Gindrat, Malko et al.

Patent Trials and Appeals Board

Mar 25, 2020

13147724 - (D) (P.T.A.B. Mar. 25, 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.
13/147,724 11/23/2011 Malko Gindrat P7812US 5614
78631 7590 03/25/2020
ROBERT S. GREEN
OERLIKON METCO (US) INC.
1101 PROSPECT AVENUE
WESTBURY, NY 11590
EXAMINER
CROWELL, ANNA M
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
ROBERT.GREEN@OERLIKON.COM
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MALKO GINDRAT,
PHILIPPE GUITTIENNE, and CHRISTOPH HOLLENSTEIN
____________

Appeal 2019-003872
Application 13/147,724
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4, 6, 12, 13, 17–29, 31, 32, and 34 of
Application 13/147,724. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 In our Decision, we refer to the Specification (“Spec.”) of Application
13/147,724 (“the ’724 Application”) filed Aug. 3, 2011; the Non-Final
Office Action dated June 4, 2018 (“Non-Final Act.”); the Appeal Brief filed
Nov. 5, 2018 (“Appeal Br.”); the Examiner’s Answer dated Feb. 19, 2019
(“Ans.”); and the Reply Brief filed Apr. 19, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Oerlikon Metco AG, Wohlen as the real
party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The ’724 Application describes a plasma coating plant for coating or
treating a substrate’s surface. Spec 1:4–8. During plasma coating, a process
gas is heated to generate a plasma jet and a pre-coating material required for
coating the substrate is introduced. Id. at 1:18–20. Depending on the
process, thermal spraying by plasma coating may take place in an evacuated
work chamber. Id. at 1:11–15. The Specification indicates, however, that a
plasma jet moving toward the substrate through an evacuated work chamber
causes a suction effect in the region of the plasma jet’s nozzle. Id. at 2:2–4.
According to the ’724 Application, this suction effect undesirably directs
pre-coating particles at the plasma jet’s boundary back towards the plasma
jet’s nozzle. Id. at 2:5–9. The Specification describes that these redirected
particles are thereby prevented from becoming sufficiently molten or
plastified for coating. Id. at 2:9–10. The ’724 Application describes a
mechanical limiting apparatus, which is said to reduce the undesired
intrusion of particles into the plasma jet and concomitant faults in the
generated coating. Id. at 2:19–22; 3:7–10.
Claim 1, representative of the ’724 Application’s claims, is
reproduced below from the Claims Appendix of the Appeal Brief.
1. A plasma coating plant for coating or treating the surface
of a substrate, said plant comprising:
an evacuatable work chamber into which the substrate
can be placed;
a plasma torch for generating a plasma jet by heating a
process gas;
said plasma jet containing coating material for depositing
on a substrate;
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Application 13/147,724
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the plasma torch having a nozzle exit end and through
which the plasma jet can exit the plasma torch and can extend
along a longitudinal axis (A) into the work chamber;
a mechanical limiting apparatus is arranged inside the
work chamber and directly downstream of the nozzle in the
work chamber;
said mechanical limiting apparatus having a diameter of
at least 5 cm and extending along the longitudinal axis (A) and
protecting the plasma jet against an unwanted lateral intrusion
of particles disposed in a space surrounding the mechanical
limiting apparatus;
an injection apparatus arranged to inject a reactive fluid
into the plasma jet, said injection apparatus being installable
inside the limiting apparatus at a location that is spaced from
the exit end of the nozzle, and
a substrate holder for holding the substrate,
wherein the limiting apparatus extends over at least 80%
of a distance between the nozzle and the substrate holder and is
configured to essentially prevent contamination of the plasma
jet by the unwanted lateral intrusion of particles.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Raney et al. (“Raney”) US 5,951,771 Sept. 14, 1999
Lynum et al.
(“Lynum”) US 5,989,512 Nov. 23, 1999
Tsuji et al. (“Tsuji”) US 8,399,794 B2 Mar. 19, 2013
Utsunomiya et al.
(“Utsunomiya”) US 2006/0223328 A1 Oct. 5, 2006
Sakakibara et al.
(“Sakakibara”) JP 10162993 June 19, 1998
Calcote EP 0394735 A2 Oct. 31, 1990

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REJECTIONS
On appeal, the Examiner maintains the following rejections of the
claims under 35 U.S.C. § 103(a):3
1. Claims 1–4, 6, 12, 13, 17, 18, 22, 24–27, 31, 32, and 34 are
unpatentable over the combination of Raney, Lynum, and
Utsunomiya. Non-Final Act. 3–11.
2. Claims 19 and 20 are unpatentable over the combination of
Raney, Lynum, Utsunomiya, and Tsuji. Non-Final Act. 11–12.
3. Claims 21 and 23 are unpatentable over the combination of
Raney, Lynum, Utsunomiya, and Sakakibara. Non-Final Act.
12–13.
4. Claims 28 and 29 are unpatentable over the combination of
Raney, Lynum, Utsunomiya, and Calcote. Non-Final Act. 13–
17.
DISCUSSION
Rejection 1: Obviousness of claims 1–4, 6, 12, 13, 17, 18, 22, 24–27,
31, 32, and 34 over Raney, Lynum, and Utsunomiya
Because we consider the evidence insufficient to establish a prima
facie case of obviousness with regard to recitations found in each of
independent claims 1 and 22, we need only address claim 1. The Examiner
finds that Raney’s “mechanical limiting apparatus 128 extend[s] along the
longitudinal axis (A) and protect[s] the plasma jet against an unwanted

3 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
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lateral intrusion of particles,” as required by claim 1. Non-Final Act. 3
(citing Raney Fig. 4).
Raney’s Figure 4 is reproduced below:

Raney’s Figure 4 is a broken sectional view showing a plasma jet
system. Raney 3:66–67. The elements shown in Figure 4 include plasma jet
system 100, anode 118, nozzle 128, and substrate 199. Id. 4:23–42.
Appellant argues that Raney “shows a nozzle 128 without any
mechanical limiting apparatus disposed or arranged between the nozzle 128
and the substrate 199.” Appeal Br. 9 (citing Raney Fig. 9).
In response, the Examiner argues “that even though Raney uses a
different terminology for the structural components, the functions are the
same.” Ans. 4. The Examiner finds that Raney’s “component 128 is a
structure located downstream of the nozzle 118 (i.e. plasma jet exit) and . . .
has the function of protecting and surrounding the plasma jet as it flows
through the extended component 128.” Id.
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Appellant argues that Raney’s component 128 has a different function
than protecting and surrounding a plasma jet. Reply Br. 2. As explained by
Appellant, in Raney, component 128 creates a low pressure region therein to
“draw cooler gas upwards from a bottom region to create a shear region
around the hot jet.” Id. at 2–3 (citing Raney 6:28–38). Raney explicitly
discloses that
[t]he hot gas leaving the throat 121 of the gas injection disc 120
and entering into the larger volume of the nozzle 128 creates a
low pressure region at the top of the nozzle (the Venturi effect).
The low pressure region normally draws cooler gas in from the
bottom of the nozzle.
Raney 6:29–34.
Appellant persuasively points out that if Raney’s “element 128
functions as described . . . , particles would potentially be sucked into the
bottom region of element 128 when cooler gas is drawn upwards from the
bottom region to the upper low pressure region.” Reply Br. 3. As Appellant
argues, this would have defeated the purpose of the mechanical limiting
apparatus to prevent contamination of the plasma jet by unwanted lateral
intrusion of particles. Id. The “articulated reasoning with some rational
underpinning” required to support the legal conclusion of obviousness is
lacking here. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner finds, inter alia, that Raney does not explicitly teach
that the limiting apparatus, i.e., nozzle 128, extends over at least 80 % of the
distance between the nozzle and the substrate holder. Non-Final Act. 5.
The Examiner finds that Utsunomiya teaches “a limiting apparatus
that extends over at least 80 % of the distance between the nozzle and the
substrate holder in order to achieve the desired pressure condition to
facilitate substrate processing.” Id. (citing Utsunomiya ¶ 58; Fig. 3).
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Utsunomiya’s Figure 3 is reproduced below:

Utsunomiya’s Figure 3 illustrates a gas burner. See Utsunomiya ¶ 58.
The elements shown in Figure 3 include gas burner 22, air duct 22a, shield
22b, combustion chamber 22c, nozzle 22d, mixed gas outlet 22e, and
substrate 100. Id.
According to the Examiner, it would have been obvious to one of
ordinary skill in the art at the time of the invention to extend Raney’s
mechanical limiting apparatus 128 at least 80 % of the distance between the
nozzle and the substrate holder, as taught by Utsunomiya, in order to achieve
the desired pressure condition to facilitate substrate processing. Non-Final
Act. 5.
The Examiner’s findings concerning Utsunomiya’s varying pressure
conditions do not take into account Raney’s concerns for pressure enabled
drawing of cooler gas upwards from the bottom nozzle. See also Reply Br.
8. Without an adequate explanation that accounts for each cited reference’s
pressure use, the Examiner reversibly erred in determining that the
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combination of Raney and Utsunomiya would have rendered obvious the
claimed distance of the mechanical limiting apparatus.
Moreover, we find that the Examiner’s reliance on Utsunomiya’s
illustration is misplaced as there is no indication that Figure 3 is drawn to
scale. See Krippelz v. Ford Motor Co., 667 F.3d 1261, 1268 (Fed. Cir.
2012) (“Th[e] [Federal Circuit] has repeatedly cautioned against
overreliance on drawings that are neither expressly to scale nor linked to
quantitative values in the specification.”).
One of ordinary skill in the art at the time of the invention would not
have been motivated to combine the teachings of Raney and Utsunomiya
because: (i) Raney’s component 128 would not have prevented plasma jet
contamination by unwanted lateral intrusion of particles, and
(ii) Utsunomiya’s Figure 3, depicting a gas burner’s shield for achieving a
desired pressure condition, is not expressly drawn to scale. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.”). In the absence of such an explanation, the rejection must be
reversed. Kahn, 441 F.3d at 988; In re Rouffet, 149 F.3d 1350, 1358 (Fed.
Cir. 1998) (“hindsight” is inferred when the specific understanding or
principal within the knowledge of one of ordinary skill in the art leading to
the modification of the prior art in order to arrive at appellant’s claimed
invention has not been explained).
The additional Lynum reference relied on by the Examiner in
rejecting claim 1 does not cure the deficiencies in the combination of Raney
and Utsunomiya discussed above. We are persuaded that the Examiner’s
cited references fail to establish a prima facie case of obviousness of claim
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1. We do not sustain the Examiner’s rejection of claim 1. For the same
reasons, we do not sustain the Examiner’s rejection of obviousness of claims
2–4, 6, 12, 13, 17, 18, 22, 24–27, 31, 32, and 34.
Rejection 2: Obviousness of claims 19 and 20 over Raney, Lynum,
Utsunomiya, and Tsuji
The additional Tsuji reference relied on by the Examiner in rejecting
claims 19 and 20, dependent on claim 1, does not cure the deficiencies in the
combination of Raney, Lynum, and Utsunomiya discussed above.
Therefore, we do not sustain the rejection of claims 19 and 20 under 35
U.S.C. § 103(a) over the cited references.
Rejection 3: Obviousness of claims 21 and 23 over Raney, Lynum,
Utsunomiya, and Sakakibara
The additional Sakakibara reference relied on by the Examiner in
rejecting claims 21 and 23, dependent on claims 1 and 22, respectively, does
not cure the deficiencies in the combination of Raney, Lynum, and
Utsunomiya discussed above. Therefore, we do not sustain the rejection of
claims 21 and 23 under 35 U.S.C. § 103(a) over the cited references.
Rejection 4: Obviousness of claims 28 and 29 over Raney, Lynum,
Utsunomiya, and Calcote
Appellant contends that independent claim 28, and claim 29
(depending from claim 1), are patentable for the same reasons as claim 1.
Appeal Br. 28.
The additional Calcote reference relied on by the Examiner in
rejecting claims 28 and 29 does not cure the deficiencies in the combination
of Raney, Lynum, and Utsunomiya discussed above. Therefore, we do not
sustain the rejection of claims 28 and 29 under 35 U.S.C. § 103(a) over the
cited references.
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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 12,
13, 17, 18,
22, 24–27,
31, 32, 34
103(a) Raney, Lynum, Utsunomiya
1–4, 6, 12, 13,
17, 18, 22,
24–27, 31, 32,
34
19, 20 103(a) Raney, Lynum, Utsunomiya, Tsuji 19, 20
21, 23 103(a)
Raney, Lynum,
Utsunomiya,
Sakakibara
21, 23
28, 29 103(a)
Raney, Lynum,
Utsunomiya,
Calcote
28, 29
Overall
Outcome
1–4, 6, 12, 13,
17–29, 31, 32,
34
REVERSED