11481744 (P.T.A.B. Apr. 26, 2013)

Ex Parte Abdo et al

Patent Trial and Appeal BoardApr 26, 2013

11481744 (P.T.A.B. Apr. 26, 2013)

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. 11/481,744 07/06/2006 Zafir A. Abdo 2005P07971US 5709 28524 7590 04/26/2013 SIEMENS CORPORATION INTELLECTUAL PROPERTY DEPARTMENT 170 WOOD AVENUE SOUTH ISELIN, NJ 08830 EXAMINER ELVE, MARIA ALEXANDRA ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 04/26/2013 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 ZAFIR A. ABDO and AHMED KAMEL ____________ Appeal 2011-003084 Application 11/481,744 Technology Center 3700 ____________ Before EDWARD A. BROWN, REMY J. VANOPHEM, and CARL M. DeFRANCO, Administrative Patent Judges. DeFRANCO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003084 Application 11/481,744 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-4 and 6-10.1 Br. 5. Claim 5 is cancelled, and claims 11-20 are withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED INVENTION The claimed invention relates to a method of forming ceramic articles, “particularly to methods of forming ceramic article prototypes.” Spec. 1, ll. 4-5. Claim 1 is the sole independent claim and is representative of the claims on appeal: 1. A method for forming a ceramic article comprising the steps of: providing a powder comprising a ceramic powder and at least one metallic material forming a coating on the ceramic powder; applying a laser energy source to the powder to melt the at least one metallic material forming the coating to bond the powder and form the ceramic article; removing at least a portion of the at least one metallic material forming the coating; and sintering the ceramic article. EVIDENCE The Examiner relied upon the following prior art as evidence of unpatentability: Deckard US 4,863,538 Sep. 5, 1989 Jin US 5,011,823 Apr. 30, 1991 Buljan US 5,041,261 Aug. 20, 1991 1 Appellants appear to have mistakenly included claims 11-20 as “being appealed,” but those claims were actually withdrawn by the Examiner pursuant to a Response to Restriction Requirement (filed Dec. 11, 2008) and an Amendment After Final (filed Jan. 8, 2010). See also Ans. 2. Appeal 2011-003084 Application 11/481,744 3 Liu US 2004/0140078 A1 Jul. 22, 2004 Wang US 2005/0205232 A1 Sep. 22, 2005 REJECTIONS Claims 1, 4, 8 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Liu and Jin. Ans. 4. Claims 2, 3 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Jin and Buljan. Id. at 5. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Jin and Deckard. Id. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Jin and Wang. Id. at 6. ANALYSIS The method of independent claim 1 requires, in relevant part, providing a ceramic powder with a metallic material “forming a coating” and then applying laser energy to the powder “to melt . . . the coating to bond the powder and form the ceramic article.” Br., Claims Appx. According to Appellants, the metallic coating on the ceramic powder “is melted to bond the inner ceramic material.” Br. 17. That the metallic coating acts to bind the ceramic powder is consistent with Appellants’ Specification, which provides that the metal coating is applied to ceramic particles to form metal- coated ceramic particles . . . the metal coating acts as a binder to bind the ceramic particles together to form the selected ceramic article . . . the thickness of the metal coating is sufficient to enable the metal-coated particles to be bonded to one another during a laser engineered net shaping process.2 2 While the Specification describes two embodiments, namely, a “metal powder/ceramic powder mixture” (depicted in fig. 1) and “metal-coated ceramic particles” (depicted in fig. 2), we are only concerned with the latter embodiment as it includes the “coating” set forth in claim 1. See Spec. 7, ll. 4-5, ll. 17-18, and figs. 1 & 2 (emphasis added). Appeal 2011-003084 Application 11/481,744 4 Spec. 7, ll. 19-22 and 8, ll. 13-15 (emphasis added). Thus, consistent with the Specification, the claimed ceramic powder comprises metal-coated ceramic particles to which laser energy is applied to melt the metallic coating to bind the ceramic particles together into a finished article. The Examiner found that Liu teaches that a powder article (1) “may be a metal, ceramic or cermet,”3 (2) “may have a ceramic coating,” and (3) may be formed by laser sintering. Ans. 4. In finding that Liu teaches a ceramic coating, however, the Examiner acknowledged that “a metallic coating is not specifically taught.” Id. As such, the Examiner relied upon Jin, finding that Jin discloses a metallic coating that “may be substituted” for Liu’s ceramic coating. Id. at 4 and 9. In rationalizing the substitution, the Examiner concluded that it would have been obvious “to coat a ceramic body with a metallic as taught by Jin [] in the Liu [] process because this allows for electrical or thermal stabilization of the finished sintered product.” Id. at 4-5. Appellants note two flaws in the Examiner's rationale for combining Liu and Jin. First, Appellants assert that the Examiner’s reliance on Jin is misplaced because Jin’s metallic coating is “for the purpose of electrical or thermal stabilization, or mechanical or environmental protection” and thus “is not removed” from the finished article. Br. 18. In contrast, Liu’s ceramic coating, which helps maintain “structural integrity of the porous powder article prior to casting,” is “removed” and “cleaned away” from the article upon completion of the casting process. Liu [0049], [0061] & 3 “Cermet” is a widely-known composite of “ceramic (cer) and metallic (met) materials” in which the “metal is used as a binder.” Wikipedia, http:/en.wikipedia.org/wiki/Cermet (last visited April 23, 2013). The term “cermet” was coined by the U.S. Air Force as far back as the 1950s. Id. Appeal 2011-003084 Application 11/481,744 5 [0068]). In other words, the coatings taught by Liu and Jin serve divergent purposes: Liu’s coating is temporary (it simply helps with the casting process), whereas Jin’s coating is permanent (it insulates and protects the finished article). Given these divergent purposes, a skilled artisan would not reasonably look to Jin’s permanent metallic coating as a viable substitution for Liu’s temporary ceramic coating. Because a skilled artisan would not undertake to substitute a permanent coating (Jin) for a temporary coating (Liu), we agree with Appellants that the Examiner's reason for the substitution--“this allows for electrical or thermal stabilization of the finished sintered article”--lacks rational basis. Second, Appellants argue that neither Liu nor Jin discloses an operation where “the metallic material is melted to bond the inner ceramic material.” Br. 17. We agree. As disclosed, Liu’s ceramic coating forms a “shell 22” on the “exterior surface” of the powder article. Liu [0044]. The Examiner has provided no evidence that Liu’s ceramic shell is “melt[ed] . . . to bond the powder,” as claim 1 requires. Likewise, with respect to Jin, the Examiner has provided no evidence that Jin's metallic coating acts, or is capable of acting, as a binder for the ceramic powder. Nor has the Examiner provided any evidence that Jin’s metallic coating 22 is melted as part of the sintering process. Indeed, the occurrence of any melting would conflict with the express purpose of Jin’s metallic coating, which is to insulate and protect the finished article (as discussed supra). Just because Jin teaches a metallic coating does not suffice to establish that its proposed combination with Liu would result in metallic-coated ceramic powder in which the metallic coating is “melt[ed] . . . to bond the powder,” as claim 1 requires. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a patent composed of Appeal 2011-003084 Application 11/481,744 6 several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”). Without a persuasive articulated reason based on some rational underpinning for modifying Liu as proposed, the Examiner’s rejection cannot stand. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418) (“rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). We fail to see why an ordinary artisan would have been led to substitute the metallic coating of Jin for the ceramic coating of Liu. As such, we agree with Appellants that the Examiner has not established a prima facie case of obviousness as to the limitations of claim 1 requiring (1) the provision of a ceramic powder with a “metallic material forming a coating on the ceramic powder” and (2) the application of laser energy “to melt . . . the coating to bond the powder and form the ceramic article.” For the foregoing reasons, we do not sustain the rejection of independent claim 1 and its respective dependent claims 2-4 and 6-10. DECISION We reverse the Examiner’s decision rejecting claims 1-4 and 6-10. REVERSED mls