Ex Parte Kantola et al

Patent Trial and Appeal Board

Sep 22, 2017

13661597 (P.T.A.B. Sep. 22, 2017)

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.
PA-41596/710240-6361 6264
EXAMINER
BRAUCH, CHARLES JOSEPH
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
13/661,597 10/26/2012
59582 7590 09/25/2017
DICKINSON WRIGHT PLLC
2600 WEST BIG BEAVER ROAD
SUITE 300
TROY, MI 48084-3312
Troy Kantola
09/25/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte TROY KANTOLA, ANDREW J. MILLER, STEVEN KRAUSE,
ACHIM ADAM, and JOACHIM SCHLUETER
Appeal 2016-0021051
Application 13/661,5972
Technology Center 3700
Before WILLIAM V. SAINDON, MICHAEL C. ASTORINO, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134 from a rejection of
claims 1—22. We have jurisdiction under 35 U.S.C. § 6(b).
1 Our Decision references Appellants’ Specification (“Spec.,” filed Oct. 26,
2012), Appeal Brief (“Appeal Br.,” filed Jan. 26, 2015) and Reply Brief
(“Reply Br.,” filed Dec. 7, 2015), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed Aug. 28, 2014) and Answer (“Ans.,” mailed
Oct. 6, 2015).
2 Appellants identify Federal-Mogul Corporation as the real party in interest.
Appeal Br. 1.
Appeal 2016-002105
Application 13/661,597
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 CE.R. § 41.50(b).
SUBJECT MATTER ON APPEAL
The invention “relates generally to piston assemblies for internal
combustion engine applications, and methods of forming the same.”
Spec. 12. Claims 1,15, and 16 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A piston assembly, comprising:
a piston body including at least one first cross bore
presenting a piston sliding surface;
a wrist pin disposed in said at least one first cross bore,
said wrist pin presenting a pin sliding surface facing said piston
sliding surface; and
a coating disposed on at least one of said sliding surfaces,
said coating including a polymer matrix with hard particles
disposed in said matrix.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Oct. 14, 1997
Nov. 6, 2001
Yamamoto et al. (“Yamamoto”) US 5,677,372
Chou et al. (“Chou”) US 6,312,484 B1
Azevedo et al. (“Azevedo”) US 2007/0000468 Al Jan. 4, 2007
Kuroda et al. (“Kuroda”) US 2008/0060603 Al Mar. 13, 2008
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REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1—10, 12, 14, 16—18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Azevedo and Yamamoto;
claims 11, 13, 15, and 19 under § 103(a) as unpatentable over
Azevedo, Yamamoto, and Kuroda; and
claims 21 and 22 under § 103(a) as unpatentable over Azevedo,
Yamamoto, and Chou.
ANALYSIS
In regard to independent claim 1, Appellants argue the Examiner has
not provided sufficient reasoning for combining the teachings of Azevedo
and Yamamoto. Appeal Br. 7—8; Reply Br. 2—3. We agree.
In rejecting independent claim 1, the Examiner finds Azevedo
discloses the invention substantially as claimed, except for the matrix being
a polymer matrix. Final Act. 2; Ans. 2—3. The Examiner further finds
Yamamoto discloses a composite material including chromium, diamonds,
and a polymer matrix and determines it would have been obvious to
combine the teachings of Azevedo and Yamamoto “for the purpose of
forming a composite material.” Final Act. 2. Yet, the Examiner’s reasoning
for combining the teachings, i.e., forming a composite material, does not
persuasively explain why a person of ordinary skill in the art would combine
the teachings of Azevedo, which discloses a coating comprising a composite
material made up of diamonds dispersed in a chromium matrix (Azevedo
1111, 13,35), with the teachings of Yamamoto.
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In the Answer, the Examiner expounds upon the reasoning for
combining the teachings of Azevedo and Yamamoto. Namely, the Examiner
further finds that “[o]ne of ordinary skill in the art in coatings would be well
aware that organic polymers are suitable for increasing oxidation resistance
and therefore would suggest that the organic polymer could be added
particularly when Yamamoto teaches the same.” Ans. 4. As Appellants
point out, however, the Examiner does not provide evidence that organic
polymers increase oxidation resistance. Reply Br. 3. As such, the
Examiner’s finding that organic polymers are suitable for increasing
oxidation resistance is not sufficiently supported.
