Ex Parte Arurault et al

Patent Trial and Appeal Board

Jun 22, 2016

12739785 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121739,785 04/26/2010
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
06/24/2016
FIRST NAMED INVENTOR
Laurent Arurault
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0509-1152 2882
EXAMINER
LIN, JAMES
ART UNIT PAPER NUMBER
1754
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENT ARURAUL T, FRANCOIS LE COZ and RENE BES
Appeal2014-009755
Application 12/739,785
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 17-34. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-009755
Application 12/739,785
Appellants' invention is directed to a method for the production of a
porous structure. App. Br. 2. Claim 17 illustrates the subject matter on
appeal and is reproduced below:
17. A method for the production of a porous structure in which
an outer surface layer comprising an ordered porous structure is
produced by anodization of an aluminium substrate, the method
compnsmg:
carrying out an anodization treatment on an aluminium
substrate with a duration sufficient to allow at least a thickness
of ordered porous structure to be obtained underneath a non-
ordered porous layer forming an outer surface of the outer
surface layer, wherein the ordered porous structure includes
pores having a uniform diameter and spacing and the non-
ordered porous structure includes pores that do not have a
uniform diameter and spacing, the aluminium substrate having,
before the anodization treatment, an arithmetic roughness of
less than 5 nm,
thereafter removing the non-ordered porous layer formed
by the anodization treatment by mechanical machining, while
maintaining at least a non-zero thickness of the ordered porous
structure and in a manner such that the ordered porous structure
forms a free outer surface of the aluminium substrate.
Appellants (App. Br. 3-5) request review of the following rejections
from the Examiner's Final Action:
I. Claims 17, 18 and 23-32 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ying (US 6,231, 7 44 B 1, issued May 15, 2001 ), Yoshida
(US 4,548,682, issued October 22, 1985) and Masuda (Hideki Masuda et
al., "Self-Ordering of Cell Configuration of Anodic Porous Alumina with
Large-Size Pores in Phosphoric Acid Solution", Jpn. J. Appl. Phys., 1998,
pgs. LI 340-L 1342, Vol. 37, XP-00909321).
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Application 12/739,785
II. Claims 19--22 and 33 rejected under 35 U.S.C. § 103(a) as
unpatentable over Ying, Yoshida, Masuda and Bartz (US 2005/0159087 A 1,
published July 21, 2005).
III. Claim 34 rejected under 35 U.S.C. § 103(a) as unpatentable
over Ying, Yoshida, Masuda and Cayless (R.B.C. Cayless, "Alloy and
Temper Designation Systems for Aluminum and Aluminum Alloys", ASM
Handbook, volume 2, ASM International, 1990, pp. 15-20).
IV. Claims 17, 18, 23, 24 and 26-29 rejected under 35 U.S.C. §
103(a) as unpatentable over Brar (US 5,240,590, issued August 31, 1993),
Taguchi (US 5,691,256, issued November 25, 1997), Roach (US
2008/0076597 Al, published March 27, 2008) and Lowenheim (F. A.
Lowenheim, Electroplating, McGraw-Hill Book Company, New York,
1978, pp 452-478).
V. Claims 19-22 and 33 rejected under 35 U.S.C. § 103(a) as
unpatentable over Brar, Taguchi, Roach, Lowenheim and Bartz.
VI. Claim 25 rejected under 35 U.S.C. § 103(a) as unpatentable
over Brar, Taguchi, Roach, Lowenheim and Miyamoto (US 4,678,547,
issued July 7, 1987).
VII. Claim 30 rejected under 35 U.S.C. § 103(a) as unpatentable
over Brar, Taguchi, Roach, Lowenheim and Tomita (US 4,225,399, issued
September 30, 1980).
VIII. Claims 17, 18, 23-30 and 32 rejected under 35 U.S.C. § 103(a)
as unpatentable over Yoshida, Brar, Taguchi and Masuda.
IX. Claims 19--22 and 33 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yoshida, Brar, Taguchi, Masuda and Bartz.
X. Claim 34 rejected under 35 U.S.C. § 103(a) as unpatentable
over Yoshida, Brar, Taguchi, Masuda and Cayless.
OPINION
Rejections under 35 US.C. § 103(a) (Rejections 1-111)
In addressing Rejection I, Appellants present arguments only for
independent claim 17. See Appeal Brief, generally. In addition, Appellants
do not present separate arguments addressing the separate rejections claims
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Application 12/739,785
19-22 and 33 (Rejection II) and 34 (Rejection III). Id. at 21-22.
Accordingly, claims 18-34 stand or fall with claim 17.
