WHIRLPOOL CORPORATION

Patent Trials and Appeals Board

Jan 19, 2022

2021001472 (P.T.A.B. Jan. 19, 2022)

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. 15/359,054 11/22/2016 Richard L. Hammond SUB-06375-US-CNT 2001 130333 7590 01/19/2022 PRICE HENEVELD LLP WHIRLPOOL CORPORATION - MD 3601 2000 NORTH M63 BENTON HARBOR, MI 49022 EXAMINER SHEWAREGED, BETELHEM ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 01/19/2022 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): PatentDocketing@whirlpool.com deborah_tomaszewski@whirlpool.com ptomail@priceheneveld.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD L. HAMMOND and JESSICA R. McCONNELL Appeal 2021-001472 Application 15/359,054 Technology Center 1700 Before TERRY J. OWENS, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-9 and 11-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Whirlpool Corporation (Appeal Br. 4). Appeal 2021-001472 Application 15/359,054 2 CLAIMED SUBJECT MATTER The claims are directed to a transparent tinted coating for appliance exterior panels. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An exterior panel for an appliance, the exterior panel comprising: a metallic substrate having an applied surface texture defined within the metallic substrate, wherein the metallic substrate is formed to include a predetermined contour; and a coating layer being a single thermosetting organic paint coating composition on at least one side of the metallic substrate, the coating layer including a selected color, wherein the coating layer is a consistent tinted transparent layer having a first side that directly engages the metallic substrate at the applied surface texture and a second side that opposes the first side, wherein the applied surface texture is visible with a naked eye through the coating layer, and wherein the applied surface texture is modified by the tinted transparent layer to cooperatively reflect a combination of the applied surface texture and the selected color of the tinted transparent layer, wherein an at least one additive is carbon black and a proportion of carbon black disposed within the coating layer is within a range of from approximately 0.1 percent by weight and approximately 1 percent by weight. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Truog US 2004/0253421 A1 Dec. 16, 2004 Pachuta US 2007/0218301 A1 Sept. 20, 2007 Kim US 2009/0022617 A1 Jan. 22, 2009 Appeal 2021-001472 Application 15/359,054 3 REJECTIONS The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 4 and 6-9, 11-13, and 15-19 over Pachuta in view of Truog; and claims 5 and 14 over Pachuta in view of Truog and Kim. OPINION The Appellant relies upon the same argument with respect to all independent claims (1, 11, and 17), and does not provide a substantive argument as to the separate patentability of the dependent claims (Appeal Br. 9-25). We therefore limit our discussion to one independent claim, i.e., claim 1. Claims 2-9 and 11-19 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(iv) (2013); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 “require[s] more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Claim 1 requires a tinted transparent coating layer of a single transparent organic paint coating composition including carbon black. 2 Pachuta discloses clear, tinted coating material applied over a 430 stainless steel appliance exterior surface material to duplicate the color 2 The Appellant’s Specification states (¶ 33): “[T]he transparent tinted coating 10 can include ranges of transparency and translucency, depending upon the various predetermined additives included within a particular transparent tinted coating 10. By way of explanation, and not limitation, various embodiments of the transparent tinted coating 10 can be partially translucent, while various alternate embodiments of the transparent tinted coating 10 can be substantially transparent. The level of transparency and/or translucency can vary so long as the effect of the transparent tinted coating 10 being applied to the metallic substrate panel 12 results in the predetermined surface pattern 18 being visible, with the naked eye, through the transparent tinted coating 10 applied to the metallic substrate panel 12.” Appeal 2021-001472 Application 15/359,054 4 of 304 stainless steel and to provide an easily cleanable surface that will not show fingerprints as readily as uncoated stainless steel (¶ 20). The only disclosure regarding the clear, tinted coating material is that it is polyester based (¶ 23). Truog discloses a decorative multi-layer laminate for application to a painted surface containing organic materials with color constituents that will bleed or migrate (¶ 7). The laminate comprises, in order, 1) a pressure- sensitive adhesive layer (28) for overlaying and contacting the painted surface, 2) a barrier layer (60) for slowing or stopping migration of discoloration-causing pigments from the painted surface through the adhesive layer (28), 3) a pigmented dry paint decorative color layer (22), and 4) an optically transparent synthetic resinous clear coat layer (44) (¶¶ 8, 22, 24, 29; Fig. 10). Truog states (¶ 37): The dry paint layers may comprise independently one or more polymeric binders or resins, and one or more pigments. The reinforcing layer and barrier layer may comprise one or more polymeric binders or resins, and optionally one or more pigments. The transparent outer clear coat layer may comprise one or more polymeric binders or resins. These layers may be made from solvent cast liquid coating or paint compositions comprising the one or more binders or resins and one or more pigments (if used). Truog’s disclosed dry layer pigments include tinting pigments, one of which is carbon black (¶ 50). Truog does not use pigment in the clear coat layer (¶ 56). The Examiner finds: “Truog expressly teaches carbon black as a tinting pigment in decorative coatings [0050]; therefore, one skilled in the art would have been motivated to combine the carbon black tinting pigment Appeal 2021-001472 Application 15/359,054 5 of Truog with the invention of Pachuta for tinting purposes” (Ans. 5-6). “With respect to the amount of the carbon black tinting material, one of ordinary skill in the art would have been motivated to adjust the amount of the tinting material so as to control the tinting strength of the layer” (Final 3). The Appellant argues that 1) “Truog et al. is clear that the use of carbon black is meant to enhance the opacity of certain decorative print coat layers as well as certain adhesive layers - but not transparent or clear layers” (Appeal Br. 13), 2) “[o]ne of skill in the art of coating compositions reading Truog et al. would quickly perceive that a small amount of carbon black would increase the opacity of the paint coating composition, rather than provide a tinted transparent layer of a coating layer” (Appeal Br. 14), and 3) “[t]he use of an opacity-enhancing pigment, in such minute proportions as specified within Truog et al., would not motivate one of skill in the art to combine Truog et al. with U.S. Patent Application Publication No. 2007/0218301 by Pachuta et al., to obtain a transparent layer or a transparent outer coating” (Reply Br. 2). Although Truog exemplifies titanium dioxide and carbon black as adhesive layer components for enhancing the opacity of overlying paint film layers and permitting use of thinner paint film layers to achieve desired levels of opacity (¶ 73), Truog’s disclosed opacifying pigments are titanium dioxide and zinc oxide (¶ 50). Carbon black is disclosed as a tinting pigment (id.). Pachuta discloses that the clear coating material (26) is tinted (¶¶ 20, 22). Pachuta, however, is silent as to the pigment used to tint the clear coating material (26). One of ordinary skill in the art, therefore, through no Appeal 2021-001472 Application 15/359,054 6 more than ordinary creativity, would have used a known tinting pigment, such as carbon black, in an amount that tints the clear coating layer without rendering it unclear, determined through no more than routine experimentation, such as 0.1-1 wt%. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton”). In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Accordingly, we are not persuaded of reversible error in the rejections. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6-9, 11-13, 15- 19 103 Pachuta, Truog 1-4, 6-9, 11-13, 15- 19 5, 14 103 Pachuta, Truog, Kim 5, 14 Overall Outcome 1-9, 11-19 Appeal 2021-001472 Application 15/359,054 7 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