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Patent Trials and Appeals Board

Dec 16, 2021

2021000459 (P.T.A.B. Dec. 16, 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.
14/761,179 07/15/2015 Juha MIETTINEN PAPU0122PUSA 6130
22045 7590 12/16/2021
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
USELDING, JOHN E
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
12/16/2021 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 JUHA MIETTINEN and JUSSI RAISA
____________

Appeal 2021-000459
Application 14/761,179
Technology Center 1700
____________

Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–10, 12, and 16–21. See Final Act. 1. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies Papula-Nevinpat as the real party in interest (Appeal Br.
1).
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CLAIMED SUBJECT MATTER
Claims 1 and 19 illustrate the subject matter on appeal (emphasis
added to highlight key disputed limitations):
1. A method for producing a trivalent chromium based coating on a
metal substrate, comprising the steps of:
depositing a layer of nickel phosphorus (Ni-P) alloy on a metal
substrate;
electroplating a chromium layer from a trivalent chromium bath
on the layer of Ni-P; and
subjecting the coated metal substrate to one or more heat
treatments at a temperature of 400–1000 °C without simultaneous
thin film deposition to harden the coating to have a Vickers
microhardness of 1600–3000 HV measured according to standard EN-
ISO 6507 and to produce multiphase layers including at least one
layer containing crystalline Ni and crystalline Ni3P and at least one
layer containing crystalline Cr and crystalline CrNi;
wherein the coating comprises crystalline isovite (Cr, Fe)23C6
and/or Cr3C2.
19. A coated article comprising:
a metal substrate; and
a trivalent chromium based coating on a metal substrate
produced according to the method of claim 1.
REFERENCES
The Examiner relied upon the following prior art:
Name Reference Date
Lashmore US 4,461,680 July 24, 1984
Hüttl et al. (“Hüttl”) US 5,252,360 Oct. 12, 1993
Matsuda JP 60-196209 A Oct. 4, 1985
REJECTIONS ON APPEAL
Claims 1–10, 12, 16–18, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Hüttl in view of Lashmore (Final Act. 2).
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hüttl in view of Lashmore (Final Act. 6).
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Claims 1–10, 12, 16–18, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Matsuda in view of Lashmore (Final Act. 8).
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsuda in view of Lashmore (Final Act. 10).
OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and Reply
Brief, we determine that Appellant has not identified reversible error in the
Examiner’s rejections (See generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
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Appellant’s main argument with respect to the rejection of claim 12
(whether based on Hüttl or alternately on Matsuda) focuses on the belief that
one of ordinary skill knows that trivalent chromium is inferior to hexavalent
chromium such that one would not use a trivalent chromium in Hüttl’s or
Matsuda’s process (Appeal Br. 7–8, 10; Reply Br. 4–6). Appellant also
argues that Hüttl teaches that the chromium layer can achieve only up to
1200 HV hardness (Appeal Br. 9), and that Matsuda appears to teach that the
chromium layer can achieve only up to 1000–1200 HV hardness such that
the Examiner’s position that the combination will achieve a hardness of
1600–2000 HV is “purely conjecture” (Reply Br. 6).
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the applied prior art as a whole and the inferences that one of
ordinary skill would have made, as aptly explained by the Examiner (Ans.
12–16).
As pointed out by the Examiner, Hüttl, or in the alternative, Matsuda,
are each silent as to the type of chromium used (Final Act. 3, 9). Lashmore
exemplifies the advantages of using trivalent chromium (e.g., Final Act. 3;
Lashmore col.1 ll. 30–35). Contrary to Appellant’s arguments, we agree
with the Examiner that impermissible hindsight was not used in relying upon
Lashmore to modify Hüttl or Matsuda, nor does Lashmore teach away from
the proposed combination (e.g., Ans. 4–6). It is well established that a prior
art reference must be considered in its entirety, i.e., as a whole, when
determining if it would lead one of ordinary skill in the art away from the

2 Appellant’s arguments for the two alternate lines of rejection are for the
most part the same, whether based on Hüttl/Lashmore or alternately on
Matsuda/Lashmore.
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claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983); In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005) (whether a reference teaches away from a claimed invention is a
question of fact). There is no doubt that one of ordinary skill would have
readily inferred from the overall teachings of the applied prior art that
trivalent chromium may be used. Appellant’s argument that one would
know of disadvantages to the use of same (e.g., Appeal Br. 7–8, 10) are not
persuasive of reversible error. Thus, an artisan of ordinary skill would have
weighed the known advantages and disadvantages of trivalent or hexavalent
chromium, as these are both known alternatives. “The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Also, cf. In re Mouttet, 686 F.3d 1322,
1334 (Fed. Cir. 2012) (“[J]ust because better alternatives exist in the prior
art does not mean that an inferior combination is inapt for obviousness
purposes.”). Thus, contrary to Appellant’s position, one of ordinary skill in
the art would have readily appreciated that one may use trivalent chromium
in either of Hüttl or Matsuda (e.g., Ans. 4, 10).
Both the Examiner and Appellant discuss Benaben3 in support of their
positions. It is readily apparent that Benaben supports the Examiner’s

3 Appellant admits that “[i]t is well known in the art that the hardness of a
chromium coating can be improved . . . by thermal treatment”, and cites to
Benaben (Spec. 2:3–15). An applicant cannot defeat an obviousness
rejection by asserting that the cited references fail to teach or suggest
elements which the applicant has acknowledged are taught by the prior
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position in that at least at the lower end of the recited temperature range, a
hardness of trivalent chromium of 1700–1800 HV may be achieved (see,
Fig. 2 of Benaben reproduced at Reply Br. 3). Appellant’s claim 1
encompasses a temperature of 400°C and a hardness as low as 1600 HV.4
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that
it would have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for result-effective parameters. In re
Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Woodruff, 919 F.2d 1575,
1577–78 (Fed. Cir. 1990) (where the difference between the claimed
invention and the prior art is some range, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range). See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003 (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness.”).

art. Constant v. Advanced Micro-Devices, Inc., 848 F. 2d 1560, 1570 (Fed.
Cir. 1988) (“A statement in a patent that something is in the prior art is
binding on the applicant and patentee for determinations of anticipation and
obviousness.”) and In re Nomiya, 509 F.2d 566, 571n.5 (CCPA 1975) (A
statement by an applicant that certain matter is prior art is an admission that
the matter is prior art for all purposes).

4 Appellant does not separately argue any of the dependent claims (Appeal
Br. generally). Accordingly, we decide the issues on appeal on the basis of
claims 1 and 19.
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Appellant has not shown reversible error in the Examiner’s
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have used trivalent chromium on the process of
either one of Hüttl and Matsuda, and would have reasonably expected to
achieve a hardness within the claimed range, based on the overlapping
temperature range of Hüttl and Matsuda; and because one of ordinary skill in
the art would have appreciated that temperature was a known result effective
variable. Notably, it has been held that when the Examiner establishes a
reasonable basis that the products or processes claimed by the applicant and
disclosed or suggested by the prior art appear to be the same or substantially
similar, the burden is properly shifted to the applicant to show that they are
not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562
F.2d 1252, 1254–56 (CCPA 1977). Cf. In re Dillon, 919 F.2d 688, 693
(Fed. Cir. 1990) (en banc) (“In particular, the statement [in In re Wright] that
a prima facie obviousness rejection is not supported if no reference shows or
suggests the newly-discovered properties and results of a claimed structure
is not the law.” (overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir.
1988).
Appellant does not rely upon any objective evidence of criticality or
unexpected results in the Appeal Brief or Reply Brief. It is well established
that the burden of showing unexpected results rests on the person who
asserts them by establishing that the difference between the claimed
invention and the closest prior art was unexpectedly different. See In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of
unexpected results must be commensurate in scope with the claims. See In
re Peterson, 315 F.3d at 1330–31.
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Appellant has not explained sufficiently why the claimed subject
matter is any more than the predictable use of a known trivalent chromium
(Lashmore) to produce a chromium coating on a layer of Ni-P as set forth in
Hüttl and Matsuda. Cf. Wyers v. Master Lock Co., 616 F.3d 1231, 1238
(Fed. Cir. 2010) (“The Supreme Court’s decision in KSR . . . directs us to
construe the scope of analogous art broadly, stating that ‘familiar items may
have obvious uses beyond their primary purposes, and a person of ordinary
skill often will be able to fit the teachings of multiple patents together like
pieces of a puzzle.’” (quoting KSR, 550 U.S. at 420)).
Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol & Specialty
Container, Inc. v. Limited. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(citation and emphasis omitted). One of ordinary skill would have readily
inferred and appreciated from the applied prior art as a whole that using the
claimed trivalent chromium for the chromium used in Hüttl or Matsuda
would have been within the skill and creativity of one of ordinary skill in the
art based on Lashmore, and as bolstered by the admitted prior art of
Benaben.
Appellant does not present arguments in support of any of the
dependent claims. Accordingly, we sustain all of the Examiner’s rejections
on appeal.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–10, 12,
16–18, 21 103 Hüttl, Lashmore
1–10, 12,
16–18, 21
19, 20 103 Hüttl, Lashmore 19, 20
1–10, 12,
16–18, 21 103
Matsuda,
Lashmore
1–10, 12,
16–18, 21
19, 20 103 Matsuda, Lashmore 19, 20
Overall
Outcome
1–10, 12,
16–21

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)(1)(iv).
AFFIRMED