RAYTHEON COMPANY

Patent Trials and Appeals Board

Feb 8, 2022

2021000126 (P.T.A.B. Feb. 8, 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. 15/605,163 05/25/2017 Ralph Korenstein R2034-701719(16-9036) 1036 84250 7590 02/08/2022 LANDO & ANASTASI, LLP Raytheon 60 STATE STREET, 23RD FLOOR BOSTON, MA 02109 EXAMINER VAN SELL, NATHAN L ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 02/08/2022 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): CKent@LALaw.com DOCKETING@LALaw.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RALPH KORENSTEIN and CHRISTOPHER S. NORDAHL ____________________ Appeal 2021-000126 Application 15/605,1631 Technology Center 1700 ____________________ Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and JULIA HEANEY, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE Appellant filed an appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1-4, 6-14, and 21.2 We have jurisdiction under 35 U.S.C. § 6(b).3 We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Raytheon Company as the real party in interest. Appeal Brief (“Appeal Br.”) filed May 12, 2020, 3. 2 Claims 15-20 have been withdrawn from consideration. Final Office Action (“Final Act.”) mailed November 15, 2019, 1. 3 Our Decision additionally refers to the Specification (“Spec.”) filed May 25, 2017 and the Examiner’s Answer (“Ans.”) dated July 24, 2020. Appeal 2021-000126 Application 15/605,163 2 CLAIMED SUBJECT MATTER The subject matter on appeal relates to optical elements having a substrate formed from nanocomposite optical ceramic materials and a compressive layer of nanocomposite materials. Spec. 2:9-18. According to the Specification, commercial and military systems subject their optical elements to harsh environments. Id. at 1:9-10. The Specification explains that the optical elements must be transmissive in the wavelength spectrum the system uses, be resistant to environmental exposure, and have sufficient strength to protect other components of a system. Id. at 1:13-17. The Specification states that the invention’s coating provides increased strength and hardness to the optical elements and offers the same optical properties as the underlying substrate. Id. at 6:22-25. Independent claims 1 and 21 are illustrative and are reproduced below from the Claims Appendix of the Appeal Brief. 1. An optical element, comprising: a substrate formed of a Nanocomposite Optical Ceramic (NCOC) material including a first oxide nanograin material dispersed in a second oxide nanograin material; and a compressive layer of the NCOC material formed on a surface of the substrate, wherein the optical element has a Knoop hardness measured on a surface of the compressive layer of at least 2000 kg/mm2 for a 50 g load. 21. An optical element, comprising: a substrate formed of a Nanocomposite Optical Ceramic (NCOC) material including a first oxide nanograin material dispersed in a second oxide nanograin material; and a compressive layer of the NCOC material formed on a surface of the substrate, wherein the compressive layer of the NCOC material has a microstructure different than a microstructure of the substrate, Appeal 2021-000126 Application 15/605,163 3 and wherein the microstructure of the compressive layer has a columnar polycrystalline grain structure with grain boundaries extending approximately perpendicular to the surface of the substrate. Appeal Br. 9, 11 (Claims App.). REJECTION ON APPEAL The Examiner maintains, and Appellant requests our review of, the following ground of rejection: Claims 1-4, 6-14, and 214 under 35 U.S.C. § 103 as unpatentable over Hopkins5 and Stefanik.6 B. DISCUSSION Appellant presents separate arguments for independent claims 1 and 21. Id. at 4-8. Appellant does not present separate arguments for claims 2- 4 and 6-14. Id. at 4-8. Therefore, claims 2-4 and 6-14 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). We address claims 1 and 21 separately below. Claim 1 The Examiner finds that Hopkins discloses a substrate and a compressive layer of nanocomposite materials that includes one component dispersed in another, such as a first oxide nanograin dispersed in a second oxide nanograin. Ans. 3. The Examiner finds Hopkins teaches that these materials have a structure that imparts optical features or properties. Id. 4 The rejection states that claims 1-14 and 21 are rejected but claim 5 has been canceled. Ans. 3; Appeal Br. 9. Therefore, claims 1-4, 6-14, and 21 stand rejected. 5 Hopkins et al., US 2018/0065995 A1, published March 8, 2018 (“Hopkins”). 6 Stefanik et al., Nanocomposite Optical Ceramics for Infrared Windows and Domes, 6545 PROC. OF SPIE 65450A (2007) (“Stefanik”). Appeal 2021-000126 Application 15/605,163 4 The Examiner acknowledges that Hopkins does not suggest the macrostructure for its optical element, but finds that Stefanik discloses the use of optical ceramics in domes. Id. at 3-4. The Examiner concludes it would have been obvious to form Hopkins’ optical element into a dome as a matter of design choice and per Stefanik’s teachings. Id. at 4. The Examiner further finds that Hopkins teaches its nanocomposite layers may be formed of different microstructures and thicknesses and may be engineered to optimize properties, such as hardness or strength. Id. The Examiner concludes it would have been obvious to adjust the components/composition, thickness, and microstructure of Hopkins’ nanocomposite layer to optimize its properties, such as hardness. Id. Appellant argues that claim 1 recites a particular Knoop hardness. Appeal Br. 4. Appellant contends that Hopkins’ only teachings regarding hardness can be found in paragraphs 74 and 81, but these disclosures are at a high level of generality. Id. at 4-5. Appellant asserts that Hopkins “is silent with respect to a particular hardness, let alone a hardness of a particular layer,” and Hopkins provides no support for the claimed optical element and hardness. Id. at 5. With regard to optimization, Appellant argues there must be some value of hardness of a compressive layer to optimize, but Hopkins and the Examiner do not provide any reason why the general conditions of claim 1 are met before it would have been obvious to modify Hopkins to achieve the claimed hardness. Id. at 5-6. Appellant further contends that Stefanik does not cure Hopkins’ deficiencies. Id. at 6. Appellant’s arguments are unpersuasive of reversible error. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long Appeal 2021-000126 Application 15/605,163 5 been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result- effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). “[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Hopkins discloses that nanocomposites and their macrostructures “can be engineered, predetermined or designed to have particular stress-strain properties, strength, hardness,” as well as other properties, and that “the nanocomposite’s micro-structure generally imparts, at least in part, these properties to the material. Hopkins ¶ 81. In other words, Hopkins recognizes that hardness is a property that may be engineered or designed by modifying the nanocomposite’s microstructure. Therefore, it would have been obvious to modify the microstructure of Hopkins’ nanocomposite by determining workable or optimal microstructures for the properties Hopkins cites as a matter of routine experimentation and design within the level of the ordinary skill, thus arriving at a hardness for the nanocomposite that falls within the scope of claim 1. The rejection and the Examiner’s response in the Answer both cite Hopkins’ paragraph 81. Ans. 4, 6. The Examiner further finds that Appellant has not rebutted the Examiner’s conclusion of optimization by showing criticality for the claimed hardness range or that the prior art teaches away from the proposed modification. Id. at 7-8. In fact, Appellant does not respond to the Examiner’s Answer by filing a Reply Brief. As a Appeal 2021-000126 Application 15/605,163 6 result, Appellant does not identify a reversible error in the Examiner’s rejection of claim 1. For these reasons and those set forth in the Examiner’s Answer, we sustain the Examiner’s § 103 rejection of claims 1-4 and 6-14 over Hopkins and Stefanik. Claim 21 The Examiner makes the findings and conclusions noted above with respect to the rejection of claim 1. The Examiner also finds that Hopkins suggests its nanocomposites may be in one or more various states and structures and this “would have either suggested or rendered obvious the microstructure of the substrate has a grain size that is substantially uniform throughout the substrate and the microstructure of the compressive layer has a columnar polycrystalline grain structure with grain boundaries extending approximately perpendicular to the surface of the substrate.” Ans. 4; see id. at 8-9 (responding similarly to Appellant’s arguments). Appellant contends that Hopkins does not teach or suggest claim 21’s perpendicular columnar structure. Appeal Br. 7. Appellant asserts that Hopkins, at best, describes a variety of structures and shapes for nanocomposites, but does not teach or suggest any particular orientation of a structure within a layer relative to the surface of another layer. Id. at 7-8. Appellant argues that Stefanik does not cure Hopkins’ deficiencies. Id. at 8. Appellant’s arguments are persuasive of reversible error. The Examiner cites Hopkins’ paragraph 57 to support the conclusion that the claimed microstructure would have been obvious. Ans. 4. Paragraph 57 states that a nanocomposite may include one or more components that can be in different states and have different “structure (e.g., crystalline, Appeal 2021-000126 Application 15/605,163 7 amorphous, planer, tubes, spheres, grains, cubes, etc.)).” This paragraph does not teach or suggest that a “columnar polycrystalline grain structure with grain boundaries extending approximately perpendicular to the surface of the substrate,” as claim 21 recites, would have been an available selection or possibility. Indeed, paragraph 57 appears to merely suggest that a nanocomposite’s component can have a microstructure that is amorphous or crystalline. The other shapes (“planer, tubes, spheres, grains, cubes, etc.”) appear to refer to the macrostructure of the component and otherwise do not suggest the particular microstructure that claim 21 recites. The Examiner also finds that “Hopkins suggests the nanocomposite may be in grain form with a cross-section of less than 1 μm and greater than 0.1 μm (para 57-60),” and this range overlaps with the claims. Ans. 4. Hopkins’ teachings regarding the size of nanocomposite grains, however, do not provide a basis for modifying a nanocomposite’s microstructure to arrive at the microstructure that claim 21 recites. For these reasons, we do not sustain the Examiner’s § 103 rejection of claim 21 over Hopkins and Stefanik. CONCLUSION The rejection is affirmed in part. Appeal 2021-000126 Application 15/605,163 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-4, 6-14, 21 103 Hopkins, Stefanik 1-4, 6-14 21 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