Ex Parte Benkoski et alDownload PDFPatent Trial and Appeal BoardMar 23, 201813593047 (P.T.A.B. Mar. 23, 2018) Copy Citation 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 LAUREL, MD 20723-6099 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. 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 2 Appeal2017-004492 Application 13/593,047 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 3 Appeal2017-004492 Application 13/593,047 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). 4 Appeal2017-004492 Application 13/593,047 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 5 Appeal2017-004492 Application 13/593,047 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 6 Appeal2017-004492 Application 13/593,047 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 7 Appeal2017-004492 Application 13/593,047 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. 8 Appeal2017-004492 Application 13/593,047 § 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 9 Copy with citationCopy as parenthetical citation