Ex Parte Zhao et al

Board of Patent Appeals and Interferences

Dec 1, 2009

10646551 (B.P.A.I. Dec. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ZHIBO ZHAO, BRYAN A. GILLESPIE,
TAEYOUNG HAN, JOHN R. SMITH and
BRIAN K. FULLER
____________

Appeal 2008-004653
Application 10/646,551
Technology Center 3700
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Decided: December 1, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE
Zhibo Zhao et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-16. Claims 17-20 stand
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ invention is directed to a gas collimator and a kinetic
spray nozzle incorporating a gas collimator. (Appeal Br., Claims Appendix,
Claims 1, 5). Independent claim 1 is reproduced below, and is
representative of the overall claimed subject matter:
1. A gas collimator for a kinetic spray nozzle
comprising:

a collimator having a central hole surrounded by a
plurality of gas flow holes and a length of from 10
to 30 millimeters; said gas flow holes having a
hydraulic diameter of from 0.5 to 5.0 millimeters.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Roberts US 3,645,298 Feb. 29, 1972
Mochida US 4,740,408 Apr. 26, 1988
Belashchenko US 5,932,293 Aug. 3, 1999
Van Steenkiste US 6,139,913 Oct. 31, 2000
Popoola US 6,464,933 B1 Oct. 15, 2002

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The Examiner has rejected1:
(i) claims 1-3 and 5-10 under 35 U.S.C. § 103(a) as being
unpatentable over Van Steenkiste in view of Roberts;
(ii) claims 1-3 and 5-10 under 35 U.S.C. § 103(a) as being
unpatentable over Popoola in view of Roberts;
(iii) claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Van
Steenkiste or Popoola in view of Roberts, and further in view of Mochida;
and
(iv) claims 11-16 under 35 U.S.C. § 103(a) as being unpatentable over
Van Steenkiste or Popoola in view of Roberts, and further in view of
Belashchenko.
ISSUE
The Examiner concluded that it would have been obvious to modify
the gas collimator of either Van Steenkiste or Popoola to have the claimed
collimator length and claimed gas flow hole diameters, in view of the
teachings of Roberts. Appellants contend that the combination of the
teachings is improper and that the combination, if made, does not disclose or
suggest the claimed range of diameters for the gas flow holes. The issue
presented on appeal is whether Appellants have demonstrated that the
Examiner erred in reaching the conclusion that the claims are unpatentable
over Van Steenkiste or Popoola in view of Roberts.
FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d

1 A § 103(a) rejection of claims 1-3 and 5-10 over Van Steenkiste or
Popoola alone was expressly withdrawn by the Examiner. (Answer 2).
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1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF 1. The Van Steenkiste patent refers to the gas collimator disclosed
therein as a “flow straightener”. (Van Steenkiste, col. 3, ll. 37-39). Van
Steenkiste discloses nothing about any aspect of the design of the flow
straightener in terms of any effect on the function of the kinetic spray
apparatus in which it is used. (Van Steenkiste, passim).
FF 2. Van Steenkiste is silent with respect to any dimensional
characteristics and the possible effect of selecting or changing any of the
dimensions of the flow straightener. (Van Steenkiste, passim).
FF 3. The Roberts patent does not disclose specific lengths or ranges
of lengths for its gas collimator. (Roberts, passim).
FF 4. Roberts discusses the dimensions of its gas collimator in terms
of selecting a length to obtain a particular aspect ratio (no specific aspect
ratios or ranges thereof being disclosed) of length to cross-section to thus
achieve a particular pressure drop. (Roberts, col. 4, ll. 65-68).
FF 5. Roberts consistently discloses the size of the gas flow holes in
its collimator as having a maximum cross-section dimension of under
approximately 500 microns. (See, e.g., Roberts, col. 3, ll. 44-47).
FF 6. Popoola discloses a kinetic spray apparatus having a diaphragm
26 through which the heated gas passes prior to entering the throat of the
nozzle. (Popoola, Fig. 2).
FF 7. Popoola discloses nothing about any aspect of the design of the
diaphragm in terms of the effect on the function of the kinetic spray
apparatus in which it is used. (Popoola, passim).
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FF 8. Popoola is silent with respect to any dimensional characteristics
and the possible effect of selecting or changing any of the dimensions of the
diaphragm. (Popoola, passim).
PRINCIPLES OF LAW
A claim is unpatentable under 35 U.S.C. § 103(a) if “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 to which said
subject matter pertains.” The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007) (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”)
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The analysis need not seek out
precise teachings directed to the specific subject matter of the claim but can
take into account the inferences and the creative steps that a person of
ordinary skill in the art would employ. KSR Int’l, 550 U.S. at 418.

