Ex Parte Ferguson et al

Patent Trial and Appeal Board

Aug 14, 2017

13871132 (P.T.A.B. Aug. 14, 2017)

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.
13/871,132 04/26/2013 Kathy Lynn Ferguson 12-0424 BNGCP002US 6717
112148 7590 08/16/2017
Kwan & Olynick LLP, Boeing
2000 Hearst Avenue, Suite 305
Berkeley, CA 94709
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
docket @ kwanip. com
patentadmin @ B oeing. com
lsmith@kwanip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THE BOEING COMPANY1
Appeal 2016-008134
Application 13/871,132
Technology Center 1700
Before JULIA HEANEY, AVELYN M. ROSS, and
SHELDON M. McGEE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—7, 9, 10, and 21—31. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Kathy Lynn Ferguson, Kay Blohowiak, and Michael W. Evens are listed as
the inventors of the instant application (Application Data Sheet filed
April 26, 2013).
2 In our Decision we refer to the Specification (“Spec.”) filed April 26, 2013,
the Final Office Action (“Final Act.”) dated June 26, 2015, the Appeal Brief
(“Appeal Br.”) filed January 27, 2016, the Examiner’s Answer (“Ans.”)
dated June 27, 2016, and the Reply Brief (“Reply Br.”) filed August 24,
2016.
Appeal 2016-008134
Application 13/871,132
STATEMENT OF THE CASE
The subject matter on appeal relates “to techniques for structurally
bonding adhesives to aluminum components using conversion coatings and
sol-gel materials and without using adhesive bond primers.” Spec. 11.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for structurally bonding an adhesive layer to an
aluminum component without using an adhesive bond primer,
the method comprising:
removing contaminants from a surface of the aluminum
component,
wherein removing the contaminant forms a cleaned
surface;
depositing a conversion coating onto the cleaned surface
of the aluminum component,
wherein the conversion coating comprises chromic
acid,
wherein depositing the conversion coating forms a
conversion layer on the cleaned surface of the
aluminum component, and
wherein the conversion layer has a thickness of
between about 10 nanometers to 800
nanometers;
depositing a sol-gel material over the conversion layer,
wherein depositing the sol-gel material forms a sol-
gel layer on the conversion layer:
depositing an adhesive layer onto the sol-gel layer;
contacting the adhesive layer with an aluminum patch,
wherein the aluminum patch comprises an
additional conversion layer contacting the adhesive
layer; and
curing the adhesive layer,
wherein curing the adhesive layer forms a structural
bond between the aluminum patch and the
aluminum component by the adhesive layer.
Appeal Br. 12 (Claims App’x).
2
Appeal 2016-008134
Application 13/871,132
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1—7, 9, 21—28, 30, and 31 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Anderson3 with
Guijt4 or vice versa and further with Dees5 and Flanagan.6
Final Act. 3.
B. Claims 1—7, 9, 21—28, 30, and 31 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Anderson with
Guijt or vice versa and further with Dees, Flanagan, and
Stoffer.7 Id. at 8.
C. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson with Guijt or vice versa and
further with Dees and Flanagan alone or further with
Stoffer in combination with Blanchard.8 Id. at 9.
D. Claim 29 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson with Guijt or vice versa and
further with Dees and Flanagan alone or further with
Stoffer in combination with Balin.9 Id. at 10.
E. Claim 29 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson with Guijt or vice versa and
further with Dees and Flanagan alone or further with
Stoffer in combination with Balin and AFODINE.10 Id. at
10.
3 US 2003/0211330 A1 (Nov. 13, 2003).
4 US 6,758,924 B1 (July 6, 2004).
5 US 6,733,837 B1 (May 11, 2004).
6 US 2009/0289032 A1 (Nov. 26, 2009).
7 US 2004/0249023 A1 (Dec. 9, 2004).
8 US 2010/0276065 A1 (Nov. 4, 2010).
9 US 5,123,978 (June 23, 1992).
10 Henkel Corp., AFODINE 1200S Material Safety Data Sheet (Dec. 11,
2008).
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Application 13/871,132
Appellant requests our review of Rejections A—E. Reply Br. 2.
Appellant argues rejections A—E together, and argues all claims together as a
group. See Appeal Br. 6—10. Therefore, consistent with the provisions of
37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 1, the
sole independent claim, and all other claims stand or fall together with claim
1.
OPINION
The Examiner rejects claim 1, among others, as obvious over
Anderson with Guijt or vice versa and further in view of Dees and Flanagan.
Final Act. 3. The Examiner finds that Anderson teaches preparation of a
surface for metal to metal bonding comprising cleaning the surface,
depositing a sol-gel, applying an adhesive overcoat, and curing. Id. While
not expressly disclosing an aluminum patch, the Examiner finds that
Anderson discloses “what can reasonably be considered a patch to metal to
via adhesive.” Id. The Examiner finds that Guijt includes similar teachings
and expressly teaches bonding an aluminum patch. Id. The Examiner
acknowledges that Anderson and Guijt fail to disclose the conversion
coating but, the Examiner finds that Dees discloses a method of treating an
aluminum component involving the steps as claimed and includes applying a
conversion coating. Id. at 4. The Examiner also finds that Flanagan teaches
pretreating both the first and second substrates with the conversion coating
to improve adhesion. Id. at 5. And, the Examiner finds that Dees teaches a
conversion coating of less than 1 mil which falls within the claimed range
and further that the thickness is a result effective variable. Id.', see also id. at
4
Appeal 2016-008134
Application 13/871,132
8 (citing Stoffer for teaching that the thickness of the conversion coating is a
result effective variable).
Appellant first argues that the application of an epoxy paint would
preclude the application of the aluminum patch and interfere with the
structural bond making it inoperable. Appeal Br. 6; see also id. at 8. And,
there would be no need to apply a patch over a painted surface. Id. at 6—7.
Appellant also notes that the Specification identifies paint as a contaminant
that must be removed prior to structural bonding of the patch. Id. at 7 (citing
Spec. 122).
Appellant’s arguments are not persuasive of reversible error by the
Examiner because Appellant misconstrues the rejection. The Examiner
relies on Dees to teach the addition of a conversion coating, not the addition
of an epoxy-based paint. Ans. 14 (“[T]he examiner has never proffered the
requirement of painting the surface, only that Dees discloses increased
adhesion of an epoxy overcoat.”). The rejection is not based on physically
combining all of the teachings of Anderson/Guijt and Dees. After all,
[tjhere is a distinction between trying to physically combine the
two separate apparatus disclosed in two prior art references on
the one hand, and on the other hand trying to learn enough from
the disclosures of the two references to render obvious the claims
in suit. . . .
Claims may be obvious in view of a combination of references,
even if the features of one reference cannot be substituted
physically into the structure of the other reference.
Orthopaedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir.
1983). Here, the epoxy paint may not be physically combinable (in the order
alleged by Appellant) with the aluminum patch of Anderson/Guijt, but the
teaching in Dees that the combination of a conversion coating and a sol-gel
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Application 13/871,132
coating improves corrosion and adhesion, is readily combinable with
Anderson/Guijt desiring the same.
Appellant also contends that there is no reason to combine Dees with
the teachings of Anderson and Guijt because the purported reason to
combine, i.e., “the corrosion resistance and the adhesion properties,” is not
relevant to patches. Appeal Br. 7. According to Appellant, “the whole
purpose [] of the paint is to form an exterior of the component instead of
adhering another part to the surface of the component. The options are
mutually exclusive.” Id. Moreover, Appellant notes that “Anderson is very
particular about keeping its surface clean and discloses a very elaborate
metal surface preparation process” which includes removal of surface
contaminants, e.g., paint. Id. at 8—9.
Appellant’s argument does not persuade us of reversible error.
Appellant contends that corrosion resistance is not relevant for patched
aluminum substrates because the patch will serve to protect the surface
underlying the patch. But, Appellant’s argument focuses on corrosion
resistance and does not address why the second advantage identified by the
Examiner (Final Act. 4)—i.e., improved adhesion, is not relevant to patches.
Both Anderson and Guijt teach the importance of strong adhesion for
bonded materials, including patches. Anderson 14 (“Metal treatment prior
to bonding is a key factor for both the initial adhesion of a bonded joint and
its long-term environmental durability.”); Guijt, col. 5,11. 10-19. And, Dees
recognizes that improved adhesion is had when an aluminum surface
includes a chemical conversion layer and a sol-gel layer. Dees, col. 2,
11. 20-39 (“Through the use of a first and second layer, the adhesion
properties of the metal component may be improved . . . .”). Furthermore, as
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Application 13/871,132
the Examiner notes (Ans. 12), Appellant’s argument that corrosion
resistance is irrelevant is without factual support and rests only on attorney
speculation. Thus, the Examiner has adequately articulated reasoning with
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Next, Appellant argues that the conversion coating of Dees does not
form a structural bond but rather forms an adhesive bond with the epoxy
based paint applied to the metal surface. Appeal Br. 6. Appellant urges that
Dees “refers to paint adhesion rather than structural bonding.” Id. at 7.
And, Appellant explains structural bonding—that is, a bond between two
structural components—is distinguished from adhesive bonding in the
Specification. Id.', see also Spec. 116.
Appellant’s argument that the conversion coating of Dees refers to
adhesive rather than a structural bond is not convincing of reversible error.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Rather, “[t]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner relies on Anderson
and Guijt to teach that it was known at the time of invention to structurally
bond a metal patch to an aluminum substrate. Final Act. 3^4. The Examiner
does not rely upon Dees to teach the features Appellant identifies above.
Thus, Appellant’s argument amounts to an attack on Dees individually and
fails to address the combined teachings of Anderson, Guijt, and Dees as
presented by the Examiner.
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Application 13/871,132
Furthermore, Appellant defines structural bond in the Specification as
“a bond between two structural components, such as an aluminum
component and an aluminum patch, with an adhesive disposed between
these two structural components,” which is “distinguished from bonding
between two components, one of which is a non-structural component, such
[as] a protective coating or paint.” Spec. 116. Noticeably, Appellant does
not distinguish a structural bond based upon bond chemistry or adhesive
used but rather based solely on what is bonded to the aluminum component.
Id. We agree with the Examiner’s findings (Final Act. 3 4) that Anderson
and Guijt teach structural bonds, i.e., bonds where a structural component, or
patch, is adhered to an aluminum component by an adhesive. That Dees’
focus is adhesive bonding by virtue of the nonstructural component adhered
is of no consequence. Indeed, the Examiner relies on Dees’ teaching that a
conversion coating as a first layer and a sol-gel coating as a second layer
yields improved adhesion qualities. Thus, “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Appellant has not argued or demonstrated otherwise
but instead, suggests the interchangeability of structural bond and adhesive
bond applications. Spec. 116 (“it should be noted that this process may be
used for nonstructural applications as well.”).
Appellant additionally argues that “Dees describes only one
component being treated and then painted . . . [and] does not describe two
components receiving conversion coatings and then being structurally
bonded to each other.” Appeal Br. 8.
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Application 13/871,132
Appellant, in arguing that Dees does not teach applying a conversion
coating to both component surfaces, does not persuade us of reversible error
by the Examiner. The Examiner expressly acknowledges that Dees does not
disclose applying a conversion coating to the aluminum patch and instead
relies on Flanagan to supply the missing teaching. Final Act. 4—5.
Therefore, Appellant fails to address the rejection as presented by the
Examiner and, in doing so, fails to identify any error in the rejection.
Lastly, Appellant argues that a person skilled in the art would not
combine the alkaline solution of Anderson with the chromic acid of Dees.
Appeal Br. 9—10. Appellant explains that “[o]ne having ordinary skill in the
art would immediately recognize that combining alkaline and acid solutions
is not possible as this combination will result in neutralization and
effectively diminishes any effects of the original alkaline solution . . . [and]
will clearly render Anderson unsatisfactory for its intended purposes.” Id. at
10.
We are not persuaded by Appellant’s arguments. As the Examiner
explains, the proposal was not “adding chromic acid to the alkaline
pretreatment” of Anderson, rather, “that the combination of references
suggests the benefits of a conversion coating of aluminum prior to sol gel
application for providing corrosion protection and adhesion of the sol gel
prior to epoxy overcoating.”11 Ans. 16. Moreover, Appellant focuses its
11 And, even if the Examiner actually proposed using the alkaline
pretreatment of Anderson, Appellant overlooks the teachings of Anderson
which adds an acid solution as part of “an optional step of acidic
desmutting,” following the application of the alkaline pretreatment.
Anderson || 17—18. Thus, one skilled in the art, following the teachings of
Anderson, would have understood that adding an acid following the alkaline
solution is possible when the alkaline solution is followed by a rinse. Id.
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Application 13/871,132
arguments entirely upon the Anderson alkaline solution and fails to address
the alternate use of Guijt as a primary reference. Final Act. 3 (stating the
rejection as Anderson with Guijt or vice versa).
CONCLUSION
In view of the foregoing, Appellant has failed to demonstrate error in
the Examiner’s determination that claim 1 (among others) is obvious over
the cited references.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—7, 9, 10,
and 21—31 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
10