Ex Parte Yang et alDownload PDFPatent Trial and Appeal BoardMay 12, 201714022427 (P.T.A.B. May. 12, 2017) Copy Citation 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. 14/022,427 09/10/2013 Ji-Hoon YANG LPP20134087US 6514 05/12/201766390 7590 LEX IP MEISTER, PLLC 5180 PARKSTONE DRIVE, SUITE 175 CHANTILLY, VA 20151 EXAMINER CHEN, BRET P ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 05/12/2017 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 JI-HOON YANG and JAE-IN JEONG Applicant: RESEARCH INSTITUTE OF INDUSTRIAL SCIENCE & TECHNOLOGY Appeal 2016-005599 Application 14/022,427 Technology Center 1700 Before LINDA M. GAUDETTE, WESLEY B. DERRICK, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1—8. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellant’s claimed invention is generally directed to a method for forming a hard coating layer. App. Br. 3-A. Claim 1, the sole independent claim on appeal, illustrates the subject matter on appeal and is reproduced below: 1. A method for forming a hard coating layer, the method comprising: washing a substrate; Appeal 2016-005599 Application 14/022,427 installing the washed substrate in a vacuum equipment, and vacuating a chamber of the vacuum equipment; cleaning the substrate; forming an oblique coating layer on the substrate by a deposition method; and forming a vertical coating layer, vertically to the substrate, on the oblique coating layer by applying bias-voltage after forming the oblique coating layer, the bias-voltage applied is less than 200V. App. Br. 17 (Claims Appendix). Appellant requests review of the following rejections set forth in the Final Office Action entered June 9, 2015 (“Final Act.”), which the Examiner maintains in the Answer entered March 10, 2016 (“Ans.”): I. Claims 1—3 and 8 under 35 U.S.C. § 103(a) as unpatentable over Marijnissen et al. (US 5,876,860, issued March 2, 1999) in view of Das et al. (US 2005/0084706 Al, published April 21, 2005), Rickerby (US 6,110,604, issued August 29, 2000), and Gorokhovsky (US 2004/0168637 Al, published September 2, 2004); II. Claims 4 and 7 under 35 U.S.C. § 103(a) as unpatentable over Marijnissen in view of Das, Rickerby, Gorokhovsky, and Feuerstein et al. (US 2008/0118643 Al, published May 22, 2008); III. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Marijnissen in view of Das, Rickerby, Gorokhovsky, and Kirkpatrick (US 5,082,359, issued January 21, 1992); IV. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Marijnissen in view of Das, Rickerby, Gorokhovsky, and Hass et al. (US 2008/0220177 Al, published September 11, 2008); 2 Appeal 2016-005599 Application 14/022,427 V. Claims 1—3, and 8 under 35 U.S.C. § 103(a) as unpatentable over Marijnissen in view of Das and Seiichi et al. (English translation of JP 61-255533, published November 13, 1986); VI. Claims 4 and 7 under 35 U.S.C. § 103(a) as unpatentable over Marijnissen in view of Das, Seiichi, and Feuerstein; VII. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Marijnissen in view of Das, Seiichi, and Kirkpatrick; and VIII. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Marijnissen in view of Das, Seiichi, and Haas. DISCUSSION Upon consideration of the relied-upon evidence in this appeal and each of Appellant’s contentions, we affirm the Examiner’s rejections of claims 1—8 under 35 U.S.C. § 103(a), for the reasons set forth in the Final Action and the Answer. We add the following discussion primarily for emphasis. Rejections I—IV Appellant argues ah of the claims subject to Rejections I—IV as a group on the basis of claim 1 and does not present arguments for the separate patentability of the dependent claims, including separately rejected dependent claims 4—7. App. Br. 4—15. Therefore, we select claim 1 as representative, and decide the appeal as to Rejections I—IV based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv) (2015). Marijnissen discloses a method of forming a multilayer ceramic thermal barrier coating on a gas turbine engine component using electron beam physical vapor deposition (EB-PVD). Marijnissen Abstract; col. 1,11. 3 Appeal 2016-005599 Application 14/022,427 6—9; col. 5,11. 7—7, 50-52. Marijnissen discloses that the coating can include a first layer having an angled grain orientation (corresponding to an oblique coating layer) in combination with a second layer having a normal grain orientation (corresponding to a vertical coating layer). Marijnissen col. 5,11. 46-49; col. 10,11. 31—47; Fig. 3D. The Examiner finds that Marijnissen does not disclose forming the normal or vertical layer by applying a bias voltage of less than 200V, and the Examiner relies on Rickerby and Gorokhovsky for suggesting these features. Final Act. 3^4. Rickerby discloses a method of applying a multilayer ceramic thermal barrier coating to a gas turbine engine blade by forming a first layer using EB-PVD followed by forming a second layer by applying a bias voltage during plasma-assisted physical vapor deposition (PA-PVD). Rickerby col. 1,11. 6—9; col. 6,1. 66-col. 7,1. 13; Fig. 7. Rickerby discloses that applying a bias voltage during PA-PVD reduces the thermal conductivity of the ceramic thermal barrier coating by changing the composition of the second layer. Rickerby col. 9,11. 9—33. Gorokhovsky discloses a method for coating a substrate using PA- PVD. Gorokhovsky H 2, 36. Appellant does not dispute the Examiner’s finding that Example 2 of Gorokhovsky discloses producing a gas barrier coating by applying a bias voltage of 200V—3,000V during ion implantation. Compare Final Act. 4, with App. Br. 4—15; Gorokhovsky 1151. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of Appellant’s invention to apply a bias voltage having a magnitude as recited in claim 1 during a plasma-assisted coating process as disclosed in Marijnissen with an expectation of success because “Rickerby teaches the conventionality of using a bias voltage in a 4 Appeal 2016-005599 Application 14/022,427 plasma process” and “Gorokhovsky teaches the conventionality of using a substrate bias voltage of 200V.” Final Act. 3^4. Appellant argues that “there is lack of motivation for one skilled in the art to combine the cited references” because the Examiner improperly “takes certain elements from Marijnissen, Rickerby and Gorokhovsky and reconstructs them to derive the claimed invention based on information gleaned solely from Applicant’s specification.” App. Br. 12—13. Appellant contends that “one skilled in the art lacks the motivation to combine Marijnissen with Gorokhovsky” because Marijnissen “does not include ion implantation” as disclosed in Gorokhovsky. App. Br. 13. Appellant further contends that the combination of Rickerby and Marijnissen would not result in the “hard coating of [the] claimed invention comprising an oblique layer and a vertical layer where an oblique layer is formed and then a vertical layer is formed by applying a bias voltage on the oblique layer.” Id. However, we note initially that Appellant’s arguments do not squarely address the rejection as set forth by the Examiner because Appellant addresses the combination of Marijnissen and Gorokhovsky, and separately addresses the combination of Marijnissen and Rickerby, but does not address the proposed combination of Marijnissen, Rickerby, and Gorokhovsky. Moreover, as discussed above, Marijnissen and Rickerby both disclose methods of applying multilayer ceramic thermal barrier coatings to components of gas turbine engines. As also discussed above, Marijnissen discloses applying the coating by EB-PVD and discloses that the first layer in the coating has an angled grain orientation (corresponding to an oblique coating layer) and the second layer has a normal grain orientation (corresponding to a vertical coating layer). Rickerby’s disclosure (discussed 5 Appeal 2016-005599 Application 14/022,427 above) that the thermal conductivity of ceramic thermal barrier coatings can be reduced by forming a first coating layer using EB-PVD followed by forming a second layer using PA-PVD during which bias voltage is applied, provides support for the Examiner’s finding that one of ordinary skill in the art would have applied a bias voltage during formation of the second (vertical) layer of Marijnissen’s coating—as recited in claim 1—to reduce the thermal conductivity of the coating. In addition, Gorokhovsky’s undisputed disclosure of the conventionality of applying a bias voltage of 200V during PA-PVD (discussed above) supports the Examiner’s finding that one of ordinary skill in the art would have utilized such a bias voltage when forming the second layer of Marijnissen’s coating using PA-PVD as suggested by Rickerby. Therefore, a reasonable basis exists for the Examiner’s proposed combination of the applied prior art, and we are not persuaded that the Examiner’s combination is based on impermissible hindsight reconstruction gleaned from Appellant’s Specification as Appellant asserts. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). Appellant’s arguments are therefore unpersuasive of reversible error. Appellant further argues that the Examiner fails to establish prima facie obviousness because their Specification indicates that re-sputtering, which is not a coating, occurs if the bias voltage is over 200V as disclosed in Gorokhovsky. App. Br. 7—8. Appellant contends that “Gorokhovsky’s teaching of 200V and the bias voltage claimed are clearly different and is evidence that the small difference between the range of Gorokhovsky and the claimed range are [sic: is] meaningful.” App. Br. 9. Appellant further 6 Appeal 2016-005599 Application 14/022,427 argues that the Examiner fails to cite to any evidence that one of ordinary skill in the art would have believed that applying a bias voltage of 200V as disclosed in Gorokhovsky would lead to the same or similar properties as applying a bias voltage of less than 200V as recited in claim 1. Id. Appellant also contends that the Examiner fails to establish that Gorokhovsky’s bias voltage of 200V is approximate or can be flexibly applied. Id. However, the relied-upon disclosure in Appellant’s Specification does not indicate that the problem of re-sputtering occurs when a bias voltage of 200Vis applied, as disclosed in Gorokhovsky. Instead, Appellant’s Specification indicates that re-sputtering occurs “if the bias-voltage exceeds 200V.” Spec. 7,11. 10-12 (emphasis added). Accordingly, contrary to Appellant’s arguments, the relied-upon disclosure in their Specification does not establish a meaningful difference between a bias voltage of 200V as disclosed in Gorokhovsky and a bias voltage of less than 200V as recited in claim 1. In addition, due to the wide breadth of the range of 200V—3,000V disclosed in Gorokhovsky, one of ordinary skill in the art reasonably would have understood that small variations in bias voltage would not affect the coating process. Moreover, Example 2 of Gorokhovsky not only discloses utilizing a bias voltage of 200V—3,000V as the Examiner finds, but also discloses a procedure in which a bias voltage of 100V-400V was utilized, which reasonably would have suggested that some flexibility in bias voltage could be tolerated. Gorokhovsky || 150-151. Therefore, because Appellant does not direct us to any evidence establishing a difference between a bias voltage of 200V as disclosed in Gorokhovsky and a bias voltage of less than 200V as recited in claim 1, the 7 Appeal 2016-005599 Application 14/022,427 weight of the evidence supports the Examiner’s finding that one of ordinary skill in the art reasonably would have expected that similar properties would result from utilizing a bias voltage of 200V as disclosed in Gorokhovsky and a bias voltage of less than 200V as recited in claim 1, rendering the recited range prima facie obvious. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties”) (citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)). In addition, Appellant’s arguments and the relied-upon disclosure in Appellant’s Specification are insufficient to establish the criticality of the bias voltage recited in claim 1, and the preponderance of the evidence therefore supports the Examiner’s conclusion of obviousness. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). Appellant further argues that Gorokhovsky teaches away from the bias voltage recited in claim 1 because “the bias-voltage range, 200-3000V, suggested by Gorokhovsky is exactly the excluded range in the invention of Claim 1.” App. Br. 7—8. However, Appellant does not direct us to any disclosure in Gorokhovsky that criticizes, discredits, or otherwise discourages applying a bias voltage of less than 200V as recited in claim 1. Id. Thus, contrary to 8 Appeal 2016-005599 Application 14/022,427 Appellant’s arguments, Gorokhovsky’s disclosure of applying a bias voltage of 200V—3,000V does not constitute a teaching away from applying a bias voltage of 200V. See, e.g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a teaching away from a process where no such language exists”); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”); In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994). Because Appellant’s arguments and relied-upon evidence do not establish reversible error in the Examiner’s conclusion that the combined disclosures of Marijnissen, Rickerby, and Gorokhovsky would have rendered the subject matter of claim 1 obvious to one or ordinary skill in the art at the time of Appellant’s invention, we sustain Rejections I—IV. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner had failed to make a prima facie case, it has long been the Board’s practice to require an appellant to identity the alleged error in the examiner’s rejections); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009) (“the burden of showing that the error is harmful normally falls upon the party attacking the agency’s determination”)). Rejections V—VIII Appellant argues all of the claims subject to Rejection V—VIII as a group on the basis of claim 1. App. Br. 4—15. Therefore, we select claim 1 9 Appeal 2016-005599 Application 14/022,427 as representative, and decide the appeal as to Rejections V—VIII based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv) (2015). Seiichi discloses forming a vertically-magnetized film on a substrate. Seiichi Abstract, 6.1 Seiichi discloses that the column diameter of the film can be effectively controlled by forming the film using PVD while applying a bias voltage of 50V—500V. Seiichi 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of Appellant’s invention to apply a bias voltage having a magnitude as recited in claim 1 during a plasma-assisted coating process as disclosed in Marijnissen with an expectation of success because Seichi “teaches the conventionality of using a substrate bias voltage of 50-500V” during PVD. Final Act. 6—7. Appellant argues that if Marijnissen and Seiichi were combined, one of ordinary skill in the art would have produced a coating by constantly applying bias voltage during formation of layers having different columnar orientations, and would not have produced a hard coating of their invention by forming an oblique layer without applying a bias voltage, and then applying a bias voltage only when forming a vertical layer on the completed oblique later. App. Br. 14. However, contrary to Appellant’s arguments, due to both the open nature of claim 1 ’s “comprising” transition, and the fact that a bias voltage can be applied during “deposition methods,” claim 1 does not exclude application of a bias voltage during formation of the oblique layer. Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Unclaimed features cannot impart patentability to claims.). Accordingly, Appellant’s arguments do not 1 Citations refer to the English translation of Seiichi. 10 Appeal 2016-005599 Application 14/022,427 establish that forming the normal or vertical layer of Marijnissen’s multilayer ceramic thermal barrier coating by applying a bias voltage of 50V—500V as suggested by Seiichi to control the column diameter would not result in a method as recited in claim 1. Further, Appellant’s arguments that the resulting coating would lack sufficient hardness is unsupported by any factual evidence of record indicating that a hard coating would not result from the proposed combination of Marijnissen’s and Seiichi’s methods. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); see also In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant’s arguments are therefore unpersuasive of reversible error, and we accordingly sustain Rejections V—VIII. Jung, 637 F.3d at 1365. DECISION In view of the reasons set forth above and in the Final Office Action and the Answer, we affirm the Examiner’s decision to reject claims 1—8 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). AFFIRMED 11 Copy with citationCopy as parenthetical citation