In view of the foregoing, the Examiner has not persuaded us that a
person of ordinary skill in the art would have combined the teachings of
Azevedo and Yamamoto so as to render obvious the subject matter of
independent claim 1. We, therefore, do not sustain the Examiner’s rejection
of independent claim 1 and claims 2—10, 12, and 14 depending therefrom.
The Examiner’s rejections of claims 11, 13, and 15—22 suffer from the same
deficiency as the Examiner’s rejection of independent claim 1, and we
similarly do not sustain the Examiner’s rejections of these claims.
Although we do not sustain the Examiner’s rejections of claims 6, 21,
and 22 for the reasons discussed above, Appellants apprise us of an
additional deficiency in the Examiner’s rejections of these claims.
Appeal Br. 9, 15. We address these claims separately because they are not
included in our new ground of rejection.
Each of these claims recites that the hard particles include Fe203.
Appeal Br., Claim App. The Examiner acknowledges Yamamoto does not
explicitly teach particles including Fe2C>3 and determines that Yamamoto’s
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teaching of ferrous materials being suitable as the metal matrix would
suggest to a person of ordinary skill in the art that the hard particles could be
made from Fe203. Final Act. 3; Ans. 5. The Examiner, however, does not
explain, and we fail to see, why a person of ordinary skill in the art would
select a material used to form a matrix as a material for forming hard
particles disposed within the matrix for reinforcement. As such, the
Examiner has not provided sufficient reasoning for combining Yamamoto’s
teachings regarding metal matrix materials and materials for hard particles.
NEW GROUNDS OF REJECTION
We enter the following new grounds of rejection of claims 1—5 and 7—
20 based on the prior art of record:
claims 1—5, 7—10, 12, 14, 16—18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Azevedo and Yamamoto; and
claims 11, 13, 15, and 19 under § 103(a) as unpatentable over
Azevedo, Yamamoto, and Kuroda.
Obviousness over Azevedo and Yamamoto
Independent claim 1
Azevedo discloses a piston assembly (Figs. 1—3, 8—11), comprising: a
piston body (34) including at least one first cross bore (64) presenting a
piston sliding surface (Fig. 1); a wrist pin (26) disposed in said at least one
first cross bore (Figs. 1,3,11), said wrist pin (26) presenting a pin sliding
surface (Fig. 3) facing said piston sliding surface (Fig. 1); and a coating (90)
disposed on at least one of said sliding surfaces (141), said coating (90)
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including a matrix with hard particles disposed in said matrix flflf 11, 13, 35
disclosing a diamond dispersed chromium composite).
Although Azevedo discloses that coating (90) includes a matrix with
hard particles disposed in the matrix, Azevedo discloses a chromium matrix,
i.e., a metal matrix, not a polymer matrix. Yamamoto is directed to a
diamond reinforced composite material for engine components (col. 1,
11. 13—18). In particular, Yamamoto teaches a diamond reinforced composite
material comprising diamond and a matrix made from a metal, a polymer, or
a combination thereof (col. 2,11. 19-21, col. 5,11. 8—11). It would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify Azevedo’s diamond dispersed composite coating by substituting the
metal matrix for Yamamoto’s polymer matrix because Yamamoto teaches
that metal, polymer, and a combination of metal and polymer are known
variants of a matrix for a diamond reinforced composite material (col. 5,
11. 8-11). See, e.g., KSRlntl Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“['WJhen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”)
(citation omitted).
Notably, Yamamoto is analogous art to the claimed invention. Two
separate tests define the scope of analogous prior art: (1) whether the
reference is from the same field of as the inventor’s endeavor, regardless of
the problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). Here, Yamamoto is in the same field of
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endeavor as Appellants. Appellants’ Specification explains that the present
invention “relates generally to piston assemblies for internal combustion
engine applications, and methods of forming the same.” Spec. If 2.
Similarly, Yamamoto teaches that the disclosed invention relates to a
material for forming a component for use in an engine. Yamamoto 1:13—18.
The claimed invention and Yamamoto both involve materials for engine
components. Given that Yamamoto is at least in the same field of endeavor
as Appellants, Yamamoto is analogous art.
Furthermore, we recognize the factual inquiries for an obviousness
determination include secondary considerations based on evaluation and
crediting of objective evidence of nonobviousness, such as unexpected
results. Graham v. John Deere Co., 383 U.S. 1, 17—18 (1966). Appellants’
Specification describes test results suggesti ng that the coatings of the present
invention reduce wear on the sliding surfaces of the piston assembly
compared to other coatings and imcoated sliding surfaces. Spec, ■flf 6, 26.
Accordingly, we consider anew the issue of obviousness, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
Appellants’ evidence of nonobviousness. In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976).
According to the Federal Circuit, “an applicant relying on
comparative tests to rebut a prima facie case of obviousness must compare
his claimed invention to the closest prior art.” In re DeBlauwe, 736 F.2d
699, 705 (Fed. Cir. 1984) (citation omitted). Although the Specification
describes tests comparing the disclosed coatings to other coatings and
uncoated metal sliding surfaces, there is no indication that these comparative
tests involve the closest prior art. Furthermore, there is no data to support
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the results of the study, and as such, the evidence that merely states the
conclusion of the study has little probative value. Consequently, considering
the totality of the evidence, including evidence of obviousness and
nonobviousness, the combined teachings of Azevedo and Yamamoto render
obvious the subject matter of independent claim 1.
Independent claim 16
We reject independent claim 16 for the same reasons discussed above
in regard to independent claim 1.
Claims 2, 3, 10, 14, and 17
Claims 2, 3, 10, 14, and 17 depend from either independent claim 1 or
independent claim 16. We adopt the Examiner’s rejection of claims 2, 3, 14
and 17 (Final Act. 3—6) as modified by the new grounds of rejection for
independent claims 1 and 16.
Claim 4
Claim 4 depends from independent claim 1, and we adopt the
Examiner’s rejection of claim 4 (Final Act. 3) as modified by the reasoning
presented in the new grounds of rejection for independent claim 1. In doing
so, we note the finding that Azevedo teaches a D50 particle size by volume
from 0.1 to 5.0 microns is not based on paragraph 11, but rather on the
specifications for the DIA-CLUST® coating set forth on the website
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materials by Diamond Composite Technology,3 which Azevedo incorporates
by reference (136).
Claims 5 and 20
Each of claims 5 and 20 recites “wherein the hard particles include at
least one of a metal nitride, metal carbide, metal oxide, metal silicide, metal
boride, metal phosphide, intermetallic compound, metal oxynitrides, metal
carbonitride, metal oxycarbide, and a metal powder of Ag, Pb, Au, SnBi
and/or Cu.” Appeal Br., Claims App. Although Azevedo teaches hard
particles, i.e., diamonds (H 11, 13, 35), Azevedo does not disclose hard
particles including at least one of the materials listed in these claims.
Yamamoto teaches that SiC is a well-known material for use as a
reinforcing material (col. 1,11. 25—31). Yamamoto also explains that
diamond is a reinforcing material (col. 1,1. 67—col. 2,1. 6). It would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify Azevedo’s hard particles by substituting the diamond for SiC
because Yamamoto teaches that diamond and SiC are known reinforcing
materials. See, e.g., KSR, 550 U.S. at 416 (“[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”) (citation omitted).
3 We refer to the copy of the website (www.dia-clust.com/index.html)
included with the Non-Final Office Action mailed April 9, 2014.
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Claim 7
Claim 7 recites “wherein said coating includes said hard particles in
an amount of 0.1 to 20.0 vol. %, based on the total volume of said coating.”
Appeal Br., Claims App. The specifications for Azevedo’s DIA-CLUST®
coating disclose the diamond micro-particle content is 0.05 to 0.50% of the
mass content, but Azevedo does not explicitly disclose the diamond content
is 0.1 to 20.0 vol. % based on the total volume of the coating.
