Ex Parte Revankar

Patent Trial and Appeal Board

Apr 19, 2013

11688964 (P.T.A.B. Apr. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/688,964 03/21/2007 Gopal Subray Revankar 17744-US 1008
30689 7590 04/19/2013
DEERE & COMPANY
ONE JOHN DEERE PLACE
MOLINE, IL 61265
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
04/19/2013 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
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Ex parte GOPAL SUBRAY REVANKAR
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Appeal 2011-010337
Application 11/688,964
Technology Center 1700
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Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 8. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to a method of applying a wear
resistant coating to a sheet metal part. Specification (Spec.) 1. Claim 1, the
sole independent claim on appeal, is illustrative (key limitations in dispute
italicized):
1. A method for hardfacing a desired zone of a surface of a steel plate
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substrate such that a coating of wear resistant material having a thickness of
at least 2 mm is formed on said zone of said steel plate substrate, comprising
the steps of:
a. selecting a steel plate having a desired shape and size;
b. creating a barrier on a surface of said plate so that the barrier
extends about said desired zone, with the barrier having a height of at least
4 mm so as to cooperate with said desired zone to define a cavity;
c. preparing a substantially uniformly thick, aqueous slurry, without
flux, consisting essentially of polyvinyl alcohol, a fusible hard metal alloy
being at least 60% iron in the form of a finely divided powder, and, one or
more non-flux additives selected from the group consisting of dispersants,
deflocculants and plasticizers;
d. wetting said zone of said steel plate with a polyvinyl alcohol
binder solution;
e. filling said cavity with said aqueous slurry;
f. striking said slurry in said cavity so as to leave a smooth surface
and so as to produce a uniform thickness of said slurry substantially equal
to said height of said barrier;
g. warming said plate to a curing temperature for a time sufficient to
form a partially cured coating;
h. removing said barrier thereby leaving said partially cured coating
on said plate;
i. warming said plate to said curing temperature for a time sufficient
to fully cure said coating;
j. heating said plate and fully cured coating to a fusing temperature
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of said hard metal alloy in a protective atmosphere until the alloy has fused
onto said surface of said steel plate; and
k. cooling said plate with the fused coating to ambient temperature.
Corrected Claims App’x.
The Examiner relied on Applicant’s Admitted Prior Art (AAPA)1 and
the following references in rejecting the appealed subject matter:

Crain US 1,624,538 Issued Apr. 12, 1927
Holdsworth US 2,056,274 Issued Oct. 6, 1936
Asbeck US 2,804,044 Issued Aug. 27, 1957
Phillips US 5,035,907 Issued July 30, 1991
Litt US 5,707,575 Issued Jan. 13, 1998
Revankar US 5,879,743 Issued Mar. 9, 1999
Lewis US 6,572,949 B1 Issued June 3, 2003

Ans. 3.

The Examiner maintains, and Appellant appeals, the rejection of
claims 1 through 8 under 35 U.S.C. § 103(a) as unpatentable over Revankar
in view of Holdsworth and AAPA alone or further in view of Phillips, Crain,
Lewis, Asbeck, and/or Litt. App. Br. 9.
ISSUES2
The dispositive issues for the prior art rejections are:

1 “The thickness of a protective coating will influence its protective
properties, as well as influencing the cost, weight and tolerance issues for a
particular article.” Answer mailed Mar. 18, 2011 (Ans.) 3; Final Office
Action mailed Mar. 21, 2007 (Final) 4. Appellants do not dispute the
description of AAPA. Appeal Brief filed Oct. 7, 2010 (App. Br.) generally.
2 Appellant has not presented separate substantive arguments addressing
claims 2, 3 and 8. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), claims 2,
3 and 8 will stand or fall together with representative claim 1.
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1. Did the Examiner err in determining that the combination of
Revankar with Holdsworth and AAPA would have suggested to a
person of ordinary skill in the art a method of hardfacing a steel
plate substrate with a coating of an aqueous slurry using a barrier
as described by the subject matter of independent claim 1?
2. Did the Examiner err in determining that the combination of
Revankar with Holdsworth and AAPA and further in view of
Phillips would have suggested to a person of ordinary skill in the
art placing a substrate in a fixture assembly which forms a barrier?
3. Did the Examiner err in determining that the combination of
Revankar with Holdsworth and AAPA and further in view of either
Crain or Lewis would have suggested to a person of ordinary skill
in the art a barrier formed from magnetic tape?
4. Did the Examiner err in determining that the combination of
Revankar with Holdsworth and AAPA and further in view of
Asbeck would have suggested to a person of ordinary skill in the
art creating a more smooth slurry surface by spraying a thin slurry
mixture onto the thick aqueous slurry soon after the step of striking
the slurry?
5. Did the Examiner err in determining that the combination of
Revankar with Holdsworth and AAPA and further in view of Litt
would have suggested to a person of ordinary skill in the art
oscillating the striking device while progressing the device across
the cavity?
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejections.
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PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). (“[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir.
1988).
ANALYSIS
Issue 1
The Examiner found that Revankar describes a method for hardfacing
a steel plate in a selected zone comprising steps a, c-e, g, and i-k as recited in
claim 1. (Ans. 4-5). The Examiner also found that Revankar teaches
forming uniform thick films, but does not specify the dimensions other than
they must be at least greater than 0.75mm. (Ans. 5).
The Examiner acknowledged that Revankar does not contain further
disclosure of steps b, f, and h of claim 1: creating a barrier, striking the
slurry in the cavity to leave a smooth surface, and removing the barrier,
respectively. (Ans. 4-5). However, the Examiner found that the use of a
mask or stencil was well known in the art of applying coatings. (Id. at 5).
The Examiner relied on Holdsworth for teaching such a method of applying
a coating to specific areas of a substrate using a stencil and a scraping
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device, which removes excess coating material, followed by removal of the
stencil when the coating has partially cured. (Id. at 5-6). The Examiner
determined that “it would have been obvious to one of ordinary skill in the
art at the time of the [the] invention to have incorporated the method of
Holdsworth for the method of applying coatings to designated areas
(defining a desired coating zone/cavity) in the method of Revankar to
conserve coating material, and better control coating height.” (Id. at 5).
The Examiner further found that Revankar teaches forming uniform
thick films and Holdsworth teaches that the thickness of the coating is
controlled by the thickness of the barrier height, but neither discloses a
specific thickness of at least 4mm explicitly. (Id. at 5-6). The Examiner
determined that the AAPA indicates that the coating thickness and barrier
thickness are result effective variables requiring only routine skill in the art
because “the thickness of a protective coating will influence its protective
properties, as well as influencing the cost, weight, and tolerance issues for a
particular article.” (Id. at 6).
Appellant argues that “prior to applicant’s invention, the use of . . .
stencils was not a known practice in the art of hardfacing steel metal
substrates.” (App. Br. 12). Appellant’s argument is not persuasive because
it does not explain how the particular substrate would make a known coating
process nonobvious. Appellant also does not address the Examiner’s finding
that the specific barrier height and coating thickness would have been result
effective variables requiring only routine skill in the art.
For the foregoing reasons, and for the reasons expressed in the
Answer including the Response to Argument, we affirm the rejection of
claim 1 (as well as claims 2, 3 and 8 which were not separately argued)
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under 35 U.S.C. § 103(a) as being unpatentable over Revankar in view of
Holdsworth and AAPA.
Issue 2
The Examiner finds that “[b]ecause both Philips and Revankar in view
of Holdsworth and AAPA teach a method for applying a coating to specific
areas of a substrate via masking/barrier and doctoring/striking, it would have
been obvious to one of ordinary skill in the art to substitute one method for
the other to achieve the predictable results of forming a shaped coating.”
(Ans. 8).
Appellant contends that Philips does not overcome the deficiencies of
the art of record asserted in relation to claim 1. App. Br. 13. That argument
is unpersuasive for the reasons explained above.
Appellant further argues that the stencil being manipulated by a pair
of pistons which selectively raise and lower the stencil relative to a conveyor
which carries a series of rectangular carrier sheets is not a fixture assembly
forming said barrier as required by claim 4. Id. Appellant contends that the
fixture in Phillips is the four pieces that hold in place a carrier sheet and a
release film which four pieces do not form a barrier for receiving a
marshmallow mix. Id.
The Examiner responded that the fixture assembly of Philips
comprises “all articles supporting/acting upon the substrate, and as such the
