Ex Parte Monteiro et al

Patent Trial and Appeal Board

Feb 11, 2019

14490214 (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/490,214 09/18/2014
91524 7590 02/13/2019
Traskbritt, P.C. / Baker Hughes, Inc.
Baker Hughes, Inc.
P.O. Box 2550
Salt Lake City, UT 84110
FIRST NAMED INVENTOR
Othon R. Monteiro
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.
1684.04-12535(ENT4-54240- 9106
EXAMINER
MCCLURE, CHRISTINA D
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
02/13/2019 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):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OTHON R. MONTEIRO, OLEG A. MAZY AR,
and VALERYN. KHABASHESKU
Appeal2018-003655
Application 14/490,214
Technology Center 1700
Before TERRY J. OWENS, DEBRA L. DENNETT, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant (Baker Hughes Incorporated) appeals under
35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-13 and 15-21.
We have jurisdiction under 35 U.S.C. § 6(b ).
The Invention
The claims are to a method for coating a substrate. Claim 1 is
illustrative:
1. A method of coating a substrate, comprising:
dispersing functionalized diamond nanoparticles in a
fluid comprising cations and anions to form a deposition
composition, wherein the cations comprise metal ions, wherein
the functionalized diamond nanoparticles comprise at least one
Appeal2018-003655
Application 14/490,214
functional group selected from the group consisting of carboxy,
epoxy, ether, ketone, amine, hydroxy, alkoxy, alkyl, aryl,
aralkyl, alkaryl, lactone, polymeric groups, oligomeric groups,
quaternary ammonium groups, quaternary phosphonium
groups, tertiary sulfonium groups, alkyl pyridinium groups,
primary amines, secondary amines, tertiary amines, aminoethyl,
dimethylaminoethyl, diethylaminoethyl, guanidinium, and
imidazolium, and wherein the functionalized diamond
nanoparticles exhibit a net positive charge;
disposing a portion of the deposition composition over at
least a portion of a substrate; and
electrochemically depositing a coating over the substrate,
the coating comprising the diamond nanoparticles and a metal
formed by reduction of the metal ions in the deposition
composition.
Christini
Gal-Or
Fujimura
Khabashesku
Mazyar
The References
US Re. 33,767
US 6,258,237 B 1
US 2003/0228249 Al
US 2005/0158549 Al
US 2013/0081335 Al
Dec. 10, 1991
July 10, 2001
Dec. 11, 2003
July 21, 2005
Apr. 4, 2013
Helen H. Lou & Yinlun Huang, Encyclopedia of Chemical Processing:
Electroplating 1-10 (Taylor & Francis 2006) (hereinafter Lou).
Steel - definition of steel, The Free Dictionary,
http://www. thefreedictionary .com/ steel (hereinafter Steel).
Todd Helmestine, Periodic Table of the Elements, chemistry.about.com
(2014).
The Rejections
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
claims 1, 4, 5, 7, 8, 11-13, 15, 16, and 19-21 over Reusmann in view of
Gal-Or, Khabashesku, and Mazyar; claim 9 over Reusmann in view of
Gal-Or, Khabashesku, Mazyar. and Steel; claims 2, 3, 6, 17, and 18 over
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Appeal2018-003655
Application 14/490,214
Reusmann in view of Gal-Or, Khabashesku, Mazyar, Fujimura and
Helmenstine; claims 6, 10, and 17 over Reusmann in view of Gal-Or,
Khabashesku, Mazyar, and Christini; claims 1-8, 11, and 15-18 over
Fujimura in view of Lou, Gal-Or, and Mazyar; claim 9 over Fujimura in
view of Lou, Gal-Or, Mazyar, and Steel; claim 21 over Fujimura in view of
Lou, Gal-Or, Mazyar, and Helmenstine; claim 10 over Fujimura in view of
Lou, Gal-Or, Mazyar, and Christini; and claim 13 over Fujimura in view of
Lou, Gal-Or, Mazyar, and Khabashesku.
OPINION
We affirm the rejections. The Appellant argues the claims in the
following groups: 1) the claims in which Reusmann is the primary reference
(Br. 11-18), and 2) the claims in which Fujimura is the primary reference
(Br. 18-23). The Appellant addresses some dependent claims under
separate headings, but does not provide a substantive argument as to the
separate patentability of those claims (Br. 14--18, 21-23). We therefore
limit our discussion to one claim in each group, i.e., claim 1. Claims 2-13
and 15-21 stand or fall with that claim. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2012).
Rejections in which Reusmann is the primary reference
Reusmann electrochemically coats a workpiece by precipitating
aluminum alone or in combination with one or more other metals from a
metal ion-containing ionic liquid which also can contain particles which can
be diamond nanoparticles (i1i112, 36, 41, 42, 48, 59). "The particles are
preferably suspended in the liquid, i.e., they do not sink but rather float in it"
(i-f 37). If the particles do not remain suspended homogeneously in the ionic
liquid but, rather, sink to the bottom or float to the top depending upon their
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Application 14/490,214
density relative to that of the ionic liquid, the particle-containing ionic liquid
can be mixed before, during, or after the electrochemical precipitation of the
metal from the ionic liquid (i1i152-55). "[T]he metal layer precipitated on
the workpiece forms a type of matrix, into which the particles are integrated"
(i138).
Gal-Or imparts a positive charge to diamond nanoparticles so that
when an electric field is imposed on them during electrophoresis, they are
attracted to and deposited on a negatively-charged electrode (col. 10, 11. 36-
45, 61---63; col. 11, 11. 33--40).
Khabashesku functionalizes diamond nanoparticles with functional
groups which can be "a variety of organic groups, e.g., alkyl, aryl, or those
terminated with hydroxyl, carboxyl or amino moieties" (i-f 35) to improve the
diamond nanoparticles' ability to form stable suspensions in solvents in
applications including coatings (i1i1 13, 36, 49).
Mazyar functionalizes diamond nanoparticles with "functional groups
comprising alkyl, alkenyl, alkynyl, carboxyl, hydroxyl, amino, amido,
epoxy, keto, alkoxy, ether, ester, lactones, metallic groups, organometallic
groups, polymeric groups, ionic groups, or a combination comprising at least
one of the foregoing" (i-f 62). The functional groups provide the diamond
nanoparticles with positive, neutral, or negative charge and enable the
diamond nanoparticles to be substantially homogeneously dispersible with
carbon-coated metal nanoparticles (i1i1 4, 62, 63, 68).
The Appellant asserts that "the process of Gal-Or uses particles
charged with protons (hydrogen atoms), and Khabashesku teaches covalent
modification of nanodiamond" (Br. 12), and "[t]here is no teaching or
suggestion that [Gal-Or's and Khabashesku's] processes are similar in any
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Appeal2018-003655
Application 14/490,214
way that would make substitution of one for the other an obvious variation"
(Br. 12-13).
The Examiner relies upon Gal-Or's disclosure of net positive charged
diamond nanoparticles not for similarity with Khabashesku' s functionalized
diamond nanoparticles but, rather, for a reason to give functionalized
diamond nanoparticles a net positive charge, i.e., so they would be attracted
along with Reusmann's metal cations to the cathode (Ans. 6, 28-29).
The Appellant argues, in reliance upon a Declaration under
37 C.F.R. § 1.132 by Othon R. Monteiro, that "a person of ordinary skill in
the art would not have expected that the teachings of Mazyar and
Khabashesku would provide any benefit to the process of Reusmann,
because the electric current of Reusmann would be expected to form
aggregates and destabilize the suspensions" (Br. 13-14).
Monteiro asserts that 1) in an applied external electric field, Mazyar's
and Khabashesku's net-positive-charged functionalized nanoparticles would
be aggregated by anions to form heavier particles that fall from the solution,
thereby destabilizing the suspension, and 2) if Reusmann's diamond
nanoparticles had a net positive charge, anions would concentrate around
them such that they no longer have a net positive charge and, therefore,
would tend to agglomerate and precipitate out of the suspension (Deel. ,r,r 7,
8, 10).
Monteiro' s assertion are unpersuasive due lacking evidentiary
support. Also, Monteiro does not explain how the Appellant's net-positive-
charged functionalized diamond nanoparticles differ from those of Mazyar
and Khabashesku in a way that causes the Appellant's net-positive-charged
functionalized diamond nanoparticles, but not those of Mazyar and
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Application 14/490,214
Khabashesku, to not be agglomerated by anions in an electric field such that
they precipitate from the suspension.
Rejections in which Fujimura is the primary reference
Fujimura functionalizes ultra-dispersed diamond (UDD) nanoparticles
"with many active functional groups such as -COOR, ---C-0---C-, -CHO,
and-OH and the like groups" (i1i13, 394) and adds the functionalized UDD
particles to a metal electroplating, electroless plating, or electro-forming
solution (i1i1155-157, 317,318). "[T]he [functionalized] UDD particles can
hardly be aggregated and precipitated as compared with the conventional
diamond particles and they are dispersed and suspended in stable state in
aqueous suspension" (i-f 322).
The Appellant asserts that "the process of Gal-Or uses particles
charged with protons (hydrogen atoms), and Mazyar teaches nanodiamond
having grafted polymer chains thereon" (Br. 20), and "[t]here is no teaching
or suggestion that [Gal-Or's and Mazyar's] processes are similar in any way
that would make substitution of one for the other an obvious variation" (id.).
That assertion is not convincing for the reason given above with
respect to the asserted substitution regarding Gal-Or and Khabashesku.
The Appellant argues, in reliance upon the Monteiro Declaration, that
"a person of ordinary skill in the art would not have expected that the
teachings of Mazyar and Khabashesku would provide any benefit to the
process of Fujimura, because the particles of Fujimura would behave
differently if they were charged, and would not have been expected to have
been useful in the process of Fujimura" (Br. 20).
Monteiro asserts that Fujimura "teaches a stable suspension of
ultradispersed diamond useful for electroplating, electroless plating, and
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Application 14/490,214
electro-forming. If the ultradispersed diamond particles were functionalized
to have a net positive charge, the particles would not behave the same in the
electrochemical process" (Deel. ,r 12).
The Examiner finds that functionalizing Fujimura's functionalized
UDD particles such that they have a net positive charge would provide the
benefit of causing them to be attracted along with metal cations to the
cathode (Ans. 21-22). Because the Examiner's finding is reasonable and the
Appellant has not challenged it, we accept it as fact. See In re Kunzmann,
326 F.2d 424,425 n.3 (CCPA 1964).
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION
The Examiner's decision rejecting claims 1-13 and 15-21 under
35 U.S.C. § 103(a) 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).
AFFIRMED
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