Ex Parte Kim et al

Patent Trial and Appeal Board

Apr 9, 2018

13154702 (P.T.A.B. Apr. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/154,702 06/07/2011
6147 7590 04/11/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
Young Jin Kim
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.
242852-1 1520
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/11/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG JIN KIM, ANTHONY YU-CHUNG KU,
REBECCA CHRISTINE MALISH,
THOMAS ALFRED CAINE, LAURAINE DENAULT,
ANTHONY THOMAS BARBUTO,
CATHERINE PROCIK DULKA,
PATRICK DANIEL WILLSON, and
PETER LOUIS ANDRESEN
Appeal2016-005346
Application 13/154,702
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and LILAN REN,
Administrative Patent Judges.
Majority opinion by REN, Administrative Patent Judge.
Dissenting opinion by OWENS, Administrative Patent Judge.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-005346
Application 13/154,702
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection2 of
claims 1, 2, 6-9, and 11-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a method of forming an oxide coating that
aims to reduce accumulation of radioactive species on a metallic surface.
Spec. i-f 3. 3 Claims 1, 11, and 22, reproduced below, are illustrative of the
claimed subject matter:
1. A method of forming a nuclear reactor component that comes
into contact with radioactive species wherein the component is
coated with an inorganic oxide coating that inhibits deposition of
charged particles of the radioactive species on a metallic surface
of the component, the method comprising:
providing a metallic component of a nuclear reactor that
comes into contact with radioactive species, immersing the
metallic component in an aqueous colloidal suspension to
deposit the suspension on a metallic surface of the metallic
component, wherein the aqueous colloidal suspension is
comprised of about 0.5 weight percent to about 35 weight percent
of nanoparticles comprising at least one of titania and zirconia,
and about 0.1 weight percent to about 10 weight percent of 2-[2-
(2-methoxyethoxy)ethoxy] acetic acid (C7H140s) or
polyfluorosulfonic acid in water;
1 General Electric Company is identified as the real party in interest.
(Appeal Brief, filed November 3, 2015 ("App. Br."), 2.)
2 Final Rejection mailed June 3, 2015 ("Final Act."). In this decision, we
also refer to the Examiner's Answer mailed February 26, 2016 ("Ans."), and
the Reply Brief filed April 22, 2016 ("Reply Br.").
3 U.S. Patent Application No. 13/154,702 ("Spec."), Method of Forming an
Oxide Coating that Reduces Accumulation of Radioactive Species on a
Metallic Surface.
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drying the aqueous colloidal suspension on the metallic
surface to form a green coating; and
heating the green coating to a temperature of up to 500 °C.
to densify the green coating thereby forming the inorganic oxide
coating on the metallic surface of the component wherein the
oxide coating is comprised of at least one of titania and/or
zircoma.
11. A method of forming a nuclear reactor component
that comes into contact with radioactive species comprising Co-
60 wherein the component is coated with an oxide coating for
inhibiting deposition of charged particles of the radioactive
species on a metallic surface of the nuclear reactor component
the method comprising:
preparing an aqueous colloidal suspension containing
about 0.5 to about 35 weight percent of nanoparticles that
contain at least one of titania and zirconia, and about 0.1 % to
about 10% of 2-[2-(2-methoxyethoxy)ethoxyl]acetic acid
(C7H140s) or polyfluorosufonic acid in water;
immersing a metallic component of a nuclear reactor that
comes into contact with radioactive species in the aqueous
colloidal suspension for a duration of about 1 to about 120
minutes;
withdrawing the metallic component from the aqueous
colloidal suspension at a rate of about 1 centimeters/minute to
about 10 centimeters/minute;
air drying the aqueous colloidal suspension on the
metallic component to form a green coating on the metallic
component; and
heating the green coating to a temperature of up to 500
°C to densify the green coating and thereby form an oxide
coating of a thickness of about 0.1 micrometers to about 10.0
micrometers wherein the oxide coating is comprised of at least
one of titania and/ or zirconia.
22. A method of forming a nuclear reactor component
that comes into contact with radioactive species wherein the
component is coated with an inorganic oxide coating that
inhibits deposition of charged particles of the radioactive
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species on a metallic surface of the component, the method
compnsmg:
providing a metallic component of a nuclear reactor that
comes into contact with radioactive species,
immersing the metallic component in an aqueous
colloidal suspension to deposit the suspension on a metallic
surface of the metallic component,
wherein the aqueous colloidal suspension is comprised of
about 0.5 weight percent to about 35 weight percent of
nanoparticles comprising at least one of titania and zirconia,
and about 0 .1 weight percent to about 10 weight percent
polyfluorosulfonic acid in water;
drying the aqueous colloidal suspension on the metallic
surface to form a green coating; and
heating the green coating to a temperature of up to
500 °C. to densify the green coating thereby forming the
coating on the metallic surface of the component wherein the
oxide coating is comprised of at least one of titania and/or
zircoma.
(Claims Appendix, App. Br. 53, 54, 56).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Ogata
Dulka
Kubota
Akarsu
Nakabayashi
us 6,107,241
US 6,633,623 B2
US 2003/0125679 Al
US 2005/0191505 Al
US 7,030,058 Bl
Aug. 22, 2000
Oct. 14, 2003
July 3, 2003
Sept. 1, 2005
Apr. 18, 2006
Caldicott, Nuclear Power is Not the Answer to Global Warming or Anything
Else, The New Press, New York (2006).
A. Shanaghi, Corrosion Protection of Mild Steel by Applying Ti02
Nanoparticle Coating via Sol-Gel Method, 45 Protection of Metals and
Physical Chemistry of Surfaces 305-311 (2009).
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REJECTIONS
Claims 1, 2, 7, 9, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Akarsu in view of Dulka. Final Act. 2-
3. Claims 22 and 23 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Dulka, Akarsu, and Nakabayashi. Final Act. 17.
Dependent claim 19 is rejected under section 103(a) over Akarsu in
view of Dulka and Caldicott. Id. Dependent claim 8 is rejected under
section 103(a) over Akarsu in view of Dulka and Shanaghi. Id. at 8.
Claims 6, 11, and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Akarsu in view ofDulka and further in view of
Kubota. Final Act. 6.
Claim 1, 2, 6, 7, 9, 11-15, 17, 18, 20, and 21 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Ogata in view of Dulka
and Akarsu. Final Act. 9. Dependent claim 19 is rejected under section
103(a) over Ogata in view ofDulka, Akarsu, and Caldicott. Id.
Claims 22 and 23 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ogata, Dulka, Akarsu, Caldicott, and Nakabayashi.
Final Act. 20.
OPINION
We have reviewed each of Appellants' arguments for patentability.
Appellants have not presented facts or reasons which persuade us that the
Examiner reversibly erred in making the rejections on appeal. Attorney
arguments are not factual evidence which can rebut a prima facie case of
obviousness. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Thus, we
sustain the Examiner's§ 103 rejections.
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Rejection of Claims 1 (Akarsu and Dulka)4
The Examiner rejects claim 1 over Akarsu and Dulka, finding that
Akarsu teaches a method for forming a metallic component coated with an
inorganic oxide coating such as Ti02, while Dulka teaches a method for
protecting metallic components in a nuclear reactor against radioactive
species by coating these components with Ti02. Final Act. 3--4. Citing,
among others, the teaching in Dulka that "an insulator coating" (Dulka 2:36)
(including "any dielectric coating [such as] Ti02") may eliminate or
substantially inhibit "electrostatic deposition ... in a boiling water nuclear
reactor," the Examiner finds that a skilled artisan would have predictably
combined the prior art teachings to arrive at claim 1. Ans. 3--4 (citing Dulka
at 1:8-11, 2:51-59, 4:63-5:15); Final Act. 3--4.
Appellants acknowledge that Akarsu discloses the application of
"modified Ti02 particles" "dispersed in a solvent onto [a] substrate." App.
Br. 9-10. 5 Appellants also acknowledge that Dulka discloses the use "of
ceramic oxide coatings on interior wall surfaces of nuclear reactor
components wherein the coatings are ceramic oxides such as Ti02 and
Ta20s." Id. at 11. Appellants, however, argue that the Examiner erred in
combining the references because Dulka discloses a chemical vapor
deposition (CVD) method of coating the surfaces which is different from the
4 Appellants do not make separate arguments for the remaining claims (App.
Br. 9-20) with respect to the rejection over Akarsu and Dulka and they
therefore stand or fall with claim 1 with respect to Akarsu and Dulka. See
37 C.F.R. § 41.37(c)(l)(iv) (2013). We note that Appellants argue the
patentability of "claims 1-9." App. Br. 9. Claims 3-5, however, have been
canceled.
5 Appellants sometimes refer to the reference as "Akarasu." See App. Br.
10.
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method recited in claim 1 and the method disclosed in Akarsu. Id.
Appellants argue, without presenting factual evidence, that "[ s ]urface
modification of Dulka's Ti02 particles would be impossible since chemical
precursors are applied so the Ti02 particles are formed in situ on the surface
of the component" and that the rejection is error because the Examiner has
not established "any equivalence between the coatings produced by such
distinctly different methods." Id.
"Express suggestion to substitute one equivalent for another need not
be present to render such substitution obvious." In re Fout, 675 F.2d 297,
301(CCPA1982). Rather, the question is what the combined teachings of
the references would have suggested to a person of ordinary skill in the art.
In re Mouttet, 686 F.3d 1322, 1332-33 (Fed. Cir. 2012). In any event, the
application at issue recognizes that CVD has been "commonly employed to
deposit similar ceramic coatings." Spec. i-f 6 (emphasis added).
The record before us shows that it is undisputed that Dulka teaches the
benefits of using Ti02 coating for components of a nuclear reactor to
"eliminate or reduce the build-up of crud" (Dulka 2:36-40, 3:6-7) and that
Akarsu discloses various methods for coating a substrate with Ti02 one of
which teaches the immersing, drying, and heating steps of the process
recited in claim 1 (Akarsu i-fi-170, 113, 114, 129, 211-216 (example 10)).
