Ex Parte Wu et al

Patent Trial and Appeal Board

Oct 25, 2017

12585812 (P.T.A.B. Oct. 25, 2017)

United States Patent and Trademark Office
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.
12/585,812 09/25/2009 Tair-I Wu 51853-US-PA 6925
31561 7590
JCIPRNET
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAIR-I WU and CHIEN-LUNG HUANG
Appeal 2017-001446
Application 12/585,8121
Technology Center 1700
Before ROMULO H. DELMENDO, MONTE T. SQUIRE and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—9 and 24—26. We have jurisdiction. 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is TATUNG
UNIVERSITY, TATUNG COMPANY, and METAL INDUSTRIES
RESEARCH & DEVELOPMENT CENTRE. Appeal Br. 1.
Appeal 2017-001446
Application 12/585,812
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a composite film that
is hydrophobic before being exposed to UV light but changes to hydrophilic
after being exposed to UV light. Spec. 3:20-4:9. The Specification explains
that this transformability can improve the cleaning efficiency of such a film.
Id. at 3:12-17. Appellants indicate the film can be advantageously used in
conjunction with “apparatus such as sanitary equipment, vehicle outer shells,
or exterior wall tiles.” Id. Claim 1, reproduced below, is the only
independent claim on appeal and is illustrative of the claimed subject matter:
1. A hydrophilic-hydrophobic transformable composite film,
consisting of:
an iron-containing substrate;
a silicon-containing layer formed on the iron-containing
substrate; and
a titanium oxide layer formed on the silicon-containing
layer;
wherein the silicon-containing layer consists of silicon,
silicon oxide or a combination thereof, and the composite film is
hydrophobic before being exposed to UV light, but changes to
hydrophilic after being exposed to UV light.
Appeal Br. 14 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Dawes et al. US 4,710,23 8 Dec. 1, 1987
2 In this opinion, we refer to the Final Office Action dated December 1, 2015
(“Final Act.”), the Appeal Brief filed March 29, 2016 (“Appeal Br.”), the
Examiner’s Answer dated September 1, 2016 (“Ans.”), and the Reply Brief
filed November 1, 2016 (“Reply Br.”).
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Appeal 2017-001446
Application 12/585,812
(hereinafter “Dawes”)
Eaton etal. US 2006/0110609 A1 May 25, 2006
(hereinafter “Eaton”)
Sudaetal. US 2006/0144271 A1 July 6, 2006
(hereinafter “Suda”)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 4—6, and 26 under 35 U.S.C. § 103 as
unpatentable over Eaton. Ans. 2.
Rejection 2. Claims 2 and 3 under 35 U.S.C. § 103 as unpatentable
over Eaton in view of Dawes. Id. at 4.
Rejection 3. Claims 7—9 and 24 under 35 U.S.C. § 103 as
unpatentable over Eaton in view of Suda. Id. at 5.
Rejection 4. Claim 25 under 35 U.S.C. § 103 as unpatentable over
Eaton in view of Suda and further in view of Dawes. Id. at 5—6.
ANALYSIS
The Examiner rejects claim 1 as unpatentable under 35 U.S.C. § 103
over Eaton. Ans. 2—3. Eaton generally provides teachings regarding
“protective coatings for use on gas turbine engine components.” Eaton 12.
Eaton emphasizes the desirability of coatings with thermal expansion
properties (i.e., coefficient of thermal expansion (“CTE”)) that match those
of the substrate. See, e.g., id. at || 4, 25, 28. Eaton also emphasizes the use
of coatings with “equilibrium phases” such that the phase of the coating does
not change or otherwise affect the coating’s integrity under expected
conditions. See, e.g., id. at || 5, 25, 28. Eaton is not concerned with
hydrophobic or hydrophilic properties.
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Application 12/585,812
The Examiner finds that Eaton teaches a composite film consisting of
a silicon-containing metal alloy substrate, a silicon-containing layer formed
on the iron-containing substrate, and a titanium oxide layer formed on
the silicon-containing layer. Ans. 2—3. The Examiner primarily provides
citations to the claims of Eaton as evidence and also cites paragraph 32 of
Eaton to establish that the metal alloy substrate could be iron silicon alloy.
id. (citing Eaton claims 1,6, 10, 11, 20, 21, and 22).
