Ex Parte Freling

Board of Patent Appeals and Interferences

Apr 4, 2011

11376455 (B.P.A.I. Apr. 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.
11/376,455 03/15/2006 Melvin Freling PA08511124U-U73.12-25KL 3475
12208 7590 04/05/2011
Kinney & Lange, P.A.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
D'ANIELLO, NICHOLAS P
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
04/05/2011 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 MELVIN FRELING
________________

Appeal 2010-000973
Application 11/376,455
Technology Center 1700
________________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, 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 finally rejecting claims 1, 2, 4-9, 21, 23, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Besmann (US 5,709,936, issued Jan. 20, 1998)
in view of Dorfman (US 5,122,182, issued Jun. 16, 1992).2, 3 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Final Office Action mailed Dec. 8, 2008 (“Final”).
2 Appeal Brief filed Apr. 17, 2009 (“Br.”) and Supplemental Appeal Brief
filed May 15, 2009 (correcting the Status of Amendments).
Appeal 2010-000973
Application 11/376,455

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We REVERSE.
Claim 1 is representative of the invention and is reproduced below
from the Claims Appendix to the Appeal Brief:
1. A coating consisting essentially of:

about 30 to about 80 weight percent of a hard carbide material; and

about 20 to about 70 weight percent of lubricating material
incorporated with the hard carbide material, wherein the lubricating material
includes cobalt oxide, wherein the coating defines overlapping lenticular
particles.

Appellant’s arguments in support of patentability are directed to
limitations common to independent claims 1 and 21. Specifically, the issue
raised for our consideration is: did the Examiner err in interpreting the claim
phrase “overlapping lenticular particles” as reading on the structure shown
in Figure 1 of Besmann?
Fig. 1 of Besmann is reproduced below:

3 The Examiner has withdrawn the rejections under 35 U.S.C. § 112, first
and second paragraphs. (Answer mailed Jul. 13, 2009 (“Ans.”) 5-6.)
Appeal 2010-000973
Application 11/376,455

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Besmann Fig. 1 is a cross-sectional view of a multiphase composite
lubricant coating 30 comprising a hard refractory matrix phase 40 dispersed
with particles 50 of a solid lubricating phase. (Besmann, col. 5, ll. 40-45.)
Appellant and the Examiner agree the general dictionary definition of
the term “overlapping” means “to lie or extend over and cover part of.” (Br.
8; Ans. 6.) Appellant also agrees this definition “is consistent with the
usage of the term [overlapping] in . . . [the] specification and claims.” (Br.
8.) However, Appellant disagrees with the Examiner’s contention that
Besmann Fig. 1 shows “overlapping lenticular particles” as claimed (Ans.
6). (Br. 8.)
Appellant argues one of ordinary skill in the art would have
understood the claim phrase “‘overlapping, lenticular particles’ to be
synonomous with ‘splats’,” which have a structure similar to “shingles, tiles,
scales, leaves and other similar structures fairly described as ‘overlapping’.”
Appeal 2010-000973
Application 11/376,455

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(Br. 8.) In support of this interpretation, Appellant relies on pages 3-4 of the
Specification (Br. 8) which read, in relevant part: “A coating applied with a
HVOF process results in a dense coating. This is partially attributable to the
overlapping, lenticular particles (or ‘splats’) of coating material that are
formed on the substrate.” (Spec. 3:29-4:1.) The Specification does not
illustrate or further describe the structure of “overlapping, lenticular particles
(or ‘splats’).”
Prior art references may be “indicative of what all those skilled in the
art generally believe a certain term means” and “can often help to
demonstrate how a disputed term is used by those skilled in the art.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
US 3,881,910 (issued May 6, 1975 to Pelton) illustrates a coating
comprising “a multi-layer structure of thin, overlapping, lenticular particles
or ‘splat’” formed by plasma spraying or detonation gun deposition (col. 2,
ll. 27-30). Pelton FIG. 1 is reproduced below:

Pelton FIG. 1 illustrates a coating wherein “some of the lenticular particles
or splats [are] completely chromium metal and some completely chromium
carbide.” (Pelton, col. 3, ll. 3-26.)

US 6,071,604 (issued Jun. 6, 2000 to Chen) illustrates a light-
reflective coating in FIG. 2, below, having areas in which the particles 13
Appeal 2010-000973
Application 11/376,455

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are described as overlapping or superimposed (cf. col. 1, l. 63-col. 2, l. 3;
col. 3, ll. 55-57):

“FIG. 2 is a sectional view of the light-reflective coating formed by the
conventional process” (Chen, col. 2, ll. 55-56).

In FIG. 4, below, Chen illustrates a light reflective coating in which the
particle layer is described as “substantially free of any superimposed or
overlapping particles” (see claim 1).
Appeal 2010-000973
Application 11/376,455

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“FIG. 4 is a sectional view of the light-reflective coating that is . . . made
from the process of the preferred embodiment” (Chen, col. 2, ll. 60-62).

Appellant’s interpretation of the phrase “overlapping, lenticular
particles” as requiring a structure similar to “shingles, tiles, scales, leaves
and other similar structures” (Br. 8) is consistent with the manner in which
the phrases “overlapping, lenticular particles” and “overlapping particles”
are used in connection with prior art coatings. Like Appellant, we fail to see
how Besmann Fig. 1 can reasonably be viewed as illustrating “overlapping
lenticular particles” as claimed.
In sum, Appellant has persuasively argued the applied prior art fails to
disclose or suggest a “coating defin[ing] overlapping lenticular particles” as
required by independent claims 1 and 21. Therefore, we do not sustain the
Examiner’s rejection of claims 1, 2, 4-9, 21, 23, and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Besmann in view of Dorfman.
REVERSED

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