KORLOY INC.

Patent Trials and Appeals Board

Oct 13, 2020

14649551 - (D) (P.T.A.B. Oct. 13, 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.
14/649,551 06/04/2015 Seung-Su AHN IPM20181007US 1088
66390 7590 10/13/2020
LEX IP MEISTER, PLLC
5180 PARKSTONE DRIVE, SUITE 175
CHANTILLY, VA 20151
EXAMINER
IVEY, ELIZABETH D
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
10/13/2020 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 SEUNG-SU AHN, JE-HUN PARK, JAE-HOON KANG,
SUNG-GU LEE, and SUN-YONG AHN

Appeal 2019-006027
Application 14/649,551
Technology Center 1700
Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–5. See Final Act. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “KORLOY INC.”
Appeal Br. 3.
Appeal 2019-006027
Application 14/649,551

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CLAIMED SUBJECT MATTER
The claims relate “to a tool, in which a super lattice thin film having a
thickness of a few nanometers to tens of nanometers is stacked in the form
of A-B-C-D or A-B-C-B, having less quality variations and being capable of
realizing excellent wear resistance.” Spec. ¶ 1. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A multilayer thin film for a cutting tool, comprising:
a thin layer A;
a thin layer B;
a thin layer C; and
a thin layer D,
wherein the thin layers A, B, C, and Dare laminated into
a film and the laminated film is repeatedly stacked for more
than twice,
wherein elastic moduluses k between the thin layers A,
B, C, and D satisfies relationships of,
kA being greater than ks and ko being greater than kc, or
kc being greater than ks and ko being greater than kA,
wherein lattice parameters L between the thin layers A,
B, C, and D satisfies relationships of,
LA and Le being greater than Ls and Lo, or
Ls and Lo being greater than Le and LA,
wherein the difference between maximum and minimum
values of the lattice parameter is 20% of the maximum lattice
parameter value or less,
wherein the thin layers A, B, C, and D are made of Ti, Al
and N and each of the thin layer is formed from (Ti1-xAlx)N,
wherein a lattice parameter of (Ti1-xAlx)N decreases as
aluminum content increases and is obtained by a=4.24 Ǻ-
0.125x Ǻ, wherein x is a molar ratio of aluminum, or
the thin layer A is made of Cr and N or Cr, Al, Si and N,
the thin layer B, C and Dare made of Al, Cr and N,
wherein an average lattice parameter period ƛL of the
multilayer thin film is one half of an average elastic modulus
period ƛk thereof so that the elastic period and the lattice
parameter period are in discord with each other.
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Claims Appendix (Appeal Br. 13).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Webb US 2011/0020081 A1 Jan. 27, 2011
Chen CN 101200797 A Jun. 18, 2008

REJECTION
Claims 1 and 3–5 are rejected under pre–AIA 35 U.S.C. § 103(a) as
obvious over Chen in view of Webb. Final Act. 3.

OPINION
The Examiner finds that Chen teaches a multilayer thin film having
layers B, C, and D as recited in claim 1.2 Final Act. 4. Although “Chen does
not teach layer A as TiAlN,” the Examiner cites Webb which “teaches
TiAlN and TiN as interchangeable materials in a cutting tool chosen based
upon the desired performance properties.” Id. The Examiner accordingly
finds that, based on the combined prior art teachings, a skilled artisan would
have found it obvious “to use the stoichiometric ranges of layers B, C, and D
of Chen overlapping the ranges as indicated above and to replace the TiN of
Chen with TiAlN (Ti0.5Al0.5N) to provide better coating for heavy
interruption, cooler turning and good adherence to the substrate over the TiN

2 Appellant argues for the patentability of claims 1 and 3–5 as a group with
claim 1 being the representative claim. See Appeal Br. 6–11. These claims
stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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Application 14/649,551

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of Chen which would produce layers A, B, C, and D all made of Ti, Al and
N.” Id. Based on the structural identity, the Examiner finds that the prior art
structure would exhibit identical properties/characteristics including the
recited average lattice parameter period. Id. at 4–5.
Appellant does not dispute the Examiner’s finding of structural
identity but argues that the multilayer coating of Chen exhibits a different
average lattice parameter period than that recited. Appeal Br. 7. Appellant
also argues that Webb does not disclose any property such as the average
lattice parameter period. Id. at 8.
We are not persuaded first and foremost because Appellant’s
argument does not structurally distinguish the prior art. It is based on the
structural identity that the Examiner finds that the recited properties
including the average lattice parameter period are taught. The mere
recitation of a property or characteristic not disclosed by the prior art does
not necessarily confer patentability to a composition. In re Skoner, 517 F.2d
947, 950 (CCPA 1975). Where, as here, the Examiner provides a reasonable
basis for finding that the property or characteristic recited in the claims
would have been inherent to the product, the burden of proof shifts to
Appellant to show that this characteristic or property is not possessed by the
prior art. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Moreover, “the discovery of a previously unappreciated property of a
prior art composition, or of a scientific explanation for the prior art’s
functioning, does not render the old composition patentably new to the
discoverer.” Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed.
Cir. 1999). “The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from the prior
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art, can not impart patentability to claims to the known composition.” In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
We are not persuaded also because Appellant’s argument attacks the
references Chen and Webb individually, rather than considering what the
combined references would have suggested to the person of ordinary skill in
the art which forms the basis of the obviousness rejection. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant next argues that paragraph 37 cited by the Examiner does
not support the Examiner’s finding that TiAlN and TiN are known to be
interchangeable. Appeal Br. 9. According to Appellant, although paragraph
37 of Webb discusses the various advantages of both TiAlN and TiN, the
paragraph only shows that the two materials “have respective performance
properties and must be selected according to the use of the coatings.” Id.
Appellant therefore acknowledges that either TiAlN or TiN as a coating
material is well known in the art. The record therefore supports the
Examiner’s finding that it is within the ordinary skill to choose from these
known materials for a particular coating. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
We are not persuaded by Appellant’s argument that the proposed
modification would render Chen unsatisfactory for its intended purpose. As
the Examiner points out, “Chen’s stated purpose is to provide a nano-
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multilayer coating for cutting stainless steel having high mechanical
properties such as high-temperature oxidation resistance, toughness,
hardness, modulus of elasticity and breaking strength.” Final Act. 8.
Appellant does not dispute this finding. See Appeal Br. 9. Appellant’s
argument does not state what the intended purpose of Chen is and the record
does not support Appellant’s position that the intended purpose of Chen is to
exclude TiAlN as layer A in a multilayered coating. See id. In fact, Chen
states that “[t]he invention introduces TiAlN with high Al content and
perfect high temperature oxidation resistance into a multiple-layer coating
material system” which “improves the high temperature oxidation resistance
and the hardness of the coating, enhances the toughness of the coating
through the microstructure optimization design and enables the coating to
obtain both the high temperature oxidation resistance and excellent
mechanical properties.” Chen Abstract.
Appellant’s argument that the references do not teach or suggest the
recited average lattice parameter period as a result-effective variable is not
persuasive because it does not address the Examiner’s findings in support of
the rejection. See Appeal Br. 11. Contrary to Appellant’s assertion, the
Examiner finds that “Chen recognizes nanolayer composition as a result
effective variable that delivers mechanical properties as indicated above and
optimizable as such and since lattice parameters are directly related to the
composition (stoichiometry) they are therefore optimized as well to meet the
claim as a result of the optimization of stoichiometry.” Final Act. 8.
Appellant’s argument does not address the Examiner’s finding that a skilled
artisan would have known that different compositional makeup results in
different properties and such an argument is unpersuasive of reversible error.
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CONCLUSION
The Examiner’s rejection is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome:
1, 3–5 Chen, Webb 1, 3–5

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