HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Jun 9, 2021

2020003850 (P.T.A.B. Jun. 9, 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.
15/565,485 10/10/2017 CHI HAO CHANG 84684329 5895
22879 7590 06/09/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
HORGER, KIM S.
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
06/09/2021 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 CHI HAO CHANG, KUAN-TING WU, and
CHEN-TING LIN
Appeal 2020-003850
Application 15/565,485
Technology Center 1700
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12–20.2 We have jurisdiction.
35 U.S.C. § 6(b).
We affirm in part.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP. Appeal Br. 3.
2 Claims 1–11 are withdrawn from consideration pursuant to 37 C.F.R.
§ 1.142(b), as being drawn to a non-elected invention.
Appeal 2020-003850
Application 15/565,485
2
CLAIMED SUBJECT MATTER
The subject matter on appeal concerns substrates for electronic
devices such as laptops, tablets, media players, and cell phones. Spec. ¶¶ 1,
5. The Specification discloses that a substrate may be referred to as a
housing, which is used to support and house the electronic device’s
components. Id. ¶ 5. According to the Specification, conventional
substrates formed by electrophoretic deposition may have a coating with
bubbles. Id. ¶ 6. The Specification discloses methods for preparing
substrates which purport to reduce the formation of bubbles for improved
smoothness as compared to conventionally coated substrates. Id.
Sole independent claim 12 is illustrative of the claimed subject matter
and is reproduced below with the dispositive limitations on appeal italicized:
12. A substrate for an electronic device comprising:
a cast magnesium alloy substrate including zinc and an
element selected from the group consisting of aluminum and
lithium,
wherein
a metal deposition layer is formed on the cast
magnesium alloy substrate by electroplating; and
a single cured coating is formed on the metal
deposition layer,
wherein the cured coating is formed by applying a
precursor over the metal deposition layer and curing the
precursor by ultra-violet radiation with an intensity of 10
to 7,000 millijoules per square centimeter (mJ/cm2).
Appeal Br. 19–20 (Claims App.).
DISCUSSION
The Examiner rejects claims 12–20 under 35 U.S.C. § 103 as
unpatentable over Meisenburg (US 2003/0036604 A1, published February
Appeal 2020-003850
Application 15/565,485
3
20, 2003) in view of Yu (US 2013/0075271 A1, published March 28, 2013).
Final Act. 3–5.
Appellant argues the rejection of claims 12–14 and 16–20 as a group,
and separately argues claim 15. Therefore, consistent with our rules, we
select claim 12 as representative, and decide the propriety of the rejection of
claims 12–14 and 16–20 based on claim 12. 37 C.F.R. § 41.37(c)(1)(iv).
We address claim 15 separately.
Claim 12
We have considered Appellant’s arguments (Appeal Br. 12–15; Reply
Br. 4–6) and are unpersuaded that Appellant has identified reversible error in
the Examiner’s rejection of claim 12. See In re Jung, 637 F.3d 1356, 1365–
66 (Fed. Cir. 2011). Therefore, we sustain the obviousness rejection as to
claim 12 based on the findings of fact, conclusions of law, and rebuttals to
arguments expressed by the Examiner in the Final Action and in the Answer.
We add the following comments for emphasis.
Appellant argues that Meisenburg’s dual-cure coating––which the
Examiner maps to the claimed single cured coating––is not cured by ultra-
violet radiation alone. Appeal Br. 13. Appellant argues that Meisenburg’s
coating is distinguished from the claimed single cured coating because the
dual-cure coating is cured by radiation and heat. Id. According to
Appellant, Meisenburg’s disclosure regarding “‘maintaining the depicted
advantages of the dual-cure systems’ teaches away from . . . Appellant’s
single cured coating.” Id. at 14 (citing Meisenburg ¶ 5). In the alternative,
Appellant contends that the Examiner’s proposed modification of
Meisenburg’s dual-cure coating materials changes Meisenburg’s principle of
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Application 15/565,485
4
operation, thereby rendering the coating unsatisfactory for its intended
purpose of maintaining the advantages of dual-cure systems. Appeal Br. 14.
The Examiner, however, asserts that Appellant’s arguments are
inconsistent with claim 12. Ans. 5. According to the Examiner, Appellant’s
construction of claim 12 as drawn to “a coating that is cured by one cure
method” is invalid. Id. The Examiner finds that “Meisenburg teaches the
option of a single coating that is cured by both heat and actinic radiation (i.e.
ultra-violet radiation) . . . , which is consistent with” claim 12. Id. at 6.
The dispositive issue with respect to Appellant’s individual attack
against Meisenburg is whether the Examiner’s claim construction of the
term “single cured coating” is reasonable in view of Appellant’s disclosure.
See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007) (explaining that, during examination, “the PTO must give claims their
broadest reasonable construction consistent with the specification.”).
