Ex Parte Tran et al

Patent Trial and Appeal BoardAug 15, 2016

13242806 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/242,806 09/23/2011 120226 7590 08/17/2016 Patterson & Sheridan - The Boeing Company c/o Patterson & Sheridan, LLP 24 GREENWAY PLAZA, SUITE 1600 Houston, TX 77046 FIRST NAMED INVENTOR Luong (Louie) M. Tran 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. 7784-000827/US/COB 1993 EXAMINER KRUPICKA, ADAM C ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 08/17/2016 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): P AIR_eofficeaction@pattersonsheridan.com PatentAdmin@boeing.com PSDocketing@pattersonsheridan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LUONG (LOUIE) M. TRAN, MATTHIAS P. SCHRIEVER, and JOHN H. JONES Appeal2014-009789 Application 13/242,806 Technology Center 1700 Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. Â§ 134 from an Examiner's decision finally rejecting claims 9-12, 14--16, and 18. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. The Appellants' invention relates to electroplating an article with a zinc/nickel alloy and to zinc/nickel electroplated articles made of low alloy high strength steel which exhibit corrosion resistance and low hydrogen embrittlement. Spec. ,-r 2. Appeal2014-009789 Application 13/242,806 The Appellants disclose that electroplating tends to liberate hydrogen from the cathode which can lead to hydrogen embrittlement unless hydrogen is removed after plating. Spec. i-f 3. Prior art low embrittlement processes are said to include "BAC5709, 'Hard Chromium Plating' and BAC5804, 'Low Hydrogen Embrittlement Cadmium-Titanium Alloy Plating."' Spec. i-f 5. According to the Appellants, the porosity of the electroplated cadmium-titanium alloy is understood to be the key to removing hydrogen. Spec. i-f 6. However, cadmium-titanium alloy plating baths, which contain cadmium and cyanide, are said to create disposal problems unless expensive waste treatment equipment is employed. Spec. i-f 6. The Appellants disclose: Drawbacks of the prior process are avoided and advantages obtained through the practice of a method for producing a corrosion- resistant article. The article is especially selected from high strength low alloy steels such as are used for high strength parts in the aerospace industry. The method comprises electroplating a zinc/nickel coating on the article from an alkaline plating bath. The method uses an electrolyte in the form of a soluble hydroxide salt with the weight ratio of zinc ions to nickel ions in the solution being sufficient to provide the coating comprising from about 85% to about 95% by weight zinc, and about 5% to about 15% by weight nickel. In an innovation, the plating solution is maintained substantially free of organic materials that interfere with formation of a plating resistant both to corrosion and to hydrogen embrittlement. It has been discovered that such interfering materials include many that serve as conventional "brighteners" for plating of other alloys. Spec. ,-r 10. The Appellants disclose that "[b ]y using the plating baths, for the first time so-called 'dense, porous' plating or coating can be applied on high strength low alloy steels that provide resistance both to general corrosion and to hydrogen embrittlement." Spec. i-f 12. Corrosion protection is said to be provided by the 2 Appeal2014-009789 Application 13/242,806 dense nature of the coating, and favorable hydrogen embrittlement properties are said to be provided by the porous nature of the coating. Spec. i-f 12. Representative claim 9 is reproduced below from the Claims Appendix of the Appeal Brief dated May 12, 2014 ("App. Br."). 9. A zinc nickel plated article comprising a substrate and a zinc nickel alloy plating on the substrate, wherein the plating is characterized by a morphology as shown in Figure 2a. App. Br. 8. The claims on appeal stand rejected as follows: (1) claims 9-12, 14--16, and 18 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention; and (2) claims 9-12, 14--16, and 18 under 35 U.S.C. Â§ 103(a) as unpatentable over Keener et al. 1 in view of Opaskar et al. 2 B. DISCUSSION 1. Rejection (1) Independent claims 9 and 18 characterize the plating as having "a morphology as shown in Figure 2a." App. Br. 8, 9. The Examiner concludes: [I]t is unclear exactly how applicants are limiting the claimed plating by generally referring to the morphology of figure 2a. Do applicants intend to require the prior art to have the exact shape, size, and configuration? If applicants are not requiring an identical structure, what elements of the structure are being required? Is figure 2 intended to limit the size and number of apparent pores and/ or require the general shape of the metallic portions of the figure? Final 3.3 1 US 2004/0163740 Al, published August 26, 2004 ("Keener"). 