Ex Parte KmetzDownload PDFPatent Trial and Appeal BoardJun 19, 201512329013 (P.T.A.B. Jun. 19, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/329,013 12/05/2008 Michael Kmetz 086.07936-US-AA(05-642-2) 7987 52237 7590 06/22/2015 Bachman & LaPointe, P.C. 900 Chapel St., Suite 1201 New Haven, CT 06510 EXAMINER CHRISS, JENNIFER A ART UNIT PAPER NUMBER 1786 MAIL DATE DELIVERY MODE 06/22/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL KMETZ ____________ Appeal 2013-005203 Application 12/329,013 Technology Center 1700 ____________ Before TERRY J. OWENS, PETER F. KRATZ, and GEORGE C. BEST, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 16, 21, 23, and 24. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellant’s claimed invention is directed to a composite including a substrate formed from silicon carbide fibers woven into cloth and having alternating coating layers of boron nitride (BN) and silicon nitride (Si3N4). Claim 16 is illustrative and reproduced below: 16. A composite comprising: a substrate having a surface; a BN/Si3N4 coating on said substrate surface; Appeal 2013-005203 Application 12/329,013 2 said coating comprising alternating layers of BN and Si3N4; said substrate being formed from a cloth material having SiC fibers woven therein, said coating surrounding said SiC fibers and bonding said fibers to a surrounding matrix of SiC in a manner such that a load is transferred from the matrix to the SiC fibers and the composite does not act as a monolithic material; said matrix of SiC surrounding a final layer of said Si3N4; and said coating having a recession distance less than 100µm after 100 hours. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Subramanian 2006/0147688 A1 Jul. 6, 2006 DiCarlo 7,427,428 B1 Sep. 23, 2008 Fareed 6,228,453 B1 May 8, 2001 Engdahl EP 1 004 558 A2 May 31, 2000 Satoshi Kitaoka et al., Fabrication of Continuous-SiC-Fiber- Reinforced SiAlON-Based Ceramic Composites by Reactive Melt Infiltration, 84 J. AM. CERAM. SOC. 1945-51 (2001) (hereinafter Kitaoka). The Examiner maintains the following grounds of rejection: Claims 16, 21, 23, and 24 stand rejected under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as invention. Claims 16, 21, and 24 stand rejected under 35 U.S.C. § 102(e) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Subramanian. Claims 16, 21, and 24 stand rejected under 35 U.S.C. Appeal 2013-005203 Application 12/329,013 3 § 102(e) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious over DiCarlo. Claims 16, 21, and 24 stand rejected under 35 U.S.C. § 102(b) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Kitaoka. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Subramanian. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over DiCarlo in view of Subramanian. Claims 16, 21, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Engdahl in view of Fareed. We affirm all of the stated rejections with the exception of the § 103(a) rejection over Engdahl in view of Fareed, which we reverse. Indefiniteness Rejection Concerning the rejection of the appealed claims under the second paragraph of 35 U.S.C. § 112, we concur with the Examiner that the coating recession distance of less than 100 µm after 100 hours as set forth in sole independent claim 16 lacks any specification of the conditions to which the coating is subjected for the required 100 hours before the coating recession distance is measured. The lack of test conditions renders the scope of this required recession distance characteristic subject to more than one interpretation rendering the claims indefinite (Final Action 3; Ans. 3–4). Appellant’s contention that one of ordinary skill in the art may employ whatever test may be liked to measure the recession distance after the 100 hours underscores the merit in the Examiner’s rejection rather than persuasively refuting it (App. Br. 3–4; Reply Br. 2–3). As made evident by a review of the bar graph depicted in Appellant’s drawing Figure 4, the recession distance can vary depending on the environmental conditions Appeal 2013-005203 Application 12/329,013 4 (such as humidity) that the sample to be measured experiences during the 100 hours before the measurement is taken. On this record, we affirm the Examiner’s indefiniteness rejection. Prior Art Rejections For purposes of our consideration of the Examiner’s prior art rejections, we consider the coating recession condition limitation of claim 16 as requiring a recession distance that is less than 100 µm when a recession distance measurement is taken of a sample of the coated composite after the sample is held for 100 hours under any selected set of conditions, including non-severe environmental conditions, such as conditions of substantially no humidity (substantially zero percent water vapor partial pressure) and low temperatures and under which storage stable conditions no or very little oxidation and corresponding coating recession would be expected after 100 hours (Spec. ¶¶ 31, 33; Fig. 4).1 Concerning the Examiner’s anticipation rejection over Subramanian, the Examiner has determined that Subramanian explicitly discloses a composite (turbine blade) that meets all of the requirements of representative claim 16 with the exception of the recited coating recession distance property (Final Action 3–5). The Examiner basically takes the position that the composite of Subramanian would have been expected to have a coating recession distance property corresponding to that claimed given the 1 This interpretation is not inconsistent with Appellant’s argument indicating that one of ordinary skill in the art could choose “whatever test he/she likes” in determining the recession distance as claimed (App. Br. 3). Appellant argues each of the rejections involving multiple claims together as a group. Accordingly, we select claim 16 as the representative claim on which we shall decide this appeal as to the rejections involving multiple claims. Appeal 2013-005203 Application 12/329,013 5 commonalities of materials used in forming the composite of Subramanian and as called for in representative claim 16 (Final Action 4–5). Appellant does not dispute the Examiner’s factual findings with respect to Subramanian describing a composite corresponding to the claimed composite with the exception that Appellant contends that the Examiner has not discharged the burden to establish that the claimed coating recession distance would be an inherent property of the composite of Subramanian. In this regard, Appellant maintains that Subramanian is non-enabling as to a method of forming the composite with the claimed recession distance property and Subramanian employs thicker BN coatings, such as 0.4 [0.3] microns, than employed by Appellant, such as 0.05 micron, which would militate against the Examiner’s inherency determination as to Subramanian necessarily having the claimed coating recession distance property (App. Br. 5–9; Subramanian ¶ 30; Spec. ¶ 28; Reply Br. 3–4). We are not persuaded of substantive error in the Examiner’s anticipation rejection by Appellant’s arguments. Moreover, Appellant’s conclusive assertion that Subramanian is non–enabling because it does not disclose the deposition conditions for the coating layers is not supported by the record and misses the mark in responding to the Examiner’s rejection. In this regard, it is appropriate that a party asserting a lack of enablement of an anticipatorily applied published patent application document (as here) should bear the burden of establishing the lack of enablement of that which is disclosed in the applied document, particularly where the rejection opposed pertains to claims of a patent application that is pending before the PTO. This is because the PTO lacks resources to test the written technical publications on which they rely for enablement. See, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355, n.22 (Fed. Cir. 2003) Appeal 2013-005203 Application 12/329,013 6 (relying on precedent the court held that “a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled” and the court instructed that, while not an issue before them, “by logical extension” the same presumption should apply to prior art printed publications). See In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (“we now hold that a prior art printed publication cited by an examiner is presumptively enabling”). Furthermore and as determined by the Examiner, Subramanian provides a description of techniques for deposition of the layer materials (Ans. 5–6; ¶¶ 23–26). Consequently, Appellant’s unadorned argument to the effect that Subramanian is non-enabling lacks persuasive merit. While Appellant’s arguments respecting the differences in the coating thicknesses may have some merit in asserting that the Examiner has not established that the composite of Subramanian necessarily would have the same coating recession distance property as that possessed by Appellant’s thinner coated composites, we have interpreted the coating recession distance property of representative claim 16 as embracing a recession distance of the specified value range that can be obtained by measuring the recession distance after 100 hours of exposure of a sample to a non-harsh environment that would not have resulted in oxidation leading to any significant recession of the coating. In this regard, we observe that, as depicted in Appellant’s drawing Figure 4, under less heavy moisture conditions lesser amounts of recession occur. Consequently, under