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ANALYSIS
Claims 1-3 and 5-10--Obviousness--Van Steenkiste in view of Roberts
Independent Claim 1 is directed to a gas collimator having a central
hole surrounded by a plurality of gas flow holes, the collimator having a
length of from 10 to 30 millimeters, and the gas flow holes having a
hydraulic diameter of from 0.5 to 5.0 millimeters. Independent Claim 5 is
directed to a kinetic spray nozzle having a gas collimator with the same
dimensional ranges for the length of the collimator and the diameter of the
gas flow holes. (Appeal Br., Claims Appendix, Claims 1, 5).
According to Appellants’ Specification, as evidenced in test results of
kinetic spray nozzles having a collimator as claimed and having the prior art
collimator, the use of a collimator having a length in the claimed range and
having gas flow holes of the claimed size, resulted in increased efficiency of
the kinetic spray process, in both low pressure and high pressure particle
feed systems, over prior art collimators. (Spec., p. 10, para. [0034]-p. 12,
para. [0038]; Figs. 7, 9A, 9B). The prior art collimators were, according to
Appellants, of a length of only about one millimeter. (Spec., p. 7, para.
[0025].
The Examiner found that the Van Steenkiste patent failed to disclose
the length of the collimator disclosed therein, as well as the diameter of the
gas holes. (Answer 3). The Examiner further found that the Roberts patent
discloses a collimator having flow holes with a hydraulic diameter of 0.5
millimeters and a selectable length. (Answer 3-4). The Examiner concluded
that it would have been obvious in view of Roberts to provide the device of
Van Steenkiste with a collimator having a length in the claimed range and
gas hole diameters in the claimed range. The Examiner stated that, “[d]oing
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so would provide a way to control flow.” (Answer 4). The Examiner
further supports the conclusion by noting that the discovery of an optimum
or working range involves only routine skill in the art. Further, the
Examiner notes that Roberts discloses that the length of the collimator can
be selected to obtain a desired aspect ratio between the length and the cross-
sectional diameter of the openings therethrough, to yield a device with a
particular pressure drop, and that it is well known in the art that a lower flow
pressure results in a more uniform flow, and that the proposed combination
leads to the ability to maintain a more uniform flow with less turbulence.
(Answer 5-6).
Appellants contend that the Examiner has failed to establish a prima
facie case of obviousness, asserting that there is no teaching, suggestion or
motivation (TSM) to combine the references2; that the Examiner has not
established that there would be a reasonable expectation of success were the
references considered for combination; and that the combination of
references do not teach or suggest all claim limitations. Despite the framing
of the first assertion in terms of TSM, which, under KSR, is no longer to be
rigidly applied, Appellants do challenge the reasoning set forth by the
Examiner as the basis for combining the teachings of the two references.
Appellants argue that the Van Steenkiste patent does not disclose or
teach anything that would lead a person of ordinary skill in the art to
consider modifying the length of the gas collimator 40 disclosed therein.
(Appeal Br. 7). The Van Steenkiste patent refers to this gas collimator as a
“flow straightener”, and aside from being able to infer from its name that it

2 The Appeal Brief and Reply Brief were both filed prior to April 30, 2007,
the date of the Supreme Court decision in KSR.
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is provided to straighten the gas flow stream as it moves toward the throat of
the nozzle, nothing is disclosed regarding any aspect of its design as
affecting the function of the kinetic spray apparatus in which it is used. (FF
1). Van Steenkiste is silent with respect to any dimensional characteristics
and the possible effect of selecting or changing any of the dimensions of the
flow straightener. (FF 2).
Appellants further contend that, in view of the lack of detail in Van
Steenkiste in describing the flow straightener, there is nothing in Van
Steenkiste disclosing or suggesting that modifying the flow straightener in
any way, let alone its length, would be a result effective variable pertaining
to the deposition efficiency of the kinetic spray system. (Appeal Br. 7-8).
We agree. As such, the Examiner’s conclusory statement that the discovery
of an optimum or working range for the length of the collimator involves
only routine skill in the art is misplaced, in that the Van Steenkiste patent
fails to even point the person of ordinary skill in that direction.
The Roberts patent does not disclose specific lengths or ranges of
lengths for its gas collimator. (FF 3). Rather, Roberts discusses the
dimensions in terms of selecting a length to obtain a particular aspect ratio
(no aspect ratios or ranges thereof being disclosed) of length to cross-section
to achieve a particular pressure drop. (FF 4). The Examiner observes, as
noted above, that lower pressures lead to more uniform, less turbulent flow,
but fails to address how that general knowledge would specifically apply to
a kinetic spray process, and what effect a lower gas pressure would have in a
kinetic spray process in which the gas is required to entrain small metallic
particles. The reasoning also fails to address where the person of ordinary
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skill in the art would glean from the prior art that some particular level of
turbulent gas flow is problematic in the operation of kinetic spray systems.
Appellants have demonstrated that the Examiner has not adequately
set forth articulated reasoning supported by rational underpinnings as to why
the person of ordinary skill in the art would find it obvious to combine the
teachings of Van Steenkiste and Roberts to reach the claimed invention.
Appellants additionally argue that the combination of Van Steenkiste
and Roberts does not result in a disclosure or suggestion of providing gas
flow holes having a diameter of from 0.5 to 5.0 millimeters. Roberts
consistently discloses the size of the gas flow holes in that collimator as
having a maximum cross-section dimension of under approximately 500
microns. (FF 5). Appellants note that 500 microns and the claimed lower
limit of 0.5 millimeters are the same dimension, and that the disclosure that
the Roberts gas flow holes are to be under approximately the claimed lower
value means that Roberts does not disclose a value within the claimed range.
(Appeal Br. 9-10).
The record is not clear as to how the Examiner has interpreted the
disclosure of a cross-section of under approximately 500 microns as meeting
the claim limitation (possibly by considering “approximately” as allowing
for larger sizes), but the specific examples provided in Roberts (under 25
microns) evidence that Roberts does not contemplate the use of gas flow
holes within the claimed range. As such, Appellants have demonstrated that
the Examiner erred in concluding that the combined teachings of Van
Steenkiste and Roberts render obvious a gas collimator having gas flow
holes of a diameter of from 0.5 to 5.0 millimeters.
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The rejection of claims 1-3 and 5-10 as being unpatentable over Van
Steenkiste in view of Roberts will not be sustained.
Claims 1-3 and 5-10--Obviousness--Popoola in view of Roberts
The rejection over Popoola in view of Roberts presents essentially the
same issues as are addressed above. Indeed, the Examiner groups the two
grounds of rejection in presenting the detailed reasoning for the rejections,
and Appellants, for the most part, treat Van Steenkiste and Popoola as
having the same disclosure as they pertain to the claims and the grounds of
rejection.
Popoola discloses a kinetic spray apparatus having a diaphragm 26
through which the heated gas passes prior to entering the throat of the
nozzle. (FF 6). The entirety of the disclosure of this component reads, “[i]t
may be desirable to employ a diaphragm 26, having ports 27, in the ante-
chamber of nozzle 13 for equalizing the gas velocity there-into.” (Popoola,
col. 3, ll. 2-4).
Like the Van Steenkiste patent above, Popoola discloses nothing
about any aspect of the design of the diaphragm as affecting the function of
the kinetic spray apparatus in which it is used. (FF 7). Popoola is also silent
with respect to any dimensional characteristics and the possible effect of
selecting or changing any of the dimensions of the diaphragm. (FF 8).
Appellants similarly contend that there is nothing in Popoola
disclosing or suggesting that modifying the diaphragm in any way, let alone
its length, would be a result effective variable relative to the deposition
efficiency of the kinetic spray system. We again find ourselves in
agreement. Moreover, the disclosure that, “it may be desirable” to provide
the diaphragm suggests that, while it might have some effect on the overall
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operation of the device, the inclusion of a diaphragm is not looked at as
being essential or critical to the operation. As such, it is difficult to imagine
that persons of ordinary skill in the art would consider that modifications to
that structure should be explored in seeking to improve the operation of the
system.
For essentially the same reasons as discussed in the preceding section,
Appellants have demonstrated that the Examiner has not adequately set forth
articulated reasoning supported by rational underpinnings as to why a person
of ordinary skill in the art would find it obvious to combine the teachings of
Popoola and Roberts to reach the claimed invention. Appellants have also
demonstrated that the Examiner erred in concluding that the combined
teachings of Popoola and Roberts render obvious a gas collimator having gas
flow holes of a diameter of from 0.5 to 5.0 millimeters.
The rejection of claims 1-3 and 5-10 as being unpatentable over
Popoola in view of Roberts will not be sustained.

Claim 4--Obviousness--Van Steenkiste/Popoola in view of Roberts and
Mochida
The Examiner does not rely on the Mochida patent to remedy the
deficiencies noted with respect to the Van Steenkiste, Popoola and Roberts
references, and it does not appear that the Mochida patent addresses, in any
way, those deficiencies. The rejection of claim 4 will not be sustained.
Claims 11-16--Obviousness--Van Steenkiste/Popoola in view of Roberts and
Belashchenko
The Examiner does not rely on the Belashchenko patent to remedy the
deficiencies noted with respect to the Van Steenkiste, Popoola and Roberts
references, and it does not appear that the Belashchenko patent addresses, in
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any way, those deficiencies. The rejection of claims 11-16 will not be
sustained.
CONCLUSIONS
Appellants have established that the Examiner erred in rejecting
claims 1-3 and 5-10 under 35 U.S.C. § 103(a) as being unpatentable over
either Van Steenkiste or Popoola in view of Roberts; erred in rejecting claim
4 under 35 U.S.C. § 103(a) as being unpatentable over those references and
further in view of Mochida; and erred in rejecting claims 11-16 under 35
U.S.C. § 103(a) as being unpatentable over Van Steenkiste or Popoola in
view of Roberts and Belashchenko.

DECISION
The decision of the Examiner to reject claims 1-16 is reversed.

REVERSED

Klh

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