Ex Parte Verlotski

Patent Trial and Appeal Board

Feb 6, 2014

12129872 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte VADIM VERLOTSKI
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Appeal 2012-004677
Application 12/129,872
Technology Center 1700
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Before JEFFREY T. SMITH, MARK NAGUMO, and GEORGE C. BEST,
Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004677
Application 12/129,872
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The Examiner finally rejected claims 1-6, 9, 13, and 14 of Application
12/129,872 under 35 U.S.C. §§ 102(b) and 102(e) as anticipated and claims
7 and 8 under 35 U.S.C. § 103(a) as obvious. Final Rejection (“FR”) 2
(May 7, 2011). Appellant1 seeks reversal of these rejections pursuant to 35
U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’872 application describes thermally sprayed protective layers
that can be applied to metals or metal alloys to protect them for corrosion at
high temperatures and in aggressive chemical environments such as
combustion chambers of internal combustion engines or gas turbines.
Spec. 1, 9.
Claim 1 is representative of the ’872 application’s claims and is
reproduced below:
1. A thermally sprayed, gastight protective layer for a metal
substrate; the substrate selected from one of Fe, Ni, Al, Mg or
Ti, the protective layer comprising:
a first and a second component,
the first component comprising a first silicate,
the second component comprising one of a first metal
powder, a second silicate, and a combination of the first
metal powder and the second silicate;
wherein an alkali content of a combination of the first and
second components in an initial spray powder is less than 6
percent by weight; and

1 Märkisches Werk GmbH is identified as the Real Party in Interest. (App.
Br. 1.)
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wherein the first and the second silicate are selected from a
silicate mineral or a silicate rock.
(App. Br. 18 (Claims App’x).).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. The Examiner rejected claims 1-6, 9, 13, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Hajmrle2 as evidenced by Lunghofer.3
(Ans. 4.)
2. The Examiner rejected claim 9 under 35 U.S.C. § 102(b) as
anticipated by Lunghofer. (Ans. 6.)
3. The Examiner rejected claim 9 under 35 U.S.C. § 102(e) as
anticipated by Kabashima.4 (Ans. 7.)
4. The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
obvious over Hajmrle. (Ans. 7.)
DISCUSSION
Rejection 1. Appellant presents two arguments for reversal of this
rejection. We address these arguments seriatim.
First, Appellant argues that the rejection of claims 1-6, 9, 13, and 14
under § 102(b) is improper because the Examiner relied upon two references
in making the rejection. (App. Br. 8.) As the Examiner correctly responds,

