WALTER AG

Patent Trials and Appeals Board

Feb 22, 2022

2022001441 (P.T.A.B. Feb. 22, 2022)

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. 16/310,975 12/18/2018 Dirk STIENS SMSW 14723WOUS 1333 78686 7590 02/22/2022 Sandvik Intellectual Property 3200 Highlands Parkway SE #200 Smyrna, GA 30082 EXAMINER SAWDON, ALICIA JANE ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 02/22/2022 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): corinne.gorski@sandvik.com patents@sandvik.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIRK STIENS and THORSTEN MANNS ____________ Appeal 2022-001441 Application 16/310,975 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and GEORGE C. BEST, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-13 of Application 16/310,975. Final Act. (December 28, 2020).2 We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Walter AG as the real party in interest. Appeal Br. 3. 2 On June 5, 2019, Appellant’s Request to Participate in the Patent Prosecution Highway was granted. Hence, we take up this appeal on an expedited basis. Appeal 2022-001441 Application 16/310,975 2 I. BACKGROUND The ’975 Application describes a coated cutting tool. Spec. 1. The cutting tool consists of a substrate and a multilayer wear-resistant coating. Id. The substrate is formed from cemented carbide, cermet, ceramics, steel, or cubic boron nitride. Id. The coating comprises an (a) layer of the formula Ti(1−x)AlxCyNz and a (b) layer of κ-Al2O3. Id. Claim 1 is representative of the ’975 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 1. A coated cutting tool comprising: a substrate of cemented carbide, cermet, ceramics, steel or cubic boron nitride, the substrate having a surface; and a multi-layered wear resistant coating deposited by chemical vapour deposition (CVD) and having a total thickness from 4 to 25 μm, the multi-layered wear resistant coating comprising a TiAlCN layer (a) represented by the formula Ti1-xAlxCyNz with 0.2 ≤ x ≤ 0.97, 0 ≤ y ≤ 0.25 and 0.7 ≤ z ≤ 1.15 deposited by CVD, and a κ-Al2O3 layer (b) of kappa aluminium oxide deposited by CVD immediately on top of the TiAlCN layer (a), and wherein the Ti1-xAlxCyNz layer (a) has an overall fiber texture with a {111} plane growing parallel to the substrate surface, the fiber texture in a {111} pole figure of the Ti1-xAlxCyNz layer (a), measured by X-ray diffraction or electron backscatter diffraction over an angle range of 0°≤α≤80°, having an intensity maximum within ≤10° tilt angle from a sample normal, and having ≥50% of a relative intensity measured over an angle range of 0°≤α≤60° within ≤20° tilt angle from the sample normal, and wherein the κ-Al2O3 layer (b) has an overall fiber texture with a {002} plane growing parallel to the substrate surface, the fiber texture in a {002} pole figure of the κ-Al2O3 layer (b), measured by X-ray diffraction or electron backscatter diffraction over an angle range of 0°≤α≤80°, having an intensity maximum within ≤10° tilt angle from the sample normal, and having ≥50% of the Appeal 2022-001441 Application 16/310,975 3 relative intensity measured over an angle range of 0°≤α≤80° within ≤20° tilt angle from the sample normal. Appeal Br. 16. II. REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1-13 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Van Den Berg,3 Pitonak,4 and Yoshimura.5 Final Act. 3. 2. Claims 6 and 8 are rejected under 35 U.S.C. § 103 as unpatentable over the combination of Van Den Berg, Pitonak, Yoshimura, and Vetter.6 Final Act. 9. III. DISCUSSION A. Rejection of claims 1-13 over the combination of Van Den Berg, Pitonak, and Yoshimura Appellant argues for reversal of this rejection based on the limitations of claim 1 and does not argue for the separate patentability of any of the dependent claims. Appeal Br. 8-13. We, therefore, select claim 1 as representative of the claims on appeal and limit our discussion accordingly. 37 C.F.R. § 41.37(c)(1)(iv) (2019). 3 US 2010/0323176 A1, published December 23, 2010. 4 US 2015/0064452 A1, published March 5, 2015. 5 US 5,920,760, issued July 6, 1999. 6 US 2001/0031347 A1, published October 18, 2001. Appeal 2022-001441 Application 16/310,975 4 In rejecting claim 1, the Examiner found that Van Den Berg describes a cutting tool with a multilayer wear-resistant coating. Final Act. 3. Van Den Berg’s cutting tool has a substrate body comprising cemented carbide, cermet, or a ceramic and a CVD-applied coating. Id. The coating comprises a Ti(1-x)AlxN layer with 0.65 ≤ x ≤ 0.95. Id. The Examiner found that the composition of Van Den Berg’s Ti(1-x)AlxN layer overlaps the composition ranges recited in claim 1 for the Ti(1-x)AlxCyNz layer. Id. Van Den Berg’s coating has an outer layer of Al2O3. Id. The Examiner further found that Van Den Berg does not describe or suggest (1) the x-ray diffraction or electron backscatter properties of the Ti(1-x)AlxN layer or (2) the aluminum oxide layer being κ-Al2O3 with the recited orientation and x-ray diffraction or electron backscatter properties. Id. The Examiner also found that Van Den Berg’s chemical vapor deposition process did not describe the first and second gas precursor streams used to produce the Ti(1-x)AlxCyNz layer described in the ’975 Application’s Specification. Id. at 4. The Examiner found that Pitonak describes a TiAlN coating prepared by a CVD process using two gas streams. Id. Pitonak’s first gas stream contains AlCl4, N2, H2, and TiCl4. Id. Pitonak’s second gas stream contains NH3 and N2. Id. The Examiner found that it would have been obvious to use Pitonak’s CVD process to make the Ti(1-x)AlxN layer described in Van Den Berg. Id. The Examiner found that the combination of Van Den Berg and Pitonak describes a CVD process that is the same as the method for forming the Ti(1-x)AlxCyNz layer described in the ’975 Application’s Specification. Id. It has long been the law that the Examiner can assume that the product produced by a process that is substantially identical to the process used to Appeal 2022-001441 Application 16/310,975 5 produce the claimed product inherently has the same properties as the claimed product. In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Thus, the Examiner found that the Ti(1-x)AlxN layer formed by the combination of Van Den Berg and Pitonak would be expected to meet the structural limitations recited in claim 1. Id. at 4-5. Appellant argues that the Examiner is not entitled to assume that the TiAlN layer produced by the combination of Van Den Berg and Pitonak would meet the structural limitations recited in claim 1. Appeal Br. 10-11. Appellant asserts that the Examiner’s presumption is improper for two reasons. Id. We address each of these arguments in turn. First, Appellant argues that the Examiner erred by finding that the combination of Van Den Berg and Pitonak describes or suggests a process (the “Van Den Berg/Pitonak process”) that is substantially the same as that set forth in Appellant’s Specification. Id. at 11. According to Appellant, the process described in the Specification differs from the Van Den Berg/Pitonak process because the Specification’s process uses a second gas stream containing NH3 and H2. Id. at 10 (citing Spec. Table 1). As described above, the Van Den Berg/Pitonak process uses a second gas stream containing NH3 and N2. The Examiner responds that this is not a substantial difference. Answer 12-13. The Examiner points out that both the inventive and comparative examples in Appellant’s Specification use a second gas stream containing NH3 and H2, suggesting that the presence of the H2 does not contribute to the structural differences between the examples. Id. at 12. According to the Examiner, the N2 in the Van Den Berg/Pitonak process and the H2 in the Specification’s process each serve as an inert gas. Id. at 13. The Appeal 2022-001441 Application 16/310,975 6 Examiner asserts that these inert gases have no effect on the structure of the film resulting from the CVD process. Id. The Examiner also argues that Appellant has not explained why the use of N2 rather than H2 in the second gas stream changes the structure of the deposited TiAlN layer. Id. Appellant has not filed a Reply Brief. After consideration of Appellant’s arguments and the Examiner’s response, we determine that the rejection of claim 1 should be reversed. To use the presumption afforded by In re Best, the Examiner must meet the burden of demonstrating that any differences between the prior art process and the process used to make the claimed product are insubstantial. Thus, when Appellant points to a difference