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's rejection of representative
independent claim 17 under 35 U.S.C. § 103(a) for the reasons presented by
the Examiner. We add the following for emphasis.
Independent claim 1 7 is directed to a method for the production of an
ordered porous structure where an aluminum substrate used to form the
porous structure has an arithmetic roughness of less than 5 nm before
performing an anodization treatment.
We refer to the Examiner's Final Action for a statement of the
rejection. Final Act. 17-19.
Appellants argue Ying fails to teach that the anodizing step is
performed on an aluminum substrate with an arithmetic roughness of less
than 5 nm. App. Br. 20.
We are unpersuaded by this argument. As noted by the Examiner,
Ying discloses polishing an aluminum substrate to provide a smooth finish
to a surface prior to anodization. Final Act. 17; Ans. 33-34; Ying col. 10, 11.
31-59, col. 11, 11. 6-9. Moreover, Ying discloses the polishing time is
controlled depending upon the original surface roughness of the foil. Ying
col. 11, 11. 6-9. Thus, the prior art recognizes that surface roughness of a
foil is an important and result effective variable. "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).
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Application 12/739,785
It is well settled that it would have been obvious for an artisan with
ordinary skill to develop workable or even optimum ranges for result-
effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re
Aller, 220 F.2d 454, 456 (CCPA 1955); In re Woodruff, 919 F.2d 1575,
1577-78 (Fed. Cir. 1990) (where the difference between the claimed
invention and the prior art is some range, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range). Appellants have
not directed us to any showing that the claimed arithmetic surface roughness
of less than 5 nm is critical. Absent this showing, Appellants have not
adequately explained why one skilled in the art would not have adjusted or
optimized the surface roughness of Ying's aluminum foil to be within the
claimed surface roughness range in light of Ying' s disclosure to form a
surface polished to a shiny finish.
Appellants additionally argue that the final product of Ying and
Yoshida after anodization and before a subsequent polishing/abrading step is
a porous layer with the pores filled with a metal. App. Br. 18-19. Thus,
Appellants argue such products are not a porous structure comprising pores
according to claim 1 7. Id.
We are also unpersuaded by these arguments and agree with the
Examiner's determination that claim 17 is written using the transitional open
language "comprising," which does not exclude additional process steps
such as filling the pores of a porous aluminum oxide with a metal. Ans. 32.
We have also considered Appellants' argument that neither Ying nor
Yoshida describes an ordered porous structure including pores as claimed.
App. Br. 19. We find this argument unavailing because it does not address
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Application 12/739,785
the Examiner's reliance on Masuda as teaching an anodization process,
similar to the one disclosed by Appellants' in Example 1, that creates a self-
ordered cell configuration of anodic porous aluminum to provide an ordered
configuration of cells with the desired large pores (which are proportional to
cell size). Final Act. 12-13, 19; Ans. 32-33; Spec. 34--35; Masuda Abstract,
L 1340-L 1341. Thus, Appellants' argument does not address the Examiner's
stated combination of prior art
Accordingly, we affirm the Examiner's rejections of claims 17-
34under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and
given above.
Rejections under 35 US.C. § 103(a) (Rejections IV-X)
Our affirmance of Rejections I-III above is dispositive for claims 17-
34, all claims on appeal. Thus, we need not reach a determination as to the
propriety of the rejections of claims 17-30 and 32-34 under 35 U.S.C. §
103(a) based on Brar (Rejections IV-VII) and Yoshida (Rejections VIII-X).
ORDER
The Examiner's prior art rejections of claims 17-34under 35 U.S.C.
§ 103(a) based on Ying (Rejections I-III) are affirmed.
We do not reach the Examiner's prior art rejections of claims 17-30
and 32-34 under 35 U.S.C. § 103(a) based on either Brar or Yoshida
(Rejections IV and X).
TIME PERIOD
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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