Ex Parte Stoiber et al

Board of Patent Appeals and Interferences

Aug 31, 2010

11581697 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MONIKA STOIBER,
WOLFGANG WALLGRAM, and MARTIN KATHREIN
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Appeal 2009-012232
Application 11/581,697
Technology Center 1700
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Before MICHAEL P. COLAIANNI, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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A. Introduction2
Monika Stoiber, Wolfgang Wallgram, and Martin Kathrein
(“Stoiber”) timely appeal under 35 U.S.C. § 134(a) from the final rejection3
of claims 1-22. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to a tool or a “wearing part”
having a hard “base body” and a coating comprising at least one layer of
aluminum borate or aluminum borate phase fractions. According to
the 697 Specification, aluminum borate coatings had not been used
previously for tools or wearing parts; but the inventors showed it can
provide a coating having a significantly improved service life. (Spec. 6,
ll. 7-11.)
Representative Claim 1 reads:
1. A tool or wearing part, comprising:
a base body made from hard metal, cermet, hard material
or another wear-resistant material with a hardness
of > 700 HV; and
a single-layer or multilayer coating, at least one layer of
said coating being formed of aluminum borate or
containing aluminum borate phase fractions.

2 Application 11/581,697, Tool with Wear Resistant Coating,
filed 16 October 2006 as a continuation of an international application
filed 6 April 2005, claiming the benefit of an Austrian application
filed 16 April 2004. The specification is referred to as the
“697 Specification,” and is cited as “Spec.” The real party in interest is
listed as Ceratizit Austria Gesellschaft M.B.H. of Austria, a member of the
Plansee Group (Plansee AG). (Appeal Brief, filed 4 December 2009
(“Br.”), 1.)
3 Office action mailed 11 July 2008 (“Final Rejection”; cited as “FR”).
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(Claims App., Br. 15.)
The Examiner has maintained the following ground of rejection:4
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Kathrein5 and Ray.6
Stoiber argues, supported by a declaration by coinventor Dr. Martin
Kathrein,7 and a published article,8 that the reference Kathrein, on which the
Examiner relies, “specifically excludes Al-borate phase.” (Br. 4, last para.)
Moreover, Stoiber argues that Kathrein does not disclose any reason, other
than increasing the rate of deposition [of aluminum oxide] and lowering the
temperature in the coating chamber, to add boron oxide (B2O3) to the
aluminum oxide. Stoiber argues further, without citing evidence of record,
that a person having ordinary skill in the art “would not pay attention to any
documents disclosing a sintered aluminum borate ceramic product
possessing high strength.” (Id. at 5, 3d para.) “It is well known,” Stoiber
continues, “that sintering that is carried out at 900°C to 1300°C for up

4 Examiner’s Answer mailed 19 March 2009. (“Ans.”)
5 M. Kathrein et al., Hard Metal Wearing Part with Mixed Oxide Coating,
U.S. Patent 6,726,987 B2 (27 April 2004, based on an application filed
5 February 2002.
6 Siba P. Ray, Densification Aid for Aluminum Borate Products, U.S.
Patent 4,774,210 (1988).
7 Declaration of Dr. Marin Kathrein, Evidence Appendix; originally
filed 8 September 2008 with remarks after the final rejection; entered by the
Examiner in an Advisory Action mailed 24 September 2008.
8 M. Kathrein et al., Doped CVD Al2O3 Coatings for High Performance
Cutting Tools, 163-164 Surface and Coatings Technology 188 (2003),
originally filed 8 September 2008, and filed in the Evidence Appendix.
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to 2 days results in a coarse grained structure with phases corresponding to
the thermodynamic equilibrium.” (Id.) (Presumably, although Stoiber does
not say so explicitly, such properties are not consistent with the claimed
tools and wear parts.) As for Ray, Stoiber argues that a person skilled in the
art would not have considered the teachings of a reference having a Vickers
hardness of 1300 because only coatings having a Vickers hardness of 3,000
or even higher would be of interest. (Id.) Finally, Stoiber argues that Ray
would not have been of interest because Ray is silent as to improved friction
properties—the main objective of the claimed invention. (Id., last para.)
The Examiner finds that Ray discloses an aluminum borate shaped-
article useful as a coating (Ans. 2), and argues that it would have been
obvious to use that material in place of the mixed oxide (aluminum oxide-
titanium oxide-boron oxide) coating for hard metals and cermets taught by
Kathrein. According to the Examiner, the oxide coating of Kathrein is
“substantially similarity [sic: similar] in composition to Ray and would be
[sic: would have been] expected to provide similar benefits of wear
resistance.” (Id. at 2, last full paragraph.)
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
As the Appellant, Stoiber bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make
clear that courts have correlated review of ordinary administrative
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proceedings to appellate review of civil cases in this respect. . . . [T]he party
seeking reversal normally must explain why the erroneous ruling caused
harm.”) See also, In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010)
(discussing the role of harmless error in appeals from decisions of the Board
of Patent Appeals and Interferences (“Board”)).
We note first that Stoiber has not addressed any claim other than
claim 1. (Br. 6.) Accordingly, all claims stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
We note further that Stoiber has not disputed the Examiner’s finding
that Ray teaches that the disclosed aluminum borate materials may be used
as coatings. Indeed, Ray teaches that such materials
may be used as wear and abrasive surfaces for dies for drawing,
forming, or extrusion; finishing operations such as cutting tools
and machining tools; . . . adiabatic engine components; and
protective cladding. The aluminum borate materials of the
invention may also find utility in combination with other
materials such as dispersion strengthened metals and structural
composites of metal and ceramic matrices.
(Ray, col. 3, ll. 46-55.)
Thus, the Examiner’s argument that an artisan would have had a
reasonable expectation that the aluminum borates taught by Ray would be
useful for coating wearing parts having hard cores, such as those taught by
Kathrein, finds substantial support in the evidence of record. Because
Stoiber’s arguments to the contrary are not supported by citation to evidence
of record, we decline to accord them significant weight.
We agree with Stoiber, particularly in light of Dr. Kathrein’s
testimony, which is further supported by the Kathrein article, that skilled
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persons would not have considered Kathrein to teach or suggest mixed
oxides containing aluminum borate phase fractions. But we do not
understand the Examiner to have found that Kathrein described or suggested
aluminum borates in the boron oxide-modified aluminum oxide coatings.
Even if the Examiner’s arguments that the materials are “substantially
similar” could be so construed, Ray provides sufficient teachings and
suggestions that aluminum borates may be used as coatings for tools or
wearing parts that such an error would have been harmless. The silence of
Ray as to frictional properties is on the present record out-weighed by Ray’s
general teachings of utility as coatings, as are Stoiber’s arguments that the
grain size would be coarse grained, and would have phases corresponding to
the thermodynamic equilibrium.
We conclude that Stoiber has failed to demonstrate harmful error in
the Examiner’s rejection.
C. Order
We AFFIRM the rejection of claims 1-22 under 35 U.S.C. § 103(a) in
view of the combined teachings of Kathrein and Ray.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).
AFFIRMED

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kmm

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