Arno Refke et al.

Patent Trials and Appeals Board

Apr 1, 2020

12418014 - (D) (P.T.A.B. Apr. 1, 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.
12/418,014 04/03/2009 Arno Refke P7765US 7589
78631 7590 04/01/2020
ROBERT S. GREEN
OERLIKON METCO (US) INC.
1101 PROSPECT AVENUE
WESTBURY, NY 11590
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
ROBERT.GREEN@OERLIKON.COM
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNO REFKE and CHRISTOPH HOLLENSTEIN
Appeal 2018-004498
Application 12/418,014
Technology Center 1700
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 18–25, 28, 29, 32, and 34–39. We have
jurisdiction under 35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed April 3, 2009 (“Spec.”),
the Final Office Action dated April 20, 2017 (“Final Act.”), the Appeal Brief
filed October 23, 2017 (“Appeal Br.”), the Examiner’s Answer dated
January 26, 2018 (“Ans.”), and the Reply Brief filed March 26, 2018
(“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Oerlikon Metco
AG, Wohlen. Appeal Br. 3.
Appeal 2018-004498
Application 12/418,014
2
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a method for coating and/or surface treating
substrates using a plasma beam. Spec. 1, ll. 7–11. Independent claims 18, 29,
and 32, reproduced below, are illustrative of the claimed subject matter:
18. A method for the coating and/or for the surface
treatment of substrates in a working chamber, the method
comprising:
producing and directing via a plasma torch a plasma
beam onto a substrate disposed in a working chamber, said
plasma torch being spaced from the substrate by between 0.2 m
and 2 m and said plasma beam being produced when a plasma
gas is directed through the plasma torch and is heated via at
least one of:
electrical gas discharge;
electromagnetic induction; and/or
mircrowaves; and
coating plural layers on the substrate having different
compositions and thicknesses by applying said plural layers
utilizing a same plasma torch and directly one after the other,
wherein a first coating layer of the plural layers is
arranged over the substrate and has greater thickness than a
second coating layer arranged over the first coating layer,
wherein the first coating layer is applied via thermal
plasma spraying using greater power than the second coating
layer and the second coating layer is applied via thermal plasma
spraying using a power of between 8 and 16 kW and that
utilizes a reactive component and
wherein the reactive component is introduced into the
plasma beam at a location that is:
spaced from the plasma torch;
where the plasma beam is a free plasma beam; and
Appeal 2018-004498
Application 12/418,014
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closer to the substrate than to the plasma torch.
Appeal Br. 33 (Claims App.).
29. A method for the coating and/or for the surface
treatment of substrates in a working chamber, the method
comprising:
producing and directing via a plasma torch a plasma
beam onto a substrate disposed in a working chamber, said
plasma beam being produced when a plasma gas, is directed
through the plasma torch and is heated via at least one of:
electrical gas discharge;
electromagnetic induction; and/or
microwaves;
spacing said plasma torch from the substrate between
0.2 m and 2 m; and
coating plural layers on the substrate having different
compositions and thicknesses by applying said plural layers
utilizing a same plasma torch and directly one after the other,
wherein a first coating layer of the plural layers is
arranged over the substrate and has less thickness than a second
coating layer arranged over the first coating 1ayer, and
wherein the second coating layer is applied via thermal
plasma spraying using greater power than the first coating layer
and the first coating layer is applied via thermal plasma
spraying using a power between 8 and 16 kW and that utilizes a
reactive component, and
wherein the reactive component is introduced into the
plasma beam at a location that is:
where the plasma beam is a free plasma beam;
closer to the substrate than to the plasma torch; and
a few centimeters from the substrate.
Id. at 35.
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Application 12/418,014
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32. A method for the coating and/or for the surface
treatment of substrates in a working chamber, the method
comprising:
producing and directing via a DC plasma torch a plasma
beam unto a substrate disposed in a working chamber, said
plasma beam being produced when a plasma gas is directed
through the plasma torch and is heated via at least one of:
electrical gas discharge;
electromagnetic induction; and/or
microwaves;
spacing said DC plasma torch from the substrate between
a range of 0.2 m and 2 m;
coating plural layers on the substrate having different
compositions and thicknesses by applying said plural layers
utilizing a same plasma torch and directly one after the other;
utilizing a first power of between 8 and 16 kW and a
pressure in the working chamber during application of a one of
the plural layers via thermal plasma spraying of one of:
between 0.01 and 10 mbar;
between 0.02 and 5 mbar; or
between 0.05 and 2 mbar; and
utilizing a second power greater than the first power and
a pressure in the working chamber during application of an
other of the plural layers via thermal plasma spraying of one of:
between 0.3 and 1 mbar;
between 0.5 and 500 mbar; or
between 1 and 200 mbar,
wherein the one of the plural layers is applied using the
second power and by introducing a reactive component into the
plasma beam at a location that is:
where the plasma beam is a free plasma beam; and
closer to the substrate than to the plasma torch, and
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wherein the reactive component is a mixture of gaseous
hexamethyldisiloxane (HMDSO) and oxygen.
Id. at 35–36.
REJECTIONS
The Examiner maintains, and Appellant requests review of, the
following rejections:
1. Claims 18–25, 28, 29, 32, and 34–39 under 35 U.S.C. § 112,
first paragraph;
2. Claims 18–20, 22–24, 29, and 37–39 under pre-AIA 35 U.S.C.
§ 103(a) over Grosse3, either Muehlberger4 or Ray5, and Kang6,
alone or further in view of Yang;7
3. Claim 21 under pre-AIA 35 U.S.C. § 103(a) over Grosse, either
Muehlberger or Ray, and Kang, alone or further in view of
Yang, and either Gruner8 or Truszkowska;9
4. Claim 25 under pre-AIA 35 U.S.C. § 103(a) over Grosse and
either Muehlberger or Ray, and Kang, alone or further in view
of Yang and Bao;10
5. Claim 28 under pre-AIA 35 U.S.C. § 103(a) over Grosse and
either Muehlberger or Ray, and Kang, alone or in further view
of Yang, and Wang;11 and
6. Claims 25, 32, and 34–36 under pre-AIA 35 U.S.C. § 103(a)
over Grosse and either Muehlberger or Ray, and Kang, alone or
further in view of Yang and Martin.12

3 Grosse et al., WO 01/40542 A1, published June 7, 2001 (“Grosse”).
4 Muehlberger, WO 96/06517, published February 29, 1996
5 Ray et al., US 6,238,843 B1, issued May 29, 2001 (“Ray”).
6 Kang, US 4,788,077, issued November 29, 1988.
7 Yang, US 6,641,673 B2, issued November 4, 2003.
8 Gruner, US 4,898,785, issued February 6, 1990.
9 Truszkowska, US 5,875,228, issued February 23, 1999.
10 Bao et al., US 2005/0009373 A1, published January 13, 2005 (“Bao”).
11 Wang et al., US 2002/0108871, published August 15, 2002 (“Wang”).
12 Martin, US 5,702,770, issued December 30, 1997.
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Application 12/418,014
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OPINION
After review of the cited evidence in light of the Appellant’s and the
Examiner’s opposing positions, we determine that Appellant has not
identified reversible error in the Examiner’s rejections. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011). Accordingly, we affirm the rejections for the
reasons set forth below, in the Final Office Action, and in the Examiner’s
Answer. We add the following.
Written Description
Although presented under separate headings, Appellant’s arguments
regarding independent claims 18, 29, and 32 are substantially the same.
Appeal Br. 9–11. We limit our discussion below to those claims. Each of the
dependent claims included in the rejection will stand or fall with the
independent claim from which it depends. 37 C.F.R. § 41.37(c)(1)(iv)
(2017).
The Examiner finds that the Specification, as filed, describes the layer
applied using a power of between 8 kW and 16 kW as a thin SiOx (silicon
oxide) layer. Final Act. 3. In addition, the Examiner finds that the
Specification discloses that, typically, the power supply for thermal plasma
spraying is 60 kW to 100 kW, “not every possible pressure greater than 8–16
kW.” Id.; Spec. 16, ll. 3–5. Therefore, the Examiner determines that the
scope of claims 18, 29, and 32 is “broader than what is supported by the
disclosure as filed” (Ans. 4, 5, 7) because the Specification does not provide
written description support for: (1) claim 18 reciting “the first coating layer
is applied via thermal plasma spraying using greater power than the second
coating layer and the second coating layer is applied via thermal plasma
spraying using a power of between 8 and 16 kW;” (2) claim 29 reciting “the
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Application 12/418,014
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second coating layer is applied via thermal plasma spraying using greater
power than the first coating layer and the first coating layer is applied via
thermal plasma spraying using a power of between 8 and 16 kW;” and
(3) claim 32 reciting “utilizing a first power of between 8 and 16 kW and a
pressure in the working chamber during application of a one of the plural
layers via thermal plasma spraying.” Final Act. 3–4.
Appellant argues that: (1) the paragraph bridging pages 14–15 of the
Specification describes applying a SiOx layer using 8 kW to 16 kW power
supplied to a plasma torch, (2) the paragraph bridging pages 15–16 of the
Specification describes applying a first layer using 60 kW to 100 kW power
supplied to the plasma torch, and (3) page 17, lines 4–11 of the Specification
describes applying a second SiOx layer (11) over a first layer (12) (Fig. 3A).
Appeal Br. 9–11. Appellant contends that this disclosure “provides full and
clear written description support” for the disputed limitations of claims 18,
29, and 32. Id.
“[T]he test for [compliance with the written description requirement]
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
We have reviewed the portions of the Specification relied upon by
Appellant, but find that the written description is not commensurate in scope
with claims 18, 29, and 32, i.e., Appellant has not pointed to sufficient
written description support for applying a coating layer other than SiOx via
thermal plasma spraying using a power of between 8 kW and 16 kW.
Likewise, we do not find that Appellant’s have pointed to sufficient written
description support for applying two coating layers where one layer is
Appeal 2018-004498
Application 12/418,014
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applied using a power of between 8 kW and 16 kW and another layer is
applied using any power greater than between 8 kW and 16 kW. Although
we acknowledge that page 16 of Appellant’s Specification discloses using a
greater power (e.g., 60 kW to 100 kW) in applying a first layer (Spec. 16),
the claims on appeal are not so limited. Accordingly, we sustain the
Examiner’s written description rejection of claims 18–25, 28, 29, 32, and
34–39.
Obviousness over Grosse, either Muehlberger or Ray, and Kang, alone or
further in view of Yang
The Examiner rejected claims 18–20, 22–24, 29, and 37–39 under
pre-AIA 35 U.S.C. § 103(a) over Grosse13, either Muehlberger or Ray, and
Kang, alone or further in view of Yang. Final Act. 5.
Although presented under separate headings, Appellant’s arguments
regarding independent claims 18 and 29 are substantially the same. Appeal
Br. 14, 19–20. We limit our discussion to those claims, and in particular to
the elements of those claims in dispute between the Appellant and the
Examiner. Each of the dependent claims included in the rejection will stand
or fall with the independent claim from which it depends. 37 C.F.R.
§ 41.37(c)(1)(iv).
A complete statement of the rejection is set forth in the Final Office
Action at pages 5–19. We focus our discussion below, however, on the

