Ex Parte Benkoski et al

Patent Trial and Appeal Board

Mar 23, 2018

13593047 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/593,047 08/23/2012 Jason J. Benkoski
26085 7590 03/27/2018
THE JOHNS HOPKINS UNIVERSITY APPLIED PHYSICS LAB.
OFFICE OF PATENT COUNSEL
11100 JOHNS HOPKINS ROAD
MAIL STOP 7-127
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UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
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www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2603-0383-CIP 1027
EXAMINER
NELSON, MICHAEL B
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
USPTOComm@jhuapl.edu
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JASON J. BENKOSKI, RENGASWAMY SRINIVASAN,
and JEFFREY P. MARANCHI
Appeal2017-004492
Application 13/593,047
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
SHELDON M. McGEE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004492
Application 13/593,047
Appellants appeal under 35 U.S.C. § 134 the non-final rejection of
claims 1-3, 5-9, 11-8, and 24--27. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants' invention is directed to a microcapsule disposed within a
self-healing coating system that further comprises zinc particles; a coating
system and a coated article (Spec. i-fi-18-10; claims 1, 6, 14).
Claim 1 is illustrative:
1. A plurality of individual microcapsules disposed in a self-healing
coating including zinc powder particles dispersed directly therein along
with the microcapsules, the microcapsules comprising at least a silane
coupling agent encapsulated within a volume defined by a metallic shell
that is rupturable responsive to formation of a fissure in the self-healing
coating; said silane coupling agent being configured to spontaneously
form a self-assembled monolayer on an iron oxide containing substrate
upon rupture of said one of a polymeric shell and a metallic shell,
wherein a loading amount of the individual microcapsules is below a
percolation threshold for the plurality of the individual microcapsules
such that the individual microcapsules are electrically isolated from each
other; and wherein the zinc powder particles define a zinc network
forming a sacrificial anode.
Appellants appeal the following rejections:
1. Claims 24 and 25 are rejected under 35 U.S.C. § 112, i12, as failing to
point out and distinctly claim the subject matter which applicants
regard as the invention.
2. Claims 6-9, 11-18, 24, and 25 are rejected 35 U.S.C. § 103(a) as
unpatentable over Sarangapani (US 7, 192,993 B 1 issued March 20,
2007) in view ofHancer (US 2007/0196673 Al published Aug. 23,
2007), Rucker (US 3,392,130 issued July 9, 1968), as evidenced by
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Schoen (US 6,452,564 B 1 issued Sept. 17, 2002 ), and Roteman (US
3,401,037 issued Sept. 10, 1968).
3. Claims 1-3, 5, 26, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sarangapani in view of Hancer, Rucker, as
evidenced by Schoen and Roteman and further in view of Skipor (US
2004/0007784 published Jan. 15,2004) as evidenced by AZO (AZO
Materials, Silica-Silicon Dioxide Sio2, available at
htt://www.azom.com/article.aspx? ArticleID+ 1114).
FINDINGS OF FACT & ANALYSIS
REJECTION (1): Indefiniteness
The Examiner finds that claim 24 is indefinite because Appellants do
not describe whether the 1 : 1 ratio of microcapsules to zinc particles is based
on mass, molar or volume (Non-Final Act. 2).
Appellants argue that the ordinarily skilled artisan would realize when
there is a 1: 1 ratio of microcapsules to zinc particles regardless of basis (Br.
22). Appellants contend that the language of the claim is clear to one of
ordinary skill on its face. Id.
Although Appellants argue that the claim would be clear to one of
ordinary skill in the art, Appellants have not provided any citation to the
Specification or elsewhere that shows that the 1 : 1 ratio without any basis
would be clear to an ordinarily skilled artisan. In other words, Appellants'
mere argument is insufficient to demonstrate that the claim language is clear
to one of ordinary skill in the art on its face as argued by Appellants. We
find that the only description of the 1: 1 ratio is in i-f 80 of the Specification
where it is stated that good performance generally occurs when a 1 : 1 ratio of
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microcapsules to zinc powder is present. There is no description, however,
of what basis is used to determine that ratio.
On this record, the preponderance of the evidence favors the
Examiner's finding that claims 24 and 25 fail to comply with 35 USC § 112,
ii 2.
REJECTIONS (2) and (3): Obviousness
Appellants argue the subject matter of claims 1, 6, 24, and 26 (Br.
13-19).
With respect to claim 6 and 26, Appellants contend that Sarangapani
teaches away from the using a microcapsule particle size within the claimed
range (Br. 14-15, 21). Appellants contend that Sarangapani teaches that
microcapsule particles sizes below 63 microns should not be used because
they collapse and fail. Id.
Claim 6 does not specify a microcapsule size and merely requires
either polymeric or metallic shell for the microcapsule. Claim 26 includes a
range of microcapsule sizes from "25 µm to about 50 µm." Claim 26 does
not require that the microcapsule shell is metallic.
Contrary to Appellants' argument, Sarangapani teaches that the
microcapsule particle sizes range from 50 to 200 microns (Sarangapani, col.
4, 11. 14--16). Sarangapani teaches a preference for microcapsules having a
63 micron particle size especially for microcapsules having a gelatin outer
shell, but such is not a teaching away from the 50 micron particles size for
the microcapsules using urea formaldehyde as the outer shell (Sarangapani,
col. 7, 11. 1-5; col. 6, 11. 7-10).
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With regard to claims 1 and 6, Appellants further argue the
combination of Sarangapani and Hancer is based upon impermissible
hindsight (Br. 16). Appellants contend that Hancer is directed to a
lubricating coating for magnetic hard drives and is not analogous art to
Sarangapani's coating composition for steel substrates (Br. 15). Appellants
argue that Hancer forms the coating directly on the drive surface and does
not teach putting the silane material into microcapsules (Br. 16). Appellants
contend that there is no objective reason to combine Hancer's lubricating
composition with Sarangapani's self-healing coating (Br. 16). Appellants
argue that Hancer does not teach that silanes provide better corrosion
protection than the materials already provided in Sarangapani's coating. Id.
Appellants contend that Sarangapani fails to teach providing galvanic
protection to the coating (Br. 15).
Appellants' arguments attack the references individually instead of
addressing what the combined teachings would have suggested to the
ordinarily skilled artisan. Hancer does not teach that the silane coating
composition only serves as a lubricant. Rather, Hancer teaches that the
coating also serves as a "protective thin film" (Hancer i-f 9). The Examiner
finds that Hancer's teaching regarding providing a protective film to a
metallic substrate is reasonably pertinent to Appellants' invention and is in
the same field of endeavor as Sarangapani (i.e., providing protective,
anticorrosive coatings on metal substrates) (Ans. 17-18). Appellants do not
file a Reply Brief to respond to these findings of the Examiner. The
Examiner correctly finds that Appellants' contentions that Sarangapani does
not teach galavanic protection in the coating or Hancer does not teach
placing the silane in a microcapsule amounts to an improper piecemeal
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attack on the references. The proper analysis is what the combined
teachings would have suggested to the ordinarily skilled artisan. In the
present case, the Examiner has established by a preponderance of the
evidence that the combined teachings of Sarangapani and Hancer would
have suggested using Hancer's silane material as a protective coating for
metal substrates.
Appellants argue that Rucker and Sarangapani provide different
techniques for providing a protection coating but do not teach to combine
the microcapsules and zinc particles in a coating (Br. 17-18). Appellants
contend that the art is silent regarding adding the microcapsules to a level so
that the amount is below the percolation threshold of the microcapsules (Br.
18).
The Examiner provides a reasoned analysis of why one of ordinary
skill in the art would have combined Rucker' s zinc particles in the coating
with Sarangapani' s microcapsule coating: to provide corrosion resistance to
the coating via galvanic interaction (Non-Final Act 6; Ans. 19-20). The
Examiner finds that the benefits of Sarangapani' s microcapsule coating and
Rucker' s zinc particle coating are not mutually exclusive and the addition of
zinc particles to Sarangapani's coating would have imparted beneficial
corrosion protection to the coating (Ans. 20). Regarding the percolation
threshold limitation, the Examiner relies on Schoen to teach that the
percolation threshold is measure of the amount of particles that may be
added before the coating becomes conductive on a macro level (Non-Final
Act. 6). The Examiner finds that Roteman teaches that urea formaldehyde
as disclosed by Sarangapani is an insulative material. Id. Based upon these
teachings, the Examiner finds that any amount of microcapsules in
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Sarangapani would meet the claimed percolation threshold because the
microcapsule would have been insulative. Id. Appellants do not respond to
these findings in a Reply Brief.
Regarding claim 24, Appellants argue that none of the prior art
teaches the 1: 1 ratio of microcapsules to zinc particles (Br. 19). Appellants
disagree with the Examiner that the amounts of microcapsules to zinc
particles are optimizable. Id. Appellants argue that Rucker teaches adding
85% zinc particles to the coating composition so modifying Sarangapani to
have a 1: 1 ratio of microcapsules to zinc particles would require a
substantial redesign of the art teachings and thus, would have been
nonobvious. Id.
Contrary to Appellants' arguments, the Examiner finds that
Sarangapani and Rucker each discloses that the amounts of the
microcapsules or zinc particles, respectively, are important variables to
control to affect the self-healing property and galvanic protection,
respectively, of the coating (Non Final Act. 8-9; Ans. 21-22). The Examiner
is not suggesting to bodily incorporate Rucker' s preferred embodiment that
uses 85% zinc particles in the coating. Rather, based on the teachings of the
references, the preponderance of the evidence supports the Examiner's
determination that it would have been obvious to optimize the relative
amounts of zinc particles and microcapsules to a 1: 1 ratio as result-effective
variables.
Claim 11 under rejection (3) differs from claim 6 in that claim 1
requires the microcapsule shell be "metallic" (claim 1 ). The Examiner
1 Claim 1 recites that the microcapsule has a "metallic shell" in the first
instance of that term in the claim. However, later in claim 1 the claim recites
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added the Skipor reference to the combination of prior art under rejection (2)
to address the metallic shell limitation (Non-Final Act. 11-12). The
Examiner finds that Skipor teaches using silica as a microcapsule shell
material, which the AZO references discloses that silica is a metal oxide
(Non-Final Act. 12). The Examiner concludes that it would have been
obvious to substitute Skipor' s silica microcapsule shell for Sarangapani' s
urea formaldehyde microcapsule shell as a suitable alternative (Non-Final
Act. 12).
Appellants argue that silica is a metalloid (Br. 20). Appellants
contend that metalloids exhibit both metal and non-metal properties. Id.
Appellants contend that Skipor and AZO do not cure the previously argued
deficiencies with regard to Sarangapani, Hancer, Rucker, and Schoen. Id.
As noted supra, we do not find that there are any deficiencies with
respect to the Examiner's combination of Sarangapani, Hancer, Rucker, and
Schoen. Appellants' argument regarding silica being a metalloid fails to
address whether silica would be considered "metallic" within the meaning of
the claim. Indeed, Appellants appear to concede that silica has metallic
properties by the definition of a metalloid provided by Appellants.
Appellants do not direct us to any definition or description of the adjective
"metallic" in the Specification that would exclude silica.
On this record, we affirm the Examiner's§ 103(a) rejection over
Sarangapani in view of Hancer, Rucker, Schoen, and Roteman, and the
"said one of a polymeric shell and a metallic shell." We read the claim as
did the Examiner as limited to a metallic shell because of the limiting first
instance of metallic shell in the claim. In the event of further prosecution,
claim 1 should be modified to remove the polymeric shell limitation.
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§ 103(a) rejection over Sarangapani in view of Hancer, Rucker, Schoen,
Roteman, Skipor, and AZO.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
ORDER
AFFIRMED
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