James W. Neal et al.Download PDFPatent Trials and Appeals BoardDec 11, 201914920081 - (D) (P.T.A.B. Dec. 11, 2019) 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. 14/920,081 10/22/2015 James W. Neal 78243US02(14-290-2) 9373 52237 7590 12/11/2019 Bachman & LaPointe, P.C. 900 Chapel St., Suite 1201 New Haven, CT 06510 EXAMINER MOORE, KARLA A ART UNIT PAPER NUMBER 1716 MAIL DATE DELIVERY MODE 12/11/2019 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 JAMES W. NEAL, BRIAN T. HAZEL, DAVID A. LITTON, and ERIC JORZIK Appeal 2019-000171 Application 14/920,081 Technology Center 1700 ____________ Before JEFFREY T. SMITH, BRIAN D. RANGE, and MICHAEL G. MCMANUS, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the – Examiner’s decision to reject claims 8–10, 12, 13, 15, 16, and 18–31. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. REJECTIONS 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as United Technologies Corporation. Appeal Br. 2. Appeal 2019-000171 Application 14/920,081 2 The following rejections are presented for appeal: I. Claims 8–10 and 21–27 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Bruce et al. US 2004/0211363 A1, published Oct. 28, 2004 and Hass et al. US 2004/0134430 A1, published July 15, 2004. II. Claim 28 is rejected under 35 U.S.C. § 103 as unpatentable over Bruce. III. Claims 29 and 30 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Bruce and Han et al. US 2008/0223725 A1, published Sept. 18, 2008. IV. Claim 31 is rejected under 35 U.S.C. § 103 as unpatentable over the combination of Bruce and Hass. Appellant’s invention relates to a system for depositing coating on a workpiece. The system utilizes Electron Beam Physical Vapor Deposition (EBPVD) wherein the electron beam causes atoms from the target to transform into the gaseous phase and subsequently condense into solid form resulting in a coating of material on the workpiece in the vacuum chamber. (Spec. ¶ 3.) Claims 8 and 28 are illustrative of the subject matter on appeal and are reproduced from Appellant’s Brief below: 8. A system for depositing coating on a workpiece comprising: a deposition chamber; an electron beam gun positioned within the deposition chamber so as to point toward an ingot, a gas temperature within said deposition chamber maintained by the electron beam gun at greater than 1300 degrees F (704 C); and Appeal 2019-000171 Application 14/920,081 3 a manifold to inject process gases toward an upper wall of the deposition chamber to form a vortex within the deposition chamber around a vapor plume from the ingot. 28. A system for depositing coating on a workpiece comprising: a deposition chamber, at least one wall of the deposition chamber having a thermal barrier coating; and an electron beam gun positioned along a junction of an upper wall and a side wall of the deposition chamber so as to diagonally point toward an ingot, a gas temperature within said deposition chamber maintained by the electron beam gun at greater than 1300 degrees F (704 C). OPINION We limit our discussion to the independent claims 8, 24, and 28 and dependent claim 31. We first must determine to which one of the statutory classes of invention are the claims directed? The independent claims are “system” claims, but in order to be patentable the subject matter of a claim must fit into one and only one of the statutory claims of invention enunciated in 35 U.S.C. § 101, i.e., a process, machine, manufacture, or composition of matter. Claims cannot be directed to combinations of those classes of invention. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (claims to a combination of statutory claims of invention are not permitted and are indefinite). We interpret the system claims as directed to an apparatus, i.e. a structure which can be termed a machine or manufacture under 35 U.S.C. § 101 because the recited “system” comprises physical components such as a “chamber” and “gun.” Claims directed to an apparatus must be distinguished from the prior art in terms of structure. See In re Danly, 263 Appeal 2019-000171 Application 14/920,081 4 F.2d 844, 848 (CCPA 1959) (“Claims drawn to an apparatus must distinguish from the prior art in terms of structure rather than function”); In re Gardiner, 171 F.2d 313, 315–16 (CCPA 1948) (“It is trite to state that the patentability of apparatus claims must be shown in the structure claimed and not merely upon a use, function, or result thereof.”). Choosing to define an element functionally, i.e., by what it does, carries with it a risk: Where there is reason to conclude that the structure of the prior art is inherently capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). Moreover, the recitation of a material intended to be worked upon by a claimed apparatus does not differentiate the claimed apparatus structure from the structure of a prior art apparatus. In re Rishoi, 197 F.2d 342, 345 (CCPA 1952). Specification figure 1 depicts an exemplary system for depositing a coating on a workpiece. Specification figure 1 is reproduced below: Appeal 2019-000171 Application 14/920,081 5 Specification Figure 1 depicts a deposition chamber 26 configured for electron beam physical vapor deposition comprising an electron beam gun 60, that directs its beam to deposition material 72, and a gas shower 108 directives from compartment 62 for the electron beam gun 60. (Spec. ¶¶ 28– 34.) The Specification discloses there is a condensation problem when performing the electron beam physical vapor deposition (EB-PVD) process under low vacuum operation (LVO) conditions. (Spec. ¶¶ 35.) The Specification discloses to counteract the condensation problem, a vortex is formed within the deposition chamber around the vapor plume, V, to separate particles smaller than about 2.5 nm. (Spec. ¶¶ 38.) The Examiner finds Bruce discloses a system for depositing a coating on a workpiece comprising: a deposition chamber (12), an electron beam gun (30) positioned within the chamber so as to point toward an ingot (26), and a manifold (54) to inject a flow of process gasses toward an upper wall Appeal 2019-000171 Application 14/920,081 6 of the deposition chamber around a vapor plume from the ingot; and a refractory plate (80) in an area of the flow of the process gases in the deposition chamber. Bruce Figure 6 is reproduced below: Bruce Figure 6 depicts the coating chamber 12, comprising the hood 52, the location of the electron beam gun 30, the control valves 58, and the electron beams 28 on the ingots 26. The Examiner finds Bruce teaches that the electron gun contributes to the temperature during processing and that operable temperatures within the chamber depend in part on the composition of the workpiece to be coated and the deposition material. (Final Act. 3–4; Bruce ¶¶ 6, 8.) The Examiner finds Bruce fails to specifically disclose a gas temperature within the deposition chamber is maintained by the electron beam gun at greater than 1300 °F (704 °C) as required by independent claim 28. (Final Act. 4.) However, the Examiner finds Bruce teaches the EB-PVD apparatus Appeal 2019-000171 Application 14/920,081 7 “includes a coating chamber that is operable at an elevated temperature (e.g., at least 800 °C.)” (Final Act. 8; Bruce ¶ 8.) The Examiner further finds the deposition materials of Bruce and the present invention are similar. (Final Act. 8; Bruce ¶ 4; Spec. ¶ 31.) The Examiner finds Bruce fails to disclose the process gases flow forms a vortex within the deposition chamber around a vapor plume of the ingot. (Final Act. 5.) The Examiner finds Hass teaches an electron beam gun disposition apparatus comprising a manifold that injects process gas into a deposition chamber. The Examiner finds Hass teaches the process gas flow can be varied to optimize the deposition process. (Final Act 5 citing Hass ¶¶ 10, 11, 39, 46, 60, 69, and 74–77.) The Examiner acknowledges Hass does not teach the process gas forms a vortex within the deposition chamber around a vapor plume from the ingot as required by independent claims 8 and 24. (Final Act 5.) The Examiner determines that the formation of a vortex within the deposition chamber of Bruce would have been obvious to a person of ordinary skill in the art by optimization of the process gas flow based on the teachings of Hass. (Final Act 5.) Issue I The first issue on appeal is: Did the Examiner err in determining that the combination of Bruce and Hass suggests a deposition chamber comprising a manifold capable of injecting process gases so as to form a vortex within the deposition chamber around a vapor or plume from the ingot as required by independent claims 8, 24 and dependent claim 31? We answer this question in the affirmative. Appeal 2019-000171 Application 14/920,081 8 Appellant argues the Examiner acknowledges that both Bruce and Hass failed to disclose the process gas flow forms a vortex within the deposition chamber. (App. Br. 9–10.) Appellant argues the Hass process does not describe the formation of a vortex and would not result in a process that through optimization would result in the formation of a vortex. (Appeal Br. 10.) We agree with Appellant that the Examiner has not adequately explained how the disclosures of Bruce and Hass are sufficient to establish the formation of a deposition chamber comprising a manifold capable of injecting process gases so as to form a vortex within the deposition chamber around a vapor or plume from the ingot as required by independent claims 8, 24 and dependent claim 31. The Examiner’s position is a person of ordinary skill in the art would have envisaged from the teachings of Bruce and Hass the formation of the gas flow pattern as a vortex. The Examiner specifically states: Admittedly, Hass et al. do not teach that the surrounding process gas flow is a “vortex”, but in as much as a vortex is merely one of many flow patterns that might be envisaged by one of ordinary skill in the art exercising ordinary creativity, common sense and logic and in possession of the disclosure of Bruce et al., which teaches that the process gas flow can be optimized in order to, inter alia, improve material utilization efficiency, increase deposition rate and optimize carrier gas flow costs, it is considered to be an obvious selection via routine experimentation for one of ordinary skill in the art. The courts have ruled that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). (Final Act. 5.) Appeal 2019-000171 Application 14/920,081 9 The disclosure of Bruce regarding gas flow rates does not support the Examiner’s position. Addressing the gas flow rate Bruce states: The flow rates of oxygen and argon are individually controlled based on the targeted process pressure and the targeted partial pressure of oxygen. To reduce the occurrence of pressure oscillations within the coating chamber 12, the control loop response time for these gases was reduced by physically placing the control valves 58 for the gases immediately adjacent to the inlet 54 just outside the coating chamber 12, as shown in FIGS. 1 and 6. Placement of the control valves 58 so close to the coating chamber 12 provided a surprisingly significant improvement in pressure control, reducing pressure fluctuations within the coating chamber 12 and reducing disturbances in the focus and position of the electron beams 28 on the ingots 26. (Bruce ¶ 32.) The cited portions of Bruce do not indicate that the flow pattern of the gas was a concern contemplated. Bruce was interested in improving pressure control, reducing pressure fluctuations within the coating chamber 12, and reducing disturbances in the focus and position of the electron beams 28 on the ingots 26. The disclosure of Hass regarding gas flow rates does not support the Examiner’s position. Addressing the flow rate of gas Hass states: [T]he focus of the vapor stream can be tailored to the size of the part or area on a part to be coated by altering the gas flow rate. The vapor stream can be altered in a variety of ways including altering the carrier gas flow rate, the ratio of the upstream to downstream pressures and the size of the nozzle opening. Focusing the vapor stream results in a higher deposition efficiency onto small parts than compared to the conventional design. Appeal 2019-000171 Application 14/920,081 10 (Hass ¶ 46.) The cited portions of Hass do not indicate that formation of a vortex was contemplated. Hass was interested in improving the focus of the vapor stream that could be achieved by altering the gas flow rate. It is well established that optimization of a prior art range flows from the normal desire of scientists or artisans to improve upon what is already generally known. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1366–68 (Fed. Cir. 2007). But it is equally well established that when the parameter optimized was not recognized to be a result-effective variable, optimization would not have been obvious. In re Antonie, 559 F.2d 618, 620 (CCPA 1977). The present record does not show that the prior art recognized the need for the formation of a deposition chamber comprising a manifold capable of injecting process gases so as to form a vortex within the deposition chamber around a vapor or plume. For the foregoing reasons we do not sustain the Examiner’s rejection of claims 8–10, 21–27, and 31 under 35 U.S.C. § 103 as unpatentable over the combination of Bruce and Hass. Issue II The second issue on appeal is: Did the Examiner err in determining that Bruce suggests a deposition chamber comprising an electron beam gun that maintains the gas temperature within the deposition chamber at greater than 1300 °F (704 °C) as required by independent claim 28?2 2 Appellant argues independent claim 28 and dependent claims 29 and 30 together. Appellant does not provide separate arguments addressing the Han reference relied upon in the rejection of claims 29 and 30. (Appeal Br. 12.) Appeal 2019-000171 Application 14/920,081 11 We answer this question in the negative. Appellant argues the process of maintaining the temperature by the electron beam gun of Bruce is different from the claimed invention. (Appeal Br. 12.) As we discussed above, we interpret the present system claims as directed to an apparatus, i.e. a structure which can be termed a machine or manufacture under 35 U.S.C. § 101. Claims directed to an apparatus must be distinguished from the prior art in terms of structure. See Danly supra. As set forth above the Examiner finds Bruce teaches that the electron gun contributes to the temperature during processing and that operable temperatures within the chamber depend in part on the composition of the workpiece to be coated and the deposition material. (Final Act. 3–4; Bruce ¶¶ 6, 8.) The Examiner finds Bruce fails to specifically disclose a gas temperature within said deposition chamber maintained by the electron beam gun at greater than 1300 °F (704 °C) as required by independent claim 28. (Final Act. 4.) However, the Examiner finds Bruce teaches the EB-PVD apparatus “includes a coating chamber that is operable at an elevated temperature (e.g., at least 800 °C.)” (Final Act. 8; Bruce ¶ 8.) The Examiner further finds the deposition materials of Bruce and the present invention are similar. (Final Act. 8; Bruce ¶ 4; Spec. ¶ 31.) We determine that Appellant has not established that the apparatus of Bruce is a patently distinct system due to the suitability of the EB-PVD apparatus to operate at elevated temperatures above 800 °C and the similarity of deposition materials utilized within the system of Bruce. Appellant has not directed us to evidence or adequately explained why the structure of Bruce is incapable of operating at temperatures above 704 °C as Appeal 2019-000171 Application 14/920,081 12 required by the claimed invention. We note that Appellant has not argued the claimed positioning of the electron beam gun is patently distinct from the location of the electron beam gun of Bruce. For the foregoing reasons we sustain the Examiner’s rejections of claims 28–30 under 35 U.S.C. § 103. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 8–10, 21–27, 31 103 Bruce, Hass 8–10, 21– 27, 31 28 103 Bruce 28 29, 30 103 Bruce, Han 29, 30 Overall Outcome 28–30 8–10, 21– 27, 31 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation