Ex parte Sarin

Board of Patent Appeals and Interferences

Oct 31, 2000

08183152 (B.P.A.I. Oct. 31, 2000)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte VINOD K. SARIN
________________
Appeal No. 1996-3806
Application 08/183,152
________________
ON BRIEF
________________
Before PAK, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-9 and 11-17, which are all of the claims remaining in
the application.
THE INVENTION
Appellant’s claimed invention is directed toward an
abrasion resistant coated article having a wear surface which
Appeal No. 1996-3806
Application 08/183,152
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has no cubic
carbides to a depth at least sufficient to avoid exposure of
cubic carbides to a workpiece in tribological applications.
Claim 1 is illustrative:
1. A coated article for tribological applications, said
article having a wear surface and comprising:
a densified substrate substantially comprising at least
one of cemented carbides, cemented nitrides, cemented
carbonitrides, ceramics, and combinations thereof; and
a coating codeposited on said substrate and providing
said wear surface, said coating being about 1-50 µm thick and
comprising a pore-free, dense hard phase/cobalt binder
composite, said hard phase comprising tungsten carbide,
nitride, or carbonitride;
wherein said wear surface includes said hard phase/cobalt
binder composite, but includes no cubic carbides to a depth at
least sufficient to avoid exposure of cubic carbides to a
workpiece during use of said article in said tribological
applications, such that said coated article provides wear
resistance and chemical inertness and possesses good shape
retention at high machining speeds.
THE REFERENCES
Hale 4,497,874 Feb. 5,
1985
Sastri 4,556,607 Dec. 3,
1985
THE REJECTIONS
Appeal No. 1996-3806
Application 08/183,152
Rejections which were made in the final rejection over1
U.S. 4,150,195 to Tobioka and U.S. 4,705,124 to Abrahamson are
not included in the examiner’s answer, and no explanation for
this omission is given in the advisory action (paper no. 8) or
in the examiner’s answer. These rejections appear to have
been withdrawn by the examiner, and are so treated in this
appeal.
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The claims stand rejected as follows: claims 1-5, 11-13
and 15-17 under 35 U.S.C. § 102(b) as being anticipated by
Hale; claims 6, 9 and 14 under 35 U.S.C. § 102(b) as being
anticipated
by Sastri; and claims 7 and 8 under 35 U.S.C. § 103 as being
obvious over Sastri.1
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejections are not well
founded. Accordingly, we reverse these rejections.
Rejection over Hale
Hale discloses a cobalt cemented carbide substrate which
is to be coated to make a cutting tool insert (col. 2, lines
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Application 08/183,152
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23-30). The substrate has a cobalt enriched zone which has a
depth which may reach 50-75F and is produced by sintering the
substrate in the presence of nitrogen (col. 3, lines 33-35;
col. 3, line 56 - col. 4, line 1). This sintering also causes
the cobalt enriched surface zone to be depleted in the B-1
cubic phase (col. 3, lines 48-51; col. 4, lines 1-3; col. 4,
lines 35-38).
The examiner argues that the although Hale’s cubic phase
depleted substrate surface zone is not produced by coating as
recited in appellant’s claim 1, it is a distinct layer which
can have a thickness within appellant’s recited range and
which contains no cubic carbides (answer, pages 2-3).
Consequently, the examiner argues, Hale’s substrate meets the
limitations of that claim. See id. Appellant argues that one
of ordinary skill in the art would have interpreted “depleted”
to mean lessened rather than completely removed (reply brief,
page 3). The examiner responds that appellant has not
provided factual evidence that cubic carbides are present in
Hale’s substrate surface layer (supplemental answer (paper no.
Appeal No. 1996-3806
Application 08/183,152
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13), page 4).
The examiner apparently considers cubic carbides to
inherently be completely absent from Hale’s cubic phase
depleted surface layer. When an examiner relies upon a theory
of inherency, “the examiner must provide a basis in fact
and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior
art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Int. 1990). Inherency “may not be
established by probabilities or possibilities. The mere fact
that a certain thing may result from a given set of
circumstances is not sufficient.” Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986). The examiner does not
provide such reasoning. Instead, the examiner puts the
initial burden on appellant to prove that no cubic carbides
are present in the Hales’ cubic phase depleted layer. This is
improper, because it is the examiner who has the initial
Appeal No. 1996-3806
Application 08/183,152
