The Government of the United States of America, as represented by the Secretary of the Navy

Patent Trials and Appeals Board

Jan 21, 2022

2021003944 (P.T.A.B. Jan. 21, 2022)

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. 16/216,279 12/11/2018 Teddy M. Keller 103907-US3 1750 26384 7590 01/21/2022 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 EXAMINER COHEN, STEFANIE J ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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): patent.docketing@nrl.navy.mil PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TEDDY M. KELLER and MATTHEW LASKOSKI Appeal 2021-003944 Application 16/216,279 Technology Center 1700 Before JAMES C. HOUSEL, DONNA M. PRAISS, and DEBRA L. DENNETT, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-19 under 35 U.S.C. § 103 as unpatentable over Keller (US 8,822,023 B2, iss. Sept. 2, 2014) in view of Ohkawa (US 5,468,358, iss. Nov. 21, 1995). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies The Government of the United States of America, as represented by the Secretary of the Navy, as the real party in interest. Appeal Brief (“Appeal Br.”) filed February 9, 2021, 2. Appeal 2021-003944 Application 16/216,279 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to a composition (claims 1-6 and 17) and methods (claims 7-16, 18, and 19) for forming refractory metal silicide ceramic composites. The composition comprises particles or nanoparticles of a refractory metal component or a refractory metal compound capable of decomposing into refractory metal nanoparticles, elemental silicon (“Si”), and an organic component selected from a compound having a char yield of at least 60 wt% or a thermoset made from this compound. Specification (“Spec.”) filed December 11, 2018, ¶ 9.2 Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter. The limitation at issue is italicized. 1. A composition comprising: a metal component selected from: particles of a refractory metal; and a refractory-metal compound capable of decomposing into refractory-metal nanoparticles; elemental silicon; and an organic component selected from: an organic compound having a char yield of at least 60% by weight; and a thermoset made from the organic compound. Independent claim 7 recites a method comprising combining the components of a composition similar to that of claim 1. 2 This Decision also cites to the Examiner’s Answer (“Ans.”) dated April 9, 2021 and the Reply Brief (“Reply Br.”) filed June 9, 2021. Appeal 2021-003944 Application 16/216,279 3 Independent claim 14 recites a method comprising heating a precursor mixture similar to the composition of claim 1 in a first inert atmosphere at elevated pressure and at a temperature that causes decomposition of refractory metal compound to form refractory metal nanoparticles composition, and heating the refractory metal nanoparticle composition in a second inert atmosphere or vacuum at a temperature that causes formation of a ceramic comprising nanoparticles of a refractory metal silicide in a carbonaceous matrix.3 OPINION We review the appealed rejection for error based upon the issues Appellant identifies, 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 Appellant’s arguments and the evidence of record, we are persuaded of reversible error in the stated rejection. Therefore, we reverse the Examiner’s obviousness rejection for the reasons given in the Appeal and Reply Briefs, and as set forth below. The Examiner rejects claims 1-19 under 35 U.S.C. § 103 as unpatentable over Keller in view of Ohkawa. Ans. 3-15. 3 Claim 14 recites that the precursor mixture may include particles of a refractory metal instead of a refractory metal compound, yet the first heating step causes decomposition of the refractory metal compound to form refractory metal nanoparticles. The Examiner and Appellant should consider addressing this apparent inconsistency in this claim. Appeal 2021-003944 Application 16/216,279 4 The Examiner finds that Keller teaches a composition substantially as recited in the independent claims, except for the inclusion of elemental Si. Ans. 3-4. For this feature, the Examiner finds that Ohkawa teaches the fabrication of fiber reinforced composites by electrophoretically co- depositing a mixture of various metals, such as aluminum and titanium, or of metals and metalloids, such as silicon and beryllium, which are then converted from an elemental state to a compound state (nitriding or oxidation). Id. at 4-5. The Examiner further finds that Ohkawa teaches co- deposition of other particles, such as hafnium boride with SiC particles, to tailor physical or mechanical properties to meet a desired application. Id. at 5. The Examiner concludes that it would have been obvious to incorporate Si as taught by Ohkawa into Keller’s composition comprising a metal component and an organic component “because the thermal conductivity or other physical or mechanical properties, such as oxidation resistance, electrical conductivity, overall density and coefficient of expansion, can be particularly tailored to meet a desired specification.” Id. at 6. Appellant argues that Keller discloses a composition that may contain metal carbide and metal nitride, but fails to disclose the inclusion of Si or the formation of either metal silicide or silicon carbide. Appeal Br. 4. Appellant further argues that Ohkawa discloses electrodeposition of Si and other particles into fiber preforms for formation of a ceramic, but fails to disclose a combination of Si and a refractory metal or the formation of a silicide. Id. With regard to the Examiner’s rationale for modifying Keller’s composition to include Si in view of Ohkawa, Appellant contends that this rationale is both generic, in that it refers all-inclusively to “physical and mechanical properties,” and not specific to the inclusion of Si per se. Id. at 4-5. Appellant emphasizes that Ohkawa fails to disclose any effect Si would have Appeal 2021-003944 Application 16/216,279 5 in general or in combination with Keller’s materials, and there is no evidence that Keller’s composition can be tailored to meet a particular application with Si. Id. at 5. Appellant’s arguments are persuasive of reversible error. The Examiner has the initial burden of establishing a prima facie case of obviousness based on an explicit or inherent disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Keller’s disclosure is directed to the synthesis of refractory metal ceramics, specifically, refractory metal carbide and/or refractory metal nitride compositions, and neither teaches nor suggests inclusion of Si or formation of silicides. Keller 1:16-18, 2:23-25. Although Keller teaches that the composition may include, in addition to one or more refractory metals and an organic compound, a plurality of fibers or other fillers (id. at 7:28- 31), Keller does not teach or suggest that these fibers or other fillers may be elemental Si. Instead, Keller discloses that the fibers may be carbon, ceramic, or metal. Id. Further, Keller’s examples use either carbon fibers or chopped fibers of unknown composition. Id. at 19:61-21:4, Exs. 37-41; and 25:32-27:30, Exs. 63-71. It appears that the purpose of the fiber or filler is primarily for reinforcement of the resulting article. Id. at 26:6-9; 27:30. Appeal 2021-003944 Application 16/216,279 6 On the other hand, Ohkawa teaches electrophoretic deposition to uniformly impregnate an array or preform of electrically insulating fibers with particles of carbon, metal, or ceramic substances or precursors, followed by consolidation. Ohkawa 1:66-2:6. As the Examiner finds, Ohkawa teaches that the fibers and particles are chosen to create a composite product of desired composition, and can be created by co-depositing mixtures of oxides or other ceramics. Id. at 5:42-45. As alternative materials, Ohkawa teaches co-deposition of various metals, such as aluminum and titanium, or of metals and metalloids, such as silicon and beryllium. Id. at 5:45-48. After co-deposition and consolidation, Ohkawa teaches converting these materials from elemental to a compound state, such as converting Si to SiN, or converting Al and Ti to alumina and titania. Id. at 5:48-55. Alternatively, Ohkawa teaches co-depositing other particles with SiC to tailor physical or mechanical properties to a specific application, such as employing a mixture of SiC and hafnium boride. Id. at 5:55-61. However, as Appellant contends, nowhere do Keller and Ohkawa teach or contemplate providing elemental Si in a composition in order to produce metal silicide nanoparticles embedded in a carbonaceous matrix. Indeed, Ohkawa discloses that elemental Si is co-deposited with a metalloid, such as beryllium, not a refractory metal, such that the Si can be nitrided, rather than forming a metal silicide. The only other disclosure in Ohkawa involves the use of SiC, rather than elemental Si, which also would not be available for forming a refractory metal silicide. Thus, neither Keller nor Ohkawa teaches or suggests the inclusion of elemental Si in a composition comprising a refractory metal component and an organic component as recited in claims 1, 7, and 14. Accordingly, we do not sustain the Examiner’s Appeal 2021-003944 Application 16/216,279 7 obviousness rejection of these claims, and of claims 2-6, 8-13, and 15-19, which depend therefrom. CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims 1-19 under 35 U.S.C. § 103 as unpatentable over Keller in view of Ohkawa is reversed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-19 103 Keller, Ohkawa 1-19 REVERSED