Compare App. Br. 9-10, 17 (citing Akarsu i-fi-170, 71, 114, 125-129,
example 10), with Final Act. 3--4; compare Reply Br. 4--5 and App. Br. 6
(citing Dulka 3:6-16), 8, with Ans. 3--4. The Examiner concludes that a
skilled artisan would find it obvious that coating a nuclear reactor
component with Ti02 which would "eliminate or reduce the build-up of
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crud" as taught by Dulka by applying Akarsu's method to apply Ti02 onto a
substrate. Final Act. 4; see also Ans. 3--4.
The techniques in Akarsu and Dulka have been used to improve the
respective prior art endeavors. Dulka teaches a "metallic" nuclear reactor
component "coated with a ceramic oxide such as Ti02" aimed to reduce
buildup and "to retard or eliminate stress corrosion cracking." Dulka 3: 1-7,
4:63-5:8, Abstract. Akarsu teaches ways to coat various metals with oxide
ceramic. Akarsu i-fi-1 70, 71. Akarsu teaches that such coating may be used
for "the protection of instruments of all types[.]" Id. i-f 171. Akarsu teaches
that the resulting coated substrate - notwithstanding the fact that the Ti02 is
characterized as a photocatalytic layer- "are suitable for a wide range of
applications for antimicrobial purposes and/or for self-cleaning, for example
for machines, ... furniture, appliances of all types," to name just a few. Id.
i-f 170. Akarsu further explains that "[t]he layers are also suitable as
antifogging layers" as well as "the sterilization or the protection of
instruments of all types." Id. i-fi-f 170-171.
Given that Akarsu teaches that a metal component coated with Ti02
may be used in a wide range of applications without limiting it to any
particular application (i.e., in a photocatalytic application) and that Dulka
does not limit the metal coated with Ti02 to a CVD production method, and
also given that the Specification of the '702 Application recognizes that
CVD has been "commonly employed to deposit similar ceramic coatings,"
the Examiner concludes that "a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious" and that such an improvement is not beyond the
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skilled artisan's skill. Final Act. 4; Ans. 3--4; see also KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Instead of identifying reversible error in the Examiner's rationale to
combine, Appellants attack each reference individually that Akarsu does not
disclose a nuclear reactor and that Dulka uses a CVD method for the Ti02
coating. App. Br. 10-13. This argument is deficient in that Appellants are
attacking Akarsu and Dulka individually when the rejection is based on a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). It is not enough
for Appellants to show that there are differences between two references.
See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Merely
identifying that Dulka discloses an alternative method to apply a Ti02
coating does not demonstrate reversible error in the Examiner's obviousness
analysis based on the combined teachings of the cited art.
Both the inventor in Dulka and the inventor of the application at issue
are concerned with deposit accumulation and cost reduction in nuclear
reactors (Dulka 2:35--40, 64---65 (applying the Ti02 coating "eliminate[s] or
reduce[ s] the build-up of crud" and "reduces or eliminates the need for
costly cleaning ... "); Spec. i-fi-13, 6 (applying the Ti02 coating solves "the
problem of minimizing or eliminating the fouling rate" and "provid[ es] a
significant cost advantage relative to CVD")). Appellants' arguments do not
identify reversible error in the Examiner's reasoning that the "need or
problem known in the field of endeavor at the time of invention and
addressed by the patent" - namely, deposits accumulation and cost reduction
- would have led the skilled artisan to seek to combine Dulka with other
prior art teachings to address these problems. See KSR, 550 U.S. at 419-20.
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Making something "stronger, cheaper, cleaner, faster, lighter, smaller, more
durable, or more efficient" constitutes a "common-sensical ... motivation"
in the obviousness inquiry. DyStar Textilfarben GmbH & Co. Deutsch/and
KG v. CH Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Appellants' argument that the Examiner failed to support a finding of
predictability or reasonable expectation of success is equally unpersuasive as
it is also directed to the individual references. For example, Appellants
repeat the argument that "Akarsu is completely silent regarding radioactive
species and substrates that come into contact with radioactive species" and
that the "vapor deposition of precursors that form Ti02 particles in situ on
the surface of the components" in Dulka are different from those taught in
Akarsu, but do not explain why the combined teachings would be patentably
distinguishable from the recited method. App. Br. 14.
"Obviousness does not require absolute predictability of success ...
For obviousness under§ 103, all that is required is a reasonable expectation
of success." In re 0 'Farrell, 853 F.2d 894, 903---04 (Fed. Cir. 1988). In this
instance, the Specification recognizes that CVD is "commonly employed to
deposit similar ceramic coatings." Spec. i-f 6 (emphasis added). The
Examiner finds that a method to coat a metal substrate with a Ti02 layer is
known in the art (Akarsu i-f 70) and that Dulka teaches that "depositing ... a
titanium oxide ... on the interior metal wall surfaces ... in the radioactive
environment of the nuclear reactor" (Dulka 5:21-28) has been used to
improve the nuclear reactor. The Examiner also finds that "a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way" and such an application is not beyond the skilled
artisan's skill citing that both Akarsu and Dulka teaches methods of coating
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metal substrates with Ti02. See Final Act. 3--4; Ans. 3; see also KSR, 550
U.S. at 417.
