Hewlett-Packard Development Company, L.P.Download PDFPatent Trials and Appeals BoardMay 6, 20212020002827 (P.T.A.B. May. 6, 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. 15/021,578 03/11/2016 Yu-Chuan (Tony) KANG 84466639 8712 22879 7590 05/06/2021 HP Inc. 3390 E. Harmony Road Mail Stop 35 Fort Collins, CO 80528-9544 EXAMINER KEELING, ALEXANDER W ART UNIT PAPER NUMBER 1795 NOTIFICATION DATE DELIVERY MODE 05/06/2021 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): ipa.mail@hp.com jessica.pazdan@hp.com yvonne.bailey@hp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YU-CHUAN KANG and KUANG-TING WU1 ____________ Appeal 2020-002827 Application 15/021,578 Technology Center 1700 ____________ Before CHRISTOPHER C. KENNEDY, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–7 and 15–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to methods of treating metal surfaces such as the metal housing of mobile phones, tablets, and portable 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Hewlett-Packard Development Company, LP (“HPDC”). Appeal Br. 3. The Appellant states that HPDC is a wholly owned affiliate of Hewlett-Packard Company, and that the general or managing partner of HPDC is HPQ Holdings, LLC. Id. Appeal 2020-002827 Application 15/021,578 2 computers. E.g., Spec. ¶¶ 1, 13; Claim 1. Claim 1 is reproduced below from page 19 (Claims Appendix) of the Appeal Brief: 1. A method of treating a metal surface, the method comprising: treating the metal surface with micro-arc oxidation to form a first metal oxide conversion coating on the metal surface; removing a portion of the first metal oxide conversion coating to form an exposed metal surface; and treating the exposed metal surface with micro-arc oxidation without anodisation to form a second metal oxide conversion coating on the exposed metal surface, wherein the first metal oxide conversion coating forms a first pattern distinct from a second pattern formed by the second metal oxide conversion coating, and wherein the first pattern and the second pattern have different visual properties. ANALYSIS Claims 1–7 and 15–19 stand rejected under 35 U.S.C. § 103 as unpatentable over Lin2 and Hanagata.3 The Appellant argues the claims as a group. We select claim 1 as representative, and the remaining claims on appeal will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejection. Accordingly, we affirm the rejection for reasons set forth below, in the Final Action dated September 3, 2019, and in the Examiner’s Answer. The Examiner finds that Lin teaches a method of treating a metal surface for decorative and strength purposes comprising a micro-arc 2 CN 101210336A, dated July 2, 2008. 3 US 5,147,515, issued Sept. 15, 1992. Appeal 2020-002827 Application 15/021,578 3 oxidation step, a removing step, and an anodization/coloring step. Ans. 5. The Examiner acknowledges that Lin does not include a second micro-arc oxidation as required by claim 1. Id. The Examiner finds that Hanagata teaches a method of forming decorative coatings on metal substrates using spark discharge in an electrolytic bath, and that Hanagata’s decorative coatings may have a variety of colors and patterns, as well as high strength. Id. at 5–6. The Examiner finds that it would have been obvious “to simply substitute the anodization step (or anodization and coloring steps) of Lin with the anode spark oxidation of Hanagata for producing a surface with a colorful pattern.” Id. at 6; see also Final Act. 6 (same). The Appellant first argues that Lin teaches away from a micro-arc oxidation step “without anodisation,” as required by claim 1, because Lin teaches the use of anodization. Appeal Br. 16. That argument is not persuasive of reversible error. As set forth above, the Examiner finds that forming decorative colors on a metal substrate could be performed using Lin’s anodization/coloring method or using Hanagata’s spark discharge method.4 Ans. 5–6. The Examiner finds that the two methods were known alternatives to achieving the same result. Id. The Examiner proposes substituting Hanagata’s method of coloring a metal substrate, which does not involve anodization, in place of Lin’s method, which does involve anodization. Id. Thus, the proposed combination does not involve the use of anodization. The Appellant does 4 The Appellant does not argue that Hanagata’s spark discharge method falls beyond the scope of the term “micro-arc oxidation without anodization” as recited by claim 1. Appeal 2020-002827 Application 15/021,578 4 not identify any disclosure in the record indicating that Lin’s method of coloring a metal substrate could not be substituted for a known alternative, i.e., Hanagata’s. On this record, the Appellant has not persuasively identified a disclosure in Lin that criticizes, disparages, or otherwise teaches away from the subject matter of claim 1. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the[] [disclosed] alternatives . . . .”). The Appellant argues that Hanagata does not teach first and second patterns having different visual properties. Appeal Br. 16–17. That argument is not persuasive of reversible error. Lin teaches the use of color to provide a “strong appearance decoration, bright and diversified color and three-dimensional pattern.” E.g., Lin at Abstr., ¶ 6. Hanagata similarly teaches methods of providing “a variety of color tones” to a metal substrate. Hanagata at Abstr. Through the use of only ordinary creativity, a person of ordinary skill in the art would have understood those disclosures to teach or suggest patterns of different visual properties (e.g., colors) on the metal substrate. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). On this record, we are not persuaded of reversible error in the Examiner’s rejection of claim 1. Appeal 2020-002827 Application 15/021,578 5 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 1–7, 15–19 103 Lin, Hanagata 1–7, 15–19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation