Ex parte Chilson

Board of Patent Appeals and Interferences

Apr 13, 1999

08091030 (B.P.A.I. Apr. 13, 1999)

Application for patent filed July 14, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DENNIS CHILSON
____________
Appeal No. 95-4733
Application No. 08/091,0301
____________
HEARD: April 5, 1999
____________
Before OWENS, WALTZ, and LIEBERMAN, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1 and 8 as amended
subsequent to the final rejection, along with finally rejected
dependent claims 2-7 and 9-15. Applicant submitted an
amendment dated Aug. 4, 1994 (Paper No. 6), after the final
Appeal No. 95-4733
Application No. 08/091,030
2
rejection, which amended claims 1 and 8. This amendment was
entered by the examiner and has overcome the rejection under
the second paragraph of 35 U.S.C.
§ 112 regarding the claimed term “ballistic defeat
capability” (see the Advisory Action dated Aug. 22, 1994,
Paper No. 8). Claim 16, the only other claim in this
application, stands withdrawn from further consideration by
the examiner as being drawn to a nonelected invention (Brief,
page 1).
According to appellant, the invention is directed to an
improved ballistic composite material comprising a high
strength ballistic steel having a borosilicate glass coating
fused to the surface of the steel (Brief, page 2). Claim 1 is
illustrative of the subject matter on appeal and is reproduced
below:
1. A high-strength, high toughness composite material
comprising:
an air hardened steel element having a normalization
temperature of approximately 1650°F and a composition
consisting essentially of:
0.20 - 0.30 wt.% Carbon,
0.80 - 1.20 wt.% Manganese,
Appeal No. 95-4733
Application No. 08/091,030
The final rejection of claims 8-15 under the first2
paragraph of 35 U.S.C. § 112 has been withdrawn by the
examiner (Answer, page 3).
3
3.25 - 4.00 wt.% Nickel,
1.25 - 2.00 wt.% Chromium,
0.25 - 0.50 wt.% Molybdenum,
0.20 - 0.50 wt% Silicon,
0.04 max. wt% Sulfur,
0.04 max. wt% Phosphorous, and
the balance iron;
said composite material further comprising
a borosilicate glass coating fused to a surface of said steel
element over at least a portion of said steel element, whereby
said portion of said composite material has a V50 value which
is greater than a V50 value of the steel element alone.
The examiner relies upon the following references as
evidence of obviousness:
Dickinson 3,379,582 Apr. 23, 1968
Rion 4,110,487 Aug. 29, 1978
Okai et al. (Okai) 5,037,478 Aug. 6, 1991
Claims 1 through 15 stand rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim that which appellant regards as the invention
(Answer, paragraph bridging pages 3-4). Claims 1 through 152
Appeal No. 95-4733
Application No. 08/091,030
4
stand rejected under 35 U.S.C. § 103 as unpatentable over Okai
or Rion in view of Dickinson (Answer, pages 4 and 6, a
combination of rejections “C” and “D”). We reverse all of the
examiner’s rejections for reasons which follow.
OPINION
A. The Rejection under § 112, Second Paragraph
It is the examiner’s position that the relative phrase
“greater than” in claims 1 and 8 is indefinite (Answer, page
4). The examiner does not present any reasons for this
statement in the Answer but notes in the final rejection
(Paper No. 4) that “[t]his term [”greater than”] is relative
and has not been defined in the specification.” (Page 2, Paper
No. 4).
Appellant submits that a V50 value (probable ballistic
limit) is a “readily quantifiable property” and there is
absolutely no merit in asserting that the term “greater than”
is indefinite when used as a comparator for the V50 values of
the coated and uncoated steel (Reply Brief, page 3).
The legal standard for definiteness under paragraph two
of
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Application No. 08/091,030
5
§ 112 is whether a claim reasonably apprises those of skill in
the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994). “The definiteness of the
language employed must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and the
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.”
In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA
1976). The initial burden of presenting a prima facie case of
unpatentability rests with the examiner. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
We determine that the examiner has not met this initial
burden. The examiner has not presented any reasoning or
evidence why one of ordinary skill in this art would not have
been apprised of the scope of the appealed claims. The
examiner has not presented any reasoning or evidence why the
artisan would not have been able to compare the V50 values of
a steel element alone with the fused glass steel composite
material and determine if the composite material had a V50
value “greater than” the steel element alone. Although the
Appeal No. 95-4733
Application No. 08/091,030
6
term “greater than” has not been defined in the specification,
the normal meaning of this term is well known and, in
conjunction with the comparative showings of V50 values on
pages 5 and 12 of the specification, would have apprised the
artisan of the scope of appealed claim 1.
Accordingly, the rejection of claims 1-15 under the
second paragraph of 35 U.S.C. § 112 is reversed.
B. The Rejections under § 103
The composite material of appealed claim 1 comprises an
air hardened steel element of a specified composition with a
borosilicate glass fused to a surface of the steel element.
The examiner states that “Okai discloses articles
comprising a steel substrate coated with a layer comprising
borosilicate glass.” (Answer, page 4, emphasis added). The
examiner submits that Okai provides the glass coating to give
the steel substrate improved corrosion resistance (Id.). Thus
the examiner concludes that
Since Okai explicitly discloses applying a layer
comprising borosilicate glass to high strength
steel to impart thereto corrosion resistance, it
would have been obvious to one having ordinary skill
in the art to employ, as the high strength steel,
Appeal No. 95-4733
Application No. 08/091,030
It is not contested by appellant that Dickinson discloses3
the steel composition recited in the claims on appeal. See
the Brief, page 2, and the specification, page 4.
7
that disclosed by Dickinson. (Answer, paragraph3
bridging pages 4-5).
The examiner does not explain in the Answer why the
coating of Okai would have rendered obvious the “fused”
borosilicate glass coating on the steel element as recited in
appealed claim 1. The examiner, in the final rejection,
states that “[t]he term ‘fused’ is a process limitation and is
not being given patentable weight.” (Page 2, Paper No. 4).
However, all limitations recited in the claims must be given
effect. In re Angstadt, 537 F.2d at 501, 190 USPQ at 217.
The examiner, on page 5 of the Answer, improperly attempts to
shift the burden to appellant to show that a “fused”
borosilicate glass coating produces better results than the
painting or coating of Okai. As noted previously, the initial
burden of establishing a prima facie case of unpatentability
rests with the examiner. In re Oetiker, supra. The
examiner has not presented any reasoning or evidence that the
artisan would have reasonably believed that the “coating” of
Okai would be the same or substantially the same as the
Appeal No. 95-4733
Application No. 08/091,030
Okai discloses that the steel substrate is selected from4
steels including "high strength steel" (column 6, lines 32-
35).
8
“fused” product of appealed claim 1. The examiner has not
shown that the pigment or coating of Okai undergoes a heat
treatment similar to the heat needed to “fuse” the layers of
the product recited in appealed claim 1. See In re Best, 562
F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
The examiner also has not shown or explained why the
teachings of the applied prior art should be combined in the
proposed manner. “Obviousness cannot be established by
combining the teachings of the prior art to produce the
claimed invention, absent some teaching, suggestion or
incentive supporting the combination. [Citations omitted].”
In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed. Cir.
1990). The examiner states that Okai adds a glass layer to a
steel substrate to impart corrosion resistance (Answer, page4
4) but no teaching, suggestion or motivation is given by the
examiner for substituting the high strength steel of Dickinson
for the substrate of Okai. The examiner does not point to any
disclosure or teaching in Dickinson regarding a corrosion
Appeal No. 95-4733
Application No. 08/091,030
Rion does teach that the first or base glass layer5
"fuses" with a substrate such as steel (abstract, Figure 1,
column 2, lines 21-43, and column 3, lines 12-41).
9
problem or any other suggestion for the proposed combination
with Okai.
Similarly, the examiner does not present any teaching,
suggestion or motivation to support the proposed combination
of Rion and Dickinson. Rion teaches a dual coat, coherent5
ceramic layer overlying a substrate where the dual coat
comprises a first coat of an amorphous glass adherent or fused
to the substrate and a second coat of a glass coherent with
the first coat. The first coat is selected so that the
reaction (fusing) and stabilizing is completed to form a
stable base for the second coat (column 3, lines 4-34). The
ultimate dual coat ceramic layer is applied over kitchen or
lavatory appliances (column 4, lines 43-46). The examiner has
stated that “[t]o select the old and well known steel
disclosed by Dickinson would have been well within the purview
of the ordinary artisan in order, for example, to exploit
Dickinson’s steels [sic, steel’s] high strength
characteristics” (Answer, sentence bridging pages 6-7).
Appeal No. 95-4733
Application No. 08/091,030
10
However, the examiner has not shown or established any
teaching, suggestion, or motivation to make the proposed
combination. In re Bond, supra. The examiner has not
established why the artisan would have been motivated to
employ the high strength steels of Dickinson as the substrate
in the kitchen or lavatory appliances of Rion.
For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness in
view of the disclosures and teachings of the applied prior
art. In view of this determination, we need not address the
sufficiency of the rebuttal evidence presented by appellant in
the Chilson Declaration under 37 CFR § 1.132 (attachment to
Paper No. 6 dated Aug. 4, 1994 see the Brief, pages 17-18).
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed.
Cir. 1987). Accordingly, the rejection of claims 1 through 15
under 35 U.S.C. § 103 as unpatentable over Okai or Rion in
view of Dickinson is reversed.
Appeal No. 95-4733
Application No. 08/091,030
11
The decision of the examiner is reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
lp
Appeal No. 95-4733
Application No. 08/091,030
12
KERKAM, STOWELL, KONDRACKI & CLARKE
TWO SKYLINE PLACE
SUITE 600
5203 LEESBURG PIKE
FALLS CHURCH, VA 22041
Leticia
Appeal No. 95-4733
Application No. 08/091,030
APJ WALTZ
APJ OWENS
APJ LIEBERMAN
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: July 25, 2000
Draft Final
3 MEM. CONF. Y N
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PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT