James W. Neal et al.

Patent Trials and Appeals Board

Dec 11, 2019

14920081 - (D) (P.T.A.B. Dec. 11, 2019)

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.
14/920,081 10/22/2015 James W. Neal 78243US02(14-290-2) 9373
52237 7590 12/11/2019
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
MOORE, KARLA A
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
12/11/2019 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES W. NEAL, BRIAN T. HAZEL, DAVID A. LITTON, and
ERIC JORZIK

Appeal 2019-000171
Application 14/920,081
Technology Center 1700
____________

Before JEFFREY T. SMITH, BRIAN D. RANGE, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the –
Examiner’s decision to reject claims 8–10, 12, 13, 15, 16, and 18–31. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
REJECTIONS

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as United
Technologies Corporation. Appeal Br. 2.
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The following rejections are presented for appeal:
I. Claims 8–10 and 21–27 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Bruce et al. US 2004/0211363 A1,
published Oct. 28, 2004 and Hass et al. US 2004/0134430 A1, published
July 15, 2004.
II. Claim 28 is rejected under 35 U.S.C. § 103 as unpatentable over
Bruce.
III. Claims 29 and 30 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Bruce and Han et al. US
2008/0223725 A1, published Sept. 18, 2008.
IV. Claim 31 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Bruce and Hass.

Appellant’s invention relates to a system for depositing coating on a
workpiece. The system utilizes Electron Beam Physical Vapor Deposition
(EBPVD) wherein the electron beam causes atoms from the target to
transform into the gaseous phase and subsequently condense into solid form
resulting in a coating of material on the workpiece in the vacuum chamber.
(Spec. ¶ 3.) Claims 8 and 28 are illustrative of the subject matter on appeal
and are reproduced from Appellant’s Brief below:

8. A system for depositing coating on a workpiece
comprising:
a deposition chamber;
an electron beam gun positioned within the deposition
chamber so as to point toward an ingot, a gas temperature
within said deposition chamber maintained by the electron
beam gun at greater than 1300 degrees F (704 C); and
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a manifold to inject process gases toward an upper wall
of the deposition chamber to form a vortex within the
deposition chamber around a vapor plume from the ingot.

28. A system for depositing coating on a workpiece
comprising:
a deposition chamber, at least one wall of the deposition
chamber having a thermal barrier coating; and
an electron beam gun positioned along a junction of an
upper wall and a side wall of the deposition chamber so as to
diagonally point toward an ingot, a gas temperature within said
deposition chamber maintained by the electron beam gun at
greater than 1300 degrees F (704 C).

OPINION
We limit our discussion to the independent claims 8, 24, and 28 and
dependent claim 31. We first must determine to which one of the statutory
classes of invention are the claims directed? The independent claims are
“system” claims, but in order to be patentable the subject matter of a claim
must fit into one and only one of the statutory claims of invention enunciated
in 35 U.S.C. § 101, i.e., a process, machine, manufacture, or composition of
matter. Claims cannot be directed to combinations of those classes of
invention. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005) (claims to a combination of statutory claims of
invention are not permitted and are indefinite).
We interpret the system claims as directed to an apparatus, i.e. a
structure which can be termed a machine or manufacture under 35 U.S.C.
§ 101 because the recited “system” comprises physical components such as a
“chamber” and “gun.” Claims directed to an apparatus must be
distinguished from the prior art in terms of structure. See In re Danly, 263
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F.2d 844, 848 (CCPA 1959) (“Claims drawn to an apparatus must
distinguish from the prior art in terms of structure rather than function”); In
re Gardiner, 171 F.2d 313, 315–16 (CCPA 1948) (“It is trite to state that the
patentability of apparatus claims must be shown in the structure claimed and
not merely upon a use, function, or result thereof.”). Choosing to define an
element functionally, i.e., by what it does, carries with it a risk: Where there
is reason to conclude that the structure of the prior art is inherently capable
of performing the claimed function, the burden shifts to the applicant to
show that the claimed function patentably distinguishes the claimed structure
from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). Moreover, the
recitation of a material intended to be worked upon by a claimed apparatus
does not differentiate the claimed apparatus structure from the structure of a
prior art apparatus. In re Rishoi, 197 F.2d 342, 345 (CCPA 1952).

Specification figure 1 depicts an exemplary system for depositing a
coating on a workpiece. Specification figure 1 is reproduced below:

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Specification Figure 1 depicts a deposition chamber 26 configured for
electron beam physical vapor deposition comprising an electron beam gun
60, that directs its beam to deposition material 72, and a gas shower 108
directives from compartment 62 for the electron beam gun 60. (Spec. ¶¶ 28–
34.) The Specification discloses there is a condensation problem when
performing the electron beam physical vapor deposition (EB-PVD) process
under low vacuum operation (LVO) conditions. (Spec. ¶¶ 35.) The
Specification discloses to counteract the condensation problem, a vortex is
formed within the deposition chamber around the vapor plume, V, to
separate particles smaller than about 2.5 nm. (Spec. ¶¶ 38.)

