Ex Parte Bi et al

Board of Patent Appeals and Interferences

Feb 17, 2006

09715935 (B.P.A.I. Feb. 17, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

____________

Ex parte Xiangxin Bi, Ronald J. Mosso, Shivkumar Chiruvolu, Sujeet Kumar,
James T. Gardner, Seung M. Lim, and William E. McGovern
____________

Appeal No. 2006-0289
Application No. 09/715,935

____________

ON BRIEF
____________

Before GARRIS, DELMENDO, and FRANKLIN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 (2004) from the examiner’s
final rejection of claims 18 through 54 and 56-61 (final Office action mailed on November
23, 2004), which appear to be (based on our review of the electronic record of the
application) all of the claims pending in the above-identified application.
The subject matter on appeal relates to a method for coating a substrate (e.g., for
eventual formation of optical devices or electrical devices). In particular, the invention is
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said to relate “to highly uniform particle coatings on substrates and to efficient ways of
forming highly uniform particle coatings that can be further processed to form glasses and
other highly uniform coatings on a substrate.” (Specification at 1, lines 9-16.) Further
details of this appealed subject matter are recited in representative claims 18, 22, 27, 30,
31, 33, 34, 39, 42, 43, 45, 52, and 61 reproduced below:
18. A method of coating a substrate, the method comprising:
reacting a reactant stream within a flow by directing a radiation
beam at the reactant stream to produce within the flow a product stream
comprising particles downstream from the radiation beam, wherein the
particles are produced by the reaction, wherein the flow passes through
the radiation beam, and wherein the reaction is driven by energy from the
radiation beam;
directing the flow of the product stream to a substrate; and
moving the substrate relative to the flow of the product stream to
coat the substrate.

22. The method of claim 18 wherein the reactant stream is
elongated in a direction along the propagation of the radiation beam.

27. The method of claim 18 wherein the reactant inlet moves
relative to the substrate such that motion of the reactant inlet sweeps the
product particles across the substrate.

30. A method of forming a glass coating comprising heating a
particle coating at a temperature and for a period of time sufficient to fuse
the particles into a glass and where the particle coating is formed
according to the method of claim 18.

31. A method of forming an optical component on a substrate
surface, the method comprising removing a portion of a glass coating
formed according to the method of claim 30 to form the optical component.

33. A method of coating a substrate comprising:
generating, within a flow, a reactant stream with a cross section
perpendicular to the propagation direction characterized by a major axis
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and a minor axis, the major axis being at least a factor of two greater than
the minor axis;
reacting the reactant stream to form a product stream of particles
within the flow; and
directing the flow of the product stream of particles to a substrate,
wherein flow of the product stream is maintained other than by pumping
on the substrate.

34. The method of claim 33 wherein at least about 25 grams per
hour are deposited onto the substrate.

39. A method of coating a substrate having a diameter greater than
about 5 cm, the method comprising:
reacting, within a flow, a reactant stream to form, within the flow, a
product stream comprising product particles, wherein the particles are
produced by the reaction; and
depositing simultaneously particles from the flow of the product
stream over the entire surface of the substrate and wherein at least about
5 grams per hour of particles are deposited onto the substrate, wherein
flow of the product stream is maintained other than by pumping on the
substrate.

42. A method of coating a substrate comprising:
simultaneously generating multiple product streams each within a
corresponding flow of a reactant stream by chemical reaction driven by a
light beam; and
depositing the multiple product streams simultaneously on a
moving substrate at sequential locations on the substrate.

43. The method of claim 18 wherein the reactant stream comprises
a silicon precursor.

45. The method of claim 33 wherein the reactant stream comprises
a silicon precursor.

52. The method of claim 39 wherein the reactant stream comprises
a silicon precursor.

61. A method of coating a surface of a substrate, the method
comprising:
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reacting, within a flow, a reactant stream to produce, within the
flow, a product stream comprising particles wherein the particles are
produced by the reaction;
directing the flow of the product stream to the substrate, wherein
the substrate does not permit gas to pass through; and
moving the substrate relative to the flow of the product stream to
deposit at least about 5 grams per hour onto the substrate surface.

The examiner relies on the following prior art references as evidence of
unpatentability:

Carey, Jr. 4,011,067 Mar. 8, 1977
Rao et al. 5,874,134 Feb. 23, 1999
(Rao)
Bi et al. 5,958,348 Sep. 28, 1999
(Bi)
Borner et al. 6,032,871 Mar. 7, 2000
(Borner) (filed Jul. 15, 1998)
Tran et al. 6,074,888 Jun. 13, 2000
(Tran) (filed Aug. 18, 1998)
Lehman 6,097,144 Aug. 1, 2000
(filed Oct. 28, 1998)
Akedo et al. 6,280,802 B1 Aug. 28, 2001
(Akedo) (filed Jul. 26, 1999)
Kambe et al. WO 99/23189 May 14, 1999
(Kambe)(published PCT
application)