13 The Examiner refers to Grosse et al., US 7,771,798 B1, issued August 10,
2010, as an English language equivalent of WO 01/40542 A1. Ans. 9.
Because Appellant does not contest the Examiner’s reliance on
US 7,771,798 B1, we do the same. Thus, the cited column and line number
for Grosse herein refer to US 7,771,798.
Appeal 2018-004498
Application 12/418,014
9
elements of claims 18 and 29 in dispute between the Appellant and the
Examiner.
The Examiner finds that Grosse teaches a method for coating and/or
for the surface treatment of substrates in a working chamber (Final Act. 5
(citing Grosse 1:5–7)) where the method includes, inter alia:
(1) a plasma torch being spaced from the substrate between 0.2 m
and 2 m (id. at 7 (citing Grosse 5:1–6; Fig. 2)); and
(2) a reactive component introduced into the plasma beam at a
location that is:
a. spaced from the plasma torch (id. at 6 (citing Grosse Fig.
2)),
b. where the plasma beam is a free plasma beam (id. at 6–7
(citing Grosse Fig. 2)), and
c. closer to the substrate than to the plasma torch (id. at 6
(citing Grosse 5:15–46, 50–52, 6:10–35, 8:50–65; Fig. 2)).
Regarding thermal plasma spraying using a power between 8 kW and
16 kW, the Examiner finds that Grosse discloses that its method can include
composite layer systems using different precursor materials in a plasma jet
source (torch), such as a DC torch, having adjustable conditions so that
different precursor materials may be processed differently. Final Act. 13
(citing Grosse 2:64–3:10, 45–55). Like Grosse, the Examiner finds that
Kang discloses a method for coating the surface of a substrate using a direct
current (DC) torch and adjusting the process conditions or parameters to
optimize the properties of the coating, and further teaches that power input
for its plasma spraying include powers ranging from 8 kW to 16 kW. Id. at
13–14 (citing Kang 2:25–45, 9:35–40). The Examiner finds that it would
have been obvious, based on Kang’s teachings, to use a plasma spraying
torch with a power of between 8 kW and 16 kW in Grosse’s coating method
to provide a desirable coating. Id. at 14.
Appeal 2018-004498
Application 12/418,014
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Appellant identifies four main reasons for reversing the Examiner’s
rejection. Appeal Br. 14, 19–20.
The reactive component is introduced into the plasma beam at a
location that is “closer to the substrate than to the plasma torch.”
First, Appellant’s argue that Grosse teaches that the reactive gas (15)
is introduced into the plasma beam (10) at a location from the substrate that
is farther from, not closer to, the substrate (12) than to the plasma torch (11).
Id. at 14, 19.
Appellant’s argument is not persuasive of reversible error. As the
Examiner finds, Grosse teaches that its precursor material (16), a reactive
component, can be introduced into the free plasma beam downstream of the
plasma torch and closer to the plasma. Ans. 9 (citing Grosse 5:50–52, 6:10–
35, 8:50–65; Fig. 2).
Spacing the plasma torch from the substrate “between 0.2 m and
2 m.”
Second, Appellant’s argue that the Examiner “has not alleged” that
Grosse “teaches the recited spacing between the plasma torch and the
substrate of between 0.2 m and 2 m.” Appeal Br. 14, 20.
Appellant’s argument is not persuasive of reversible error because
merely reciting the claim language, and asserting that the Examiner’s
findings do not describe such limitations is not a persuasive argument. See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Appeal 2018-004498
Application 12/418,014
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Additionally, as the Examiner finds, Grosse teaches that its plasma jet
typically impinges on a substrate at a distance of about 10 cm to 100 cm (0.1
m to 1.0 m). Ans. 10–11 (citing Grosse 5:1–6). It is well-established that a
prima facie case of obviousness exists when the claimed and prior art ranges
overlap. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
The reactive component is introduced into the plasma beam at a
location that is “where the plasma beam is a free plasma beam.”
Third, Appellant argues that the Examiner has not shown that Grosse
“teaches or suggests that the reactive component is introduced into the
plasma beam at a location that is where the plasma beam is a free plasma
beam.” Appeal Br. 14, 20.
As with the previous argument, Appellant’s third argument is not
persuasive of reversible error because it merely recites the claim language,
and asserts that the Examiner’s findings do not describe such limitations. See
Lovin, 652 F.3d at 1357.
Further, the Examiner finds that Grosse teaches introducing its
reactive component into a free plasma beam. Ans. 11–12 (citing Grosse
5:20–25, Fig. 2). Appellant does not address or identify a reversible error in
the Examiner’s finding. Appeal Br. 14, 20; Reply Br. 2–5.
Applying a coating layer “using a power of between 8 and 16 kW.”
Finally, Appellant argues that Grosse fails to teach or suggest the
coating layer with a reactive component is applied using lower power than
used for another applied layer, where the lower power is in the range of 8 to
16 kW. Appeal Br. 14.
Again, as with Appellant’s previous arguments, Appellant’s fourth
argument is not persuasive of reversible error because it merely recites the
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Application 12/418,014
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claim language, and asserts that the Examiner’s findings do not describe
such limitations. See Lovin, 652 F.3d at 1357.
Moreover, Appellant’s argument is not persuasive because it fails to
address the facts and reasoning set forth by the Examiner in the rejection.
The Examiner does not rely on Grosse alone for teaching a power of
between 8 kW and 16 kW. Rather, the Examiner determines that it would
have been obvious to modify Grosse’s plasma torch, based on Kang, to use a
power of between 8 kW and 16 kW to produce a desirable coating. Final
Act. 13–15; Ans. 12–14. Appellant does not dispute or otherwise identify
error in the Examiner’s findings and reasoning. See In re Keller, 642 F.2d
413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.”).
Remaining Rejections
Although presented under separate headings, Appellant does not make
additional arguments for the patentability of separately rejected claims 21,
25, 28, 32, and 34–36. Appeal Br. 23–31. Appellant argues claim 32 is
patentable for the same reasons as claims 18 and 29 discussed above. Id. at
28. Appellant argues that claims 21, 25, and 28, which depend from claim
18, and claims 34–36, which depend from claim 32, are allowable based on
their dependency. See id. Because we find no insufficiency in the
Examiner’s rejection of claims 18 and 29 over Grosse and either
Muehlberger or Ray, and Kang, alone or further in view of Yang, we sustain
the rejections of claims 21, 25, 28, 32, and 34–36.
Appeal 2018-004498
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
18–25, 28,
29, 32, 34–
39
112 Written
Description
18–25, 28,
29, 32, 34–
39

