11771181 - (D) (P.T.A.B. Mar. 20, 2013)

Ex Parte Hogan et al

Patent Trials and Appeals BoardMar 20, 2013

11771181 - (D) (P.T.A.B. Mar. 20, 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. 11/771,181 06/29/2007 INV001Patrick K. Hogan PD-06W256 7542 86009 7590 03/20/2013 Renner, Otto, Boisselle & Sklar, LLP (Raytheon) 1621 Euclid Avenue - 19th Floor Cleveland, OH 44115 EXAMINER FORREST, MICHAEL ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 03/20/2013 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 PATRICK K. HOGAN, RALPH KORENSTEIN, and JOHN S. McCLOY ________________ Appeal 2011-005190 Application 11/771,181 Technology Center 1700 ________________ Before TERRY J. OWENS, JEFFREY T. SMITH, and MARK NAGUMO, Administrative Patent Judges. Opinion for the Board by OWENS, Administrative Patent Judge. NAGUMO, Administrative Patent Judge, concurs in the judgment. DECISION ON APPEAL Appeal 2011-005190 Application 11/771,181 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-3 and 14-21, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for treating a transmissive body of zinc sulfide or zinc selenide to improve its optical properties. Claim 1 is illustrative: 1. A method of treating a transmissive body of zinc sulfide or zinc selenide, the method comprising: placing a non-platinum metal layer on at least one surface of the transmissive body; and improving optical properties of the transmissive body by heating the metal layer and the transmissive body, wherein the heating is performed at an elevated temperature above normal ambient temperature and at an elevated pressure above normal ambient pressure; wherein the non-platinum metal includes silver. The References Willingham US 4,944,900 Jul. 31, 1990 Wahl US 5,281,465 Jan. 25, 1994 Nicholas P. Cheremisinoff, MATERIALS SELECTION DESKBOOK 97-98 (Noyes Publ. 1996) (hereinafter Cheremisinoff). D. Sangeeta and John R. LaGraff, INORGANIC MATERIALS CHEMISTRY - DESK REFERENCE 85 (CRC Press, 2nd ed. 2005) (hereinafter Sangeeta). Appeal 2011-005190 Application 11/771,181 3 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 3, 14-19, and 21 over Willingham in view of Cheremisinoff or Sangeeta and claim 20 over Willingham in view of Cheremisinoff or Sangeeta, further in view of Wahl. OPINION We affirm the rejections. The Appellants argue the claims as a group (Br. 8-13). Although an additional reference is applied in the rejection of claim 20 the Appellants do not provide a substantive argument as to the separate patentability of that claim (Br. 13). We therefore limit our discussion to one claim, i.e., claim 1, which is the sole independent claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Willingham improves the optical quality of zinc sulfide and zinc selinide specimens by wrapping them in a foil and then treating them with heat and isostatic pressure (abstract; col. 4, ll. 31-33). “The wrappings are not vacuum tight but serve to limit the vapor exchange between the specimens and the reaction chamber and also serve to control the chemical potential of the volatile species in the specimens in order to enhance the treatment” (col. 4, ll. 33-38). Willingham discloses that “[g]raphite, mild steel, tantalum, copper and platinum foils have been used” as wrapping foils (col. 4, ll. 42-44) and that “[t]he platinum wrapping foil results in the best improvement of transmission characteristics for the samples. This is probably due to its inert nature” (col. 4, ll. 42-46). Appeal 2011-005190 Application 11/771,181 4 The Appellants argue that Willingham’s statement that the reason why platinum “results in the best improvement of transmission characteristics for the samples . . . is probably due to its inert nature” (col. 4, ll. 44-46) “does not even indicate what an ‘inert nature’ means” (Br. 10). Willingham does not indicate that “inert” has any meaning other than its ordinary meaning, which is “resistant to chemical or physical action.”1 The Appellants argue that “what is inert in one context is not necessarily inert in another context” (Br. 10). That argument is not well taken because the Appellants have not established that one of ordinary skill in the art would have expected silver to not be inert in Willingham’s context. The Appellants argue that “all Willingham does is state that the success of platinum is ‘probably due to its inert nature,’ Col. 4, line 46. There is no certainty to this remark” (Br. 10). Prima facie obviousness does not require certainty but, rather, requires only a reasonable expectation of success. See In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success …. For obviousness under § 103, all that is required is a reasonable expectation of success”). Because silver is “[a] metal of the gold family”2 and gold is a noble metal, which is “[a] metal that is not readily oxidized; as, the gold, platinum, and palladium family of the periodic system”3 one of ordinary skill in the art would have had a 1 HACKH’S CHEMICAL DICTIONARY 346 (McGraw-Hill Book Co., 4th ed. 1972). 2 Supra note 1, at 612. 3 Supra note 1, at 462. Appeal 2011-005190 Application 11/771,181 5 reasonable expectation that silver would be sufficiently inert to function effectively as a less costly alternative to Willingham’s preferred platinum wrapping foil material. The Appellants argue that “[i]f ‘inert nature’ was the critical parameter or some known indicator of possible success, one would expect that to be evidenced by the materials selected for use in Wahl, given that both inventions were produced at the same company, and the patents even share an inventor” (Br. 11) and “[i]f silver had been an obvious choice for treating zinc sulfide material, one would expect that it (or a similar material) would have been mentioned in Wahl” (Reply Br. 3). Obviousness is determined based on what would have been obvious to the hypothetical person of ordinary skill in the art rather than to particular individuals such as Wahl. See Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454 (Fed. Cir. 1984). Moreover, Willingham’s wrapping foil has a different purpose than Wahl’s metal, i.e., Willingham’s wrapping foil is for improving optical properties (abstract) whereas Wahl’s metal is for increasing strength, hardness and fracture resistance without substantially altering long wavelength optical properties (col. 2, ll. 40-44). The Appellants have not established that, regardless of this difference in purpose, one of ordinary skill in the art would have considered Willingham’s wrapping foil metals to be suitable as Wahl’s metal. The Appellants argue that “[s]ince Willingham indicates that platinum works better than copper [col. 4, ll. 42-46], if anything Willingham teaches away from using silver as a substitute for copper, to the extent that copper and silver would be expected to be closely related” (Reply Br. 2). Appeal 2011-005190 Application 11/771,181 6 Willingham is not limited to its preferred embodiment. See In re Kohler, 475 F.2d 651, 653 (CCPA 1973); In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Instead, all disclosures in therein must be evaluated for what they would have fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA 1966). Willingham discloses that copper is suitable (col. 4, ll. 42-44). Hence, to the extent that copper and silver would be expected to be closely related, Willingham would have fairly suggested the use of silver to one of ordinary skill in the art. For the above reasons we are not persuaded of reversible error in the Examiner’s rejections. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1-3, 14-19, and 21 over Willingham in view of Cheremisinoff or Sangeeta and claim 20 over Willingham in view of Cheremisinoff or Sangeeta, further in view of Wahl are affirmed. It is ordered that the Examiner’s decision is 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 Appeal 2011-005190 Application 11/771,181 1 NAGUMO, Administrative Patent Judge, concurs in the Judgment. sld