The Examiner finds Bruce discloses a system for depositing a coating
on a workpiece comprising: a deposition chamber (12), an electron beam
gun (30) positioned within the chamber so as to point toward an ingot (26),
and a manifold (54) to inject a flow of process gasses toward an upper wall
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of the deposition chamber around a vapor plume from the ingot; and a
refractory plate (80) in an area of the flow of the process gases in the
deposition chamber.
Bruce Figure 6 is reproduced below:

Bruce Figure 6 depicts the coating chamber 12, comprising the hood
52, the location of the electron beam gun 30, the control valves 58, and the
electron beams 28 on the ingots 26.
The Examiner finds Bruce teaches that the electron gun contributes to
the temperature during processing and that operable temperatures within the
chamber depend in part on the composition of the workpiece to be coated
and the deposition material. (Final Act. 3–4; Bruce ¶¶ 6, 8.) The Examiner
finds Bruce fails to specifically disclose a gas temperature within the
deposition chamber is maintained by the electron beam gun at greater than
1300 °F (704 °C) as required by independent claim 28. (Final Act. 4.)
However, the Examiner finds Bruce teaches the EB-PVD apparatus
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“includes a coating chamber that is operable at an elevated temperature (e.g.,
at least 800 °C.)” (Final Act. 8; Bruce ¶ 8.) The Examiner further finds the
deposition materials of Bruce and the present invention are similar. (Final
Act. 8; Bruce ¶ 4; Spec. ¶ 31.)
The Examiner finds Bruce fails to disclose the process gases flow
forms a vortex within the deposition chamber around a vapor plume of the
ingot. (Final Act. 5.) The Examiner finds Hass teaches an electron beam
gun disposition apparatus comprising a manifold that injects process gas into
a deposition chamber. The Examiner finds Hass teaches the process gas
flow can be varied to optimize the deposition process. (Final Act 5 citing
Hass ¶¶ 10, 11, 39, 46, 60, 69, and 74–77.) The Examiner acknowledges
Hass does not teach the process gas forms a vortex within the deposition
chamber around a vapor plume from the ingot as required by independent
claims 8 and 24. (Final Act 5.) The Examiner determines that the formation
of a vortex within the deposition chamber of Bruce would have been
obvious to a person of ordinary skill in the art by optimization of the process
gas flow based on the teachings of Hass. (Final Act 5.)
Issue I
The first issue on appeal is:
Did the Examiner err in determining that the combination of Bruce
and Hass suggests a deposition chamber comprising a manifold capable of
injecting process gases so as to form a vortex within the deposition chamber
around a vapor or plume from the ingot as required by independent claims 8,
24 and dependent claim 31?
We answer this question in the affirmative.
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Appellant argues the Examiner acknowledges that both Bruce and
Hass failed to disclose the process gas flow forms a vortex within the
deposition chamber. (App. Br. 9–10.) Appellant argues the Hass process
does not describe the formation of a vortex and would not result in a process
that through optimization would result in the formation of a vortex. (Appeal
Br. 10.)
We agree with Appellant that the Examiner has not adequately
explained how the disclosures of Bruce and Hass are sufficient to establish
the formation of a deposition chamber comprising a manifold capable of
injecting process gases so as to form a vortex within the deposition chamber
around a vapor or plume from the ingot as required by independent claims 8,
24 and dependent claim 31.
The Examiner’s position is a person of ordinary skill in the art would
have envisaged from the teachings of Bruce and Hass the formation of the
gas flow pattern as a vortex. The Examiner specifically states:
Admittedly, Hass et al. do not teach that the surrounding
process gas flow is a “vortex”, but in as much as a vortex is
merely one of many flow patterns that might be envisaged by
one of ordinary skill in the art exercising ordinary creativity,
common sense and logic and in possession of the disclosure of
Bruce et al., which teaches that the process gas flow can be
optimized in order to, inter alia, improve material utilization
efficiency, increase deposition rate and optimize carrier gas
flow costs, it is considered to be an obvious selection via
routine experimentation for one of ordinary skill in the art. The
courts have ruled that where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation. In re
Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).

(Final Act. 5.)
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The disclosure of Bruce regarding gas flow rates does not support the
Examiner’s position. Addressing the gas flow rate Bruce states:
The flow rates of oxygen and argon are individually
controlled based on the targeted process pressure and the
targeted partial pressure of oxygen. To reduce the occurrence of
pressure oscillations within the coating chamber 12, the control
loop response time for these gases was reduced by physically
placing the control valves 58 for the gases immediately adjacent
to the inlet 54 just outside the coating chamber 12, as shown in
FIGS. 1 and 6. Placement of the control valves 58 so close to
the coating chamber 12 provided a surprisingly significant
improvement in pressure control, reducing pressure fluctuations
within the coating chamber 12 and reducing disturbances in the
focus and position of the electron beams 28 on the ingots 26.

(Bruce ¶ 32.)
The cited portions of Bruce do not indicate that the flow pattern of the
gas was a concern contemplated. Bruce was interested in improving
pressure control, reducing pressure fluctuations within the coating chamber
12, and reducing disturbances in the focus and position of the electron beams
28 on the ingots 26.
The disclosure of Hass regarding gas flow rates does not support the
Examiner’s position. Addressing the flow rate of gas Hass states:
[T]he focus of the vapor stream can be tailored to the size of the
part or area on a part to be coated by altering the gas flow rate.
The vapor stream can be altered in a variety of ways including
altering the carrier gas flow rate, the ratio of the upstream to
downstream pressures and the size of the nozzle opening.
Focusing the vapor stream results in a higher deposition
efficiency onto small parts than compared to the conventional
design.

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(Hass ¶ 46.)
The cited portions of Hass do not indicate that formation of a vortex
was contemplated. Hass was interested in improving the focus of the vapor
stream that could be achieved by altering the gas flow rate.
It is well established that optimization of a prior art range flows from
the normal desire of scientists or artisans to improve upon what is already
generally known. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1366–68 (Fed.
Cir. 2007). But it is equally well established that when the parameter
optimized was not recognized to be a result-effective variable, optimization
would not have been obvious. In re Antonie, 559 F.2d 618, 620 (CCPA
1977). The present record does not show that the prior art recognized the
need for the formation of a deposition chamber comprising a manifold
capable of injecting process gases so as to form a vortex within the
deposition chamber around a vapor or plume.
For the foregoing reasons we do not sustain the Examiner’s rejection
of claims 8–10, 21–27, and 31 under 35 U.S.C. § 103 as unpatentable over
the combination of Bruce and Hass.
Issue II
The second issue on appeal is:
Did the Examiner err in determining that Bruce suggests a deposition
chamber comprising an electron beam gun that maintains the gas
temperature within the deposition chamber at greater than 1300 °F (704 °C)
as required by independent claim 28?2

2 Appellant argues independent claim 28 and dependent claims 29 and 30
together. Appellant does not provide separate arguments addressing the Han
reference relied upon in the rejection of claims 29 and 30. (Appeal Br. 12.)
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We answer this question in the negative.
Appellant argues the process of maintaining the temperature by the
electron beam gun of Bruce is different from the claimed invention. (Appeal
Br. 12.)
As we discussed above, we interpret the present system claims as
directed to an apparatus, i.e. a structure which can be termed a machine or
manufacture under 35 U.S.C. § 101. Claims directed to an apparatus must
be distinguished from the prior art in terms of structure. See Danly supra.
As set forth above the Examiner finds Bruce teaches that the electron
gun contributes to the temperature during processing and that operable
temperatures within the chamber depend in part on the composition of the
workpiece to be coated and the deposition material. (Final Act. 3–4; Bruce
¶¶ 6, 8.) The Examiner finds Bruce fails to specifically disclose a gas
temperature within said deposition chamber maintained by the electron beam
gun at greater than 1300 °F (704 °C) as required by independent claim 28.
(Final Act. 4.) However, the Examiner finds Bruce teaches the EB-PVD
apparatus “includes a coating chamber that is operable at an elevated
temperature (e.g., at least 800 °C.)” (Final Act. 8; Bruce ¶ 8.) The Examiner
further finds the deposition materials of Bruce and the present invention are
similar. (Final Act. 8; Bruce ¶ 4; Spec. ¶ 31.)
We determine that Appellant has not established that the apparatus of
Bruce is a patently distinct system due to the suitability of the EB-PVD
apparatus to operate at elevated temperatures above 800 °C and the
similarity of deposition materials utilized within the system of Bruce.
Appellant has not directed us to evidence or adequately explained why the
structure of Bruce is incapable of operating at temperatures above 704 °C as
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required by the claimed invention. We note that Appellant has not argued
the claimed positioning of the electron beam gun is patently distinct from the
location of the electron beam gun of Bruce.
For the foregoing reasons we sustain the Examiner’s rejections of
claims 28–30 under 35 U.S.C. § 103.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
8–10, 21–27,
31
103 Bruce, Hass 8–10, 21–
27, 31
28 103 Bruce 28
29, 30 103 Bruce, Han 29, 30
Overall
Outcome
28–30 8–10, 21–
27, 31

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART