Ex parte Mishima et al.

Board of Patent Appeals and Interferences

Oct 30, 1998

07962035 (B.P.A.I. Oct. 30, 1998)

Application for patent filed October 15, 1992. 1
According to appellants, this application is a continuation of
Application 07/651,610 filed February 6, 1991, now abandoned.
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journal and (2) is not binding precedent of the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.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte AKIO MISHIMA and NAOTO KOJIMA
____________
Appeal No. 95-2255
Application No. 07/962,0351
____________
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 from the final rejection
of claims 3, 10 and 11. The only other claim remaining in the
Appeal No. 95-2255
Application No. 07/962,035
2
application, which is claim 12, stands withdrawn from further
consideration as being drawn to a nonelected invention.
The subject matter on appeal relates to a method of
processing the surface of a workpiece wherein a carrier gas
stream containing submicron particles (with a hardness greater
than the hardness of the workpiece surface) is blown against
the workpiece surface at a velocity not less than 50 m/sec
with an incident angle to a perpendicular of the surface being
less than 40° to cause deposition of a layer of the material
of said particles. Further details of this appealed subject
matter are set forth in representative independent claim 10
which reads as follows:
10. A surface processing method comprising the steps of
providing a workpiece having a surface to be processed;
forming a carrier gas stream containing submicron particles
having an average particle size in the range of between 0.01
and 3.0 Fm, said particles being of a material with a hardness
greater than a hardness of the surface of the workpiece; and
then blowing said carrier gas stream at a velocity not less
than 50 m/sec against the surface of the workpiece with an
incident angle to a perpendicular of the surface being less
than 40° to cause deposition of a layer of the material of
said particles.
The reference relied upon by the examiner as evidence of
obviousness is:
Appeal No. 95-2255
Application No. 07/962,035
3
Forestek 4,051,275 Sep. 27,
1977
All of the appealed claims stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Forestek.
For a complete exposition of the opposing viewpoints
expressed by the appellants and the examiner concerning the
above noted rejection, we refer to the Brief (Paper No. 26),
the Reply Brief (Paper No. 28) and to the Answer (Paper No.
27) and the Examiner's Communication in response to the Reply
Brief (Paper No. 32).
OPINION
This rejection cannot be sustained.
Forestek discloses an improvement to a known process of
depositing particles onto a workpiece surface. In the known
process, the surface is heated to expand the size of the
fissures or pores therein, particles are then deposited in the
expanded fissures or pores and subsequently the surface
temperature is lowered whereby the particles are locked into
the now retracted fissures or pores by interference fit (e.g.,
see lines 1 through 11 of the Abstract). Patentee teaches
Appeal No. 95-2255
Application No. 07/962,035
4
improving this known process by subjecting the so-treated
surface to a blasting fluid stream carrying finely divided
particles applied at a pressure so as to compact the particles
in the fissures or pores after which the original treatment is
repeated thereby locking additional particles in the fissures
and improving the useful life of the treated surface (e.g.,
see lines 11 through 22 of the Abstract).
The examiner considers the blasting fluid stream
operation of Forestek to generally correspond to the here
claimed surface processing method. In this regard, the
examiner points out that the particles used in this operation
may be in the size range claimed by the appellants and may
possess a hardness greater than the hardness of the workpiece
surface as required by the independent claim on appeal.
Although the examiner acknowledges that the Forestek reference
contains no disclosure of the here claimed velocity or
incident angle features, he concludes that it would have been
obvious for one with ordinary skill in the art to effect
patentee's blasting fluid stream operation using velocities
and incident angles within the ranges defined by appealed
Appeal No. 95-2255
Application No. 07/962,035
5
independent claim 10. In these respects, see pages 3 and 4 of
the Answer.
We cannot agree with the examiner's conclusion that the
appellants' claimed method would have been obvious over the
disclosure of Forestek. As correctly indicated by the
appellants, the goal of patentee's blasting fluid stream
operation differs from that of the here claimed method.
Specifically, the goal of patentee's operation is "to compact
the particles in the fissures" (Abstract, lines 14-15) whereas
the goal of the appellants' claimed method is "to cause
deposition of a layer of the material of said particles"
(independent claim 10, last line). We appreciate that some of
the particles in Forestek's blasting stream may become lodged
permanently in the fissures (see lines 6 through 11 in column
2). However, the Forestek reference contains nothing to
support the proposition that such lodged particles may be
properly regarded as corresponding to the layer of the
material of particles which are deposited by the appellants'
claimed method. Thus, because the goals and consequences of
patentee's operation are dissimilar from those of the here
claimed method, there is no adequate support for the
Appeal No. 95-2255
Application No. 07/962,035
6
examiner's basic position that it would have been obvious to
practice Forestek's operation using parameters such as
velocity and incident angle (about which patentee is silent)
that correspond to those defined by appealed claim 10.
In short, the record before us does not support a
conclusion that the blasting fluid stream operation of
Forestek would cause deposition of a layer of the material of
the particles as required by appealed claim 10 or that the
parameters necessary to achieve the compaction goal of this
operation would correspond to those for achieving the
deposition goal of the method defined by the claims on appeal.
It follows that we cannot sustain the examiner's § 103
rejection of claims 3, 10 and 11 as being unpatentable over
Forestek.
The decision of the examiner is reversed.
REVERSED
Appeal No. 95-2255
Application No. 07/962,035
7
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHUNG K. PAK )
Administrative Patent Judge )
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