Ex Parte Dourdeville

Patent Trial and Appeal Board

Jan 31, 2018

12528704 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/528,704 02/11/2010 Theodore A. Dourdeville 121350-00502/W-514-US3 6103
13871 7590 02/02/2018
WOMBLE BOND DICKINSON (US) LLP / Waters
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEODORE A. DOURDEVILLE
Appeal 2016-001816
Application 12/528,7041
Technology Center 3700
Before STEFAN STAICOVICI, KEN B. BARRETT, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Theodore A. Dourdeville (Appellant) appeals under 35 U.S.C.
§ 134(a) from the Examiner’s decision (entered Sept. 12, 2014, hereinafter
“Final Act.”) rejecting claims 13-15, 23, and 25.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Waters Technologies
Corporation. Appeal Br. 2.
2 Claims 1-12, 16-22, and 24 have been canceled. Appeal Br. 22-23
(Claims App.).
Appeal 2016-001816
Application 12/528,704
INVENTION
Appellant’s invention relates “to chromatography apparatus, and, in
particular, high-pressure liquid-chromatography instruments.” Spec. 1.
Claim 13 is independent and illustrative of the claimed invention, and
reads as follows:
13. A rotary-shear-seal valve, comprising:
a stator assembly comprising
an external-plumbing interface portion comprising
titanium, and defining at least two tubing ports; and
a gasket comprising titanium and diffusion bonded
to the external-plumbing interface portion, wherein the
gasket defines a fluid circuit for each of the tubing ports,
an outer end of each fluid circuit being in fluid
communication with a corresponding one of the tubing
ports, the fluid circuits including a titanium surface layer
coating comprising at least one of TiN, TiCN, or TiAIN
along walls that define one or more fluid paths.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 13-15 and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Johnson (US 6,852,291 Bl, iss.
Feb. 8, 2005), Beerling (US 2008/0142479 Al, pub. June 19,
2008), and MacDonald (US 2004/0207074 Al, pub. Oct. 21,
2004).
II. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Johnson, Beerling, MacDonald, and
Hartshome (US 6,748,975 B2, iss. June 15, 2004).
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Appeal 2016-001816
Application 12/528,704
ANALYSIS
Rejection I
Claim 13 is the only independent claim. See Appeal Br. 22-23
(Claims App.). The claim is drawn to a “rotary-shear-seal valve” and
Appellant’s arguments focus on the gasket limitation to distinguish the
invention from the cited prior art. Id. at 7-10. More specifically, the
recitation for a titanium gasket diffusion bonded to the external-plumbing
interface portion,
wherein the gasket defines a fluid circuit for each of the tubing
ports, an outer end of each fluid circuit being in fluid
communication with a corresponding one of the tubing ports,
the fluid circuits including a titanium surface layer coating
comprising at least one of TIN, TiCN, or TiAIN along walls that
define one or more fluid paths.
Id. at 7 (emphasis added). Appellant argues the prior art does not disclose a
fluid circuit with a titanium surface layer coating along the interior walls
forming the fluid circuit, which defines a fluid path through the interior of
the claimed device. Id. at 7-10.
The Examiner relies paragraphs 5, 8, and 27 of MacDonald to show
prior knowledge of this limitation. Final Act. 3-4. MacDonald, at
paragraph 5, states the disclosed invention “includes process steps where
titanium MEMS structures or surfaces can be converted to titanium carbide
(TiC), titanium boride (TiB) and/or titanium nitride (TiN), using ion
implantation.” Paragraph 8 of MacDonald teaches,
devices already designed for the SCREAM process can be
duplicated in the metal MEMS process, creating the same device
functionality but with the devices being made out of titanium or
titanium-based materials having flat surfaces. These devices
include, but are not limited to, wire arrays, fluid channels,
microscale parts, sensors, heaters, etc.
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Appeal 2016-001816
Application 12/528,704
Lastly, in paragraph 27, MacDonald notes, “[rjeleased beams and other
structures fabricated in [the described] manner from titanium can be treated,
as by ion implantation ... to obtain desired physical characteristics.” With
this background information, and, in particular, paragraph 8 of MacDonald,
the Examiner concludes, “[i]t would have been obvious for one of ordinary
skill in the art at the time the invention was made to have used such a TiN
coating with the fluid channels of Johnson et al, as modified, to similarly
provide for an inert surface or use in a high heat or high wear application.”
Final Act. 3.
Appellant acknowledges MacDonald teaches a coating on an exterior
surface, but argues a skilled artisan would not understand MacDonald as
teaching a TiN coating along an interior surface of a gasket, which defines a
fluid pathway therethrough (i.e., the fluid circuits including a titanium
surface layer coating along the walls that define one or more fluid paths).
Appeal Br. 7-10. As support, Appellant highlights MacDonald discloses
using ion implantation to create the titanium surface layer coating. Id. at 8-
10. Because of the limited range of this method, Appellants asserts ion
implantation could not create a layer along the entire length of a circuit that
passes through the interior of a gasket. Id. at 18-19 (citing Ex. B of Feb.
2014 Response and Ex. D of Sept. 2014 Response).
The Examiner does not dispute ion implantation has a limited range,
but instead finds MacDonald discloses ion implantation can treat the surface
layer of fluid channels in a titanium gasket and “a routineer in the art would
readily understand that ion implantation would be effective to create TiN in
the walls of grooves 70 of Johnson, as modified [by the teachings of
Beerling].” Ans. 4-6. The Examiner’s rationale suggests a skilled artisan
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Appeal 2016-001816
Application 12/528,704
would have known to surface coat the titanium circuit fluid path formed in
the device before the diffusion bonding process is performed, which would
result in a coated circuit fluid path through the device after the diffusion
bonding process is performed. See id. 4-6.
The problem, Appellant argues, is that the Examiner’s rationale is
premised on it being established that the process of ion implantation creates
a surface layer coating that could survive the diffusion bonding process. See
Reply Br. 8-10. Although the prior art may disclose a titanium surface layer
coating on an exterior surface, Appellant emphasizes the prior art does not
evidence any teaching of diffusion bonding of a fully or partially coated
titanium surface. Id. at 8. Appellant disputes the premise that performing
the diffusion bonding process after applying the surface layer coating was a
known and viable option to skilled artisans. Id. at 9-10.
Appellant represents the diffusion bonding process requires the
mating surfaces to be “highly purified” and contends a skilled artisan would
recognize that the purification steps would damage the surface coating and,
thus, would be considered unusable. Id. Furthermore, Appellant asserts a
skilled artisan would not apply a TiN surface coating before the diffusion
process because “the nitrogen dopant may mitigate into the interior of the
titanium plate or may diffuse into the vacuum.” Id. at 10. Because
“[diffusion bonding generally requires the application of heat/pressure
during which the TiN coating may break down or may interfere with the
bonding process,” Appellant argues, “it is not merely a simple substitution to
use the teaching of Beerling’s Ti diffusion bonding for a teaching of
diffusion bonding involving a TiN interface.” Therefore, according to
Appellant, the Examiner concludes mistakenly that MacDonald evidences a
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Appeal 2016-001816
Application 12/528,704
skilled artisan would have known to use ion implantation to create a titanium
surface layer coating on a fluid circuit that passes through a gasket. Id. at
10-11.
Appellant’s argument is persuasive. Although the evidence shows a
skilled artisan would know to use ion implantation to create a TiN coating, a
preponderance of the evidence does not establish the same skilled artisan
would have had a reasonable expectation of success with using diffusion
bonding to bond the gasket of Johnson, as modified by Beerling and
MacDonald, because of the resulting interaction between the TiN coating
and the heating, pressure, and vacuum parameters of the diffusion bonding
process. We agree with Appellant that the diffusion bonding process requires
“highly purified” mating surfaces and, thus, a skilled artisan would
recognize that the purification steps would damage the TiN surface coating.
Without any evidence showing diffusion bonding could be used successfully
with TiN surface layer coating on the internal walls of a channel passing
through a titanium device, the Examiner’s rationale suggests hindsight. As a
result, the Examiner’s rationale explaining the obviousness of the claimed
combination in view of Johnson, Beerling, and MacDonald lacks a rational
underpinning. Therefore, we do not sustain the Examiner’s rejection of
claim 13, as well as, claims 14, 15, and 23 depending therefrom.
Rejection II
Claim 25 depends from claim 13. The Examiner does not rely on
Hartshome to cure the deficiency with the rejection of claim 13. Therefore,
for the same reasons discussed above (see supra Rejection I), we do not
sustain the rejection of claim 25.
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Appeal 2016-001816
Application 12/528,704
DECISION
The Examiner’s decision to reject claims 13-15, 23, and 25 is
reversed.
REVERSED
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