VALEO SYSTEMES D'ESSUYAGE

Patent Trials and Appeals Board

Jul 15, 2020

15086195 - (D) (P.T.A.B. Jul. 15, 2020)

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.
15/086,195 03/31/2016 FRÉDÉRIC BRETAGNOL 17102/251001 1058
22511 7590 07/15/2020
OSHA LIANG L.L.P.
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
EXAMINER
HORTON, ANDREW ALAN
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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@oshaliang.com
escobedo@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRÉDÉRIC BRETAGNOL and AMÉLIE NOEL
Appeal 2020-000660
Application 15/086,195
Technology Center 3700
Before MICHELLE R. OSINSKI, ERIC C. JESCHKE, and
AMANDA F. WIEKER, Administrative Patent Judges.

WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–11 and 13–16, which constitute all
claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification dated Mar. 31, 2016
(“Spec.”), the Final Action dated Oct. 15, 2018 (“Final Act.”), the Appeal
Brief dated July 2, 2019 (“Appeal Br.”), and the Examiner’s Answer dated
Aug. 23, 2019 (“Ans.”). No Reply Brief was filed.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Valeo
Systèmes d’Essuyage. Appeal Br. 4.
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Application 15/086,195

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CLAIMED SUBJECT MATTER
The claims are directed to a wiper blade and a process for
manufacturing a wiper blade. Appeal Br. 23–25 (Claims Appx.).
Claims 1 and 11, reproduced below, are illustrative of the claimed
subject matter:
1. A wiper blade for a windscreen wiper, comprising:
a substrate made of material based on elastomer(s)
covered at least partly by a coating having at least three
superposed layers, referred to respectively as an inner layer, an
intermediate layer and an outer layer, wherein the coating is
completely free of any organic solvent,
the inner layer forming a bonding primer for bonding to
the intermediate layer and comprising a lubricating filler
content of substantially zero and the intermediate layer having a
non-zero lubricating filler content that is lower than that of the
outer layer.
Id. at 23 (emphasis added).
11. A process for manufacturing a wiper blade for a
windscreen wiper from a pair of wiper blades, said process
comprising:
a step of coating, at least partly, said blade or pair,
comprising the substeps of:
depositing an inner layer on at least one portion of
the blade or pair,
depositing an intermediate layer on at least one
portion of the inner layer, and
depositing an outer layer on at least one portion of
the intermediate layer,
the inner layer forming a bonding primer and comprising
a lubricating filler content of substantially zero,
the intermediate layer having a non-zero lubricating filler
content that is lower than that of the outer layer,
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with at least one of the inner, intermediate and outer
layers deposited is in an aqueous phase.
Id. at 24 (emphasis added).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference3 Dates
Goto et al. US 6,696,391 B2 Filed July 5, 2001
Issued Feb. 24, 2004
Hiruma et al. US 2004/0237229 A1 Filed June 27, 2002
Published Dec. 2, 2004
Jeon US 2009/0047475 A1 Filed Feb. 29, 2008
Published Feb. 19, 2009
Braun et al. US 2013/0283559 A1 Filed Dec. 14, 2011
Published Oct. 31, 2013
Rauschnabel et al. DE 19814804 A1 Filed April 2, 1998
Published October 7, 1999
Nakano et al. TW 201418381 A Filed Sept. 7, 2013
Published May 16, 2014
REJECTIONS
The Examiner maintains the following rejections (Ans. 3):
1. Claims 1–4, 6, and 8–10 under 35 U.S.C. § 103 as unpatentable
over Rauschnabel and either Jeon or Nakano. Final Act. 2–5.
2. Claim 5 under 35 U.S.C. § 103 as unpatentable over Rauschnabel
and either Jeon or Nakano or, alternatively, over Rauschnabel,
either Jeon or Nakano, and Hiruma. Id. at 5–6.
3. Claim 7 under 35 U.S.C. § 103 as unpatentable over Rauschnabel,
either Jeon or Nakano, and Hiruma. Id. at 6.

3 In this Decision, we cite to the machine translations of Rauschnabel and
Nakano, provided in the record. See Non-Final Rejection, dated April 3,
2018, with attached Notice of References Cited (PTO-892).
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4. Claims 7 and 16 under 35 U.S.C. § 103 as unpatentable over
Rauschnabel, either Jeon or Nakano, and Braun. Id. at 8–9.
5. Claims 11 and 13–15 under 35 U.S.C. § 103 as unpatentable over
Goto, Rauschnabel, and Nakano. Id. at 7–8.
OPINION
Rejection 1
For the claims subject to this rejection, Appellant argues the
patentability of only independent claim 1 and does not provide separate
argument for claims 2–4, 6, or 8–10, each of which depends from claim 1.
Appeal Br. 6–13, 17–19. We address claim 1, with claims 2–4, 6, and 8–10
standing or falling with it. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner finds that Rauschnabel discloses a wiper blade
comprising substrate 10 covered by coating 20 or 22, which includes at least
three layers. Final Act. 2. The Examiner finds that Rauschnabel does not
disclose that the coating is completely free of organic solvent, as claimed.
Id. In that regard, the Examiner finds that both Jeon and Nakano disclose
wiper blade coatings that lack organic solvents. Id. at 3 (citing Jeon ¶¶ 17,
32; Nakano 2, 12–13). In view of these teachings, the Examiner finds that it
would have been obvious “to have modified the coating of Rauschnabel to
be free of any organic solvent by providing the solvent as water, as taught by
Jeon (or Nakano), in order to provide an environmentally friendly solvent
for the coating.” Id. The Examiner also finds that it would have been
obvious to substitute the spray coating processes of Jeon or Nakano for
Rauschnabel’s coating process because spray coating is a suitable alternative
process that permits use of a coating that is free of organic solvent. Id. at 10.
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Appellant argues against the proposed combination of references.
Appeal Br. 6–13, 17–19. Appellant argues that Rauschnabel’s coating is
made by chemical or physical vapor deposition (CVD or PVD), which
cannot be used for coatings deposited in an aqueous phase, i.e., for coatings
that lack organic solvents.4 Id. at 7–8. According to Appellant, CVD or
PVD processes provide specific advantages. See, e.g., id. (quoting
Rauschnabel 4) (“[I]mproved gliding properties may result in reduced
wear[,] . . . ‘less effort and thus lower costs.’”), 9–10. Thus, according to
Appellant, a person of ordinary skill in the art would not have modified
Rauschnabel to produce a coating lacking organic solvents because
Rauschnabel’s production techniques are incompatible with compositions
lacking organic solvents and, if such a modification were made, the coating
would lack the beneficial properties disclosed by Rauschnabel. Id. at 7–10.
In a similar vein, Appellant argues that Rauschnabel teaches away from the

4 Appellant’s arguments equate an aqueous phase with the complete lack of
any organic solvent. See, e.g., Appeal Br. 8 (“Wet-chemically treated wiper
rubber comprises rubber which has been treated by aqueous phase
deposition, without organic solvents.”), 13 (same), 16 (“[O]rganic solvents
are not deposited in an aqueous phase.”). However, this is not supported by
the Specification, which states that a composition can be in aqueous phase
but not be completely free of any organic solvent, for example, in a
composition including 5% by weight of organic solvent. Spec. 7:23–25
(“An aqueous phase is understood to mean a composition that comprises a
content of organic solvents of less than or equal to 10% by total weight of
the composition, or even less than or equal to 5%, or even equal to 0%.”)
(emphasis added). Although this premise of Applicant’s arguments is faulty,
it is not determinative to our decision. In other words, we accept this faulty
premise, for purpose of argument, and nonetheless conclude that Appellant
has not demonstrated that the Examiner erred.
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modification because its CVD/PVD coating is “the exact opposite” of that
claimed. Id. at 11–13.
Additionally, Appellant contends that it is unclear how a skilled
artisan would apply the teachings of Jeon or Nakano to Rauschnabel,
because those references disclose single layer coatings while Rauschnabel
discloses a multi-layer coating. Id. at 10–11. Finally, Appellant contends
that the Examiner engages in impermissible hindsight. Id. at 16–17.
In the Answer, the Examiner responds that it would have been
obvious to substitute the spray processes taught by Jeon or Nakano for
Rauschnabel’s CVD/PVD coating process because spraying is a suitable
equivalent, and that Rauschnabel does not teach away from the modification.
Ans. 4–5, 6. According to the Examiner, “[a]ny advantages or
disadvantages of one coating process over another coating process, such as
the enhanced sliding properties provided by CVD/PVD processes, would not
render the coating unsuitable for its intended purpose (which is to prolong
the lifespan of the wiper blade, among other purposes . . . ),” and “[t]here is
no one coating process that is superior to the others in all circumstances
because, ultimately, the preferences of the designer of the wiper blade will
dictate which coating process is chosen.” Id. at 5. For example, the
Examiner finds that a spray coating process is more cost effective than CVD
or PVD processes, and that providing a solvent lacking organic elements is
more environmentally friendly. Id. at 5–6 (citing, e.g., Jeon ¶ 17 (disclosing
an aqueous solvent, like distilled water, that is non-toxic and
environmentally friendly); Spec. 10:18–22 (disclosing risks and drawbacks
of organic solvents)).
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With respect to Appellant’s additional arguments, the Examiner finds
that a skilled artisan would have understood that “three layers of coating
may be applied b[y] either a CVD/PVD process,” as taught by Rauschnabel,
“or [by] a spraying process,” as taught by Jeon or Nakano. Ans. 5. The
Examiner also responds to the allegation of hindsight by finding that a
skilled artisan “would recognize that one of various known coating
processes may be used to provide a wiper blade with a three layer coating,”
wherein spraying is a more cost effective alternative to CVD or PVD, and
wherein non-organic solvents provide advantages over organic solvents. Id.
at 7 (citing Jeon ¶ 17; Spec. 10:18–22).
Appellant does not reply to the Examiner’s Answer.
We have considered Appellant’s arguments, but we are not persuaded
of Examiner error. Jeon discloses a wiper blade coating produced by
spraying a non-organic aqueous solution, e.g., distilled water, which is non-
toxic and environmentally friendly and also results in a wiper blade with
beneficial properties, e.g., “improved durability, resistance to environmental
conditions . . . , prolonged lifespan, enhanced reliability, and/or improved
performance, including, e.g., enhanced resistance to frictional forces.” Jeon
¶¶ 17, 20, 32. Appellant does not dispute that Jeon’s aqueous, non-organic
solvent is non-toxic, or the Examiner’s finding that spraying is less costly
than CVD or PVD. Even accepting Appellant’s argument that
Rauschnabel’s CVD/PVD processes cannot be used with an aqueous coating
that lacks organic solvents, but see supra n.4, we agree with the Examiner
that it would have been obvious, in view of Jeon, to modify Rauschnabel’s
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coating to lack organic solvents and to employ a spray coating process.5
Final Act. 2–3, 9–10.
Appellant may be correct that this modification would sacrifice
certain coating properties imparted by Rauschnabel’s CVD/PVD process,
e.g., enhanced sliding, however, that is not dispositive. Appellant does not
dispute the Examiner’s finding, with which we agree, that a coating made by
any of CVD, PVD, or spraying is suitable for its intended purpose of
prolonging the lifespan of the wiper blade. Ans. 5; Rauschnabel 3 (coating
for wiper blade made by CVD or PVD is “wear-resistant”); Jeon ¶ 32
(coating for wiper blade made by spraying an aqueous non-organic solvent
results in “prolonged lifespan”). Additionally, that certain benefits may be
lost and other benefits gained does not demonstrate non-obviousness. See,
e.g., Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) (“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.”);
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
(citation omitted) (“[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”). Rather, “the preferences of the designer of the
wiper blade will dictate which coating process is chosen.” Ans. 5.
For the foregoing reasons, we do not agree with Appellant’s
arguments that a skilled artisan would not have been motivated to modify

5 We note that claim 1 does not recite a method of production. See also
supra n.4.
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Rauschnabel as proposed or that the modification is rooted in hindsight.
Rather, we agree with the Examiner that a skilled artisan would have
recognized certain advantages associated with a coating that lacks organic
solvents, as taught by Jeon, such as lower toxicity (Jeon ¶ 17), and would
have employed a production method suitable for such a coating, e.g.,
spraying as also taught by Jeon, and would have recognized certain
advantages associated with such a production method, such as lower
production costs (Ans. 4).
We also do not agree with Appellant’s argument that Rauschnabel
teaches away from the proposed modification because Rauschnabel’s
coating provides “improved sliding properties in comparison with an
untreated or wet-chemically treated wiper rubber,” where “wear can be
reduced.” Rauschnabel 4 (also noting that “[t]he final, hydrophobic layer,
unlike wet-chemical impregnations, is retained for a long time by covalent
bonds with the multilayer or gradient layer”); Appeal Br. 11–13.
“If references taken in combination would produce a ‘seemingly
inoperative device,’ . . . such references teach away from the combination
and thus cannot serve as predicates for a prima facie case of obviousness.”
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)
(quoting In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969)); In re ICON
Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). Similar to the
discussion above, we agree with the Examiner’s showing that the proposed
combination results in an operable wiper blade coating that prolongs blade
life; Appellant does not demonstrate that the combination would produce an
“inoperative device” or otherwise would have been disparaged or
discouraged by Rauschnabel’s disclosure of certain benefits over wet-
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chemically treated blades. Although the proposed combination may have
resulted in a tradeoff among advantages, for example, sacrificing sliding
properties in exchange for lesser toxicity, these are simply “benefits, both
lost and gained, [that] should be weighed against one another.” Winner Int’l
Royalty, 202 F.3d at 1349 n.8. Appellant does not weigh any tradeoffs
associated with the combination. See Ans. 6.
We also are not persuaded of error in the Examiner’s finding that a
skilled artisan would have recognized that a three-layer coating would have
been made by sequentially applying layers, whether applied by CVD, PVD,
or spraying. Ans. 5. Appellant does not respond to the Examiner’s finding,
or otherwise demonstrate error.
Accordingly, we affirm the rejection of representative claim 1.
Claims 2–4, 6, and 8–10 fall with claim 1.
Rejections 2–4
Each of claims 5, 7, and 16 depends from claim 1. The Examiner
rejects these claims as unpatentable over the combined teachings of
Rauschnabel and Jean (or Nakano) alone (claim 5), or in further combination
with Hiruma (claims 5 and 7), or in further combination with Braun
(claims 7 and 16). Final Act. 5–6, 8–9. Appellant does not argue against
these rejections specifically and, instead, incorporates its arguments directed
to claim 1. Appeal Br. 20–21.
For the same reasons discussed regarding claim 1, we are not
persuaded of error. Accordingly, we affirm the Examiner’s rejections of
claims 5, 7, and 16.
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Rejection 5
For the claims subject to this rejection, Appellant argues only the
patentability of independent claim 11 and does not provide separate
argument for claims 13–15, each of which depends from claim 1. Appeal
Br. 13–17, 19–20. We address claim 11, with claims 13–15 standing or
falling with it. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner finds that Goto discloses a process for manufacturing
wiper blades, which includes a step of coating the blade. Final Act. 7. The
Examiner finds that Goto does not disclose (1) sub-steps of depositing inner,
intermediate, and outer layers, having the claimed lubricating filler content,
or (2) that at least one layer is deposited in the aqueous phase. Id. The
Examiner finds that Rauschnabel discloses a process for manufacturing
wiper blades, which includes sub-steps of depositing inner, intermediate, and
outer layers, having the claimed lubricating filler content. Id. The Examiner
also finds that Nakano discloses a wiper blade coating deposited in the
aqueous phase by spraying. Id. (citing Nakano 22). In view of these
teachings, the Examiner finds that it would have been obvious to have
modified Goto’s process to provide a coating manufactured in a manner that
involves the sub-steps of depositing inner, intermediate, and outer layers
having the claimed lubricating filler content, as taught by Rauschnabel, “in
order to prevent cracking of the coating when the wiper blade is deformed.”
Id. at 8 (citing Rauschnabel 3). The Examiner also finds that it would have
been obvious to have modified a layer of the coating “to be in the aqueous
phase, as taught by Nakano, in order to improve adhesion of the inner layer
to the wiper blade and in order to achieve a low coefficient of static friction
with respect to the layers” and “to have provided the coating process as
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spray coating, as taught by Nakano, in order to provide a suitable coating
process.” Id.
Appellant’s arguments directed to claim 11 are similar to those
discussed above regarding claim 1. First, Appellant argues that a skilled
artisan would not have been motivated “to substitute the aqueous phase
deposition techniques disclosed in Nakano for the vapor phase deposition
technique of Rauschnabel,” that such a combination “would ultimately
render Rauschnabel unsatisfactory for its intended use,” and that such a
combination would obviate the benefits taught by Rauschnabel. Appeal
Br. 14–15. This argument fails, however, because the Examiner relies on
the manufacturing process of Goto. The Examiner incorporates
Rauschnabel’s teaching of a multi-layer coating, with certain levels of
lubricating filler content, but does not incorporate Rauschnabel’s teachings
of CVD or PVD processes. See Final Act. 7–8; Ans. 8.
Second, Appellant argues that Rauschnabel teaches away from
applying a coating in aqueous phase. Appeal Br. 15–16. However, as
discussed regarding claim 1, the proposed combination does not render the
references unsuitable for their intended purpose and, although it may have
resulted in a tradeoff among advantages, for example, sacrificing sliding
properties in exchange for lesser toxicity, these are simply “benefits, both
lost and gained, [that] should be weighed against one another.” Winner Int’l
Royalty, 202 F.3d at 1349 n.8. Appellant does not do so. See Ans. 9.
Finally, we are unpersuaded by Appellant’s allegation of hindsight
because the Examiner identifies sufficient reasoning to modify Goto as
claimed. See Final Act. 8; Ans. 9–10 (prevention of cracking; advantages of
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organic solvents). Appellant does not dispute the factual bases underlying
these motivations, or otherwise demonstrate error.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 6, 8–10 103 Rauschnabel, Jean (or
Nakano)
1–4, 6,
8–10

5 103 Rauschnabel, Jeon (or
Nakano); alternatively,
Rauschnabel, Jeon (or
Nakano), Hiruma
5
7 103 Rauschnabel, Jean (or
Nakano), Hiruma
7
7, 16 103 Rauschnabel, Jean (or
Nakano), Braun
7, 16
11, 13–15 103 Goto, Rauschnabel,
Nakano
11, 13–
15

Overall
Outcome
1–11,
13–16

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