Ex Parte Langan et al

Patent Trial and Appeal BoardApr 12, 2016

10873411 (P.T.A.B. Apr. 12, 2016)

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. 10/873,411 06/21/2004 Timothy Langan STTI-6A CIP 4563 7590 04/13/2016 Alan G. Towner Pietragallo, Bosick & Gordon One Oxford Centre 301 Grant Street, 38th Floor Pittsburgh, PA 15219 EXAMINER SAAD, ERIN BARRY ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 04/13/2016 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 STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TIMOTHY LANGAN, W. MARK BUCHTA, and MICHAEL A. RILEY ____________________ Appeal 2014-008045 Application 10/873,411 Technology Center 1700 ____________________ Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1–6, 8, 10–12, and 14–33. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2014-008045 Application 10/873,411 2 The Invention Appellants claim a method of making a reactive material comprising thermally spraying reactive components of the reactive material onto a substrate to build up a green body comprising the reactive components. Claim 1, the sole independent clam, is illustrative: 1. A method of making a reactive material, the method comprising thermally spraying reactive components of the reactive material onto a substrate to build up a green body comprising the reactive components, wherein the reactive components are heated during the thermal spraying to a temperature below which they reach a fully molten state, and wherein at least a portion of the reactive components present in the green body after the thermal spraying step are exothermically reactive with each other upon subsequent heating of the reactive material to produce a heat of reaction of at least 1,000°C. App. Br. (Claims App’x. 1). The References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Wickersham US 4,783,379 Nov. 8, 1988 Ducos US 4,839,239 June 13, 1989 Holt US 5,198,188 Mar. 30, 1993 Hajaligol US 6,143,241 Nov. 7, 2000 Sundarrajan US 2001/0025783 A1 Oct. 4, 2001 Kida US 2002/0027817 A1 Mar. 7, 2002 He US 2002/0081243 A1 June 27, 2002 Rigney US 6,455,167 B1 Sept. 24, 2002 Shanker CA 2,306,9411 Oct. 27, 2001 1 The Examiner used US 2003/0138569 A1 as an English language equivalent. Appeal 2014-008045 Application 10/873,411 3 The Rejections The claims stand rejected under 35 U.S.C. § 103(a) as follows: claims 1–3, 5, 16–25, 27, and 31–33 over Holt in view of Kida; claims 6, 28, and 29 over Holt and Kida as applied to claims 1 and 25, and further in view of Wickersham; claim 8 over Holt and Kida as applied to claim 1, and further in view of Hajaligol; claim 10 over Holt and Kida as applied to claim 1, and further in view of Ducos; claims 11, 12, and 15 over Holt and Kida as applied to claim 1, and further in view of Sundarrajan; claim 14 over Holt, Kida, and Sundarrajan as applied to claim 12, and further in view of He; claim 26 over Holt and Kida as applied to claim 25, and further in view of Shanker; claim 30 over Holt, Kida, and Wickersham as applied to claim 29, and further in view of Rigney. OPINION For all of the rejections, the dispositive issue on appeal is: Has the Examiner committed reversible error in finding that one of ordinary skill in the art would combine the teachings of Kida, alleged to disclose plasma spraying reactive components on a substrate where the material is only partially melted, with those of Holt, alleged to disclose thermally spraying reactive components of the reactive material onto a substrate to build up a green body wherein at least a port of the reactive components present in the Appeal 2014-008045 Application 10/873,411 4 green body are exothermically reactive with each other upon subsequent heating of the reactive material to produce a heat of reaction? We determine the Examiner erred; thus, we do not sustain the rejections. Holt teaches a method of combustion synthesis of exoergic materials (Holt 1:15–16; 2:60–65), and does not address whether the components present in the green body are exothermically reactive. “Exoergic” and “exothermic” are not interchangeable.2 Further, Holt discloses that the material is melted by plasma spraying. Id. 3:22–23; 7:35–36; 7:50–55. Claim 1 requires the reactive components to be heated during thermal spraying “to a temperature below which they reach a fully molten state.” App. Br. (Claims App’x. 1) (emphasis added). In other words, the reactive components in claim 1 are not melted, i.e., not fully molten. The Examiner argues that the broadest reasonable interpretation of this element requires “partially melted” (not fully molten) to read on “melted.” Ans. 9 (“One skilled in the art, taken in its broadest reasonable interpretation, would understand that partially melted would read on melt.”). We disagree. Appellants have not acted as their own lexicographer here. The broadest reasonable interpretation consistent with the specification 2 “Exothermic”: (of a chemical reaction or compound) occurring or formed with the evolution of heat, COLLINS ENGLISH DICTIONARY, http://search.credoreference.com/content/entry/hcengdict/exothermic_or_ex othermal/0?id=16651905 (last visited Apr. 8, 2016); “exoergic”: (of a nuclear reaction) occurring with evolution of energy, Id. at http://search.credoreference.com/content/entry/hcengdict/exoergic/0?searchI d=ca73cfbf-fd95-11e5-b126-0e811e6e1ce7&result=4 (last visited Apr. 8, 2016). Appeal 2014-008045 Application 10/873,411 5 would not extend to the limits urged by the Examiner, as Appellants have distinguished in the claims or the Specification between “partially melted” and “melted” and between “semi-molten” and “molten,” and note that “[i]n one embodiment, the reactivity of the reactive components is controlled such that slow heating below certain temperatures does not initiate the exothermic reaction, thereby avoiding unwanted ignition.” App. Br. (Claims App’x. 1); Spec. ¶¶ 19, 21. See In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (“[T]he PTO must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the specification.”); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Although the PTO must give claims their broadest reasonable interpretation, this interpretation must be consistent with the one that those skilled in the art would reach.”). The Examiner reaches to Kida for a disclosure of only partial melting of reactive components. Ans. 3. We find the Examiner erred in combining Kida with Holt. Nowhere does Kida state that components are reactive. Kida teaches forming a transparent thin oxide film by sputtering semi- molten ceramic powder on a target such as heat reflecting glasses, antireflection films, metals and alloys (Kida Abstract, ¶¶ 2 and 10). In contrast, Holt discloses production of a dense refractory material through the application of a dense molten plasma spray, followed by ignition of the coated green body. Holt 1:19–22; 3:6–12; 3:53–61. The Examiner contends that “it would have been obvious to heat the material to a temperature that would provide the material with properties required to create an ideal surface coating without damaging or vaporizing the spray material” (Ans. 3), but provides no explanation of how that conclusion would have been apparent from the references. Appeal 2014-008045 Application 10/873,411 6 The teachings of the references are at odds with each other, and the Examiner has not explained why one of ordinary skill in the art would have a reasonable expectation of success in substituting the partially molten ceramic powder for forming a transparent thin oxide film of Kida with the teachings of Holt of production of a dense refractory material. The Examiner does not rely upon the additional references and combinations of references for any disclosure that remedies the deficiency in the references applied to the independent claim. DECISION/ORDER The rejections under 35 U.S.C. § 103(a) of the Examiner’s rejection of (1) claims 1–3, 5, 16–25, 27, and 31–33 over Holt in view of Kida; and (2) claims 6, 8, 10–12, 14, 15, 26 and 28–30 over Holt and Kida in view of the applied secondary references are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED