Lei Zhao et al.Download PDFPatent Trials and Appeals BoardFeb 23, 20212020002651 (P.T.A.B. Feb. 23, 2021) 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. 14/546,332 11/18/2014 Lei Zhao TYI4-57973-US-NP 4534 44639 7590 02/23/2021 CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER ENGLISH, PATRICK NOLAND ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 02/23/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte LEI ZHAO and ZHIYUE XU __________ Appeal 2020-002651 Application 14/546,332 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, MICHAEL G. McMANUS, and MERRELL C. CASHION, JR., Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 1, 4–6, 9–11, and 23–28. Claims 12–22 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Baker Hughes Incorporated. Appeal Brief dated August 29, 2019 (“Appeal Br.”), at 2. Appeal 2020-002651 Application 14/546,332 2 Representative claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. 1. An article comprising a substrate comprising a metal or an alloy of the metal, the metal comprising one or more of the following: magnesium; aluminum; titanium; manganese; iron; cobalt; nickel; copper; molybdenum; tungsten; palladium; chromium; ruthenium; gold; silver; zinc; zirconium; vanadium; or silicon; a polymer coating; and an intermediate layer disposed between the substrate and the polymer coating, the intermediate layer comprising a carbon composite, the carbon composite comprising carbon and a binder containing one or more of the following: SiO2; Si; B; B2O3; a metal; or an alloy of the metal; and the metal comprising one or more of the following: aluminum; copper; titanium; nickel; tungsten; chromium; iron; manganese; zirconium; hafnium; vanadium; niobium; molybdenum; tin; bismuth; antimony; lead; cadmium; or selenium, wherein the article further comprises a first binding layer directly disposed on the substrate and between the intermediate layer and the substrate, the first binding layer comprising one or more of the following: a solid solution of the metal in the substrate and the binder in the carbon composite; a solder; or a reaction product of a thermite composition comprising a reducing agent and an oxidation agent; and the article further comprises a second binding layer between the polymer coating and the intermediate layer, the second binding layer comprising a polymer or a monomer, the polymer and the monomer being bonded to the carbon in the carbon composite layer through covalent bonding. Appeal Br. 9. Claim 26, the other independent claim on appeal, similarly recites an article comprising, inter alia, “a second binding layer between the polymer coating and Appeal 2020-002651 Application 14/546,332 3 the intermediate layer, the second binding layer comprising a polymer or a monomer, the polymer and the monomer being bonded to the carbon in the carbon composite layer through covalent bonding.” Appeal Br. 12 (emphasis added). The Examiner maintains the following grounds of rejection on appeal:2 (1) claims 1, 4–6, 9–11, and 23–27 under 35 U.S.C. § 103 as unpatentable over Pinter3 in view of Ohta et al.4 and Chakraborty et al.;5 and (2) claim 28 under 35 U.S.C. § 103 as unpatentable over Pinter in view of Ohta and Chakraborty, and further in view of Weihs et al.6 B. DISCUSSION The Examiner finds Pinter discloses a copper/solder/alloy/graphite structure. Ans. 3.7 The Examiner finds the copper layer corresponds to the claimed substrate, the solder layer corresponds to the claimed first binding layer, and the graphite layer corresponds to the claimed intermediate layer comprising a carbon composite. Ans. 3. The Examiner finds Pinter does not disclose a second binding layer as recited in claims 1 and 26. Ans. 5. 2 Claims 1, 4–6, 8–11, and 26–29 were finally rejected under 35 U.S.C. § 112(a) based on the written description requirement and 35 U.S.C. § 112(b), as indefinite, and claims 1, 4–6, 8–11, and 23–29 were finally rejected under 35 U.S.C. § 103. Final Office Action dated April 5, 2019. In an Amendment dated June 5, 2019, the Appellant cancelled claims 8 and 29 and amended claims 1, 9, 10, and 26. In an Advisory Action dated June 24, 2019 (“Advisory Act.”), the Examiner withdrew the rejections under 35 U.S.C. §§ 112 and 103, and entered new grounds of rejection under 35 U.S.C. § 103. Advisory Act. 2. Those new grounds of rejection are before us on appeal. 3 US 3,361,561, issued January 2, 1968 (“Pinter”). 4 US 2010/0196716 A1, published August 5, 2010 (“Ohta”). 5 US 2011/0200825 A1, published August 18, 2011 (“Chakraborty”). 6 US 2004/0247931 A1, published December 9, 2004 (“Weihs”). 7 Examiner’s Answer dated December 19, 2019. Appeal 2020-002651 Application 14/546,332 4 The Examiner relies on Chakraborty to teach the claimed second binding layer. More specifically, the Examiner finds Chakraborty discloses a nano-coating comprising nanofillers and polymers. Ans. 5; see also Chakraborty ¶ 54 (disclosing that the nano-coating is a composite of nanographene dispersed in a polymeric matrix). The Examiner finds the nanofillers “‘may be derivatized to include functional groups such as, for example, carboxy (e.g., carboxylic acid groups), epoxy, amine, hydroxy, alkyl, benzyl, other monomer, polymer and the like, and combinations thereof.’” Ans. 6 (citing Chakraborty ¶ 26); see also Spec. ¶ 36. The Examiner finds that nanofiller layer 430a illustrated in Chakraborty Figure 4 corresponds to the claimed second binding layer. Ans. 11. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to apply Chakraborty’s nanofiller to Pinter’s graphite layer, which is said to correspond to the claimed intermediate carbon composite layer. Ans. 6. Because the invention of Pinter in view of Ohta[8] and Chakraborty comprises the same monomers in the second binding layer as recited in claim 10, the Examiner finds that covalent bonding inherently occurs between the carbon in Pinter’s graphite layer and the monomer in Chakraborty’s derivatized nanofiller as recited in claim 1 and 26. Ans. 6; see also Ans. 13; Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (inherency when applied to obviousness “is present only when the limitation at issue is the ‘natural result’ of the combination of prior art elements”). The Appellant argues that a chemical reaction is necessary to form a covalent bond between two materials. Appeal Br. 7; see also Reply Br. 39 (arguing 8 The Examiner finds, and the Appellant does not dispute, that Ohta discloses a polymer coating as recited in claims 1 and 26. See Ans. 4. 9 Reply Brief dated February 19, 2020. Appeal 2020-002651 Application 14/546,332 5 that “[i]t is well known to a person skilled in the art that covalent bonding does not automatically form when one places two materials next to each other, even if the same two materials may form covalent bonding under other reaction conditions”). In the claimed invention, for example, the Appellant argues that “[t]he original application discloses a method of coating a substrate compris[ing], among other things, grafting a monomer, a polymer, or a combination thereof on the [intermediate] carbon composite layer to provide a second binding layer.” Reply Br. 4 (citing Spec. ¶ 3) (emphasis added); see also Spec. ¶ 36. The Appellant describes “grafting” as follows: Grafting can form covalent bonds between the second binding layer and the carbon composite layer. For example, a polymer or monomer can be grafted to the carbon composite layer by reacting the functional groups on the polymer/monomer with the functional groups on the carbon of the carbon composite layer. As used herein, “grafting” includes “grafting to” and “grafting from” methods. Grafting to method includes grafting an end-functional polymer via the functional groups on the carbon composite layer. The reaction can be performed in solution of the polymer or from the polymer melt. For example, a solution or dispersion of the end-functional polymer can be coated on the carbon composite layer disposed on the substrate. Subsequently the end-functional polymer coated laminate structure can be heated to graft the end-functionalized polymer to the carbon composite layer. Grafting from method refers to the method of synthesis of a covalently attached polymer in situ on the carbon composite layer disposed on the substrate. Known mechanisms for polymer synthesis can be employed for “grafting from” approach. Depending on the reaction mechanism, an initiator may be covalently attached to the carbon composite surface. For radical polymerization, azo-initiators, peroxide- or photo- initiators can be used. Spec. ¶¶ 61–62 (emphasis added); see also Reply Br. 4–5 (citing Spec. ¶ 61). The Appellant argues that in the rejection on appeal Appeal 2020-002651 Application 14/546,332 6 the Examiner only looks at the materials and does not consider any process conditions to make the composite films. Thus the Examiner has not met the burden to show that the polymer and the monomer (in the second binding layer) are bonded to the carbon in the carbon composite layer, i.e., the carbon composite in the intermediate layer, through covalent bonding. Appeal Br. 7. Based on the Appellant’s disclosure, we find that a reaction between the monomers and polymers in the second binding layer and the carbon in the intermediate carbon composite layer is required for covalent bonding as recited in claims 1 and 26. The Examiner does not identify the conditions one of ordinary skill in the art would have used to apply Chakraborty’s nanofillers to Pinter’s graphite layer. Therefore, the Examiner has not provided a sufficient factual basis to support a finding that combining the teachings of Pinter and Chakraborty as proposed by the Examiner inherently results in covalent bonding between the monomer in Chakraborty’s derivatized nanofiller and the carbon in Pinter’s graphite layer as claimed. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (the examiner bears the initial burden of presenting a prima facie case of unpatentability). For that reason, the obviousness rejection of claims 1, 4–6, 9–11, and 23–27 is not sustained. The Examiner’s reliance on Weihs in the rejection of claim 28 does not cure the deficiency identified above. See Ans. 10–11. Therefore, the obviousness rejection of claim 28 also is not sustained. C. CONCLUSION The Examiner’s decision is reversed. Appeal 2020-002651 Application 14/546,332 7 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–6, 9–11, 23–27 103 Pinter, Ohta, Chakraborty 1, 4–6, 9–11, 23–27 28 103 Pinter, Ohta, Chakraborty, Weihs 28 Overall Outcome 1, 4–6, 9–11, 23–28 REVERSED Copy with citationCopy as parenthetical citation