Yamamoto teaches a diamond content between 5 to 50% by volume
(col. 5,11. 19—22). It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the diamond content of Azevedo to
be 0.1 to 20.0 vol. % based on the total volume of the coating to adjust the
strength of the composite, as taught by Yamamoto (col. 1,1. 67—col. 2,1. 6,
col. 5,11. 22-25).
Claim 8
Claim 8 recites “wherein said coating includes said hard particles in
an amount of 3.0 to 8.0 vol. %, based on the total volume of said coating.”
Appeal Br., Claims App. The specifications for Azevedo’s DIA-CLUST®
coating disclose the diamond micro-particle content is 0.05 to 0.50% of the
mass content, but Azevedo does not explicitly disclose the diamond content
is 3.0 to 8.0 vol. % based on the total volume of the coating.
Yamamoto teaches a diamond content between 5 to 50% by volume
(col. 5,11. 19-22). It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the diamond content of Azevedo to
be 3.0 to 8.0 vol. % based on the total volume of said coating to adjust the
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strength of the composite, as taught by Yamamoto (col. 1,1. 67—col. 2,1. 6,
col. 5,11. 22-25).
Claim 9
Claim 9 recites “wherein said polymer matrix includes at least one of
polyarylate, polyetheretherketone (PEEK), polyethersulfone (PES),
polyamide imide (PAI), polyimide (PI), expoxy resin, polybenzimidazole
(PBI), and silicone resin.” Appeal Br., Claims App. Yamamoto teaches the
polymer matrix may include polyimide (col. 5,11. 47—45). For the reasons
discussed above in regard to independent claim 1, it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify Azevedo’s diamond dispersed composite coating by substituting the
chromium matrix, i.e., metal matrix, for a polymer matrix including
polyimide, as taught by Yamamoto.
Claim 12
Claim 12 recites “wherein said coating includes said polymer matrix
in an amount of at least 40.0 vol. %, based on the total volume of said
coating.” Appeal Br., Claims App. The specifications for Azevedo’s DIA-
CLUST® coating disclose the diamond micro-particle content is 0.05 to
0.50% of the mass content, but Azevedo does not explicitly disclose the
volume percentage of the diamond particles or the matrix.
Yamamoto teaches a diamond content between 5 to 50% by volume
(col. 5,11. 19-22). It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the diamond content of Azevedo to
be less than 60% based on the total volume of said coating to adjust the
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strength of the composite, as taught by Yamamoto (col. 1,1. 67—col. 2,1. 6,
col. 5,11. 22—25). Given that the remainder of the composite is the matrix, a
person of ordinary skill in the art would appreciate that adjusting the
diamond content to be less than 60 vol. % based on the total volume of said
coating adjusts the volume content of the matrix to be at least 40% based on
the total volume of said coating.
Claim 18
We reject claim 18 for the reasons discussed above in regard to
claims 2, 3, and 7.
Obviousness over Azevedo, Yamamoto, and Kuroda
Claims 11, 13, and 19
Claims 11, 13, and 19 depend from either independent claim 1 or
independent claim 16. We adopt the Examiner’s rejection of claims 11, 13,
and 19 (Final Act. 7, 9) as modified by the reasons presented in the new
grounds of rejection for independent claims 1 and 16.
Independent claim 15
We adopt the Examiner’s findings regarding the prior art’s teaching of
the limitations of the claim. Final Act. 7—8. For the reasons discussed above
in regard to claims 1—3, 5, 6, 9, and 12, it would have been obvious to one of
ordinary skill in the art at the time of the invention to combine the teachings
of Azevedo and Yamamoto. We adopt the Examiner’s rationale for
modifying the prior art to include the teachings of Kuroda.
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DECISION
The Examiner’s decision to reject claims 1—22 is reversed.
We enter NEW GROUNDS OF REJECTION for claims 1-5 and 7-
20 pursuant to our authority under 37 C.F.R. § 41.50(b). Section 41.50(b)
further provides:
When the Board enters such a non-final decision,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
REVERSED: 37 C.F.R, $ 41.50(b)
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