fixture assembly comprises stencil article 56 which engages and is a fixed to
the substrate.” Ans. 15. Appellant does not address the Examiner’s
description of the fixture assembly of Philips.
Appellant’s argument also is not persuasive because it is not
commensurate in scope with the actual claim language. In re Self, 671 F.2d
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1344, 1348 (CCPA 1982). Appellant’s argument would have us read into
the term fixture assembly, a preferred structure described in the
Specification at pages 6-7. The claim term, however, is broader than the
preferred embodiment. See Superguide Corp. v. DirecTV Enter., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (Particular embodiments appearing in the
written description must not be read into the claim if the claim language is
broader than the embodiment.).
For the foregoing reasons, and for the reasons expressed in the
Answer including the Response to Argument, we affirm the rejection of
claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Revankar in
view of Holdsworth and AAPA and further in view of Philips.
Issue 3
The Examiner found that Lewis teaches “that magnetic tape performs
predictably for a barrier for defining coating zones on ferromagnetic
materials” (Ans. 9) and Crain teaches “the advantage of incorporating a
magnetic interaction is that it will prevent coating creeping between stencil
barrier and substrate” for a clear line of demarcation (id. at 9-10). The
Examiner determined that “it would have been obvious to one of ordinary
skill in the art at the time of the invention to have incorporated [the]
magnetic tape/strip as the stencil/barrier in the method of Revankar in view
of Holdsworth and AAPA” in view of the benefits of a magnetic interaction
taught by Lewis and Crain. (Id.)
Appellant argues that claim 5 would not have been obvious over the
combination because neither Crain nor Lewis “teaches a barrier formed
from magnetic tape.” App. Br. 14 (emphasis in original). Appellant’s
argument is not persuasive. Nonobviousness cannot be shown by attacking
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references individually when the rejection is based on a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Each reference
cited by the Examiner must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For the above reasons and the reasons provided in the Answer
including the Response to Argument section, we affirm the rejection of
claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Revankar in
view of Holdsworth and AAPA and further in view of Lewis and Crain.
Issue 4
The Examiner found that Asbeck teaches application of a finish
coating after striking “when smoothness is particularly desired.” (Ans. 10).
The Examiner determined that “[a]s both Asbeck and Revankar in view of
Holdsworth and AAPA are directed to methods of forming smooth, uniform
surfaces, it would have been obvious to one of ordinary skill in the art at the
time of [the] invention to have incorporated including the step of spraying a
thin slurry mixture onto said thick aqueous slurry after the step of striking
said slurry soon after striking, thereby creating a more smooth slurry surface,
into the method of Revankar in view of Holdsworth and AAPA as Asbeck
has taught that applying such finish coatings is conventional in the art
following striking processes to achieve desired surface smoothness, and
avoid surface irregularities.” (Id. at 10-11).
Appellant argues that “because the hardfacing coating material of the
present invention differs substantially from the chemically hardening
resinous material of Asbeck et al., one skilled in the metallurgy art would
not have looked to the cinder/concrete block coating art for a solution as to
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how to produce a smooth hardfacing coating surface.” App. Br. 14. The
hard facing material is heated to a fusion temperature after being prepared.
Id.
Appellant does not dispute the Examiner’s finding that Revankar in
view of Holdsworth and AAPA disclose a method of forming smooth,
uniform surfaces. See, generally, App. Br. Nor does Appellant argue that
spraying a layer of slurry coating onto a slurry coating layer after striking
would not predictably form a smooth, uniform surface. Id.
Revankar specifically discloses an embodiment wherein “uniformly
thick slurry coatings can be built up by repeated spraying and intervening
drying cycles” (App. Br. 11 (citing Revankar, col. 5, ll. 16-24); Ans. 5).
Appellant does not explain the relevance of the particular coating material
used in Asbeck to a coating process wherein the physical striking step occurs
before the final layer of spraying a slurry coating that Revankar teaches
produces a smooth, uniform surface on a metal substrate. Because the
Examiner relies upon Asbeck for the physical process steps of coating a
substrate and Revankar for the particular hardfacing coating material that
can be sprayed onto the substrate in layers to form a smooth surface, we find
that the Examiner did not err in rejecting claim 6 under 35 U.S.C. § 103(a)
as being unpatentable over Revankar in view of Holdsworth and AAPA and
further in view of Asbeck.
Issue 5
The Examiner found that “Litt teaches a predictable method of
applying a coating to desired areas by moving a blade across a surface to fill
in, and remove excess coating material from recessed holes/areas/cavity”
(Ans. 11). The Examiner also found that Litt teaches it is preferable to
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oscillate the striking tool to most effectively remove excess coating without
creating any recess. (Id.) Because the primary references describe the
method of applying a coating to desired areas by moving a blade across the
surface to fill in and remove excess coating, the Examiner determined “it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have incorporated oscillating the striking device to achieve the
predictable result of removing excess coating, while preventing recess
formation.” (Id. at 11-12).
Because Appellant relies on the same arguments made in connection
with claim 1, which we find unpersuasive, we likewise sustain the
Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a).
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)(v).
AFFIRMED

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