Ex Parte Lifchits

Patent Trial and Appeal Board

Oct 23, 2012

11789664 (P.T.A.B. Oct. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/789,664 04/24/2007 Alexandre D. Lifchits 68987/R691
(06W161-US-NP)
1360
92899 7590 10/23/2012
Christie Parker & Hale LLP
P.O.Box 29001
Glendale, CA 91209-9001
EXAMINER
NGUYEN, HAIDUNG D
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
10/23/2012 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 ALEXANDRE D. LIFCHITS
__________

Appeal 2011-004212
Application 11/789,664
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 1-25. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b).
We AFFIRM.
Appellant’s invention is directed to method of forming a composite
layer on lapping plates that are used to polish optical elements (Spec. 1:14-
20; 2:11-20).
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Application 11/789,664

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Claim 1 is illustrative:
1. A method of forming a layer on a composite, the
composite comprising a non-conductive material and
aluminum, the method comprising the steps of:

combining a non-conductive material and aluminum to
form a composite, and electrochemically oxidizing said
aluminum on a surface of said composite to form a
layer of non-conductive material incorporated into crystalline
aluminum oxide.

Appellant appeals the following rejections:
1. Claims 1, 2, 4, 5, 9, 11, 13, 14, 16, 17, 21, 23, and 25 are rejected
under 35 U.S.C. § 102(b) as being unpatentable over Abernathy (US
3,287,862, issued Nov. 29, 1966).
2. Claims 3, 6-8, 10, 12, 15, 18-20, 22, and 24 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Abernathy in view of
Seligman (US 2,360,798, issued Oct. 17, 1944).
3. Claims 3, 6-8, 10, 12, 15, 18-20, 22, and 24 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Abernathy in view of
Alkhimov (US 5,302,414, issued Apr. 12, 1994).

With regard to rejection (1), Appellant’s arguments focus on the common
elements of claims 1 and 13 only (App. Br. 4-10). We select claim 1 as
representative.
With regard to rejections (2) and (3), Appellant’s arguments focus on the
subject matter of claim 3 (App. Br. 10-13).

REJECTION (1)
ISSUE
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Application 11/789,664

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Did the Examiner reversibly err in finding that Abernathy teaches an
identical process as recited in claim 1 such that Abernathy’s material
inherently is a composite as required by claim 1? We decide this issue in the
negative.

FINDINGS OF FACT AND ANALYSES
Appellant argues that Abernathy does not teach a “composite” within
the meaning of the claims because Abernathy teaches that the grit is
embedded in the working surfaces of the aluminum (App. Br. 8). Appellant
contends that the construction of “composite” consistent with the
Specification is a structure where the grit is embedded throughout the whole
or entire aluminum layer 26 (App. Br. 7).
The Examiner finds that Abernathy teaches the same process as
claimed by Appellant such that the claimed composite structure must be
inherent (Ans. 3-4). The Examiner responds that Appellant’s arguments
regarding the depth of grit penetration into the aluminum relate to an
unclaimed feature (Ans. 6-7).
The preponderance of the evidence favors the Examiner’s finding of
anticipation. Abernathy teaches embedding diamond particles into an
aluminum supporting member and then anodizing the aluminum surface to
form aluminum oxide (Abernathy, col. 1, ll. 65-72; col. 2, ll. 1-10).
Abernathy’s process is identical to the process recited in claim 1 and would
inherently produce a composite as claimed.
Though Appellant contends that Abernathy’s process of charging the
aluminum supporting member with diamond does not produce a composite
as defined in the claims, such argument does not appreciate the breadth of
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Application 11/789,664

4
claim 1. Appellant’s argument regarding the depth of penetration of the grit
into the aluminum is not specified by the claims. Moreover, we note that
Appellant’s Figure 2 relied upon to show the depth of grit penetration in
Appellant’s composite is disclosed as not being drawn to scale (Spec. 5:18-
22). Accordingly, it is not possible to determine the exact depth of
penetration disclosed by Appellant or whether it might differ from the
composite structure resulting from Abernathy’s process.
Appellant’s claimed process includes “combining a non-conductive
material and aluminum to form a composite” (claim 1). The Specification
discloses that “combining” may be achieved by cold spraying which
involves kinetically spraying particles onto a layer of aluminum by
entraining the particles in a flow of gas and directing the flow through a
nozzle at a layer of aluminum (Spec. 4:16-19). Abernathy discloses air
blasting the diamond particles into the working surfaces of the aluminum
supporting member (col. 2, ll. 7-10). We fail to see any difference between
the claimed method and Abernathy’s disclosed method in forming a
composite1.
Appellant argues that the Examiner’s finding that Abernathy’s
composite structure inherently is the same as the composite resulting from
the claimed method is speculative (App. Br. 9-10). We disagree because the
Examiner’s finding that Abernathy teaches the same process with the same
materials such the resulting product must inherently have the same structure
reasonably shifts the burden to Appellant to show otherwise. In re Best, 562

1 We note that both Appellant and the Examiner apply similar definitions of
“composite” (App. Br. 7; Ans. 6).
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F.2d 1252, 1255 (CCPA 1977). Appellant’s arguments fail to persuade us of
any error in the Examiner’s finding of anticipation.
We affirm the Examiner’s § 102 rejection over Abernathy.

REJECTIONS (2) AND (3)
Appellant relies on arguments made regarding Abernathy’s failure to
anticipate, which are unpersuasive for the reasons noted above (App. Br. 11,
12).
Regarding rejection (2), the Examiner relies on Seligman to teach
electrolytic codeposition processes to combine aluminum and particles as
required by claim 3 (Ans. 4).
Appellant argues that Seligman discloses an electroplating process not
“electrolytic codeposition” as claimed (App. Br. 11). Appellant contends
that unlike Seligman’s process, the claimed process involves an aluminum
oxide composite material, which is not a metal (App. Br. 11). Appellant
contends that the Examiner’s finding that electroplating is the same as
electrolytic codeposition is conclusory (Reply Br. 5). Appellant does not
contest the Examiner’s reason for combining Seligman’s electroplating
process with Abernathy’s process.
The Examiner finds that Seligman’s electroplating process is an
electrolytic codeposition process because it includes suspending diamonds in
an electrolyte (i.e., plating solution) where the diamond particles are
embedded to the surface being plated (Ans. 7).
The preponderance of the evidence favors the Examiner conclusion of
obviousness. Appellant discloses that electrolytic codeposition includes
codeposition from an aqueous electrolyte (Spec. 5:3-5). Appellant has not
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Application 11/789,664

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explained why the Examiner’s finding that electroplating that deposits
materials from an electrolyte, as in Seligman and consistent with Appellant’s
description of electrolytic codeposition, is erroneous. The Examiner’s
findings are not conclusory but are based on the similarity in the deposition
of material from an electrolyte.
Regarding rejection (3), Appellant argues that Alkhimov teaches
forming a coating on a substrate which is not a composite (App. Br. 12-13).
However, this argument fails to address or show error in the Examiner’s
stated rejection which is based on using Alkhimov’s cold-spraying technique
in Abernathy’s process in order to form Abernathy’s composite (Ans. 5; 7-
8).
On this record, we affirm the Examiner’s § 103 rejections.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

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