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burden of establishing a prima facie case of anticipation by
pointing out where all of the claim limitations appear in a
single reference. See In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990); In re King, 801 F.2d 1324,
1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986). Hale’s cubic
carbide depleted substrate surface layer is made by a
different process than appellant’s surface layer. Hale’s
layer is made by sintering the substrate in a nitrogen
atmosphere to form a cubic carbide depleted layer (col. 3,
line 56 - col. 4, line 1), whereas appellant’s surface layer
is formed by codepositing the tungsten carbide hard phase and
cobalt binder without forming cubic carbides (specification,
page 5, lines 29-34). The examiner has not provided technical
reasoning as to why, regardless of the difference in the
methods of forming these layers, Hale’s cubic carbide phase
depleted layer reasonably appears to necessarily have no cubic
carbides.
Accordingly, we find that the examiner has not carried
the burden of establishing a prima facie case of anticipation
of appellant’s claimed invention over Hale.
Appeal No. 1996-3806
Application 08/183,152
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Rejections over Sastri
Sastri discloses coatings which are characterized by a
microcrystalline, single-phase, solid solution structure with
metalloids dissolved therein (col. 2, lines 17-21). The
portion of Sastri relied upon by the examiner is Sastri’s
disclosure of prior art “hardfacing alloy coatings which are
characterized by their two-phase structures comprising (1) a
coarse grained (typically between 10 to 100 microns), face-
centered-cubic, cobalt-based, continuous phase and (2) a
randomly dispersed second phase of carbide, boride, etc.,
particles which are generally between about 1 to 10 microns in
size” (col. 5, lines 5-12).
The examiner argues that “Sastri discloses that the
claimed WC-Cr composite coatings on ceramics such as alumina
are known (column 5, lines 5-15)” (answer, page 2). The
portion of Sastri relied upon by the examiner, however, does
not mention WC or
alumina. Appellant argues that the prior art crystalline
cobalt referred to by Sastri is not a binder (brief, page 10).
Appeal No. 1996-3806
Application 08/183,152
The examiner refers to a reference no. 4,406,6702
(answer, page 4). This reference is not included in the
statement of the rejection and, therefore, is not properly
before us. See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ
406, 407 n.3 (CCPA 1970). Consequently, we have not relied
upon this reference in reaching our decision.
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The examiner responds that “Sastri expressly discloses that
the cobalt is the continuous phase which the examiner
concludes ‘binds’ the claimed particles. Again the appellant
has failed to provide factual evidence [that] the claimed
coating differs in
kind from the prior art and the rejection stands” (answer,
page 4).2
It is the examiner who has the initial burden of
establishing a prima facie case of anticipation or
obviousness. See Spada, 911 F.2d at 708, 15 USPQ2d at 1657;
King, 801 F.2d at 1327, 231 USPQ at 138-39; In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976).
The examiner, however, has placed that initial burden on
appellant. Before appellant must come forward with evidence,
the examiner must
Appeal No. 1996-3806
Application 08/183,152
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establish a prima facie case of anticipation with respect to
the rejection of claims 6, 9 and 14 over Sastri, and
obviousness with respect to the rejection of claims 7 and 8
over that reference.
The examiner, however, has not explained why each element
of rejected claims 6, 9 and 14 are disclosed by Sastri, or why
each of the elements of claims 7 and 8 would have been fairly
suggested, to one of ordinary skill in the art by Sastri.
Regarding the point raised by appellant, i.e., that the prior
art crystalline cobalt is not a binder, the examiner has
provided no evidence or technical reasoning which shows that
the prior art coarse grained, face-centered-cubic, cobalt-
based continuous phase in Sastri is a binder for the randomly
dispersed second phase of particles. The examiner has merely
stated that she concludes that this is the case (answer, page
4), and that mere conclusion is not sufficient for
establishing a prima facie case of anticipation or
obviousness.
DECISION
Appeal No. 1996-3806
Application 08/183,152
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The rejections of claims 1-5, 11-13 and 15-17 under 35
U.S.C. § 102(b) over Hale, claims 6, 9 and 14 under 35 U.S.C.
§ 102(b) over Sastri, and claims 7 and 8 under 35 U.S.C. § 103
over Sastri, are reversed.
REVERSED
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 1996-3806
Application 08/183,152
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TJO/ki
Appeal No. 1996-3806
Application 08/183,152
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Frances P. Craig
24 North Street
Salem, MA 01970