provide a rich, deep
color which is not faded during curing. Rather, the color layer
is preferably thermally cured at a temperature in the range of
75–85° C for approximately 10 minutes.
Spec. ¶ 45 (emphasis added). First, paragraph 45 describes “excellent
adhesion” of the overlying color layer 18 to metal layer 16, whereas the
adhesion limitation pertains to adhesion of the underlying base coat layer
(14) to the metal layer (16). See Spec. Fig. 1. Second, paragraph 45
discloses, or implies, that the described thermal curing temperature and time
values avoid fading of the color layer 18 during curing, rather than maintain
“excellent adhesion” of color layer 18 to metal layer 16. Third, paragraph
45 does not disclose the composition of the metal layer that is used with the
“preferred product.” For these reasons, paragraph 45 does not support
Appellant’s position.
Based on the record before us, we are not apprised of any portion of
the Specification that provides objective boundaries for the adhesion
limitation. We agree with the Examiner that Appellant has not shown
persuasively that the disclosure provides an objective standard to determine
if the adhesion of the colored-metal layer to base coat layer is “sufficient.”
Ans. 6. We also agree with the Examiner that the Specification provides no
Appeal 2021-002673
Application 15/813,568

6
guidance as to what thermal curing conditions should be utilized to evaluate
the sufficiency of adhesion between the base coat layer and the colored-
metal layer. Id. We further agree with the Examiner that Appellant has not
provided persuasive evidence “that the skilled artisan would know the
adhesive temperature tolerances of various metallized film/UV cured resin
interfaces” in order to be able to select appropriate thermal curing
conditions. Id.; Appeal Br. 7.
For the above reasons, we agree with the Examiner that the meaning
of the adhesion limitation is unclear in light of the Specification. Thus, we
sustain the rejection of claims 21, 35, and 38, and dependent claims 36, 39,
41, and 42, under 35 U.S.C. § 112(b).

Obviousness (Claims 21, 35, 36, 38, 39, 41, and 42)
Appellant argues claims 21, 35, 36, 38, 39, 41, and 42 as a group.
Appeal Br. 8–11. We select claim 21 as representative to decide the appeal
as to the rejection. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Claims 35, 36,
38, 39, 41, and 42 stand or fall with claim 21.
Initially, although we agree with the Examiner that the adhesion
limitation discussed above renders the claims indefinite, we are able to reach
the obviousness rejection because Appellant does not dispute the Examiner’s
findings regarding that limitation.
As for claim 21, the Examiner finds that Kitagawa discloses a part
comprising a plastic substrate (plastic member 4), a resin film base coat
layer (resin film 1) overlying and contacting the substrate, a decorative metal
layer (metal film 2) overlying and contacting the resin film base coat layer,
and a colored top coat (clear colored protective film 3). Final Act. 3; see
Appeal 2021-002673
Application 15/813,568

7
also Kitagawa Figs. 1, 2 (showing clear colored protective film 3 overlying
and contacting metal film 2). The Examiner also finds that Kitagawa
teaches that the resin film base coat layer is smooth and provides good
adhesion to the metal film. Id. (citing Kitagawa, col. 4, l. 15 et seq.).
The Examiner concedes, however, that Kitagawa does not disclose
that the resin film base coat layer is applied as a liquid onto the plastic
substrate and then radiation cured to convert the liquid to a cured resin film,
and that the resin base coat layer comprises all of the components, as recited
in claim 21 (element B). Final Act. 3. The Examiner also concedes that
Kitagawa does not teach that the top coat comprises an intermediate color
layer and an overlying clear top coat layer, as recited in claim 21 (elements
D and E). Id.
The Examiner relies on Leininger as teaching the base coat layer
limitation. Particularly, the Examiner finds that Leininger teaches a
radiation-cured layer 6 for providing a smooth surface for deposition of a
metal layer (decorative metal layer 8), where radiation-cured layer 6 meets
the limitations of the recited radiation-cured base coat layer. Final Act. 3–4;
see also Leininger, col. 6, ll. 5–10, 24–27, 52–56; Ans. 7; Fig. 1. The
Examiner also finds that Leininger’s radiation-cured layer provides excellent
adhesion to the metal layer, and therefore concludes that it would have been
obvious to one of ordinary skill in the art to use the radiation-cured layer in
place of Kitagawa’s resin film base coat layer to provide a smooth, level
surface and excellent adhesion to the metallization layer, as is likewise
desired in Kitagawa for the resin film base coat layer. Final Act. 4; Ans. 7–
8; see also Leininger, col. 6, ll. 24–27.
Appeal 2021-002673
Application 15/813,568

8
The Examiner relies on Richert as to the intermediate color layer and
top coat layer limitations recited in claim 21. Particularly, the Examiner
finds that Richert teaches a multi-coat paint comprising a thermally curable
basecoat and a UV curable clearcoat that satisfy the recited limitations.
Final Act. 3 (citing Richert ¶¶ 30, 67, 70, 133); Ans. 9. The Examiner
concludes that it further would have been obvious to utilize Richert’s coating
in place of Kitagawa’s protective surface film 3 to provide an aesthetic
protective topcoat. Final Act. 3; Ans. 9.
The Examiner also submits that claim 21 recites the method
limitations of “the base coat being physical vapor deposited and ‘UV cured,’
the metal layer being PVD and ‘vacuum metalized,’ and the top coat layer
being ‘radiation cured’ and the color layer being ‘thermally cured.’”3 Final
Act. 4. The Examiner determines that Appellant has not shown that the
method of making the product results in a materially different product.
Alternatively, the Examiner finds that Kitagawa teaches that the metal layer
is a vacuum metallized layer, and Richert teaches that both the top coat and
color layer can be thermally-cured. Id.
Appellant contests the rejection for multiple reasons. First, Appellant
contends that the term “radiation-cured” is not a product-by-process

3 Should there be further prosecution of this application, the Examiner may
evaluate whether the original disclosure provides adequate written
description support for the radiation-cured base coat layer: (1) consisting
essentially of, or including, the recited components, which are applied as a
liquid, and (2) being a “physical vapor deposition (PVD) base coat layer”
(i.e., applied by PVD), as required by claims 21, 35, and 38. We note, for
example, that paragraph 40 of the Specification describes “several
techniques known to the industry” for applying radiation-cured layer 14, but
does not mention that PVD can be used.
Appeal 2021-002673
Application 15/813,568

9
limitation. Appeal Br. 8. The Examiner agrees to the extent this limitation
means that the base coat layer includes or consists essentially of the recited
components. Ans. 7. Appellant does not, however, explain how the other
“method limitations” indicated by the Examiner affect the final product. For
example, the phrase “the adhesion . . . is sufficient to withstand thermally
curing the color layer” pertains to an intermediate product. Appellant does
not explain how the recited adhesion affects the final product.
Second, Appellant contends that Kitagawa’s base coat is thermally
cured and lacks the recited components of the radiation-cured base coat
layer. Appeal Br. 8. This contention attacks Kitagawa individually, rather
than as applied in the combination. “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., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)). In response, the Examiner points out that Leininger, not Kitagawa,
is relied as teaching the base coat layer limitation. Ans. 7–8. The Examiner
proposes to replace Kitagawa’s resin film 1 with Leininger’s radiation-cured
layer 6. Final Act. 3–4; see also Ans. 7–8. Appellant’s contention does not
address the proposed combination, and thus, is unpersuasive.
Third, Appellant contends that Leininger does not teach that a
thermally cured layer is subsequently applied to radiation cured layer 6, and
thus, there is no problem in Leininger with thermal curing interfering with
adhesion of the radiation-cured layer (6) and the metallized layer (8).
Appeal Br. 8. The Examiner responds that this contention is against
Leininger individually, rather than the combination. Ans. 8. We agree that
the contention is unpersuasive for that reason. Additionally, the Examiner
Appeal 2021-002673
Application 15/813,568

10
notes Leininger teaches that the radiation curable layer (6) maintains
adhesion to the metallized layer (8) after being exposed to a temperature of
400°F for 90 minutes, and thus, that adhesion will be maintained at these
conditions during thermal curing. Id. (citing Leininger, col. 6, l. 28 et seq.).
Appellant does not address this finding.
Fourth, Appellant contends that Richert does not teach the claimed
base coat layer. Appeal Br. 9. The Examiner responds that Leininger, not
Richert, is relied for this limitation. Ans. 8. As discussed above, Richert is
relied on to teach claim elements D and E. Final Act. 3; Ans. 9 (see
annotated figures). We agree with the Examiner that Appellant’s contention
does not address the stated rejection, and thus, is unpersuasive. Ans. 9.
Fifth, Appellant contends that there is a lack of motivation to combine
Kitagawa and Richert. Appeal Br. 9. Appellant contends that Kitagawa was
successfully tested for corrosion resistance, and so there is no evidence that
there was a need to use Richert’s coating in place of Kitagawa’s protective
film. Id.
The Examiner responds that Richert teaches that the multi-coat
coating provides both corrosion resistance and aesthetic appeal. Ans. 9. The
Examiner disagrees with Appellant’s contention that Richert’s multi-coat
effect paint “‘would destroy the intent of Kitagawa to provide a part that
appears to be electroplated.’” Ans. 10; Appeal Br. 10. The Examiner
submits that Appellant has provided no evidence to support this position,
and, to the contrary, Kitagawa teaches that the protective film may be
colored. Ans. 10. We note Kitagawa discloses that clear colored protective
film 3’ comprises a pigment or a dye to give a good external appearance to
member 4. See, e.g., Kitagawa, col. 5, ll. 36–37. Thus, the Examiner
Appeal 2021-002673
Application 15/813,568