2 U.S. Patent Application Publication No. 2004/0247923 A1, published
Dec. 9, 2004.
3 U.S. Patent No. 6,753,299 B2, issued June 22, 2004.
4 U.S. Patent Application Publication No. 2007/0238603 A1, published
Oct. 11, 2007.
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the citation of additional references in support of a rejection under § 102(b)
is proper when the reference is cited to demonstrate an inherent property of a
material in the alleged anticipatory reference. See MPEP § 2131.01 ¶ III and
cited cases. In this case, the Examiner cited Lunghofer for the sole purpose
of establishing the chemical composition of anorthite. This is an
unobjectionable use of an additional reference in an anticipation rejection.
We, therefore, are not persuaded by this argument.
Second, Appellant argues that Hajmrle, whether considered alone or
in combination with Lunghofer, does not describe every limitation of
independent claims 1, 9, and 13. (App. Br. 8-13.) Each of the ’872
application’s independent claims contains language limiting the alkali
content of the spray powder used to create the thermal protective layer. (Id.
at 18, 19 (Claims App’x).) Appellant argues that the cited art does not
describe a composition having an alkali content of less than 6% by weight.
The Examiner found that Hajmrle describes a thermally sprayed
coating, one embodiment of which comprises quartz, anorthite, and a metal
powder such as a nickel-based alloy. (Ans. 4 (citing Hajmrle Abstract,
¶¶ 0013, 0015).) The Examiner further found that Hajmrle’s composition
meets the independent claims’ limitation on alkali content because quartz is
a pure silicate with zero alkali content, the metal powder also has zero alkali
content, and anorthite has less than 6% alkali by weight. (Ans. 4-5 (citing
Lunghofer col. 6, l. 5; Table X).)
Appellant argues that the Examiner erred in finding that Hajmrle
describes a composition comprising anorthite: “Hajmrle teaches at ¶[ ]0013,
¶[ ]0015, and in the Abstract the use of albite. In fact, ¶[ ]0014, which lays
out the invention on which the rejection is founded, does not mention
anorthite.” (App. Br. 8 (emphasis in original).)
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This argument is not persuasive because ¶ 0015 of Hajmrle clearly
describes an embodiment comprising “albite or a mineral possessing the
characteristics of albite such as anorthite, illite or a mineral possessing the
characteristics of[ ]illite, and quartz, and a metallic composition including
metal, chromium, iron, and silica.” Hajmrle ¶ 0015.
Appellant next argues “[t]he rejection incorrectly equates albite and
anorthite based on an erroneous, factually incorrect assertion. In fact, as
demonstrated below, albite and anorthite are completely different minerals.”
(App. Br. 9 (emphasis in original).) Appellant asserts that anorthite has
properties that make it unsuitable for use in a thermal sprayed protective
coating. (Id. at 9-13.)
Although not expressly stated as such, Appellant’s argument amounts
to an assertion that the composition described in Hajmrle and relied upon by
the Examiner is not enabled. A printed publication cited by an examiner is
presumed enabled unless barring any showing to the contrary by a patent
applicant. In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013) (quoting In re
Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012)). Where, as here,
an applicant has challenged the enablement of a cited reference, we must
review all evidence and applicant argument to determine if the prior art
reference is enabling. Id.; Antor Media, 689 F.3d at 1292.
Appellant argues that the anorthite-containing compositions described
in Hajmrle are not enabled because anorthite, unlike albite, does not form a
stable glass phase. (App. Br. 9.) Appellant urges that formation of a stable
glass phase is needed to form a stable protective layer as claimed, since the
bond between the substrate and the protective layer is compromised in the
absence of a stable glass phase. (Id.)
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Appellant relies upon two publications from American Mineralogist,5
Goldsmith6 and Anovitz,7 to support this non-enablement theory. (App. Br.
9 (“[T]wo sources describing the state of the art provide a ready comparison
of the differences [between albite and anorthite]. Courtesy copies are
enclosed.”).)
Although Appellant included copies of Anovitz and Goldsmith in the
Evidentiary Appendix to the Appeal Brief, we could refuse to consider these
references. Our rules prohibit an appellant from citing material that is not of
record in the application. See 37 C.F.R. § 41.37(c)(1)(ix) (2010)
(“Reference to unentered evidence is not permitted in the brief.”); 37 C.F.R.
§ 41.37(c)(2) (2010) (“A brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other evidence.”). Our
review of the ’872 application’s prosecution history does not reveal that
Anovitz and Goldsmith were ever entered into the record or considered by
the Examiner prior to this appeal. Indeed, in the Final Rejection, the
Examiner stated that these references had not been considered. FR 6; see
also Ans. 9 (stating that Appellant first provided printed copies of Anovitz

5 American Mineralogist is the “flagship journal of The Mineralogical
Society of America, continuously published siunce 1916, that seeks to
puublish peer-reviewed “reports on original scientific research . . . with far
reaching impact . . . ”.
http://www.minsocam.org/MSA/AmMin/Scope_and_Mission_2final.htm,
last visited 4 February 2014.
6 Julian R. Goldsmith, The melting and breakdown reactions of anorthite at
high pressures and temperatures, 65 AM. MINERALOGIST 272 (1980).
7 Lawrence M. Anovitz & James G. Blencoe, Dry melting of high albite, 84
AM. MINERALOGIST 1830 (1999).
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and Goldsmith as part of the Appeal Brief). Thus, Appellant’s inclusion of
Anovitz and Goldsmith in the Evidentiary Appendix is improper.
The Examiner, however, undertook the analysis of these references in
preparing the Answer.8 (See Ans. 9-12.) Rather than waste the Examiner’s
effort, we shall exercise our discretion to overlook Appellant’s failure to
comply with our rules.
Appellant relies upon Anovitz and Goldsmith to support the argument
that anorthite-containing powders will not create the claimed protective layer
because anorthite does not have a “substantial stable glass phase.” (Ans. 9.)
In particular, Appellant relies upon these references to support the
comparison between albite and anorthite that is summarized in the table that
we reproduce from Appellant’s Brief below:
Comparison 
Property  Albite  Anorthite 
Chemical Formula  NaAlSi3O8  CaAl2Si2O8 
Melting Point  ≈1150 °C  ≈1570 °C 
Glass Phase Development  Complete transition to 
glass, not able to revert, 
crystallization does not 
occur—based on [Anovitz] 
Transition to glass is 
incomplete or does not 
occur, upon cooling 
immediately disintegrates 
into crystalline 
components—based on 
[Goldsmith] 

8 We commend Examiner Katz for her diligence in this regard. She could
properly have exercised her discretion to refuse to address Appellant’s
belated arguments based upon these references.
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(App. Br. 10.)
Based upon the data and discussion in Anovitz and Goldsmith,
Appellant summarizes the nonenablement argument:
Thus, as is evident from the knowledge in the art, anorthite
would not be usable in a thermally sprayed, gastight protective
layer for a metal substrate as claimed due to its inherent
characteristics, which are not a substitute for albite. When
albite is rapidly cooled it maintains its amorphous form. In
contrast, anorthite when rapidly cooled disintegrates into a
crystalline structure. Albite is unusable in the present
invention, since its alkali content is high enough to limit
corrosion protection at high temperature.
(App. Br. 11-12.)
In response to this argument, the Final Rejection cited Ozaki9 as
evidence that a mixture comprising an iron-containing powder and anorthite
has a low melting point. FR 7. This argument, however, does not appear in
the Answer. We, therefore, will not consider arguments based on Ozaki in
reaching our decision regarding enablement.
The Examiner also argues that Hajmrle refers to an operating
temperature of a coated object and a temperature used in the formation of the
metal-mineral complex, both of which are significantly lower than the
melting points of albite and anorthite. (App. Br. 10 (citing Hajmrle ¶¶ 0030,
0034).) The Examiner further points out that albite and anorthite have
properties other than their melting behavior that are relatively similar. (Id. at
10-11 (discussing, inter alia, hardness, cleavage planes, and luster).)

9 U.S. Patent Application Publication No. 2006/0065072 A1, published Mar.
30, 2006.
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Considering all of the evidence and arguments presented by Appellant
and the Examiner, we find that, on the record before us, Appellant has
established that Hajmrle does not enable compositions containing anorthite.
While Appellant’s argument would have been considerably bolstered by
presentation of experimental results supporting its argument,10 Appellant has
presented a logical theory that explains the alleged nonenablement of
anorthite-containing spray powders and supported that argument with some
data. Against Appellant’s arguments and data, Hajmrle does not contain any
evidence that anorthite actually would work as a thermal spray powder to
create a thermal protective layer. The temperatures and other properties
disclosed in Hajmrle and discussed by the Examiner have not been shown to
be relevant to the challenge presented by Appellant’s theory, and the
Examiner has not identified any other evidence that might rebut Appellant’s
theory.
On the record before us, we find that Hajmrle is not enabled with
respect to anorthite-containing compositions. We, therefore, reverse the
rejection of claims 1-6, 9, 13, and 14 of the ’872 application as anticipated.
Rejection 2. The Examiner rejected claim 9 as anticipated by
Lunghofer. (Ans. 6 (citing Lunghofer col. 15, ll. 35-63, Table X).) We
reverse.
The portion of Lunghofer relied upon by the Examiner discusses the
composition of spherical particles that are to be used as proppants in the
hydraulic fracturing of oil and gas wells. These particles are between 0.1

10 The only declaration submitted during prosecution of the ’872 application
is not relevant to Appellant’s nonenablement argument.
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and 2.5 mm in diameter. Lunghofer col. 11, ll. 1-12. They are, therefore,
too large to be a spray powder as recited in claim 9. For example, the ’872
application’s Specification describes spray powders with particle sizes less
than 50 μm (Spec. 9, 12, and 13), or less than 100 μm (id. at 11).11 Hajmrle
describes spray powders with particles sizes between 125 and 180 μm or
between 44 and 150 μm. Hajmrle ¶ 0032.
Rejection 3. The Examiner also rejected claim 9 as anticipated by
Kabashima. (Ans. 7 (citing Kabashima Abstract, ¶¶ 0016, 0038).) We
reverse.
Kabashima describes a process for making a refractory brick that can
be used to line the bottom of a float bath used in plate glass production.
Kabashima ¶ 0015. During the course of this process, a clayey material
comprising Al2O3 and SiO2 is kneaded, molded, and fired to produce a
refractory brick. Kabashima, Abstract. The Examiner has not identified
where Kabashima describes use of a metal powder, and we cannot locate
such a description or suggestion in Kabashima.
Rejection 4. As discussed above, we find that Hajmrle is not enabled
with respect to anorthite-containing compositions. A person of ordinary
skill in the art, therefore, would not have a reasonable expectation of success
that Hajmrle’s disclosure could be modified to arrive at the inventions of
claims 7 and 8. We reverse the rejection of claims 7 and 8 as obvious over
Hajmrle.

11 For the purposes of this decision, we need not and do not decide the upper
limit of particle size that may be used in a spray powder.
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CONCLUSION
For the foregoing reasons, we reverse the rejections of claims 1-9, 13,
and 14 of the ’872 application.
REVERSED

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