Jerry T. Fang

Patent Trials and Appeals Board

Jul 17, 2019

15471909 - (D) (P.T.A.B. Jul. 17, 2019)

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.
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Application 15/471,909
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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.
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Application 15/471,909
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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
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Application 15/471,909
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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
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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