Ex Parte Fischer et al

Patent Trial and Appeal Board

Sep 27, 2016

12444187 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/444,187 0410312009
59582 7590 09/27/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
Manfred Fischer
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
710100-000048 7101
EXAMINER
FOSTER, NICHOLAS L
ART UNIT PAPER NUMBER
3675
MAILDATE DELIVERY MODE
09/27/2016 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
Appeal2014-009977
Application 12/444, 187
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 2-5, 7-17, and 20-22. 1 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 1, 6, 18, and 19 are cancelled. See Appeal Br. 2, 4 (Claims App.).
Appeal2014-009977
Application 12/444, 187
CLAIMED SUBJECT MATTER
Claims 9 and 22 are independent. Independent claim 9, reproduced
below, illustrates the claimed subject matter.
9. 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 of metal nitrides, wherein
adjoining layers within a periodicity have different
metallic elements and that the thickness of an individual layer
amounts to 215 nm, 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, wherein
adjoining individual layers within a periodicity each
include at least one doping element selected from the group
consisting of aluminum, silicon, and carbon; and wherein
the adjoining individuals layers are not doped vvith the
same element from the group consisting of aluminum, silicon,
and carbon.
Appeal Br., Claims App. 3.
THE REJECTION2
Claims 2-5, 7-17, and 20-22 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). Ans. 3.
2 The Examiner has withdrawn the rejection of claim 5 under 35 U.S.C.
§ 112. Ans. 8.
2
Appeal2014-009977
Application 12/444, 187
ANALYSIS
Regarding independent claims 9 and 22, the Examiner finds, inter
alia, that Fukui discloses:
adjoining individual layers within a periodicity each includ[ing]
at least one doping element selected from the group consisting
of aluminum, silicon, and carbon (i.e. the abstract, etc[.] ...
discloses combinations such as one layer is TiSiN and the other
layer is TiCrCN as it discloses nitrides of TiSi and carbonitrides
of Ti Cr); wherein the adjoining individuals layers are not doped
with the same element from the group consisting of aluminum,
silicon, and carbon (i.e. as the TiSiN layer is doped with silicon
and the TiCrCN layer is doped with carbon).
Final Act. 5-6.
Appellants contend that the silicon in the TiSiN layer and the carbon
in the TiCrCN layer are not doping elements. Appeal Br. 11-12. The
Examiner responds that the broadest reasonable interpretation of "doping
element" includes definitions such as "an element that is an additive added
to a base material." Ans. 19. The Examiner further responds that under
such an interpretation, Fukui teaches "one layer is 'doped' with Silicon and
an adjacent layer is 'doped' with Carbon by disclosing one layer being a
nitride of Ti Si (i.e. TiSiN) and an adjacent layer being a carbonnitride of
TiCr (i.e. TiCrCN)." Id. at 20 (citing Fukui, Abstract and Table I). In reply,
Appellants agree with the Examiner that the term "doping element" means
"an element that is an additive to a base material," but argue that "Si and C
are components used to initially form a base film material, and no doping
elements are added to the base film material." Reply Br. 4.
Appellants' argument is persuasive. Considering the definition of
"doping element" agreed upon by the Examiner and Appellants, i.e., "an
element that is an additive added to a base material" (see Ans. 19; Reply Br.
3
Appeal2014-009977
Application 12/444, 187
4 ), we agree with Appellants that the silicon in the TiSiN layer and the
carbon in the TiCrCN layer are not doping elements. In Fukui, the TiSiN
layer identified by the Examiner is "composed of a TiSi-based compound"
(Fukui 3:40--43), and the film is "formed by physical vapor deposition, with
a TiSi alloy and a metal Meach as an evaporation source material, within a
gas containing one or more among nitrogen, carbon and oxygen" (Fukui
7: 15-22). Thus, in the TiSiN layer, the "doping element" identified by the
Examiner, i.e., silicon, is not added to a base material, but rather forms the
base material to which nitrogen gas is added to form the film coating. 3
Accordingly, the Examiner's finding that Fukui teaches the claimed
adjoining layers, each including at least one doping element selected from
the group consisting of aluminum, silicon, and carbon, is not supported by a
preponderance of the evidence. For these reasons, we do not sustain the
rejection of claims 9 and 22, and claims 2-5, 7, 8, 10-17, 20, and 21 depend
from claim 9, and we therefore similarly do not sustain the rejection of these
claims.
DECISION
We REVERSE the Examiner's rejection of claims 2-5, 7-17, and 20-
22.
REVERSED
3 The Examiner does not contend that the addition of a doping element to an
already existing base material results in a different structure than if the
doping element was part of the base material.
4