Ex Parte RevankarDownload PDFPatent Trial and Appeal BoardApr 19, 201311688964 (P.T.A.B. Apr. 19, 2013) Copy Citation 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 ________________ Ex parte GOPAL SUBRAY REVANKAR ________________ Appeal 2011-010337 Application 11/688,964 Technology Center 1700 ________________ 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 Appeal 2011-010337 Application 11/688,964 2 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 Appeal 2011-010337 Application 11/688,964 3 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. Appeal 2011-010337 Application 11/688,964 4 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. Appeal 2011-010337 Application 11/688,964 5 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 Appeal 2011-010337 Application 11/688,964 6 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) Appeal 2011-010337 Application 11/688,964 7 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 Appeal 2011-010337 Application 11/688,964 8 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 Appeal 2011-010337 Application 11/688,964 9 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 Appeal 2011-010337 Application 11/688,964 10 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 Appeal 2011-010337 Application 11/688,964 11 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 cam Copy with citationCopy as parenthetical citation