GLOBAL IP HOLDINGS, INC.Download PDFPatent Trials and Appeals BoardDec 8, 20212021002673 (P.T.A.B. Dec. 8, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 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 Copy with citationCopy as parenthetical citation