11
submits, applying a colored coat, such as Richert’s multi-coat effect paint,
would not be contrary to the teachings of Kitagawa. Ans. 10. We agree
with the Examiner and find Appellant’s contention unpersuasive.
Sixth, Appellant contends that it has discovered certain problems, and
the claimed “system” addresses certain problems. Appeal Br. 10–11 (citing
Spec. ¶¶ 20–22). Appellant also contends that the radiation-cured base coat
requires less energy and a shortened curing time compared to a heat cured
base coat layer, the color layer is thermally cured and includes UV inhibitors
or absorbers, and the clear top coat layer prevents oxidation and
environmental damage to the color layer. Id. at 11. In contrast, Appellant
asserts, “Kit[a]gawa does not mention UV inhibitors or absorbers. Richert
discloses adding UV absorbing constituents only in the base coat. Richert
lacks a PVD metal coating or a color layer applied over the metalized layer
that is the only layer including UV inhibitors or absorbers.” Id.
These contentions are unpersuasive. Appellant’s contentions address
Kitagawa and Richert individually and not as applied in the combination.
The Examiner does not rely on Kitagawa as teaching UV inhibitors or
absorbers. As for Richert, Appellant does not contend that the proposed
combination lacks a PVD metal coating, or a color layer that is applied over
the metalized layer and is the only layer including a UV absorber recited in
the claim. An Examiner is not required to “seek out precise teachings
directed to the specific subject matter of the challenged claim.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, in an obviousness
analysis, an Examiner can consider not only the express disclosures of the
references, but also the “inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. Here, the rejection is based on a
Appeal 2021-002673
Application 15/813,568

12
combination of reference teachings, and Appellant’s contentions are
unpersuasive because they do not address what the collective information
demonstrates a skilled artisan would have known, and how that collective
knowledge would have influenced the steps taken by such an artisan. See
Merck, 800 F.2d at 1097.
In the Reply Brief, Appellant contends that Kitagawa, Leininger, and
Richert “address wholly different problems” than does Appellant. Reply Br.
3. Particularly, Appellant contends that Kitagawa addresses the problem of
“chrome plating appearing coating with good ductility and corrosion
resistance,” Leininger the problem of “avoiding surface defects,” and
Richert the problem of “reducing corrosion after chipping,” but that these
problems “are not relevant to applicant’s claimed layered structure having
improved durability and UV protection.” Id. Appellant also contends:
None of the prior art would have been looked to because
the prior art references did not suggest possible solutions to the
problem addressed by applicant. The rejection of the claims as
obvious is in err because the problem to be solved was not
considered by any of the references.
Id. at 4 (emphasis added).
These contentions are not persuasive. As explained in KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420 (2007) (emphasis added):
The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee was
trying to solve. . . . The Court of Appeals failed to recognize
that the problem motivating the patentee may be only one of
many addressed by the patent’s subject matter. The question is
not whether the combination was obvious to the patentee but
whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or
problem known in the field of endeavor at the time of invention
Appeal 2021-002673
Application 15/813,568

13
and addressed by the patent can provide a reason for
combining the elements in the manner claimed.
Accordingly, even if Kitagawa, Leininger, and Richert address different
problems than the problem Appellant alleges the claimed invention
addresses, this does not support Appellant’s contention that one of ordinary
skill in the art would not have looked to these references, or show a lack of a
motivation or suggestion to combine the reference teachings.4 Additionally,
Appellant does not apprise us of error in the Examiner’s rationales for
combining the teachings of Leininger and Richert with Kitagawa to result in
the claimed plastic part.
For the foregoing reasons, we sustain the rejection of claim 21, and
claims 35, 36, 38, 39, 41, and 42 falling with claim 21, as unpatentable over
Kitagawa, Leininger, and Richert.

CONCLUSION
We affirm the rejections of claims 21, 35, 36, 38, 39, 41, 42.

4 There is no dispute that the asserted references are in Appellant’s field of
endeavor.
Appeal 2021-002673
Application 15/813,568

14
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
21, 35, 36,
38, 39, 41,
42
112(b) Indefiniteness 21, 35, 36, 38,
39, 41, 42

21, 35, 36,
38, 39, 41,
42
103 Kitagawa, Richert,
Leininger
21, 35, 36, 38,
39, 41, 42

Overall
Outcome
21, 35, 36, 38,
39, 41, 42

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED