VALEO SYSTEMES D'ESSUYAGEDownload PDFPatent Trials and Appeals BoardJul 15, 202015086195 - (D) (P.T.A.B. Jul. 15, 2020) Copy Citation 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. Appeal 2020-000660 Application 15/086,195 2 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, Appeal 2020-000660 Application 15/086,195 3 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). Appeal 2020-000660 Application 15/086,195 4 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. Appeal 2020-000660 Application 15/086,195 5 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. Appeal 2020-000660 Application 15/086,195 6 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)). Appeal 2020-000660 Application 15/086,195 7 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 Appeal 2020-000660 Application 15/086,195 8 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. Appeal 2020-000660 Application 15/086,195 9 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- Appeal 2020-000660 Application 15/086,195 10 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. Appeal 2020-000660 Application 15/086,195 11 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 Appeal 2020-000660 Application 15/086,195 12 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 Appeal 2020-000660 Application 15/086,195 13 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 Copy with citationCopy as parenthetical citation