KOREA INSTITUTE OF MACHINERY & MATERIALS

Patent Trials and Appeals Board

Nov 19, 2021

2021004772 (P.T.A.B. Nov. 19, 2021)

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.
16/342,013 04/15/2019 Kyung Tae KIM WPN20192003US 4649
66390 7590 11/19/2021
LEX IP MEISTER, PLLC
5180 PARKSTONE DRIVE, SUITE 175
CHANTILLY, VA 20151
EXAMINER
PATEL, RONAK C
ART UNIT PAPER NUMBER
1788
MAIL DATE DELIVERY MODE
11/19/2021 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 KYUNG TAE KIM,
JI HUN YU, and DONGWON KIM
____________

Appeal 2021-004772
Application 16/342,013
Technology Center 1700
____________
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–21 and 34 of Application

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Kyung Tae Kim as the real party in interest. Appeal Br. 3. This is
incorrect and was not correct when the Appeal Brief was filed. A search of
the USPTO Patent Assignment Database reveals that the ’013 Application
was assigned to the Korea Institute of Machinery & Materials on February
28, 2019. Assignment, Reel/Frame 048882/0907(recorded April 15, 2019).
The ’013 Application is presently assigned to the Korea Institute of
Materials Science. Assignment, Reel/Frame 055048/0937 (recorded January
27, 2021). We urge Appellant’s counsel to be more careful in the future.
Appeal 2021-004772
Application 16/342,013
2
16/342,013.2 Final Act. (December 4, 2020). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we reverse.
I. BACKGROUND
The ’013 Application describes an aluminum powder that may be
used in rocket propellant due to its highly exothermic reaction with oxygen.
Spec. 1. Because aluminum metal is so reactive with oxygen, aluminum
powder particles are covered with a naturally-occurring aluminum oxide
coat. Id. at 1–2. Before the aluminum included in rocket propellant can be
burned to produce thrust, the aluminum oxide layer must be removed. Id. at
2. Without the protective aluminum oxide layer, however, handling
aluminum powder is dangerous. Id.
The ’013 Application’s Specification describes a method for
stabilizing aluminum oxide-free aluminum powder by coating the powder’s
surface with a fluorine-based hydrocarbon polymer layer. Id. at 4. The
resulting powder is said to have improved stability and reactivity compared
to aluminum oxide-coated aluminum powder. Id.
Claim 17 is representative of the ’013 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
17 An aluminum powder coated with a fluorine-based
hydrocarbon polymer layer comprising an aluminum core; and
a fluorine-based hydrocarbon polymer layer formed on the

2 On July 11, 2019, the ’013 Application was granted special status as part of
the Patent Prosecution Highway Pilot Program. Accordingly, we take up this
appeal early.
Appeal 2021-004772
Application 16/342,013
3
aluminum core, in which Al-F bonds are formed on a surface of
the aluminum core by chemical reaction,
wherein the aluminum powder coated with the fluorine-
based hydrocarbon polymer layer does not include aluminum
oxide or includes aluminum oxide partially at a boundary
between the aluminum core and the fluorine-based hydrocarbon
polymer layer.
Appeal Br. 12.
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 17–19 and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of the Diekmann,3 DeLisio,4 and
Harrison.5 Final Act. 2.
2. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Diekmann, DeLisio, Harrison, and Tamitsuji.6 Final
Act. 4.
3. Claim 34 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Diekmann, DeLisio, Harrison, and Luo.7 Final
Act. 4.

3 US 2013/0011660 A1, published January 10, 2013.
4 Jeffrey B. DeLisio et al., Ignition and Reaction Analysis of High Loading
Nano-Al/Fluoropolymer Energetic Composite Films, American Institute of
Aeronautics and Astronautics 52nd Aerospace Sciences Meeting (2014).
5 US 5,936,009, issued August 10, 1999.
6 US 2010/0080903 A1, published April 1, 2010.
7 US 2014/0107280 A1, published April 17, 2014.
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Application 16/342,013
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4. Claims 17–19 and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Diekmann and DeLisio. Final Act. 5.
5. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Diekmann, DeLisio, and Tamitsuji. Final Act. 6.
6. Claim 34 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Diekmann, DeLisio, and Luo. Final Act. 7.
III. DISCUSSION
Appellant presents a unified argument for reversal of all of the
pending rejections. See Appeal Br. 5–11. This argument is based upon the
limitations of claim 17, which is the sole independent claim on appeal. See
id. We, therefore, select claim 17 as representative of the appealed claims
and limit our discussion accordingly. 37 C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner rejected claim 17 as unpatentable over the combination
of Diekmann, DeLisio, and, optionally, Harrison. Final Act. 2, 5. In doing
so, the Examiner found that Diekmann describes aluminum particles coated
with a precipitated layer such as polyvinylidenedifluoride (PVDF). Id. The
Examiner further found that Diekmann does not describe or suggest the
formation of Al-F bonds as part of the coating process. Id. at 2–3, 6.
The Examiner also found that DeLisio describes a chemical reaction
between PVDF and aluminum that creates a composite film including Al-F
bonds. Id. at 3, 6.
Appellant argues that the Examiner reversibly erred by finding that
(1) Diekmann describes an alumina particle having a metal core in direct
contact with the fluoropolymer and (2) DeLisio’s PVDF-coated aluminum
particles inherently include Al-F bonds. Appeal Br. 5–8.
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Application 16/342,013
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After review of the relevant prior art, the briefs, the Final Action, and
the Examiner’s Answer, we determine that Appellant has identified
reversible error.
First, Diekmann describes composite particles that can be made by
contacting a fluoropolymer with an aluminum particle. Diekmann Abstr.,
¶¶ 18–31. While the particle’s core may comprise aluminum, id. ¶ 49, a
person having ordinary skill in the art would know that the surface of such
an aluminum particle would be oxidized to form aluminum oxide essentially
immediately on contact with the atmosphere. Our review of Diekmann does
not reveal any special handling procedures to remove and/or prevent
formation of this aluminum oxide layer. Moreover, Diekmann’s processes
for coating the aluminum particles with fluoropolymer would not prevent
oxidation of the particles outer surface. Id. ¶¶ 53, 56, 137–144 (failing to
describe any steps taken to ensure oxygen free reaction conditions or steps
taken to remove aluminum oxide coating from the particle).
For this reason, we determine that the Examiner erred by finding that
Diekmann describes direct contact between the aluminum core of the metal
particle and the fluoropolymer.
Second, DeLisio describes the formation of PVDF-coated
nanoparticles of aluminum. DeLisio Abstr. Once again, the person having
ordinary skill in the art would understand that such particles have a surface
layer of aluminum oxide because DeLisio does not indicate otherwise.
Indeed, DeLisio’s description of the particles as comprising 70% aluminum
by mass, id. at 2, is consistent with the presence of such a layer, see Kim
Decl. ¶ 11 (filed November 5, 2020). Furthermore, DeLisio acknowledges
the presence of this aluminum oxide layer, stating that the fluorine in the
PVDF reacts with the alumina (i.e., aluminum oxide) shell of the particles
Appeal 2021-004772
Application 16/342,013
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upon heating as part of a thermal gravimetric analysis. Id. at 4. DeLisio’s
only description of species including an Al-F Bond appears in its discussion
of the mass spectroscopic analysis of the products created by ignition of the
particles. Id. at 4–5.
Thus, we are persuaded that the Examiner erred by finding that
DeLisio describes or suggests a PVDF-coated aluminum particle with Al-F
bonds. Nor did the Examiner find that Harrison describes or suggests the
formation of such bonds between the fluoropolymer and the metal core of
the aluminum particle.
In view of the foregoing, we determine that the Examiner has
reversibly erred by rejecting claim 17 as unpatentable over the combination
of Diekmann, DeLisio, and, optionally, Harrison. The Examiner did not find
that Tamitsuji and Luo, either alone or in combination, describe or suggest
the elements missing from the combination of Diekmann, DeLisio, and
Harrison. Thus, we also reverse the rejection of claims 18–21 and 34.
IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–19, 21 103 Diekmann, DeLisio, Harrison 17–19, 21
20 103 Diekmann, DeLisio, Harrison, Tamitsuji 20
34 103 Diekmann, DeLisio, Harrison, Luo 34
17–19, 21 103 Diekmann, DeLisio 17–19, 21
20 103 Diekmann, DeLisio, Tamitsuji 20
34 103 Diekmann, DeLisio, Luo 34
Overall Outcome 17–21, 34
REVERSED