these circumstances, Appellant’s arguments concerning the composite of Subramanian not necessarily having the recession distance property as Appellant’s claim have little merit. Appeal 2013-005203 Application 12/329,013 7 Accordingly, we shall affirm the Examiner’s anticipation rejection over Subramanian. We note that a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for “anticipation is the epitome of obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984); see also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Consequently, we likewise affirm the Examiner’s obviousness rejection of claims 16, 21, and 24 over Subramanian. Concerning the Examiner’s anticipation rejection over DiCarlo, Appellant limits the argument to the recession distance property set forth in representative claim 16, maintaining that DiCarlo would not necessarily possess this claimed property principally because embodiment B of DiCarlo (where no carbon layer is employed) allows for some separation of the BN layer away from the matrix and, when moisture is present, moisture access to the BN layer along with an alleged greater recession rate (App. Br. 10; Reply Br.4). For reasons discussed above, however, the claimed coating recession distance does not require environmental exposure to moisture conditions before the measurement is taken. Consequently, Appellant’s argument is not persuasive of reversible error in the Examiner’s anticipation rejection and/or obviousness rejection of claims 16, 21, and 24 over DiCarlo. Accordingly, we affirm the latter rejections. As for the Examiner’s anticipation rejection over Kitaoka, Appellant argues that a carbon interface employed by Kitaoka between BN and the fiber material would not stand up to oxidation and hence the product of Kitaoka would not possess the recession distance of representative claim 16 Appeal 2013-005203 Application 12/329,013 8 (App. Br. 11–12; Reply Br. 4–5). As discussed above respecting the other anticipation rejections, the recession distance property as set forth in representative claim 16 is not required to be measured after 100 hours of exposure to a high moisture/oxidizing environment. As such, Appellant’s argument has no persuasive merit. It follows that we shall sustain the Examiner’s anticipation rejection and obviousness rejection over Kitaoka. Concerning the separate obviousness rejections as to dependent claim 23 over Subramanian and/or DiCarlo in view of Subramanian, Appellant relies on the argument they made with respect to the base rejections pertaining to independent claim 16 (App. Br. 12). Hence, we shall sustain the latter rejections on this appeal record. Our resolution of the Examiner’s obviousness rejection of claims 16, 21, 23, and 24 over the combined teachings of Engdahl and Fareed is another matter. Here, we concur with Appellant’s argument for reversal because the Examiner has not put forth an apparent reason to modify Engdahl to employ a woven fabric including SiC fibers therein as a substrate for the boron nitride and silicon nitride coatings of Engdahl rather than the use of individual fibers as the recipients of the binary coating as taught by Engdahl, and which coated fibers are then arranged in a matrix as taught by Engdahl. In this regard, the Examiner has not established that Fareed’s teachings respecting different combinations of coatings (boron nitride/silicon carbide) for fabric plies of woven continuous fibers would have led one of ordinary skill in the art to modify Engdahl in a manner that would have resulted in the claimed composite with the recited substrate and coatings and that includes the claimed load transfer functionality, as argued by Appellant (App. Br. 13–15). Appeal 2013-005203 Application 12/329,013 9 Consequently, we reverse the latter rejection. CONCLUSION The Examiner’s decision to reject claims16, 21, 23, and 24 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as invention; to reject claims 16, 21, and 24 under 35 U.S.C. § 102(e) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Subramanian; to reject claims 16, 21, and 24 under 35 U.S.C. § 102(e) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious over DiCarlo; to reject claims 16, 21, and 24 under 35 U.S.C. § 102(b) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Kitaoka; to reject claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Subramanian; to reject claim 23 under 35 U.S.C. § 103(a) as being unpatentable over DiCarlo in view of Subramanian is affirmed. The Examiner’s decision to reject claims 16, 21, 23, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Engdahl in view of Fareed is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED tc Copy with citationCopy as parenthetical citation