Ex Parte Tonkovich et al

Board of Patent Appeals and Interferences

Oct 4, 2011

11089440 (B.P.A.I. Oct. 4, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/089,440 03/23/2005 Anna Lee Tonkovich 04-044 9133
34833 7590 10/04/2011
FRANK ROSENBERG
P.O. BOX 29230
SAN FRANCISCO, CA 94129-0230
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
10/04/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANNA LEE TONKOVICH, BARRY L. YANG,
TERRY MAZANEC, FRANCIS P. DALY, SEAN P. FITZGERALD,
RAVI ARORA, DONGMING QIU, BIN YANG, STEVEN T. PERRY,
KAI JAROSH, PAUL W. NEAGLE, DAVID J. HESSE, RACHID TAHA,
RICHARD LONG, JEFF MARCO, THOMAS D. YUSCHAK,
JEFFREY J. RAMLER, and MIKE MARCHIANDO
____________

Appeal 2010-005854
Application 11/089,440
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005854
Application 11/089,440

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1, 2, 4, 5, 9, 22-26, 28, 29, and 33 under 35 U.S.C. § 103(a)
as unpatentable over Janicke (Michael T. Janicke et al., The Controlled Oxidation
of Hydrogen from an Explosive Mixture of Gases Using a Microstructured
Reactor/Heat Exchanger and Pt/Al2O3 Catalyst, 191 J. CATALYSIS 282 (2000)) and
claims 6, 7, 27, 30-32 and 34 under 35 U.S.C. § 103(a) as unpatentable over
Janicke in view of Elpel (US 2002/0060153 A1, pub. May 23, 2002).2 We have
jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is representative of the invention and is reproduced below from the
Claims Appendix to the Appeal Brief:
1. Microchannel apparatus, comprising:
an interior micro channel comprising a micro channel wall;
a contiguous post-assembly coating along a contiguous length
of at least 1 cm of the micro channel wall;
wherein the contiguous post-assembly coating has a contiguous
length of at least 1 cm that has an average thickness (measured
perpendicular to the micro channel length and in the direction in
which a coating grows away from the wall) of at least 5 µm and

1 Final Office Action mailed Mar. 31, 2009 (“Final”).
2 Appeal Brief filed Nov. 2, 2009 (“App. Br.”), 3. Appellants also request review
of the rejection of claim 1 as anticipated by Janicke as evidenced by Daraktchiev.
(Id.) While the Examiner indicates “[A]ppellant[s’] statement of the grounds of
rejection to be reviewed on appeal is correct,” the Answer does not include a
rejection of claim 1 under 35 U.S.C. § 102(b). (Examiner’s Answer mailed Jan. 5,
2010 (“Ans.”), 2-3.) Accordingly, we view the rejection of claim 1 under 35
U.S.C. § 102(b) (see Final 2) as withdrawn. Appellants have also presented
arguments traversing the Examiner’s reliance on Daraktchiev in rejecting claim 1.
(App. Br. 7-9.) In response, the Examiner states that Daraktchiev is no longer
relied upon. (Ans. 11.)

Appeal 2010-005854
Application 11/089,440

3
wherein at least 90% of the contiguous length of coating is
within +/-20% of the average thickness.
Each of the remaining independent claims, claims 7 and 9, includes a
wherein clause as recited in claim 1.
The first issue we consider is whether a preponderance of the evidence
supports the Examiner’s finding that Janicke discloses a coating having at least
a 1 cm contiguous length in which 90% or more of the coating thickness is
within +/-20% of the average coating thickness, as required by the appealed
claims. (See claims 1, 7, and 9, 3rd para. in the claim body.)
For the reasons stated in their appeal and reply briefs, Appellants have
persuasively shown the Examiner’s finding is not supported by a preponderance of
the evidence. Accordingly, we determine the Examiner failed to establish a prima
facie case of obviousness. We REVERSE the Examiner’s decision to reject claims
1, 2, 4, 5, 9, 22-26, 28, 29, and 33.
Appellants and the Examiner agree that Janicke’s figures, at best, illustrate a
coated microchannel which is 1.5 cm in length (see App. Br. 5 and Ans. 3, 8
(discussing Janicke FIG. 1)), the coating having a uniform thickness over a
distance of 30µm (see App. Br. 7 and Ans. 9 (discussing Janicke FIG. 3)). The
Examiner, however, finds Janicke describes the formation of a uniform coating
over at least 90% of a 1 cm contiguous length3, and maintains

3 The relied-upon disclosure in Janicke reads, in relevant part:
to prepare an even alumina coat across the entire set of microchannels,
it was necessary to reverse the flow direction for the CVD process and
have the Al(OiPr)3 enter from both sides of the microreactor. With
this simple and, nevertheless, necessary step, a fairly uniform coating
was obtained.

(Janicke 286, col. 2, ll. 11-16 (emphasis added).)
Appeal 2010-005854
Application 11/089,440

4
[i]t is commonly recognized in the art that a uniform coati [sic]
normally has thickness deviation of 10% or less. Therefore, it would
have been obvious to believe that at least 90% of Janicke [sic] channel
is covered by the coating and the thickness deviation of the coating is
less than 20% of the average thickness.

(Ans. 3; see also, Ans. 10.)
Appellants disagree that Janicke’s statements regarding uniformity (see n.3)
pertain to the entire coating length, or at least 90% of a 1 cm contiguous length of
the coating. According to Appellants, Janicke only describes providing a uniform
coating at the entrance and exit of the microchannel. (App. Br. 7 (citing Janicke
286, col. 2, ll. 9-16); see also, Janicke 283, col. 2, last 5 lines (“After 1 h, the
reactor was cooled, and the flow direction was reversed for a second 1-h period so
that the entrance and exit of the reactor would have similar alumina coatings.”).)
The Examiner also maintains Janicke’s microchannel coatings would be
expected to have the same uniformity as Appellants’ because both Appellants and
Janicke form their coatings “us[ing] CVD of aluminum compounds.” (Ans. 4.)
Appellants do not agree that Janicke uses the same coating process. (Reply
Br.4 2; see also, App. Br. 7.) Appellants explain “Janicke et al. use CVD to form
alumina,” while “[i]n the present invention, CVD forms aluminide in which the
thickness of the coating is controlled by diffusion of Ni (or other metal) from the
microchannel wall. Alumina can then be formed by thermal oxidation of
aluminide.” (Reply Br. 2.) The differences in conventional CVD techniques and
the technique used by Appellants to form coatings is described in the Specification
as follows: “[C]onventional CVD techniques are unlikely to produce uniform
coatings within microchannels because thicker coatings would be expected near
channel openings and in features such as sharp turns and orifices, and in channel

4 Reply Brief filed Mar. 5, 2010.
Appeal 2010-005854
Application 11/089,440

5
corners.” (Spec. 4:5-7.) “[E]xceptionally uniform and dense coatings” result from
the particular coating method used by Appellants, e.g. “solid state reaction of
aluminum deposited at the surface from the gas phase and nickel diffusing out
from the substrate towards the surface.” (Spec. 18:18-20.)
The Examiner has not sufficiently explained why Janicke’s CVD process,
which appears to differ from Appellants’ coating process (see Reply Br. 2 supra),
would nonetheless be expected to produce a uniform coating as claimed rather than
the non-uniform coating produced by conventional CVD processes. (See
generally, Ans. 3-13.) The Examiner has not directed us to any evidence to
support the assertion that “a fairly uniform coating,” as described in Janicke (see
286, col. 2, ll. 11-16, reproduced supra at n.3) is understood in the art to refer to a
uniform coating having a thickness deviation of 10% or less. Thus, we agree with
Appellants that a preponderance of the evidence fails to support the Examiner’s
finding that Janicke discloses a coating having at least a 1 cm contiguous length in
which 90% or more of the coating thickness is within +/-20% of the average
coating thickness.
Appellants have demonstrated reversible error in the Examiner’s
obviousness determination. Therefore, we do not sustain the rejections of claims 1,
2, 4-7, 9, and 22-34.
REVERSED

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