Jerry T. FangDownload PDFPatent Trials and Appeals BoardJul 17, 201915471909 - (D) (P.T.A.B. Jul. 17, 2019) 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. 15/471,909 03/28/2017 JERRY T. FANG NG(ST)025909 US NPR 1044 109501 7590 07/17/2019 Tarolli, Sundheim, Covell & Tummino LLP and Northrop Grumman Systems Corporation 1300 East Ninth Street Suite 1700 Cleveland, OH 44114 EXAMINER TALBOT, BRIAN K ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 07/17/2019 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): docketing@tarolli.com rkline@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________ Ex parte JERRY T. FANG _____________ Appeal 2019-004388 Application 15/471,909 Technology Center 1700 _____________ Before GEORGE C. BEST, JEFFREY R. SNAY, and SHELDON M. McGEE, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1–6 of Application 15/471,909 under 35 U.S.C. § 103 as obvious. Final Act. (May 11, 2018).1 Appellant2 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. 1 On March 29, 2017, a petition to make the ’909 Application special due to the inventor’s age was granted. Accordingly, we take up this appeal out of turn. 2 Northrop Grumman Systems Corp. is identified as the real party in interest. Appeal Br. 3. Appeal 2019-004388 Application 15/471,909 2 BACKGROUND The ’909 Application describes methods for applying a conformal amorphous fluorinated polymer coating to at least one side of a radiofrequency circuit board. Spec. ¶ 1. Claim 1 is representative of the ’909 Application’s claims and is reproduced below from the Claims Appendix. 1. A method of providing an amorphous fluorinated polymer conformal coating to at least one side of an RF circuit board, the method comprising: providing a coating solution including the amorphous fluorinated polymer dissolved in a fluorinated solvent; applying the coating solution to the RF circuit board via a mechanically controlled fluid spray application device to produce a coated board; and waiting a predetermined time period to substantially evaporate the fluorinated solvent from the coated board, thus leaving behind a conformal coating of the amorphous fluorinated polymer on a board surface area. Appeal Br. 15. REJECTION On appeal, the Examiner maintains the following rejection: 1. Claims 1–6 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Bedinger,3 Peterson,4 and James.5 Final Act. 3. 3 US 8,148,830 B2, issued April 3, 2012. 4 US 2017/0194171 A1, published July 6, 2017. 5 US 2012/0153285 A1, published June 21, 2012. Appeal 2019-004388 Application 15/471,909 3 DISCUSSION Appellant argues that the rejection of claims 1–6 should be reversed because “no prima facie case of obviousness has been set forth . . . because no adequate motivation to combine has been articulated in the rejection.” Appeal Br. 8. Among other things, Appellant argues that the Examiner’s proffered reason for combining Bedinger, Peterson, and James is conclusory and, therefore, improper. Id. at 8–10. It is well-established that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We have reviewed the Final Action and the Examiner’s Answer and determine that the Examiner has not met his burden to articulate sufficient reasoning to support the legal conclusion of obviousness. For example, in rejecting claims 1–6, the Examiner found that it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Bedinger et al. (8,148,830) conformal coating to include a[n] amorpohous [sic] fluoropolymer in a fluorinated solvent as evidenced by Peterson et al. (2017/0194171) and James et al. (2012/0153285) with the expectation of achieving similar success, i.e. protective coatings for RF circuit boards. Final Act. 4. In response to Appellant’s argument, the Examiner asserted that the Examiner’s combination rejection detailed teachings of protective coatings which are known to be successful for various substrates including inorganic and organic substrates. One skilled in the art would have had a reasonable expectation of similar success with these coatings regardless of the substrate involved absent a showing to the contrary. While the Examiner acknowledges [that] the coating [method] may require some Appeal 2019-004388 Application 15/471,909 4 experimentation to be utilized in the different instances[,] but this would not be “extensive” as argued by Appellant. Answer 5. We agree with Appellant that the Examiner has not provided an adequate reason to combine Bedinger, Peterson, and James. For an obviousness rejection to be proper, an examiner must provide a neutral—i.e., not based on the application—reason for a person of ordinary skill in the art at the time of the invention to have combined the references in the manner set forth in the rejection. The Federal Circuit has explained: When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references. Although the suggestion to combine references may flow from the nature of the problem, the suggestion more often comes from the teachings of the pertinent references, or from the ordinary knowledge of those skilled in the art that certain references are of special importance in a particular field. Therefore, when determining the patentability of a claimed invention which combines two known elements, the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination. In re Rouffet, 149 F.3d 1350, 1355–56 (Fed. Cir. 1998) (citations, internal quote marks, and alterations omitted). Put another way, as part of the prima facie case of obviousness, an examiner must explain the specific reason why a person of ordinary skill in the art at the time of the invention would have modified the prior art in the manner set forth in the rejection. In the absence of a clear statement of this reason, it may be inferred that the rejection is based solely upon hindsight and, therefore, is improper. Id. at 1358. In this case, the Examiner’s only stated reason for modifying the prior art to arrive at Appellant’s claimed invention is that a person of ordinary Appeal 2019-004388 Application 15/471,909 5 skill in the art would have had a reasonable expectation that the modified prior art would work. Although a reasonable expectation of success is necessary for there to be a prima facie case of obviousness, it is not a sufficient reason to combine the description of multiple references to arrive at Appellant’s claimed invention. CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1–6 of the ’909 Application. REVERSED Copy with citationCopy as parenthetical citation