Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

May 6, 2021

2020002827 (P.T.A.B. May. 6, 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.
15/021,578 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.
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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.
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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.
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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.
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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