Ex Parte Damani et al

Patent Trials and Appeals BoardApr 11, 2019

12191842 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/191,842 08/14/2008 78631 7590 04/15/2019 ROBERTS.GREEN OERLIKON METCO (US) INC. 1101 PROSPECT A VENUE WESTBURY, NY 11590 FIRST NAMED INVENTOR Rajiv J. Damani 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. P7651US 1616 EXAMINER BAREFORD, KATHERINE A ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 04/15/2019 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): ROBERT.GREEN@OERLIKON.COM gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAJIV J. DAMAN! and AMO REPKE Appeal2017-009310 Application 12/191,842 1 Technology Center 1700 Before WESLEY B. DERRICK, SHELDON M. McGEE, and JANEE. INGLESE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellants seek our review of the Examiner's rejection of claims 20, 22-27, 31-33, 37, and 40. App. Br. 3. We have jurisdiction. 35 U.S.C. Â§ 6. We affirm. 1 Appellants identify OERLIKON SURF ACE SOLUTIONS AG, PFAFFIKON as the real party in interest. App. Br. 3. Appeal2017-009310 Application 12/191,842 BACKGROUND The claimed subject matter as set forth in independent claims 20, 33, and 37 is directed to various methods of manufacturing a hydrogen- permeable membrane. Claim 20 is illustrative of the appealed subject matter, and is copied below from the Claims Appendix to the Appeal Brief: 20. A method for the manufacture of a hydrogen-permeable membrane having a thickness of not greater than 30 Âµm, compnsmg: plasma spraying at least one dense layer on a porous substrate such that during the plasma spraying, one sweep of a process beam deposits material particles over the substrate in a form of individual splats which do not produce a cohesive layer and said material particles include a proton-conducting ceramic material and an electron-conducting metallic component, wherein the plasma spraying is a low pressure plasma spraying thin film (LPPS-TF) process that utilizes: a spraying distance defined between an outlet nozzle and the substrate that is between 200 mm and 2000 mm; a sprayable powder starting material having a particle size range between 1 and 80 Âµm and containing the proton- conducting ceramic material and the electron-conducting metallic component; and a process beam dispersing the sprayable powder starting material to a cloud, wherein said membrane has a hydrogen flow rate greater than 10 milliliters per minute and square centimeter. App. Br. 30. 2 Appeal2017-009310 Application 12/191,842 THE REJECTI0N2 On appeal, the Examiner maintains the rejection under 35 U.S.C. Â§ I03(a) of claims 20, 22-27, 31-33, 37, and 40 as unpatentable over the combined disclosures of Berland (US 2005/0252853 Al, published Nov. 17, 2005), CA 2 297 543 Al (published Sept. 10, 2000, "CA '543"), Wachsman (US 6,235,417 Bl, issued May 22, 2001), and either EP 1 338 671 Al (published August 27, 2003) or JP 2006-314876 (published November 24, 2006). The full statement of the Examiner's rejection of these claims appears at pages 4--13 of the Non-Final Official Action dated April 4, 2016 ("Non- Final Act."). OPINION We have considered the contentions of record (App. Br. 12-29; Reply Br. 1-7) and are unpersuaded that Appellants have identified reversible error in the Examiner's rejection. In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011 ). Therefore, we sustain the obviousness rejection of claims 20, 22-27, 31-33, 37, and 40 based on the findings of fact, conclusions of law, and rebuttals to arguments set forth by the Examiner in the Non-Final Action and in the Answer. We add the following for emphasis. Many of Appellants' assertions do not squarely address the fact- findings and determinations that underpin the rejection actually made by the Examiner. For example, Appellants argue that Berland does not teach certain limitations that the Examiner asserts are found within CA '543. 2 The Examiner has withdrawn a previously pending rejection under 35 U.S.C. Â§ 112, second paragraph. Non-Final Act. 3; Ans. 12. 3 Appeal2017-009310 Application 12/191,842 App. Br. 14--15, 19, 24; Non-Final Act. 5-7. Appellants make similar contentions with respect to references other than Berland. See App. Br. 16, 21, 26 (asserting that "EP [']671 cannot be read to teach or suggest the deposition of a membrane layer in a form of individual splats which do not produce a cohesive layer with one sweep of the process beam" when the Examiner relies on the teachings of CA '543 for such a process. Non-Final Act. 6-7.) Such assertions that do not squarely address the rejection cannot reveal error. Furthermore, Appellants' arguments are largely directed to the disclosure of the references individually, and not what their collective teachings would have suggested to the skilled artisan. App. Br. 14--16, 19- 21, 24--28. Our reviewing court has counseled that such arguments are insufficient to establish non-obviousness. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). This is particularly problematic when Appellants only address the teachings of one reference when alleging error in a rejection that is based on multiple references. App. Br. 27-28. Finally, we observe that several of Appellants' assertions in the Reply Brief as to the record are not well-founded. For example, Appellants contend that the Examiner failed to identify specific disclosure within CA '543 that "teaches or suggests to make a membrane layer with the deposition of individual splats applied with sweeps of the process beam." Reply Br. 2. This contention lacks merit because the Examiner points to Figures 1 and 2, as well as specific passages on pages 6 and 7 of CA '543 to support the 4 Appeal2017-009310 Application 12/191,842 Examiner's position as to this limitation. Non-Final 6-7; Ans. 19. Appellants also assert that the Examiner failed to "explain[] or even address[]" why the skilled artisan would have combined the teachings of Berland and CA '543. Reply Br. 4. These assertions are not well-taken in view of the Examiner's thorough explanations why the skilled artisan would have combined the teachings in the underlying rejection and the Answer. Non-Final Act. 7-8; Ans. 5---6, 15, 16-20. Thus, for these reasons, and those provided by the Examiner, Appellants have failed to identify reversible error in the rejection of claims 20, 22-27, 31-33, 37, and 40. We, therefore, sustain the Examiner's rejection of these claims. DECISION The Examiner's final decision to reject claims 20, 22-27, 31-33, 37, and 40 is affirmed. 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). AFFIRMED 5