Ex Parte Can et al

Patent Trial and Appeal Board

Aug 22, 2016

11547697 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111547,697 0910712007
7590 08/23/2016
Ronald R Santucci
FROMMER LAWRENCE & HAUG
745 Fifth Avenue
New York, NY 10151
FIRST NAMED INVENTOR
Antionette Can
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.
930092-2017 4977
EXAMINER
MA YES, MEL VIN C
ART UNIT PAPER NUMBER
1732
MAILDATE DELIVERY MODE
08/23/2016 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 ANTIONETTE CAN, ANNA EMELA MOCHUBELE,
GEOFFREY JOHN DA VIES, and JOHANNES LODEWIKUS MYBURGH
Appeal2015-003494
Application 11/547,697
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 4--10, 12-34, 36, and 39-43. We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM-IN-PART.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
Appeal2015-003494
Application 11/547,697
1. A method of manufacturing a polycrystalline abrasive
element including the steps of
providing a plurality of ultrahard micron, sub-micron or
nano size abrasive particles having vitreophilic surfaces that
form chemical bonds with oxides,
coating the ultrahard abrasive particles with an
amorphous or nano-crystalline oxide, hydroxide or oxo-
hydroxide matrix precursor material using a wet colloidal
suspension reaction method,
heating the coated ultrahard abrasive particles to dry the
coating, and
heating the coated ultrahard abrasive particles in a
gaseous environment to convert the matrix precursor coating
material to an oxide, nitride, carbide, oxynitride, oxycarbide
and/or carbonitride of the matrix precursor material, or an
element form of the matrix precursor material, or combinations
thereof; and
consolidating and sintering the coated ultrahard abrasive
particles at a pressure and temperature at which they are
crystallographically or thermodynamicaly stable to generate a
polycrystalline abrasive element comprising ultrahard abrasive
particles or grains of sub-micron or nano size in the matrix
material.
Appellants request review of the following rejections from the
Examiner's Final Action (App. Br. 4):
I. Claims 1, 2, 4--10, 12, 13, 15-17, 19-23, 27, 29-34, 36, and
39-43 rejected under 35 U.S.C. 103(a) as unpatentable over Slutz (US
5,106,392, issued April 21, 1992), Anderson (US 6,414,338 Bl, issued July
2, 2002) and Barrow (US 2004/0258611 Al, published December 23, 2004).
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Appeal2015-003494
Application 11/547,697
II. Claims 14 and 18 rejected under 35 U.S.C. 103(a) as
unpatentable over Slutz, Anderson, Barrow and Kijima (US 2004/0136891
Al, published July 15, 2004).
III. Claim 24 rejected under 35 U.S.C. 103(a) as unpatentable over
Slutz, Anderson, Barrow and Kurihara (US 5,876,682, issued March 2,
1999).
IV. Claims 25 and 26 rejected under 35 U.S.C. 103(a) as
unpatentable over Slutz, Anderson, Barrow and Sullivan (US 5,238,669,
issued August 24, 1993).
V. Claim 28 rejected under 35 U.S.C. 103(a) as unpatentable over
Slutz, Anderson, Barrow and Gash (US 2006/0042417 Al, published March
2, 2006).
VI. Claims 1, 2, 6-9, 12-17, and 19-28 rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1---6, 8-10, 12, 13, and 18-28 of U.S. Patent No. 8,118,896.
OPINION
Prior Art Rejections
Rejection I
Independent claim 1 is directed to a method of manufacturing a
polycrystalline abrasive element including coating ultrahard abrasive
particles with an amorphous or nano-crystalline oxide, hydroxide or oxo-
hydroxide matrix precursor material using a wet colloidal suspension
reaction method. Product claims 31 to 34 require diamond, cubic boron
nitride, combination of diamond and cubic boron nitride in a matrices of
oxides, carbides or nitrides. The matrices are formed by consolidating and
sintering the coated nanosized or submicron sized diamond or cubic boron
nitride particles (claim 1 ).
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Appeal2015-003494
Application 11/547,697
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's prior art rejection under
35 U.S.C. § 103(a) for the reasons presented by Appellants and add the
following.
We refer to the Examiner's Final Action for the statement of
Rejection I. Final Act. 3-8.
