Ex Parte Monteiro et al

Patent Trials and Appeals BoardFeb 11, 2019

14490214 - (D) (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/490,214 09/18/2014 91524 7590 02/13/2019 Traskbritt, P.C. / Baker Hughes, Inc. Baker Hughes, Inc. P.O. Box 2550 Salt Lake City, UT 84110 FIRST NAMED INVENTOR Othon R. Monteiro 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. 1684.04-12535(ENT4-54240- 9106 EXAMINER MCCLURE, CHRISTINA D ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 02/13/2019 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): USPTOMail@traskbritt.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OTHON R. MONTEIRO, OLEG A. MAZY AR, and VALERYN. KHABASHESKU Appeal2018-003655 Application 14/490,214 Technology Center 1700 Before TERRY J. OWENS, DEBRA L. DENNETT, and MERRELL C. CASHION, JR., Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (Baker Hughes Incorporated) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-13 and 15-21. We have jurisdiction under 35 U.S.C. Â§ 6(b ). The Invention The claims are to a method for coating a substrate. Claim 1 is illustrative: 1. A method of coating a substrate, comprising: dispersing functionalized diamond nanoparticles in a fluid comprising cations and anions to form a deposition composition, wherein the cations comprise metal ions, wherein the functionalized diamond nanoparticles comprise at least one Appeal2018-003655 Application 14/490,214 functional group selected from the group consisting of carboxy, epoxy, ether, ketone, amine, hydroxy, alkoxy, alkyl, aryl, aralkyl, alkaryl, lactone, polymeric groups, oligomeric groups, quaternary ammonium groups, quaternary phosphonium groups, tertiary sulfonium groups, alkyl pyridinium groups, primary amines, secondary amines, tertiary amines, aminoethyl, dimethylaminoethyl, diethylaminoethyl, guanidinium, and imidazolium, and wherein the functionalized diamond nanoparticles exhibit a net positive charge; disposing a portion of the deposition composition over at least a portion of a substrate; and electrochemically depositing a coating over the substrate, the coating comprising the diamond nanoparticles and a metal formed by reduction of the metal ions in the deposition composition. Christini Gal-Or Fujimura Khabashesku Mazyar The References US Re. 33,767 US 6,258,237 B 1 US 2003/0228249 Al US 2005/0158549 Al US 2013/0081335 Al Dec. 10, 1991 July 10, 2001 Dec. 11, 2003 July 21, 2005 Apr. 4, 2013 Helen H. Lou & Yinlun Huang, Encyclopedia of Chemical Processing: Electroplating 1-10 (Taylor & Francis 2006) (hereinafter Lou). Steel - definition of steel, The Free Dictionary, http://www. thefreedictionary .com/ steel (hereinafter Steel). Todd Helmestine, Periodic Table of the Elements, chemistry.about.com (2014). The Rejections The claims stand rejected under 35 U.S.C. Â§ I03(a) as follows: claims 1, 4, 5, 7, 8, 11-13, 15, 16, and 19-21 over Reusmann in view of Gal-Or, Khabashesku, and Mazyar; claim 9 over Reusmann in view of Gal-Or, Khabashesku, Mazyar. and Steel; claims 2, 3, 6, 17, and 18 over 2 Appeal2018-003655 Application 14/490,214 Reusmann in view of Gal-Or, Khabashesku, Mazyar, Fujimura and Helmenstine; claims 6, 10, and 17 over Reusmann in view of Gal-Or, Khabashesku, Mazyar, and Christini; claims 1-8, 11, and 15-18 over Fujimura in view of Lou, Gal-Or, and Mazyar; claim 9 over Fujimura in view of Lou, Gal-Or, Mazyar, and Steel; claim 21 over Fujimura in view of Lou, Gal-Or, Mazyar, and Helmenstine; claim 10 over Fujimura in view of Lou, Gal-Or, Mazyar, and Christini; and claim 13 over Fujimura in view of Lou, Gal-Or, Mazyar, and Khabashesku. OPINION We affirm the rejections. The Appellant argues the claims in the following groups: 1) the claims in which Reusmann is the primary reference (Br. 11-18), and 2) the claims in which Fujimura is the primary reference (Br. 18-23). The Appellant addresses some dependent claims under separate headings, but does not provide a substantive argument as to the separate patentability of those claims (Br. 14--18, 21-23). We therefore limit our discussion to one claim in each group, i.e., claim 1. Claims 2-13 and 15-21 stand or fall with that claim. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2012). Rejections in which Reusmann is the primary reference Reusmann electrochemically coats a workpiece by precipitating aluminum alone or in combination with one or more other metals from a metal ion-containing ionic liquid which also can contain particles which can be diamond nanoparticles (i1i112, 36, 41, 42, 48, 59). "The particles are preferably suspended in the liquid, i.e., they do not sink but rather float in it" (i-f 37). If the particles do not remain suspended homogeneously in the ionic liquid but, rather, sink to the bottom or float to the top depending upon their 3 Appeal2018-003655 Application 14/490,214 density relative to that of the ionic liquid, the particle-containing ionic liquid can be mixed before, during, or after the electrochemical precipitation of the metal from the ionic liquid (i1i152-55). "[T]he metal layer precipitated on the workpiece forms a type of matrix, into which the particles are integrated" (i138). Gal-Or imparts a positive charge to diamond nanoparticles so that when an electric field is imposed on them during electrophoresis, they are attracted to and deposited on a negatively-charged electrode (col. 10, 11. 36- 45, 61---63; col. 11, 11. 33--40). Khabashesku functionalizes diamond nanoparticles with functional groups which can be "a variety of organic groups, e.g., alkyl, aryl, or those terminated with hydroxyl, carboxyl or amino moieties" (i-f 35) to improve the diamond nanoparticles' ability to form stable suspensions in solvents in applications including coatings (i1i1 13, 36, 49). Mazyar functionalizes diamond nanoparticles with "functional groups comprising alkyl, alkenyl, alkynyl, carboxyl, hydroxyl, amino, amido, epoxy, keto, alkoxy, ether, ester, lactones, metallic groups, organometallic groups, polymeric groups, ionic groups, or a combination comprising at least one of the foregoing" (i-f 62). The functional groups provide the diamond nanoparticles with positive, neutral, or negative charge and enable the diamond nanoparticles to be substantially homogeneously dispersible with carbon-coated metal nanoparticles (i1i1 4, 62, 63, 68). The Appellant asserts that "the process of Gal-Or uses particles charged with protons (hydrogen atoms), and Khabashesku teaches covalent modification of nanodiamond" (Br. 12), and "[t]here is no teaching or suggestion that [Gal-Or's and Khabashesku's] processes are similar in any 4 Appeal2018-003655 Application 14/490,214 way that would make substitution of one for the other an obvious variation" (Br. 12-13). The Examiner relies upon Gal-Or's disclosure of net positive charged diamond nanoparticles not for similarity with Khabashesku' s functionalized diamond nanoparticles but, rather, for a reason to give functionalized diamond nanoparticles a net positive charge, i.e., so they would be attracted along with Reusmann's metal cations to the cathode (Ans. 6, 28-29). The Appellant argues, in reliance upon a Declaration under 37 C.F.R. Â§ 1.132 by Othon R. Monteiro, that "a person of ordinary skill in the art would not have expected that the teachings of Mazyar and Khabashesku would provide any benefit to the process of Reusmann, because the electric current of Reusmann would be expected to form aggregates and destabilize the suspensions" (Br. 13-14). Monteiro asserts that 1) in an applied external electric field, Mazyar's and Khabashesku's net-positive-charged functionalized nanoparticles would be aggregated by anions to form heavier particles that fall from the solution, thereby destabilizing the suspension, and 2) if Reusmann's diamond nanoparticles had a net positive charge, anions would concentrate around them such that they no longer have a net positive charge and, therefore, would tend to agglomerate and precipitate out of the suspension (Deel. ,r,r 7, 8, 10). Monteiro' s assertion are unpersuasive due lacking evidentiary support. Also, Monteiro does not explain how the Appellant's net-positive- charged functionalized diamond nanoparticles differ from those of Mazyar and Khabashesku in a way that causes the Appellant's net-positive-charged functionalized diamond nanoparticles, but not those of Mazyar and 5 Appeal2018-003655 Application 14/490,214 Khabashesku, to not be agglomerated by anions in an electric field such that they precipitate from the suspension. Rejections in which Fujimura is the primary reference Fujimura functionalizes ultra-dispersed diamond (UDD) nanoparticles "with many active functional groups such as -COOR, ---C-0---C-, -CHO, and-OH and the like groups" (i1i13, 394) and adds the functionalized UDD particles to a metal electroplating, electroless plating, or electro-forming solution (i1i1155-157, 317,318). "[T]he [functionalized] UDD particles can hardly be aggregated and precipitated as compared with the conventional diamond particles and they are dispersed and suspended in stable state in aqueous suspension" (i-f 322). The Appellant asserts that "the process of Gal-Or uses particles charged with protons (hydrogen atoms), and Mazyar teaches nanodiamond having grafted polymer chains thereon" (Br. 20), and "[t]here is no teaching or suggestion that [Gal-Or's and Mazyar's] processes are similar in any way that would make substitution of one for the other an obvious variation" (id.). That assertion is not convincing for the reason given above with respect to the asserted substitution regarding Gal-Or and Khabashesku. The Appellant argues, in reliance upon the Monteiro Declaration, that "a person of ordinary skill in the art would not have expected that the teachings of Mazyar and Khabashesku would provide any benefit to the process of Fujimura, because the particles of Fujimura would behave differently if they were charged, and would not have been expected to have been useful in the process of Fujimura" (Br. 20). Monteiro asserts that Fujimura "teaches a stable suspension of ultradispersed diamond useful for electroplating, electroless plating, and 6 Appeal2018-003655 Application 14/490,214 electro-forming. If the ultradispersed diamond particles were functionalized to have a net positive charge, the particles would not behave the same in the electrochemical process" (Deel. ,r 12). The Examiner finds that functionalizing Fujimura's functionalized UDD particles such that they have a net positive charge would provide the benefit of causing them to be attracted along with metal cations to the cathode (Ans. 21-22). Because the Examiner's finding is reasonable and the Appellant has not challenged it, we accept it as fact. See In re Kunzmann, 326 F.2d 424,425 n.3 (CCPA 1964). For the above reasons we are not persuaded of reversible error in the rejections. DECISION The Examiner's decision rejecting claims 1-13 and 15-21 under 35 U.S.C. Â§ 103(a) 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 7