The appealed claims stand rejected under 35 U.S.C. § 103(a) as follows:
A. claims 18 through 29, 33 through 42, 44, 46 through 51,
56, 57, and 59 through 61 as unpatentable over the
combined teachings of Akedo, Bi, and Rao (examiner’s
answer mailed June 16, 2005 at 4-5);
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B. claims 30, 43, 45, 52, and 58 as unpatentable over the
combined teachings of Lehman, Akedo, Bi, Rao, and Kambe
(id. at 5-7);
C. claims 18 through 29, 33 through 52, and 56 through 61
as unpatentable over the combined teachings of Akedo,
Kambe, and Rao (id. at 7-8);
D. claim 30 as unpatentable over the combined teachings of
Lehman, Akedo, Kambe, and Rao (id. at 8);
E. claims 31 and 32 as unpatentable over the combined
teachings of Tran, Lehman, Akedo, Bi, Rao, and Kambe
(id. at 9);
F. claims 31 and 32 as unpatentable over the combined
teachings of Tran, Lehman, Akedo, Kambe, and Rao (id.
at 9-10);
G. claims 18 through 29, 33 through 42, 47 through 51, 53,
54, 56, 57, and 59 through 61 as unpatentable over the
combined teachings of Borner, Bi, and Rao (id. at 10-
11);
H. claims 42 through 54 as unpatentable over the combined
teachings of Borner, Akedo, Bi, and Rao (id. at 11-12);
and
I
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. claims 18 through 22, 26 through 29, 33 through 42, 44, 46
through 51, 53, and 54 as unpatentable over the combined
teachings of Bi and Carey (id. at 12).1We affirm in part.
Specifically, we affirm: rejection A as it applies to claims 18
through 26, 28, 29, 33 through 41, 44, 46 through 51, 56, 57, and
59 through 61; rejection B in its entirety; rejection C as it
applies to claims 18 through 26, 28, 29, 33 through 41, 43
through 52, and 56 through 61; rejections D through F in their
entirety; rejection G as it applies to claims 18 through 26, 29,
33 through 42, 47 through 51, 53, 54, 56, 57, and 59 through 61;
and rejection H in its entirety. However, we reverse: rejections
A and C as they apply to claims 27 and 42; rejection G as it
applies to claim 27; and rejection I in its entirety.2

1 The examiner expressly withdrew the final rejection under 35 U.S.C. § 103(a)
of claims 18-20, 23, 25, 27-29, 39-41, 56, and 58-61 over Rao in view of United States
patent 5,744,777 issued to Bernecki et al. on Apr. 28, 1998. (Answer at 3.)

2 In their principal brief, the appellants provide reasonably specific arguments for
the separate patentability of certain claims. Accordingly, we will discuss these
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Rejection A. Claims 18-29, 33-42, 44, 46-51, 56, 57, & 59-61:
Akedo, Bi, & Rao

Claims 18-21, 23, 25, 28, 29, and 44
For rejection A, the appellants argue claims 18 through 21,
23, 25, 28, 29, and 44 as a group. We select claim 18 as
representative of this group.

arguments separately to the extent that the brief complies with 37 CFR §
41.37(c)(vii)(2005)(effective September 13, 2004).

The examiner correctly finds (answer at 4-5) that Akedo
describes a method of forming a film of particular ultrafine
particles (e.g., metals or ceramics having a particle size in the
range of 10 nm to 5 μm) on a substrate (i.e., coating a
substrate) comprising the steps of spraying ultrafine particles
onto a substrate and, before the ultrafine particles collide with
the substrate, irradiating the ultrafine particles and substrate
with an ionic, atomic, or molecular beam or low-temperature
plasma or other high speed, high energy beam of energy atoms or
molecules. (Column 2, line 41 to column 3, line 12; column 4,
lines 39-50; Figure 1.) According to Akedo, the coating process
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involves moving the substrate relative to the ultrafine particle
stream. (Column 2, line 61 to column 3, line 12; Figure 1,
reference numeral 1.)
Thus, Akedo differs from the subject matter of appealed
claim 18 in only one respect. Akedo does not teach that the
particles are produced by passing a reactant stream within a flow
of radiation beam, as recited in appealed claim 18. This
difference notwithstanding, we share the examiner’s determination
(answer at 4-5) that one of ordinary skill in the art would have
found the subject matter of appealed claim 18 as a whole obvious
within the meaning of 35 U.S.C. § 103(a).
Bi3 teaches an apparatus for making nanoparticles with
average diameters of 100 nm or less, wherein gaseous reactant
streams are activated by applying a radiation beam to form the
nanoparticles. (Column 1, line 36 to column 2, line 24.)
According to Bi, the apparatus “makes efficient use of resources
at high production capacity without sacrificing quality of the
resulting particles” and “is appropriate for the commercial
production of particles...” (Column 2, lines 16-24.) Given the

3 Bi is identified in the present specification as disclosing an apparatus suitable
for the appellants’ claimed invention in the case where the particle production and
coating operation are performed in separate chambers (specification at 31-38).
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collective teachings of Akedo and Bi, we agree with the examiner
that one of ordinary skill in the art would have been led to use
the particles produced according to Bi’s process in Akedo’s
coating process with the reasonable expectation of obtaining the
advantages (efficient use of resources at high production
capacity without sacrificing quality) disclosed in Bi.4
The appellants argue that “the references do not teach that
the steps [of Akedo] are burdensome in any way” and thus the
“[e]xaminer is pointing to a solution without a problem to
solve.” (Appeal brief at 12.) The appellants’ argument is
unpersuasive because it appears to be based on an incorrect legal
test for obviousness under 35 U.S.C. § 103(a). The pertinent
“‘question is whether there is something in the prior art as a
whole to suggest the desirability, and thus the obviousness, of
making the combination.’” In re Fulton, 391 F.3d 1995, 1200, 73
USPQ2d 1141, 1145 (Fed. Cir. 2004)(quoting In re Beattie, 974
F.2d 1309, 1311, 21 USPQ2d 1040, 1042 (Fed. Cir. 1992)).

4 The examiner cites Rao as teaching “an in-line method.” (Answer at 5.)
Accordingly, with respect to appealed claim 18, Rao is cumulative to the combined
teachings of Akedo and Bi.

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As discussed above, Bi suggests that the particle production
process described therein offers the desirability of efficient
use of resources at high production capacity without sacrificing
quality. We determine that this desirability is sufficient to
support the examiner’s conclusion that one of ordinary skill in
the art would have been led to combine Akedo and Bi so as to
arrive at the invention recited in appealed claim 18.
The appellants contend that “[t]he particles deposited
directly from a reactive flow can form a coating with distinct
properties that would not be expected to be reproduced from a
two-step process.” (Emphasis added; appeal brief at 12-13.) We
note, however, that appealed claim 18 is broad enough to
encompass both types of processes, and that the combination of
Akedo and Bi suggests a process in which particle production and
coating are performed in separate chambers.5 This claim
construction is consistent with the description found in the
present specification, which informs one skilled in the relevant
art that the particles may be produced in a chamber separate from
the coating chamber. (Specification at 31, lines 11-13.) In re

5 In this regard, the appellants acknowledge: “Actually, the Bi patent teaches a
continuous process. Similarly, the Akedo apparatus can be made continuous by putting
in a continuous feed for the particle reservoir.” (Appeal brief at 14.)
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Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir.
2004)(“[T]he PTO gives a disputed claim term its broadest
reasonable interpretation during patent prosecution.”); In re
Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997) (“[T]he PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill.”); In
re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)(“During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow.”).

Furthermore, while the appellants’ brief includes a
conclusory statement that “[i]t has been shown that the claimed
coating process can result in improved optical materials, as
further described in copending U.S. Patent application serial
number 10/854,019,” such a conclusory statement falls far short
of demonstrating unexpected results commensurate in scope with
the degree of patent protection desired. When, as here, a prima
facie case of obviousness exists, the burden of proof is shifted
to the applicants to show that the claimed invention would not
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have been obvious (e.g., by presenting objective evidence of
unexpected results commensurate in scope with the claims). See,
e.g., In re Mayne, 104 F.3d 1339, 1343, 41 USPQ2d 1451, 1455
(Fed. Cir. 1997).
The appellants argue that the combined teachings of the
references do not result in an operable system because Bi teaches
an operating pressure of 10 to 500 Torr (column 4, lines 65-67)6
while Akedo “teaches a particular configuration with an
aerosolizing chamber 21 leading to a nozzle to form an ultrafine
particle stream” (column 6, lines 35-48). (Appeal brief at 15.)
This argument is unpersuasive because the appellants fail to
identify any acceptable reasoning on why the particles produced
according to Bi’s method, at atmospheric pressure or otherwise,
cannot be used as a starting material in Akedo’s aerosolizing
chamber 21 prior to performing Akedo’s coating process.

6 Bi actually teaches: “Preferred chamber pressures range from very low
vacuum pressures to about 1 atm, and more preferably from about 10 torr to about 500
torr.”
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We have considered the appellants’ arguments in the reply
brief filed on August 16, 2005 but find them cumulative to those
in the principal brief. The appellants acknowledge that laser
pyrolysis as disclosed in Bi (as well as Kambe discussed below)
was well known since the early 1980s. (Reply brief at 2.)
Relying on various literature references (id.), the appellants
urge that these prior art references “describe a fixed substrate
and a batch process with a static atmosphere in which the coating
condenses on the substrate rather than being directed toward the
substrate.” The appellants’ argument, however, does not address
the thrust of the examiner’s rationale (answer at 15), which is
that the nanoparticles produced according to Bi (and Kambe) may
be used as the starting material in Akedo. We share the
examiner’s view that diverting the nanoparticles output of Bi
(and Kambe) to facilitate the supply of Akedo’s starting
material(s) would have required nothing more than ordinary skill
because Akedo teaches the necessary conditions. That is, after
diverting the nanoparticles from the outputs of Bi (and Kambe),
the state of the flow of nanoparticles can be routinely adjusted
to match the expressly disclosed requirements of Akedo.
The appellants allege that the “extra manipulations of the
particle [in Akedo] may or may not work with a reactive flow” and
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that the “[t]he particles in a reactive flow are not the same as
an aerosol of preformed particles.” (Reply brief at 5.) The
appellants’ allegation underscores the appellants’
misunderstanding of the scope of the appealed claims, in
particular claim 18. As pointed out above, appealed claim 18
reads on a method in which reaction and coating are performed in
separate chambers, wherein the process encompasses unrecited
steps as well as the use of additional equipment to facilitate
the combination of Bi and Akedo.
For these reasons, we uphold the examiner’s rejection of
claims 18 through 21, 23, 25, 28, 29, and 44 on this ground.
Claims 22, 24, 26, 33, 35-38, 46-49, & 57
For rejection A, the appellants argue claims 22, 24, 26, 33,
35 through 38, 46 through 49, and 57 as a group. We select claim
22 as representative of this group.7
The examiner finds that Bi expressly teaches that the
reactant stream is elongated in a direction along the propagation
of the radiation beam, as recited in appealed claim 22. (Answer
at 15.) The appellants admit as much. (Appeal brief at 18.)

