Ex Parte Jiang et al

Patent Trial and Appeal Board

Mar 26, 2018

13450787 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/450,787 04/19/2012 Wenping Jiang
47990 7590 03/28/2018
J. CHARLES DOUGHERTY
Wright, Lindsey & Jennings LLP
200 WEST CAPITOL A VE
SUITE 2300
LITTLE ROCK, AR 72201
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.
66624A 7946
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
jdougherty@wlj.com
aelliott@wlj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENPING JIANG, MIKE KIMMEL, and AJAY P. MALSHE
Appeal2017-002698
Application 13/450,787
Technology Center 1700
Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 5, 7-18, and 31-34. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 We cite to the Specification ("Spec.") filed April 19, 2012; Final Office
Action ("Final Act.") dated December 31, 2015; Appellants' Appeal Brief
("App. Br.") dated September 1, 2016; Examiner's Answer ("Ans.") dated
October 6, 2016, and Appellants' Reply Brief ("Reply Br.") dated December
6, 2016.
2 Appellants identify NanoMech, Inc. as the real party in interest. App. Br.
2.
Appeal2017-002698
Application 13/450,787
BACKGROUND
The invention relates to multi-layer coatings for cutting tool inserts.
Spec. i-fi-13, 5. Claims 1 and 19 are the only independent claims on appeal:
1. A cutting tool insert, comprising:
a. a substrate;
b. a first nanostructured coating deposited over the
substrate, wherein the first nanostructured coating
comprises at least one of (i) a thickness of no greater than
100 nm or (ii) grains having a dimension no greater than
1 OOnm as measured in a plane parallel to the substrate
wherein the first nanostructured coating is applied over
the substrate by the process of vapor deposition using a
grain-refining agent comprising hydrogen chloride gas;
c. a second nanostructured coating over the first
coating, wherein the second nanostructured coating
comprises grains having a dimension no greater than
1 OOnm as measured in the plane parallel to the substrate
and wherein the second nanostructured coating is 0.5 to
1.5 microns in thickness; and
d. a third coating deposited over the first and
second nanostructured coatings by the process of vapor
deposition without the grain-refining agent to form an
interface at a bottom face of the third coating.
31. A cutting tool insert, comprising:
a. a substrate;
b. a first coating comprising titanium nitride
deposited over the substrate, wherein the first coating
comprises grains having a dimension no greater than
1 OOnm as measured in a plane parallel to the substrate;
c. a second coating comprising titanium
carbonitride deposited over the first coating, wherein the
second coating comprises grains having a dimension no
greater than 1 OOnm as measured in a plane parallel to the
substrate, and wherein the second coating is about 0.5 to
1.0 microns thick.
2
Appeal2017-002698
Application 13/450,787
App. Br. 22, 26 (Claims Appendix) (emphasis added to highlight the
disputed recitations).
REJECTIONS
I. Claims 1-3, 5, 7, 8, 12-18, 31, and 32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rodmar3 and Kato. 4
II. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Rodmar, Kato, and Hirakawa. 5
III. Claims 10, 11, 33, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rodmar, Kato, and Leverenz. 6
OPINION
Rejection I
With regard to Rejection I, Appellants argue claim 1 and rely on the
same arguments for each of claims 2, 3, 5, 8, 15-18, and 31. App. Br. 10-
20. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as
representative and decide the appeal with regard to these claims based on the
representative claim alone. Separately argued claims 7, 12-14, and 32 are
separately addressed.
Claim 1
The Examiner finds that Rodmar discloses a coated cutting tool insert
comprising a titanium nitride first coating layer having equiaxed grains that
are less than 0.5 microns in size, and a 0.4 to 3.9 microns thick titanium
3 US 2004/0180241 Al, published September 16, 2004 ("Rodmar").
4 US 2002/0076284 Al, published June 20, 2002 ("Kato").
5 US 2002/008614 7 Al, published July 4, 2002 ("Hirakawa").
6 US 2005/0003238 Al, published January 6, 2005 ("Leverenz").
3
Appeal2017-002698
Application 13/450,787
carbonitride second coating layer having columnar grains of unspecified
size. Final Act. 2--4. The Examiner finds that Rodmar's grain size range for
the first coating layer encompasses the range "no greater than 1 OOnm"
recited in claim 1, and determines that grains within the recited range would
have been obvious on that basis. Ans. 3. Regarding Rodmar's second
coating layer, the Examiner finds that Kato teaches that cutting tool coatings
comprising titanium carbonitride with columnar grains advantageously
provide reduced residual stress and improved breakage resistance when the
coating has a thickness of 0.5-3 microns and a ratio of grain width to coating
thickness (d/t) that is within a range of0.1to0.5. Final Act. 3. The
Examiner reasons that it therefore would have been obvious to one of
ordinary skill in the art to apply Kato's d/t ratio to Rodmar's titanium
carbide second coating. Final Act. 3; Ans. 5. The Examiner notes that
applying Kato's ratio of0.1 to a coating thickness of0.5 microns-which
thickness is encompassed both by Rodmar and Kato--yields a grain width of
50 nm. Ans. 5.
Appellants argue that Rodmar' s disclosed grain size range for the first
coating layer is insufficient to anticipate the narrower range recited in claim
1. App. Br. 10. As the Rejection is based on obviousness, and not
anticipation, this argument is unpersuasive.
Appellants also argue that the recited first coating layer grain size
range is critical, and therefore not obvious over Rodman's encompassing
range. Id. at 11-14. In support of the alleged criticality, Appellants point to
paragraphs 15, 16, 26, and 32 of the Specification, as well as the Declaration
of Dr. Wenping Jiang. Id. Appellants argue that the listed passages of the
Specification identify benefits with regard to reduced stress between coating
4
Appeal2017-002698
Application 13/450,787
layers when the grains are sized as claimed. Id. at 11. Appellants further
argue that the Declaration provides a comparative test showing improved
tool life obtained by a coating in accordance with the claimed invention
relative to a coating similar to that of Rodmar. Id. at 12-13. We are not
persuaded that Appellants' proffered evidence demonstrates the alleged
criticality. The Specification's teaching of benefits attained with grain sizes
smaller than 100 nm does not present evidence relevant to the question
whether comparable benefits would be achieved with larger grain sizes. The
Declaration refers to a test comparing "the cutting tool insert invention
claimed in this application" with a cutting tool insert "similar to that
described" in Rodmar. Deel. i-f 2. The Declaration does not identify the
materials, coating thicknesses, or grain sizes for either of the tested coatings.
As such, we are unable to identify in the Declaration persuasive evidence of
criticality attributable to the claimed grains size range. In the Reply Brief,
Appellants additionally point to comparative test results described in the
Specification. Reply Br. 2 (citing Spec. i-fi-126 and 32-33). However, the
Specification identifies the tested coatings only as an insert "coated as
described above" and a benchmark insert "with similar chemistry but
micron-sized grains." Spec. 26. Here too, Appellants do not identify
sufficient detail of the tested coatings, such as coating materials, thicknesses,
or relative grain dimensions, to serve as credible evidence of criticality
regarding grains that are not larger than 100 nm.
Appellants additionally argue that Kato teaches only a grain size to
coating thickness ratio, and not a grain size range. App. Br. 14--15.
Appellants' argument does not address the Examiner's reasoning in applying
Kato's disclosed ratio to Rodmar's disclosed coating thickness, and,
5
Appeal2017-002698
Application 13/450,787
therefore, does not persuade us of error in the Examiner's obviousness
analysis. Appellants' further argument (App. Br. 16) that neither Kato nor
Rodmar recognizes a beneficial reduction in stress attributable to grain size
also is not persuasive. Kato teaches adjusting grain size relative to coating
thickness to achieve reduced coating layer stress. Kato i-f 12 (stating that a
titanium carbon/nitride coating having a thickness (t) and columnar grains of
width ( d) is adjusted to provide a d/t value "at least 0.1 and at most 0.5
whereby a residual stress of the coating layer is reduced and better breakage
resistance is obtained").
For the foregoing reasons, Appellants' arguments do not persuade us
of reversible error in the Examiner's rejection of claim 1.
Claims 7, 12-14, and 3 2
With regard to claims 7 and 32, the Examiner finds that Rodmar
discloses a fourth coating layer having a grain size that overlaps the claimed
range. Final Act. 4; Ans. 6. Appellants do not dispute that finding, but
argue that, in Rodmar, "[ n Jo reason is given for this range." App. Br. 17, 19.
Appellants do not provide a persuasive explanation as to why a lack of
express reason for Rodmar's stated range is sufficient to demonstrate
criticality or non-obviousness of the narrower range recited in claim 7.
Claim 12 requires a thermal barrier coating. Appellants separately
argue claim 12 but do not dispute the Examiner's finding (Final Act. 4) that
Rodmar teaches a thermal barrier coating. See App. Br. 17-18. With regard
to claim 13, Appellants argue that Rodmar fails to teach a thermal barrier
coating thickness of 2.0 to 4.0 µm because, according to Appellants, only the
alumina layers in Rodmar would serve as thermal barrier layers and the
thickness of Rodmar's alumina layers is less than the recited range. Id. The
6
Appeal2017-002698
Application 13/450,787
Examiner responds that "Appellant has not provided any evidence that
titanium nitride and carbonitride are not thermal barriers." Ans. 7. We
agree with the Examiner's comment. Absent credible evidence, Appellants'
contention that Rodmar's titanium nitride and carbonitride layers are not
thermal barriers within the meaning of claim 13 is unpersuasive of error.
Regarding claim 14, Appellants argue that Rodmar teaches smoothing
of the applied coatings, and therefore does not provide a "rough surface" as
claimed. App. Br. 18 (citing Rodmar i-f 46). Rodmar states that the applied
coating is "mechanically post-treated to expose the multilayer along the edge
line by a brushing, blasting, grinding operation or combinations thereof."
Rodmar i-f 45. In a preferred embodiment, nylon brushes with SiC grains are
used. Id. i-f 46. Appellants do not present credible evidence or technical
reasoning sufficient to persuade us that any of the foregoing post-treatment
operations would have constituted smoothing, or would have resulted in a
coating surface that is insufficiently "rough" to fall within the scope of that
adjective.
For the foregoing reasons, Appellants' arguments do not persuade us
of reversible error in the Examiner's rejection of claims 7, 12-14, and 32.
Accordingly, Rejection I is sustained.
Rejection II
Appellants contest Rejection II based on the same arguments
presented against Rejection I. Because we find those arguments
unpersuasive, Rejection II also is sustained.
7
Appeal2017-002698
Application 13/450,787
Rejection III
Appellants contest Rejection III, as applied to claims 10, 33, and 34,
based on the same arguments presented against Rejection I. Rejection III as
applied to these claims, therefore, is sustained.
Appellants separately argue claim 11. App. Br. 20-21. Claim 11
requires a third coating layer, comprising carbon-enriched carbonitride that
is 0.1 to 0.6 microns in thickness. The Examiner finds that Rodmar
discloses a carbonitride third coating layer having an overlapping thickness,
and that Leverenz provides a reason to carbon-enrich a carbonitride coating
layer for purposes of improving adherence. Final Act. 6-7. Appellants'
argument-that Rodmar does not specify carbon-enrichment and Leverenz
does not teach the claimed coating thickness (App. Br. 20-21 }-neither
addresses nor persuades us of error in the Examiner's obviousness
determination which is based not on the individual references but on their
combined teachings.
Accordingly, Rejection III is sustained.
DECISION
The Examiner's rejection of claims 1-3, 5, 7-18, and 31-34 is
affirmed.
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
8