Ex parte Olson

Board of Patent Appeals and Interferences

Jan 31, 2002

08826209 (B.P.A.I. Jan. 31, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES M. OLSON
__________
Appeal No. 2000-0049
Application 08/826,209
___________
ON BRIEF
___________
Before OWENS, LIBERMAN and JEFFREY SMITH, Administrative
Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-3, 5-
10, 12, 18 and 19, which are all of the claims remaining in
the application.
THE INVENTION
The appellant’s claimed invention is directed toward
methods for making a wear part coated with a diamond film
Appeal No. 2000-0049
Application 08/826,209
2
having a {100} crystallographic faceting layer and a non-{100}
crystallographic faceting layer. Claims 1 and 7 are
illustrative:
1. A method for making a diamond film coated wear part,
comprising the steps of:
providing a wear part;
depositing a first layer of polycrystalline diamond film
on said part with non-{100} crystallographic faceting;
depositing on the surface of said first layer a second
layer of polycrystalline diamond film having {100}
crystallographic faceting, said second layer having a
thickness sufficient to overgrow the roughness of said surface
of said first layer with a continuous film.
7. A method of making a wear component, comprising the
steps of:
providing a base surface;
producing a polycrystalline diamond film structure having
a first layer and a second layer on said first layer, said
first layer having non-{100} crystallographic faceting, and
said second
layer having {100} crystallographic faceting, said second
layer having a thickness sufficient to overgrow the roughness
of said surface of said first layer with a continuous film;
and
applying said diamond film to said base surface.
THE REFERENCES
Taniguchi et al. (Taniguchi) 5,380,349 Jan. 10,
Appeal No. 2000-0049
Application 08/826,209
Citations herein to Okamura are to an English translation thereof, a copy of which is provided1
to the appellant with this decision.
3
1995
Okamura 5-23903 Feb. 2,1
1993
(Japanese patent publication)
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 1, 2, 5-9, 12, 18 and 19 over Okamura in view
of Taniguchi, and claims 3 and 10 over Okamura in view of
Taniguchi and the admitted prior art.
OPINION
We reverse the aforementioned rejections and remand the
application to the examiner.
Okamura discloses a diamond-coated cutter which “consists
of a substrate and a double diamond coat layer constituted by
a first diamond layer mainly composed of (100) crystal plane
formed via a wax material on the surface of the above-
mentioned substrate and a second diamond layer mainly composed
of (111) crystal plane coated on the above-mentioned first
diamond layer” (page 5).
Appeal No. 2000-0049
Application 08/826,209
The examiner does not discuss the embodiment recited in the appellant’s claim 7.2
4
Taniguchi discloses a mold for press molding a glass-
containing optical element, wherein at least the molding face
of the mold matrix is coated with a diamond film having a
(100) oriented face which is flattened by polishing or etching
such that has a low surface roughness (col. 4, lines 4-9 and
53-56). The disclosure by Taniguchi relied upon by the
examiner (answer, page 4) is that “[i]t is well known in the
art that the (100) face of diamond is the softest of the
(100), (111) and (110) faces” (col. 4, lines 51-53).
The examiner argues that “when it is desired to sacrifice
the high peeling resistance and long life of the cutting tool
in order to obtain a smooth outer surface of the cutting tool
as suggested by Taniguchi et al. it would have been obvious to
one of ordinary skill in the art to have switched the order of
the first and second diamond layer in Okamura et al.’s process
with the expected success” (answer, page 4).2
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
Appeal No. 2000-0049
Application 08/826,209
5
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of the modification. See Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783-84.
The examiner has not explained how Taniguchi’s disclosure
of a smooth mold surface for molding glass optical elements
would have led one of ordinary skill in the art to modify the
wear characteristics of a cutting tool, particularly when that
modification involves reversing the order of Okamura’s layers
and Okamura teaches (page 4) that the first layer is be a
(100) oriented layer because, although it has low hardness, it
has high adhesion which is a desirable first layer property,
and the second layer is to be a (111) oriented layer because,
although it has low adhesion, it has excellent wear resistance
which is a desirable property of the second layer.
Appeal No. 2000-0049
Application 08/826,209
6
The record indicates that the motivation relied upon by
the examiner for combining the references so as to arrive at
the claimed invention comes from the description of the
appellant’s invention in the specification rather than coming
from the applied prior art and that, therefore, the examiner
used impermissible hindsight when rejecting the claims. See
W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328,
331 (CCPA 1960).
Appeal No. 2000-0049
Application 08/826,209
The examiner does not rely upon the admitted prior art in the rejection of claims 3 and 10 for3
a disclosure which remedies the above-discussed deficiency in the examiner’s argument with respect to
Okamura and Taniguchi.
7
Accordingly, we reverse the examiner’s rejections. 3
Remand
The appellant’s claim 7 requires that a polycrystalline
diamond film structure having a layer with a non-{100}
crystallographic faceting and a layer with a {100}
crystallographic faceting is applied to a base surface. The
claim does not specify the order of the layers on the base
surface.
Okamura discloses applying a (111) oriented diamond layer
and then a (100) oriented diamond layer onto an Si substrate,
each layer having a 100 µm thickness, and then brazing the
(100) oriented layer onto a wear part, the heat from the
brazing causing the (111) oriented layer to peel off of the Si
substrate, thereby producing the desired cutting tool (pages
7-8). Thus, Okamura specifically discloses each of the
limitations of the appellant’s claim 7 except the requirement
that the second layer has a thickness sufficient to overgrow
the roughness of the surface of the first layer.
Appeal No. 2000-0049
Application 08/826,209
8
The appellant’s specification discloses (page 5, lines 1-
2) that the thickness of the (111) oriented layer depends on
nucleation density but in practice may be on the order of 0.5-
10 µm. Okamura’s 100 µm exemplified (111) oriented layer
(page 7) is thicker than thicknesses within the appellant’s
disclosed first layer thickness range, and the appellant’s
specification discloses (page 2, line 21 - page 3, line 4)
that as the thickness of a (111) oriented layer increases, the
roughness generally increases. Okamura’s exemplified 100 µm
thickness of the (100) oriented layer (page 7), however, is
larger than the 10-25 µm range of thicknesses of the (100)
oriented layer disclosed in the appellant’s specification
(page 10, line 24 - page 11, line 3).
Thus, we remand the application to the examiner for the
examiner and the appellant to address whether Okamura’s 100 µm
thick (100) oriented layer necessarily is sufficiently thick
to overgrow the surface roughness of Okamura’s 100 µm thick
(111) oriented layer as required by the appellant’s claim 7.
If so, the examiner should consider rejecting the appellant’s
claims 7-9 and 19 under 35 U.S.C. § 102(b) over Okamura, and
should consider whether the appellant’s claims 10 and 12 would
Appeal No. 2000-0049
Application 08/826,209
The examiner also should consider whether the appellant’s claim 7 provides adequate4
antecedent basis for “said step of depositing said first layer” in claim 19.
9
have been obvious to one of ordinary skill in the art over
Okamura in view of the appellant’s admitted prior art
regarding biased nucleation chemical vapor deposition
(specification, page 13, lines 1-7). 4
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 2, 5-9,
12, 18 and 19 over Okamura in view of Taniguchi, and claims 3
and 10 over Okamura in view of Taniguchi and the admitted
prior art, are reversed. The application is remanded to the
examiner.
REVERSED and REMANDED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
Appeal No. 2000-0049
Application 08/826,209
10
) BOARD OF PATENT
PAUL LIEBERMAN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY T. SMITH )
Administrative Patent Judge )
VOLKER R. ULBRICH
SAINT-GOBAIN CORPORATION
1 NEW BOND STREET
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