Ex Parte Chen et al

Patent Trials and Appeals BoardMar 29, 2019

14113388 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/113,388 01/08/2014 14299 7590 04/01/2019 WATERS TECHNOLOGIES CORPORATION c/o Schmeiser, Olsen & Watts LLP 33 Boston Post Road West Suite 410 Marborough, MA 01752 FIRST NAMED INVENTOR Carl Gang Chen 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 ATTORNEY DOCKET NO. CONFIRMATION NO. W-736-US2 (WAT-177US) 2717 EXAMINER BALLMAN, CHRISTOPHER D ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 04/01/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED ST ATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARL GANG CHEN, ROBERT A. JENCKS, WEN LU, and MARK W. MOELLER 1 Appeal 2018-006731 Application 14/113,388 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to fmally reject claims 1, 2, 4, 5, 7-14, 16, 17, 20-3 5, and 3 7--40. Claims 3, 6, 15, 18, 19, and36 have been canceled. We have jurisdiction under35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART and designate the affrrmance of claims 5 and 17 as a NEW GROUND OFREJECTIONpursuantto37 C.F.R. Â§ 4I.50(b). 1 Waters Technologies Corporation ("Appellant") is the applicant as provided under 37 C.F.R. Â§ 1.46 and is identified as the real party in interest. Appeal Brief 1 ("Appeal Br."), filed Jan. 19, 2018. Appeal 2018-006731 Application 14/113,388 CLAIMED SUBJECT MATTER The claimed subject matter "generally relates to valves, and, more particularly, to valves having protective coatings." Spec. 1 :7-8; Figs. 1, 3--4. Claims 1, 12, and 24 are independent. Claims 1 and 24 are illustrative of the claimed subject matter and recite: 1. A shear valve for use in a high performance liquid chromatography system, the shear valve comprising: a frrst valve member having a plurality of frrst fluid-conveying features; a second valve member having one or more second fluid-conveying features, wherein the second valve member is movable, relative to the frrst valve member, between a plurality of discrete positions such that, in each of the discrete positions, at least one of the one or more second fluid-conveying features overlaps with multiple ones of the frrst fluid conveying features to provide for fluid communication therebetween, wherein at least one of the frrst and second valve members is at least partially coated with a protective coating comprising an adhesion interlayer and a diamond-like carbon (DLC) layer deposited on the adhesion interlayer via filtered cathodic vacuum arc (FCV A) deposition, the adhesion layer including an interlayer material consisting of titanium; and wherein the D LC layer has a thickness of about 0.5 microns to about 2.5 microns and has a roughness Ra of 5 nanometers or less. 24. A method comprising: depositing an adhesion interlayer on a shear valve member via filtered cathodic vacuum arc (FCV A) deposition, the adhesion layer including an interlayer material consisting of titanium; and depositing a diamond-like carbon (DLC) layer on the adhesion layer via FCV A deposition; 2 Appeal 2018-006731 Application 14/113,388 wherein the diamond-like carbon layer on the adhesion layer has a thickness of about 0. 5 microns to about 2. 5 microns and a roughness Ra of 5 nanometers or less. THE REJECTIONS I. Claims 1, 2, 4, 7-10, 12-14, 16, 20-22, 24, 25, and 37--40 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Moeller (WO 2011/014414 Al, published Feb. 3, 2011), Shi (US 2011/0140367 Al, published June 16, 2011 ), and McLean (US 5,747,120,issuedMay5, 1998). II. Claims 5, 11, 17, 23, 26-28, and 35 stand rejected under 35 U.S.C. Â§ 103(a)as unpatentableoverMoeller, Shi, andMcLean. 2 III. Claim 29 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Moeller, Shi, McLean, and Veerasamy(US 2009/0162572 Al, published June 25, 2009). IV. Claims 30-34 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Moeller, Shi, McLean, and Berndt (US 2010/0281959 Al, published Nov. 11, 2010). 2 The Examiner lists these claims separate from Rejection I and indicates that they are rejected over the above-identified cited art and "in even further view of one of ordinary skill in the art." Final Office Action 12 ("Final Act."), dated July 26, 2017. 3 Appeal 2018-006731 Application 14/113,388 ANALYSIS Rejection I-Obviousness over Moeller, Shi, and McLean Claims 1 and 12 In regard to claims 1 and 12, the Examiner fmds that Moeller discloses a shear valve having most of the claimed limitations, including an "adhesion interlayer 111" and a diamond-like carbon (D LC) "layer 112 [that] has a thickness of about 0. 5 microns to about 2. 5 microns." Final Act. 3; see also id. at 6-7 (citing Moeller Figs. 2A, 3A; 4:1; 4:15-25; 5:5-11; 10:1-2 (Claim 12)). The Examiner acknowledges that "Moeller is silent regarding the DLC layer being deposited on the adhesion interlayer via filtered cathodic vacuum arc (FCV A) deposition, an interlayer material consisting of titanium, and the protective coating has a roughness Ra of 5 nanometers or less." Id. at 3, 7. The Examiner fmds that "Shi teaches deposition via filtered cathodic vacuum arc (FCV A) deposition and an interlayer material consisting of titanium." Id. at 4, 7 (citing Shi ,r,r 19, 58, 63). The Examiner concludes that it would have been obvious to modify the shear valve of Moeller "[by] making the interlayer material titanium, as taught by Shi, for the purpose of ... promoting adhesion between the material layers." Id. The Examiner also fmds that McLean "teaches a coating with a roughness of 5 nanometers or less." Id. ( citing McLean 1 :25- 34). The Examiner also concludes that it would have been obvious to modify the shear valve of Moeller "by making a coating with a roughness of 5 nanometers or less, as taught by McLean, [] for the purpose of using less material and providing a smoother contact surface to lessen frictional losses." Id. at 4, 7-8. 4 Appeal 2018-006731 Application 14/113,388 Appellant contends that "the Examiner uses impermissible hindsight" because the combination of cited references does not "teach or suggest a diamond-like carbon (DLC) layer deposited on the adhesion layer via FCVA deposition where the diamond-like carbon layer on the adhesion layer has a thickness of about O. 5 microns to about 2. 5 microns and a roughness Ra of 5 nanometers or less." Appeal Br. 6. In support, Appellant argues that: (1) "McLean teaches a different deposition method than Shi" (id. at 7; citing McLean 3 :66-4:4; 4:4---6); (2) "[ s ]urface roughness achieved by one deposition method does not amount to teaching a surface roughness using a different deposition method" (id.); (3) in effect, the Examiner alleges that the combination of cited references renders the claims "obvious on a basis of inherent obviousness, suggesting that because a particular roughness can be achieved via one deposition technique (i.e., laser ablation as in McLean) it must be inherently possible to achieve it via another deposition technique (i.e., the FCVA deposition process in Shi)" but "fails to establish that the aforementioned recited roughness properties 'necessarily must be present' in the process of Shi and fails to establish that they are 'the natural result of the combination of elements explicitly disclosed by the prior art"' (id. at 8; citing PAR Pharm., Inc. v. TWI Pharmlnc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014)); and (4) "McLean's coating methods are limited to coating nanoscale components" instead of "the thicker DLC layer recited in the independent claims" (id. at 8-9; citing McLean 1:64--2:18; Figs. 4, 8, 9-11). See also Reply Br. 5-8. 3 3 Reply Brief ("Reply Br."), filed June 14, 2018. 5 Appeal 2018-006731 Application 14/113,388 As an initial matter, we agree with the Examiner that claims 1 and 12 are product-by-process claims in which "the process through which the product is produced does not carry with it patentable weight" (see Ans. 21-22 4), and we note that Appellant does not dispute this determination by the Examiner (see Reply Br.,passim). In analyzing product-by-process claims, "[i]fthe product in [the] ... product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d695, 697 (Fed. Cir. 1985) (citations omitted). Once the Patent Office provides a rationale tending to show that the claimed product appears to be the same as that of the prior art, although produced by a different process, the burden shifts to Appellant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). In this case, the Examiner's proposed combination would result in a product having a protective coating comprising an adhesion interlayer and a DLC layer deposited on the adhesion interlayer, where the adhesion interlayer consists of titanium and the DLC layer has the recited thickness and roughness. In the combination, the DLC layer is not required to be formed by FCVA deposition because the product-by-process claims are not limited to the recited process. Appellant does not proffer any evidence to show an unobvious difference between the claimed product and the product resulting from the Examiner's proposed combination. In that regard, we note that the Examiner does not appear to take the position the claims are 4 Examiner's Answer ("Ans."), dated Apr. 17, 2018. 6 Appeal 2018-006731 Application 14/113,388 "obvious on a basis of inherent obviousness." See Appeal Br. 8. Further, to the extent Appellant is arguing that McLean's method off orming a coating is relevant, this argument is unpersuasive because claims 1 and 12 are product-by-process claims. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claims 1 and 12 as unpatentable over Moeller, Shi, and McLean. Thus, we sustain the Examiner's rejection of claims 1 and 12. Claims 2, 8-10, 13, 14, 16, 20-22, 37, and38 Appellant argues that claims 2, 8-10, 13, 14, 16, 20-22, 37, and38 depend from claims 1 and 12 and "thus [are] distinguishe[d] over Moeller, Shi, and McLean for the reasons provided above." Appeal Br. 9; see also id. A-F (Claims App.). As we find no deficiencies in the Examiner's rejection of independent claims 1 and 12 as unpatentable over Moeller, Shi, and McLean for the reasons discussed above, we likewise sustain the Examiner's rejection of claims 2, 8-10, 13, 14, 16, 20-22, 37, and 38. Claims 4 and 16 The Examiner fmds that "Moeller further discloses the adhesion interlayer 111 has a thickness of about 100 nanometers to about 500 nanometers." Final Act. 5, 8 (both citing Moeller Claim 11 ). Appellant contends that "Moeller only teaches a thickness of interlayer 111 starting at 300 nanometer and 500 nanometers" and that "[t]he Examiner has not proffered any evidence why the missing thickness range between 100 nanometers and 300 nanometers would be obvious to one having ordinary skill in the art." Appeal Br. 9-10. 7 Appeal 2018-006731 Application 14/113,388 We note that claims 4 and 16 recite "a thickness of about l 00 nanometers to about 500 nanometers." Appeal Br. A, C (Claims App.) (emphasis added). Here, Moeller's disclosed range of approximately 300 nanometers to approximately 500 nanometers falls within the claimed range, creating a prima facie case of obviousness. 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."). Appellant provides no authority to show the Examiner is required to proffer evidence that the portion of the claimed range of about 100 nanometers to 3 00 nanometers would likewise have been obvious. For these reasons, the rejection of claims 4 and 16 is sustained. Claim 7 Claim 7 recites "the protective coating has a roughness Ra in the range of about 2 nanometers to about 4 nanometers." Appeal Br. B ( Claims App.). The Examiner fmds that McLean "teaches a coating with a roughness in the range of about 2 nanometers to about 4 nanometers." Final Act. 5 ( citing McLean 1 :25-34). Appellant contends that "[b ]ecause McLean does not teach a roughness Ra of 5 nanometers or less using FCV A deposition, the more precise range between 2 and 4 nanometers is also not taught." Appeal Br. 10. Appellant's argument is unpersuasive for the same reasons discussed above. As the Examiner explains, "[ a ]gain, the method by which the roughness is achieved is not at issue because Shi discloses the method of FCV A and McLean is relied upon to show that a roughness of 5 nanometers or less, more specifically between 1-5 nanometer RMS roughness." Ans. 24. 8 Appeal 2018-006731 Application 14/113,388 Appellant also argues that "McLean does not explicitly teach a range beginning from about 2 nanometers and ending at about 4 nanometers" but "[r ]ather, McLean's teachings are limited to '1-5 nm RMS roughness."' Appeal Br. 10. Where there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness. But the presumption can be rebutted if it can be shown: (1) that the prior art taught away from the claimed invention, In re Geisler, 116F.3d 1465, 1471 (Fed. Cir. 1997); or (2) that there are new and unexpected results relative to the prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). See Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004 ). Here, the claimed range of "about 2 nanometers to about 4 nanometers" falls within McLean's range of 1-5 nm. Appellant does not show that McLean teaches away from the claimed range, or provide evidence to show new and unexpected results with respect to the claimed range. For these reasons, the rejection of claim 7 is sustained. Claims 24, 25, 39, and 40 Claim 24 is drawn to a method comprising the step of"depositing a diamond-like carbon (DLC) layer on the adhesion layer via FCVA deposition" "wherein the diamond-like carbon layer on the adhesion layer has a thickness of about 0. 5 microns to about 2. 5 microns and a roughness Ra of 5 nanometers or less." Appeal Br. D-E (Claims App.). The Examiner makes similar fmdings with respect to Moeller, Shi, and McLean, as discussed above for claims 1 and 12. See Final Act. 9-10. Appellant notes that "[i]ndependent claim [2]4 is a method .... " Appeal Br. 6. Appellant 9 Appeal 2018-006731 Application 14/113,388 also argues for claim 24 that: ( 1) "McLean teaches a different deposition method than Shi" (id. at 7; citing McLean 3:66-4:4; 4:4---6) and (2) "[ s ]urface roughness achieved by one deposition method does not amount to teaching a surface roughness using a different deposition method" (id. at 5). Here, claim 24 is a process claim, not a product-by-process claim. The Examiner has not shown by a preponderance of the evidence that the claimed properties, particularly a roughness of Ra of 5 nanometers or less, is a result of the proposed combination, in which the DLC is formed via FCV A deposition. For this reason, the rejection of claim 24 and claims 25, 39, and 40 depending therefrom, is not sustained. Rejection II-Obviousness over Moeller, Shi, and McLean Claims 5 and 17 Claims 5 and 17 depend from claims 1 and 12, respectively, and recite "the DLC layer has a hardness of about 30 GP a to about 60 GP a." Appeal Br. B, D (Claims App.). The Examiner acknowledges that "Moeller is silent regarding the DLClayer has a hardnessofabout30 GPato about60 GPa." FinalAct. 13. The Examiner, however, concludes that it would have been obvious to modify the shear valve of Moeller "such that the DLC layer has a hardness ofabout30 GPato about60 GPa, since selection ofa known material on the basis of its suitability for an intended use involves only routine skill in the art." Id. at 13-14. Appellant contends that "[a] hardness range of the DLC layer is not a result of a simple selection of a known material." Appeal Br. 12. As such, Appellant contends that "one having ordinary skill in the art cannot simply 10 Appeal 2018-006731 Application 14/113,388 start swapping out materials and replacing them without other materials to affect a hardness of the DLC layer formed by a deposition technique." Id.; see also Reply Br. 8-9. McLean discloses "diamond-like carbon coatings" that "are extremely hard ( typically 60 GP a), and possess low friction coefficients." McLean 1 :25-34. Based on this teaching, a skilled artisan would have been motivated to modify the shear valve of Moeller to have a DCL layer with a hardness falling within the claimed range, as taught by McLean, for providing a coating with low friction. For these reasons, we sustain the Examiner's rejection of claims 5 and 17. However, as our reasoning differs from or supplements the Examiner's reasoning, we designate our affrrmance as a NEW GROUND OF REJECTI0Nunder37 C.F.R. Â§ 41.50(b). Claims 11 and 23 Claims 11 and 23 depend from claims 1 and 12, respectively. Appeal Br. B, D (Claims App.). Appellant argues that claims 11 and 23 depend from claims 1 and 12 and "thus [are] distinguishe[d] over Moeller, Shi, and McLean for the reasons provided above." Appeal Br. 9. As we fmd no deficiencies in the Examiner's rejection of independent claims 1 and 12 as unpatentable over Moeller, Shi, and McLean for the reasons discussed above, we likewise sustain the Examiner's rejection of claims 11 and 23. Claims 26-28 and 35 Claims 26-28 and 35 depend from claim 24. Appeal Br. E-F (Claims App.). The Examiner's rejection of these claims is based on the same unsupported fmdings in the combination of Moeller, Shi, and McLean discussed above. See Final Act. 14--16. The Examiner does not rely on any 11 Appeal 2018-006731 Application 14/113,388 proposed modifications to Moeller to remedy the deficiencies of the combination of Moeller, Shi, and McLean. Accordingly, for reasons similar to those discussed above, we do not sustain the rejection of claims 26-28 and 35 over Moeller, Shi, and McLean. Rejection III-Obviousness over Moeller, Shi, McLean, and Veerasamy Claim 29 depends from claim 24. Appeal Br. E (Claims App.). The Examiner's rejection of this claim is based on the same unsupported fmdings in the combination of Moeller, Shi, and McLean discussed above. See Final Act. 16-17. The Examiner relies on Veerasamy for disclosing "adjusting a workpiece bias voltage (claim 5) during deposition of the DLC layer (claim 1) to provide the DLC layer with a hardness of about 30 GP a to about 60 GPa(paragraph45, hardness of over about 50 GPa) as an alternative equivalent deposition coating technique," and, thus, does not rely on the teachings of Veerasamy to remedy the deficiencies of the combination of Moeller, Shi, and McLean. Id. Accordingly, for reasons similar to those discussed above for claim 24, we do not sustain the rejection of claim 29 over Moeller, Shi, McLean, and Veerasamy. Rejection IV-Obviousness over Moeller, Shi, McLean, and Berndt Claim 30-34 depend directly or indirectly from claims 1 or 12. Appeal Br. F (Claims App.). Appellant contends that claims 30-34 depend from claims 1 and 12 and "thus [are] distinguishe[d] over Moeller, Shi, McLean, and Berndt for at least the reasons provided above." Appeal Br. 16; see also Reply Br. 10. As we fmd no deficiencies in the Examiner's rejection of independent claims 1 and 12 as unpatentable over Moeller, Shi, 12 Appeal 2018-006731 Application 14/113,388 and McLean for the reasons discussed above, we likewise sustain the Examiner's rejection of claims 30-34. DECISION We AFFIRM the decision of the Examiner to reject claims 1, 2, 4, 7-14, 16, 20-23, 30-34, 37, and 38. We AFFIRM the decision of the Examiner to reject claims 5 and 1 7 and designate the affirmance as a NEW GROUND OF REJECTION We REVERSE the decision of the Examiner to reject claims 24--29, 35, 39, and 40. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 3 7 C.F.R. Â§ 4I.50(b). Section4I.50(b)provides "[a] new ground of rejection pursuant to this paragraph shall not be considered fmal for judicial review." Section 41. 5 O(b) also provides: When the Board enters such a non-fmal decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection 13 Appeal 2018-006731 Application 14/113,388 designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under Â§41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the MANUAL OF PATENT EXAMINING PROCEDUREÂ§ 1214.01 (9th Ed., Rev. 08.2017, Jan. 2018). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART; 37 C.F.R. Â§4I.50(b) 14