Ex Parte ZomboDownload PDFPatent Trial and Appeal BoardOct 31, 201411481721 (P.T.A.B. Oct. 31, 2014) Copy Citation 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. 11/481,721 07/06/2006 Paul J. Zombo 2006P04160US 3042 7590 11/03/2014 Siemens Corporation Intellectual Property Department 170 Wood Avenue South Iselin, NJ 08830 EXAMINER PADGETT, MARIANNE L ART UNIT PAPER NUMBER 1717 MAIL DATE DELIVERY MODE 11/03/2014 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 PAUL J. ZOMBO ____________ Appeal 2012-012420 Application 11/481,721 Technology Center 1700 ____________ Before PETER F. KRATZ, MARK NAGUMO, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 14, and 15 of Application 11/481,721 under 35 U.S.C. § 102(b) as anticipated or, in the alternative under 35 U.S.C. § 103(a) as obvious. Final Rejection (FR) 3 (November 23, 2011). The Examiner also rejected claims 22–26 under 35 U.S.C. § 112, ¶ 2 as indefinite. FR 2. Furthermore, the Examiner rejected claims 1, 2, 4–7, 9, 14, 15, 17, 18, and 20–26 under 35 U.S.C. § 103(a) as obvious. FR 7, 9, 12. Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM-IN-PART. 1 Siemens Energy, Inc. is identified as the real party in interest. (App. Br. 1.) Appeal 2012-012420 Application 11/481,721 1 BACKGROUND The ’721 Application describes methods for non-destructive examination (NDE) of articles of manufacture. Spec. 1. These methods involve the application of a coating to the article. Id. The coated article is then stimulated with energy and the topography of energy-induced changes in the coating is evaluated to locate defects in the article. Id. Claim 1 is representative of the ’721 Application’s claims and is reproduced below: 1. A method for non-destructive evaluation of an article of manufacture, the method comprising the following sequence of steps: coating a surface of the article with a temperature- sensitive coating; and stimulating the article with an evaluation energy that preferentially generates heat in the article proximate a flaw therein, producing temperature-induced changes in the temperature-sensitive coating that visibly indicate the flaw in the article, wherein the evaluation energy is selected and controlled for evaluation of the article; evaluating the article via the temperature-induced changes in the temperature[-]sensitive coating; and conducting a repair on the article using the temperature- induced changes in the temperature-sensitive coating on the surface of the article as a guide for locating the repair. (App. Br. 11 (Claims App’x) (emphasis added).) Appeal 2012-012420 Application 11/481,721 2 REJECTIONS On appeal, the Examiner maintains2 the following rejections: 1. Claims 1, 14, and 15 are rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Banaszak.3 FR 3. 2. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over Banaszak. FR 3. 3. Claims 4, 5, and 22–24 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Banaszak and Goldfine.4 FR 7. 4. Claims 1, 2, 6, 7, 9, 14, 15, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shannon5 and Banaszak. FR 9. 5. Claims 18, 20, 21, 25, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shannon, Banaszak, and Goldfine. FR 12. DISCUSSION Rejection 1. The Examiner rejected claims 1, 14, and 15 as either anticipated by or obvious over Banaszak. FR 3. Appellant argues that this 2 The Examiner has withdrawn the rejection of claims 22–26 for failing to comply with 35 U.S.C. § 112, ¶ 2. Ans. 3; see also Advisory Action 2 (January 26, 2013). 3 US Patent No. 6,575,620 B1, issued June 10, 2003. 4 US Patent Application Publication 2005/0171703 A1, published August 4, 2005. 5 US Patent No. 4,637,896, issued January 20, 1987. Appeal 2012-012420 Application 11/481,721 3 rejection should be reversed because Banaszak neither describes nor suggests a non-destructive test method. (App. Br. 6-7.) In particular, Appellant argues that Banaszak describes a visual crack measurement system, which Appellant argues is a destructive testing method. (Id.) We are not persuaded by this argument. As the Examiner found, Banaszak describes the use of its temperature sensitive coating as part of a flight testing scenario to detect impending failure of portions of an aging aircraft. FR 4–6 (citing Banaszak col. 4, ll. 19–29). In this application, Banaszak’s coating is used to detect “where a structural fatigue crack will form before it actually forms.” Banaszak col. 4, ll. 20–21. Banaszak thus describes a non-destructive method for evaluating the aging aircraft. We, therefore, affirm the rejection of claims 1, 14, and 15 as anticipated by or obvious over Banaszak. Rejection 2. The Examiner rejected claim 6 as obvious over Banaszak. FR 3. Claim 6 depends from claim 1 and further specifies that the temperature-sensitive coating display different colors depending on the different temperatures induced in the article by the evaluation energy. Appellant argues that this rejection should be reversed because the Examiner improperly used hindsight in formulating the rejection. (App. Br. 7.) We are not persuaded by this argument. The Examiner found that Banaszak did not describe this limitation. FR 6. The Examiner further found that Banaszak expressly suggests that temperature-sensitive coatings other than those expressly disclosed may be used in its testing procedure. (Id. (citing Banaszak col. 3, ll. 50–53).) Relying upon these two findings, the Examiner then concludes that it would’ve been obvious to one of ordinary skill of the art to employ alternative paint compositions as suggested by Appeal 2012-012420 Application 11/481,721 4 Banaszak et al., including ones with multiple temperature sensitive compounds that would reasonably have been expected with careful choice to extend the temperature range over which investigations may effectively be performed, as the exemplified compound is only useful in a specified temperature range, which would reasonably suggest to one of ordinary skill that when investigations required wider temperature ranges, multiple compounds sensitive in different ranges would be employed, where one of ordinary skill would reasonably expect that these different compounds would not fluorescent [sic, fluoresce], i.e. emit light, at the same wavelengths, hence would have different colors. FR 6–7; see also Ans. 5. Our review of this explanation convinces us that the Examiner has not reversibly erred by relying upon hindsight in formulating the rejection. The Examiner has provided a reasoned explanation of why a person of ordinary skill in the art would have modified Banaszak to arrive at the method set forth in claim 6. We, therefore, also affirm the rejection of claim 6 as obvious over Banaszak. Rejection 3. The Examiner rejected claims 4, 5, and 22–24 as obvious over the combination of Banaszak and Goldfine. FR 7. Claim 4 reads: 4. The method of claim 1 wherein: the coating step comprises applying the temperature-sensitive coating in a grid pattern at a particular scale on the surface; and the evaluating step comprises evaluating the temperature- induced changes in conjunction with the grid pattern to determine a dimension of the flaw in the article. (App. Br. 11 (Claims App’x).) Appellant argues that this rejection should be reversed with respect to claims 4, 5, 23, and 24 because the Examiner’s reliance on Goldfine as Appeal 2012-012420 Application 11/481,721 5 describing or suggesting these limitations is erroneous.6 (App. Br. 8.) Appellant correctly argues that Goldfine describes the use of a grid comprising sensors that are used to detect, inter alia, electric and magnetic fields produced by the application of current. See Goldfine ¶¶ 37–39, 42, 54–58. Goldfine does not describe application of a coating in a grid pattern. Furthermore, we are not convinced by the Examiner’s argument (see Ans. 5– 6) Goldfine would have suggested application of a coating in such a manner to a person of ordinary skill in the art. The Examiner has not presented the necessary reasoning with a rational underpinning to support this obviousness rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We, therefore, reverse the rejection of claims 4, 5, 23, and 24 as obvious over the combination of Banaszak and Goldfine and we affirm as to claim 22 for the reasons stated by the Examiner. Rejection 4. The Examiner rejected claims 1, 2, 6, 7, 9, 14, 15, and 17 as obvious over the combination of Shannon and Banaszak. FR 9. Appellant argues that this rejection should be reversed because the proposed combination would either be inoperable or change Banaszak’s principle of operation. (App. Br. 9.) We address these claims in three groups. First, we affirm the rejection of claims 1, 6, 14, and 15. For the reasons discussed above, we have already concluded that the differences, if any, between Banaszak and the subject matter of these claims would have been obvious to a person of ordinary skill in the art at the time of the invention. Thus, the combination of Banaszak and Shannon would also have 6 Because Appellant does not timely present any substantive argument for reversal of the rejection of claim 22 in the Appeal Brief as obvious over the combination of Banaszak and Goldfine, we summarily affirm this rejection. Appeal 2012-012420 Application 11/481,721 6 rendered these differences obvious to an ordinarily skilled artisan. The addition of Shannon to the rejection is, at most, harmless error. Second, we also affirm the rejection of claim 7 as obvious over the combination of Banaszak and Shannon. Appellant’s arguments for reversal of the rejection focus upon the step of fixing the temperature-induced changes in the temperature-sensitive coating. (See App. Br. 9.) Because claim 7 does not include this limitation, Appellant’s arguments do not address the Examiner’s rejection of this claim. Thus, we affirm the rejection of claim 7. Third, we affirm the rejection of claims 2, 9, and 17. Each of these claims includes the step of fixing the temperature-induced changes in the temperature-sensitive coating. The Examiner found that Shannon “teaches depositing photopolymerizable mixture including cholesteric liquid crystal monomers on substrates, where temperature is applied (heated or cooled) to control the color of the coating, then the coating is photopolymerized in order to fix that color.” FR 10. Appellant argues that the combination of Shannon and Banaszak would either be inoperable or change Banaszak’s principle of operation because Banaszak’s method requires observation of the progress of crack formation while Shannon describes fixing by photopolymerization before thermally-induced changes are visible. (App. Br. 9 (citing Shannon col. 9, ll. 15–22).) We are not persuaded by this argument. Appellant relies upon a portion of Shannon which describes the properties of materials prepared either by thermal or radical initiated polymerizations of solutions or of bulk of starting material. See Shannon col. 9, ll. 15–22. Shannon’s examples, however, establish that Shannon describes coatings which have observable Appeal 2012-012420 Application 11/481,721 7 temperature-induced color changes in the absence of polymerization. See id. at col. 10, l. 65–col. 12, l. 24. The photo-induced polymerization merely serves to fix the color produced at a particular temperature. See also id. at col. 9, ll. 31–44 (describing production of multi-response coatings). Shannon’s coatings can, therefore, be used in Banaszak’s method and the observed temperature-induced color pattern can be fixed at a desired point in time by photo-initiated polymerization. For the foregoing reasons, we affirm the rejection of claims 1, 2, 6, 7, 9, 14, 15, and 17 as obvious over the combination of Banaszak and Shannon. Rejection 5. The Examiner rejected claims 18, 20, 21, 25, and 26 as obvious over the combination of Shannon, Banaszak, and Goldfine. FR 12. Appellant argues that this rejection should be reversed because Goldfine does not cure the alleged deficiencies of the combination of Shannon and Banaszak. (App. Br. 10.) Because we have affirmed the rejection of claims 2, 9, and 17 as obvious over the combination of Shannon and Banaszak, we are not persuaded by this argument. We, therefore, also affirm this rejection. CONCLUSION For the reasons set forth above, we affirm the rejection of claims 1, 2, 6, 7, 9, 14, 15, 17, 18, 20–22, 25, and 26 as obvious. We reverse the rejection of claims 4, 5, 23, and 24. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 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