Ex Parte Johner et al

Patent Trial and Appeal Board

Feb 29, 2016

11884912 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111884,912 07/25/2008
27182 7590 02/29/2016
PRAXAIR, INC,
LAW DEPARTMENT- Ml-04
39 OLD RIDGEBURY ROAD
DANBURY, CT 06810-5113
FIRST NAMED INVENTOR
Gerhard Johner
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.
21727-WO-US 7714
EXAMINER
VAUGHAN, JASON L
ART UNIT PAPER NUMBER
3726
MAILDATE DELIVERY MODE
02/29/2016 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 GERHARD JOHNER and MARKUS KIRST
Appeal2014-000235
Application 11/884,912
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gerhard Johner and Markus Kirst (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-000235
Application 11/884,912
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. Coated body of carbon fiber reinforced plastic (CFP) for
paper machines and printing machines comprising an adhesion
promoter layer and a wear protective layer of hard metal or
oxide ceramics which is applied by plasma spraying or flame
spraying onto the adhesion promoter layer, characterized in that
the adhesion promoter layer comprises a ductile metal selected
from the group consisting of copper, iron and lead and is
applied by plasma spraying or flame spraying.
REJECTIONS
I. Claims 1--4, 6-11, 14, 15, 17, 18, 20, 21, and 23-26 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Graf
(US 6,339,883 Bl, issued Jan. 22, 2002) and Furlani
(US 5,924,967, issued July 20, 1999).
II. Claims 19 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Graf, Furlani, and Okamoto
(US 6,391,511 B 1, issued May 21, 2002).
III. Claims 5, 12, 13, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Graf, Furlani, and ASM. 1
IV. Claims 1--4, 6-11, 14, 15, 17, 18, 20, 21, and 23-26 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Graf
and Davis (US 4,969,842, issued Nov. 13, 1990).
1 ASM Handbook, Vol. 18, Friction, Lubrication, and Wear Technology,
829-883 (P.J. Blau, ed. 1992)
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Appeal2014-000235
Application 11/884,912
DISCUSSION
Rejection I-Obviousness based on Graf and Furlani
Appellants argue for patentability of claims 1--4, 6-11, 14, 15, 17, 18,
20, 21, and 23-26 subject to this ground of rejection as a group. Br. 3---6.
We select claim 1 as representative of this group, and the remaining claims
in the group stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)
(2015).
The issue raised in this appeal is whether it would have been obvious
to substitute the copper bonding layer of Furlani for the nickel and chrome
adhesion promoting layer (i.e., bond coat) of Graf, as proposed by the
Examiner, in a manner to produce the invention recited in claim 1. See Br.
4---6; Final Act. 2. The Examiner reasoned that such a substitution would
have been obvious "because it is prima facie obvious to simply substitute
one known element for another to obtain predictable results." Final Act. 3.
Appellants do not specifically dispute the Examiner's determination
that it would have been obvious to substitute the copper layer of Furlani for
the nickel and chrome adhesion promoting layer of Graf. Rather, Appellants
argue that (1) at best, the combination of Graf and Furlani would result in a
copper bond coat "applied by an electrolytic deposition process," as taught
by Furlani, "and a top coat applied over the bond coat by a plasma spray
process," as taught by Graf, and that it is impermissible for the Examiner to
pick and choose only a copper bonding layer from Furlani to the exclusion
of other aspects of Furlani's disclosure, "i.e., depositing the bonding layer
using an electrolytic deposition process and the corrosion resistant material
layer using an electroless plating process"; (2) Furlani "actually teaches
away from Appellants' claimed invention by teaching a process that
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Appeal2014-000235
Application 11/884,912
involves different deposition methods"; and (3) it is only by hindsight that
one would combine Graf and Furlani to arrive at a body comprising a copper
adhesion promoter layer "that is applied by plasma spraying or flame
spraying onto a CFP, and a wear protective layer of hard metal or oxide
ceramics which is applied onto the adhesion promoter layer by plasma
spraying or flame spraying, as claimed by Appellants." Br. 5-6.
A reference is not limited to its preferred embodiment, but must be
evaluated for all of its teachings, including its teachings of non-preferred
embodiments. In re Burckel, 592 F .2d 117 5, 1179 (CCP A 1979). "The use
of patents as references is not limited to what the patentees describe as their
own inventions or to the problems with which they are concerned. They are
part of the literature of the art, relevant for all they contain." In re Heck, 699
F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d
1006, 1009 (CCPA 1968)).
Appellants' characterization of Furlani as teaching a different
deposition method for each coating layer, and, in particular, electrolytic
deposition for the bonding layer (see Br. 4), improperly attempts to limit
