Ex Parte Bi et al

Patent Trial and Appeal Board

Apr 8, 2013

10854019 (P.T.A.B. Apr. 8, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/854,019 05/26/2004 Xiangxin Bi 3275.34US02 6551
62274 7590 04/09/2013
DARDI & HERBERT, PLLC
Moore Lake Plaza, Suite 205
1250 East Moore Lake Drive
Fridley, MN 55432
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
04/09/2013 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 XIANGXIN BI, HERMAN A. LOPEZ,
PRASAD NARASIMHA, ERIC EUVRARD, and
RONALD J. MOSSO
____________

Appeal 2012-000991
Application 10/854,019
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
JAMES C. HOUSEL, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2012-000991
Application 10/854,019

2

Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 38-42, 45-50, and 53 as
unpatentable over Bachman (US 4,363,647, issued Dec. 14, 1982) in view of
Bryan 642 (US 2003/0035642 A1, published Feb. 20, 2003) and Bryan 119
(US 2002/0164119 A1, published Nov. 7, 2002). We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method for forming optical coatings on planar
substrates comprising depositing a powder coating from a product flow
resulting from a chemical reaction driven by a light beam wherein the
powder coating is deposited with a thickness of at least about 100 nm in no
more than about 30 minutes and wherein the optical coatings have a standard
deviation in average index-of-refraction for each planar substrate of no more
than about 0.001 (independent claims 38 and 47).
Representative claim 38 reads as follows:
38. A method for forming optical coatings on a plurality
of planar substrates, the method comprising depositing a
powder coating on each of the plurality of planar
substrates from a product flow:
wherein the product flow results from a chemical
reaction in a reactant flow comprising a first precursor at a first
selected vapor pressure and a second precursor at a second
selected vapor pressure delivered by a flash evaporator,
wherein the chemical reaction is driven by a light beam,
wherein the powder coating is deposited with a thickness
of at least about 100 nm in no more than about 30 minutes for
each planar substrate, and wherein the optical coatings on
respective planar substrates have a standard deviation between
the optical coatings on the planar substrates in average index-
Appeal 2012-000991
Application 10/854,019

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of-refraction for each planar substrate of no more than about
0.001 with a one centimeter edge exclusion.

(Claims App’x at App. Br. 15).
Appellants do not present separate arguments specifically directed to
the dependent claims (App. Br. 7-14). Therefore, the dependent claims will
stand or fall with their parent independent claims of which claim 38 is
representative.
We sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttals to argument well expressed by the
Examiner in the Answer. The following comments are added for emphasis.
The Examiner concludes that it would have been prima facie obvious
to replace the flame hydrolysis technique used in Bachman's optical-coating
method with the laser pyrolysis technique used in the optical-coating method
of Bryan 642 as required by claim 38 and to optimize the result-effective
variables of these prior art methods in order to obtain desirable coating
thickness rates and standard deviations of the type encompassed by claim 38
(Ans. 4-7).
Appellants argue that the flame hydrolysis and laser pyrolysis arts are
unpredictable and that combining these two unpredictable arts does not
provide a predictable outcome (App. Br. 8-12). In support of this argument,
Appellants rely on the Jang, Lee, and Dang publications of record which are
characterized as evidencing that the above noted arts are unpredictable (id.).
These publications merely show that the arts in question possess some
degree of unpredictability. However, "case law is clear that obviousness
cannot be avoided simply by a showing of some degree of unpredictability
in the art so long as there was a reasonable probability of success." Pfizer,
Appeal 2012-000991
Application 10/854,019

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Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). For the reasons
detailed in the Answer, an artisan would have had a reasonable expectation
that the laser pyrolysis technique of Bryan 642 would be successful in the
method of Bachman. See id.
Appellants also argue that "[t]he Office Action's rationale improperly
re-engineers the prior art by changing its fundamental scientific principles of
operation" (App. Br. 12; italics removed).
We fully agree with the Examiner that this argument does not
properly characterize the proposed combination of Bachman and Bryan 642
(Ans. 16).
Finally, Appellants contend that "[t]he Office Action fails to establish
inherency" in stating that the smaller particles made by the laser pyrolysis
technique of Bryan 642 "inherently leads to more uniform and compact
powder coatings" (App. Br. 13 quoting Final Office Action 6; italics and
bolding removed).
The Examiner has provided this record with persuasive reasons for
determining that an artisan would have reasonably expected the smaller
particles of Bryan 642 to necessarily contribute to more uniform and
compact powder coatings. Even absent an expectation of advantageously
more uniform and compact powder coatings, it still would have been prima
facie obvious for an artisan to use the Bryan 642 laser pyrolysis technique in
Bachman's optical-coating method in order to obtain acceptable, albeit not
necessarily advantageous, coatings.
The decision of the Examiner is affirmed.

Appeal 2012-000991
Application 10/854,019

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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).

AFFIRMED

kmm