Magotteaux International S.A.

Patent Trials and Appeals Board

Feb 16, 2022

2021005379 (P.T.A.B. Feb. 16, 2022)

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. 15/325,888 01/12/2017 Stephane Desiles POV325 4706 157691 7590 02/16/2022 KOLITCH ROMANO LLP 520 SW Yamhill Street, Suite 200 Portland, OR 97204 EXAMINER PATEL, RONAK C ART UNIT PAPER NUMBER 1788 NOTIFICATION DATE DELIVERY MODE 02/16/2022 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): USPTO@dockettrak.com docketing@kolitchromano.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHANE DESILES and HUBERT FRANÇOIS Appeal 2021-005379 Application 15/325,888 Technology Center 1700 BeforeTERRY J. OWENS, JEFFREY R. SNAY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 1 In this Decision, we refer to the Specification filed January 12, 2017 (“Spec.”); the Non-Final Office Action dated January 7, 2021 (“Non-Final Act.”); the Appeal Brief filed May 17, 2021 (“Appeal Br.”); the Examiner’s Answer dated July 12, 2021 (“Ans.”); and Reply Brief filed September 13, 2021. Appeal 2021-005379 Application 15/325,888 2 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 39-50, and 56.3 Because the claims on appeal have been twice rejected, we have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. CLAIMED SUBJECT MATTER The claims are directed to a metal-ceramic composite wear component. Spec. 1, ll. 5-11. Claim 39, reproduced below, is illustrative of the claimed subject matter: 39. A metal-ceramic composite wear component comprising: a ceramic structure formed of a three-dimensionally interconnected network of sintered ceramic grains in a metal matrix surrounding at least a part of the ceramic structure; said ceramic structure comprising sintered ceramic grains comprising 3-55 wt. % alumina, 40-95 wt. % zirconia, and one or more other inorganic components in a combined amount of 1-30 wt. %; said one or more other inorganic components comprising at least one component selected from the group consisting of rare earth metal oxides, alkaline earth metal oxides, silicates, carbides, nitrides, and borides; 2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as Magotteaux International S.A. and Sigdo Koppers S.A., which Magotteaux International S.A. is a subsidiary of. Appeal Br. iv. 3 Claims 51-55 are pending and withdrawn from consideration by the Examiner as directed to nonelected claims. Non-Final Office Action dated October 2, 2019, 2. Appeal 2021-005379 Application 15/325,888 3 wherein the rare earth metal oxide represents 1-10 wt. % when present; and wherein the sintered ceramic grains are rounded and free of sharp edges. Appeal Br. 12 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Fishler et al. US 5,151,201 Sept. 29, 1992 Dwivedi et al. US 5,667,742 Sept. 16, 1997 Aihara et al. US 6,258,440 B1 July 10, 2001 Francois US 2002/0136857 A1 Sept. 26, 2002 Hiramatsu et al. US 2003/0038129 A1 Feb. 27, 2003 Yamamura et al. US 2006/0057356 A1 March 16. 2006 Alexander et al.4 WO 2009/018024 A1 Feb. 5, 2009 Nonnet et al. US 2012/0082849 A1 April 5, 2012 REJECTIONS The Examiner maintains the following rejections on appeal (Ans. 3; Non-Final Act. 2-13): Rejection I: Claim 56 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement; Rejection II: Claims 39, 41, 42, 44, 45, 47, 48, 50, and 56 are rejected under 35 U.S.C. § 103 as unpatentable over Francois, Dwivedi or Yamamura, Alexander, and Aihara or Hiramatsu; 4 The Examiner and Appellant refer to this reference as Alexander based on the third named inventor, Ricky A. Alexander, rather than the first named inventor Boris Y. Farber. To avoid confusion, we do the same in this Decision. Appeal 2021-005379 Application 15/325,888 4 Rejection III: Claims 40, 41, 43, 45, and 46 are rejected under 35 U.S.C. § 103 as unpatentable over Francois, Dwivedi or Yamamura, Alexander, Aihara or Hiramatsu, and Nonnet; and Rejection IV: Claim 49 are rejected under 35 U.S.C. § 103 as unpatentable over Francois, Dwivedi or Yamamura, Alexander, Aihara or Hiramatsu, and Fishler. DISCUSSION Rejection I - Written Description Claim 56 is rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. Non-Final Act. 2-4. Appellant does not present arguments contesting the Examiner’s rejection of claim 56 under 35 U.S.C. § 112(a). See Appeal Br. generally. Consequently, we summarily sustain the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue -- or, more broadly, on a particular rejection -- the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”), and Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed. rev. 08.2017 Jan. 2018) (“If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner's answer.”). Appeal 2021-005379 Application 15/325,888 5 Rejections II-IV - Obviousness over Francois, Dwivedi or Yamamura, Alexander, and Aihara or Hiramatsu alone or further in view of Nonnet or Fishler Appellant’s arguments focus on independent claim 39 (Appeal Br. 1- 9), and we do the same to resolve the issues in this appeal. The dispositive issue on appeal is whether the Examiner articulates a sufficient reason with some rational underpinning that would support a conclusion that a person having ordinary skill in the art would have been prompted to modify Francois based on Aihara or Hiramatsu to arrive at the claimed invention-i.e., make Francois’s ceramic grains round and free of sharp edges. The Examiner finds that Francois teaches a composite wear component as in claim 39, but fails to teach the composite wear component includes a ceramic structure having ceramic grains formed of a three- dimensionally interconnected network and ceramic grains having rare earth metal oxide in 1-10 wt% where the ceramic grains are rounded and free of sharp edges. Non-Final Act. 5. The Examiner finds that Aihara teaches a ceramic part comprised of rounded ceramic grains. Non-Final Act. 6 (citing Aihara, code (57), 8:18-22 (claim 5)). Alternatively, the Examiner finds Hiramatsu teaches ceramic grains can be easily made round. Non-Final Act. 6 (citing Hiramatsu ¶ 72). Based on Aihara and Hiramatsu’s teachings, the Examiner determines that it would have been obvious to form Francois’s sintered ceramic grains in a round shape and free of sharp edges “motivated by the desire to have enhanced glossiness for end use applications and to remove microcracks.” Non-Final Act. 7. Appeal 2021-005379 Application 15/325,888 6 Appellant argues that the Examiner fails to provide an apparent reason for one of ordinary skill in the art to believe that enhancing glossiness and removing microcracks would be beneficial to Francois’s wear component, which is used in grinding, crushing, and conveying abrasive materials. Appeal Br. 6. Appellant’s argument identifies reversible error in the Examiner’s rejection. Aihara relates to a ceramic part used in semiconductor apparatuses. Aihara 5:4-9. Aihara teaches that when a ceramic part used inside a semiconductor apparatus is exposed to corrosive gases, such as those used in semiconductor processing, it causes microcracks on the surface of a ceramic part to spread and leads to particles peeling from the machined surface near the microcracks. Id. at 1:21-40, 3:17-34. To address this problem, Aihara anneals the ceramic part. Id. at 3:35-57; claim 5. When the part is annealed, the ceramic grains that form the surface of the part are rounded to remove the microcracks that cause the peeled particles. Id. Hiramatsu, like Aihara, relates to semiconductors. Hiramatsu ¶ 1. Specifically, Hiramatsu teaches a ceramic heating substrate for a semiconductor producing/examining device. Id. Hiramatsu teaches making the grains at the ceramic substrate surface round to enhance glossiness. Id. ¶ 47. Hiramatsu teaches that this glossiness helps to reduce nonuniformity in the heating of a semiconductor component. See Hiramatsu ¶¶ 30, 256. Unlike Aihara and Hiramatsu, Francois relates to wear components employed in plants for grinding, crushing and conveying various abrasive materials which are encountered in industries such as cement factories, mines, metallurgy, electricity generating stations or various quarries. On this Appeal 2021-005379 Application 15/325,888 7 record, the Examiner has not identified a sufficient reason why one of ordinary skill in the art would have wanted to remove microcracks on, or enhance glossiness of, the surface of Francois’s ceramic wear component. Thus, we do not sustain the § 103 rejections of claims 39-50. CONCLUSION The Examiner’s decision to reject claims 39-50 and 56 is affirmed in part. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 56 112(a) Written Description 56 39, 41, 42, 44, 45, 47, 48, 50, 56 103 Francois, Dwivedi Yamamura, Alexander, Aihara Hiramatsu 39, 41, 42, 44, 45, 47, 48, 50, 56 40, 41, 43, 45, 46 103 Francois, Dwivedi, Yamamura, Alexander, Aihara, Hiramatsu, Nonnet 40, 41, 43, 45, 46 49 103 Francois, Dwivedi, Yamamura, Alexander, Aihara, Hiramatsu, Fishler 49 Overall Outcome 56 39-50 Appeal 2021-005379 Application 15/325,888 8 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