Ex Parte Zenzinger et al

Patent Trial and Appeal Board

May 30, 2013

11821751 (P.T.A.B. May. 30, 2013)

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.
11/821,751 06/25/2007 Guenter Zenzinger 5038.1052 7499
23280 7590 05/31/2013
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
ROSE, ROBERT A
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
05/31/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GUENTER ZENZINGER and HERBERT ZISIK
____________________

Appeal 2011-003897
Application 11/821,751
Technology Center 3700
____________________

Before EDWARD A. BROWN, RICHARD E. RICE, and
CARL M. DeFRANCO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-003897
Application 11/821,751

2
STATEMENT OF THE CASE
Guenter Zenzinger and Herbert Zisik (Appellants) appeal under 35
U.S.C. § 134(a) from the final rejection of claims 1-7 and 10-12. App. Br. 2.
Claims 8 and 9 have been cancelled. Id. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 1 and 6 are independent. Claim 1 is illustrative and
reproduced below.
1. A method for producing a surface
coating on a component comprising the steps of:
abrasively blasting a surface of the
component using an abrasive material, a portion of
the abrasive material remaining on or in the
surface of the component;
detecting abrasive material remaining on or
in the surface of the component; and if the abrasive
material is detected and is smaller than a
predefined limit,
applying a coating to the surface of the
component;
wherein the detecting step includes
measuring or recording an integral change in the
reflectivity or emissivity in the region of the
abrasively blasted surface of the component and
determining whether an amount or proportion of
the abrasive material on or in the surface of the
component is smaller than the predefined limit.

Appeal 2011-003897
Application 11/821,751

3
REJECTIONS
Claims 1-7 are rejected under 35 U.S.C. § 102(b) as anticipated by
Novak (US 4,877,638; iss. Oct. 31, 1989).
Claims 10-12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Warnes (US 6,194,026 B1; iss. Feb. 27, 2001) and Novak.

ANALYSIS
Claims 1-7 – Anticipation – Novak
Claims 1-5
Appellants contend that Novak does not disclose “measuring or
recording an integral change in the reflectivity or emissivity,” as recited in
claim 1. App. Br. 4. Appellants contend that an “integral change” is
different from measuring the surface area proportion (id., citing Spec. paras.
[0015], [0021]), and that Novak “simply detects a percentage of the grit blast
media remaining on the surface” (id. (citing Novak, col. 2, ll. 18-23)) and
“merely measure[s] the surface area proportion” (Reply Br. 2). Appellants
also contend that “Novak uses an unaided eye or commercial detection
device to detect the compound. But there is absolutely no indication that
any integral change is measured at all.” Reply Br. 2. These contentions are
not persuasive.
Appellants do not direct us to a definition of the term “integral
change” in the Specification. Appellants contend that “[n]o integral change
in the emissivity or reflectivity need be measured or recorded, nor need be
inherent in Novak, as Novak requires solely a single comparison be
performed” (App. Br. 4 (citing Novak, col. 2, ll. 18-23); Reply Br. 2)
(emphasis added). We understand that Appellants are contending the
Appeal 2011-003897
Application 11/821,751

4
claimed “integral change” should be construed to require more than one
comparison “in the emissivity or reflectivity in the region of the abrasively
blasted surface of the component.” To the extent that Appellants are
contending that Novak does not teach measuring or recording an “integral
change” for the reason that Novak “requires solely a single comparison be
performed,” we do not find this contention persuasive.
Novak’s drawing shows steps of its coating method, including
spraying a mixture 9 containing a U.V. detectable compound 3 to remove a
coating 15 from a surface 12, then cleaning the surface 12 by brushing 18 to
remove grit blast media 24, then detecting residual grit blast media 24 using
U.V. light 21, then again cleaning the surface by brushing 18, and then again
detecting residual grit blast media using U.V. light 21. See Novak, col. 1, ll.
66-67, col. 2, ll. 4-23. Novak states that “[t]he residual grit blast media 24 is
removed as above until U.V. light exposure reveals that there is substantially
no residual grit blast media remaining on the surface. By substantially is
meant about 98% of the structure. Then a coating 27 may be applied to the
surface 12.” See Novak, col. 2, ll. 18-23 (emphasis added). This use of the
term “until” is consistent with the grit blast media removal and detecting
steps being repeated in the illustrated method. According to Novak, the grit
blast media removal and detecting steps would be repeated until the desired
numerical value is achieved. As such, we are not persuaded that Novak fails
to teach making more than one comparison.
Further, we agree with the Examiner that, in Novak, “the presence of
abrasive particles embedded in the surface following the blasting steps . . .
would inherently alter the reflectivity and/or emissivity of the surface from
[its] non-blasted state, resulting in an ‘integral change.’” Ans. 4-5.
Appeal 2011-003897
Application 11/821,751

5
Conversely, removing abrasive particles from the surface would inherently
change the structure and/or composition of the surface, changing the
surface’s reflectivity and/or emissivity and also resulting in an “integral
change.”
Appellants also contend that claim 1 requires two separate steps;
namely, (1) “measuring or recording an integral change . . . of the
component,” and (2) “determining whether an amount or proportion . . . is
smaller than the predefined limit.” App. Br. 4; Reply Br. 2. Appellants
contend that the Examiner takes the “single comparison” in Novak to meet
both limitations. App. Br. 4.
As discussed supra, we disagree with Appellants’ contention that
Novak teaches making only a single comparison. In addition, in Novak’s
method, each U.V. light exposure would provide a measurement for the
amount of residual grit blast media remaining on the surface. Each
measurement would be compared to the target numerical value (or
“predefined limit”) to determine whether that value has been achieved.
Accordingly, Appellants’ contentions are not persuasive.
In view of the above, we sustain the rejection of claim 1 and its
dependent claims 2-5.
Claims 6 and 7
Claim 6 recites that “the detecting step includes applying radiation to
the blasted surface of the component and individually detecting particles of
the abrasive material . . . smaller than the predefined limit (emphasis
added).” The Examiner found that Novak discloses visual detection with the
naked eye, and that such visual detection “would inherently consider the
Appeal 2011-003897
Application 11/821,751

6
population of abrasive particles remaining in the surface after blasting.”
Ans. 5.
Novak discloses that the U.V. detectable compound is detectable with
an unaided eye. See Novak, col. 3, ll. 8-16. We agree with Appellants that
the Examiner did not make a finding supported by a preponderance of the
evidence that Novak teaches “individually detecting particles of the abrasive
material.” Thus, we do not sustain the rejection of claim 6 and its dependent
claim 7.

Claims 10-12 – Obviousness – Warnes and Novak
Appellants provide no specific argument for claims 10-12, which
depend from claim 1.1 As Appellants have apprised us of no error in the
Examiner’s findings or conclusions in regard to claims 10-12, we sustain
this rejection.

DECISION
The Examiner’s rejections of claims 1-5 and 10-12 are AFFIRMED,
and the rejection of claims 6 and 7 is REVERSED.

1 As discussed supra, claim 1 is rejected over Novak. While the stated
rejection of claims 10-12 is over Warnes in view of Novak, the order of the
references is of no significance. See In re Bush, 296 F.2d 491, 496 (CCPA
1961) (“In a case of this type where a rejection is predicated on two
references each containing pertinent disclosure which has been pointed out
to the applicant, we deem it to be of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in view of B instead of on
B in view of A, or to term one reference primary and the other secondary.”).
Appeal 2011-003897
Application 11/821,751

7
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)(1)(iv).

AFFIRMED-IN-PART

mls