Appellants do not identify reversible error in the Examiner's rationale
that a skilled artisan would have combined the prior art teachings to
"predictably achieve a non-conductive barrier layer on the underlying
metallic surface." Compare Ans. 4 with Reply Br. 5. While Appellants
argue that Akarsu teaches Ti02 particles doped in metal which would form a
conductive barrier (Reply Br. 5), Appellants have not explained why
Akarsu's disclosure that either "doped or undoped Ti02 particles may be
used" (Akarsu i-f 122) should be ignored. Reply Br. 5. Merely because the
Ti02 layer is used as a photocatalytic layer in Akarsu does not necessarily
limit the scope and content of the prior art to that particular functionality.
Akarsu provides multiple examples of how a substrate coated with Ti02 may
be used, for example, "for self-cleaning, for example for machines, ...
furniture, appliances of all types," "as antifogging layers" as well as "the
sterilization or the protection of instruments of all types." Akarsu i-fi-1 170-
171. "[F]amiliar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle." KSR, 550
U.S. at 420. In any event, claim 1 at issue here is an open ended process
claim and does not preclude any particular property the Ti02 layer may
possess.
To the extent that Appellants appear to argue that Dulka requires all
Ti02 coating on a nuclear reactor to be formed by the CVD method,
Appellants do not provide factual evidence (e.g., citations to Dulka) to show
that Dulka prohibits all methods of forming the Ti02 coating other than the
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CVD method. On the contrary, independent claim 1 of Dulka does not limit
the recited method to any particular type but only one that broadly
comprises:
depositing one of a titanium oxide, tantalum oxide and
zirconium oxide dielectric material on the interior metal wall
surfaces of one of a nozzle and a mixing section forming part of
an inlet-mixer of the jet pump for disposition in the radioactive
environment of the nuclear reactor to reduce or eliminate any
electric potential between the metal wall surfaces and the
charged particulates.
Claim 1 of Dulka. The test of obviousness is "whether the teachings of the
prior art, taken as a whole, would have made obvious the claimed
invention." In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Appellants,
therefore, have not shown that the record before us provides a factual basis
for finding that the Examiner erred in assessing the scope and content of the
prior art teachings as a whole.
Appellants next argue that Akarsu discloses a broad genus of
modifiers and a skilled artisan would not have had a reason to specifically
select the carboxylic acid modifiers recited in claim 1. App. Br. 15.
Appellants, however, do not dispute the Examiner's finding that Akarsu in
fact discloses the specific 2-[2-(2-methoxyethoxy)ethoxy] acetic acid
(C7H140s) recited in claim 1. Compare id. with Final Act. 3 (citing Akarsu
i-f 129); see also Ans. 5 (citing Akarsu i-f 129). Appellants acknowledge that
"Akarsu's Example 10 was cited as disclosing the carboxylic acid recited"
(App. Br. 17) and only argue that this and other examples in Akarsu do not
show "that any of the modifiers would affect deposition/accumulation of
charged particles of radioactive species on a metallic component of a nuclear
reactor." App. Br. 17. We are again unpersuaded that the Examiner erred in
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this aspect of the obviousness analysis because Akarsu undisputedly
discloses the acid recited in claim 1. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.").
Rejection of Claim 19 (Akarsu, Dulka, and Caldicott)
Claim 19 depends from claim 1 and further recites "wherein the
radioactive species comprises Co-60." Appellants repeat their argument
with regard to whether Akarsu's coating would have any effect on
radioactive material such as Co-60 (App. Br. 20) and therefore fail to
identify reversible error in the rejection of claim 19 for the same reasons
provided supra. See also Final Act. 5 (providing an obviousness analysis for
rejecting claim 19); Ans. 6-7 (providing the same and a response in light of
the Appellants' argument for claim 19).
Rejection of Claim 20 (Akarsu and Dulka)
Claim 20 depends from claim 19 and further recites "wherein the
oxide coating has a zeta potential less than or about equal to the electrical
polarity of the radioactive species."
The Examiner finds that the combined teaching would render claim 20
obvious because the prior art method- identical or substantially similar to
that recited - would result in a product having similar characteristics. Final
Act. 5-6; Ans. 7-8. Appellants argue that the Examiner reversibly erred
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because neither reference specifically mentions the zeta potential of the prior
art coatings. App. Br. 21.
"Where ... the claimed and prior art products are identical or
substantially identical ... the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics
of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(citations and footnote omitted). The mere recitation of a property or
characteristic not disclosed by the prior art does not necessarily confer
patentability to a composition or a method of using that composition. See In
re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5). In this case, the Examiner has
sufficiently shown that the combined prior art teachings render obvious the
method recited in claim 1 and therefore the two processes would produce
products with similar characteristics.
