Ex Parte Ackerman et al

Board of Patent Appeals and Interferences

Sep 29, 2010

11097731 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JOHN FREDERICK ACKERMAN
and MARC P. SHOUPE
______________

Appeal 2009-014223
Application 11/097,731
Technology Center 1700
_______________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 16-20 in the Office Action mailed May 29,
2008 (Office Action). 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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§ 41.31(a) (2008).
We affirm the decision of the Primary Examiner.
Claim 16 illustrates Appellants’ invention of a coated polymeric
composite component, and is representative of the claims on appeal:
16. A coated polymeric composite component comprising:
a polymeric composite aircraft component having at least one surface
having a surface RA value of less than about 10; and
a coating applied to the at least one surface, the coating comprising a
metallic pigment selected from the group consisting of aluminum, beryllium,
gold, silver, rhodium, platinum, or an alloy containing one or more of those
metals.
Appellants request review of the grounds of rejection advanced on
appeal by the Examiner: claims 16-20 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention;
claims 16 and 17 under 35 U.S.C. § 102(b) or, in the alternative, under
35 U.S.C. § 103(a) over Naik (WO 01/46324 A2); and claims 18-20 under
35 U.S.C. § 103(a) over Naik in view of Gladfelter (US 4,923,717). Br. 3;
Ans. 3 and 4.
Appellants argue the claims in the first ground of rejection as a group;
argues claim 16 with respect to the second ground of rejection; and argues
claims 18 and 19 with respect to the third ground of rejection. See Br., e.g.,
4, 8, and 11. Thus, we decide this appeal based on claims 16, 18, and 19. 37
C.F.R. § 41.37(c)(1)(vii) (2008).
Opinion
I. Claim 16: § 112, second paragraph
The threshold issue in this appeal is whether the claim language “a
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polymeric composite aircraft component having at least one surface having a
surface RA value of less than about 10” specifying a characteristic of a
surface of a polymeric composite component in representative claim 16 is
sufficiently definite to comply with the requirements of § 112, second
paragraph, and thus permitting a determination whether claim 16 and claims
dependent thereon are patentable over Naik alone and as combined with
Gladfelter.
The Examiner submits that the subject language of claim 16 is
indefinite because the limitation “a surface RA value of less than about 10,”
characterizing the surface of the polymeric composite aircraft component to
which the specified coating is applied, does not specify the “units for this
surface roughness value.” Ans. 3. The Examiner argues that “[w]ithout
units, there is no way of knowing if a prior art structure meets this
limitation.” Ans. 3; see Ans. 6.
Appellants submits “that RA is a common measure of surface
roughness that is typically measured in microns (µm), and which is widely
known and used by those of ordinary skill in the art.” Br. 4. In this respect,
Appellants point to the statement in the Metals Handbook2 that “[t]he most
common method of designating surface roughness in the United States is the
arithmetical average Ra.” Br. 4, citing Metals Handbook p. 3. Appellants
contend that “[t]he Handbook sets forth Ra values in microns in Table 2 and
Table 3.” Br. 4, citing Metals Handbook pp. 4 and 6. Appellants further

2 “Surface Finish and Surface Integrity in Machining: Surface Finish or
Surface Texture,” Metals Handbook, vol. 16, pp. 1-6 (J.R. Davis, ed., ASM
International. 1998).
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contend that “claim 18 as originally filed teaches that the coating is ‘between
about 0.2 microns to about 2 microns thick,’ which also provides support for
Appellants’ assertion that the unit of measure for the presently application
clearly is microns.” Br. 4. Appellants submit that “based on technical
knowledge common to a person of ordinary skill in the art and upon
information already included in the present specification as originally filed,”
the subject language of claim 16 is definite under of § 112, second
paragraph. Br. 4.
The Examiner responds that “there is more than one topical unit for
surface roughness,” arguing that “[a] showing that microns are the unit of
measure in another reference does not show that it was the unit of measure in
the instant application.” Ans. 5. The Examiner finds that the “micron” unit
“is used in claim 18 for a coating thickness, not for a surface roughness.”
Ans. 5. The Examiner further finds that “[t]here is nothing to indicate that
all lengths are measured in the same set of units in the instant application,”
and that “the length units Angstroms, microns, inch and centimeters are all
used in Paragraph 21 of the instant specification.” Ans. 5-6. The Examiner
thus maintains that the RA surface roughness units are not described and
thus claim 16 is indefinite. Ans. 5-6.
We find that the thickness is specified in Specification ¶ 0021 in
microns. We further find that the Metals Handbook would have disclosed
that “the most universal technique is to measure surface roughness with a
stylus contact-type instrument that provides a numerical value,” usually “in
terms of the arithmetic average, Ra.” Metals Handbook pp. 1-2 and Fig. 2a.
The “Preferred series of roughness average values (Ra)” in Tables 2 and 3
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are in “µm” (micron) and “µin.” (microinch). Metals Handbook pp. 4-6; see
also p. 5 and Fig. 5.
On this record, we agree with Appellants that the evidence in the
Specification and the Metals Handbook establishes that, as disclosed in the
Specification and claimed, the unit one of ordinary skill in the art would
associate with the claim limitation “a surface RA value of less than about
10” is “microns.” Thus, claim 16 circumscribes this particular area with a
reasonable degree of precision and particularity when considered in light of
the Specification, thus satisfying the requirements of § 112, second
paragraph. See, e.g., Marley Mouldings Ltd. v. Mikron Industries, Inc.,
417 F.3d 1356, 1359 (Fed. Cir. 2005), quoting In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
Accordingly, we reverse the ground of rejection of claims 16-20 under
35 U.S.C. § 112, second paragraph.
II. Claim 16: § 102(b) and § 103(a)
The Examiner finds that Naik teaches a “textured surface” which is
‘sufficiently smooth so that scratches, grooves or furrows are not visible,”
and that Naik’s method of forming such a surface is “substantially similar”
to Appellants’ method for polishing the surface. Ans. 6, citing Naik 9:8-10,
and Spec. ¶ 0027; see also Ans. 3, citing Naik 9:7-14. The Examiner
submits that “the surface roughness of Naik would either inherently meet
that claimed, or alternatively, it would be obvious to one of ordinary skill in
the art to limit the abrasiveness of [Naik’s] texturing process such that no
scratches would be visible.” Ans. 6.
Appellants principally contend the Examiner erred in rejecting claim
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16 as anticipated by or obvious over Naik because Naik’s coated article does
not meet the claim limitation “having at least one surface having a surface
RA value of less than about 10,” and thus teaches away from the claimed
invention. Br. 7. According to Appellants, Naik’s article has a surface
“which must be roughly textured (not smoothly polished) to provide a
mechanical interlock with the bond coating,” while “the pretreated surface
claimed by the Appellants . . . utilizes a cleaning and smoothing process and
not a texturing process requiring sanding, abrasive blasting, and chemical
methods disclosed in Naik.” Br. 7, citing Naik 3:4-6, 3:22-24, 9:23-24,
9:24-26, and 9:7-14. Thus, Appellants submit that Naik does not “teach a
coating applied to a surface ‘having a surface RA value of less than about
10’ (i.e., a smooth surface) as set forth in claim 16,” but teaches applying a
bond coat “to a surface having a textured or roughened surface.” Br. 7
(original emphasis deleted).
On this record, we cannot agree with Appellants’ position. We
determine that the subject claim limitation “having a surface RA value of
less than about 10” microns (see above p. 5) does not limit the surface
roughness of the surface of a polymeric composite component to be coated
with a coating comprising at least a specified metallic pigment, to “a smooth
surface,” as Appellants contend. Indeed, we find from Table 3 of the Metals
Handbook, that a surface having an Ra of 0.80 micron is “Smooth,” and that
a surface having an Ra of about 10 microns falls between “Medium” and
“Semirough.” Of Metals Handbook, p. 6; see also pp. 4-5, Table 2 and
Fig. 5.
Thus, Naik’s “textured” organic resin surface that is “sufficiently
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smooth so that scratches, grooves, or furrows are not visible” reasonably
appears to fall within the claimed “surface RA value of less than about 10”
microns range. Naik, e.g., 9:3 to 10:6. Accordingly, it reasonably appears
that the claimed coated polymeric composite component encompassed by
claim 16 and Naik’s coated polymeric composite component are identical or
substantially identical even though Naik does not describe the surface RA
value of the disclosed organic resin surface. See Naik, e.g., 7:26 to 8:27.
Therefore, the burden shifted to Appellants to patentably distinguish the
claimed coated polymeric composite components from the coated polymeric
composite components of Naik. See, e.g., In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”); In re Best, 562 F.2d 1252, 1254-56
(CCPA 1977)3; In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain
physical characteristics . . . . Merely choosing to describe their invention in
this manner does not render patentable their method which is clearly

3 Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
Best, 562 F.2d at 1255 (footnote and citations omitted).
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obvious in view of [the reference].” (citation omitted)).
On this record, we are of the opinion that Appellants’ unsupported
contention that Naik does not disclose “a smooth surface” and thus Naik’s
coated polymeric composite component is not encompassed by claim 16,
does not carry that burden.
We are also not convinced by Appellants’ contention that Naik’s
coated polymeric composite component is not encompassed by claim 16
because it has more than the claimed coating layer. Br. 8. As the Examiner
points out, the transitional term “comprising” opens claims 16 to coated
polymeric composite components that meet at least the surfaced “surface”
that is coated with a coating comprising a specified metallic pigment, and
thus would encompass Naik’s coated polymeric composite component. See,
e.g., Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed.
Cir. 1995) (“The claimed composition is defined as comprising—meaning
containing at least—five specific ingredients.”).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation and of obviousness
found in Naik with Appellants’ countervailing evidence of and argument for
non-anticipation and nonobviousness and conclude, by a preponderance of
the evidence and weight of argument, that the claimed invention
encompassed by appealed claims 16 and 17 would have been anticipated as a
matter of fact under 35 U.S.C. § 102(b), and would have been obvious as a
matter of law under 35 U.S.C. § 103(a).
III. Claims 18 and 19: § 103(a).
With respect to claim 18, Appellants contend the Examiner erred in
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combining the teachings of Naik and Gladfelter. Br. 9. According to
Appellants, one of ordinary skill in the art would not be motivated to
combine the references because Gladfelter’s “mirror-like aluminum coating
on the surface of a substrate to form a material useful in applications such as
electronics” has “nothing to do with high-temperature environments” for
which Naik “teaches a protective coating.” Br. 9-10. We are not persuaded.
We agree with the Examiner’s finding that Naik and Gladfelter teach
“coating polyimide resin surfaces with strong, resistant aluminum coatings,”
and that Naik’s preferred coating thickness range is about 0.2 mil to about
3 mil, that is, 5-76 µm, and Gladfelter’s coating thickness range is about
0.05 to 5 µm. Ans. 7; see also Ans. 4, citing Naik, e.g., 6:19-25, 8:7-16, and
10:5-7, and Gladfelter, e.g., 1:15-27, 3:23-39, and 3:57-66. Thus, Naik’s
preferable coating thickness range and Gladfelter’s coating thickness range
overlap at end points. We find that one of ordinary skill in this art would
have found in Naik the clear teaching that thicknesses of the bond layer
below the preferable range will work as intended, and Gladfelter’s teaches
that aluminum coatings can be applied to polyimide resin surfaces below
Naik’s range. Naik 15-16; Gladfelter col. 3, ll. 62-66. Cf., e.g., In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (“The statement in Zehender
that ‘[i]n general, the thickness of the protective layer should not be less than
about [100 Angstroms]’ falls far short of the kind of teaching that would
discourage one of ordinary skill in the art from fabricating a protective layer
of 100 Angstroms or less.”). Thus, on this record and contrary to
Appellants’ position, one of ordinary skill in the art would reasonably have
combined Naik and Gladfelter.
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With respect to claim 19, Appellants also contend the Examiner erred
in combining the teachings of Naik and Gladfelter. Br. 10. Appellants argue
that Gladfelter requires a particular treatment with TiCl4 to obtain an optical
reflectivity greater than 0.9 as claimed, and “the Examiner failed to realize
that the bond layer coating of [Naik] does not equate to the TiCl4
pretreatment agent of [Gladfelter].” Br. 10. We disagree.
We fail to find basis in the Examiner’s position for Appellants’
position that the Examiner suggests that the combination of Naik and
Gladfelter would have led one of ordinary skill in the art to equate
Gladfelter’s TiCl4 pretreatment agent with Naik’s bonding layer. Appellants
have not pointed out why this is so. See Ans. 4-5. Indeed, as the Examiner
points out, Gladfelter would have disclosed that “[t]ypically, the total
reflectivity . . . was greater than 90%,” thus meeting the limitation of claim
19. Ans. 5 and 8.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Naik and Gladfelter with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 18-20 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.
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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)(v).

AFFIRMED

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