7 Claim 22 further limits claim 18 by reciting that the “reactant stream is
elongated in a direction along the propagation of the radiation beam.”
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Thus, the combination of Akedo and Bi would have necessarily
resulted in a process in which the particles are produced using a
reactant stream that is elongated in a direction along the
propagation of the radiation beam.
The appellants urge that Akedo does not disclose a method
for coating a substrate comprising reacting an elongated reactant
stream and that Bi does not disclose a substrate coating process.
(Appeal brief at 18.) The examiner, however, is relying on the
collective teachings of the references to arrive at a conclusion
of obviousness. In re Keller, 642 F.2d 413, 426, 208 USPQ 871,
882 (CCPA 1981)(“[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based
on combinations of references.”).
The appellants argue that “an elongated reactant stream
naturally turns into an elongated product stream.” (Reply brief
at 7.) This argument lacks merit because appealed claim 22 does
not limit the shape of the “product stream” in the coating step.
For these reasons, we also uphold the examiner’s rejection
of claims 22, 24, 26, 33, 35 through 38, 46 through 49, and 57 on
this ground.
Claim 27
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Claim 27 further limits claim 18 by reciting that “the
reactant inlet moves relative to the substrate such that motion
of the reactant inlet sweeps the product particles across the
substrate.”
The examiner asserts: “Moving the substrate relative to the
reactant stream (as taught by Akedo) and moving the reactant
stream relative to the substrate are functional equivalents.”
(Answer at 15.) In counter argument, the appellants note that
none of the applied references teach or suggest the feature
specified in appealed claim 27.
We must agree with the appellants on this issue. The
examiner does not identify any acceptable scientific reasoning or
evidence establishing that “[m]oving the substrate relative to
the reactant stream (as taught by Akedo) and moving the reactant
stream relative to the substrate are functional equivalents.”
Absent proof, we cannot affirm. In re Lee, 277 F.3d 1338, 1343,
61 USPQ2d 1430, 1433 (Fed. Cir. 2002) (“‘The factual inquiry
whether to combine references [or to modify a prior art teaching]
must be thorough and searching.’...It must be based on objective
evidence of record. This precedent has been reinforced in myriad
decisions, and cannot be dispensed with.”).
Claims 34, 39-41, 50, 51, 56, 60, & 61
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For rejection A, the appellants argue claims 34, 39 through
41, 50, 51, 56, 60, and 61 as a group. We select claim 61 as
representative of this group.
Independent claim 61 further defines the invention, relative
to appealed claim 18, as follows: “moving the substrate relative
to the flow of the product stream to deposit at least about 5
grams per hour onto the substrate surface.”
Akedo teaches (column 3, lines 16-23):
[I]n the deposit of ultrafine particle materials, the
relative speed of the ultrafine particles in the
direction perpendicular to the substrate should be in
the range from 3 m/sec to 300 m/sec, as this is
adequate for an impact pressure of the degree required
for contact among the ultrafine particles and with the
substrate. Thus, at this speed, dense deposition upon
the substrate is possible with a high adhesion
strength.

Furthermore, for a particular type of ultrafine particles, Akedo
teaches that a film having a thickness of 100 to 500 μm could be
obtained at a film formation speed of 5 to 20 μm/min. (Column
12, lines 16-18.)
These teachings in Akedo would have indicated to one of
ordinary skill in the art that the film deposition rate is a
result-effective variable in coating processes. Thus, it would
have been obvious to a person having ordinary skill in the art to
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arrive at an optimum or workable range of deposition rates,
including the here claimed deposition rate, by nothing more than
routine experimentation. In re Boesch, 617 F.2d 272, 276, 205
USPQ 215, 219 (CCPA 1980)(“[D]iscovery of an optimum value of a
result effective variable in a known process is ordinarily within
the skill of the art.”); In re Aller, 220 F.2d 454, 456, 105 USPQ
233, 235 (CCPA 1955)(“[W]here the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover
the optimum or workable ranges by routine experimentation.”).
Accordingly, we affirm the examiner’s rejection of claims
34, 39 through 41, 50, 51, 56, 60, and 61 on this ground as well.
Claim 42
42. A method of coating a substrate comprising:
simultaneously generating multiple product streams
each within a corresponding flow of a reactant stream
by chemical reaction driven by a light beam; and
depositing the multiple product streams
simultaneously on a moving substrate at sequential
locations on the substrate.

The examiner’s position with respect to claim 42 is that
“duplication of parts is not patentable” and that “[u]sing a
second apparatus of Bi would double the particle production.”
(Answer at 15.) The appellants, on the other hand, point out
that there is no evidence to support the examiner’s position.
(Appeal brief at 22.)
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We agree with the appellants that there is no evidence to
support the examiner’s position. Moreover, the examiner’s
“duplication of parts” theory to “double the particle production”
does not take into account the claim limitation “depositing the
multiple product streams simultaneously on a moving substrate at
sequential locations on the substrate” (emphasis added).
Because the examiner’s position is not based on objective
evidence and fails to account for a crucial claim limitation, we
cannot affirm.
Rejection B. Claims 30, 43, 45, 52, & 58 over Lehman, Akedo, Bi,
Rao, & Kambe

Claims 30 and 43
For rejection B, the appellants argue claims 30 and 43 as a
group. We select claim 43 as representative of this group.
Claim 43 further limits appealed claim 18 by reciting that
the reactant stream comprises a silicon precursor.
Akedo teaches that in order for a film made according to the
prior art to retain the crystal structure of the original
ultrafine particle and improve its characteristics, it was
necessary to reheat the material to a high temperature either
during or after deposition but that this heat treatment posed
certain problems. (Column 2, lines 9-29.) Akedo’s method is
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said to overcome this problem in that it forms films of ultrafine
particles whereby even if a stream of ultrafine particle collides
with the substrate at low speed, a strong bond is achieved
between the ultrafine particles and the substrate at a low
temperature state, so that the crystal properties of the
ultrafine particles are maintained and a thin film with superior
density and excellent adhesion is formed. (Column 2, lines 30-
38.)
Lehman teaches a method for making a cathode ray tube (CRT)
envelope comprising an inner glass layer made of a suitable
browning-resistant material, such as lead-free glass, and an
outer glass layer made of a material with good X-ray absorbing
properties, such as lead-containing glass. (Column 2, lines 7-
13.) Lehman further states that the outer layer may be a
continuous part of the CRT envelope with the inner layer
comprising a lead-free glass coating deposited thereon. (Column
2, lines 16-18.) The lead-free glass composition is said to
include oxides of SiO2, B2O3, K2O, and BaO. (Column 3, line 57 to
column 4, line 18.) According to Lehman, the process of forming
the lead-free glass composition comprises, inter alia, grinding
the composition to a frit to reduce the particle size to
preferably 200-325 mesh, mixing with solvent, depositing the
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composition on a substrate using any suitable deposition method
(e.g., dipping or spraying), and melting the frit. (Column 5,
line 48 to column 6, line 32.)
Kambe teaches that laser pyrolysis, which is the same
technology described in Bi (column 1, line 36 column 2, line 27;
column 2, lines 57-64), may be used to produce various nanoscale
particles, including silicon dioxide and metal oxide. (Pages 5-
9. Appropriate precursor compounds are said to include silicon
compounds. (Page 7, lines 6-14.)
Neither Akedo nor Bi teaches the use of a reactant stream
comprising silicon precursor as recited in appealed claim 43.
Nevertheless, the appellants do not dispute the examiner’s
determination that Akedo suggests that the coating process
described therein can be applied to oxide particles in general
and that Kambe establishes that materials including metal oxides
and silica, which are used for producing glass, may be produced
by laser pyrolysis (the same technique described in Bi). (Answer
at 6-7; appeal brief at 24-26; Akedo at column 5, lines 1-8;
Kambe at 5-9; Bi at column 2, lines 57-60.) Thus, we concur with
the examiner that one of ordinary skill in the art would have
found it prima facie obvious to modify Lehman’s glass coating
process to include the use of laser pyrolysis to form silicon
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dioxide nanoparticles as shown in Bi and Kambe as well as the use
of Akedo’s coating method with the reasonable expectation of
obtaining the advantages described in Bi (improved properties of
nanoparticles and efficient use of resources at high production
capacity without sacrifice in quality of the particles as
disclosed in column 1, lines 10-25 and column 2, lines 16-24) and
Akedo (formation of films of ultrafine particles whereby even if
a stream of ultrafine particle collides with the substrate at low
speed, a strong bond is achieved between the ultrafine particles
and the substrate at a low temperature state, so that the crystal
properties of the ultrafine particles are maintained and a thin
film with superior density and excellent adhesion is formed as
disclosed in column 2, lines 30-38).
The appellants’ sole argument against the examiner’s
rejection of appealed claims 30 and 43 in the appeal brief (pages
25-26) is that Akedo teaches away from the claimed invention
because Akedo is directed to crystalline materials whereas Lehman
is directed to glass (an amorphous material). We cannot agree
with the appellants. Akedo states that the “crystal properties”
of the particles are maintained. This statement does not
indicate that the particles have a crystalline structure. To the
contrary, the reference teaches that the surfaces of the
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ultrafine particles are made amorphous. (Column 2, lines 41-60.)
Because Kambe teaches that amorphous particles are formed by
laser pyrolysis under certain conditions (page 21, lines 27-32),
the prior art references would not have taught away from the
claimed invention.
Accordingly, we uphold the examiner’s rejection of claims 30
and 43 on this ground.
Claim 45
For claim 45, the appellants rely on the same arguments made
against rejection A with respect to claims 22, 24, 26, 33, 35
through 38, 46 through 49, and 57. (Appeal brief at 26.)
However, we find these arguments unpersuasive for the same
reasons discussed above.
Claims 52 and 58
For rejection B, the appellants group claims 52 and 58
together. The appellants rely on the same arguments against
rejection A with respect to claims 34, 39 through 41, 50, 51, 56,
60, and 61. (Appeal brief at 26-27.) However, we find these
arguments unpersuasive for the same reasons discussed above.

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Rejection C. Claims 18-29, 33-52, & 56-61 over
Akedo, Kambe, & Rao

For rejection C, the appellants acknowledge that “[t]he
apparatus and methodology in the Kambe application are comparable
to the corresponding apparatus and methodology in the Bi patent.”
(Appeal brief at 28.) In view of the similarities between Bi
and Kambe, the appellants rely on the same arguments against the
combination of Akedo, Bi, and Rao (i.e., rejection A).
Accordingly, for reasons that correspond to those set forth
in our discussion of rejection A, we affirm the examiner’s
rejection of claims 18 through 26, 28, 29, 33 through 46, 48
through 52, and 56 through 61 but reverse the rejection of claims
27 and 42.
Rejection D. Claim 30 over Lehman, Akedo, Kambe, & Rao
The 35 U.S.C. § 103 rejection of claim 30 as unpatentable
over Lehman, Akedo, Kambe, and Rao is cumulative to the rejection
of the same claim as unpatentable over Lehman, Akedo, Bi, Rao,
and Kambe as discussed above in rejection B.
With respect to this ground of rejection, the appellants
urge that Lehman does not teach or suggest particle formation or
particle deposition and that Lehman does not make up for the
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deficiencies in the combination of Akedo, Kambe, and Rao with
respect to base claim 18. We note, however, that Kambe and Akedo
teach particle formation and particle deposition, respectively.
Again, the examiner’s rejection is based on a combination of
references including Lehman, not Lehman alone. In re Keller, 642
F.2d at 426, 208 USPQ at 882.
For these reasons, we uphold the examiner’s rejection on
this ground.
Rejection E. Claims 31 & 32 over Tran, Lehman, Akedo, Bi, Rao, &
Kambe

For rejection E, the appellants argue claims 31 and 32
together. Claim 31, which depends from claim 30, which in turn
depends from claim 18, recites “removing a portion of a glass
coating formed according to the method of claim 30 to form the
optical component.”
The examiner cites Tran to establish that it was known to
produce optical components using photolithography. (Answer at
9.) Specifically, Tran teaches a method comprising the steps of:
depositing an etch stop layer onto a semiconductor substrate;
depositing an optical component layer onto the etch stop layer;
coating the entire surface of the optical component layer with a
photoresist material; applying a photoresist mask to the
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photoresist material on the optical component layer; selectively
etching away the optical component layer to form at least one
optical column; forming a pedestal for each of the optical
columns by selectively etching away the etch stop layer; and
finally polishing each of the optical columns, thereby forming
monolithic optical components. (Column 1, lines 45-56.) Tran
further teaches that once the optical component is formed, a
crystal mixture of antireflectivity coating which contains
magnesium fluoride, aluminum oxide, hafnium fluoride, silicon
dioxide, and silicon nitride is deposited over the entire surface
of each optical component by electron beam evaporation,
sputtering, chemical vapor deposition, or other similar process.
(Column 5, lines 35-45.) The examiner’s basic position is that
it would have been obvious to one of ordinary skill in the art to
use the coating method suggested by the collective teachings of
Lehman, Akedo, Bi, Rao, and Kambe in Tran’s fabrication method in
order to obtain all of the advantages disclosed in each of these
references, as discussed above. (Answer at 9.)
The appellants do not rely on any of the limitations recited
in appealed claim 31 or 32. Instead, the appellants refer to the
same arguments in support of their position that Akedo, Bi, and
Rao do not render the subject matter of appealed claim 18, the
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base claim, prima facie obvious. (Appeal brief at 29-30.)
However, we find these arguments unpersuasive for the same
reasons discussed above in our discussion of rejection A.
Accordingly, we affirm this rejection as well.
Rejection F. Claims 31 & 32 over Tran, Lehman, Akedo, Kambe, &
Rao

This rejection is identical to rejection E except the
examiner no longer applies Bi, which is cumulative to the relied
upon Kambe reference. Because the appellants rely on the same
arguments made against rejection E, we affirm this rejection for
the same reasons discussed above in rejection E.

Rejection G. Claims 18-29, 33-42, 47-51, 53, 54, 56, 57, & 59-61
over Borner, Bi, & Rao

Claims 18-21, 23, 25, 28, & 29
For rejection G, the appellants argue claims 18 through 21,
23, 25, 28, and 29 as a group. (Appeal brief at 31-35.) We
select claim 18 as representative of this group.
Borner teaches an electrostatic coating method comprising
electrically charging powder particles of a coating material with
a different electrical charge and coating a workpiece (substrate)
with the differently charged powder particles by means of at
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least two electrostatic application devices (e.g., corona spray
gun). (Column 1, lines 26-34; Figures 1-3.) According to
Borner, one of the differently charged particles may be mica
(silicate). (Column 2, lines 56-65.)
The examiner acknowledges that Borner’s method differs from
the invention recited in appealed claim 18 in that the prior art
does not disclose how the coating material is made. (Answer at
10.) Nevertheless, the examiner holds (id.):
Bi teaches that nanoparticles exhibit exploitable
chemical and mechanical properties that are different
from larger sized particles, such as increased
smoothness and thinner coatings (background). The
apparatus taught by Bi is advantageous to use in order
to produce these nanoparticles due to its efficient use
of resources (column 2, lines 17-25). Therefore, it
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to
use the apparatus of Bi to produce the particle streams
of Börner. By doing so, one [of ordinary skill in the
art] would reap the benefits of having an efficient way
of producing nano-sized particles such that a smoother
and/or thinner coating is achieved.

We are in complete agreement with the examiner’s findings of
fact and conclusion of law. As we discussed previously, Bi
provides the requisite motivation, suggestion, or teaching to
produce nanoparticles, which would be inclusive of synthetic mica
nanoparticles, using laser pyrolysis. When mica nanoparticles
produced in accordance with Bi’s method are used as a coating
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material in Borner, one of ordinary skill in the art would have
reasonably expected to obtain all of the advantages suggested in
Bi (column 1, lines 10-25; column 2, lines 16-24).
The appellants argue that Borner is nonanalogous art and
therefore cannot be combined with Bi. (Appeal brief at 31.) We
agree with the examiner’s analysis (answer at 18).
The two separate tests for determining whether a prior art
reference is analogous are as follows: (1) whether the art is
from the same field of endeavor as that of the inventor,
regardless of the problem addressed; and (2) if the reference is
not within the inventor’s endeavor, whether the reference is
reasonably pertinent to the particular problem with which the
inventor is involved. In re Bigio, 381 F.3d at 1325, 72 USPQ2d
at 1211-12; In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992).
In this case, Borner is analogous art because it satisfies
the same field of endeavor test. Borner’s disclosure relates to
coating substrates with particles. Similarly, the appellants’
specification states that the invention relates to “highly
uniform particle coatings on substrates.”8 Thus, Borner’s

8 Contrary to the appellants’ belief, the invention disclosed in the present
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teachings are in the same field of endeavor (coating substrates
with particles) as the appellants’ invention.
The appellants urge that one of ordinary skill in the art
would not combine Borner with Bi because the former “relies on
skill in the spray gun art” whereas the latter “discloses a
complex apparatus for performing sophisticated production of
highly uniform nanoparticles.” (Appeal brief at 32.) This
argument is unpersuasive. A person having ordinary skill in the
art of coating would have known that some production process
would have to be practiced to make the particles used in the
coating method. Having such knowledge, no additional skill would
have been necessary to determine that laser pyrolysis is one
known method for producing such particles. Likewise, a person
having ordinary skill in the art of nanoparticle production would

specification is not limited to “precision coating art” (appeal brief at 32).

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have known that nanoparticles may be used for a variety of
applications including coating processes.9

9 Were we to accept the appellants’ logic, the hairbrush in In re Bigio cited supra,
would have been patentable simply because a person having ordinary skill in the art of
hairbrushes, which may be made of polymers, is unfamiliar with polymer chemistry.
The appellants allege that “the particle flow from the Bi
apparatus cannot be arbitrarily attached to other apparatuses
without possibly adversely altering particle production.”
(Appeal brief at 34.) However, one of ordinary skill in the art
would have avoided any problems by following the teachings of Bi.
One of ordinary skill in the art would have understood that the
particles may be used as Borner’s starting material after the
particles are successfully produced.
Claims 22, 24, 26, 33, 35-38, 45-49, & 57
For rejection G, the appellants group claims 22, 24, 26, 33,
35 through 38, 45 through 49, and 57 together. We select claim
22, which depends from claim 18 and recites that “the reactant
stream is elongated in a direction along the propagation of the
radiation beam,” as representative of this group.
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The appellants' only argument is that Borner does not teach
or suggest a particle stream elongated in one dimension. (Appeal
brief at 35-36.) However, appealed claim 22 does not recite that
the particle stream must be elongated. Rather, appealed claim 22
recites that “the reactant stream is elongated in a direction
along the propagation of the radiation beam.” Bi teaches this
feature. (Column 1, lines 36-39.)
Accordingly, we uphold this ground of rejection as to these
claims.
Claim 27
Claim 27 depends from claim 18 and recites that “the
reactant inlet moves relative to the substrate such that motion
of the reactant inlet sweeps the product particles across the
substrate.”
The examiner does not respond to the appellants’ argument
(appeal brief at 36) that the limitations of appealed claim 27
are not found in any of the applied prior art references. For
this reason, we reverse the examiner’s rejection of this claim on
this ground.
Claims 34, 39-41, 50-52, & 56
For rejection G, the appellants group claims 34, 39 through
41, 50 through 52, and 56 together. We select claim 34, which
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depends from claim 33 and recites “wherein at least about 25
grams per hour are deposited onto the substrate,” as
representative of this group.
The appellants argue that the applied prior art references
do not expressly teach the recited coating rate. (Appeal brief
at 37.) The appellants are correct. We note, however, that
Borner teaches the importance of coating thickness. (Column 1,
lines 6-18.) Because the coating process must be conducted
within a reasonable period of time, the coating rate would
necessarily be a result-effective variable. Hence, it would have
been obvious to a person having ordinary skill in the art to
arrive at an optimum or workable range of deposition rates,
including the here claimed deposition rate, by nothing more than
routine experimentation. In re Boesch, 617 F.2d at 276, 205 USPQ
at 219; In re Aller, 220 F.2d at 456, 105 USPQ at 235.
Claims 42, 53, & 54
For rejection G, the appellants argue claims 42, 53, and 54
together as a group. We select claim 42, which recites
“depositing the multiple product streams simultaneously on a
moving substrate at sequential locations on the substrate,” as
representative of this group.
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The appellants argue that the applied prior art references
do not teach depositing multiple product streams simultaneously
at sequential locations on the substrate. (Appeal brief at 38.)
We note, however, that Borner shows the simultaneous application
of two separate streams, which are not exactly coincident.
(Figure 1.) Appealed claim 42 reads on a deposition step using
Borner’s stream arrangement.
Rejection H. Claims 42-54 over Borner, Akedo, Bi, & Rao

For this ground of rejection, the appellants rely on the
same arguments as those made against rejection A as well as on
the argument that Borner is nonanalogous art. (Appeal brief at
39.) We find these arguments unpersuasive for reasons already
discussed above. Accordingly, we affirm this rejection as well.
Rejection I. Claims 18-22, 26-29, 33-42, 44, 46-51, 53, & 54 over
Bi & Carey

We cannot sustain this rejection.
Carey teaches room air filters. (Column 1, lines 19-22.)
This reference (air filtration) is not in the same field of
endeavor as the appellant’s invention (coating processes). Nor
is filtration of air reasonably pertinent to one of the problems
with which the present invention is concerned. Thus, Carey
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cannot properly be characterized as analogous art. In re Clay,
966 F.2d at 659, 23 USPQ2d at 1060.
For these reasons, the examiner’s rejection on this ground
is reversed.
Summary
In sum, we affirm the examiner’s rejections under 35 U.S.C.
§ 103(a) of: claims 18 through 26, 28, 29, 33 through 41, 44, 46
through 51, 56, 57, and 59 through 61 as unpatentable over the
combined teachings of Akedo, Bi, and Rao; claims 30, 43, 45, 52,
and 58 as unpatentable over the combined teachings of Lehman,
Akedo, Bi, Rao, and Kambe; claims 18 through 26, 28, 29, 33
through 41, 43 through 52, and 56 through 61 as unpatentable over
the combined teachings of Akedo, Kambe, and Rao; claim 30 as
unpatentable over the combined teachings of Lehman, Akedo, Kambe,
and Rao; claims 31 and 32 as unpatentable over the combined
teachings of Tran, Lehman, Akedo, Bi, Rao, and Kambe; claims 31
and 32 as unpatentable over the combined teachings of Tran,
Lehman, Akedo, Kambe, and Rao; claims 18 through 26, 28, 29, 33
through 42, 47 through 51, 53, 54, 56, 57, and 59 through 61 as
unpatentable over the combined teachings of Borner, Bi, and Rao;
and claims 42 through 54 as unpatentable over the combined
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teachings of Borner, Akedo, Bi, and Rao. We reverse, however,
the examiner’s rejections under 35 U.S.C. § 103(a) of: claims 27
and 42 as unpatentable over the combined teachings of Akedo, Bi,
and Rao; claim 27 as unpatentable over the combined teachings of
Borner, Bi, and Rao; and claims 18 through 22, 26 through 29, 33
through 42, 44, 46 through 51, 53, and 54 as unpatentable over
the combined teachings of Bi and Carey.
The decision of the examiner is affirmed in part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a)(1)(iv).
AFFIRMED IN PART

Bradley R. Garris )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
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)
Beverly A. Franklin )
Administrative Patent Judge )

rhd/lp

PETER S. DARDI
PATTERSON THUENTE SKAAR & CHRISTENSEN, P.A.
4800 IDS CENTER
80 SOUTH 8TH ST
MINNEAPOLIS MN 55402-2100

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