Ex Parte Kool et al

Board of Patent Appeals and Interferences

Oct 30, 2009

11035327 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAWRENCE BERNARD KOOL, JAMES ANTHONY RUUD,
KENNETH B. POTTER, MYRON CLYDE MUTH, LADD STERLING
LAIRD, and GABRIEL OFORI-OKAI
____________

Appeal 2009-000746
Application 11/035,327
Technology Center 1700
____________

Decided: October 30, 2009
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and JEFFREY
B. ROBERTSON, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 12-28, the only claims pending in the
application (Final Office Action (“Final”), mailed Dec. 8, 2006, 1). We
have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2009-000746
Application 11/035,327

2
We AFFIRM.
STATEMENT OF THE CASE
The invention is directed to a method for chemically removing
aluminum-containing materials from a substrate. (Spec. [0001].) The
method may be used, for example, to remove old aluminum seal strips
during repair of turbine engine components. (Spec. [0004].)
The Examiner maintains (Examiner’s Answer (“Ans.”), mailed Dec.
11, 2007, 3-5)1 and Appellants request review of the following grounds of
rejection (see Appeal Brief (“Br.”), filed Aug. 24, 2007, 3-4):
1. claims 12, 16, 17, and 28 under 35 U.S.C. § 102(b) as
anticipated by Mori (US 3,998,254, issued Oct. 26, 1976);
2. claims 12-21 under 35 U.S.C. § 103(a) as obvious over Nishino
(US 6,024,858, issued Feb. 15, 2000);
3. claim 12 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claim 1 of US 6,793,738, issued
Sep. 21, 2004;
4. claims 12-16 and 22-27 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1, 14-
17, 20, and 21 of US 6,916,429, issued Jul. 12, 2005; and

1 The Examiner has withdrawn the rejections of claims 12-14 under 35
U.S.C. § 102(b) as anticipated by Hallman (US 5,125,989) and of claims 12-
15 under 35 U.S.C. § 102(b) as anticipated by Nishino (US 6,024,858).
(Paper 20071218, mailed Dec. 26, 2007; Ans. 6.) The Examiner has also
withdrawn the nonstatutory obviousness-type double patenting rejections
which were based on US 6,863,738 and US 6,758,914 and the nonstatutory
obviousness-type double patenting rejections of claims 13-27 as being
unpatentable over the claims of US 6,793,738 and of claims 17-21 as being
unpatentable over the claims US 6,916,429. (Compare Final 6-7 with Ans.
5; see also, Paper 20071218.)
Appeal 2009-000746
Application 11/035,327

3
5. claims 12-27 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1-16, 18, and 24-30 of
US 6,833,328, issued Dec. 21, 2004.
Appellants do not advance separate arguments as to any particular
claim or claim groupings. Accordingly, we decide the appeal as to each
ground of rejection on the basis of independent claim 12. See 37 C.F.R. §
41.37(c)(1)(vii) (“When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.”).
Rejection of claims 12, 16, 17, and 28 under
35 U.S.C. § 102(b) as anticipated by Mori

ISSUE
Have Appellants shown reversible error in the Examiner’s finding that
the claim 12 method of contacting a work piece with a chemical composition
to selectively remove an “aluminum-containing material” reads on Mori’s
disclosure of etching an aluminum surface to remove an oxidation film?
We answer this question in the negative.
FINDINGS OF FACT (“FF”)
1. Independent claim 12 reads as follows:
A method for selectively removing an aluminum-
containing material from a work piece, wherein said work piece
comprises a substrate on which said aluminum-containing
material is disposed, said method comprising contacting said
work piece with a chemical composition that comprises a first
compound selected from the group consisting of an acid having
a formula of HxAF6, a precursor thereof, and a mixture of said
Appeal 2009-000746
Application 11/035,327

4
acid and said precursor; wherein A is selected from the group
consisting of Si, Ge, Ti, Zr, Al, and Ga; and x is in a range from
1 to 6, inclusive; said chemical composition is capable of
reacting selectively with an aluminum-containing material,
wherein contact with the workpiece is maintained under time
and temperature conditions sufficient to selectively remove the
aluminum-containing material.