2 US 2005/0133376 Al, published June 23, 2005 ("Opaskar"). 3 Final Office Action dated September 24, 2013. 3 Appeal2014-009789 Application 13/242,806 The Appellants argue that "words cannot adequately describe the morphology of Figure 2a." App. Br. 4. Therefore, the Appellants argue that "the Examiner errs in insisting that Applicant must use words to disclaim portions of Figure 2a." App. Br. 4. According to MPEP 2173.05(s) (8th ed., Rev. 9, Aug. 2012): Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant's convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted). [Emphasis added.] In response, the Examiner explains: [A ]ppellants have not provided reasoning as to why this circumstance is exceptional. If appellants are not claiming an identical surface to that of figure 2a, then the claim requires a surface having either the depicted surface or one having an equivalent surface.[4J However instead of succinctly enumerating the elements and limitations of the plating, appellants [sic, appellants'] claim requires an analysis of the figure. Because the limitations of the claims must be gleaned from the figure, the metes and bounds of the claim cannot be determined to the extent that would allow the public to determine what structures would infringe. Ans. 2 (emphasis added). 5 In the Reply Brief, the Appellants rely on Ex parte Gring, 158 USPQ 109 (BPAI 1967), to show that "an exceptional circumstance exists in this appeal." Reply Br. 3 (arguing "words will unnecessarily lengthen the claims and achieve 4 The Appellants have apparently declined to amend claims 9 and 18 to recite that the morphology of the plating is exactly as shown in Figure 2a. See App. Br. 5. 5 Examiner's Answer dated July 18, 2014. 4 Appeal2014-009789 Application 13/242,806 less clarity"). 6 However, Gring, decided almost 50 years ago, does not mention the phrase "exceptional circumstances" and thus is not helpful in understanding the meaning of the phrase in the current version of MPEP Â§ 2173.05(s). On this record, we decline to hold that words are inadequate to define the claimed invention where the Appellants do not intend to be limited to the exact morphology shown in Figure 2a and any equivalents of the morphology shown in Figure 2a remain undefined on this record. See App. Br. 5. For the reasons set forth in the Final Office Action and the Examiner's Answer, theÂ§ 112, second paragraph, rejection of claims 9-12, 14--16, and 18 is sustained. 2. Rejection (2) The Examiner finds Opaskar discloses a zinc-nickel alloy plating process "which provides a plating having increased ductility and efficiency while having superior corrosion resistance and being free of cyanide. "7 Final 4 (citing Opaskar 11117, 8). The Examiner finds Opaskar "do[ es] not appear to explicitly teach the corrosion and embrittlement specifications of the Zn-Ni plating." Final 5. Nonetheless, the Examiner finds the plating in Opaskar "is carried out using materials and process conditions which are substantially identical to those disclosed by applicants." Final 5. Thus, the Examiner finds the plating of Opaskar on Keener's article would have substantially the same properties as the claimed 6 Reply Brief dated September 8, 2014. 7 In the rejection on appeal, the Examiner concludes that it would have been "obvious to use the plating composition and process of Opaskar et al. as the Zn-Ni pre-plating of Keener et al. in order to provide Zn-Ni pre-plated articles having good ductility and superior corrosion resistance without the environmental hazards of cyanide." Final 4. The Appellants do not direct us to any evidence to the contrary. 5 Appeal2014-009789 Application 13/242,806 invention, including a morphology as shown in Appellants' Figure 2a. 8 Final 5, 6, 8. The Appellants argue that the Declaration of Luong Tran dated March 28, 2013 ("Tran Declaration") explains that "the plating of independent claims 9 and 18 would not have the morphology of Opaskar which has a plating produced with brighteners." App. Br. 5. Absent any suggestion to remove the brighteners in Opaskar, the Appellants argue that the combination of Keener and Opaskar does not teach or suggest the morphology of Appellants' Figure 2a. App. Br. 5. The Tran Declaration focuses on data disclosed in the Appellants' Specification for "the LHE Zn/Ni plating as illustrated in Figure 2a" and "the bright Zn/Ni plating as illustrated in Figure 2b." Tran Deel. i-f 5; Spec. i-fi-174, 75. According to the Tran Declaration: 6. The difference between Fig. 2a and Fig. 2b is the use of brightener in the bath for Fig. 2b. The morphology of Fig. 2a is produced by a bath containing no brightener. 7. The brighteners in the "Fig. 2b" bath of section 5. above are like the brighteners used in the Examples of the cited Opaskar reference US2005/0133376. Reflectalloy ZNA-9500 and ZNA-9700 are organic brighteners, putting them in the same class as brighteners AAl-AAl 1 and BA1-BA8 ofOpaskar. ... 8 See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior art products "are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . Whether the rejection is based on 'inherency' under 35 U.S.C. Â§ 102, on 'prima facie obviousness' under 35 U.S.C. Â§103,jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products." (footnote omitted)). 6 Appeal2014-009789 Application 13/242,806 9. Based on what we observed with the baths that made the morphology of Fig. 2a and Fig. 2b, I would expect the coatings of Opaskar to have a morphology more like Fig. 2b than like Fig. 2a. Tran Deel. i-fi-16, 7, 9; see also Opaskar i-fi-f 116-117. Significantly, Opaskar discloses that AAl-AAl 1 are exemplary non- ionogenic surface active polyoxyalkylenes. 9 See Opaskar i-f 116 ("there are a large variety of [non-ionogenic surface active polyoxyalkylenes], and those included in these Examples are exemplary and are not intended to limit the invention in any way"). The Appellants have neither directed us to any evidence showing that all of the non-ionogenic surface active polyoxyalkylenes expressly disclosed in Opaskar (see Opaskar i-fi-131---62) are "brighteners" excluded by the Appellants' invention nor directed us to any evidence establishing that AAl-AAl 1 and BA1-BA8 are representative of the large variety of non-ionogenic surface active polyoxyalkylenes disclosed in Opaskar. Notably, in one embodiment of the invention, Opaskar uses a non-ionogenic, surface active polyoxyalkylene compound to enhance ductility, not brightness. Opaskar i162. Additionally, the evidence of record does not support a finding that the sole difference between Appellants' Figure 2a and 2b is the use of a brightener in the bath of the Figure 2b embodiment. The Examiner finds that other parameters (i.e., substrate material and current density) are also varied to form the plating illustrated in Appellants' Figures 2a and 2b. See Ans. 5 ("The plating of Figure 2a was plated on a 4340 M steel plate at a current density of 45 ASP resulting in a plating thickness of 0.8 mil, where the plating of Figure 2b was plated on a 4130 annealed steel sheet with ... a current density of 20 ASP resulting in a plating thickness of 9 See In re Fracalossi, 681 F.2d 792, 794 n.1(CCPA1982) ("it is well established that the disclosure of a reference is not limited to specific working examples contained therein"). 7 Appeal2014-009789 Application 13/242,806 0.5 mils."); see also Final 16; Spec. i-fi-174, 75. Thus, the Examiner finds "it cannot be determined from the data provided by applicants whether the differences in morphology between figures 2a and 2b are the result of differences in current density, substrate, or the addition of a brightener" (or a combination of two or more of those parameters). Final 16; Ans. 5. On appeal, the Appellants do not address the Examiner's findings. In sum, the Appellants have failed to show reversible error in the Examiner's finding that the zinc-nickel plating disclosed in Opaskar would have a morphology as shown in Appellants' Figure 2a. Thus, for the reasons set forth above and reasons set forth in the Final Office Action and the Examiner's Answer, the Â§ 103(a) rejection of claims 9-12, 14--16, and 18 is sustained. C. DECISION The Examiner's decision 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)(l). AFFIRMED 8