Ex Parte Prichard et al

Patent Trial and Appeal Board

Feb 9, 2017

13437301 (P.T.A.B. Feb. 9, 2017)

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.
13/437,301 04/02/2012 Paul Dehnhardt Prichard K-4111USUS1 1016
27877 7590 02/13/2017
KFNNAMFTAT TNC EXAMINER
Intellectual Property Department
P.O. BOX 231
KATZ, VERA
1600 TECHNOLOGY WAY
LATROBE, PA 15650
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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):
larry.meenan@kennametal.com
k-corp.patents @kennametal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL DEHNHARDT PRICHARD,
JOEL THOMAS DAWSON, and MARK ROWE
Appeal 2015-007354
Application 13/437,301
Technology Center 1700
Before CHUNG K. PAK, JAMES C. HOUSEL, and JENNIFER R. GUPTA,
Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—17 and 31—40. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 In this decision, we refer to Appellants’ Specification filed April 2, 2012
(“Spec.”), Final Office Action mailed July 8, 2014 (“Final Act.”), the
Appeal Brief filed February 9, 2015 (“Br.”), and the Examiner’s Answer
mailed May 22, 2015 (“Ans.”).
2 Appellants identify the real party in interest as Kennametal, Inc. Br. 3.
Appeal 2015-007354
Application 13/437,301
The subject matter on appeal relates to coatings for metallic
substrates, in particular, coatings for titanium and titanium alloy substrates.
Spec. 1,11. 4—5. Claim 1, reproduced below, is illustrative of the claims on
appeal.
1. A composite article comprising:
a titanium or titanium alloy substrate; and
a coating adhered to an external surface of the substrate,
the coating comprising hard particles disposed in a metal or alloy
matrix, the metal or alloy matrix binding the coating to the
external surface of the titanium or titanium alloy substrate,
wherein the coating has an adjusted volume loss of less than
20 mm3 determined according to Procedure E of ASTM G65 —
Standard Test Method for Measuring Abrasion Using the Dry
Sand/Rubber Wheel.
App. Br. 13 (Claims Appendix).
REJECTIONS ON APPEAL
1. Claims 1—4, 8—13, 15, 31, 32, 34—37, and 39 are provisionally
rejected on the ground of nonstatutory double patenting over
claims 7, 8, and 13 of co-pending U.S. Application Serial
No. 13/852,440;
2. Claims 1—17 are rejected under pre-AIA 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement;
3. Claims 1—13 are rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Sue (US 5,981,081, issued Nov. 9, 1999)
(hereinafter “Sue”);
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4. Claims 1—17 and 31—40 are rejected under pre-AIA 35 U.S.C. §
102(b) as anticipated by or, in the alternative, under pre-AIA 35
U.S.C. § 103(a) as obvious over Withers et al. (US 7,910,219 Bl,
issued March 22, 2011) (hereinafter “Withers”);
5. Claims 14 and 16 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Sue in view of Lawrynowicz et al. (US
2008/0241570 Al, published Oct. 2, 2008) (hereinafter
“Lawrynowicz”) and John Disegi, Implant Materials \-A (2nd
ed. 2008) (hereinafter “Disegi”); and
6. Claims 14—17 are rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Sue in view of Shishkovsky and Smurov, Titanium
base functional graded coating via 3D laser cladding, 73
Material Letters 32—35 (2012) (hereinafter “Shishkovsky”).
DISCUSSION
Rejection 1
Appellants request that the provisional rejection of claims 1—4, 8—13,
15, 31, 32, 34—37, and 39 on the ground of nonstatutory double patenting be
held in abeyance until at least one conflicting claim is patented. Br. 4.
Because Appellants did not present any arguments regarding the provisional
double patenting rejection, we summarily affirm the rejection. See Manual
of Patent Examining Procedure (MPEP) § 1205.02 (9th ed., Mar. 2014) (“If
a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).
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Rejection 2
The Examiner rejects claims 1—17 for failing to comply with the
written description requirement of § 112, first paragraph, because the
Examiner finds that the term “external surface” is not supported by the
original disclosure. Ans. 8.
Appellants argue that Example 1, on pages 14—15 of the Specification,
describes, and Figure 1 of Appellants’ application depicts, the coating
“external” to the substrate surface.
“[T]he test for [compliance with the written description requirement]
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). “The content of the
drawings may also be considered in determining compliance with the written
description requirement.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir.
1983). Here, as Appellants contend, Figure 1 plainly shows the coating
adhered to an external surface of the substrate.
Accordingly, we do not sustain the Examiner’s rejection of claims 1—
17 for failing to comply with the written description requirement.
Rejection 3
In the third ground of rejection, the Examiner rejects claims 1—13
under pre-AIA 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under pre-AIA 35 U.S.C. § 103(a) as obvious over Sue.
Appellants argue that Examples I—XI of Sue do not exemplify a
matrix composite coating adhered to a titanium or titanium alloy substrate
that exhibits an adjusted volume loss of less than 20 mm3, and this “failure
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to provide such an example precludes Sue from rendering claims 1—3 and 8—
13 unpatentable under §§ 102/103.” Br. 5—6.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. Sue’s teachings are not limited to what is disclosed in
the examples. In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“All the
disclosures in a reference must be evaluated, including nonpreferred
embodiments,. . . and a reference is not limited to the disclosure of specific
working examples.”) (citations omitted).
The Examiner identifies particular teachings in Sue that are relied
upon to reject Appellants’ claims. See Final Act. 5—7. In particular, the
Examiner finds that Sue discloses a composite article comprising a titanium
or titanium alloy substrate, and a coating comprising hard particles of metal
borides, dispersed or disposed in a metal or metal alloy matrix. Final Act. 5
(citing Sue Abstract, 4:44—50, 8:42—43, Example 1, and Table 1 (disclosing
CrB coatings)). The Examiner finds that Sue teaches the coating is adhered
to the substrate, and teaches diffusion reactions between the substrate and
the coating that bind the coating to the substrate. Final Act. 5 (citing Sue
3:38, and 8:22—25). The Examiner further finds that Example I in Sue
teaches that its coatings, in particular CrB coatings, has an adjusted volume
loss of 4.8 mm3 determined according to ASTM Standard G65—80. Final
Act. 5 (citing Sue Example I (9:16—10:16)). Although the substrate in
Example I is steel, not a titanium or titanium alloy substrate, Sue clearly
teaches that other substrates such as titanium and titanium alloy can be used.
See Sue 8:34^43. Moreover, it is the coating in Appellants’ claims, and not
the substrate that has an adjusted volume loss. Thus, one of ordinary skill in
the art would reasonably expect Sue’s coating to have the same or similar
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adjusted volume loss whether the coatings were adhered to the external
surface of a steel, titanium, or titanium alloy substrate. Appellants have not
presented sufficient evidence to prove otherwise.
With respect to claims 4—6, Appellants argue that Sue fails to provide
any disclosure or teaching of an “interfacial transition region” between the
matrix composite coating and the titanium or titanium alloy substrate, as
required by claims 4—6. Br. 6.
Appellants misunderstand the Examiner’s rejection. The Examiner
does not find that Sue explicitly discloses an interfacial transition region
between the matrix composition coating and the titanium or titanium alloy
substrate. Rather, the Examiner finds that because Sue discloses an identical
structure (hard particles/metal matrix), substrate and coating materials,
common properties of adherence, and an adjusted volume loss of its coating
that falls within the claimed range, Sue’s composite would inherently
possess the claimed interfacial transition region. Ans. 9—10.
Where, as here, the Examiner establishes a reasonable basis for
inherency and thereby evinces that Appellants’ and the prior art products
appear to be the same, the burden is properly shifted to the Appellants to
show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990);
In re Best, 562 F.2d 1252, 125A-56 (CCPA 1977).
Appellants have failed to show by a preponderance of the evidence
that Sue’s coated substrate does not necessarily have an interfacial transition
region between the coating and the titanium or titanium alloy substrate.