Appellants argue Slutz coats the abrasive particles using chemical
vapor deposition (CVD), in particular low pressure CVD techniques, or by
electroless deposition, electrolytic deposition, or vacuum deposition
techniques. App. Br. 7-8; Slutz col. 5, 11. 9-30, col. 6, 11. 32-35. Appellants
further argue Slutz is entirely silent on using a wet colloidal suspension
technique as required by the subject matter of independent claim 1. App. Br.
8.
We agree with Appellants that the Examiner has not established a
proper case of obviousness. The Examiner found Slutz discloses a method
of manufacturing polycrystalline abrasive elements comprising coated
micron-sized ultrahard particles that differs from the claimed method in that
Slutz does not coat the particles with an amorphous or nano-crystalline oxide
hydroxide or oxo-hydroxide using a wet colloidal suspension reaction
method. Final Act. 3-5; Slutz col. 4, 11. 39-40, col. 6, 11. 33, 61-65. The
Examiner relies on Barrow as teaching a wet colloidal suspension coating
process. Final Act 7; Barrow i-fi-18, 10. However, as noted by Appellants,
Barrow's wet colloidal suspension coating process is used to coat an article,
such as the inside channels of cordierite honeycomb monoliths or a stainless
steel substrate, and not particles as in Slutz. App. Br. 10; Barrow i-fi-134, 37.
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Appeal2015-003494
Application 11/547,697
Furthermore, even if the teachings of Slutz and Barrow were combined, the
Examiner direct us to no evidence that Barrow's coating is suitable for
sintering as required by the process of Slutz. Slutz col. 3, 11. 16-22; col. 6,
11. 19--21. Thus, we agree with Appellants that the Examiner has not
adequately explained how one skilled in the art would have combined the
teachings of the prior art to arrive to the claimed invention.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing obviousness under 35 U.S.C.
§ 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSR Int'!
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977,988(Fed.C~.2006D.
Accordingly, we reverse the Examiner's prior art rejection of claims
1, 2, 4--10, 12, 13, 15-17, 19--23, 27, 29-34, 36, and 39--43 (Rejection I) for
the reasons presented by Appellants and given above.
Rejections 11-V
The Examiner also presented separate rejections of dependent claims
14 and 18 (Rejection II), dependent claim 24 (Rejection III), dependent
claims 25 and 26 (Rejection IV) and dependent claim 28 (Rejection V)
under 35 U.S.C. § 103(a), all premised on the teachings of Slutz, Anderson
and Barrow rendering obvious to one skilled in the art the method of
manufacturing a polycrystalline abrasive element of the subject matter of
independent claim 11. Final Act. 15-19. As discussed above, the Examiner
has not established that the combined teachings of Slutz, Anderson and
Barrow would have suggested the subject matter of independent claim 1.
The Examiner did not rely on the additionally cited secondary references to
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Appeal2015-003494
Application 11/547,697
overcome the previously noted deficiencies of the combined teachings of
Slutz, Anderson and Barrow. Id.
Accordingly, we also reverse the Examiner's prior art rejections of
claims 14, 18, 24--26, and 28 for the reasons presented by Appellants and
given above.
Re} ection VI
The Examiner rejected claims 1, 2, 6-9, 12-17, and 19-28 on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 1---6, 8-10, 12, 13, and 18-28 of U.S. Patent No. 8,118,896.
Final Act. 18-19.
Appellants have not shown any reversible error in the Examiner's
obviousness-type double patenting rejection. Their only argument is that
they prematurely filed a terminal disclaimer in the application that matured
into US Patent 8, 118,896 (App. Br. 16). Therefore, we affirm the
Examiner's obviousness-type double patenting rejection.
ORDER
The Examiner's prior art rejections of claims 1, 4--10, 12-34, 36, and
39--43 under 35 U.S.C. § 103(a) are reversed.
We affirm rejection of claims 1, 2, 6-9, 12-17, and 19-28 on the
ground of nonstatutory obviousness-type double patenting.
AFFIRMED-IN-PART
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