Lukas Bedrnik et al.

Patent Trials and Appeals Board

Aug 20, 2019

15290058 - (D) (P.T.A.B. Aug. 20, 2019)

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.
15/290,058 10/11/2016 Lukas BEDRNIK ATODP0135WOUSA 9009
23908 7590 08/20/2019
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LUKAS BEDRNIK, FRANTISEK HAAS,
NADINE LANG, and ROLAND VOGEL
____________________

Appeal 2018-008473
Application 15/290,058
Technology Center 1700
____________________

Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
BRIAN D. RANGE, Administrative Patent Judges.

RANGE, Administrative Patent Judge.

DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–11. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant is the Applicant, Atotech Deutschland GmbH, which, according
to the Appeal Brief, is also the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE2
Appellant describes the invention as relating to a bright and hard zinc-
iron alloy layer material useful for providing corrosion protection to a
metallic substrate. Spec. 1:15–17. Claim 1, reproduced below with
formatting modified for readability and emphases added to certain key
recitations, is illustrative of the claimed subject matter:
1. A process for depositing a zinc-iron alloy layer material
having a body centred [sic, British spelling] cubic crystal
structure of the Γ-phase, a (330) texture and an iron content of
12 to 20 wt.-% comprising the steps:
(i) providing a metallic substrate,
(ii) contacting the substrate with an alkaline aqueous
zinc-iron alloy plating bath comprising:
4 to 6 g/l zinc ions
1 to 3 g/l iron ions
25 to 35 g/l hydroxyl ions,
0.5 to 2.5 g/l of a quaternary ammonium polymer
and
at least one complexing agent selected from the
group consisting of hydroxyl carboxylic acids and
salts thereof and
simultaneously applying a current to the substrate;
wherein the contacting deposits a zinc-iron alloy
layer material having a body centred cubic
crystal structure of the Γ-phase, a (330) texture
and an iron content of 12 to 20 wt.-%.

2 In this Decision, we refer to the Non-Final Office Action dated March 29,
2018 (“Non-Final Act.”), the Appeal Brief filed June 12, 2018 (“Appeal
Br.”), the Examiner’s Answer dated August 10, 2018 (“Ans.”), and the
Reply Brief filed August 23, 2018 (“Reply Br.”).
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Response to Notification of Non-Compliant Appeal Br. 1 (Claims App.).
REFERENCES
On appeal, the Examiner maintains (Ans. 3) the rejection of claims 1–
11 under 35 U.S.C. § 103 as unpatentable over Tsuchida et al. (U.S.
4,581,110, Apr. 8, 1986 (“Tsuchida”)) in view of Sonntag et al. (U.S.
6,652,728 B1, Nov. 25, 2003 (“Sonntag”)).
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this Appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues all claims as a group. See Appeal Br. 5. Therefore,
consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit
our discussion to claim 1, and all other claims on appeal stand or fall
together with claim 1.
The Examiner finds that Tsuchida teaches a process for depositing a
zinc-iron alloy layer where, for example, a metal substrate is contacted with
an alkaline bath comprising 4 to 6 g/L zinc ions, 1 to 3 g/L iron irons, and 25
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to 35 g/L hydroxyl ions. Ans. 3–4 (citing Tsuchida). The Examiner finds
that Tsuchida does not disclose that the bath is 0.5 to 2.5 g/L of a quaternary
ammonium polymer (id. at 5) but finds that Sonntag teaches that adding a
quaternary ammonium polymer to such a bath can “improve[] the layer
thickness distribution of the resulting coatings and reduces blistering of the
said coatings.” Id. at 5–6 (quoting and citing Sonntag). The Examiner
determines that it would have been obvious to modify Tsuchida’s process to
add quaternary ammonium polymer as Sonntag teaches to achieve Sonntag’s
benefits. Id. at 6.
Appellant argues that the Examiner has not provided a reason to reach
the narrower ranges of Appellant’s claims (for example, for zinc and iron
ions) based on Tsuchida’s broader teachings. Appeal Br. 4–6; Reply Br. 2–
3. Our reviewing court has repeatedly held, however, that a prima facie case
of obviousness typically exists where ranges of a claimed composition
overlap ranges taught by the prior art. See, e.g., In re Harris, 409 F.3d 1339,
1341 (Fed. Cir. 2005); In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Indeed, overlapping ranges may establish prima facie obviousness even
where the claimed range merely touches the prior art’s range. See In re
Brandt, 886 F.3d 1171, 1175 (Fed. Cir. 2018) (affirming Board’s decision
that prior art teaching between 6 and 25 pounds per cubic foot was sufficient
for a prima facie obviousness rejection of a claim reciting less than 6 pounds
per cubic foot); In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)
(acknowledging that a claimed invention was rendered prima facie obvious
by a prior art reference whose disclosed range overlapped the claimed
range).
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Here, the Examiner established, and Appellant does not dispute, that
the claimed ranges fall entirely within the art’s teachings of ion and polymer
concentrations and resultant iron content. Ans. 3–5. Indeed, as illustrated
by Appellant’s table at page 2 of the Reply Brief and reproduced below, the
overlap here is substantial.3

The table above provides a comparison between ion, polymer and iron
contents of the zinc-iron alloy layers produced by the claimed and Tsuchida
methods.
Our reviewing court has explained that “an applicant may overcome
a prima facie case of obviousness by establishing that the [claimed] range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.” Peterson, 315 F.3d at 1330 (internal
quotes and citation omitted). A party asserting unexpected results as
evidence of nonobviousness has the burden of proving that the results are
actually unexpected. Geisler, 116 F.3d at 1469–70. Here, Appellant argues
that the March 5, 2018, Declaration of Mr. Mike Kruger (“Kruger

3 Indeed, even where overlap is insubstantial, our reviewing court has often
held that overlapping ranges establish a prima facie case for obviousness.
Cf. Ex parte Feng, Appeal 2018-000089, 2018 WL 6982113 (PTAB Jan. 4,
2019) (concurring opinion) (collecting relevant precedent) (available at
https://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp).
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Declaration”) establishes criticality of claim 1’s ranges. Appellant’s
evidence is, at most, sufficient to show that bath compositions with zinc and
iron concentration outside of claim 1’s range will not result in iron
incorporation within claim 1’s range. Appellant has not persuaded us,
however, that the experiments described in the Kruger Declaration evidence
that unexpected results are achieved by the claimed method. Indeed,
Tsuchida teaches that its method results in iron incorporation of 0.02 to 20%
(Ans. 4 (citing Tsuchida 3:4–8)), and a person of skill in the art would,
therefore, expect that they could adjust zinc and iron ion amounts to reach
iron incorporation between claim 1’s 12 and 20%. See also Ans. 14
(explaining that Tsuchida already teaches resultant 12 to 20% iron content).
Appellant also argues that Tsuchida fails to teach the body centered
cubic crystal structure as claim 1 recites. Appeal Br. 6. Appellant argues
that Tsuchida’s teaching of wide ranges means that Tsuchida’s process
might not result in claim 1’s structure or iron content. Id. at 7. The
Examiner, however, finds that the Tsuchida/Sonntag combined process can
be expected to yield products that inherently have the same properties. Ans.
6–7; 9–14; see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”). The similarities between the Tsuchida/Sonntag
process and the process of claim 1 provide the Examiner with a sound basis
for finding the end result (i.e., a zinc-iron alloy layer material) will also be
the same. Ans. 3–7.
Appellant argues that selection of ion ranges outside of claim 1’s
range will reach different properties and argues that following Sonntag
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rather than Tsuchida results in different properties. Appeal Br. 6–11.
Appellant’s argument is unpersuasive because, as explained above, Tsuchida
teaches bath composition ranges within the ranges of claim 1, and the
Examiner’s rejection adds Sonntag’s quaternary ammonium polymers in an
amount overlapping with claim 1. Appellant does not persuasively argue
that following the art’s teachings within claim 1’s ranges will result in
anything different than claim 1’s recited layer material.
Appellant also argues that the Examiner has not adequately explained
why a person of skill in the art would have combined the teachings of
Sonntag with Tsuchida. Appeal Br. 13–14; Reply Br. 5–6. This argument is
unpersuasive because the Examiner explains that Sonntag teaches the
advantages of quaternary ammonium polymers are that they improve layer
thickness distribution and reduce blistering. Ans. 5–6. The Examiner also
finds that both Tsuchida and Sonntag make use of zinc-iron alloy
electroplating baths. Id. at 16. Addition of Sonntag’s quaternary
ammonium polymer in the Tsuchida process would, therefore, be no more
than a “predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Because Appellant’s arguments do not establish reversible error, we
sustain the Examiner’s rejection.
DECISION
For the above reasons, we affirm the Examiner’s rejections of
claims 1–11.
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