Tech M3, Inc.

Patent Trials and Appeals Board

Oct 2, 2020

2019003533 (P.T.A.B. Oct. 2, 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.
14/629,381 02/23/2015 Nathan K. Meckel 39831-505C01US 8067
64046 7590 10/02/2020
Mintz Levin/San Diego Office
One Financial Center
Boston, MA 02111
EXAMINER
WILLIAMS, THOMAS J
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NATHAN K. MECKEL
____________________

Appeal 2019-003533
Application 14/629,381
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 9–17. We have jurisdiction under 35 U.S.C. § 6(b).2
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Dec. 17, 2018), Reply Brief (“Reply Br.,” filed Apr. 1, 2019), and
Specification (“Spec.,” filed Feb. 23, 2015), and the Examiner’s Answer
(“Ans.,” mailed Jan. 30, 2019), and Final Office Action (“Final Act.,”
mailed Nov. 17, 2017). Appellant identifies Tech M3, Inc. as the real party
in interest. Appeal Br. 2.
2 Claims 1–8 are withdrawn. Id.
Appeal 2019-003533
Application 14/629,381

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CLAIMED INVENTION
Appellant’s invention relates generally to “coated brake disks and
drums and methods for coating brake disks.” Spec. ¶ 2.
Claims 9 and 16 are the independent claims on appeal. Claim 9,
reproduced below, is representative of the subject matter on appeal:
9. A coated brake disk comprising:
a brake disk substrate having parallel surfaces, the brake
disk substrate comprising a combination of light weight ceramic
materials and ceramic composite materials, the brake disk
substrate having a coating overlying at least a portion of the
brake disk, the coating comprising:
a first coating layer comprising a first coating material
having a crystalline structure, and
a second coating layer comprising a second coating
material selected from the group of coating materials consisting
of a metal Nitride, a metal Oxide, a metal Boride and a metal
Carbide, the first and second coating layers comprising coating
particles that combine to construct a pattern of repetition that is
consistent with a lattice structure when applied over the parallel
surfaces of the brake disk substrate.

REJECTIONS
Claims 9, 11, and 15–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Martino (US 5,901,818, iss. May 11, 1999), Yu et al.,
Vapor Deposition of Platinum Allowed Nickel Aluminide Coatings, 201
Surface & Coatings Tech. 2326 (2006) (“Yu”), Greppi
(US 2005/0056495 A1, pub. Mar. 17, 2005), and Khambekar et al.
(US 7,261,192 B2, iss. Aug. 28, 2007) (Khambekar).
Claims 10 and 12–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Martino, Yu, Greppi, Khambekar, and Reinsch et al.
(US 2007/0234929 A1, pub. Oct. 11, 2007) (“Reinsch”).
Appeal 2019-003533
Application 14/629,381

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ANALYSIS
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claims 9 and 16 under 35 U.S.C. § 103(a), at least because the
proposed combination of Martino, Yu, and Khambekar does not teach “the
first and second coating layers comprising coating particles that combine to
construct a pattern of repetition that is consistent with a lattice structure
when applied over the parallel surfaces of the brake disk substrate,” as
recited in claim 9, and similarly recited in claim 16. Reply Br. 5–9
In rejecting claims 9 and 16 under 35 U.S.C. § 103(a), the Examiner
relies primarily on Martino. See Final Act. 2–3. The Examiner finds that
Martino teaches a brake disk substrate (titanium) having a coating
comprising a first coating layer 19 (nickel aluminide) and a second coating
layer 21 (zirconium oxide). Final Act. 2.
Martino teaches a titanium brake rotor 1 having two opposite braking
surfaces 3 oriented parallel to one another. Martino 3:62–66, 4:40–44, Fig.
1. Each braking surface 3 is coated with bonding layer 19, and thermal
barrier layer 21 is formed on each bonding layer 19. Id. at 6:45–48, Fig. 3.
Bonding layer 19 is a thin layer of nickel aluminide, and thermal barrier
layer 21 is a mixture of nickel and zirconium oxide. Id. at 6:51–55, 10:14–
17, claim 9 (reciting a bond coat of nickel and aluminum). The layers are
formed using plasma spraying techniques. Id. at 6:55–58. Bonding layer 19
has a thickness of about 0.005 inches. Id. at 9:25–28. Thermal barrier layer
21 preferably has a thickness between 0.01 inches and 0.03 inches, and more
preferably 0.005 to 0.015 inches. Id. at 9:36–39.
The Examiner correctly finds that Martino does not teach the
following claim limitations: 1) the first coating material (bonding layer 19
Appeal 2019-003533
Application 14/629,381

