Ex Parte Kim et alDownload PDFPatent Trial and Appeal BoardApr 9, 201813154702 (P.T.A.B. Apr. 9, 2018) Copy Citation 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. 2 Appeal2016-005346 Application 13/154,702 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 3 Appeal2016-005346 Application 13/154,702 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). 4 Appeal2016-005346 Application 13/154,702 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. 5 Appeal2016-005346 Application 13/154,702 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. 6 Appeal2016-005346 Application 13/154,702 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 7 Appeal2016-005346 Application 13/154,702 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 8 Appeal2016-005346 Application 13/154,702 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. 9 Appeal2016-005346 Application 13/154,702 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 10 Appeal2016-005346 Application 13/154,702 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 11 Appeal2016-005346 Application 13/154,702 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 12 Appeal2016-005346 Application 13/154,702 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 13 Appeal2016-005346 Application 13/154,702 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. 14 Appeal2016-005346 Application 13/154,702 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). 15 Appeal2016-005346 Application 13/154,702 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." 16 Appeal2016-005346 Application 13/154,702 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 17 Appeal2016-005346 Application 13/154,702 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. 18 Appeal2016-005346 Application 13/154,702 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). 19 Appeal2016-005346 Application 13/154,702 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 20 Appeal2016-005346 Application 13/154,702 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. 21 Appeal2016-005346 Application 13/154,702 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). 22 Appeal2016-005346 Application 13/154,702 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). 23 Appeal2016-005346 Application 13/154,702 (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. 24 Appeal2016-005346 Application 13/154,702 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 25 Appeal2016-005346 Application 13/154,702 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 26 Appeal2016-005346 Application 13/154,702 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 Copy with citationCopy as parenthetical citation