between these processes, the burden is on the Examiner to demonstrate or explain why the differences are insubstantial.7 In this case, the Examiner has attempted to meet the burden of proof by asserting that H2 is an inert gas in the CVD process. See Answer 13. The Examiner, however, has not supported this assertion with citation to actual evidence. Given that Ti can act as a catalyst in NH3 synthesis from N2, see, e.g., Yoji Kobayashi et al., Titanium-Based Hydrides as Heterogeneous Catalysts for Ammonia Synthesis, 139 J. Am. Chem. Soc. 18240-46 (2017) (demonstrating that Ti can bond with N2), and as a catalyst in hydrogenation reactions, see, e.g., C.A. Willoughby, Catalytic Hydrogenation using Titanium Complexes, Ph.D. Thesis Massachusetts Institute of Technology 7 Thus, the Examiner’s argument that Appellant has not explained why the change from H2 to N2 in the second gas stream would result in a structural difference in the CVD-deposited layer represents an improper attempt to shift the burden of proof to Appellant. Appeal 2022-001441 Application 16/310,975 7 (1995) (available at https://dspace.mit.edu/handle/1721.1/11382) (demonstrating that Ti can bond with H2), the Examiner must support the claim that H2 and N2 are inert gases under the conditions used in the Van Den Berg/Pitonak CVD process to meet the burden of proof. Because the Examiner has not met the burden of proof regarding the insubstantiality of the differences between the Van Den Berg/Pitonak process and the Specification’s process, the presumption provided by Best does not apply. We, therefore, reverse the rejection of claim 1. Second, Appellant argues that Pitonak’s Figure 2 shows that Pitonak’s procedure, and by extension the Van Den Berg/Pitonak process, does not deposit a layer having the recited properties. Appeal Br. 10. Pitonak’s Figure 2 is a transmission electron microscopy image of a TiAlN layer deposited using Pitonak’s process. Pitonak ¶ 29. Figure 2 shows that the layer is comprised of small crystallites between 50 and 200 nm in size. Id. ¶ 39. Appellant argues that Figure 2 demonstrates that the deposited layer does not have the claimed 111 surface features recited in claim 1. Appeal Br. 10-11. The Examiner responds that “Pitonak is not relied upon for a teaching of the composition but for a CVD processing method which uses two precursor gas streams.” Answer 13. The Examiner also asserts that Appellant is incorrect in arguing that Pitonak’s Figure 2 does not show a highly crystalline, oriented surface structure. Id. We agree with Appellant that Pitonak’s Figure 2 does not appear to show the surface features one would expect from a highly crystalline surface with an “overall fiber texture” as recited in claim 1. However, without a comparable view of the surface produced by the ’975 Application’s Appeal 2022-001441 Application 16/310,975 8 process,8 Appellant’s arguments are not sufficient to justify reversal of the rejection of claim 1 in the absence of the differences in the Van Den Berg/Pitonak process and the Specification’s process discussed above. Appellant’s arguments regarding Pitonak’s Figure 2 bolster our conclusion that reversal is the correct course, but would not be sufficient in and of itself. In view of the foregoing, we need not consider and do not address Appellant’s other arguments for reversal of the rejection of claim 1. Because we have reversed the rejection of claim 1 as unpatentable over the combination of Van Den Berg, Pitonak, and Yoshimura, we also reverse the rejection of the pending claims 2-13 over this combination of references. B. Rejection of claims 6 and 8 over the combination of Van Den Berg, Pitonak, Yoshimura, and Vetter Claims 6 and 8 depend from claim 1. For the reasons set forth above, we have reversed the rejection of claim 1. The Examiner did not find that Vetter remedies the defects we have identified in the rejection of claim 1. Thus, we also reverse this rejection. IV. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-13 103 Van Den Berg, Pitonak, Yoshimura 1-13 6, 8 103 Van Den Berg, Pitonak, Yoshimura, Vetter 6, 8 Overall Outcome 1-13 8 The ’975 Application only includes a cross-sectional view of the multilayer wear-resistant coating. See Spec. 8, Fig. 1. Appeal 2022-001441 Application 16/310,975 9 REVERSED