Furlani to its teachings of one of its preferred embodiments, while ignoring
its broader teachings of applying the bonding layer by using "any of several
conventional techniques" (Furlani, col. 2, 11. 36-38). Appellants hone in on
just one of several deposition processes (i.e., electrolytic deposition)
identified by Furlani as preferred, to the exclusion of other processes also
characterized by Furlani as preferred, with "each producing substantially the
same result," and to the exclusion of Furlani's teaching that "[s]killed
artisans will appreciate that bonding layer 24 may be applied to core 22 by
using any of several conventional techniques." See id., col. 2, 11. 36-44.
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Appeal2014-000235
Application 11/884,912
Further, although mentioned specifically as a preferred technique for
applying second bonding layer 28, and not specifically in connection with
first bonding layer 24 of copper, Furlani explicitly teaches plasma spraying
as one of "numerous techniques" used to deposit a bonding layer. Id., col. 2,
11. 62---64. Thus, one having ordinary skill in the art would have gleaned
from Furlani' s teachings that plasma spraying is a conventional technique
for depositing a bonding layer.
Consequently, the combination of Graf (which teaches applying a
bond coat by plasma spraying and a wear resistant ceramic layer by plasma
spraying) and Furlani (which teaches applying a copper bonding layer using
any of several conventional techniques known to skilled artisans, one of
which is plasma spraying) would have suggested to the skilled artisan that
copper could be substituted for Graf s nickel and chrome bond coat with
predictable and similar results without changing the deposition process (i.e.,
plasma spraying) disclosed by Graf. The Examiner's determination that it
would have been obvious to do so does not amount to improperly picking
and choosing only a copper bonding layer from Furlani to the exclusion of
other aspects of Furlani' s disclosure, as Appellants contend. Moreover,
Furlani does not discredit or discourage applying the copper bonding layer
using plasma spraying, and, thus, does not teach away from doing so in
making Graf s roll. A reference does not teach away if it merely expresses a
general preference for an alternative invention from amongst options
available to the ordinarily skilled artisan, and the reference does not discredit
or discourage investigation into the invention claimed. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) ("mere disclosure of alternative designs
does not teach away").
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Appeal2014-000235
Application 11/884,912
Appellants' hindsight argument also is not convincing. The Examiner
proposes only to substitute the bonding layer material taught by Furlani for
the bond coat material disclosed by Graf, and reasons that to do so would
have been obvious because it amounts to nothing more than the simple
substitution of one known element for another to obtain predictable results.
This reasoning has rational underpinnings, 2 and takes into account only
knowledge that was within the level of ordinary skill in the art at the time the
claimed invention was made, rather than knowledge gleaned only from
Appellants' disclosure.
For the above reasons, Appellants fail to apprise us of error in the
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Graf and
Furlani. Accordingly, we sustain the rejection of claims 1--4, 6-11, 14, 15,
17, 18, 20, 21, and 23-26 under 35 U.S.C. § 103(a) as unpatentable over
Graf and Furlani.
Rejections II and III-Obviousness based on Graf, Furlani, and either
Okamoto or ASM
In contesting these rejections, Appellants argue only that neither
Okamoto nor ASM cures the deficiencies of the combination of Graf and
Furlani. Br. 7-9. Having found no such deficiencies in the combination of
Graf and Furlani, for the reasons discussed above, we also sustain the
rejection of claims 19 and 22 under 35 U.S.C. § 103(a) as unpatentable over
Graf, Furlani, and Okamoto, and the rejection of claims 5, 12, 13, and 16
under 35 U.S.C. § 103(a) as unpatentable over Graf, Furlani, and ASM.
2 "[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Appeal2014-000235
Application 11/884,912
Rejection IV-Obviousness based on Graf and Davis
Our affirmance of the Examiner's decision to reject claims 1--4, 6-11,
14, 15, 17, 18, 20, 21, and 23-26 under 35 U.S.C. § 103(a) as unpatentable
over Graf and Furlani is dispositive as to all of the claims subject to the
rejection under 35 U.S.C. § 103(a) as unpatentable over Graf and Davis. See
37 C.F.R. § 41.50(a) ("The affirmance of the rejection of a claim on any of
the grounds specified constitutes a general affirmance of the decision of the
examiner on that claim."). Thus, we need not reach the merits of the
Examiner's decision to reject these same claims under 35 U.S.C. § 103(a) as
unpatentable over Graf and Davis.
DECISION
The Examiner's decision rejecting claims 1-26 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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