2. The Specification does not explicitly define the phrase
“selectively remove.” (See generally, Spec.) However, the Specification
states that a goal of the invention is “to provide a method for substantially
removing aluminum-containing materials from a substrate without
substantially attacking the substrate itself.” (Spec. [0006].) The
Specification further states that the aluminum-containing materials may be
disposed on a surface of the substrate, or located in a region near the surface
of the substrate. (Spec. [0015].) The Specification defines the term
“aluminum-containing” as “includ[ing] substantially pure aluminum” and
alloys of aluminum. (Spec. [0021].) The aluminum-containing material may
be a coating on a metal substrate. (Spec. [0021].) The Specification defines
“metallic” as “substrates which are primarily formed of metal or metal
alloys,” including aluminum. (Spec. [0031].) The Specification states that
“[t]he actual configuration of [the] substrate may vary widely” and may, for
example, “be in the form of a houseware item (e.g., cookware), or a printed
circuit board substrate.” (Spec. [0034].) To remove the aluminum-
containing material, the substrate may be immersed in a bath of an aqueous
composition comprising at least the primary acid (Spec. [0030]), e.g.,
fluorozirconic acid (see Spec. [0002]). “Usually, the bath is maintained at a
temperature up to about 100 ºC, preferably in the range of about 20 ºC to
about 100 ºC, while the substrate is immersed therein. . . . The immersion
Appeal 2009-000746
Application 11/035,327

5
time may vary considerably, but is usually in the range of about 10 minutes
to about 72 hours.” (Spec. [0030].)
3. The Examiner cites column 1, lines 12-32 of Mori for a
teaching of etching aluminum using Appellants’ claimed composition and
“removing [] smut that includes oxidized film of aluminum (aluminum
oxide), which is aluminum-containing material.” (Ans. 3.)
4. Appellants do not dispute the Examiner’s finding that Mori
discloses a process in which an aluminum surface is contacted with a
chemical composition as recited in appealed claim 12. (Br. 5.) However,
according to Appellants, “[e]tching does not always involve the removal of
material.” (Br. 5.) Appellants assert that “Mori may very well fall under [a]
limited definition of ‘etching’” (Br. 5-6) wherein “[n]o material would be
removed, except for perhaps negligible amounts” (Br. 5).
5. In column 1, lines 12-32, Mori describes a known prior art
method as follows:
Etching the surface of aluminum with an acid or alkali
aqueous solution is conducted in order to remove oils adhering
to the surface of aluminum, an oxidation film which cannot be
removed by degreasing, scales, and stains penetrating into the
aluminum, to smooth a surface-dressed aluminum, to deluster
the surface of the aluminum or to make the surface uniform.
Specific examples of acids and alkalis used in the above
described acid or alkali solutions include, e.g., acids such as
hydrofluoric acid, fluorozirconic acid, . . . etc. In general,
etching is effected by processing the surface of aluminum with
an aqueous solution of the above-described acid or alkali at a
concentration of about 1 to 20 % by weight at a solution
temperature of about 50° to 90° C for 10 seconds to 30 minutes.

Appeal 2009-000746
Application 11/035,327

6
In Mori Examples 1 and 2, etching is effected by immersing
aluminum plates in an aqueous solution comprising an acid. (Col. 4, ll. 45-
48; col. 5, ll. 35-38.)
PRINCIPLES OF LAW
During examination, claim terms must be given their broadest
reasonable construction consistent with the Specification. In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Where the Examiner establishes a reasonable assertion of inherency
and thereby evinces that a claimed process appears to be identical to a
process disclosed by the prior art, the burden is properly shifted to the
applicant to show that they are not. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977).
CLAIM INTERPRETATION
Interpreting claim 12 in light of the Specification (see, e.g., FF 2), we
are in agreement with the Examiner that the “aluminum-containing material”
reads on an oxidation film on an aluminum surface. (See FF 3; FF 2 (citing
Spec. [0021] (aluminum-containing material is not limited to pure
aluminum, and may be a coating on a metal substrate)).) We are further in
agreement with the Examiner that selective removal of the aluminum-
containing material as required by claim 12 encompasses etching to remove
an oxidation film on an aluminum surface. (See FF 3; FF 2 (citing (Spec.
[0030] (removal of the aluminum-containing material may be effected by
immersing the substrate in a bath of an aqueous composition comprising at
least the primary acid)).)
Appeal 2009-000746
Application 11/035,327

7
ANALYSIS
Appellants contend that the Examiner’s findings are not sufficient to
establish that Mori discloses selectively removing an aluminum-containing
material as claimed in claim 12. (FF 4; see also, Br. 5 (“Mori describes a
treatment composition for removing smut from an aluminum surface. The
reference appears to have very little to do with the removal of the aluminum
material itself (e.g., an aluminum layer) from a substrate, as in the present
claims.”).) The underlying basis of Appellants’ argument appears to be that
claim 12 should be more narrowly construed to exclude processes, such as
Mori’s, which are not directed to removing a well-defined layer of
aluminum, e.g. aluminum seal strips from a surface of a gas turbine-engine
blade. However, as indicated above, we are in agreement with the Examiner
that claim 12, given its broadest reasonable interpretation, reads on Mori’s
description of etching an aluminum surface to remove an oxidation film.
(FF 3; FF 5.)
Because Appellants have not clearly explained how the language of
claim 12 defines over the etching process described in Mori, we sustain the
rejection of claims 12, 16, 17, and 28 under 35 U.S.C. § 102(b) as
anticipated by Mori.
Rejection of claims 12-21 under
35 U.S.C. § 103(a) as obvious over Nishino

ISSUE
Have Appellants shown reversible error in the Examiner’s
determination that the claim 12 method of contacting a work piece with a
chemical composition to selectively remove an “aluminum-containing
Appeal 2009-000746
Application 11/035,327

8
material” is suggested by Nishino’s method of etching an aluminum plate to
remove an oxide layer?
We answer this question in the negative.
ADDITIONAL FINDINGS OF FACT
6. Appellants do not dispute that Nishino discloses a process in
which an aluminum surface is contacted with a chemical composition as
recited in appealed claim 12. (See Br. 6-7 (noting that Nishino discloses a
process of etching the surface of an aluminum plate using a composition
containing fluorozirconic acid).) Appellants also concede that Nishino
etches the aluminum plate for the purpose of removing oils and smut. (Br.
7.)
7. Nishino discloses a process of producing an aluminum support
for a planographic printing plate. (Abstract.) According to Nishino, “[t]he
aluminum plate applicable to the invention includes pure aluminum plates
and aluminum alloy plates.” (Col. 11, ll. 40-41.)
8. In rejecting the claims, the Examiner relies on Nishino, column
4, lines 10-16 (Ans. 4 and 6) in which Nishino discloses a “first chemical
etching is conducted . . . for the purpose of removing rolling oil, smuts,
naturally formed oxide layer, etc.” (col. 4, ll. 10-13) using an acidic aqueous
solution which may comprise fluorozirconic acid (col. 4, ll. 13-14).
ANALYSIS
Appellants argue that Nishino “fails to ever suggest a process for
selectively removing an aluminum material from a substrate” as claimed
and, instead, “is directed very specifically to printing plates, and techniques
for modifying the surfaces of those plates.” (Br. 7.) Appellants also rely on
one of the same arguments presented in connection with the rejection based
Appeal 2009-000746
Application 11/035,327

9
on Mori, i.e., that etching does not necessarily involve removing material.
(See Br. 7.)
For reasons similar to those expressed above in connection with the
rejection based on Mori, we are not persuaded of reversible error in the
Examiner’s determination that Nishino’s etching process meets the claim 12
requirement of “selectively removing an aluminum-containing material.”
As indicated in the Claim Interpretation section of this Decision, the
recited “aluminum-containing material” reads on an oxidation film on an
aluminum surface and the claimed selective removal encompasses etching to
remove the oxidation film, i.e., the same process disclosed in Nishino (see
FF 8). We also see no basis in the Specification for limiting the claim term
“substrate” to exclude Nishino’s printing plate. (Compare FF 7 with FF 2
(quoting (Spec. [0034]) (“[t]he actual configuration of [the] substrate may
vary widely” and may, for example, “be in the form of a houseware item
(e.g., cookware), or a printed circuit board substrate”) and (Spec. [0031])
(“substrates which are primarily formed of metal or metal alloys,” including
aluminum)).)
For the foregoing reasons, we sustain the rejection of claims 12-21
under 35 U.S.C. § 103(a) as obvious over Nishino.
Nonstatutory obviousness-type double patenting rejections
As noted by the Examiner, Appellants’ traversal of the Examiner’s
double patenting rejections is limited to their contention that the materials
removed by the methods of the relied-upon references are not “aluminum-
containing material[s]” as recited in the claims. (See Br. 8; Ans. 7.)
Based on our claim interpretation, we are in agreement with the
Examiner that the claim phrase “aluminum-containing material” would
Appeal 2009-000746
Application 11/035,327

10
encompass the materials removed in the methods of the relied-upon
references for the reasons explained on pages 5 and 7 of the Answer.
Appellants have not explained why the appealed claims should be more
narrowly construed to exclude the materials of the references. See In re
Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (noting that Appellants have
the burden on appeal to the Board to demonstrate error in the Examiner's
position). Therefore, we sustain the nonstatutory obviousness-type double
patenting rejections of: claim 12 as being unpatentable over claim 1 of US
6,793,738; claims 12-16 and 22-27 as being unpatentable over claims 1, 14-
17, 20, and 21 of US 6,916,429; and claims 12-27 as being unpatentable
over claims 1-16, 18, and 24-30 of US 6,833,328.
CONCLUSION
The decision of the Examiner rejecting claims 12-18 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)(1).

AFFIRMED

kmm

GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
PATENT DOCKET RM. BLDG. K1-4A59
NISKAYUNA, NY 12309