Oskar Frech GmbH + Co. KG

Patent Trials and Appeals Board

May 1, 2020

14128939 - (D) (P.T.A.B. May. 1, 2020)

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.
14/128,939 03/21/2014 Norbert Erhard 028972.66101US 5690
23911 7590 05/01/2020
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
LOWREY, DANIEL D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte NORBERT ERHARD,
HELMAR DANNENMANN, JUERGEN KURZ,
ANDREAS SYDLO, and DANIEL GERNER
__________

Appeal 2019-003893
Application 14/128,939
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, 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 15–18, 20–26, and 33–41. We have jurisdiction
under 35 U.S.C. § 6(b). A hearing was held on April 3, 2020.
We REVERSE.

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 Oskar Frech GmbH + Co.
KG. Appeal Brief dated October 18, 2018 (“Br.”), at 1.
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The claims on appeal are directed to a casting component for a device for
casting or handling a metal melt. The component comprises a metallic basic body
provided with a sol/gel anticorrosive layer comprising microparticles or
nanoparticles of one or more substances selected from the group consisting of
borides, nitrides and carbides of the transition metals and their alloys, boron,
silicon, and Al2O3. The sol/gel layer comprises a plurality of gel layer plies,
wherein the outer layer ply in a depositing direction of the sol/gel layer is formed
without microparticles or nanoparticles.
Representative claim 15 is reproduced below from the Claims Appendix to
the Appeal Brief. The limitation at issue is italicized.
15. A casting component for a device for casting or handling a
metal melt, the component comprising a metallic basic body and a
melt contact surface region which is exposed to the metal melt during
casting operation, wherein the metallic basic body is provided in the
melt contact surface region with an anticorrosive layer which is
resistant to the metal melt and which is a sol/gel layer, using, as a
filler, at least one of microparticles or nanoparticles of one or more
substances selected from the group consisting of borides, nitrides and
carbides of the transition metals and their alloys, boron, silicon, and
Al2O3, wherein
the sol/gel layer comprises a plurality of gel layer plies, at least
one gel layer ply being formed without the microparticles or
nanoparticles, and
the at least one gel layer ply formed without the microparticles
or nanoparticles constitutes the outer layer ply in a depositing
direction of the sol/gel layer.
Br., Claims Appendix A-1.
The claims on appeal stand rejected as follows:
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(1) claims 15–18, 20–26, and 33–41 under 35 U.S.C. § 103(a) as
unpatentable over Matje et al.2 in view of Lamaze et al.3; and
(2) claims 15–18 and 20–25 under 35 U.S.C. § 103(a) as unpatentable
over Matje in view of Lamaze, Flint et al.,4 and Troczynski et al.5
B. DISCUSSION
1. Rejection (1)
The Examiner finds Matje discloses a steel die casting mold provided with
mold release layers that are corrosion resistant. Final Act. 2.6 The Examiner finds
the mold release layer is formed by a sol gel process and comprise colloidal
inorganic particles and additional fillers such as Al2O3 microparticles or
nanoparticles. Final Act. 2–3. The Examiner also finds the mold release layer
comprises boron nitride (BN) microparticles or nanoparticles. Final Act. 3.
The Examiner relies on Lamaze for the suggestion of an outer gel layer ply
formed without nanoparticles or microparticles as recited in the claims on appeal.
In particular, the Examiner finds Lamaze discloses a steel casting component
coated with an anti-corrosion refractory material comprising mineral filler
microparticles or nanoparticles. Final Act. 3. The Examiner finds the coating may
be applied in multiple coating steps followed by calcining, whereby each coating
layer may have a different filler amount. Final Act. 3–4. The Examiner finds the
filler amount is only limited by its effect on layer thickness, thus suggesting a thin
layer that does not include a filler. Final Act. 4.

2 US 2007/0054057 A1, published March 8, 2007 (“Matje”).
3 US 2004/0249039 A1, published December 9, 2004 (“Lamaze”).
4 US 2004/0208986 A1, published October 21, 2004 (“Flint”).
5 US 6,284,682 B1, issued September 4, 2001 (“Troczynski”).
6 Final Action dated May 31, 2018.
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The Examiner concludes that it would have been obvious to one of ordinary
skill in the art “to vary the amount of filler in the surface layer of Matje in view of
Lamaze, such amounts including zero, in order to have advantageous chemical
resistance as taught by Lamaze.” Final Act. 4.
The Appellant argues that “[t]here is no teaching in Lamaze to suggest
forming a gel layer ply without any fillers.” Br. 6. Rather, the Appellant argues
that “[o]ne of ordinary skill in the art reading Lamaze’s disclosure would . . .
understand that Lamaze explicitly requires mineral fillers (irrespective of how thin
the layer is).” Br. 6. For support, the Appellant directs our attention to paragraph
6 of Lamaze which describes the object of Lamaze’s invention as follows:
[A]n object of the invention is a coating precursor comprising a
silicone resin . . . , a mineral filler and an organic solvent capable of
dissolving the said resin and putting the said mineral filler into
suspension, the said silicone resin and the said mineral filler being
capable of chemically reacting so as to produce a solid layer on a
substrate after the organic solvent has evaporated and a cohesive
refractory layer after a calcination operation. [Emphasis added.]
In response, the Examiner finds that Matje’s mold release layer may “be
deposited along with primer coatings, such as binder sol without filler, and further
final coatings.” Ans. 13 (citing Matje ¶¶ 111, 114).7
Matje discloses that “[t]he release agent-containing coating sols can be
applied to the substrates/mold surfaces by means of common coating methods.”
Matje ¶ 111. “To improve the adhesion,” however, Matje discloses that “it may be
found to be advantageous in some cases to treat the substrate, before the
contacting, with diluted or undiluted binder sols or precursors thereof or other
primers.” Matje ¶ 111 (emphasis added); see also Br. 8 (depicting a primer layer

7 Examiner’s Answer dated February 6, 2019.
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between Matje’s substrate and mold release layer). Paragraph 114 of Matje, which
is also cited by the Examiner, discusses the application of a binder-free boron
nitride (BN) release layer. See Matje ¶ 78 (disclosing that “[t]he release agent BN
preferably has a mean particle diameter less than 100 µm”); see also Final Act. 3
(finding that BN is a filler).
We find that the portions of Matje relied on by the Examiner do not disclose
or suggest an outer layer ply of the mold release sol/gel layer formed without
microparticles or nanoparticles as recited in the claims on appeal.
As for Lamaze, the Examiner finds that the disclosed filler amounts are
“only ‘preferable.’” Ans. 13 (citing Lamaze ¶ 17). Moreover, the Examiner finds
the disclosure in Paragraph 17 of Lamaze that if the proportion of
filler is too low, the deposition will be too thin, does not teach away
from having no filler. Rather, it would have been obvious to once
[sic, one] of ordinary skill in the art that Lamaze discloses that the
surface layer can have a filler content that is only limited by its effect
on layer thickness, i.e. this would include no filler for a thin layer.
Ans. 13.
Lamaze discloses that “[t]he proportion of the mineral filler in the precursor
is typically between 30% and 75% by weight, and preferably between 45 and 70%
by weight.” Lamaze ¶ 17 (emphasis added). To the extent that one of ordinary
skill in the art would have understood that 30% by weight is not a lower limit, the
Examiner has nonetheless failed to establish that the teachings of Lamaze, as a
whole, would have suggested an outer gel layer ply formed without microparticles
or nanoparticles as recited in the claims on appeal. See, e.g., Lamaze ¶¶ 5, 6
(describing the invention as a coating precursor comprising a silicone resin and a
mineral filler capable of reacting chemically with the resin).
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For the reasons set forth above, the obviousness rejection of claims 15–18,
20–26, and 33–41 based on the combination of Matje and Lamaze is not sustained.
2. Rejection (2)
In the obviousness rejection based on the combination of Matje, Lamaze,
Flint, and Troczynski, the Examiner finds that “Matje in view of Lamaze does not
explicitly disclose [that] a surface layer chosen for chemical resistance may have
no filler.” Final Act. 10. The Examiner finds “Flint discloses [that] silica or
silicate films/layers on metal have a corrosion resistance that depends on
uniformity and lack of porosity.” Final Act. 10 (citing Flint ¶¶ 6, 20). The
Examiner finds “Troczynski discloses improving density/reducing porosity of sol-
gel layers by use of a sealing coat which may consist of sol-gel without filler.”
Final Act. 10 (citing Troczynski, col. 2, ll. 63–67, col. 5, ll. 18–47, col. 12, ll. 48–
61).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art
to use the sol-gel sealing coat of Troczynski as the surface layer of
Matje in view of Lamaze, in order to gain the benefit of reduced
porosity leading to enhanced corrosion resistance as taught by
Troczynski (Col 2, lines 63-67, Col 12 Lines 48-61) and Flint (Flint
Paras 6, 20), such a sealing coat having no microparticles or
nanoparticles used as filler.
Final Act. 10.
The Appellant argues that Troczynski does not disclose improving density
and reducing porosity of sol/gel layers by using a filler-free sealing coat. Br. 9.
Rather, the Appellant argues that Troczynski discloses that a phosphating agent
causes the desired improvement in density and reduced porosity. Br. 9. In that
regard, Troczynski discloses that “chemical bonding through phosphating
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according to the subject invention enables a reduction of the total porosity to less
than 3% (open porosity near zero), at temperatures 550° C. or lower.” Troczynski,
col. 9, ll. 7–10; see also Troczynski, col. 9, ll. 27–29 (disclosing that “[i]n order to
achieve substantially full densification of the body at a temperature below 600° C.,
an add-on chemical bonding process, according to the invention, is required”).
The Appellant also argues that Troczynski discloses that the addition (not
the removal) of ceramic fillers prevents the coating from shrinking upon heating.
Br. 9. The Examiner, however, finds that in certain embodiments, Troczynski’s
thin sol/gel coating does not contain phosphorous or a filler. Ans. 14, 15 (referring
to Troczynski Examples 4 and 5).
The portions of Troczynski relied on by the Examiner do not expressly
disclose a sol/gel coating formed without a filler as claimed. Troczynski Examples
4 and 5, for example, disclose an alumina sol prepared as in Troczynski Example
2. Troczynski, col. 12, ll. 47–67. In that Example, Troczynski discloses that
calcined aluminum oxide is dispersed in the sol. Troczynski, col. 12, ll. 11–13.
Consistent with Examples 4 and 5, Troczynski discloses that “[i]n order to
overcome the high shrinkage problem of classical sol-gel processing, calcined
ceramic powders of fibres (ceramic fillers) may be dispersed into sols to fabricate
high performance composite sol-gel ceramics.” Troczynski, col. 6, ll. 44–47; see
also Troczynski, col. 7, ll. 46–48 (disclosing that the key discovery of the
invention is that hydrated ceramic oxide sol reacts rapidly with phosphates and/or
phosphoric acid).
For the reasons set forth above, the Examiner has failed to establish, by a
preponderance of the evidence, that the combined teachings of Matje, Lamaze,
Flint, and Troczynski would have led one of ordinary skill in the art to a casting
component as recited in the claims on appeal. See In re Oetiker, 977 F.2d 1443,
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1445 (Fed. Cir. 1992) (examiner bears the initial burden of presenting a prima facie
case of unpatentability). For that reason, the obviousness rejection of claims 15–
18 and 20–25 based on the combined teachings of Matje, Lamaze, Flint, and
Troczynski is not sustained.
C. CONCLUSION
The Examiner’s decision is reversed.

Claims
Rejected
35 U.S.C. § Rejection(s)/Basis Affirmed Reversed
15–18, 20–26,
33–41
103(a) Matje, Lamaze 15–18, 20–26,
33–41
15–18, 20–25 103(a) Matje, Lamaze,
Flint, Troczynski
15–18, 20–25
Overall
Outcome
15–18, 20–26,
33–41

REVERSED