Appellants first emphasize that claim 1 recites a film “consisting of’
the three recited layers and that this closes “the claim to the inclusion of
materials other than those recited except for impurities ordinarily associated
therewith.” Appeal Br. 2—3 (quoting Ex parte Davis, 80 USPQ 448, 450
(Bd. App. 1948)); see also Appeal Br. 5—6. The Examiner does not appear
to dispute the Appellants’ construction of “consisting of’ (Ans. 7), and we
also agree with this construction. We note that claim 1 ’s recited silicon-
containing layer likewise “consists of silicon, silicon oxide or a combination
thereof,” and the silicon-containing layer therefore contains only (1) silicon,
(2) silicon oxide, or (3) both silicon and silicon oxide (aside from
impurities).
Appellants next argue that Eaton does not teach a three layer film as
recited and instead teaches a multi-layer structure as depicted in Figure 1 of
Eaton, reproduced below. Appeal Br. 6—7; Reply Br. 2—3.
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Application 12/585,812
FIGURE 1
Figure 1 of Eaton is a schematic drawing showing a multiple layered coating
system on a substrate as utilized in embodiments of Eaton. Eaton 116.
Eaton’s Figure 1 depicts substrate 20, bond coat 30, protective coating 40
(along with layers 42, 44, and 46 of the coating), and topcoat 50. Figure 2 of
Eaton (not reproduced here) similarly depicts a structure having at least four
layers. Reply Br. 3.
The Examiner does not dispute that Figure 1 of Eaton depicts four
layers. Rather, the Examiner finds that Figure 1 is merely one embodiment
of Eaton and that Eaton’s claims teach a film consisting of three layers as
recited by Appellants’ claim 1. Ans. 6—7. In particular, the Examiner finds
that Eaton’s claim 1 teaches a substrate (which could be iron-containing
according to Eaton’s paragraph 32) and a coating (which could comprise
silica according to, for example, claim 6). Id. The Examiner further finds
that Eaton’s claim 22 teaches that the article could also include a titanium
oxide topcoat (while not including a bond coat or intermediate layer between
the bond coat and the coating because claim 22 depends from claim 19 and
claim 19 requires only “at least one of’ the recited limitations). Id.
As a legal matter, the Examiner did not err in considering Eaton’s
claims as part of Eaton’s disclosure. See, e.g., In re Field, 161 F.2d 372, 374
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Application 12/585,812
(CCPA 1947) (“The subject matter defined by the claims of a patent cited as
a reference is part of the disclosure of that reference. . . Disclosure
within a prior art patent’s claims, however, must be viewed as part of the
Specification as a whole because a prior art patent “discloses only that which
it describes, whether specifically or in general terms.” In re Benno, 768 F.2d
1340, 1346 (Fed. Cir. 1985). The legal scope of a prior art patent’s claims
“is of no measure of what it discloses.” Id. The fact that a later patent’s
claim falls within the scope of an earlier patent’s claim does not necessarily
render the later claim obvious. Id.
Here, a preponderance of the evidence does not support that a person
of ordinary skill in the art would have understood the claims of Eaton as
teaching an embodiment with exactly the three layers required by
Appellants’ claim 1. Rather, each of Eaton’s claims is written in terms of
what the recited “article” comprises. See, e.g., Eaton claim 1 (“An article
comprising”). Thus, a person of skill in the art would have understood that
the Eaton’s claims could include layers and/or layer components beyond
those recited. This is especially true given that Eaton’s narrative
emphasizes, as explained above, embodiments with four or more layers.
Moreover, the Examiner has not persuasively established that Eaton’s
claims teach a middle “silicon-containing” layer that “consists of silicon,
silicon oxide or a combination thereof’ as recited by Appellants’ claim 1.
Rather, the Examiner cites Eaton’s claims 10, 11, 20, and 21 as teaching this
recitation. Ans. 2, 6. Eaton’s claim 10, however, further limits the “coating
comprising predetermined equilibrium phases therein” recited by Eaton’s
claim 1, and the Examiner does not explain how Eaton teaches that its
coating with predetermined equilibrium phases could consist of silicon,
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silicon oxide, or a combination thereof. Rather, considering Eaton in its
entirety and especially Eaton’s paragraphs 26—28, it appears that Eaton
teaches that a layer having “predetermined equilibrium phases therein” will
not consist of only silicon, silicon oxide, or a combination. Compare Eaton
128 (indicating that in embodiments the protective coating comprises rare
earth silicates) to id. at claim 10 (“the coating comprises at least one of: a
rare earth monosilicate, a rare earth dissilicate, a rare earth oxide, silica, and
mixtures thereof.”).
Claims 11, 20, and 21 also do not resolve this issue because claim 11
does not relate to use of silicon, and claims 20 and 21 relate to Eaton’s bond
coat and intermediate layers. Inclusion of a bond coat or intermediate layers
would lead to an Eaton embodiment with more than three layers (i.e., a
substrate, a protective layer, a titanium topcoat, and the bond coat and/or
intermediate layers).3
If Eaton’s claims do not expressly teach a three-layer embodiment as
in Appellant’s claim 1, the Examiner can only maintain that Eaton teaches
the recitations of Appellants’ claim 1 by making some modification of Eaton
or by picking and choosing parts of Eaton to combine. Indeed, the Examiner
appears to agree that the Examiner “must ‘pick and choose’ amongst various
elements [of Eaton] to arrive at the claimed invention.” Appeal Br. 8.
3 We note that Eaton does not indicate that protective coating 40 is optional;
rather the protective coating satisfies Eaton’s sole purpose. Eaton Title
(“PROTECTIVE COATINGS”), 12 (“The present invention generally
relates to protective coatings. . . .”), see also id. at || 28—35 (referring to
protective coatings in each embodiment and in relation to each of the other
optional layers).
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Appellants argue that the Examiner’s modification of Eaton is based
on unfounded hindsight reconstruction and that there is a lack of reasonable
motivation for modifying Eaton to arrive at the claimed invention. Appeal
Br. 8—9. In reply, for example, Appellants argue that “the Examiner cannot
simply make the claim interpretation by ‘pick and choose’ [sic] among the
elements of the cited references to arrive at the claimed invention without
supporting grounds or motivations originated [sic] from the cited references
or any factual evidences.” Reply Br. 4 (emphasis removed).
We agree with Appellants that the Examiner has not provided an
adequate factual basis to support that a person of skill in the art would have
chosen some teachings from Eaton while also choosing to forego other
teachings in order to arrive at the recitations of claim 1. For example, the
Examiner finds that the four layer Figure 1 structure of Eaton is an
“embodiment” rather than being required by Eaton. Ans. 6. The Examiner’s
finding has factual support; nearly all of Eaton’s teachings are discussed in
terms of embodiments or options. Figures 1 and 2 depict “embodiments.”
Eaton || 29-30. Moreover, Eaton teaches that a bond coat 30, topcoat 50,
and intermediate layers “may be disposed” on another layer “[i]n
embodiments” (id. at || 33—35).
The Examiner, however, has not adequately explained why, given
Eaton’s various teachings from various embodiments, a person of skill
would have picked exactly the teachings that result in Appellants’ claim 1
while eschewing Eaton’s other optional layers. “Rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
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Application 12/585,812
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
As an alternative position, the Examiner also determines that the bond
coat and intermediate layer of Eaton could be considered the single “silicon-
containing layer” recited in claim 1. Ans. 7. Claim 1, however, requires
that the silicon-containing layer consist of silicon and/or silicon oxide and
nothing more (except impurities). If the bond coat were silicon (one
possibility taught by Eaton 133) and the intermediate layer(s) were silicon
oxide (a possibility taught by Eaton 135), the bond coat and intermediate
layer would be two layers of distinct material. Thus, four layers would exist
(bond coat, intermediate layer, substrate, and top coat) rather than the three
required by claim 1.
While the Examiner’s position presents us with a close question, we
ultimately do not sustain the Examiner’s rejection of claim 1. We also do
not sustain the Examiner’s rejection of claims 2—9 and 24—26 because those
claims depend from claim 1 and because the Examiner’s use of secondary
references with respect to some of the dependent claims (Ans. 4—6) does not
address the error we explain above.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
1-9 and 2A-26.
REVERSED
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