Ex Parte FarmerDownload PDFBoard of Patent Appeals and InterferencesAug 4, 201111598940 (B.P.A.I. Aug. 4, 2011) Copy Citation 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. 11/598,940 11/13/2006 Joseph C. Farmer IL-11628 2811 24981 7590 08/04/2011 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 LIVERMORE, CA 94551-0808 EXAMINER TAKEUCHI, YOSHITOSHI ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 08/04/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JOSEPH C. FARMER ________________ Appeal 2010-004442 Application 11/598,940 Technology Center 1700 ________________ Before LINDA M. GAUDETTE, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision1 twice rejecting claims 22-30.2 We have jurisdiction under 35 U.S.C. § 6(b). The Examiner maintains, and Appellant requests review of, the following grounds of rejection (App. Br. 8): 1 Non-final Office Action mailed Sep. 9, 2009 (“Sep. 9 Office Action”). 2 Appeal Brief filed Sep. 23, 2009 (“App. Br.”). Appeal 2010-004442 Application 11/598,940 2 1. Claims 22-24, 26, and 273 under 35 U.S.C. §103(a) as unpatentable over Cheney (US 4,613,371, issued Sep. 23, 1986) in view of Chandra (US 2001/0035129 A1, published Nov. 1, 2001) (Ans. 3-4); and 2. Claims 25 and 28-30 under 35 U.S.C. §103(a) as unpatentable over Cheney in view of Chandra and Branagan (US 6,767,419 B1, issued Jul. 27, 2004) (Ans. 4-6). We REVERSE. Claim 22 is representative of the invention and is reproduced below from the Claims Appendix to the Appeal Brief: 22. An apparatus for producing a corrosion-resistant amorphous metal coating on a structure, comprising: a deposition chamber, a deposition source in said deposition chamber, said deposition source including a first deposition source that produces a first deposition spray and a second deposition source that produces a second deposition spray, said first deposition source containing a composite material made of amorphous metal that contains more than 11 elements, said second deposition source containing a composite material made of amorphous metal that contains more than 11 elements, and a system that directs said first deposition spray onto the structure and directs said second deposition spray onto the structure. 3 The Examiner identified claim 28 as subject to this ground of rejection. (Sep. 9 Office Action 3; Examiner’s Answer mailed Dec. 7, 2009 (“Ans”), 3.) However, claim 28 was not discussed in the body of the rejection. We view the inclusion of claim 28 in this ground of rejection as an inadvertent error. Appeal 2010-004442 Application 11/598,940 3 The Examiner finds that Cheney discloses an apparatus as claimed in claim 22, with the exception of multiple spray nozzles and multiple control systems. (Ans. 3.) The Examiner finds “Chandra teaches an apparatus with two deposition nozzles and suggests two control systems.” (Id.) The Examiner concludes (id. at 3-4) it would have been obvious to a person of ordinary skill at the time of the invention to use multiple nozzles and control systems [in Cheney’s device] in order to apply different designs, as taught by Chandra, and also to reduce the time it takes to deposit materials on a surface. We identify the following issue as dispositive of the appeal: did the Examiner reversibly err in determining that one of ordinary skill in the art would have been motivated to modify Cheney’s apparatus based on Chandra’s disclosure to achieve Appellant’s claimed invention, and had a reasonable expectation of success in so doing? (See App. Br. 18.) Cheney discloses a process for making very fine metal powder. A high velocity stream of molten metal droplets is directed toward a repellent surface. The molten droplets are impacted against the surface to fragment the droplets and form still molten fragmented portions which are rapidly cooled to form a fine metal powder. (Col. 2, ll. 20-25.) Cheney specifies that “[t]he repellent surface is preferably a surface that is not wetted by the molten material so as to increase the propensity of the material to form droplets on the surface.” (Col. 6, ll. 31-34.) Chandra discloses “[a] method and apparatus for the production of solar cells by directly spraying metal powder for both lines and layers on the Appeal 2010-004442 Application 11/598,940 4 front and back sides of a silicon wafer using focused plasma spray technique for making contacts on solar cells.” (Abstract.) As noted by Appellant, the purpose of Cheney’s apparatus is to produce metal powder for use in other processes. (App. Br. 18.) The Examiner’s proposed motivation to modify Cheney’s apparatus to include an additional spray nozzle (i.e., “in order to apply different designs, as taught by Chandra, and also to reduce the time it takes to deposit materials on a surface” (Ans. 3-4)) runs counter to Cheney’s goal of preventing formation of a coating through the use of a repellant surface. Moreover, the Examiner has not clearly explained why the proposed combination of Cheney and Chandra would be expected to result in an apparatus capable of producing a coating on a structure (see App. Br. 17-18). Cf. Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821, 832 (Fed. Cir. 1991) (interpreting functional language in an apparatus claim as requiring that an accused apparatus possess the capability of performing the recited function). REVERSED ssl Copy with citationCopy as parenthetical citation