Ex Parte Kmetz et alDownload PDFPatent Trial and Appeal BoardDec 21, 201612689507 (P.T.A.B. Dec. 21, 2016) 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. 12/689,507 01/19/2010 Michael A. Kmetz PA012611U;67097-1288PUS1 5974 54549 7590 12/23/2016 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER CHRISS, JENNIFER A ART UNIT PAPER NUMBER 1786 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): ptodocket @ cgolaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL A. KMETZ and KIRK C. NEWTON Appeal 2015-005347 Application 12/689,507 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 21 and 22 of Application 12/689,507 under 35 U.S.C. § 112, second paragraph, as indefinite, and claims 1—3 and 17—22 under 35 U.S.C. § 103(a) as obvious. Final Act. (July 1, 2014). Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we AFFIRM. 1 United Technologies Corporation is identified as the real party in interest. Appeal Br. 2. Appeal 2015-005347 Application 12/689,507 BACKGROUND The present application generally relates to ceramic matrix composites. Spec. 11. Fiber-reinforced ceramic matrix composites are known for use in high temperature structural applications, such as in the aerospace field. Id. The Specification teaches that the mechanical strength and toughness of a ceramic matrix composite are largely dependent on the interface between the reinforcing fibers and the matrix. Id. If the bonding between the fiber and the matrix is too strong, the composite becomes brittle. Id. Weaker interfacial bonding is said to yield a more resilient composite. Id.^ 1,21. The present application teaches that coating the fibers with a layer of zinc oxide “provides desirable bonding/debonding properties” because of its relative softness and temperature resistance. Id. 1 10. The application further teaches to provide a protective coating of a stable oxide external to the zinc oxide to prevent its chemical reduction to zinc metal. Id. ]Hf 13—14. Claims 1 and 22 are representative of the pending claims and are reproduced below: 1. A ceramic composite article comprising: ceramic reinforcement fibers each having an outer surface; a continuous zinc oxide coating disposed on the ceramic reinforcement fibers and in contact with the outer surfaces; and a coating of silica or alumina disposed directly on the continuous zinc oxide coating. 22. The ceramic composite article as recited in claim 1, wherein the coating of silica or alumina is selected with respect to a matrix deposition process that utilizes a reducing atmosphere. 2 Appeal 2015-005347 Application 12/689,507 Appeal Br. 8 (Claims App’x). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 21 and 22 are rejected under 35U.S.C. § 112, second paragraph, as indefinite. Final Act. 6. 2. Claims 1—3, 17 and 18—22 are rejected under 35 U.S.C. § 103(a) as obvious over Yasutomi et al. (US 5,876,659, iss. Mar. 2, 1999) (“Yasutomi”), or in the alternative, over Yasutomi in view of Lara-Curzio et al. (US 6,322,889 Bl, iss. Nov. 27, 2001) (“Lars-Curzio”). Final Act. 7—8. DISCUSSION Rejection 1. The Examiner rejected claims 21 and 22 as indefinite. Claim 21 is to the ceramic composite of claim 1, “wherein the coating of silica or alumina is selected with respect to protecting the continuous zinc oxide coating from chemical reduction to zinc metal under reducing atmospheres.” App. Br. 10 (Claims App.). Claim 22 is to the ceramic composite of claim 1, “wherein the coating of silica or alumina is selected with respect to a matrix deposition process that utilizes a reducing atmosphere.” Id. The Examiner determined that these claims “do not provide [a] clear tangible basis for the selection of the silica or alumina coating” and that the claims had elements that suggested they were method claims. Final Act. 6. Appellants argue that the rejection itself is unclear and fails to establish a prima facie case of indefmiteness. Appeal Br. 2—3. Appellants further argue that the breadth of the claims should not be conflated with their definiteness 3 Appeal 2015-005347 Application 12/689,507 and that it is clear that the claims are each to an “article” rather than a method. Id. at 3. In their Reply Brief, Appellants indicate their view that claim 21 does not concern selection of alumina or silica “on the basis of some factor(s) for protecting zinc oxide,” but rather that claims 21 and 22 “1ink[ ] these materials [silica or alumina] with their purpose or reason in the composite article.” Reply Br. 2. The statute requires “that a patent’s claims, viewed in light of the specification . . . inform those skilled in the art about the scope of the invention with reasonable certainty.” 35 U.S.C. § 112,12. “The ‘broadest reasonable interpretation’ rule recognizes that ‘before a patent is granted the claims are readily amended as part of the examination process.’ Thus, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application.” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citation omitted). Further, the Federal Circuit has held that “when the USPTO has initially issued a well- grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b).” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Here, the Examiner has issued a well-grounded rejection indicating that there is ambiguity in the basis for the selection of the silica or alumina coating. Appellants have not resolved such ambiguity nor delineated the scope of the claim. Nor have Appellants cited to any portion of the Specification that would provide one of skill in the art with appropriate 4 Appeal 2015-005347 Application 12/689,507 guidance. Accordingly, Appellants fail to show reversible error in the rejection. Rejection 2. The Examiner rejected claims 1—3, 17, and 18—22 as obvious over Yasutomi, or in the alternative, over Yasutomi in view of Lara- Curzio. Final Act. 7—8. Appellants allege error on several bases. First, they assert that Yasutomi teaches alumina fiber bundles coated with zinc oxide, but not any other layers. Appeal Br. 3. Similarly, Appellants argue that while Yasutomi lists silica, alumina, and zinc oxide as coating materials, it does not teach any specific structural arrangement of such materials. Appellants further argue that Yasutomi would lead one of skill in the art to understand that the disclosed coating materials are mixed. Id. at 4. Similarly, Appellants dispute the Examiner’s finding that each of the coating materials taught by Yasutomi may be used singly rather than as a mixture. Id. With regard to the rejections predicated on the combined teachings of Yasutomi and Fara-Curzio, Appellants assert that the combination may not be said to yield a predictable benefit because Fara-Curzio teaches a specific three-layer arrangement that differs from the proposed modification. Appellants further assert that one of skill in the art would not have an expectation of success for the same reason. Id. at 5. Finally, Appellants assert that the rejections of dependent claims 18 and 19, each of which concern the thickness of the silica or alumina coating, are in error for additional reasons. Appeal Br. 6. Appellants assert that the Examiner’s stated reason to combine the teachings of the references is merely conclusory and, thus, fails to establish a prima facie case of obviousness. Id. Appellants further assert that no cited reference teaches 5 Appeal 2015-005347 Application 12/689,507 the relationship of the thickness of one coating to another. Id. We will address these issues sequentially. We begin with Appellants’ contention that Yasutomi teaches alumina fiber bundles coated with zinc oxide, but not any other layers2 and that it teaches certain coating materials, but not that they have the structural arrangement required by the claims. Id. at 3^4. Yasutomi teaches that “in order to prevent the reaction between the continuous fibers and the matrix, the fibers may be coated on the surfaces thereof with at least one of SiC, C, TiC, B4C, BN, TiN, Si3N4, AIN, SiCh, TiCh, ZrC>2, AI2O3, ZnO, MgO, B2O3, and Ta206.” Yasutomi, 9:14—18 (emphasis added); see also Tables 4 and 5 (Table 5 provides that ZnO and Si02 may be used with a stainless steel matrix). The “at least one of’ language supports the Examiner’s finding that a coating, such as zinc oxide, may be applied as a single layer followed by a another coating with a different material, such as silica or alumina, rather than one exclusive coating including a mixture of these materials. Moreover, there is no support for Appellant’s contention that Yasutomi’s teaching of the use of “at least one” of the listed compounds necessarily requires a mixture of such materials in a single exclusive coating. Indeed, Yasutomi teaches an embodiment that includes an “intermediate layer” between the coating and the matrix: In order to prevent fracture of the coating layer due to the difference of thermal expansion between the matrix and the coating layer, there may be provided an intermediate layer 2 We note that both Appellants and the Examiner treat the “fiber bundles” described in Yasutomi as equivalent to the reinforcement fibers of the present claims. Accordingly, we will do likewise. 6 Appeal 2015-005347 Application 12/689,507 therebetween whose composition varies stepwise or gradually from that of the matrix to that of coating. Id. at 22:26—30. This intermediate layer is clearly not intermixed with the coating layer and thus suggests multiple layers where each layer varies compositionally. One of skill in the art would further be aware that Lara- Curzio teaches a reinforcing fiber with coatings applied seriatim, Lara- Curzio 6:6—11, resulting in a series of layers that retain their chemical identities, id. at Fig. 3. Appellants cite to no reference which teaches application of coating components as a mixture. Viewing the disclosure of Yasutomi in view of the teachings of Lara- Curzio, one of skill in the art would have been taught of a ceramic reinforcement fiber having a zinc oxide coating and additional identified coating components, such as silica, which may form a layer external to the zinc oxide. Accordingly, Appellants have not shown reversible error by the Examiner on this basis. Claims 18 and 19 Appellants further dispute the rejections of dependent claims 18 and 19. Claim 18 depends from claim 1 and further requires that “the continuous zinc oxide coating has a thickness of 0.1-0.3 millimeters.” Appeal Br. 10 (Claim App.). Claim 19 depends from Claim 18 with the further limitation that “the coating of silica or alumina is thicker than the continuous zinc oxide coating.” Id. Appellants assert that the Examiner’s stated reason to combine the teachings of the references is merely conclusory and, thus, fails to establish a prima facie case of obviousness. Id. at Br. 6. Appellants further assert that no cited reference teaches the relationship of the thickness of one coating to another. Id. 7 Appeal 2015-005347 Application 12/689,507 With regard to claim 18, the Examiner finds that Yasutomi teaches “the formation of coating layers of 50 pm [.05 mm] (column 21, lines 7-9) and 0.5 mm (column 21, lines 65-67) but does not teach the specific coating thickness of claim 18.” The Examiner determines that such teachings would teach one of skill in the art to use a coating thickness between the disclosed range (.05 mm to 0.5 mm). Final Act. 9. A range may be disclosed by individual data points. Indeed, a range may be drawn from multiple prior art patents. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). Accordingly, we find no error in the Examiner’s determination that Yasutomi teaches a range of thicknesses and that the values of claim 18 fall within such range. Thus, the Examiner has stated a prima facie case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). As Appellants have made no showing of criticality of the claimed range, the prima facie case is unrebutted. In re Harris, 409 F.3d 1339,1343 (Fed. Cir. 2005). With regard to claim 19, the Examiner finds that Fara-Curzio “teaches an example where the average thickness of the first layer was ~100 nm and the intermediate layer was ~200 to 400 nm thick. See column 7, lines 1-10.” Final Act. 10. Appellants argue that such reasoning is unsupported and conclusory. Appeal Br. 6. Appellants additionally argue that the rejection fails to teach thicknesses in a multilayer configuration, id., and that the Examiner relies upon outer layer 10 of Fara-Curzio in rejection of the base claim (claim 1) while seeking to rely upon central layer 8 in rejecting claim 19, Reply 3^4. The rejection is not merely conclusory; it finds appropriate support in the figures and specification of Fara-Curzio. Further, Figure 3 of Fara- Curzio is a transmission electron microscope (TEM) image that depicts a 8 Appeal 2015-005347 Application 12/689,507 fiber and a multilayer interfacial coating as described in the specification (col. 6:63—7:20) (note that the Zr layer adjacent to the fiber is described as “a minor contamination layer”). Thus, the reference does teach thickness ratios in a multilayer configuration. Accordingly, the Board adopts the Examiner’s findings regarding the teaching of thickness ratios by Lara-Curzio. CONCLUSION The rejections of claims 21 and 22 as indefinite and claims 1—3 and 17—22 as obvious are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation