Ex Parte Hass et al

Patent Trial and Appeal Board

Oct 23, 2018

13371044 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/371,044 02/10/2012
134006 7590 10/25/2018
Vorys, Sater, Seymour and Pease LLP (UVA)
1909 K St., NW
Ninth Floor
Washington, DC 20006
FIRST NAMED INVENTOR
Derek D. Hass
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.
070239.000007 /1 1740
EXAMINER
LUND, JEFFRIE ROBERT
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
vmdeluca@vorys.com
patlaw@vorys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEREK D. HASS, HAYDN N. G. WADLEY,
KUMAR P. DHARMASENA, and YOSEF MARCIAN0 1
Appeal2018-001725
Application 13/371,044
Technology Center 1700
Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and LILAN REN,
Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3, 5, 7-11, 13-15, 17, and 19. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 University of Virginia Patent Foundation is identified as the real party in
interest (App. Br. 1 ).
Appeal2018-001725
Application 13/371,044
Appellants claim a directed vapor deposition apparatus for forming a
thermal barrier coating system on a substrate comprising at least one nozzle
(30, 130) for generating a carrier gas stream that deflects evaporated vapor
flux involved in forming the desired thermal barrier coating system, wherein
the at least one nozzle comprises at least one nozzle gap (139) defined by a
shape such as a non-circular elliptical-shape or a cross-hatch shape
(independent claim 1, Figs. 1 and 19A; see also remaining independent
claims 7 and 9).
Further details of the claimed apparatus are set forth in representative
claim 1, a copy of which taken from the Claims Appendix of the Appeal
Brief appears below.
1. A directed vapor deposition (DVD) apparatus for forming a
thermal barrier coating system on a substrate, the apparatus
compnsmg:
a chamber, wherein said chamber has an operating pressure
ranging from about 0.1 to about 32,350 Pa, wherein at least one
substrate is presented in said chamber;
at least two evaporant sources disposed in said chamber;
at least one carrier gas stream provided in said chamber;
at least one nozzle, wherein said at least one carrier gas stream
is generated from said at least one nozzle and said at least two
evaporant sources are disposed in said at least one nozzle, wherein
said at least one said nozzle comprises at least one nozzle gap wherein
said at least one said carrier gas flows therefrom, and at least one
evaporant retainer for retaining said at least two evaporant sources,
said evaporant retainer being at least substantially surrounded by said
at least one nozzle gap;
wherein at least one said nozzle gap is defined by a shape
selected from the group consisting of: non-circular elliptical-shaped,
elongated elliptical-shaped, cross-hatch shaped, segmented ring-
shaped, segmented elliptical-shaped, and segmented elongated
elliptical-shaped;
an electron beam system providing at least one electron beam,
said electron beam impinging said evaporant sources retained by said
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Appeal2018-001725
Application 13/371,044
evaporant retainer in said chamber to generate an evaporated vapor
flux·
' said generated evaporated vapor flux being deflected by said
carrier gas stream flowing from said nozzle gap, whereby said
evaporated vapor flux at least partially coats said at least one substrate
to form a bond coat; and
a substrate bias system capable of applying a DC or alternating
potential to at least one substrate;
at least one hollow cathode arc source generating a low voltage
beam, said at least one hollow cathode arc source:
impinging said generated vapor flux and said carrier gas stream
with a working gas generated by at least one said hollow cathode arc
plasma activation source to ionize said generated vapor flux and said
carrier gas stream; and attracting said ionized generated vapor flux
and said carrier gas stream to a substrate surface by allowing a
self-bias of said ionized gas and vapor stream or said potential to pull
the ionized stream to said substrate.
In the Answer, the Examiner presents new grounds of rejection of the
claims on appeal under 35 U.S.C. § I03(a) as unpatentable over Groves et al.
(WO 01/90438 Al, published November 29, 2001) (hereinafter "Groves WO
438") alone (Ans. 4--7) or alternatively in combination with Wang (US
2006/0221353 A9, published October 5, 2006), Tsuya et al. (US 4,363,769,
issued December 14, 1982) (hereinafter "Tsuya"), and/or Engelke et al. (US
6,431,096 Bl, issued August 13, 2002) (hereinafter "Engelke") (id. at 7-8). 2
2 In the Response to Argument section of the Answer, the Examiner
responds to arguments submitted in the Appeal Brief concerning Groves et
al. (US 7,014,889 B2, issued March 21, 2006) (hereinafter "Groves US
889") which had been applied as a primary reference in previous rejections
(Ans. 10-15). Nevertheless, the record as a whole shows that all previous
rejections based on Groves US 889 have been withdrawn and that the only
rejections before us in this appeal are the above listed rejections based on
Groves WO 438.
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Appeal2018-001725
Application 13/371,044
An initial matter for our consideration is the Examiner's
determination that Groves WO 438 is available as prior art under 35 U.S.C.
§ 102(a) because the rejected claims are not entitled to the filing date benefit
of Appellants' Provisional Application No. 60/318,286 on the grounds that
the Provisional Application disclosure does not provide written description
or enabling support for the claimed nozzle gap shapes (Ans. 13-14).
Appellants contest the Examiner's determination by arguing that "the
'286 [Provisional] [A]pplication suggests such non-circular shapes" via
disclosures appearing on pages 2, 5, and 11 (Reply Br. 2-3).
"[T]he test for [ written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en bane).
Appellants do not apply this test with any reasonable specificity and
therefore fail to show that the Provisional Application disclosure reasonably
conveys to those skilled in the art that Appellants had possession of the
claimed shapes as of the Provisional Application filing date. As a
consequence, Appellants do not reveal error in the Examiner's determination
that the rejected claims are not entitled to this filing date due to the
Provisional disclosure lacking written description support for the claimed
shapes. For this reason alone, the record shows that Groves WO 438 is
available as prior art against the claims on appeal.
In the rejection based on the Groves WO 438 reference by itself, the
Examiner finds that the reference fails to disclose the claimed nozzle shapes
but concludes that it would have been an obvious design choice to provide
the Groves WO 438 nozzle with such shapes (Ans. 5---6).
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Appeal2018-001725
Application 13/371,044
We agree with Appellants that "no evidence whatsoever has been
provided to support the [Examiner's] conclusion of obviousness [based on
design choice]" (Reply Br. 3). In the absence of such evidence, there is no
basis for the Examiner's determination that the claimed nozzle shapes were a
"choice" (i.e., known to exist) in this art prior to Appellants' invention.
Moreover, contrary to the Examiner's apparent belief, the claimed shapes
are not the consequence of a mere (i.e., non-functional) design but rather are
dictated by a utilitarian function (e.g., to focus vapor flux) as pointed out by
Appellants (id. at 3--4 (citing Spec. 19:24--20:1)).
Accordingly, we do not sustain the Examiner's§ 103 rejection based
on Groves WO 43 8 alone.
In the alternative § 103 rejection, the Examiner concludes that it
would have been obvious to replace the nozzle of Groves WO 438 with
nozzles having the claimed shapes as taught by Wang, Tsuya, and/or
Engelke (Ans. 8).
The Examiner responds to a previously-submitted argument that
Wang, Tsuya, and Engelke (which had been applied in a now-withdrawn
rejection) are non-analogous art (Ans. 14--15). According to the Examiner,
these references are analogous art because they
are in the field of Applicant's endeavor, specifically, a
deposition apparatus with nozzles that produce the desired flow
rate, shape, and vapor flux of the material leaving the nozzle
and depositing on a substrate[] and reasonably pertinent to the
particular problem with which the [ A Jpplicant is concerned,
specifically, nozzle shape and how the different shaped nozzles
produce[] different flow rates, shapes, and vapor fluxes of the
material leaving the nozzle and depositing on a substrate
(id. at 15).
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Appeal2018-001725
Application 13/371,044
Appellants reply by correctly pointing out that Wang is directed to
electropolishing, Tsuya is directed to manufacturing a thin flexible ribbon
wafer, and Engelke is directed to a turf care system for injecting a
liquid/seed mixture into soil (Reply Br. 4). Appellants argue that "the
Answer has failed to show that the secondary prior art references are
analogous prior art such that one skilled in the art would have consulted
those references when faced with a known problem with the Groves
method" (id. at 5).
The appeal record shows convincing merit in Appellants' argument.
The deficiency of the Examiner's above quoted analogous-art position is the
failure to cite any disclosures in Wang, Tsuya, or Engelke that support the
Examiner's characterization of these references as being directed to a
deposition apparatus or problem involving nozzles for producing a desired
flow rate, shape, and vapor flux of material leaving the nozzle and
depositing on a substrate. Indeed, the Examiner's characterization is
contradicted by the Appellants' undisputed point that the references are
directed to particular technologies (Reply Br. 4) that appear to be unrelated
to a deposition apparatus or problem of any kind.
Therefore, we also do not sustain the Examiner's§ 103 rejection
based on Groves WO 438 in view of Wang, Tsuya, and/or Engelke.
The decision of the Examiner is reversed.
REVERSED
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