Ex Parte Eitzinger

Patent Trial and Appeal Board

Jun 29, 2016

12735016 (P.T.A.B. Jun. 29, 2016)

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.
12/735,016 06/09/2010 Guenter Eitzinger EITZINGER - 2 PCT 8366
25889 7590 06/29/2016
COLLARD & ROE, P.C.
1077 NORTHERN BOULEVARD
ROSLYN, NY 11576
EXAMINER
HERNANDEZ-DIAZ, JOSE
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
06/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GUENTER EITZINGER
____________

Appeal 2015-001627
Application 12/735,016
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 3–10. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. Method of producing an abradable polymer coating
(5), optionally containing at least one solid lubricant, on a
surface of teeth (7, 8) of a metal toothed element (1, 2) for
setting a tooth flank clearance (4) between the teeth (7, 8) of
two meshing toothed elements (7, 8), whereby the abradable
polymer coating (5) is applied to at least part of a surface of the
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teeth (7) of at least one toothed element (7, 8), wherein the
surface to be coated is activated in an oxygen plasma prior to
applying the polymer coating (5) and the polymer coating (5) is
applied directly to this activated surface.

Appellant requests review of the following rejections from the
Examiner’s Final Action (see Appeal Brief, generally):
I. Claims 1 and 6 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kollmann (US 2004/0049920 A1, published March 18,
2004), Kim (Kim et al. Surface modification for hydrophilic property of
stainless steel treated by atmospheric-pressure plasma jet. Surface and
Coatings Technology Vol. 171 pages 312–316 (2003)) and Suman (US
2003/0086804 A1, published May 8, 2003).
II. Claims 3 and 4 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kollmann, Kim, and Schutze (Schutze et al. The
Atmospheric-Pressure Plasma Jet: A Review and Comparison to Other
Plasma Sources. IEEE Transactions on Plasma Science, Vol. 26, No. 6,
December 1998).
III. Claim 5 rejected under 35 U.S.C. § 103(a) as unpatentable over
Kollmann, Kim, Suman and Shipston (US 5,702,771, issued December 30,
1997).
IV. Claims 7 and 8 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kollmann, Kim, Suman, Schutze and Frautschi (US
2004/0234703 A1, published November 25, 2004).
V. Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over
Kollmann, Kim, Suman, Schutze, Frautschi and Austin (US 3,879,216,
issued April 22, 1975).1
VI. Claim 10 rejected under 35 U.S.C. § 103(a) as unpatentable
over Kollmann, Kim, Suman, and Kochanek.

1 As acknowledged by both Appellant and the Examiner, Austin is the
correct reference to be cited in this rejection statement. App. Br. 23–24;
Ans. 10.
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OPINION

Prior Art Rejections
Rejection I (Claim 1)2, 3
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejection under 35 U.S.C. §
103(a) for the reasons presented by the Examiner and add the following for
emphasis.
Independent claim 1 is directed to a method of applying an abradable
polymer coating on a surface of teeth of a metal toothed element by first
activating the surface in an oxygen plasma prior to directly applying the
polymer coating.
The Examiner found Kollmann teaches a method of obtaining a
desired tooth flank backlash between two interlocking toothed gears by
applying a coating that differs from the claimed invention in that Kollmann
does not teach that the gear surface is activated in a plasma prior to applying
the polymer coating. Final Act. 3; Kollmann ¶¶ 23, 25, 26, 32. The
Examiner found Kim teaches surface modification of stainless steel using
atmospheric pressure plasma jet with oxygen gas [oxygen plasma] to

