Ex Parte Feng et al

Patent Trial and Appeal Board

Apr 19, 2017

13084802 (P.T.A.B. Apr. 19, 2017)

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.
13/084,802 04/12/2011 Jiangwei Feng SP10-107 1805
22928 7590 04/26/2017
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1
CORNING, NY 14831
CHUNG, HO-SUNG
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
04/26/2017 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
following e-mail address(es):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANGWEI FENG, TODD M. HARVEY,
SHRISUDERSAN JAYARAMAN, and
LJERKA UKRAINCZYK
Appeal 2016-001614
Application 13/084,802
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
AVELYN M. ROSS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—9, 11, 13—15 and 17—19. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for stripping a partially oxidized
nitride release coating from a metal workpiece. Claim 1 is illustrative:
1. A method for stripping a partially oxidized nitride release
coating from a metal workpiece comprising the steps of:
disrupting a surface oxidation layer on the release coating
to increase release coating electrical conductivity, and
Appeal 2016-001614
Application 13/084,802
flowing an electrical current from the workpiece and
release coating to a counter electrode while the workpiece,
release coating and counter electrode are immersed in an
aqueous alkaline electrolyte solution.
Hagerty
Sato
Hayakawa
Moore
Mishra
Lung
The References
US 4,747,864
US 5,723,174
US 2005/0263806 A1
US 2005/0268662 A1
US 2006/0226025 A1
US 2007/0186589 A1
May 31, 1988
Mar. 3, 1998
Dec. 1, 2005
Dec. 8, 2005
Oct. 12, 2006
Aug. 16, 2007
Kawamura (human translation) JP 2000-44259 A Feb. 15, 2000
J.J. Sun et al., MREF-ECM process for hard passive materials surface
finishing, 108 J. Matl. Proc. Tech. 356—68 (2001) (hereinafter Sun).
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
2, 4—9, and 11 over Mishra in view of Kawamura, claim 3 over Mishra in
view of Kawamura, Sato and Hagerty, claims 13 and 17 over Mishra in view
of Kawamura and Moore, claim 14 over Mishra in view of Kawamura and
Lung, claim 15 over Mishra in view of Kawamura, Moore, Lung and
Hagerty, claim 18 over Mishra in view of Kawamura and Hayakawa, and
claim 19 over Mishra in view of Kawamura, Moore and Sun.
OPINION
We reverse the rejections. We need address only the independent
claims (1 and 19). Those claims require stripping a partially oxidized nitride
release coating from a metal workpiece by a method comprising disrupting a
surface oxidation layer on the release coating to increase release coating
electrical conductivity, and flowing an electrical current from the workpiece
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Appeal 2016-001614
Application 13/084,802
and the release coating to a counter electrode. To meet that claim
requirement the Examiner relies upon the combination of Mishra and
Kawamura (Final Act. 3—5).
Mishra substantially removes a metallic carbide or nitride coating
from a metal workpiece by passing a current over an electrochemical cell
comprising an anode (which can be the workpiece) and a cathode in an
acidic or basic aqueous electrolyte flflf 8—10).
Kawamura removes an oxide coating from molding tool faces by
rubbing the faces with a soft abrasive member holding abrasive grains
(112).
The Examiner concludes that “it would have been obvious to a person
having ordinary skill in the art at the time of the invention to have sanded
away Mishra in view of Kawamura’s oxidation layer in order to remove the
deterioration as taught by Kawamura. Doing this would inherently increase
release coating electrical conductivity” (Final Act. 5; see also Ans. 5—6).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Mishra and Kawamura disclose alternative methods for removing
coatings. The Examiner does not establish that Mishra and Kawamura
would have provided one of ordinary skill in the art with an apparent reason
to use Kawamura’s method to disrupt an oxidation layer on Mishra’s
workpiece, followed by use of Mishra’s electrolysis method. Thus, the
rejections appear to be based on impermissible hindsight in view of the
Appellants’ disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA
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Appeal 2016-001614
Application 13/084,802
1967) (“A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art”).
Accordingly, we reverse the rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1,2, 4—9, and 11 over
Mishra in view of Kawamura, claim 3 over Mishra in view of Kawamura,
Sato and Hagerty, claims 13 and 17 over Mishra in view of Kawamura and
Moore, claim 14 over Mishra in view of Kawamura and Lung, claim 15 over
Mishra in view of Kawamura, Moore, Lung and Hagerty, claim 18 over
Mishra in view of Kawamura and Hayakawa, and claim 19 over Mishra in
view of Kawamura, Moore and Sun are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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