18–20, 22–
24, 29, 37–
39
103(a) Grosse,
Muehlberger, Kang
18–20, 22–
24, 29, 37–
39

18–20, 22–
24, 29, 37–
39
103(a) Grosse,
Muehlberger,
Kang, Yang
18–20, 22–
24, 29, 37–
39

18–20, 22–
24, 29, 37–
39
103(a) Grosse, Ray, Kang 18–20, 22–
24, 29, 37–
39

18–20, 22–
24, 29, 37–
39
103(a) Grosse, Ray, Kang,
Yang
18–20, 22–
24, 29, 37–
39

21 103(a) Grosse,
Muehlberger,
Kang, Gruner
21
21 103(a) Grosse,
Muehlberger,
Kang, Yang,
Gruner
21
21 103(a) Grosse,
Muehlberger,
Kang,
Truszkowska
21
21 103(a) Grosse,
Muehlberger,
Kang, Yang,
Truszkowska
21
21 103(a) Grosse, Ray, Kang,
Gruner
21
21 103(a) Grosse, Ray, Kang,
Yang, Gruner
21
Appeal 2018-004498
Application 12/418,014
14
21 103(a) Grosse, Ray, Kang,
Truszkowska
21
21 103(a) Grosse, Ray, Kang,
Yang,
Truszkowska
21
25 103(a) Grosse,
Muehlberger,
Kang, Bao
25
25 103(a) Grosse,
Muehlberger,
Kang, Yang, Bao
25
25 103(a) Grosse, Ray, Kang,
Bao
25
25 103(a) Grosse, Ray, Kang,
Yang, Bao
25
28 103(a) Grosse,
Muehlberger,
Kang, Wang
28
28 103(a) Grosse,
Muehlberger,
Kang, Yang, Wang
28
28 103(a) Grosse, Ray, Kang,
Wang
28
28 103(a) Grosse, Ray, Kang,
Yang, Wang
28
25, 32, 34–
36
103(a) Grosse,
Muehlberger,
Kang, Martin
25, 32, 34–
36

25, 32, 34–
36
103(a) Grosse,
Muehlberger,
Kang, Yang,
Martin
25, 32, 34–
36

25, 32, 34–
36
103(a) Grosse, Ray, Kang,
Martin
25, 32, 34–
36

25, 32, 34–
36
103(a) Grosse, Ray, Kang,
Yang, Martin
25, 32, 34–
36

Overall
Outcome
18–25, 28,
29, 32, 34–
39

Appeal 2018-004498
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED