Smith, David A. et al.

Patent Trials and Appeals BoardSep 4, 2019

13876328 - (D) (P.T.A.B. Sep. 4, 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. 13/876,328 05/23/2013 David A. Smith 28260-0008-01 1895 133054 7590 09/04/2019 McNees Wallace & Nurick, LLC SILCOTEK CORP. 100 Pine Street P.O. Box 1166 Harrisburg, PA 17108-1166 EXAMINER VAZQUEZ, ELAINE M ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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): geoff.white@silcotek.com ip@silcotek.com patents@mcneeslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID A. SMITH, JAMES B. MATTZELA, PAUL H. SILVIS, GARY A. BARONE, and MARTIN E. HIGGINS1 ____________ Appeal 2019-000529 Application 13/876,328 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as SilcoTek Corporation. Appeal Br. 1. Appeal 2019-000529 Application 13/876,328 2 Appellants request our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 16–18, 20, 21, 23–26, 30, and 46–53. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 16 is illustrative of Appellants’ subject matter on appeal and is set forth below (with text in bold for emphasis): 16. An article having a wear coating comprising: a layer treated by trimethylsilane applied to a surface of the article wherein the wear coating is applied by chemical vapor deposition via thermal decomposition of dimethylsilane; wherein constituents of the decomposed dimethylsilane are oxidized prior to trimethylsilane treatment. The Examiner relies on the following prior art references as evidence of unpatentability: Tamor et al. (“Tamor”) US 5,249,554 Oct. 5, 1993 Smith US 6,444,326 B1 Sept. 3, 2002 Gorokhovsky et al. US 2007/0284255 A1 Dec. 13, 2007 (“Gorokhovsky”) THE REJECTIONS 1. Claims 16–18, 21, 23–26, 29, 30, and 46–53 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Tamor in view of Smith. 2. Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Tamor in view of Smith and further in view of Gorokhovsky. Appeal 2019-000529 Application 13/876,328 3 ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal, we are persuaded that Appellants identify reversible error. Thus, we reverse the Examiner’s rejections essentially for the reasons provided by Appellants in the record, and add the following primarily for emphasis. Rejection 1 The dispositive issue in this case is whether the combination of Tamor in view of Smith suggests the trimethylsilane treatment as claimed. It is the Examiner’s position that it would have been obvious because Smith teaches that surface defects in the hydrogenated amorphous silicon surface, also known as “dangling bonds” or silicon radicals, may create undesirable secondary reactions between the surface and other compounds if left untreated, and that quenching of residual radicals is achieved by thermal disproportionation of organosilanes (SiR1R2R3R4, where R1- 4=H, alkyl). Smith col. 5, ll. 5-12. Ans. 3–4. The Examiner states that when R1- 3=methyl and R4=H, it is trimethylsilane. Ans. 4. Appellants argue that the Examiner’s position that Smith teaches organosilanes which can have one or more alkyl constituents, and that such a teaching constitutes a teaching of trimethylsilane, is improper. Appeal Br. 3. Appellants submit that the Examiner has removed monosilane, disilane, and trisilane species, as well as halo-silanes, from the group; however, nothing suggests that such Appeal 2019-000529 Application 13/876,328 4 a classification of substituents is sufficiently limited or well delineated. Appeal Br. 5. In response, the Examiner states that because Smith contemplates use of trimethylsilane, one of ordinary skill in the art could choose trimethylsilane based on the teachings of Smith. Ans. 9. However, this does not properly address the point being made by Appellants, which is that the rejection lacks direction as to why one skilled in the art would have been motivated to make the selection proposed in the rejection. An obviousness rejection predicated on selection of one or more components from numerous possible choices may be appropriate if the prior art provides direction as to which of many possible choices is likely to be successful . PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed. Cir. 2007). Given that Smith provides only one example of a compound within the generic formula for use - phenylmethylvinylsilane – a compound which is not trimethylsilane, or even particularly closely structurally to it, (Smith col. 5, ll. 13– 14) without any further guidance on which of the vast number of compounds encompassed by the generic formula may be used, and the Examiner does not respond to Appellants’ argument concerning the lack of guidance, we determine the record regarding the Examiner’s position in this appeal is lacking. We thus reverse Rejection 1. Rejection 2 We reverse Rejection 2 for similar reasons as the rejection does not cure the aforementioned stated deficiencies in the record. Appeal 2019-000529 Application 13/876,328 5 DECISION Each rejection is reversed. ORDER REVERSED