Ex Parte Fischer et alDownload PDFPatent Trial and Appeal BoardDec 20, 201612444217 (P.T.A.B. Dec. 20, 2016) 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. 12/444,217 04/03/2009 Manfred Fischer 710100-00049 7304 59582 7590 12/20/2016 DICKINSON WRIGHT PLLC 2600 WEST BIG BEAVER ROAD SUITE 300 TROY, MI 48084-3312 EXAMINER FOSTER, NICHOLAS L ART UNIT PAPER NUMBER 3675 MAIL DATE DELIVERY MODE 12/20/2016 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 MANFRED FISCHER, RALF LAMMERS, CHRISTIANE BAUER, and STEFFEN HOPPE ________________ Appeal 2014-010018 Application 12/444,217 Technology Center 3600 ________________ Before JILL D. HILL, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Manfred Fischer et al. (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–8, 10–16, and 19–23.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Claims 9, 17, and 18 are cancelled. See Appeal Br., Claims App. 2, 3. Appeal 2014-010018 Application 12/444,217 2 CLAIMED SUBJECT MATTER Claims 1 and 23 are independent. Independent claim 1, reproduced below, illustrates the claimed subject matter. 1. A piston ring made of a carrier material of steel or a cast material, and with a wear-resistant coating made of a periodic multilayer system, with each periodicity consisting of at least two individual layers, each of said individual layers consisting of metal nitrides, each of said individual layers having a core area including a lattice, said core area being undisturbed, the multilayer system including superlattice structures bordering said core areas of said individual layers, with the thickness of an individual layer amounting to ≥ 2 nm to <15 nm and the thickness of the multilayer system amounting to > 4.5 μm, and adjoining individual layers within a periodicity having different metallic elements, wherein at least after one or several periodicities between two adjacent periodicities at least one interlayer and no layer other than the at least one interlayer is provided, wherein the at least one interlayer is made of at least one metal from the group of Ti, Zr, Hf, V, Nb, Ta, Cr, Mo and W. Appeal Br., Claims App. 1. THE REJECTION Claims 1–8, 10–16, and 19–232 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Iwashita (US 6,139,022; iss. Oct. 31, 2000) and Fukui (US 7,060,345 B2; iss. June 13, 2006). 2 The statement of the rejection does not list claim 23, however the body of the rejection addresses claim 23. Final Act. 2, 3. Accordingly, we consider the omission of claim 23 from the statement of the rejection to be a typographical error. Appeal 2014-010018 Application 12/444,217 3 ANALYSIS Appellants argue claims 1–8, 10–16, and 19–23 as a group. Appeal Br. 12. We select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claims 2–8, 10–16, and 19–23 stand or fall with claim 1. Regarding claim 1, the Examiner finds, inter alia, that Fukui discloses the claimed “superlattice structures” because “any periodic multilayer structure with layer thickness in the several nanometer range is by definition a superlattice.” Final Act. 4. As discussed in further detail below, Appellants argue that Fukui is non-analogous art and that Fukui fails to disclose the claimed superlattice structures. Non-Analogous Art To be considered analogous, prior art can be either (1) in the field of applicant’s endeavor or (2) reasonably pertinent to the particular problem with which the applicant was concerned. See, e.g., In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Field of Endeavor Appellants argue that Fukui is not in the same field of endeavor as the claimed invention because “Fukui is directed to a cutting tool and thus is not analogous art to a coated piston ring.” Appeal Br. 4. Appellants contend that cutting tools have completely different functions (id. at 5–6), interact with different components (id. at 6), function in different environments (id. at 7), are subject to different stresses and loads (id. at 7–8), and have different service life expectancies (id. at 10). The Examiner responds that Appellants “admit that coatings on cutting tools (exceedingly similar to Fukui) are analogous art to Appellant[s’] invention in the ‘Related Art’ section of Appellant[s’] Appeal 2014-010018 Application 12/444,217 4 specification.” Ans. 4 (emphasis omitted). The Examiner also responds that Fukui and the claimed invention are in the same field of endeavor because “both are in the broad field of design of moving machine parts and more specifically both are in the general field of performance enhancing wear resistant coatings for metal machine parts.” Id. at 6. Appellants argue that their “Related Art” section is not an admission and was written after the invention was made and in hindsight in view of the invention. Reply Br. 2. Appellants contend that “[t]he term ‘moving machine part’ is a very broad term which encompasses many fields of art” and one of skill in the art would not find coated piston rings to be in the same field of endeavor as coated cutting tools. Id. We agree with the Examiner’s determination that the prior art is in the same field of endeavor, given Appellants’ statement that in “cutting tools, it has long been known to provide multilayer systems as a protective layer” and that “[t]his multilayer technology has also found entry into the manufacture of piston rings”. Spec. p. 2, ll. 13–27. Appellants have not persuaded us that this statement was inaccurate when made or at the time of the invention. Reasonably Pertinent Appellants also argue that Fukui is not reasonably pertinent to the particular problem with which the inventors were involved, namely “the need for a coating which would be less prone to cracking when applied to a piston ring and used in an engine, such as a diesel or gasoline engine.” Id. at 5. Appeal 2014-010018 Application 12/444,217 5 The Examiner responds that Fukui is reasonably pertinent to the problem faced by the inventor because both are concerned with the problem of wear and crack resistance in metal machine parts. Ans. 7. Appellants reply that Fukui is not reasonably pertinent to the problem faced by the inventor because, “[a]s discussed at length in the Appeal Brief, the function of a cutting tool coating is very different from the function of a piston ring coating.” Reply Br. 2. Appellants’ Specification sets out the particular problem to be solved as “these known multilayer [coating] systems have the disadvantage that crack resistance is not satisfactory.” Spec. p. 3, ll. 9–10. For a reference to be “reasonably pertinent” to the problem, it must “logically . . . have commended itself to an inventor’s attention in considering his problem.” In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 658, (Fed. Cir. 1992)). Fukui teaches a plural-layer laminate structure for use on tools and the structure is composed of first films and second films laminated in alteration onto a base part. Fukui, col. 3, ll. 15–30. Fukui discloses that an advantage of the plural-layer laminate structure is that “[a] structure in which such thin films are laminated is effective in controlling dislocation and cracking.” Id. at col. 3, ll. 43–45 (emphasis added). The teachings of Fukui, directed to a multilayer coating that is effective in controlling cracking, would have logically commended itself to an inventor’s attention in solving the problem of improved crack resistance in a coating system, such that Fukui is reasonably pertinent to the problem faced by the inventors. Appeal 2014-010018 Application 12/444,217 6 In view of the foregoing, we are not persuaded that Fukui is non- analogous art. Superlattice Structures Appellants contend that Fukui fails to disclose the “superlattice structures” recited in claims 1 and 23. Appeal Br. 11, 12. In particular, Appellants argue that “a superlattice structure is not necessarily present in the coating taught by Fukui” because, “[b]esides layer thickness, there are several parameters that impact the lattice structure and whether a superlattice structure is present.” Id. at 11. The Examiner responds that “it can be seen that when a periodic multilayer system, such as that in the coating of Fukui [(]. . . with the layer thickness sufficiently small of around 0.5 [nm] (column 3 lines 40–43)) a superlattice would be present.” Ans. 13 (also discussing Anand, US 2007/0228664 A1 (pub. Oct. 4, 2007)). Appellants reply that the Examiner’s finding that a superlattice would be present in a periodic structure wherein the layers are in the thickness of several nanometers is not correct because “in order for a superlattice structure to exist, there must be a disturbed lattice arrangement in the immediate vicinity of the lattice of the adjusting individual layer,” which is not disclosed in Fukui. Reply Br. 4. We are not persuaded that the Examiner has erred. As noted by the Examiner, the cited references teach that a superlattice structure will form in a multilayer coating composed of metal nitrides and with layers having a thickness of around 0.5 nm, such as the coating taught by Fukui. See Ans. 13 (citing Anand). Specifically, Anand is directed to a multilayer coating including alternatingly stacked layers that may be formed of “metal nitrides such as cubic BN, TiN, ZrN, HfN, Si3N4, AlN, TiAlN, TiAlCrN, TiCrN, Appeal 2014-010018 Application 12/444,217 7 TiZrN, and the like” (Anand ¶ 19) and teaches that “[i]f these alternatingly stacked layers are sufficiently thin (e.g., less than or equal to about 100 nm), a heterostructure or superlattice is formed” (id. ¶ 24). Fukui also discloses a multilayer laminate structure formed of metal nitrides, including TiAlN, TiCrN, and TiN, in which the layers are less than 100 nm. See Fukui, col. 3, ll. 40–43 and Table I. In particular, Fukui discloses a plural-layer laminate structure 3 in which the thickness of first film 1 and second film 2 are at least 0.5 nm and 50 nm or less, respectively. Id. at col. 3, ll. 40–43. According to the teachings of Anand, a superlattice structure is present in Fukui because the layers are formed of metal nitrides, e.g., TiAlN, TiCrN, and TiN, and the layers are less than 100 nm. See Anand ¶¶ 19 and 24. The preponderance of the evidence supports the Examiner’s finding that Fukui discloses a multilayer system including superlattice structures. For these reasons, we sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Iwashita and Fukui. Claims 2–8, 10–16, and 19–23 fall therewith. DECISION We AFFIRM the Examiner’s rejection of claims 1–8, 10–16, and 19– 23. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). 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