Ex Parte Farmer

Board of Patent Appeals and Interferences

Aug 4, 2011

11598940 (B.P.A.I. Aug. 4, 2011)

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

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