Ex Parte Schaepkens et al

Patent Trial and Appeal Board

Nov 15, 2012

11188984 (P.T.A.B. Nov. 15, 2012)

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.
11/188,984 07/26/2005 Marc Schaepkens GER01 002 DIV 2514
7590 11/15/2012
Duane Morris LLP
505 9th Street N.W,
Suite 1000
Washington, DC 20004-2166
EXAMINER
MILLER, JR, JOSEPH ALBERT
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
11/15/2012 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 MARC SCHAEPKENS and KEVIN WARNER
FLANAGAN
________________

Appeal 2011-010261
Application 11/188,984
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010261
Application 11/188,984

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 13-20 and 62-65, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for making a composite article such as
a chemical species diffusion-resistant organic electroluminescent material
(Spec. ¶ 0001). Claim 13 is illustrative:
13. A method for making a composite article, said
method comprising:

providing a substrate having at least a substrate surface;

depositing a coating material comprising an inorganic
and an organic material, said coating material having a
composition on said substrate surface; and

changing said composition of said coating material
substantially continuously while said coating is being formed
such that said composition varies substantially continuously
across a thickness of said coating.

The References
Huck US 5,547,714 Aug. 20, 1996
Otto US 5,643,638 Jul. 1, 1997
Ram US 2001/0000331 A1 Apr. 19, 2001
Affinito US 6,268,695 B1 Jul. 31, 2001
Kohara US 2002/0136895 A1 Sep. 26, 2002
The Rejections
The claims stand rejected as follows: claims 13, 14, 16 and 17 under
35 U.S.C. § 102(b) over Otto, claim 15 under 35 U.S.C. § 103 over Otto in
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view of Ram, claims 18 and 19 under 35 U.S.C. § 103 over Otto in view of
Huck and Kohara, and claims 62-65 under 35 U.S.C. § 103 over Otto in
view of Affinito.1
OPINION
The rejections are affirmed as to claims 13-19 and reversed as to
claims 62-65.
Claims 13-19
Regarding the rejection of claims 13, 14, 16 and 17 the Appellants
argue only claim 13 (Br. 9-12). With respect to claims 15, 18 and 19 the
Appellants argue only that the additional references do not remedy the
argued deficiency in Otto as to claim 13 (Br. 12-13). We therefore limit our
discussion to claim 13. Claims 14-19 stand or fall with that claim. See 37
C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 13 requires “changing said composition of said coating material
substantially continuously while said coating is being formed such that said
composition varies substantially continuously across a thickness of said
coating.”
The Appellants argue that Otto does not change the composition
substantially continuously but, rather, changes the composition only between
individual layers (Br. 10-12; Reply Br. 2).
“‘[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re

1 Claim 20 is not rejected. A rejection of claims 13-20 and 62-65 under
35 U.S.C. § 112, second paragraph is withdrawn in the Examiner’s Answer
(Ans. 3).
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Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
The Appellants’ Specification states that “[t]he relative supply rates of
first and second reactant gases are varied during deposition to vary the
composition of the deposited material as the coating is built up”
(Spec. ¶ 0036) and that “a coating of the present invention does not have
distinct interfaces at which the composition of the coating changes abruptly.
Such abrupt changes in composition tend to introduce weak spots in the
coating structure where delamination can easily occurs [sic]” (Spec. ¶ 0033).
In an example the rates of silane, ammonia and propylene oxide “were
varied during deposition so that the composition of the coating varied
continuously across its thickness” (Spec. ¶ 0042). “Figure 4 shows the
elemental composition of the coating, as measured by dynamic XPS, as a
function of sputtering time to remove portions of the thickness of the coating
during the dynamic XPS testing, which is directly related to the depth of the
coating.” Id. That figure which, the Appellants state, discloses the
elemental composition of a coating which “varied continuously”
(Spec. ¶ 0042), shows that during the total sputtering time of about
960 seconds the elemental composition of the coating did not change
between 200 and 300 seconds of sputtering, varied little between about 500
and about 620 seconds of sputtering, and did not change between about 920
and about 960 seconds of sputtering.
Thus, the broadest reasonable interpretation of the Appellants’ claim
term “varies substantially continuously” consistent with the Specification
includes periods during which the coating composition remains constant,
such as the periods during which Otto’s layers, each having a 0.1-1 nm
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thickness and a different composition, are formed at a coating rate of up to
3,000 nm/min (col. 2, ll. 38-44, 49-53; col. 5, ll. 43-60).
We therefore are not persuaded of reversible error in the rejection of
claims 13-19.
Claims 62-65
Claim 62, which depends from claim 13, requires that “the
composition of said coating material varies across a thickness thereof such
that a graph of the percent composition of one of the components of the
coating versus the depth of the coating has plural peaks.”
Otto’s composition gradient-forming method is “especially suited for
producing scratch protective coatings on plastic substrates (for example, for
optical applications such as spectacle lenses)” (col. 4, ll. 37-40). “This
gradient layer is, for example, completely organic on the substrate side or is
organic to a large amount and the composition of the layer changes
continuously so that it is completely or to a large extent inorganic on the
function layer side” (col. 5, ll. 13-17).
Affinito prevents water or oxygen from reaching a device such as an
organic light emitting device by sequentially depositing on the device a first
polymer layer, a ceramic layer, and a second polymer layer (col. 2, ll. 9-12;
col. 7-20).
The Examiner argues that one of ordinary skill in the art would have
used Otto’s method to form Affinito’s layers “to effect the desired organic
and inorganic layers” (Ans. 8), thereby forming “multiple peaks of organic
and inorganic material that are substantially the same height – at least 3
peaks in case of Fig. 2 of Affinito.” Id. The Examiner argues that “because
Affinito does not specifically limit the minimum thickness, one could apply
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the method of Otto including continuously changing content with an
expectation of success based on Affinito’s general teaching that such layers
are beneficial” (Ans. 12).
As stated in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness’” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner has provided a mere conclusory statement that Otto’s method
could be used to form Affinito’s layers. The Examiner has not set forth the
required articulated reasoning with rational underpinning in support of the
conclusion of obviousness.
Hence, we reverse the rejection of claim 62 and claims 63-65 which
depend directly or indirectly therefrom.
DECISION/ORDER
The rejections of claims 13, 14, 16 and 17 under 35 U.S.C. § 102(b)
over Otto, claim 15 under 35 U.S.C. § 103 over Otto in view of Ram, and
claims 18 and 19 under 35 U.S.C. § 103 over Otto in view of Huck and
Kohara are affirmed. The rejection of claims 62-65 under 35 U.S.C. § 103
over Otto in view of Affinito is reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

kmm