11240676 (P.T.A.B. Jan. 19, 2016)

Ex Parte Hackel

Patent Trial and Appeal BoardJan 19, 2016

11240676 (P.T.A.B. Jan. 19, 2016)

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. 11/240,676 09/30/2005 Lloyd A. Hackel IL-11442 2252 7590 01/19/2016 Alan H. Thompson Deputy Lab. Counsel For Intellectual Property Lawrence Livermore National Laboratory P.O. Box 808, L-703 Livermore, CA 94551-0808 EXAMINER PAIK, SANG YEOP ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 01/19/2016 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 LLOYD A. HACKEL ____________________ Appeal 2013-010642 Application 11/240,676 Technology Center 3700 ____________________ Before LYNNE H. BROWNE, ERIC C. JESCHKE, and MARK A. GEIER, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lloyd A. Hackel (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 4–10, 13–16, 20–26, and 29–31.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 Claims 2, 3, 11, 12, 17–19, 27, and 28 are canceled. Appeal 2013-010642 Application 11/240,676 2 1. A laser peening method, comprising, providing a workpiece; adhering an opaque first layer of paint onto said workpiece, wherein said first layer contains no voids or bubbles larger than 10 microns in diameter, wherein the step of adhering a first layer comprises an adhering step selected from the group consisting of dip coating and, spraying; adhering an opaque second layer onto said first layer; and propagating a pulse of laser light onto said second layer, wherein said pulse comprises sufficient energy density to ablate a portion of said second layer, thereby ejecting a plasma, wherein said plasma produces a shock wave that propagates onto said first layer and onto said workpiece, thereby peening said workpiece, wherein said opaque first layer and said opaque second layer are opaque to the wavelength of said pulse of laser light. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Clauer Ortiz Mannava Dulaney Miller Ferguson US 4,401,477 US 4,937,421 US 5,674,328 US 5,741,559 US 6,677,037 B1 US 7,115,844 B2 Aug. 30, 1983 June 26, 1990 Oct. 7, 1997 Apr. 21, 1998 Jan. 13, 2004 Oct. 3, 2006 REJECTIONS I. Claims 1, 13, 15, 16, 29, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clauer and Dulaney. II. Claims 4, 7, 8, 20, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clauer, Dulaney, and Mannava. III. Claims 5 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clauer, Dulaney, and Ortiz. Appeal 2013-010642 Application 11/240,676 3 IV. Claims 6 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clauer, Dulaney, Ortiz, and Miller. V. Claims 9, 10, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clauer, Dulaney, Mannava, and Miller. VI. Claims 14 and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clauer, Dulaney, and Ferguson. DISCUSSION Rejection I The Examiner finds that Clauer discloses all of the limitations of independent claim 1 except that “Clauer does not show explicitly recited that the first layer is opaque.” Final Act. 2. The Examiner further finds that “Dulaney shows a laser peening process wherein a surface is provided with a first opaque overlay material including a black paint with an outer solid layer which is may be either transparent or opaque.” Id. Based on these findings, the Examiner determines that it would have been obvious “to adapt Clauer with a first opaque layer and a second opaque layer such that a laser light does not propagate through the layers to create pitting but to improve laser [peening] process of the workpiece.” Id. The Examiner additionally determines that “Clauer, which shows the same first layer structure and the substantially the same method of forming the first structure, inherently displays or includes the same properties of the recited bubbles and [] voids.” Id. at 3. Appellant argues that “[n]either reference teaches applying a first layer that contains no voids or bubbles larger than 10 microns in diameter. The references teach a first opaque layer, but they do not specify a requirement for the void or bubble size.” Br. 5. Appeal 2013-010642 Application 11/240,676 4 Responding to this argument, the Examiner reiterates that “Clauer, which shows the same first layer structure and the substantially the same method, i.e., spray painting, of forming the first structure, inherently displays or includes the same properties of the recited bubbles and [] voids.” Ans. 7. As the Examiner’s rejection is based on inherency, we must determine if the Examiner has established that the characteristic of “contain[ing] no voids or bubbles larger than 10 microns in diameter” (as required by claim 1) is necessarily present in a layer that is spray painted. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversing a rejection because alleged inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art); see also In re Oelrich, 666 F.2d 578, 58182 (CCPA 1981). In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990). The Examiner fails to provide a basis in fact and/or technical reasoning in support of the conclusion that the characteristic of “contain[ing] no voids or bubbles larger than 10 microns in diameter” (as required by claim 1) is necessarily present in a layer that is spray painted. In other words, the Examiner fails to show that spray painting will always result in no bubbles or voids larger than 10 microns in diameter, as claimed. Accordingly, the Examiner’s determination of inherency is in error. Dulaney does not cure this deficiency in the Examiner’s determination. Appeal 2013-010642 Application 11/240,676 5 Thus, it follows that the Examiner fails to set forth a prima facie case of obviousness based on the combined teachings of Clauer and Dulaney. For this reason, we do not sustain the Examiner’s decision rejecting claim 1, and claims 13 and 15, which depend therefrom. The Examiner’s decision rejecting claim 16 also relies on the Examiner’s flawed inherency determination. Final Act. 2. Therefore, we do not sustain the Examiner’s decision rejecting claim 16, and claims 29 and 31, which depend therefrom. Rejections II–VI The Examiner’s rejections of claims 4–10, 14, 20–26, and 30 rely on the same erroneous determination regarding inherency relied upon to reject independent claims 1 and 16. Accordingly, we do not sustain the Examiner’s decision rejecting claims 4–10, 14, 20–26, and 30. DECISION The Examiner’s rejections of claims 1, 4–10, 13–16, 20–26, and 29– 31 are REVERSED. REVERSED llw