Here, Appellant points us to paragraph 17 of the Specification for
support of the disputed claim limitation. Reply Br. 5. Appellant’s relied-
upon disclosure, however, provides no express definition of the term “single
cured coating,” much less one that requires the coating to be cured only by
ultra-violet radiation. Rather, the Specification describes “that the cured
coating is cured by ultra-violet radiation, heat at a cure temperature in a
range from 60 °C to 140 °C, or combinations thereof.” Spec. ¶ 17 (emphasis
added). In other words, the disclosure does not require the coating to be
cured only by ultra-violet radiation (i.e., a “single cure”) as argued by
Appellant. We, therefore, are unpersuaded by Appellant’s arguments, which
are premised on a claim construction requiring a coating that is cured by a
single method. Appeal Br. 12–14; see also Reply Br. 5 (asserting that claim
12 was amended to exclude a coating that “is a single coating.”).
Appeal 2020-003850
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5
We agree with the Examiner (Ans. 5–6) that it is reasonable to
construe the phrase “single cured coating” as encompassing “a single
coating that is cured.” In Appellant’s Amendment and Response dated
October 2, 2019, we note that Appellant relies on the Specification’s
paragraph 21 and Figures 2 and 3 to support the introduction of the claim
term “single” into the disputed limitation. See Amendment 6.3 We,
however, find that none of the relied-upon disclosures require the claimed
coating to be cured only by ultra-violet radiation.
Appellant additionally argues that there is no motivation to combine
Meisenburg’s coating layer with Yu’s electroplated surface as an underlying
layer. Appeal Br. 15; Reply Br. 5–6. According to Appellant, Yu’s
electroplated surface is “a final layer,” which is treated “to ensure that all of
the plating electrolyte and materials other than aluminum plating are
effectively removed from the magnesium alloy substrate and no further
reactions occur on the alloy.” Appeal Br. 15.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Applying that legal principle to the case at hand, it
was known to use the claimed cured coating to improve an electrically
conductive substrate having an electrocoat primer by providing, inter alia, a
smooth and scratch-resistant surface that is resistant to weathering,
yellowing, cracking, and delamination. Meisenburg ¶¶ 18, 136. Therefore,
despite Yu’s specific teaching that its electroplated surface is a final layer,

3 Amendment/Response dated October 2, 2019.
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the skilled artisan would have recognized that Meisenburg’s cured coating
could be used to likewise improve Yu’s similar electrically conductive
substrate having an electrocoat primer. Yu ¶ 13. Notably, Appellant has not
argued that it would have been beyond the skill of the ordinary artisan to
cure Meisenburg’s coating on an electroplated substrate. Appeal Br. 15;
Reply Br. 5–6. We, therefore, discern no reversible error in the Examiner’s
conclusion that the skilled artisan would have been motivated to employ a
cured coating on Yu’s electroplated substrate, for the purpose of improving
its smoothness and resistance to scratches, weathering, yellowing, cracking,
and delamination. Final Act. 4; Ans. 6–7; Meisenburg ¶¶ 18, 136; Yu ¶ 13.
Thus, for these reasons, and those provided by the Examiner, we
sustain the obviousness rejection of claims 12–14 and 16–20.
Claim 15
Claim 15, dependent from claim 12, requires that “the cured coating is
a ceramic-polymer composite.” Appeal Br. 20 (Claims App.).
Appellant argues that Meisenburg describes an organically modified
ceramic as an additional coat over a clearcoat, which is distinguished from
the claimed cured ceramic-polymer composite coating. Appeal Br. 16. The
Examiner responds that “the ‘organically modified ceramic’ taught by
Meisenburg could be interpreted to be a single layer that can be a cured
coating, and as an obvious variation could include the polymer of the
clearcoat system described by Meisenburg.” Ans. 7.
We agree with Appellant and reverse this rejection. To properly
interpret the meaning of a given claim term, our reviewing court instructs us
to “look first to the intrinsic evidence of record, i.e., the patent itself,
including the claims, the specification and, if in evidence, the prosecution
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history” which collectively “is the most significant source of the legally
operative meaning of disputed claim language.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Beginning with the language of claim 15 itself, the “ceramic-polymer
composite” is identified as “the cured coating,” which has antecedent basis
in the recitation of “a single cured coating” in independent claim 12.
Furthermore, the Specification describes “that the cured coating may be
formed from a ceramic-polymer composite.” Spec. ¶ 23.
On this record, the Examiner provides no intrinsic evidence to support
a construction of claim 15 so broad that it would reasonably encompass an
additional coating of a ceramic-polymer composite onto an already cured
coating. For this reason, we do not sustain the Examiner’s rejection of
separately argued claim 15.
CONCLUSION
The rejection of claims 12–14 and 16–20 are affirmed.
The rejection of claim 15 is reversed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–20 103 Meisenburg, Yu 12–14, 16–20 15
TIME PERIOD FOR RESPONSE
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 IN PART