Ex Parte Iacovangelo et al

Board of Patent Appeals and Interferences

Jan 25, 2012

11249085 (B.P.A.I. Jan. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/249,085 10/12/2005 Charles Dominic Iacovangelo 156648-1 2618
42248 7590 01/26/2012
MOMENTIVE PERFORMANCE MATERIALS INC.-Quartz
c/o DILWORTH & BARRESE, LLP
1000 Woodbury Road
Suite 405
Woodbury, NY 11797
EXAMINER
REDDY, SATHAVARAM I
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
01/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES DOMINIC IACOVANGELO
and VICTOR LIENKONG LOU
____________

Appeal 2010-009900
Application 11/249,085
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
JEFFREY T. SMITH, 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, 3-22, 35, and 36. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM-IN-PART.

Appeal 2010-009900
Application 11/249,085

2
Appellants claim a coating structure comprising an aluminum outer
coating, an interlayer, and a substrate comprising, for example, boron nitride
(claim 1) as well as a method of making such a coating structure (claim 35).
Representative claim 1 reads as follows:
1. A coating structure, comprising:

an outer coating comprising aluminum; and

an interlayer disposed between a substrate and the outer coating, and
the interlayer comprising one or more of a rare earth metal, a transition
metal, or a noble metal; wherein the substrate comprises one or more of a
metal nitride, a metal carbide, a metal boride, or a metal oxide.

The references listed below are relied upon by the Examiner as
evidence of obviousness:
Cohen 3,278,319 Oct. 11, 1966
Intrater 4,374,903 Feb. 22, 1983
Kimock 5,508,092 Apr. 16, 1996
Nguyen 5,536,360 Jul. 16, 1996
Kub 2004/0009649 A1 Jan. 15, 2004
Morita JP 06-061335 Mar. 04, 1004
Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 1, 3, 6-15, 20-22, 35, and 36 as unpatentable over Kimock in
view of Intrater;
claim 4 as unpatentable over Kimock, Intrater, and Nguyen;
claim 5 as unpatentable over Kimock, Intrater, Nguyen, and Morita;
claims 16 and 17 as unpatentable over Kimock, Intrater, and Kub; and
claims 18 and 19 as unpatentable over Kimock, Intrater, Kub, and
Cohen.

Appeal 2010-009900
Application 11/249,085

3
The Rejection based on Kimock and Intrater
The Examiner concedes that Kimock's coating structure substrate does
not comprise boron nitride (Ans. 4) as encompassed by independent claims 1
and 35 but concludes that it would have been obvious to make the substrate
of Kimock from boron nitride in view of Intrater's teaching of a boron
nitride substrate (id. at para. bridging 8-9).
Appellants argue that the applied references are not analogous to each
other and would not have been combined as proposed by the Examiner
because Kimock requires a substantially optically transparent substrate
whereas the boron nitride substrate of Intrater is opaque (Br. 8-11).
This argument is unpersuasive because it is based on Appellants'
unsupported belief that Intrater's boron nitride substrate is opaque. In fact,
as correctly explained by the Examiner (Ans. 14-15), Kimock expressly
teaches in lines 15-30 of column 3 that boron nitride is a substantially
optically transparent material. Significantly, Appellants do not respond to,
and therefore do not reveal error in, the Examiner's explanation (i.e., no
Reply Brief has been filed).
For this reason and because the dependent claims under rejection have
not been separately argued by Appellants, we sustain the § 103 rejection of
claims 1, 3, 6-15, 20-22, 35, and 36 as unpatentable over Kimock in view of
Intrater.
The Remaining Rejections
The remaining rejections are based on the Examiner's conclusions that
it would have been obvious (i) to make the substrate of Kimock from carbon
doped boron nitride in view of Nguyen because "a carbon doped boron
nitride substrate provides an excellent insulation characteristics [sic] (col. 2,
Appeal 2010-009900
Application 11/249,085

4
lines 17-22)" (Ans. 10) and (ii) to make the interlayer of Kimock from boron
doped silicate glass in view of Kub because "having boron comprised
silicate glass provides a small surface roughness (paragraph [0070])" (id. at
para. bridging 12-13).
Appellants argue that the Examiner's above quoted motivation for
combining Nguyen with Kimock is faulty because Nguyen expressly teaches
carbon doping does not affect the insulating characteristics of boron nitride
(Br. para. bridging 11-12). Similarly, Appellants argue that the Examiner's
above quoted motivation for combining Kub with Kimock is faulty because
the Examiner has provided no reason why the property in question (i.e.,
small surface roughness) would be desirable in Kimock's structure (id. at
para. bridging 13-14).
Appellants' arguments have merit. Further, the Examiner has offered
no rebuttals to these arguments in the Answer. These circumstances lead us
to determine that the arguments under review are persuasive. It follows that
we will not sustain any of the remaining § 103 rejections of dependent
claims 4, 5, and 16-19.
Conclusion
The decision of the Examiner is affirmed-in-part.

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)(iv).
AFFIRMED-IN-PART

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