Ex Parte Killian et al

Patent Trial and Appeal Board

Mar 19, 2018

12684241 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/684,241
86105 7590
Quinn IP Law
21500 Haggerty Road
Suite 300
Northville, MI 48167
01/08/2010
03/21/2018
FIRST NAMED INVENTOR
Michael Lee Killian
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.
08-rCLP178V/EAT0164PUSP 4816
EXAMINER
PADGETT, MARIANNE L
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
adomagala@quinniplaw.com
USDocketing@quinniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MICHAEL LEE KILLIAN, AQUIL AHMAD,
and CLIFTON HIGDON
Appeal2016-003556
Application 12/ 684 ,241
Technology Center 1700
Before MICHAEL P. COLAIANNI, JENNIFERR. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 the final rejection of
claims 1, 3-8, and 16-21. 2 We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to methods of forming a wear-
resistant coating on a metal substrate (Spec. i-f 2; claim 1 ).
Claim 1 is illustrative:
1 According to Appellants, the real party in interest is the Eaton Corporation.
See App. Br. 4.
2 Claims 9-15 are withdrawn from consideration by the Examiner as drawn
to a non-elected invention. Final Office Action mailed February 28, 2013.
Appeal2016-003556
Application 12/684,241
1. A method of forming a wear-resistant coating on a
metal substrate, the method comprising:
depositing a metal alloy onto the metal substrate to form
a cladding;
after the depositing, rough finishing the cladding to
thereby provide the cladding with an average roughness, Ra, of
from about 50 micro-inches to about 150 micro-inches; and
after the rough finishing, work hardening the cladding to
thereby form the wear-resistant coating and a hardened zone
thereof;
wherein the work hardening plastically deforms the
cladding to thereby form the hardened zone, and wherein the
hardened zone has a hardness greater than a hardness of the
metal substrate.
Appellants appeal the following rejections:
1. Claims 1, 8, 16, 17, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tominaga (US 2005/0230010 Al; publ. Oct. 20,
2005) in view of Ganguly (US 2007/0154738 Al; publ. July 5, 2007)
and optionally Metals Handbook (METALS HANDBOOK, 8TH ED., VOL.
2, HEAT TREATING, CLEANING AND FINISHING, 599---610, 661-663
(Taylor Lyman et al., eds., Am. Soc. For Metals (1964))).
2. Claims 1, 3, 4, 6-8, and 16-20 are rejected 35 U.S.C. § 103(a) as
unpatentable over Subramanian (US 6,749,894 B2; iss. June 15, 2004)
in view ofFukubayashi (WO 2007/002017 Al; publ. Jan. 4, 2007) or
Tominaga or Decker (US 4,423,650; iss. Jan. 3, 1984) in view of
Metals Handbook and/or Ganguly in consideration of Ayer
(US 2010/0021761 Al; publ. Jan. 28, 2010).
3. Claims 5 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Subramanian in view of Fukubayashi or Tominaga or Decker in
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Application 12/684,241
further view of Metals Handbook and/or Ganguly and Ayer and
further in view ofMorishige (US 5,387,292; iss. Feb. 7, 1995).
4. Claims 1, 7, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mannava (US 5,675,892; iss. Oct. 14, 1997) in
view of Baladjanian (US 4,285,459; iss. Aug. 25, 1981) and Metals
Handbook.
5. Claims 3, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mannava in view of Baladjanian, Metals
Handbook, and Kirschman (US 2010/0249926 Al; publ. Sept. 30,
2010).
6. Claims 3, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tominaga in view of Metals Handbook, and/or
Ganguly, and Kirschman.
7. Claims 1, 4--8, 16, 17, and 21 are rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable
over claims 1-20 of Killian (US 7,982,459 B2; iss. July 19, 2011) in
view of Subramanian in view of Fukubayashi, Metals Handbook,
and/or Ganguly, and optionally Sue (6,124,564; iss. Sept. 26, 2000).
8. Claims 1, 3-8, and 16-21 are rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 17-20
of copending Application No. 13/097 ,720 3 in view of Subramanian in
view ofFukubayashi, Metals Handbook, and/or Ganguly, Morishige
and optionally Sue.
3 This application issued as U.S. Patent 9,126,130 B2 on September 8, 2015.
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Application 12/684,241
FINDINGS OF FACT & ANALYSIS
REJECTION (1 ): Obviousness
Appellants argue claim 1 only (App. Br. 7-15).
The Examiner's findings and conclusions regarding Tominaga,
Ganguly, and Metals Handbook are located on pages 4 to 10 of the Final
Office Action.
Appellants argue that Tominaga teaches away from a hardened zone,
which has a hardness that is 20% greater than the hardness of the metal
substrate (App. Br. 12, 13). Appellants contend that Tominaga's
paragraph 43 does not specify that the hardened zone is 20% harder than the
steel substrate (App. Br. 12).
The Examiner finds that Tominaga teaches avoiding a particular steel
structure when hardening (i.e., martensite) to prevent cracking and fragility
(Ans. 4). The Examiner finds that Tominaga teaches to increase the
hardness by affecting microstructural changes and that the plastic
deformation caused by ultrasonic deformations occurs at depths of 0.05 mm
to 1.0 mm in the coated steel material (Final Act. 7). The Examiner finds
that "since the ultrasonic caused plastic deformations effect hardening, such
treated surface may be considered consistent with the claimed wear resistant
coating & hardened zone" (Final Act. 7). In other words, the Examiner finds
that Tominaga's ultrasonic treatment to a particular depth in the coated steel
material constitutes forming a hardened layer on top of the steel substrate.
Appellants' arguments do not address specifically this finding of the
Examiner. Nevertheless, the Examiner reasonably finds that Tominaga's
teaching to harden the surface, but avoid the martensitic steel microstructure
would have suggested work hardening the steel to Tominaga's taught depth
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to provide a surface layer having a hardness of at least 20% greater than the
underlying steel substrate. Indeed, Tominaga's paragraph 26 teaches that
the surface hardness increases by not less than 20%. We do not find that
Tominaga teaches away from having a hardened layer as required by the
claim.
Appellants argue that there is no apparent reason to combine the
references (App. Br. 13). Appellants contend that Tominaga teaches to
provide as smooth a surface as possible to avoid stress concentration and
improve fatigue life (App. Br. 14). Appellants argue that Tominaga teaches
roughening the cladding to a greater roughness than that required by the
claims (App. Br. 14). Appellants contend that Ganguly teaches an average
roughness of less than 24 micro-inches which is also outside the claimed
roughness range (i.e., about 50 to about 150 micro-inches) (App. Br. 14).
Appellants argue that one of ordinary skill would not have combined the
teachings of Tominaga, Ganguly, and Metals Handbook because doing so
would have resulted in a cladding having too high an average roughness
after rough finishing (App. Br. 15; Reply Br. 6).
The Examiner responds that reasons to combine the teachings of
Tominaga, Ganguly, and the Metals Handbook are provided and have not
been disputed by Appellants (Ans. 4). The Examiner finds that Appellants
do not discuss the Examiner's finding that Ganguly teaches that the critical
roughness for producing abrasion resistant coatings varies depending on the
metal composition (Ans. 4--5). The Examiner finds that the teachings of the
references indicate that the roughness of the metal is a result-effective
variable (Ans. 5; Final Act. 8-9). Appellants argue that their arguments in
the principal Brief directed to Ganguly's teaching to eliminate rough
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Application 12/684,241
finishing a cladding altogether addresses the Examiner's result effective
variable rationale (Reply Br. 6-7). We do not perceive Appellants'
argument directed to Ganguly's teaching to avoid roughening a cladding as
addressing whether roughness is a result-effective variable. Ganguly teaches
an alternative to using grinding or polishing to achieve the surface
roughness, but such a teaching does not undermine the Examiner's finding
that roughness is a result-effective variable. To the contrary, Ganguly
teaches a "critical roughness" on the coating surface to achieve a desired
abrasion resistance (i-fi-f 12, 31 ). In other words, Ganguly recognizes the
criticality of surface roughness as a variable to control.
In light of Appellants' failure to show reversible error in the
Examiner's finding that roughness is a result-effective variable that would
have been optimized to a roughness within the claimed range, and the
Examiner's stated reasons for modifying Tominaga in view of the teachings
of Ganguly and Metals Handbook in the Final Office Action and Answer,
we affirm the Examiner's§ 103(a) rejection over Tominaga in view of
Ganguly and Metals Handbook.
REJECTION (2): Obviousness
Appellants' arguments focus on claim 1 only (App. Br. 15-20).
The Examiner's rejection over Subramanian in view of Fukubayashi,
Tominaga, Decker, Metals Handbook, Ganguly, and Ayer is located on
pages 10-19 of the Final Office Action.
Appellants argue that there is no apparent reason to combine the
references so as to modify Subramanian (App. Br. 18). Appellants argue
that the combined teachings do not teach the order of steps recited in method
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claim 1 (App. Br. 18). Appellants argue the same unpersuasive teaching
away argument regarding Tominaga, Ganguly, and Metals Handbook (App.
Br. 18). Appellants contend that Ayer does not teach work hardening the
cladding to, thereby, form the wear-resistant coating and a hardened zone
thereof (App. Br. 19). Appellants contend that Ayer teaches that a non-
ferrous weld material such as nickel-based alloy between two pieces to be
welded together will undergo plastic deformation due to the solidification
shrinkage caused by the temperature change (App. Br. 19). Appellants
argue that one of ordinary skill in the art would not find Subramanian and
Ayer suitable to teach that tempering heating techniques cause work
hardening via plastic deformation as required by claim 1 (App. Br. 19).
The Examiner finds that Ayer teaches that tempering includes plastic
deformation at the weld joints (Final Act. 12). The Examiner finds that the
plastic deformations are "directly relat[ed] to use of heating & the
subsequent cooling to effecting plastic deformations that result in strain
hardening, also called work hardening" (Final Act. 12). The Examiner finds
that based on the similarity of materials used in Subramanian and Ayer, the
tempering would have been expected to cause work hardening via plastic
deformation to the material (Final Act.12). The Examiner finds that
Appellants unduly focus on the welds in Ayer (Final Act. 12).
Appellants do not respond to or provide any evidence to refute the
Examiner's reasonable finding that the plastic deformation achieved in Ayer
by the solidification shrinkage would have been expected in Subramanian's
coating given the similarity of the materials in each reference (Reply Br. 7).
Rather, Appellants merely state they disagree with the Examiner's
characterization of the prior art (Reply Br. 7). Appellants have not carried
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their burden of showing that Subramanian's tempering step would not have
resulted in plastic deformation and strain hardening of the NiCrSiX coating
on the steel tube as Ayer teaches would happen for Ni-Cr containing
compositions welded to a ferrous material. In re Best, 562 F.2d 1252, 1255
(CCPA 1977).
Appellants argue that Decker does not teach rough finishing the
cladding to a roughness between about 50 to 150 micro-inches (App. Br.
20). Appellants contend that this failure in Decker shows that there is no
reason to modify Subramanian with the teachings of the applied references
(App. Br. 20).
Appellants' arguments are not persuasive because the Examiner relies
on Metals Handbook and Ganguly to suggest the particular range of
roughness used for initial shaping and smoothing operations (Final Act. 17).
The Examiner finds Decker to teach methods of smoothing surfaces (Final
Act. 16-17). Accordingly, Decker's silence as to the roughness of the
material is not dispositive because the teachings of the references as a whole
would have suggested the claimed roughness range.
On this record, we affirm the Examiner's§ 103(a) rejection over
Subramanian in view ofFukubayashi, Tominaga, Decker, Metals Handbook,
Ganguly, and Ayer.
REJECTION (3): Obviousness
The Examiner's findings and conclusions regarding the§ 103(a)
rejection of claims 5 and 21 are located on pages 19--21 of the Final Office
Action.
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Appellants rely on the same unpersuasive arguments made regarding
rejection (2) (App. Br. 22). We remain unpersuaded with regard to those
arguments. Appellants additionally argue that Morishige does not cure the
argued deficiencies of the combination of references used in rejection (2)
(App. Br. 22). Appellants contend that Morishige's first surface finishes the
tube and then coats it, which is the opposite of the claims (App. Br. 22).
Appellants' arguments have not shown reversible error with the
Examiner's stated rejection. The Examiner relies on Morishige to teach
using laser cladding to form a coating on pipes (Final Act. 19-20).
Appellants' arguments do not address the Examiner's reason for using
Morishige in the rejection.
On this record, we affirm the Examiner's§ 103(a) rejection over the
combined teachings of Subramanian, Fukubayashi, Tominaga, Decker,
Metals Handbook, Ganguly, Ayer, and Morishige.
REJECTION (4): Obviousness
Appellants' arguments are focused on claim 1 only (App. Br. 24--25).
The Examiner's findings and conclusions regarding Mannava,
Baladjanian, and Metals Handbook are located on pages 22 to 23 of the
Final Office Action.
Appellants argue there is no apparent reason to combine the
references (App. Br. 24). Appellants contend that Mannava and Baladjanian
do not teach that after depositing the cladding, rough finishing the cladding
to a roughness of about 50 to about 150 micro-inches (App. Br. 24--25).
Appellants contend that Baladjanian is directed to removing excess braze
from crack repairs in superalloys, which would not have taught or suggested
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the rough finishing to a roughness within the claimed roughness range (App.
Br. 25).
Appellants' arguments are not persuasive because the Examiner relies
on the Metals Handbook to teach suitable grit sizes for finishing welds such
as in Baladjanian with a reasonable expectation that the grit sizes would
produce a roughness within the claimed range (Final. Act. 23). Appellants'
arguments do not respond to or show that the Examiner reversibly erred in
determining that the combined teachings of Mannava, Baladjanian and
Metals Handbook would have suggested the claimed roughness. We affirm
the Examiner's§ 103(a) rejection over Mannava in view of Baladjanian and
Metals Handbook.
REJECTIONS (5) AND (6): Obviousness
The Examiner's findings and conclusions regarding rejections (5) and
( 6) are located on pages 23-24 of the Final Office Action.
Appellants argue that there is no reason to combine Kirschman with
Mannava, Baladjanian, and Metals Handbook (App. Br. 26-30). Appellants
contend that Kirschman does not cure the argued deficiencies with regard to
the combination ofMannava, Baladjanian, Metals Handbook, or the
combination of Tominaga, Ganguly, and Metals Handbook (App. Br. 28,
30).
The Examiner has provided reasons for combining the teachings of
Kirschman with Mannava or Tominaga (Final Act. 24). Appellants do not
specifically contest or show reversible error with the Examiner's reason for
combining the teachings of Kirschman's laser peening with Mannava or
Tominaga. The Examiner finds that Kirschman's laser peening is a
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functional equivalent to roller burnishing, such that it would have been an
obvious work hardening technique (Final Act. 24).
On this record, we affirm the Examiner's§ 103(a) rejections (5) and
(6).
REJECTION (7): Obviousness-type Double Patenting
Appellants argue that claims in the U.S. Patent to Killian do not
significantly overlap with the claimed subject matter (App. Br. 32).
Appellants contend that because the claims do not overlap significantly, it
would not have been obvious to modify Killian's claims in view of
Subramanian, Fukubayashi, Metals Handbook, Ganguly, and Sue to arrive at
the present claims (App. Br. 32).
Although Appellants allege that the there is no significant overlap
between Killian's claims and the present application, the only difference
discussed by Appellants is that Killian is directed to a method of detecting a
position and damage of a cylinder rod, whereas Appellants' claim 1 is
directed to a method of forming a wear resistant coating on a metal substrate
(App. Br. 31). Appellants, however, do not address any of the Examiner's
specific findings or reasoning regarding the combination of Subramanian,
Fukubayashi, Metals Handbook, Ganguly, and Sue with the subject matter of
Killian's claims (App. Br. 32; Final Act. 25-27). Appellants have not
shown that the Examiner reversibly erred in the findings and conclusions
regarding the obviousness-type double patenting rejection over Killian. We
affirm the rejection.
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REJECTION (8): Provisional Obviousness-type Double Patenting
The Examiner provisionally rejected claims 1, 3-8, and 16-21 over
claims in copending U.S. Application 13/097,720 in view of Subramanian,
Fukubayashi, Metals Handbook, Ganguly, Morishige, and Sue (Final Act.
27). Upon further inspection, U.S. Application 13/097,720 issued as US
Patent 9,126,130 B2 on September 8, 2015. Because the application upon
which the rejection was based has issued into a patent, the scope of the
claims in the issued patent may differ from those in U.S. Application
13/097,720. We, therefore, decline to reach the provisional rejection.
Ex parte Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010) (Precedential). The
Examiner should consider the propriety of rejecting the claims over the
claims in U.S Patent 9,126,130 B2 upon return of jurisdiction to the
Examiner.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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