Ex Parte Sietsema

Patent Trial and Appeal Board

Feb 22, 2018

13348349 (P.T.A.B. Feb. 22, 2018)

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.
13/348,349 01/11/2012 Glen D. SIETSEMA R087 1294US.C1 9318
26158 7590 02/26/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
JOHNSON, STEPHEN
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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):
IPDocketing @ wbd-u s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLEN D. SIETSEMA
Appeal 2016-001126
Application 13/348,349
Technology Center 3600
Before ANNETTE R. REIMERS, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Glen D. Sietsema (Appellant)1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 33—38 and 40-48.2 We have
jurisdiction under 35 U.S.C. § 6(b). Oral argument was heard on February
6, 2018.
We AFFIRM.
1 Appellant identifies the real party in interest as RA Brands, LLC. Appeal
Br. 2.
2 Claims 1—32 and 39 have been canceled. Appeal Br. 2, 21, 23 (Claims
App.).
Appeal 2016-001126
Application 13/348,349
CLAIMS
Independent claims 33, 34, 40, and 44 are independent. Independent
claim 33, reproduced below, represents the claimed subject matter. Certain
key limitations are italicized.
33. A non-projectile firearm component or accessory,
wherein the firearm component or accessory is selected from a
frame, a slide, a barrel, a receiver, or any constituent of a frame,
slide, barrel, or receiver, comprising:
a. a substrate defining the firearm component or
accessory and comprising a base material of the firearm
component or accessory, the substrate having an external
surface, and the substrate comprising a metal or metal alloy
material selected from the group comprising carbon steel, low-
carbon steel, alloy steel, tin-free steel, killed steel, semikilled
steel, capped steel, rimmed steel, aluminum killed steel, bake
hardenable steel, stainless steel, austenitic stainless steel, ferritic
stainless steel, martensitic stainless steel, or any combination
thereof;
b. a first layer substantially covering at least a portion of
the external surface of the substrate and having corrosion
resistance properties, the first layer comprising at least one
corrosion resistant metal or metal alloy plating; and
c. at least one additional layer applied over and
substantially bonded to at least a portion of the first layer
covering the external surface of the substrate, the at least one
additional layer comprising a coating of a wear resistant
material selected from the group comprising a ceramic material,
metal carbonitride, intermetallic compound, metal carbide,
metal sulfide, diamond-like carbon (DLC), a carbon material, or
any combination thereof;
wherein the first layer is different than the at least one
additional layer, and wherein the at least one additional layer
defines an exposed external surface of the firearm component
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Application 13/348,349
or accessory, and wherein the exposed external surface is not an
internal surface defined by a bore of the barrel.
REJECTIONS
I. Claims 33—36, 38, and 44-47 are rejected under 35 U.S.C.
§ 102(e) as anticipated by McComas (US 6,782,650 B2, issued Aug. 31,
2004). Non-Final Act. 2.
II. Claims 37, 40-43, and 48 are rejected under 35 U.S.C. § 103(a)
as unpatentable over McComas and Alber (US 2004/0120783 Al, published
June 24, 2004). Non-Final Act. 9.
OPINION
Rejection I
Appellant argues claims 33—36, 38, and 44-47 as a group. We select
claim 33 as representative, and claims 34—36, 38, and 44-47 stand or fall
with claim 33. See 37 C.F.R. § 41.37(c)(l)(iv).
Corrosion Resistance
The Examiner finds, inter alia, that McComas discloses “a first layer
or corrosion resistant layer of nickel alloy” (Non-Final Act. 2 (citing
McComas 3:27—51, 2:10-14)) having a thickness of at least 0.00005 inches
{id. (citing McComas 2:39-42)), and an additional layer or wear resistant
layer of metal sulfide or molybdenum sulfide (id. at 2—3 (citing McComas
1:53—63, 5:10—15, claim 6)).
Appellant argues that the Examiner fails to demonstrate that
McComas’ nickel alloy layer has corrosion resistant properties because
McComas’ nickel alloy coating “is expressly designed to address specific
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Application 13/348,349
issues regarding lubrication.” Appeal Br. 7—8. In support of McComas’
nickel alloy layer not being disclosed to provide corrosion resistance,
Appellant also notes that McComas discloses removing other layers that
provide corrosion resistance and that McComas refers to its nickel alloy
layer as a “sacrificial coating.” Id. at 8—9. Reply Br. 5—7.
In the field of the invention, however, McComas explicitly states that
its “final coatings provide improved wear resistance, corrosion resistance
and lubricity.” McComas 1:10—11. Further, after noting that inexpensive
ammunition damages weapon surfaces due to corrosive gun powder residue,
McComas notes that an objective of the invention is “protecting a gun
surface with nickel boron from this chemical attack.” Id. 4:20—27.
Appellant argues that such a teaching does not amount to the claimed
“first layer . . . having corrosion resistance properties” because “[tjhough
McComas mentions that his coating may affect corrosion resistance ...[],
this is not the basis/purpose of this coating.” Reply Br. 6.
We are not persuaded by Appellant’s argument. Although McComas
more often refers to its nickel alloy layer as providing lubricity, McComas
explicitly discloses that its nickel alloy layer has corrosion resistance
properties. McComas 1:10—11, 4:20-47. The corrosion resistance
properties need not be the primary intended purpose of McComas’ nickel
alloy layer to meet the claimed “first layer . . . having corrosion resistance
properties.” Further, it is unclear why a sacrificial layer cannot provide
corrosion resistance, even if it may ultimately need to be reapplied.
Wear Resistance
Appellant also argues that, even if McComas’ nickel alloy layer is
considered to be the claimed “first layer,” McComas dry film coating is not
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Application 13/348,349
an additional layer comprising a wear resistant coating. Appeal Br. 9.
According to Appellant, a layer that must be reapplied is not a wear
resistance coating. Id. (citing Sietsema Declaration dated October 23, 2014).
To the extent that Appellant is arguing that lubrication and wear
resistance differ (see Appeal Br. 10), the difference appears to be one of
semantics because the two are interrelated (see McComas 1:10-11), and we
are not persuaded that a coating that provides lubrication would not also
provide wear resistance. We therefore are not persuaded by Appellant’s
argument that one skilled in the art “would understand that solid lubricants
and/or dry film lubricants, such as those taught by McComas, are not and do
not act as a wear resistant layer or coating.” Appeal Br. 11.
Exposed External Surface
Appellant argues that the Examiner erred in finding that McComas
discloses a wear resistant layer covering an exposed external surface of the
firearm component. Appeal Br. 11. According to the Appellant, although
McComas refers to firearm components generally as “one example of
mating surfaces that would benefit from nodular nickel coatings,” McComas
only details applying his layers “to the components of a firearm which
appear to be subject to frictional or sliding forces, such as along the internal
bore of the gun barrel.” Id. (citing McComas 2:12—15, 5:3—6).
Although McComas only provides detailed embodiments for layering
a firearm bore, we are not persuaded that one skilled in the art would
consider McComas’ reference to the broad category of mating firearm
components to be limited to firearm bores, or to exclude external surfaces of
a firearm.
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Substantially Bonded
Appellant next argues that McComas’ dry lubricant layer (which the
Examiner finds to be the claimed additional layer) is not substantially
bonded to its nickel alloy layer (which the Examiner finds to be the claimed
first layer). Appeal Br. 12.
Regarding the dry lubricant layer, McComas discloses that “[a]
variety of techniques exist for the treatment such as [1] blasting the lubricant
into the coating ... or [2] burnishing the dry lubricant into the nickel boron
surface ... or by [3] rubbing the dry particle into the nickel boron surface.”
McComas 1:53—62. McComas also discloses burnishing, painting, and
blasting the dry lubricant layer. Id. 5:15—22. The Examiner contends that
McComas’ coating methods cause the dry lubricant layer to be substantially
bonded. Non-Final Act. 7.
Appellant disagrees with the Examiner’s determination that
burnishing, blasting, and painting substantially bond the dry lubricant to the
nickel alloy, and further contends that McComas’ lack of bonding is
evidenced by the dry lubricant being intended for short duration use, and
needing to be “continuously reapplied after use and cleaning of the firearm.”
Appeal Br. 12—13.
Appellant has not provided any definition of the terms “substantially
bonded” or “bonded” that excludes the dry lubricant application via
burnishing, painting, blasting, and rubbing. Indeed, Appellant’s
Specification does not use the term “bond” at all. Spec. p. 11,11. 26—30
(“[A]ny method known to one of ordinary skill can be employed to form the
second layer thin film coatings . . . , such as solution methods, if applicable
to depositing the desired coating, can be used in this aspect.”). Lacking any
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Application 13/348,349
such exclusionary definition, and given the disclosure of Appellant’s
Specification, we agree with the Examiner that the term “substantially
bonded” can include the burnishing, painting, and blasting disclosure for
McComas’ dry lubricant layer.
For the reasons discussed above, we sustain Rejection I.
Rejection II
Regarding claims 37, 40-43, and 48, the Examiner finds that,
although McComas does not disclose the claimed thickness of its
molybdenum sulfide layer, Alber discloses a molybdenum sulfide layer of
up to 5 micrometers, which meets the claimed layer thickness. Non-Final
Act. 9 (citing Alber 121). According to the Examiner, Appellant is using a
known lubricant thickness in a known manner “with expected or predictable
results.” Id.
Appellant argues that (1) McComas and Alber are non-analogous art,
and (2) the Examiner fails to explain how or why one skilled in the art would
combine McComas and Alber as proposed. Appeal Br. 15. In response to
the Examiner’s assertion that both McComas and Albers “are related to
machinery having movable parts and the problems associated with
lubrication of these moveable parts” (Non-Final Act. 9), Appellant contends
that “this is like saying one of skill in the art looking to solve an issue with
firearms would naturally look to . . . [any] field of technology, simply
because such fields likewise involve ‘machinery having movable parts and
the problems of lubrication of these movable parts.’” Appeal Br. 16.
Appellant counters that Alber is directed to “a clamping system for machine
tools” that “is in no way related to, let alone reasonably pertinent to, coatings
for the protection of firearms against corrosion and wear.” Id.
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Regarding how and why McComas would be modified by Alber, the
Examiner initially concluded that it would have been obvious to modify
McComas with Alber’s molybdenum lubricant thickness, in a known
manner “with expected or predictable results.” Non-Final Act. 9. The
Examiner further contends that “Albers provides an explicit motivation to
substitute one [known] lubricant MoSy coating for another in the lubricant
art.” Ans. 11 (citing Alber 121). The Examiner thus concludes that it
would have been obvious to modify McComas’ moly disulfide (M0S2)
lubricant layer to have the thickness set forth in Alber, because the thickness
is disclosed in Alber as being suitable for lubrication. Alber 121. Appellant
does not persuade us that the Examiner failed to explain how or why one
skilled in the art would combine McComas and Alber.
Regarding whether McComas and Albers are analogous art, art is
analogous when it is: (1) from the same field of endeavor as the claimed
invention; or (2) reasonably pertinent to the particular problem faced by the
inventor, if the art is not from the same field of endeavor. In re Bigio, 381
F.3d 1320, 1325—1326 (Fed. Cir. 2004). The Examiner’s determination that
both McComas and Albers “are related to machinery having movable parts
and the problems associated with lubrication of these moveable parts” (Non-
Final Act. 9) does not explicitly define the field of Appellant’s invention or
the problem faced by the inventor. The field of Appellant’s invention is
defined in Appellant’s Specification as “compositions and methods that
provide enhanced corrosion resistance and wear resistance properties to
objects subjected to harsh environments.” Spec. p. 1,11. 10-12. While
firearms and firearm components are listed as exemplary objects, the
Specification does not limit itself to firearms in its field description. Id. The
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field of McComas is defined as “coatings [that] provide improved wear
resistance, corrosion resistance and lubricity,” including firearm coatings.
McComas 1:5—11. McComas is therefore analogous art to the claimed
invention. Alber is also concerned with applying lubricant to “improve[]
corrosion characteristics” and prevent surface wear “due to insufficient
lubrication.” Alber || 13, 16. Alber, therefore, appears to also be in the
field of “compositions and methods that provide enhanced corrosion
resistance and wear resistance properties to objects subjected to harsh
environments.” Spec. p. 1,11. 10-12. Alber is analogous art.
For the reasons set forth above, we sustain Rejection II.
DECISION
We AFFIRM the rejection of claims 33—36, 38, and 44-47 under 35
U.S.C. § 102(e) as anticipated by McComas.
We AFFIRM the rejection of claims 37, 40-43, and 48 under 35
U.S.C. § 103(a) as unpatentable over McComas and Alber.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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