Appellants contend that the matrix composite coatings of Sue and the
claimed articles are deposited by fundamentally different techniques, and
thus, there is no reason to expect the articles of Sue to exhibit the interfacial
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transition region of claims 4—6. However, Appellants’ Specification does
not provide any teaching, and Appellants’ briefs do not provide any
evidence, to establish that only certain deposition methods would provide an
interfacial transition region between the coating and the titanium or titanium
alloy substrate. Because Appellants fail to rebut the Examiner’s finding of
inherency, Appellants have failed to show error in the Examiner’s
anticipation or obviousness rejection of claims 4—6.
Although Appellants direct our attention to co-pending U.S.
Application Serial No. 13/852,440 (hereinafter “the ’440 application”), and
Shishkovsky as evidence of dissimilarities and challenges that are
encountered when a coating is adhered to titanium and titanium alloy
substrates relative to steels and nickel-based alloys, as the Examiner points
out, the coatings described in the ’440 application include an organic binder,
which is not required by Sue. Ans. 10. Likewise, Shishkovsky teaches
coatings with oxide particles, but not the hard boride particles of Sue. Id.
Thus, the evidence presented by Appellants is not sufficient to demonstrate
that Sue’s coatings would not have the claimed interfacial transition region
between the matrix composition coating and the titanium or titanium alloy
substrate.
With respect to claim 7, Appellants argue that Sue cannot possibly be
held to disclose the absence of interfacial reaction product. Br. 7.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection of claim 7. First, claim 7 does not recite the “absence”
of an interfacial reaction product, but instead recites that the “interfacial
reaction product is not evident by optical microscopy at 1 OOx between the
particles and the metal or alloy matrix.” The Examiner has provided a
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sufficient basis in evidence and technical reasoning to shift the burden to
Appellants to show a difference between the claimed and prior art products.
See In re Spada, 911 F.2d at 708 (“[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”). Appellants,
however, do not provide such a showing.
In sum, upon consideration of the evidence on this record and each of
Appellants contentions, we find that the preponderance of evidence supports
the Examiner’s conclusion that the subject matter of claims 1—13 is either
anticipated or obvious over Sue. Accordingly, we sustain the rejection.
Rejection 4
In the fourth ground of rejection, the Examiner rejects claims 1—17
and 31—40 under pre-AIA 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over Withers.
The Examiner finds that Wither teaches a composite article,
comprising a titanium alloy substrate such as Ti6A14V which is represented
by a/p crystalline structure, with a coating adhered and bonded to the
substrate, where “the coating comprises hard particles of metal carbides,
metal nitrides, metal borides, metal oxides or boron nitrides deposited in a
metal or metal alloy matrix, such as titanium or titanium alloy.” Final Act. 7
(citing Withers 3:30-55, 4:1—12, Example 1, and claims 1, 3—5, 11, 17).
Appellants argue that Withers does not teach metal matrix composite
coatings adhered to titanium or titanium alloy substrates. Br. 9. Appellants
further argue that Withers does not teach a coating at all. Id.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection. As the Examiner points out, Figure 3 of Withers
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clearly depicts a titanium alloy substrate with a coating comprising hard
titanium boride particles in titanium matrix deposited thereon, as required by
the present claims. Ans. 11—12; see also Withers 5:15—34 (Example 1);
Fig. 3.
With respect to claims 4—6, Appellants point to Withers’ disclosure
that its body has a structure that contains “no abrupt interfaces” and contend
that this disclosure teaches “eliminating interfaces,” and thus cannot be held
to teach an interfacial transition region. Br. 10.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejection of claims 4—6. We do not agree that Withers’
disclosure that its structure is without abrupt interfaces does not teach or
suggest that its structure would not have an interfacial transition region
between the coating and the titanium or titanium alloy substrate. Indeed,
from Withers’ disclosure, one of ordinary skill in the art would have
reasonably expected that Withers’ structure would have an interfacial
transition region, or non-abrupt interface. The Examiner has provided a
sufficient basis in evidence and technical reasoning to shift the burden to
Appellants to show a difference between the claimed and prior art products.
See Final Act. 7—8. Appellants, however, do not provide such a showing.
With respect to claims 7 and 33, Appellants simply argue that Withers
fails to provide any disclosure regarding the presence or absence of
interfacial reaction product between the hard particles and metal or alloy
matrix. Br. 10.
Merely reciting the claim language, and asserting that the Examiner’s
findings do not describe such limitations is not a persuasive argument. See
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the
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Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Accordingly, Appellants’ argument is not persuasive of
reversible error in the Examiner’s rejection of claims 7 and 33.
With respect to claims 13 and 37, Appellants argue that Withers
discloses a graded distribution of ceramic particles embedded in the metal
plate, not a uniform or substantially uniform distribution of hard particles in
its metal or alloy matrix. Br. 10—11.
We find Appellants’ argument to be persuasive of reversible error in
the Examiner’s rejection. Claims 13 and 37 recite “the hard particles are
uniformly or substantially uniformly distributed in the metal or alloy
matrix.” The fact that Withers teaches that the ceramic particles in its matrix
are “continuously graded” cuts against the ceramic particles in Withers’
matrix being uniformly or substantially uniformly distributed in the metal or
alloy matrix, as recited in the claims. See Withers 3:34-43.
In sum, upon consideration of each of Appellants contentions, we find
that the preponderance of evidence supports the Examiner’s conclusion that
the subject matter of claims 1—12, 14—17, 31—36, and 38-40 is either
anticipated or obvious over Withers. Accordingly, we sustain the rejection
of those claims. We, however, do not sustain the Examiner’s rejection of
claims 7 and 37.
Rejections 5 and 6
Claim 14 depends from claim 1 and requires that the “titanium or
titanium alloy substrate comprises a/p phase bulk crystalline structure.”
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Claim 15 depends from claim 1 and requires that “the metal or alloy
matrix is titanium based.”
Claim 16 depends from claim 1 and requires that “the titanium alloy
substrate is Ti6A14V.”
Claim 17 depends from claim 1, and further comprises “at least one
layer of refractory material deposited over the coating by chemical vapor
deposition, physical vapor deposition or a combination thereof.”
With respect to Rejection 5, Appellants argue that “Lawrynowicz fails
to disclose hard particles disposed in a metal or alloy matrix, wherein the
metal or alloy matrix binds the coating to the titanium or titanium alloy
substrate.” Br. 11. Appellants further argue that Disegi fails to disclose
matrix composite coatings. Id.
With respect to Rejection 6, Appellants argue that the composite
cladding of Shishkovsky cannot be considered to provide the claimed
adjusted volume loss of less than 20 mm3 determined according to
Procedure E of ASTM G65. Id. at 12.
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s fifth and sixth grounds of rejection. As the Examiner points out,
Appellants cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981). Moreover, the Examiner relies
upon Sue, not Lawrynowicz, Disegi, or Shishkovsky for the elements
Appellants argue those references fail to disclose. Therefore, we sustain the
Examiner’s rejections under 35 U.S.C. § 103(a) over Sue in view of either
Lawrynowicz as evidenced by Disegi, or Shishkovsky.
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DECISION
For the above reasons, the provisional rejection of claims 1—4, 8—13,
15, 31, 32, 34—37, and 39 on the ground of nonstatutory double patenting
over claims 7, 8, and 13 of co-pending Application Serial No. 13/852,440,
the rejection of claims 1—13 under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over Sue, the
rejection of claims 1—12, 14—17, 31—36, and 38—40 under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Withers, and the rejections under 35 U.S.C. § 103(a) of claims 14 and
16 over Sue in view of Lawrynowicz as evidenced by Disegi, and
claims 14—17 over Sue in view of Shishkovsky are affirmed. The rejection
of claims 1—17 under 35 U.S.C. § 112, first paragraph, and the rejection
under 35 U.S.C. § 103(a) of claims 13 and 37 over Withers are 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
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