Where, as here, the Examiner establishes a reasonable belief that the
property or characteristic recited in the claims would have been inherent to
the product or process, the burden of proof shifts to Appellants to show that
this characteristic or property is not possessed by the prior art. See In re
Best, 562 F.2d 1255. Appellants present none other than attorney
arguments, without factual evidence showing that the prior art coating would
not have this particular characteristic (App. Br. 20-22), and we are
unpersuaded that the Examiner reversibly erred in rejecting claim 20.
In later parts of the Appeal Brief, Appellants again argue for the
patentability of claim 20 by repeating the same argument as addressed
above. Compare App. Br. 20-22 with App. Br. 26-27, 29-30. These
repeated arguments do not identify reversible error in the Examiner's
analysis.
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Rejection of Claims 1, 2, 7, and 9 (Akarsu, Dulka, and Kubota)
Appellants argue that the Examiner erred in rejecting claims 1, 2, 7,
and 9 over Akarsu, Dulka, and Kubota. App. Br. 22-23. The record,
however, does not clearly indicate that these claims have been rejected on
this ground. See Final Act. 6. In any case, we sustain the Examiner's
rejection of claims 1, 2, 7, and 9 over Akarsu and Dulka, and decline to
reach Appellants' argument with regard to claims 1, 2, 7, and 9 on this
asserted ground.
Rejection of Claim 19 (Akarsu, Dulka, Kubota, and Caldicott)
Appellants argue that the Examiner erred in rejecting claim 19 over
Akarsu, Dulka, Kubota, and Caldicott. App. Br. 24. The record, however,
does not clearly indicate that claim 19 has been rejected on this ground. See
Final Act. 6. In any case, we sustain the Examiner's rejection of claim 19
over Akarsu, Dulka, and Caldicott, and decline to reach Appellants'
argument with regard to claim 19 on this asserted ground.
Rejection of Claims 11-186 (Akarsu, Dulka, and Kubota)
In rejecting claim 11, the Examiner cites Kubota for the teaching that
for "a dip coating method" forming a titanium oxide layer over a tube body,
"the temperature of dipping solution" as well as "the time for soaking, the
speed for pulling up, the temperature for drying after pulling up, and the
time for drying become important factors [and] ... optimum conditions may
6 Appellants do not argue the remaining claims separately. App. Br. 24--25,
28-29. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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be decided by various examinations." Kubota i-f 46 (cited in Final Act. 6-7).
Finding that Kubota discloses "the general conditions of a claim," the
Examiner concludes that "it is not inventive to discover the optimum or
workable ranges by routine experimentation." Final Act. 7 (citing In re
Aller, 220 F.2d 454, 456 (CCPA 1955)).
"A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective." In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Here, Appellants do
not dispute the Examiner's finding with regard to Kubota. Compare App.
Br. 25 with Final Act. 6-7. Appellants only argue that the Examiner
reversibly erred in failing to provide evidence showing that "the particular
steps recited in [claims 11 and 18] are result-effective variables." App. Br.
25. As explained supra, because Appellants do not dispute the Examiner's
findings with regard to Akarsu which discloses the various coating steps,
Appellants' argument directed to an individual reference - rather than the
combined teachings - is unpersuasive in identifying reversible error.
Rejection of Claim 21 (Akarsu, Dulka, and Kubota)
Claim 21 depends from claim 11 and is otherwise identical to claim
20. See Claims Appendix 55-56. Appellants repeat the same argument for
claim 19 (compare App. Br. 20-22 with App. Br. 27, 30-31) which we
addressed supra.
Rejection of Claim 8 (Akarsu, Dulka, and Shanaghi)
Claim 8 depends from claim 1 and further recites "wherein the green
coating is heated at a rate of about l.0°C./minute to about 10.0 °C./minute."
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The Examiner cites Shanaghi for the teaching that "heat treatment"
and a "temperature changing rate [of] 1 °C/min" may be "very important"
"for achieving Ti02 nanoparticle coating with high quality on steel
substrate." Shanaghi at 307 (cited in Final Act. 8); see also Ans. 9.
Appellants, on the other hand, argue that Shanaghi uses a method different
from the CVD method used in Dulka and therefore the combined prior art
teaching would not have rendered obvious claim 8. App. Br. 31. Again,
merely showing that there are differences between two references is
insufficient to identify reversible error in the Examiner's obviousness
analysis based on the combined prior art teachings. See In re Beattie, 97 4
F.2d at 1312-13. To the extent that Appellants are raising an argument with
regard to a "ramp rate" (App. Br. 31-32), we note that the plain language of
claim 8 does not recite a "ramp rate" and such an unclaimed feature cannot
impart patentability to claim 8. In re Hiniker Co., 150 F.3d 1362, 1369
(Fed. Cir. 1998).
Rejection of Claim 22 (Akarsu, Dulka, and Nakabayashi)
In rejecting claim 22, the Examiner cites Nakabayashi for the teaching
that a photocatalyst may be mixed with a polyfluorosulfonic acid (Nafion) at
a weight ratio ranging from 0.001:10,000 to 0.1:1000. Final Act. 19 (citing
Nakabayashi 17:50-62, 18:7-16). Citing the teaching in Nakabayashi that
the resulting product may allow "improved immobilization on substrate
surfaces without suffering a lowering of photocatalytic activity" and may
also "avoid[] deterioration to coating or substrate by photocatalytic activity,
and exhibits excellent durability, staining resistance, and hardness," the
Examiner determines that a skilled artisan would have found claim 22
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obvious based on the combined teachings of Akarsu, Dulka, and
Nakabayashi. Id. (citing Nakabayashi 1:30-45, 2:31--48, 3:57---65).
Appellants argue that the Examiner reversibly erred for lack of
evidence of reason to combine but do not address the Examiner's rationale
as outlined above. Compare App. Br. 33 with Final Act. 19. Appellants do
not dispute that Nakabayashi teaches that coating a surface with Ti02 may
result in a product with "excellent durability, staining resistance, and
hardness" (Nakabayashi 1 :30-45) and being applicable "in fields in which it
is necessary to prevent dirt from adhering to the surface of various
substrates" (Nakabayashi 2: 12-14). See e.g., App. Br. 33. Appellants do
not dispute that Akarsu provides multiple examples of how a substrate
coated with Ti02 may be used, for example, "for self-cleaning, for example
for machines, ... furniture, appliances of all types," "as antifogging layers"
as well as "the sterilization or the protection of instruments of all types"
(Akarsu i-fi-f 170-171). See, e.g., App. Br. 33. Dulka teaches that applying a
Ti02 coating over components of a nuclear reactor "reduces or eliminates
the need for costly cleaning ... " Dulka 2:36--40, 3:6-7. The application at
issue recognizes that CVD has been "commonly employed to deposit similar
ceramic coatings." Spec. i1 6. "The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR, 550 U.S. at 416. Appellants therefore
have not identified reversible error in the Examiner's rationale for
combining the references based on articulated reasoning with rational
underpinning to support the legal conclusion of obviousness. See KSR, 550
U.S. at 418.
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Rejection of Claim 23 (Akarsu, Dulka, Nakabayashi, and Caldicott)
Claim 23 depends from claim 22 and further recites "wherein the
radioactive species comprises Co-60." Appellants repeat their argument
with regard to whether Akarsu's coating would have any effect on
radioactive material such as Co-60 (App. Br. 34) and therefore fail to
identify reversible error in the rejection of claim 23 for the same reasons
provided with regard to claim 19 supra. See also Final Act. 5 (providing an
obviousness analysis for rejecting claim 19), 23 (providing an obviousness
analysis for rejecting claim 23); Ans. 6-7 (providing an obviousness analysis
for rejecting claim 19 and a response in light of the Appellants' argument for
claim 19), 9 (providing a response in light of Appellants' argument for claim
23).
Rejection of Claims 1, 2, 7, and 9 (Ogata, Akarsu, and Dulka)7
On the alternative ground of rejection based on Ogata, Akarsu, and
Dulka, Appellants do not dispute the Examiner's finding that Ogata teaches
the various steps recited in claim 1 and that "Akarsu teaches a method of
forming a Ti02 photocatalytic coating via nano Ti02 particulate
suspensions" using 2-[2-(2-methoxyethoxy)ethoxy] acetic acid (C7H140s).
Compare Final Act. 10 with App. Br. 34--35. Appellants instead argue that
Ogata does not teach that its coatings would "have any effect on the
deposition of radioactive species onto any metallic substrate" and that Dulka
uses the CVD method of applying the Ti02 coating which differs from those
7 Appellants do not make separate arguments for claims 2, 7, and 9 (App. Br.
34--41) with respect to the rejection over Ogata, Akarsu, and Dulka and they
therefore stand or fall with claim 1 with respect to Ogata, Akarsu, and
Dulka. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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taught in either Akarsu or Ogata. App. Br. 35-36. As discussed supra,
Appellants' arguments attacking the references individually are unpersuasive
of reversible error in the rejection when the rejection is based on a
combination of references. See In re Keller, 642 F.2d at 426. Appellants'
remaining arguments, including reasonable expectation of success, are
similar to those discussed supra and unpersuasive for failure to provide
factual evidence to show that a skilled artisan would not reasonably expect
the combined method to be successful. See App. Br. 37--41 (arguing that
"Ogata does not remedy the absence of evidence ... that supports a finding
of predictability/reasonable expectation of success").
Rejection of Claim 19 (Ogata, Akarsu, Dulka, and Caldicott)
Appellants repeat their argument with regard to whether Akarsu's
coating would have any effect on radioactive material such as Co-60 (App.
Br. 41 ), and therefore fail to identify reversible error in the rejection of claim
19 for the same reasons provided with regard to the rejection of claim 1
based on Ogata, Akarsu, and Dulka, as well as the rejection of claim 19
based on Akarsu, Dulka, and Caldicott. See also Final Act. 12 (providing an
obviousness analysis for rejecting claim 19 based on Ogata, Akarsu, Dulka,
and Caldicott); Ans. 6-7 (providing the same and a response in light of the
Appellants' argument for claim 19).
Rejection of Claim 20 (Ogata, Akarsu, and Dulka)
Appellants repeat their argument that none of the references including
Ogata mentions zeta potential as an inherent property (App. Br. 42, 46--47),
and therefore fail to identify reversible error in the rejection of claim 20 for
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the same reasons provided with regard to the rejection of claim 20 based on
Akarsu and Dulka discussed in detail supra. See also Final Act. 12
(providing an obviousness analysis for rejecting claim 20 based on Ogata,
Akarsu, and Dulka); Ans. 7-8 (providing the same and a response in light of
the Appellants' argument for claim 20).
Rejection of Claims 1, 2, 7, and 9 (Ogata, Akarsu, Dulka, and Kubota)
Appellants argue that the Examiner erred in rejecting claims 1, 2, 7,
and 9 over Ogata, Akarsu, Dulka, and Kubota. App. Br. 43--44. The record,
however, does not clearly indicate that these claims have been rejected on
this ground (see Final Act. 13), and we do not, therefore, directly address
these arguments. In any case, we sustain the Examiner's rejection of these
claims over Ogata, Akarsu, and Dulka as set forth above.
Rejection of Claim 19 (Ogata, Akarsu, Dulka, Kubota, and Caldicott)
Appellants argue that the Examiner erred in rejecting claim 19 over
Akarsu, Dulka, Kubota, and Caldicott. App. Br. 44. The record, however,
does not clearly indicate that claim 19 has been rejected on this ground. See
Final Act. 13. In any case, we sustain the Examiner's rejection of claim 19
over Ogata, Akarsu, Dulka, and Caldicott, and decline to reach Appellants'
argument with regard to claim 19 on this asserted ground.
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Rejection of Claims 11 and 18 (Ogata, Akarsu, Dulka, and Kubota)8
Appellants repeat the argument that the Examiner reversibly erred in
failing to provide evidence showing that "the particular steps recited in
[claims 11 and 18] are result-effective variables." Compare App. Br. 45
with App. Br. 25. Appellants fail to identify reversible error in the rejection
of these claims for the same reasons provided with regard to the rejection
based on Akarsu, Dulka, and Kubota. See Final Act. 11-15 (providing an
obviousness analysis for rejecting claims 11 and 18 based on Ogata, Akarsu,
Dulka, and Kubota); Ans. 8-9 (providing the same and a response in light of
the Appellants' argument for claims 11 and 18).
Rejection of Claim 21 (Ogata, Akarsu, Dulka, and Kubota)
Claim 21 depends from claim 11 and is otherwise identical to claim
20. See Claims Appendix 55-56. Appellants repeat the same argument for
claim 20 (compare App. Br. 20-22, 42, 46-47 with App. Br. 47--48) which
we addressed supra.
Rejection of Claim 8 (Ogata, Akarsu, Dulka, and Shanaghi)
Appellants argue that "Shanaghi does not provide any evidence that
remedies the failure of Ogata, Akarsu and Dulka" (App. Br. 49) and
therefore do not identify reversible error in the Examiner's obviousness
analysis for the same reason provided for the rejection of claim 8 based on
Akarsu, Dulka, and Shanaghi. See also Final Act. 16 (providing an
obviousness analysis for rejecting claim 8 based on Ogata, Akarsu, Dulka,
and Shanaghi); Ans. 9.
8 Appellants do not argue the remaining claims separately. App. Br. 45--46.
See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Rejection of Claims 1, 2, 6-9, and 11-21 (Ogata, Akarsu, Dulka, Kubota,
Caldicott, and Shanaghi)9
Appellants argue that the Examiner erred in rejecting these claims
over Ogata, Akarsu, Dulka, Kubota, Caldicott, and Shanaghi. App. Br. 50.
The record, however, does not clearly indicate that these claims have been
rejected on this ground. See Final Act. 9-11, 13-15. In any case, we sustain
the Examiner's rejection of claim 1 over Ogata, Akarsu, and Dulka as well
as claim 11 Ogata, Akarsu, Dulka, and Kubota, and decline to reach
Appellants' argument with regard to these claims on this asserted ground.
Rejection of Claim 22 (Ogata, Akarsu, Dulka, and Nakabayashi)
Appellants repeat their argument with regard to whether it would have
been obvious to combine the Nafion resins disclosed in Nakabayashi with
the remaining references (compare App. Br. 51 with App. Br. 33) and
therefore fail to identify reversible error in the rejection of claim 22 for the
same reasons provided with regard to the rejection of claim 22 based on
Akarsu, Dulka, and Nakabayashi. See also Final Act. 20-22 (providing an
obviousness analysis for rejecting claim 22 based on Ogata, Akarsu, Dulka,
and Nakabayashi); Ans. 9-10 (providing the same and a response in light of
the Appellants' argument for claim 22).
Rejection of Claim 23 (Ogata, Akarsu, Dulka, and Nakabayashi)
Appellants repeat their argument with regard to whether Akarsu' s
coating would have any effect on radioactive material such as Co-60
9 Appellants only mention claims 1 and 11 in this discussion and not the
remaining claims. App. Br. 50. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
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(compare App. Br. 51-52 with App. Br. 34) and therefore fail to identify
reversible error in the rejection of claim 23 for the same reasons provided
with regard to the rejection of claim 23 over Akarsu, Dulka, and
Nakabayashi as well as the rejection of claim 19. See also Final Act. 22
(providing an obviousness analysis for rejecting claim 23 based on Ogata,
Akarsu, Dulka, and Nakabayashi); Ans. 9-10 (providing the same and a
response in light of the Appellants' argument for claim 23).
Appellants' Remaining Arguments
In the Reply Brief, Appellants argue that the Examiner raised new
issues in the Examiner's Answer. Reply Br. 5---6. Appellants assert that
Examiner's statements regarding the non-conductive coating in Dulka, the
lack of teaching in Dulka that CVD is critical, and the structural similarities
between the resultant products from the recited and prior art methods are
new issues raised for the first time in the Examiner's Answer. Id.
The record, however, indicates that the Examiner explained in the
Final Action dated June 3, 2015 that Dulka teaches the various advantages of
coating a metallic surface with a "non-conductive coating" (Final Act. 26
(citing Dulka 2:35---68)) and that "there is no teaching in Dulka that states or
implies the mode of application, CVD, is critical[.]" Final Act. 26. The
Examiner also explained that the prior art process - having the same steps as
those recited in claim 1 - would result in products having similar properties
(for example, zeta potential). Id. at 24--25. Based on the evidence before us,
we are unpersuaded by Appellants' argument that the Examiner improperly
raised new issues in the Examiner's Answer.
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DECISION
The Examiner's rejections of claims 1, 2, 6-9, and 11-23 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
OWENS, Administrative Patent Judge, dissenting.
Establishing a prima facie case of obviousness requires showing that
one of ordinary skill in the art would have had both an apparent reason or
motivation to modify the prior art and predictability or a reasonable
expectation of success in doing so. See KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991).
Dulka eliminates or substantially inhibits electrostatic deposition of
charged particles from coolant onto the surface of an inlet-mixer of a jet
pump forming part of a water recirculation system in a boiling water nuclear
reactor by coating the inlet-mixer with a dielectric coating which
electrochemically isolates the inlet-mixer's metal surface from reactor water
and retards diffusion of oxygen to the metal surfaces, thereby reducing
susceptibility to stress corrosion cracking of the metallic parts, and
minimizes or eliminates the buildup of crud on the inlet-mixer surfaces
(col. 1, 11. 7-11, col. 3, 11. 1-5, col. 4, 1. 67 - col. 5, 1. 4). The coating
preferably is a ceramic oxide, preferably Ti02 or Ta20s, and the only
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disclosed method for forming the coating is chemical vapor deposition
(col. 3, 11. 6-16, col. 4, 11. 39---67).
Akarsu discloses a method, which can be an immersing method, for
applying a layer of photocatalytic, nanoscale Ti02-containing particles to a
substrate to provide an active photocatalytic layer having efficiency up to ten
times that of the prior art (i1i12, 28, 70, 114, 116). The coating can render
the substrate, which can be metal and can be a medical or hygiene-sector
substrate, self-cleaning and/or capable of being cleaned with the help of
irradiation (i1i1 61, 62).
Ogata discloses a photocatalyst which can be Ti02 and can be formed
on a substrate by dipping the substrate into a titanium oxide sol, an
amorphous titanium peroxide sol or a mixed sol (col. 1, 11. 6-8, col. 3, 11. 7-
13, col. 4, 11. 60-63).
The Examiner finds that compared to Dulka's method, "as the method
of Akarsu/Ogata would similarly yield a non-conductive dielectric coating
(Ti02) on the metallic surface the examiner maintains that predictably it
would similarly achieve a physical barrier between the metallic surface and
the flow, thus similarly inhibiting the interaction of the conductive metal
housing and the flow" (Ans. 4), and "considering that even the preferred
intention of the coating of Akarsu is to be self-cleaning, it would similarly
suggest that interactions with species coming into contact with the surface
would be minimized to permit passive removal" (Ans. 6).
The Examiner does not establish that Akarsu or Ogata would have
provided one of ordinary skill in the art with an apparent reason or
motivation to use the disclosed photocatalytic layer-forming methods as a
substitute for Dulka's chemical vapor deposition method for inhibiting
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electrostatic deposition onto a nuclear reactor jet pump's inlet-mixer and
reducing its susceptibility to stress corrosion cracking. Nor does the
Examiner establish that Akarsu's disclosures that the substrate can be metal
and that the photocatalytic layer-coated substrate can be self-cleaning would
have provided one of ordinary skill in the art with predictability or a
reasonable expectation of success in using the photocatalytic layer-forming
method to eliminate the buildup of crud on Dulka's nuclear reactor jet
pump's inlet-mixer.
Thus, the record indicates that the rejections are based upon
impermissible hindsight in view of the Appellants' disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior art").
Accordingly, I dissent.
27