Ex parte KAMO

Board of Patent Appeals and Interferences

Mar 19, 1998

07279713 (B.P.A.I. Mar. 19, 1998)

Application for patent filed December 5, 1988.1
We observe that the claim amendment filed August 6, 1992 (i.e., 2
Paper No. 18), although authorized by the examiner to be entered, has not
been clerically processed with respect to the requested amendment of claims
2-4, 6-11, 13, 14, and 16 (see amendment page 1) or of claims 22 and 35 (see
amendment page 2). This matter should be rectified upon return of the
application to the jurisdiction of the examiner.
1
Paper No. 31
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte LLOYD KAMO
______________
Appeal No. 93-1311
Application 07/279,7131
_______________
ON BRIEF
_______________
Before John D. Smith, Garris and Pak, Administrative Patent
Judges.
Garris, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal which involves claims
1 through 37, which are all of the claims in the application.2
Appeal No. 93-1311
Application 07/279,713
Consistent with the appellant’s specification disclosure, we3
interpret the appellant’s claim language “refractory oxide bubbles with a
melting point above that of glass bubbles” as referring to discrete bubbles
(such as hollow beads or spheres) of refractory oxide material (e.g., see the
first full paragraph on specification page 2) as opposed to pockets of air
trapped in the coatings of the prior art (e.g., see the last full paragraph on
specification page 1).
2
The subject matter on appeal relates to an article
comprising a substrate having thereon a chromium oxide densified
insulative ceramic coating comprising refractory oxide bubbles
with a melting point above that of glass bubbles as well as to a
method for the production of such an article. Further details3
of this appealed subject matter are set forth in representative
independent claim 1, which reads as follows:
1. An article comprising a substrate and a chromium oxide
densified insulative ceramic coating upon the surface of the
substrate, the coating comprising:
refractory oxide bubbles with a melting point above that of
glass bubbles, a refractory oxide and a water insoluble oxide
effecting a bond between the refractory oxide and said substrate.
The only rejection now before us on this appeal is under
35 U.S.C. § 103, and the following references are relied upon by
the examiner in support of this rejection:
Jones et al. (Jones) 4,615,913 Oct. 7, 1986
Beck 4,744,831 May 17, 1988
All of the appealed claims stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Jones in view of Beck.
Appeal No. 93-1311
Application 07/279,713
3
We cannot sustain this rejection.
It is the examiner’s fundamental position that it would have
been obvious for one with ordinary skill in the art to replace
the hollow glass beads, which function as a burn-out material to
provide increased porosity, in Jones’ coating (e.g., see lines
49-51 in column 6 and lines 61-65 in column 16) with the hollow
inorganic spheres taught by Beck. However, these references
contain no teaching or suggestion that Beck’s spheres should be
used in a coating environment of any kind much less the coating
of Jones or that Beck’s spheres would be even capable of “burn-
out” as required of Jones’ beads. Stated otherwise, these
references provide no suggestion for combining their teachings in
the manner proposed by the examiner and no suggestion that such a
combination would be successful. In re O’Farrell, 853 F.2d 894,
13902, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988).
In this latter regard, it is appropriate to emphasize that a
burn-out material must be physically disposed within a coating in
order to increase coating porosity and that the sphere diameters
disclosed by Beck (e.g., see lines 14-27 in column 3) are
generally larger than the thicknesses of Jones’ coating layers
(e.g., see the layer thicknesses in Tables IV and V). Indeed,
the smallest sphere diameter disclosed by Beck is larger than
Appeal No. 93-1311
Application 07/279,713
4
many of the layer thicknesses disclosed by Jones, and the largest
sphere diameter disclosed by Beck is larger than any of the layer
thicknesses disclosed by Jones. It is apparent that the spheres
of Beck could not possibly be used as a burn-out material in the
coating of Jones to the extent that sphere diameter is greater
than coating layer thickness. Moreover, for all we know based on
the record before us, Beck’s method of forming hollow inorganic
spheres is incapable of producing spheres of a sufficiently small
diameter as to be effectively used in Jones’ coating layer.
Under the circumstances recounted above, we cannot agree
with the examiner’s conclusion that it would have been obvious
for one with ordinary skill in the art to use the spheres of Beck
in the coatings of Jones. It follows that we cannot sustain the
above noted section 103 rejection of claims 1 through 37 as being
unpatentable over Jones in view of Beck.
Appeal No. 93-1311
Application 07/279,713
5
The decision of the examiner is reversed.
REVERSED

John D. Smith )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Chung K. Pak )
Administrative Patent Judge )

Appeal No. 93-1311
Application 07/279,713
6
Paul B. Overhauser
ICE, MILLER, DONADIO & RYAN
One American Square, Box 82001
Indianapolis, IN 46282-0002
BRG/cam