Qingjun ZHENG et al.

Patent Trials and Appeals Board

Oct 13, 2020

2019005658 (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.
14/330,547 07/14/2014 Qingjun ZHENG K-04020-US-CNT 4691
27877 7590 10/13/2020
KENNAMETAL INC.
Intellectual Property Department
P.O. BOX 231
1600 TECHNOLOGY WAY
LATROBE, PA 15650
EXAMINER
RUMMEL, JULIA L
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
10/13/2020 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):
k-corp.patents@kennametal.com
larry.meenan@kennametal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte QINGJUN ZHENG, PIYAMANEE KOMOLWIT, YIXIONG LIU,
JIM FAUST, JONATHAN BITLER, and SRINIVASAO BODDAPATI
____________

Appeal 2019-005658
Application 14/330,547
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
BRIAN D. RANGE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision finally rejecting claims 1–13, 21–25, and 30–32.
We have jurisdiction over the appeal 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(a). “Kennametal Inc.” is identified as the real party in interest (Appeal
Br. 3).
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal:
1. A composite article comprising:
a substrate; and
a coating adhered to the substrate, the coating comprising
an inner layer and an outer layer, the inner layer being fully
dense and comprising sintered powder metal or powder alloy,
and the outer layer comprising hard particles disposed in matrix
metal or matrix alloy, wherein the matrix metal or matrix alloy
does not infiltrate the inner layer.
(Appeal Br. 13 (Claims App.)).

The following rejections under 35 U.S.C. § 103(a) are on appeal:
a- Claims 1–4, 6, 7, 10–13, 21–25 as unpatentable over the combined
prior art of McKracken (US 2008/0286598 A1, published
November, 20, 2008) and Nicholls (US 5,593,726 issued January
14, 1997);
b- Claims 1, 3, 7, 12, 13, 21–25 as unpatentable over Nicholls;
c- Claims 2, 4, 10, 11 as unpatentable over Nicholls and McKracken;
d- Claim 30 as unpatentable over the combined prior art of
McKracken, Nicholls, and Deveaux (US 2012/0037280 A1,
published February 16, 2012), and over Nicholls and Deveaux;
e- Claim 5 as unpatentable over the combined prior art of
McKracken, Nicholls, and Sagues (“Slurry Abrasion/Erosion
Behavior of Metal-Ceramic Coatings,” Mechanical Properties,
Performance, and Failure Modes of Coatings, 1984, Cambridge
University Press: Ed. Shives et al.; p. 165-166);
f- Claim 6 as unpatentable over the combined prior art of
McKracken, Nicholls, and Majagi (US 2004/0234820 A1,
published November, 25, 2004), and over Nichols and Majagi,;
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g- Claim 8 as unpatentable over the combined prior art of
McKracken, Nicholls, and Baldoni (US 5,310,605 issued May 10,
1994), and over Nicholls and Baldoni;
h- Claim 9 as unpatentable over the combined prior art of
McKracken, Nicholls, and Solanki (US 5,352,526 issued October
4, 1994), and over Nicholls, McKracken, and Solanki;
i- Claim 31 as unpatentable over the combined prior art of Sato (JP
05-239696 A) and Alexander (US 4,818,628 issued April 4, 1989);
and
j- Claim 32 as unpatentable over the combined prior art of Sato,
Alexander, and Tsujimoto (JP 2008-144253 A).

Claims 1–13 and 21–25 are also rejected on the ground of
nonstatutory double patenting over claims of US Patent 8,808,870 (Final
Act. 3). Appellant does not contest this rejection, stating that it “will submit
the appropriate terminal disclaimer” (Appeal Br. 5). Thus, this rejection is
summarily affirmed.

OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejection (See generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
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It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s arguments focus on independent claim 1, except for the
arguments with respect to dependent claims 31 and 32 as addressed below
(generally Appeal Br.).
Appellant’s arguments with respect to the rejection of claim 1 based
on McKracken and Nicholls are focused on their belief that McKracken is
limited to thermal spray coatings that “cannot produce the claimed inner
layer comprising sintered powdered metal” or alloy (Appeal Br. 5) and that
“it is not credible for the skilled artisan to replace [its] coating” with one
produced by the sintered powder method of Nicholls (Appeal Br. 6) since
such a method would not achieve the desired different orientations of the
layers of McKracken (Appeal Br. 7). Appellant’s arguments with respect to
the rejection of claim 1 based on Nicholls as the sole primary reference are
that Nicholls does not use a “multilayer format” (Appeal Br. 8) and that its
dry sintering process would not produce the same microstructure as
Appellant’s liquid phase sintering (Appeal Br. 8).
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the applied prior art as a whole and the inferences that one of
ordinary skill would have made.
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First, Appellant has not shown reversible error in the Examiner’s
determination that Nicholls alone renders claim 1 obvious (e.g., Ans. 10–
12). Contrary to Appellant’s argument that Nicholls does not describe a
multilayer coating, Nicholls specifically describes “that a plurality of layers
of different coating materials may be applied without difficulty” (Nicholls
col. 3, ll. 8–12; Ans. 25). Appellant’s argument that wet sintering is used to
make the composite article of claim 1 versus the dry sintering process of
Nicholls is also not persuasive (Appeal Br. 8). Claim 1 does not recite how
the composite article was made, nor does Appellant show that Nicholls’
process for applying multiple sintered powder metal layers as a hard, wear,
and corrosion resistant coating would not have resulted in the two layer
coating structure recited in claim 1 (Ans. 26).2 In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (limitations not appearing in the claim may not be relied
upon for patentability).
With respect to the rejection of claim 1 based on McKracken and
Nicholls, as the Examiner aptly points out, one of ordinary skill in the art
would have readily inferred from the overall teachings of the applied prior
art that Nicholls’ sintered powder method for applying coatings would have
been a predictable, known way to make the metal matrix layers of
McKracken’s coating for the numerous advantages taught therein (e.g., Ans.
4, 5, 22, 23). Under the flexible inquiry set forth by the Supreme Court, the

2 It has long been held that “[i]f the product in a product-by-process claim is
the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317
(Fed. Cir. 2006) (quoting In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)).
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PTO must take account of the “inferences and creative steps,” or even
routine steps, that an ordinary artisan would employ. Ball Aerosol &
Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir.
2009). One of ordinary skill would have readily inferred and appreciated
from the applied prior art as a whole that a known method of making
multiple metal sintered powder coating layers as exemplified in Nicholls to
manufacture the metal powder layers of McKracken would have been within
the skill and creativity of one of ordinary skill in the art.
Likewise, Appellant’s argument that McKracken teaches away from
the use of sintered powdered metal layers because it also teaches that a
thermal spray method with different orientations of layers is preferred
(Appeal Br. 6) is not persuasive for reasons set out by the Examiner
(Ans. 22, 23). Whether the prior art teaches away from the claimed
invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005). It is well established that a prior art reference must be considered in
its entirety, i.e., as a whole, when determining if it would have led one of
ordinary skill in the art away from the claimed invention. W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). One of
ordinary skill in the art would have readily appreciated that there are
numerous ways to manufacture a mutilayered coating such as exemplified in
McKracken. See In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments.); Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (Even a “statement
that a particular combination is not a preferred embodiment does not teach
away absent clear discouragement of that combination.”). One of ordinary
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skill would have expected the known, powder-sintered method exemplified
in Nicholls to be a useful alternative for making the multi-layered abrasion
resistant coating of McKracken so as to result in the claimed fully dense
inner layer of sintered powder metal and outer layer as recited in claim 1.
Appellant has not sufficiently explained why the claimed subject matter is
“more than the predictable use of prior art elements according to their
established functions.” KSR, 550 U.S. at 417;see also Ans. 24, 25.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 based on Nicholls alone or on Nicholls and McKracken, as well as
all claims dependent thereon, noting that Appellant relies upon the
arguments made for claim 1 for all the other claims, including those claims
rejected separately, except for claims 31 and 32 (See Appeal Br. 9, 10).
Appellant separately argues dependent clams 31 and 32 that require
that the inner layer “comprises copper-based alloy” (claim 31, Appeal Br.
Claims Appendix 15). The Examiner relies upon Sato and Alexander for
these claims.3 Contrary to Appellant’s argument that the Examiner has
misread Sato and that its copper alloy is the substrate (Appeal Br. 11), the
Examiner has pointed out that one of ordinary skill in the art would have
readily inferred that a copper alloy sintered layer is indeed formed on a
backing steel plate of Sato, and provided evidence in support of this position
(Ans. 28, 29). Appellant has not responded or otherwise disputed the
Examiner’s explanation. Accordingly, no error has been shown in the
rejection of claims 31 and 32.

3 We note that claim 1 is de facto included in this rejection as claim 31
depends therefrom, even though the Examiner did not explicitly list claim 1
in this rejection.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13, 21–25

Non-statutory
double patenting;
US 8,808,870
1–13, 21–25
1–4, 6, 7,
10–13, 21–25
103(a) McKracken,
Nicholls
1–4, 6, 7,
10–13, 21–25

5 103(a) McKracken,
Nicholls, Sagues
5
6 103(a) McKracken,
Nicholls, Majagi
6
8 103(a) McKracken,
Nicholls, Baldoni
8
9 103(a) McKracken,
Nicholls, Solanki
9
30 103(a) McKracken,
Nicholls, Deveaux
30
1, 3, 7, 12, 13,
21–25
103(a) Nicholls 1, 3, 7, 12,
13, 21–25

2, 4, 10, 11 103(a) Nicholls,
McKracken
2, 4, 10, 11
6 103(a) Nicholls, Majagi 6
8 103(a) Nicholls, Baldoni 8
9 103(a) Nicholls,
McKracken,
Solanki
9
30 103(a) Nicholls, Deveaux 30
31 103(a) Sato, Alexander 31
32 103(a) Sato, Alexander,
Tsujimoto
32
Overall
Outcome
1–13,
21–25, 30–32

Appeal 2019-005658
Application 14/330,547

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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)(1)(iv).

AFFIRMED