Lei Zhao et al.

Patent Trials and Appeals Board

Feb 23, 2021

2020002651 (P.T.A.B. Feb. 23, 2021)

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pending but have been withdrawn from consideration.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

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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
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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.
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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.
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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
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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.

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Application 14/546,332

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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