2 For Rejection I, Appellant presents arguments only for independent claim 1
and relies on these arguments to address dependent claim 6. See Appeal
Brief, generally. Accordingly, we limit our discussion to claim 1 and claim
6 stands or falls with claim 1.
3 A discussion of Suman is unnecessary for disposition of this rejection.
This reference was cited to teach the criticality of the adhesion between the
metal surface and an abradable coating. We find the reference duplicative
because this teaching is included in the disclosure of Kollmann. Kollmann
¶¶ 22, 33. Moreover, Appellant does not contest the Examiner’s findings
regarding Suman.
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produce hydrophobic or hydrophilic surfaces on metals, plastics, glasses or
polymers with high degree of adhesion properties between different kinds of
materials, such as metal-polymer or metal-metal combinations. Final Act. 3;
Kim Abstract, 312, 315. The Examiner determined it would have been
obvious to one skilled in the art to use the surface activation step of Kim in
the coating process of Kollmann in view of Kim’s teachings. Final Act. 3–4.
Appellant argues the prior art, as represented by Kollmann, teaches as
necessary the use of primers such as phosphatizing coats to impart a higher
surface roughness to the surface to be coated so as to obtain a better bond
between the tooth surface and coating. App. Br. 10. Appellant additionally
argues the Examiner used impermissible hindsight in combining the
references because the combined teachings, even with Kim’s pretreatment,
would require the use of a primer. App. Br. 15–16.
We are unpersuaded by these arguments and agree with the
Examiner’s determination of obviousness. Final Act. 3–4; Ans. 13. As
noted by the Examiner, Kollmann discloses the use of a phosphatizing
coating as a preferred embodiment. Ans. 13; Kollmann ¶ 33. As also noted
by the Examiner, Kim discloses a well-known alternative for achieving
surface modification of a metal surface using an oxygen plasma to enhance
the adhesion of metal surfaces to polymer coating. Final Act. 3; Kim 315.
Thus, modifying Kollmann’s method to incorporate the well-known surface
treatment alternative of Kim would achieve a desired enhancement in the
adhesion between the abradable coating and the at least part of a surface of
the teeth of at least one toothed element of Kollmann with predictable results
and a reasonable expectation of success. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure [or method]
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already known in the prior art that is altered by the mere substitution of one
element [or step] for another known in the field, the combination must do
more than yield a predictable result.” (citing United States v. Adams, 383
U.S. 39, 50–51 (1966)); In re Fout, 675 F.2d 297, 301 (CCPA 1982)
(“Express suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.”); In re Mayne, 104 F.3d 1339,
1340 (Fed. Cir. 1997) (“Because the applicants merely substituted one
element known in the art for a known equivalent, this court affirms [the
rejection for obviousness].”). Appellant has not adequately explained why
one skilled in the art, using no more than ordinary creativity, would not have
been capable of adapting Kim’s oxygen plasma surface treatment step to
enhance the adhesion of abradable coating onto a metal surface. See In re
Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of
one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969).
While Appellant argues the Examiner’s rejection did not address the
claimed limitation of applying the polymer coating directly to the activated
surface, we agree with the Examiner’s determination that, even assuming
arguendo Kollmann’s phosphatization pretreatment was necessary, one
skilled in the art would have replaced the phosphatization step of Kollmann
in favor of the plasma treatment step of Kim, thus resulting in direct
application of the abradable coating to the plasma treated surface. App. Br.
14; Ans. 17.
Appellant argues Kim is not directed to an abradable coating while
Kim is concerned with the high degree of adhesion property in applications
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that want coatings that are resistant to delamination like the field of
automobile painting. App. Br. 11–12, Kim 312, 315.
We are also unpersuaded by this argument. As noted by the
Examiner, both Kollmann and Kim are directed to providing strong adhesion
between metal surfaces and polymeric coating. Ans. 14–16; Kollmann ¶ 33;
Kim 312, 315. Appellant has not adequately explained why the abradability
of Kollmann’s coating detracts from the combined teachings of Kollmann
and Kim. Appellant again has not adequately explained why one skilled in
the art, using no more than ordinary creativity, would not have been capable
of adapting Kim’s oxygen plasma surface treatment step to enhance the
adhesion of abradable coating onto a metal surface. Sovish, 769 F.2d at 743;
Bozek, 416 F.2d at 1390.
Accordingly, we sustain the Examiner’s prior art rejection of claims 1
and 6 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and given above.

Rejections II (claims 3 and 4) and Rejection III (5)
Claims 3 and 4 are directed to operational parameters of the applied
oxygen plasma treatment. Claim 5 is directed to achieving a certain level of
surface tension of the metal surface of the toothed element after treatment
with the oxygen plasma, which according to the Specification, results from
the oxygen plasma treatment. Spec. 5, 12.
We refer to the Examiner’s Final Action for a complete statement of
these rejections. Final Act. 5–8.
We have considered Appellant’s arguments regarding Rejections II
and III but are unpersuaded for the reasons presented by the Examiner. App.
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Br. 16–20; Ans. 19–21. Moreover, these claims relate to parameters directed
to achieve a desired level of adhesion between a metal surface and a
polymer. Appellant has not adequately explained why one skilled in the art
would not have been capable of determining the appropriate parameters for
Kim’s oxygen plasma surface treatment step to achieve a desired level of
adhesion between Kollmann’s abradable coating and the metal surface.
Sovish, 769 F.2d at 743; Bozek, 416 F.2d at 1390.
Accordingly, we sustain the Examiner’s prior art rejections of claims
3–5 under 35 U.S.C. § 103(a) (Rejections II and III) for the reasons
presented by the Examiner and given above.

Rejections IV (claims 7 and 8) and V (claim 9)
Claims 7–9 are directed to cleaning the surface of the metal prior to
plasma treatment, with claim 9 requiring a specific cleaning agent.
We refer to the Examiner’s Final Action for a complete statement of
these rejections. Final Act. 8–11.
We have considered Appellant’s arguments regarding Rejections IV
and V but are unpersuaded for the reasons presented by the Examiner. App.
Br. 22–24; Ans. 21–23. As noted by the Examiner, Frautschi discloses as
known to clean a metal surface with a cleaning agent prior to applying an
oxygen plasma. Ans. 9–10; Frautschi Abstract, ¶¶ 5, 6, 20, 24, 28. While
Appellant argues Frautschi’s post plasma treatment sputtering cleaning
would have failed to suggest to one of ordinary skill in the art to apply a
polymer coating directly to an activated surface, we agree with the Examiner
that this treatment also activates the surface for subsequent coating. App.
Br. 22; Ans. 22; Frautschi ¶¶ 8, 20. Moreover, the language of the claims
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does not exclude the use additional activation processes or expressly require
immediate application of the coating after the plasma treatment.
Accordingly, we sustain the Examiner’s prior art rejections of claims
7–9 under 35 U.S.C. § 103(a) (Rejections IV and V) for the reasons
presented by the Examiner and given above.

Rejection VI
Claim 10 requires applying the abradable coating to a sintered toothed
element.
We refer to the Examiner’s Final Action for a complete statement of
this rejection. Final Act. 11–12.
We have considered Appellant’s argument for this rejection as well
and find it unavailing for the reasons given by the Examiner. App. Br. 24–
25; Ans. 23. Moreover, claim 10 is directed to the toothed element to be
plasma treated and coated. Appellant has not adequately explained why the
method of making the toothed element would impact the plasma treatment of
Kim.
Accordingly, we sustain the Examiner’s prior art rejection of claim 10
under 35 U.S.C. § 103(a) (Rejection VI) for the reasons presented by the
Examiner and given above.

ORDER
The Examiner’s prior art rejections of claims 1 and 2–10under 35
U.S.C. § 103(a) are affirmed.

TIME PERIOD
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED