Ex Parte Gauthier

Patent Trial and Appeal Board

May 23, 2013

11539927 (P.T.A.B. May. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/539,927 10/10/2006 Ben M. Gauthier 641590-07000 4562
7590 05/24/2013
Enigmatics, Inc
9215 51st Avenue, Unit 7
College Park, MD 20740
EXAMINER
MURATA, AUSTIN
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
05/24/2013 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 BEN M. GAUTHIER
____________

Appeal 2012-000872
Application 11/539,927
Technology Center 1700
____________

Before JAMES C. HOUSEL, GEORGE C. BEST, and
DONNA M. PRAISS, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000872
Application 11/539,927
2
On August 27, 2010, the Examiner finally rejected claims 1-10, 12,
13, 16-18, and 22-25 of Application 11/539,927 under 35 U.S.C. § 103(a) as
obvious.1 Appellant2 seeks reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’927 application describes a method for forming a coating layer
over a substrate. Spec. ¶ [0001]. Appellant refers to the method described in
the ’927 application as Pulsed Preheating‒Pulsed Coating technology. Id. In
this method, the substrate surface is preheated in a pulsed manner and the
coating material is subsequently applied to the preheated substrate in a
pulsed manner. Id. at ¶ [0009]. The two pulsed processes are synchronized
so that the coating is applied to the preheated substrate within a predefined
time window after the preheating process. Id.
Claim 1 is the only independent claim in the ’927 application and is
reproduced below:
1. A method for producing a coating on a surface of a
substrate, the method comprising the steps of:
(1) heating an area of a surface layer of the substrate
for a duration of time using a type of pulsed heat flux
selected from the group consisting of a pulsed laser
irradiation, directed electric discharge, plasma,

1 The Final Rejection also identifies claim 11 as having been rejected, Final
Rejection 1 (August 27, 2010), and discusses the basis for this rejection, id.
at 6. Claim 11, however, had been cancelled prior to the Final Rejection.
Amendment 3 (June 23, 2010); App. Br. 2; App. Br. 12 (Claims App’x).
Accordingly, we express no opinion on the patentability of claim 11.
2 Enigmatics, Inc. is the real party in interest (App. Br. 2).
Appeal 2012-000872
Application 11/539,927
3
microwave, inductive heating, pulsed detonation, and
pulsed combustion, and
(2) depositing a coating precursor material over the
heated area within a time window of the heating step
using a pulsed precursor delivery source, wherein the
temperature of the heated area remains suitable for the
coating precursor material to bond with the substrate.
(App. Br. 11 (Claims App’x)).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-4, 6-10, 12, 13, 16-18, and 22-25 were rejected under 35
U.S.C. § 103(a) as obvious over Ingham3 in view of Fagoaga4
(Ans. 4).
2. Claim 5 was rejected under 35 U.S.C. § 103(a) as obvious over
Ingham and Fagoaga in further view of Kushibiki5 (Ans. 8).
DISCUSSION
Appellant’s arguments on appeal are based solely on the limitations of
claim 1 (App. Br. 8, 9). The remaining claims are alleged to be patentable
based on their dependency from claim 1 (id.). Accordingly, all of the
appealed claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

3 U.S. Patent No. 3,310,423, issued March 21, 1967.
4 I. Fagoaga et al., The High Frequency Pulse Detonation (HFPD) Spray
Process, INASMET (1996).
5 U.S. Patent Application Publication No. 2003/0012994 A1, published
Jan. 16, 2003.
Appeal 2012-000872
Application 11/539,927
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Appellant advances two arguments for reversal of the Examiner’s
rejection of claim 1: (1) the combination of Ingham and Fagoaga does not
describe or suggest all of claim 1’s elements (App. Br. 6-8), and (2) there
was no motivation to combine or modify the prior art to arrive at the claimed
invention (id. at 8-9). We address these arguments seriatim.
First, Appellant argues that the combination of Ingham and Fogoaga
does not describe or suggest that the pulsed heating and pulsed coating
processes are synchronized:
The rejection is clearly in error because the references, even if
combined, do not teach or suggest in any way synchronization
of the two pulsed processes, that is, one performed within a
short time window within the other while the temperature of the
surface of the substrate remains suitable for the coating
precursor material to bond.
(App. Br. 6-7 (emphasis in original)).
Appellant’s argument may be compelling only if claim 1 requires that
the pulsed heating process and the pulsed coating process actually be
synchronized. We therefore turn to the question of claim interpretation. See
Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed.
Cir. 2001) (“Only when a claim is properly understood can a determination
be made . . . whether the prior art anticipates and/or renders obvious the
claimed invention.”).
During examination, claim terms are given their broadest reasonable
construction consistent with the specification. In general, words used in a
claim are accorded their ordinary and customary meaning. Honeywell Int’l
Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007).
The “broadest reasonable interpretation” standard does not prejudice the
applicant, who has the ability to correct errors in claim language and to
Appeal 2012-000872
Application 11/539,927
5
adjust the scope of claim protection as needed during prosecution by
amending the claims. In re Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir.
1984).
We begin, as we must, with the claim’s words. We note that claim 1
does not contain any form of the word “synchronize” and that Appellant
does not specifically identify the particular words in claim 1 that are alleged
to impose this requirement on the claimed method. The only requirement in
claim 1 regarding the relative timing of the pulses is that the pulsed coating
precursor delivery source “deposit[] coating precursor material over the
heated area within a time window of the heating step . . . , wherein the
temperature of the heated area remains suitable for the coating precursor
material to bond with the substrate” (App. Br. 11 (Claims App’x) (emphasis
added)). We have reviewed the ’927 application’s specification to determine
whether it clearly defines the term “time window” in a manner that requires
synchronization between the heating and deposition processes. The
specification, however, does not define the claim term “time window” in any
particular manner. Thus, the only way in which we could conclude that
claim 1 requires synchronization between the heating and deposition
processes would be to import limitations from the specification into claim 1.
This we cannot do. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed.
Cir. 2005) (en banc) (“[A]lthough the specification often describes very
specific embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments.”).
Thus, claim 1 merely requires that a pulsed delivery source deposit the
coating precursor material on the heated area of the substrate before the heat
dissipates to the point that the surface is no longer capable of bonding to the
Appeal 2012-000872
Application 11/539,927
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coating precursor material.6 The Examiner correctly concluded that such a
process would have been obvious to a person of ordinary skill in the art at
the time of the invention in view of the combined teaching of Ingham and
Fagoaga.
Second, Appellant argues that the Examiner erred in finding that a
person of ordinary skill in the art would have been motivated to combine
Ingham and Fagoaga to arrive at the claimed invention. Appellant’s
argument is based upon the contention that claim 1 requires synchronization
between the heating and deposition processes:
[The Examiner’s arguments] show[] that the examiner mistook
“pulsed delivery” combined with “pulsed heating” with
synchronized on-and-off cycles of two process, each of which
may be pulsed, and that the examiner failed to understand that
combining two pulsed processes does not result in
synchronization of the two processes, which the present
invention claims.
(App. Br. 9).
As discussed above, we have concluded that the Examiner did not err
in concluding that claim 1 does not require the synchronization between the
heating and deposition processes. Because Appellant’s arguments
incorrectly assume that claim 1 requires such synchronization, Appellant’s
arguments regarding the Examiner’s alleged failure to identify a reason for a
person of ordinary skill in the art to combine Ingham and Fagoaga in a

6 Based on Appellant’s arguments, it appears that claim 1, as currently
written, is not limited to Appellant’s invention. Claims requiring
synchronization between the heating and coating deposition processes might
be patentable. Such claims, however, are not before us, and we express no
opinion as to their patentability.
Appeal 2012-000872
Application 11/539,927
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manner that results in the claimed process are not relevant to the claims
currently before us.
CONCLUSION
The Examiner correctly interpreted claim 1 as not requiring the use of
synchronized heating and deposition processes. The Examiner’s rejection of
claims 1-10, 12, 13, 16-18, and 22-25 of the ’927 application based upon this
interpretation are affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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