Ex parte Jackson et al.

Board of Patent Appeals and Interferences

Jul 14, 1998

07917670 (B.P.A.I. Jul. 14, 1998)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JOHN E. JACKSON
and MARIANNE O. PRICE
______________
Appeal No. 95-2315
Application 07/917,6701
_______________
ON BRIEF
_______________
Before KIMLIN, GARRIS and WARREN, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 1, 3 through 5 and 9.2 Claims 10 through 19 are also of record and have been withdrawn from
consideration by the examiner.
We will not sustain either of the examiner’s grounds of rejection of the appealed claims under
35 U.S.C. § 103 over appellants’ admissions in their specification, Routsis, Wolfla et al. and McComas

1 Application for patent filed July 21, 1992. According to appellants, this application is a continuation of
application 07/729,154, filed July 12, 1991, now abandoned.
Appeal No. 95-2315
Application 07/917,670
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et al.3 (answer, pages 5-9) because we agree with appellants that any combination of the admitted state
of the art and the applied references would have failed to reasonably suggest the claimed invention as a
whole to one of ordinary skill in this art. See, e.g., In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). We observe that appellants have admitted that face contact seals having first
(“hard material”) and second (“carbonaceous material”) members wherein the first member was coated
with “[c]onventional type coatings of 20[80Ni20Cr] + 80 [Cr. Carbide]” for “mating against carbon
[second member]” were known at the time the claimed invention was made (specification, pages 1 and
9; principal brief, page 5).4 We are of the view that there are two differences between the claimed face
seals and the admittedly old face seals: (1) the first member of the claimed face seals has a chromium
carbide-age hardened nickel base alloy coating,5 while the first member of the admittedly known face
seals has a coating of 20[80Ni20Cr] + 80 [Cr. Carbide]; and (2), the appealed claims require the heat
treatment of a chromium carbide-age hardenable nickel base alloy coating in order to obtain the
chromium carbide-age hardened nickel base alloy coating and there is no evidence of record that the
20[80Ni20Cr] + 80 [Cr. Carbide] coating is heat treated.
We fail to find any reasonable suggestion and reasonable expectation of success in the
references applied by the examiner, either separately or combined, to substitute the age hardenable
nickel base alloy binder, such as Inconel 718 (appealed claim 4), for the 80Ni20Cr alloy binder in a
face seal coating to obtain a chromium carbide-age hardenable nickel base alloy coating and then to
heat treat this coating to obtain chromium carbide-age hardened nickel base alloy coating. In re
Vaeck, 947 F.2d 488, 493-95, 20 USPQ2d 1438, 1442-44 (Fed. Cir. 1991); In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). While Wolfla et al. (e.g., page 778)

2 See, e.g., appealed claim 1 in the amendment of March 26, 1993 (Paper No. 11).
3 The references relied on by the examiner with respect to the grounds of rejection are listed at page 4
of the answer. We refer to these references in our opinion by the name associated therewith by the
examiner.
4 We note that an example of the latter coating on an Inconel 718 substrate is disclosed in Routsis (col.
3, lines 6-14).
5 The term “age hardened nickel base alloy” is defined in appellants’ specification (page 5, lines 7-11;
principal brief, page 5). In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Appeal No. 95-2315
Application 07/917,670
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discloses that age hardenable nickel base alloys can be used as a binder in place of the 80Ni20Cr alloy
in chromium carbide-metal alloy coatings, this reference is directed to “rubbing surfaces” of “liquid-Na
fast breeder reactors” and, thus, is non-analogous art because it is not directed to the same field of
endeavor, face contact fluid seals,6 or reasonably pertinent to the same problem, “local ‘hot spots’,”
addressed by appellants (see specification, page 9; principal brief, pages 5 and 8; reply brief, page 2).
In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992). Even assuming
that Wolfla et al. did provide the requisite suggestion and reasonable expectation of success to
interchange the alloy binders, as recognized by the examiner, this reference does not suggest heat
treating the resulting coating. However, the examiner’s reliance on McComas et al. to generally
demonstrate heat treatment of carbide-alloy coatings, such as the coatings disclosed by Wolfla et al., is
misplaced as this combination would not have reasonably suggested the heat treatment of the coating of
Wolfla et al. to one of ordinary skill in this art. Keller, supra. Indeed, the coatings disclosed by
McComas et al. contain different amounts of different carbides (e.g., col. 3, lines 8-10 and 27-30, col.
4, lines 62-63, and col. 5, lines 35-55), the alloy is not an “age hardenable nickel based alloy” and the
heat treatment mechanism suggested by this reference does not result in a “hardened alloy” (e.g., col. 4,
lines 38-44, and col. 5, lines 35-41). Furthermore, based on these teachings of McComas et al., even
if one of ordinary skill in this art did substitute the alloy of this reference for the 80Ni20Cr alloy of the
admittedly old coatings, as alternatively suggested by the examiner (answer, page 9), the combination
would not have resulted in appellants’ claimed invention. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).

6 As a matter of claim construction, the phrase “face contact fluid seal” in appealed claim 1 when
considered in the context of the claimed invention as a whole, including consideration thereof in light of
the specification, must be given weight as a claim limitation which characterizes the product of the
claimed article of manufacture in order to give meaning to the claims and properly define the invention.
See generally In re Fritch, 972 F.2d 1260, 1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing
Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed.
Cir.), cert. denied, 469 U.S. 857 [225 USPQ 792] (1984), Corning Glass Works v. Sumitomo Elec.
U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel, 828
F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987).
Appeal No. 95-2315
Application 07/917,670
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Accordingly, it is manifest that the only direction to appellants’ claimed invention as a whole on
the record before us is supplied by appellants’ own specification. See Vaeck, supra; Uniroyal, supra;
Dow Chemical, supra; In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
The examiner’s decision is reversed.
Reversed
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-2315
Application 07/917,670
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