Ex Parte Yang et al

Patent Trial and Appeal Board

May 12, 2017

14022427 (P.T.A.B. May. 12, 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.
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);
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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.
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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
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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
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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
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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
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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
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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
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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.
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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
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