Ex Parte Ürgen et al

Patent Trial and Appeal Board

Jun 29, 2016

12741592 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121741,592 05/05/2010
22045 7590 07/01/2016
BROOKS KUSHMAN P,C
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Mustafa K. Urgen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
GLST 0101 PUSA 8592
EXAMINER
ZHENG, LOIS L
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
07/01/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MUSTAFA K. URGEN, SERVET I. TIMUR,
KURSAT M. KAZMANLI, AND GULDEM KARTAL
Appeal2015-001152
Application 12/741,592
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Examiner finally rejected claims 1-13 of Application 12/7 41,592
under 35 U.S.C. § 103(a) as obvious. Final Act. (Oct. 13, 2013).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 There is no other party identified as the real party in interest.
Appeal2015-001152
Application 12/741,592
The Invention
The '592 Application describes a method of treating a metal coating
with boron so as to increase resistance to wear and corrosion. The method
specifies that the structure to be borided (treated with a boron containing
compound) is made at least partly of a tungsten carbide based material that
has a metal coating. The metal coating is made of one or more metals
chosen from group IVB, VB, VIB or aluminum. The metal coating is
treated with a boron containing electrolyte which is melted by a high
frequency induction heating regime.
Claim 1 is representative of the claims and is reproduced below:
1. A method for producing a wear and corrosion resistant
coated structure including WC based material coated with one
or more metals selected from group IVB, VB and VIB metals
and Al, the method comprising treating of said coated structure
with electrochemical boriding in an electrolyte which is
substantially free of halogenated compounds, and melting the
electrolyte with a high frequency induction heating regime
having electromagnetic frequency of between 50 kHz and 300
kHz, wherein said electrolyte comprises alkali carbonates and
boron sources.
Rejections
The claims stand rejected as follows: claims 1 and 4-13 under 35
U.S.C. 103(a) over Clark et al. (U.S. Patent No. 4,402,764, issued Sep. 6,
1983) in view of GB'859 (GB 1,422,859, published Jan. 28, 1976); and
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Appeal2015-001152
Application 12/741,592
claims 2-3 under 35 U.S.C. 103(a) over Clark in view of GB'859 and further
in view of Suzuki (JP 57-161090, published Oct. 4, 1982).
OPINION
Rejection of claims 1 and 4-13 under
35 U.S.C. 103(a) over Clark in view ofGB'859
The Appellants argue for the patentability of claims 1 and 4-13 as a
group and, additionally, offer separate argument in favor of claim 9. We
address the arguments concerning claims 1 and 4-13 as a group first.
A claim will be rejected where "the differences between the subject
matter sought to be patented and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art." 35 U.S.C. § 103. The ultimate
determination of obviousness under § 103 is a question of law based on
underlying factual findings. In re Baxter Int'l, Inc., 678 F.3d 1357, 1361
(Fed. Cir. 2012). These underlying factual considerations consist of: (1) the
level of ordinary skill in the pertinent art, (2) the scope and content of the
prior art, (3) the differences between the prior art and the claims at issue, and
(4) secondary considerations of non-obviousness such as commercial
success, long-felt but unsolved needs, failure of others, etc. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 406, (2007) (citing Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966)).
Appellants argue that the cited references do not teach or suggest a
boriding process where the electrolyte is heated by a high frequency
induction process employing a "frequency of between 50 kHz and 300 kHz"
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Application 12/741,592
or with an "electrolyte which is substantially free of halogenated
compounds." Appeal Br. 5.
The Examiner finds that GB '859 teaches induction heating using the
frequency range claimed in the application at issue. GB '859 teaches that
"the surface of a metal work may be heated by using high-frequency
induction, and indirectly the molten treating material is heated through said
surface." GB'859 at 4:128-5:2. The Examiner finds that, although the
induction does not directly heat the electrolyte, it would have been "within
the skills of one of ordinary skill in the art to have used the high frequency
induction heating for melting the electrolyte." Final Act. 3. The Examiner
further finds that the electromagnetic frequency used in the claimed
induction heat regime falls within the range known in the prior art. Answer
4.
GB'859 teaches "high-frequency induction" heating. GB'859 at
4: 129. The Kartal Declaration submitted by Appellants indicates that
"[h]igh frequency induction heating refers to a frequency range of between
50 kHz to 500 kHz .... " Kartal Deel. iJ8. This encompasses the claimed
range of 50 kHz to 300 kHz. Accordingly, the Examiner has established a
prima facie case of obviousness with regard to the range of induction heating
frequencies. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
For an applicant to overcome a prima facie case of obviousness for a
range of properties that encompasses a range disclosed in the prior art, the
applicant must "show that the [claimed] range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see
also In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).
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Application 12/741,592
Appellants cite to statements in the Specification that attribute an
"unexpected effect" to the high frequency regime. The Specification
indicates that low frequency induction heats the entire article while high
frequency induction tends "to heat substantially only [the] surface of the
treated article." The Specification further provides that this localized
heating prevents electrolyte decomposition "thus this method of heating
considerably increases the electrolyte performance." Spec. 7. This localized
surface heating, however, closely approximates the statement in GB '859 that
"the surface of a metal work may be heated by using high-frequency
induction." GB'859 at 4:128- 129 (emphasis added); see Application of
Hoch, 428 F.2d 1341, 1344 (C.C.P.A. 1970) ("to overcome the prima facie
case, it must be shown that the expectation on which it is based was in fact
unsound-as by showing that there are substantial, actual differences in
properties"). Nor do the Appellants attempt to establish the criticality of the
upper end of the claimed range. Accordingly, the Appellants have not
overcome the prima facie case of obviousness.
Appellants' second argument in support of the patentability of claims
1 and 4-13 concerns the claim limitation that the boron-containing
electrolyte be "substantially free of halogenated compounds." Appeal Br. 7-
9. GB'859 teaches several different electrolyte compositions that may be
used in an electrochemical boriding process. Several of these electrolyte
compositions lack any halogenated compound. The Examiner cites two such
embodiments in the Rejection. Final Act. 6 (citing GB '859 at page 3, lines
104-110 and page 3, line 127 -page 4, line 5).
The Appellants respond that certain other portions of the Specification
provide context such that "GB '859 teaches using halogenated compounds,
not against it." Appeal Br. 7. For example, Appellants cite to the teaching
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Appeal2015-001152
Application 12/741,592
that "[t]he treating material consists of ... elements (or alloys, chlorides or
oxides thereof) [from] Groups IVb, Vb and VIb of the Periodic Table." Id.
at 7-8. Each portion of GB '859 cited by the Appellants, however, refers to
chlorides in the disjunctive as one of several types of metal-based
compounds that may be used. There is no teaching in GB '859 that chlorides
(or other halides) are required; in fact, there are specific examples omitting
any halogenated compound. Accordingly, the Board adopts the Examiner's
finding that GB '859 teaches electrochemical boriding with an electrolyte
that is substantially free of halogenated compounds.
Rejection of claim 9 under 35 U.S.C. 103(a)
over Clark in view ofGB'859
Appellants argue claim 9 separately. Claim 9 depends from claim 1
but specifies that the "electromagnetic frequency of the induction heating
regime ranges from 70 to 150 kHz." As above, this frequency range falls
within that taught by the prior art and is prima facie obvious. The
Specification does indicate that the Appellants achieved an inadequate boron
diffusion rate using induction heating with a frequency of 30 kHz. Spec. 8.
This 30 kHz frequency, however, falls outside the known high frequency
range and is redundant of GB'859. Nor is it surprising; the Examiner found
that "the electromagnetic frequency of a high-frequency induction heating
regime also affects the heating temperature of the electrolyte which in tum
directly affects the boron diffusion rate." Final Act. 3. Similarly, the Kartral
Declaration indicates that induction heating power density correlates to
frequency. Kartral Deel. ,-i 17. Accordingly, it is a matter of routine
engineering to optimize the electromagnetic frequency used for induction
heating within the known high frequency range. Moreover, there is tension
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Application 12/741,592
between the Appellants' first argument that 50 to 300 kHz is the critical
range for induction heating and its second argument that 70 to 150 kHz is
the critical range. Thus, Appellants fail to establish the criticality of this
narrower range.
Rejection of Claims 2-3 Under 35 U.S.C. 103(a) over
Clark in View ofGB'859 and Further in View of Suzuki
Although Appellants' brief provides a separate heading for claims 2
and 3, they do not present any unique argument in support of their
patentability. Rather, they argue that claims 2 and 3 are patentable for at
least the same reasons as claim 1, from which they depend. Accordingly,
the rejections of claims 2 and 3 are affirmed for the reasons specified above.
See 37 C.F.R. § 41.37 (requiring that appellant's "arguments shall explain
why the examiner erred as to each ground of rejection contested by
appellant.").
CONCLUSION
We affirm the rejections of all claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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