Ex Parte Barenreuter et alDownload PDFPatent Trial and Appeal BoardAug 22, 201813583715 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/583,715 11/20/2012 59582 7590 08/23/2018 DICKINSON WRIGHT PLLC 2600 WEST BIG BEA VER ROAD SUITE 300 TROY, MI 48084-3312 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Dirk Barenreuter 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 35745-00034 3077 EXAMINER MILLER, JR, JOSEPH ALBERT ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 08/23/2018 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 DIRK BARENREUTER, MARCUS KENNEDY, MARKUS KELLNER, and RALF LAMMERS Appeal2017-009947 Application 13/583,715 Technology Center 1700 Before TERRY J. OWENS, CATHERINE Q. TIMM, and LILAN REN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 1 In explaining our Decision, we cite to the Non-Final Office Action of November 17, 2016 (Non-Final), Appeal Brief of April 13, 2017 (Appeal Br.), Examiner's Answer of May 18, 2017 (Ans.), and Reply Brief of July 14, 2017 (Reply Br.). Appeal 13/583,715 Application 2017-00994 7 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the Examiner's decision to reject claims 1, 2, 7, 9--11, 16, and 18-22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to a method for coating at least a portion of an inner face of a piston ring (see, e.g., claim 1) and a method of forming a two-part oil scraper ring with a coated piston ring (see, e.g., claim 7). The coating method involves applying four layers of coatings: (1) an adhesive layer, (2) a diamond-like carbon (DLC) layer, (3) a metal-free top DLC layer, and (4) a nitride and/or carbide additional layer. Claim 1 is illustrative: 1. A method for coating at least a portion of an inner face of a piston ring, wherein the piston ring is a component of a two-part oil scraper ring including the inner face of the piston ring disposed around a spring, and the piston ring is made of cast iron or steel, including the steps of: applying at least one intermediate diamond-like carbon (DLC) layer of a-C:H:X, where X = silicon, germanium, fluorine, boron, oxygen and/or nitrogen, the intermediate DLC layer including at least one metal carbide selected from the group consisting of: WC, CrC, SiC, GeC or TiC, applying an adhesive layer of chromium and/or titanium before applying the at least one intermediate DLC layer, applying a metal-free top DLC layer of the type a-C:H to the intermediate DLC layer, and 2 Appellants identify the real party in interest as Federal-Mogul Burscheid GMBH. Appeal Br. 1. 2 Appeal 13/583,715 Application 2017-00994 7 applying at least one additional layer containing nitrides and/or carbides of chromium, titanium, aluminum and/or tungsten to the inner face of the piston ring, wherein the at least one additional layer forms a fourth layer distinct from the at least one intermediate diamond-like carbon (DLC) layer, the adhesive layer, and the metal-free top DLC layer. Appeal Br., Exhibit A 1. The Examiner rejects claims 1, 2, 7, 9--11, 16, 21, and 22 under 3 5 U.S.C. § 103(a) as obvious over Jacquet3 in view of Dubose4 (or alternatively over Dubose in view of Jacquet), claims 10 and 16 further evidenced by Umezawa. 5 Non-Final 2. The Examiner adds further prior art references to reject dependent claims 10, 16, and 18-20. The issue in the appeal focuses on the teachings of Jacquet. Specifically, the issue is: Does Jacquet teach or suggest applying a fourth coating layer? We agree with the Examiner that Jacquet would have suggested to one of ordinary skill in the art a step of applying a fourth coating layer meeting the requirements of the additional layer of the claims. In explaining our decision, we select claim 1 as representative as the issue is the same for all the claims and rejections. Appeal Br. 5-10. OPINION Jacquet teaches a piston ring coated with a layered structure. Jacquet ,r 1. The layered structure includes at least three layers, which Jacquet terms 3 Jacquet et al., US 2008/0203674 Al, published Aug. 28, 2008. 4 Dubose, US 2002/0017761 Al, published Feb. 14, 2002. 5 Umezawa et al., US 2005/0051937 Al, published Mar. 10, 2005. 3 Appeal 13/583,715 Application 2017-00994 7 a first intermediate layer, a second intermediate layer, and a diamond-like carbon (DLC) layer. Jacquet ,r,r 24--28. The Examiner relies on the fact that Jacquet exemplifies a number of different layer materials for the first intermediate layer to find that Jacquet teaches or suggests an adhesive layer of chromium and/or titanium and also teaches or suggests at least one additional layer containing nitrides and/or carbides of chromium and/or titanium. Non-Final 3, citing Jacquet ,r,r 29-- 35. As found by the Examiner, Jacquet teaches forming the first intermediate layer from a number of different materials. Jacquet ,r,r 29-31. The first intermediate layer comprises at least one element of the group IVB, VB or VIb, and "[p ]referably, the first intermediate layer comprises titanium and/or chromium as for example a titanium layer, a chromium layer, a titanium-based layer or a chromium-based layer." Jacquet ,r,r 29-30. Jacquet further explains that "[a] titanium-based layer may for example comprise a TiC layer, a TiN layer or a TiCN layer," and "[a] chromium- based layer may for example comprise a CrN layer or a Cr3C2 layer." Jacquet ,r 31. Thus, Jacquet explicitly names seven different layers, i.e., a titanium layer, a chromium layer, a TiC layer, a TiN layer, a TiCN layer, a CrN layer, and a Cr3C2 layer as useful as the first intermediate layer. Although, as argued by Appellants, Jacquet does not explicitly state that the first intermediate layer can include more than one layer (Appeal Br. 5---6; Reply Br. 2-5), we cannot agree with Appellants that Jacquet would not fairly suggest using more than one layer as found by the Examiner. In part, the Examiner reasons that: 4 Appeal 13/583,715 Application 2017-00994 7 Further, it is noted that the thickness [ of the first intermediate layer] is between 0.001 and l micron [0034]-therefore one of ordinary skill, in understanding that any number of different materials are operable in the first intermediate layer would further apply a combination of any of the number of distinct materials to form the total thickness as required. For example, one would operably apply layers of, for example only, chromium nitride and titanium carbide, wherein the layers are each, for example only, 0.05 micron, with an expectation of forming an operable first intermediate layer based on the teachings that both materials are useful and the total thickness applied is useful. Non-Final 3--4. The Examiner elaborates in the Answer: Furthermore, one of ordinary skill would surely understand that if any one of the layers were useful, then a combination of such layers would likewise be operable. As noted, Jacquet teaches that the intermediate layer is from 0.001 to l micron- since layer 32 can be anywhere in that range, one of ordinary skill would particularly understand that, for example (in arguendo ), any number of different layers of less than 1 micron could be formed together to produce a composite first intermediate layer, as long as the layers didn't exceed the maximal 1 micron. Ans. 10. The basic premise behind this reasoning is that where a reference teaches multiple materials for the same purpose, it would have been obvious to use a combination of those materials for that same purpose. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980). Although, as pointed out by Appellants, Jacquet does not explicitly disclose forming the first intermediate layer of multiple sub layers, the ordinary artisan would have understood that any combination of the 5 Appeal 13/583,715 Application 2017-00994 7 suggested layers would have performed the intended purpose of the first intermediate layer. The use of, for example, a combination of a titanium layer and a TiC layer flows logically from the teaching of the prior art. As pointed out by the Examiner, elsewhere Jacquet describes using multiple layers as a layer previously described as a single layer. Ans. 10-11; see Jacquet ,r,r 53-56 (explaining that the diamond-like carbon (DLC) layer described previously as a single layer may comprise one or more additional layers and the number of additional layers can be varied according to the desired properties of the layered structure). Appellants contend that "[i]f it were obvious to form the first intermediate layer of sublayers, or if Jacquet had intended the first intermediate layer to possibly include sublayers, that would have been disclosed, just like multiple diamond-like layers is disclosed." Reply Br. 3- 4. But this argument fails to recognize that a prior art reference is not limited to its express teachings, rather it must be considered together with the knowledge of the ordinary artisan. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994 ). Further, "[ t ]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). Appellants do not contend that the use of the two known layers together produces an unexpected result. Thus, we cannot say that Appellants have identified a reversible error in the Examiner's rejections. CONCLUSION We sustain the Examiner's rejections. 6 Appeal 13/583,715 Application 2017-00994 7 DECISION The Examiner's decision is affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § l.136(a)(l). AFFIRMED 7 Copy with citationCopy as parenthetical citation