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of nickel aluminide) having a crystalline structure; and 2) the first and
second layers combine to construct a pattern of repetition that is consistent
with a lattice structure. Final Act. 2–3. The Examiner turns to a separate
secondary reference to cure each of these deficiencies.
Specifically, with reference to the first missing element, the Examiner
finds that Yu teaches vapor deposition for applying a bond coating of nickel
aluminide. Id. at 3 (citing Yu, p. 2332). The Examiner finds that Yu teaches
that the resulting layer of nickel aluminide is a crystalline structure. Final
Act. 3. The Examiner determines that it would have been obvious to form
Martino’s bonding layer 19 of nickel aluminide by vapor deposition (instead
of plasma spraying), as taught by Yu, resulting in Martino’s bonding layer
19 of nickel aluminide having a crystalline structure. Id.
Turning to the second missing element, the Examiner finds that
Khambekar teaches a coating layer applied to a brake disk body in thin
layers. Final Act. 4 (citing Khambekar 5:53–6:6). Khambekar teaches that a
coating on a brake disc can be applied by arc spraying. Khambekar 5:53–55.
The Examiner determines that it would have been obvious to “have applied
Martino’s second coating layer onto the bond layer of the brake disk body of
Martino . . . in multiple thin layers as taught by Khambekar.” Final Act. 4.
The Examiner finds “using multiple thin layers to make up each coating
layer would result in the recited lattice structural features.” Final Act. 4; see
also Ans. 5 (“using multiple thin layers to make up each coating layer would
result in the recited lattice structural feature”).
The Examiner’s interpretation of the claimed “lattice structure” as
multiple thin layers of a single material is unreasonably broad, and
inconsistent with the claim language. Claim 9, for example, recites that the
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Application 14/629,381

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first coating layer of a first material and a second coating layer of a second
material “combine to construct a pattern of repetition that is consistent with
a lattice structure.” Claim 16 recites similar language.3 Put simply, the
claim language requires that the first and second layers “combine” to
construct “a pattern of repetition” that is consistent with a lattice structure.
Appellant argues that the term “lattice structure” is generally
understood by those of ordinary skill in the art to refer a structure of a
crystalline solid in which a unit cell (i.e., a simplest repeating unit having
lattice points that represent the location of atoms or ions) repeats. Reply
Br. 8 (citing https://opentextbc.ca/chemistry/chapter/10-6-lattice-structures-
in-crystalline-solids/). Appellant’s Specification explains that the lattice
structure is configured by “alternatively depositing” first layer 28 (titanium)
and second layer 30 (titanium nitride). Spec. ¶ 24. Multiple alternating
layers form lattices, and “[m]ultilayers become superlatices when the period
of the different layers is less than 100Å.” Id. By alternatively depositing the
layers in this manner, their particles combine to construct a pattern of
repetition. Put in terms of the definition proffered by Appellant, the
combining creates a repeating unit cell of the combined material.
Here, none of the various modifications to Martino teach or suggest
combining bonding layer 19 and thermal barrier layer 21 in a manner to
construct a pattern of repetition, as called for by claims 9 and 16. Instead,
the Examiner proposes modifying the techniques for separately forming the

3 We interpret claim 16’s recitation for a second material as having
inadvertently omitted the term “first material” after the phrase “combines
with the.”
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Application 14/629,381

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two layers (namely, vapor deposition for bond layer 19, as taught by Yu, and
arc spraying for thermal barrier layer 21, as taught by Khambekar).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 9 and 16, and dependent claims 11, 15, and 17 under
35 U.S.C. § 103(a).
The Examiner’s rejection of dependent claims 10 and 12–14 does not
cure the deficiency in the rejection of claims 9 and 16. Therefore, we also
do not sustain the Examiner’s rejection of dependent claims 10 and 12–14.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Basis/References Affirmed Reversed
9, 11, 15–17 103(a) Martino, Yu, Greppi, Khambekar
9, 11,
15–17
10, 12–14 103(a)
Martino, Yu,
Greppi,
Khambekar,
Reinsch
10, 12–14
Overall
Outcome 9–17

REVERSED