Ex Parte Archer

Patent Trial and Appeal Board

Feb 21, 2017

12734746 (P.T.A.B. Feb. 21, 2017)

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.
12/734,746 11/02/2010 Geoffrey Archer BJS-4687-20 8062
23117 7590 02/23/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
POLYANSKY, ALEXANDER
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
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pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY ARCHER
Appeal 2016-001858
Application 12/734,7461
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BRIAN D. RANGE, and
LILAN REN, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 5, 6, 8—11, and 16. We have jurisdiction. 35
U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is ADVANCED
INTERACTIVE MATERIALS SCIENCE LIMITED. Appeal Br. 3.
Appeal 2016-001858
Application 12/734,746
STATEMENT OF THE CASE
Appellant describes the invention as relating to a hot isostatic pressing
process or hot uniaxial pressing process for producing a net or near net shape
product. Spec. Abstract. Claim 1, reproduced below with emphasis added
to certain key recitations, is illustrative of the claimed subject matter:
1. A hot isostatic pressing process or hot uniaxial pressing
process for producing a net or near net shape product, comprising
applying a diffusion filter, comprising a plurality of coating
layers of boron nitride, to a graphite former and pressing a metal
powder thereagainst,
wherein the layers of boron nitride are applied to the
surface of the graphite former by application of a slurry
prior to metal powder being arranged next to the former.
Appeal Br.2 14 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Nishio et al. US 5,250,242
(hereinafter “Nishio”)
Fisher et al. US 5,799,238
(hereinafter “Fisher”)
Ritter et al. US 5,822,853
(hereinafter “Ritter”)
REJECTIONS
The Examiner indicated that claim 12 would be allowable if rewritten
in independent form. Final Act. 8.
Oct. 5, 1993
Aug. 25, 1998
Oct. 20, 1998
2 In this decision, we refer to the Final Office Action mailed March 6, 2014
(“Final Act.”), the Appeal Brief filed April 17, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed October 8, 2015 (“Ans.”), and the Reply Brief
filed December 1, 2015 (“Reply Br.”).
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Application 12/734,746
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1, 5, 6, 8, 9, and 11 under 35 U.S.C. § 103 as
unpatentable over Fischer in view of Nishio. Final Act. 3.3
Rejection 2. Claims 10 and 16 under 35 U.S.C. § 103 as unpatentable
over Fischer in view of Nishio and further in view of Ritter. Id. at 7.
The Examiner also states that “the claimed feature ‘graphite former’
should be considered indefinite” but does not make a corresponding Section
112 rejection. Our understanding is that no Section 112 rejection is
maintained on appeal.
ANAFYSIS
We review the appealed rejections for error based upon the issues
identified by appellants and in light of the arguments and evidence produced
thereon. Cf. 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) (“it 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 and each of Appellant’s contentions,
we are not persuaded that Appellant identifies reversible error. Thus, we
affirm the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer except as otherwise noted below. We add the
following primarily for emphasis.
Rejection 1. The Examiner rejects claims 1, 5, 6, 8, 9, and 11 as
obvious over Fischer in view of Nishio. The Appellant does not separately
argue claims 5, 6, 8, 9, or 11. We therefore limit our discussion to claim 1.
3 The Examiner refers to rejection of claim 7 as well (Final Act. 3), but claim
7 was not pending at the time of that rejection and is not at issue on Appeal.
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Appeal 2016-001858
Application 12/734,746
Claims 5, 6, 8, 9, and 11 stand or fall with that claim. 37 C.F.R. §
41.37(c)(l)(iv) (2013).
The Examiner finds that Fisher teaches a method of making a metal
ceramic composite by introducing into a hot pressing die (i.e., the “graphite
former” in the parlance of claim 1) a plurality of titanium metal layers and a
plurality of composite powder layers in alternating sequence. Final Act. 3
(providing citations to Fisher). The composite powder layer could comprise
boron nitride (BN) powder. Id. at 4; Fisher 4:25—30. Figure 3 of Fisher,
reproduced below, illustrates dark bands of unalloyed titanium layers and
light bands of boron carbide particulate reinforced (where boron carbide
could be substituted for boron nitride) unalloyed titanium layers.
Figure 3 of Fisher is a photomicrograph of a transverse cross-section of
micro structure of hot forged and hot rolled laminated titanium ceramic
composite sheet made pursuant to an embodiment of Fisher. Fisher 2:59—67.
The Examiner finds that “Fisher does not specify any particular
method of application of the BN layers.” Final Act. 5. The Examiner finds,
however, that Nishio teaches producing a ceramic sintered body where a
boron nitride layer is applied by spraying, brush coating, immersing. Id.
(providing citations to Nishio). The Examiner finds that “[i]t would be
within purview of an ordinary artisan to manufacture a metal ceramic
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Appeal 2016-001858
Application 12/734,746
composite in view of Fisher and Nishio wherein boron nitride coating
material is applied to the surface of the graphite former of Fisher by
application of a slurry by spraying, brush coating or immersing as discussed
in Nishio with a reasonable expectation of success.” Id. In other words, the
Examiner uses the Nishio reference merely to establish that Fisher’s method
could be “accomplished via a slurry coating method, among others.” Ans. 5.
A preponderance of the evidence supports the Examiner’s findings and
obviousness conclusion.
Appellant argues that neither Fisher nor Nishio disclose the “prior to”
aspect of claim 1 ’s recitation “wherein the layers of boron nitride are applied
to the surface of the graphite former by application of a slurry prior to metal
powder being arranged next to the former.” Appeal Br. 8—10. Appellant’s
argument misapprehends the scope of claim 1, and in the Reply Brief,
Appellant focuses on teachings from the Specification rather than the
recitations of claim 1. See, e.g., Reply Br. 7—8. Claim 1 is a method claim
“comprising” the recited steps. The method may therefore include other
unrecited steps. Claim 1 does not exclude applying metal powder before or
at the same time as applying boron nitride. Claim 1 also does not exclude
the coating layers of boron nitride from also including metals.
Rather, claim 1 ’s “prior to” recitation only requires “metal powder
being arranged next to the former” after “the layers of boron nitride are
applied.” The Examiner finds that Fisher teaches such a method. Final Act.
3^4. For example, Fisher teaches filling a die “with alternating layers of the
unalloyed titanium powder and the composite powder starting and ending
with titanium powder layers” (Fisher 6:16—25) where the composite powder
may be a mixture of titanium and boron nitride {id. at 4:25—30). The
alternating layers of composite powder correspond to claim 1 ’s recitation of
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Application 12/734,746
“layers of boron nitride.” See Fisher Fig. 3 (showing three light bands
corresponding to composite layers). Thus, Fisher teaches claim 1 ’s
recitation: “the layers of boron nitride are applied to the surface of the
graphite former [i.e., the middle and first composite powder layers
comprising boron nitride] . . . prior to metal powder being arranged next to
the former [i.e., the ending titanium powder layer].” Appeal Br. 14 (Claims
App’x).
Appellant also argues that Nishio and Fisher are non-analogous art
and would not have been combined by a person of skill in the art. Nishio,
Fisher, and the present application, however, all relate to forming metal
composites. See, e.g., Fisher, Title; Nishio Title; Spec. 6:1—7. Fisher does
not expressly teach how its composite layer is added to the die, and the
Examiner relies on Nishio merely to show that a slurry coating method is a
typical method of adding such a layer. Ans. 5. Use of a slurry coating
method to apply Fisher’s composite layer is no more than predictable use of
a prior art element according to its established function. KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
We also note that the Examiner states that claim 1 “does not require
BN in direct contact with the former.” Ans. 4. Here, we disagree with the
Examiner. Claim 1 recites “layers of boron nitride are applied to the surface
of the graphite former”—thus the layers of boron nitride must contact the
former. The Examiner’s error in this respect is harmless, however, because
Appellant does not raise a separate argument regarding BN contacting the
former in the Appeal Brief and has therefore waived the issue on appeal.
The error is also harmless because a preponderance of the evidence
establishes that Fisher teaches that the composite layer (i.e., the layer of
boron nitride) is applied to the surface of the graphite former. Fisher 6:16—
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Application 12/734,746
25 (explaining that the former, i.e., the die, is “filled with alternating layers
of the unalloyed titanium powder and the composite powder” such that the
composite powder would at least be applied to a lateral surface of the
former).
Because Appellant does not identify reversible error, we sustain the
Examiner’s rejection of claims 1, 5, 6, 8, 9, and 11.
Rejection 2. The Examiner rejects claims 10 and 16 as obvious over
Fischer in view of Nishio and further in view of Ritter. Final Act at 7.
Appellant does not argue claims 10 and 16 separately. We therefore limit
our discussion to claim 16. Claims 10 stands or falls with claim 16. 37
C.F.R. §41.37(c)(l)(iv) (2013).
Claim 16 recites “[t]he process as claimed in claim 1 in which the
metal powder is a nickel or ferrous alloy.” Appeal Br. 15 (Claims App’x).
The Examiner finds that neither Fisher nor Nishio teaches a nickel based
alloy for the metal powder. Final Act. 8. The Examiner finds, however, that
Ritter teaches a method for hot pressing an assembly where the powder
metal could be a nickel or titanium based alloy. Id. (providing citations to
Ritter). The Examiner finds that “Ritter shows that it is conventional
practice to utilize Ni-based alloys and/or Ti-based alloys of Fisher as outer
wall powder metals in the powder compaction hot pressing (HIP) method.”
Id. The Examiner concludes that it would have been obvious to substitute
the Ti-based powder metal of Fisher for Ni-based powder metal of Ritter “in
the method of HIPing a composite of Fisher with a reasonable expectation of
success.” A preponderance of the evidence supports the Examiner’s
findings and conclusion.
Appellant argues that the Examiner has failed to establish where
motivation exists in the art to substitute Ritter’s Ni-based alloy for the
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Application 12/734,746
titanium-based alloy of Fisher. Appeal Br. 12. Appellant does not,
however, dispute any of the Examiner’s findings of fact underlying the
Examiner’s obviousness conclusion. In particular, Appellant does not
dispute the Examiner’s findings that both Fisher and Ritter teach hot press
methods (Final Act. 3, 8) and that Ritter teaches that it is conventional
practice to utilize Ni-based alloys and/or Ti-based alloys in a hot pressing
method. Id. at 8. Thus, using a nickel based alloy in conjunction with
Fisher is no more than an arrangement of old elements with each performing
the same function it had been known to perform and yielding no more than
what one would expect from such an arrangement. KSR, 550 U.S. at 417.
As such, Appellant’s cursory argument does not identify reversible error in
the Examiner’s combining of Ritter’s teachings with Fisher.
Appellant also argues that Ritter does not overcome the deficiencies
of Fisher and Nishio. Appellant’s arguments concerning Fisher and Nishio
do not identify error for the reasons explained above.
We thus sustain the Examiner’s rejection of claims 10 and 16.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims 1,
5, 6, 8—11, and 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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