11828412 (B.P.A.I. Jul. 27, 2012)

Ex Parte Ramotowski

Board of Patent Appeals and InterferencesJul 27, 2012

11828412 (B.P.A.I. Jul. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/828,412 07/26/2007 THOMAS S. RAMOTOWSKI 98216 9302 23523 7590 07/27/2012 NAVAL UNDERSEA WARFARE CENTER DIVISION NEWPORT 1176 HOWELL STREET CODE 000C NEWPORT, RI 02841 EXAMINER LEONG, SUSAN DANG ART UNIT PAPER NUMBER 1724 MAIL DATE DELIVERY MODE 07/27/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte THOMAS S. RAMOTOWSKI ____________ Appeal 2011-005737 Application 11/828,412 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005737 Application 11/828,412 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1-6, 8, and 9. We have jurisdiction under 35 U.S.C. § 6. Appellant’s invention is directed to a method for conducting an accelerated life test of a polymer coated metallic sample. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A method for conducting an accelerated life test of a polymer coated metallic sample comprising the steps of: providing a test tank; providing water and gas in said test tank where said test tank has a layer of gas over said water; providing the polymer coated metallic sample to be tested under said water in said test tank; increasing cathodic polarization of said metallic portion of said sample; increasing the amount of oxygen dissolved in said water in said test tank which comprises providing oxygen in said test tank through an aerator under the surface of said water; and measuring the delamination of said coating from said sample with respect to time. Appellant, App. Br. 6, requests review of the following rejections from the Examiner’s final office action:1 Claims 1-6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Welch (United States 7,141,150 B1 1 The Examiner withdrew the 35 U.S.C. § 103(a) rejections of claims 1-6, 8 and 9 over the combination of Stratmann, Nyman, and Toshinori. (Ans. 3). Appeal 2011-005737 Application 11/828,412 3 issued Nov. 28, 2006), Stratmann (United States 5,369,370 issued Nov. 29, 1994), and Nyman (United States 3,982,066 issued Sept. 21, 1976) Claims 1-6, 8, and 9 stand rejected under the nonstatutory obviousness-type double patenting rejection as unpatentable over Welch in view of Stratmann, and Nyman. OPINION Prior art Rejection The dispositive issue on appeal for this rejection is: Did the Examiner err in determining that the combination of Welch, Stratmann and Nyman would have suggested a method for conducting an accelerated life test of a polymer coated metallic sample as required by the subject matter of claim 1?2 After thorough review of the respective positions provided by Appellant and the Examiner, we answer this question in the negative and AFFIRM. It has not been disputed that Welch describes a method and test apparatus for carrying out testing for cathodic delamination of polymer bonded to metal samples. (Welch, col 1, ll. 17-23). Welsh discloses the object of maintaining proper levels of dissolved oxygen in the water in the testing apparatus. (Id. at col 2, ll. 19-21). Welsh also discloses that it was known in the prior art to utilize a bubbling apparatus to maintain the dissolved oxygen in water because cathodic delamination will not proceed if 2 Appellant has not presented separate arguments addressing all of the rejected claims. Consequently, we limit our discussion to claim 1. Appeal 2011-005737 Application 11/828,412 4 there is no dissolved oxygen in the water. (Id. at col 1, ll. 57- 67). In order to quickly replenish the dissolved oxygen in the water used up by the cathodic delamination reaction, Welch maintains a pure oxygen atmosphere above the synthetic ocean water. (Id. at col 1, ll. 50- 55). The Examiner cited Stratmann for describing delamination measurement techniques and Nyman as additional evidence describing the addition of gas under the surface of water through the use of an aerator. (Ans. 4-5). Appellant argues that one of ordinary skill in the art would not combine the Nyman test with the teachings of Welch since Nyman teaches a metal corrosion test for metal film coating. (App. Br. 7). Appellant further argues that the suggested application of Stratmann in Appellant’s invention would render the technique taught by Stratmann inoperable since Stratmann teaches the use of a Kelvin probe which operates on capacitance. (Id. at 9). Appellant’s arguments in rebuttal to the stated rejection are not persuasive and fail to consider the prior art as a whole. As set forth above, Welch is concerned with a method and test apparatus for carrying out testing for cathodic delamination of polymer bonded to metal samples. Welch seeks to quickly replenish the dissolved oxygen in the water used up by the cathodic delamination and discloses that it was recognized by persons of ordinary skill in the art to use a bubbling technique for this purpose. The Examiner merely relies on Nyman to establish it was known in the art to bubble gas, such as oxygen, through water using an aerator. (Nyman, col. 4, ll. 38-42). Appellant has not directed us to any evidence to the contrary. Appellant’s argument regarding Stratmann does not address the reasons the Examiner cited this reference. A person of ordinary skill in the art would have reasonably expected that the periodic analysis of the sample Appeal 2011-005737 Application 11/828,412 5 being tested must be performed in order to determine its durability at specific intervals as required by various ASTM testing standards. For the foregoing reasons and those presented by the Examiner, we affirm the stated rejection. The non-statutory obviousness-type double patenting rejection The dispositive issue on appeal for the rejection on the ground of non- statutory obvious-type double patenting is: Did the Examiner err in determining that Appellant’s claims 1-6, 8, and 9 are not patentably distinct from Welch in view of Stratmann and Nyman? The key question in any obviousness double patenting analysis is: “Does any claim in the application define merely an obvious variation of an invention claimed in the patent?” Gen. Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1278 (Fed. Cir. 1992). In addressing this question, our reviewing court has stated that the disclosure of the patent may not be used as prior art. In re Vogel, 422 F.2d 438, 441 (CCPA 1970). However, the court stated that when the disclosure “sets forth at least one tangible embodiment within the claim, [ ] it is less difficult and more meaningful to judge whether [something] has been modified in an obvious manner.” Id. at 442. But, the court also cautioned that only portions of the specification that support the patent claims may be considered and not broad assertions in the specification because relying on the latter would be using the patent as prior art. Id. Appellant correctly argues that the claimed invention is patentably distinct from the claims of Welch which are directed to an apparatus, not a Appeal 2011-005737 Application 11/828,412 6 method which includes the step of measuring delamination. (App. Br. 14- 15). The Examiner has failed to identify any specific claims of Welch which are directed to the claimed method. In fact, the Examiner refers to Welch’s disclosure to describe the method of the claimed invention. (Ans. 12). The Examiner has not identified an ambiguity in the claims of Welch that would have necessitated referencing the Specification for clarification. Therefore, the Examiner has not established that the claims of the cited patent are merely an obvious variation of the claims in the present application. Accordingly, the Examiner’s rejection is reversed. ORDER The rejection of claims 1-6, 8, and 9 under 35 U.S.C. § 103(a) is affirmed. The rejection of claims 1-6, 8, and 9 based on the ground of non- statutory obvious-type double patenting is reversed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED bar