Ex Parte Russell et al

Patent Trial and Appeal Board

Oct 1, 2018

12795011 (P.T.A.B. Oct. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/795,011 06/07/2010
63759 7590 10/03/2018
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
James C. Russell
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.
10-0065-US-NP 1138
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/03/2018 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES C. RUSSELL, TRESHA L. WHITE, BRYAN SHIFLETT,
PAZION CHERINET, SCOTT WADLEY, CAROL BARNHART,
VYACHESLA V KHOZIKOV, and KYLE NAKAMOT0 1
Appeal 2017-011141
Application 12/795,011
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-9, 11-14, 29-33, 61---64, and 66-72. We have
jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Pursuant to our authority
under 37 C.F.R. § 41.50(b), we also enter a NEW GROUND OF
REJECTION under 35 U.S.C. § 103(a).
1 According to the Appellants, the Real Party in Interest is The Boeing
Company. App. Br. 2.
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BACKGROUND
The subject matter on appeal relates to thermal barrier coatings
comprising nanoparticles and a glassy matrix material. E.g., Spec. ,r 1;
Claim 1. Claim 1 is reproduced below from page 23 ( Claims Appendix) of
the Appeal Brief ( some paragraph breaks added):
1. A coating on a substrate, wherein the coating is configured to
manage flow of heat in a preselected range of temperatures, the
coating comprising:
a glassy matrix material; and
an array comprising a plurality of metal nano-particles,
the array held in the glassy matrix material,
a distance between each of the plurality of metal nano-
particles in the array being substantially equal to wavelength
of phonons transporting heat through the coating,
wherein particle size of the plurality of nano-particles is
configured based on the preselected range of temperatures, and
wherein the glassy matrix material is configured to exhibit
phonon mean free path lengths at least as long as the
wavelength of phonons transporting heat through the coating.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 1--4, 8, 13, 14, 62---64, and 66---69 under 35 U.S.C. § I02(b)
as anticipated by Ganti (EP 1 844 863 Al, published Oct. 17, 2007);
2. Claims 5, 29--32, 61, and 70-72 under 35 U.S.C. § I03(a) as
unpatentable over Ganti and Burton (WO 2008/060699 A2, published
May 22, 2008);
3. Claims 6 and 7 under 35 U.S.C. § I03(a) as unpatentable over
Ganti and Murray (US 3,380,846, issued Apr. 30, 1968);
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4. Claim 9 under 35 U.S.C. § I03(a) as unpatentable over Ganti and
Gray (US 2005/0112399 Al, published May 26, 2005);
5. Claims 11 and 12 under 35 U.S.C. § I03(a) as unpatentable over
Ganti, Murray, and Burton;
6. Claim 33 under 35 U.S.C. § I03(a) as unpatentable over Ganti,
Burton, and Murray.
ANALYSIS
After review of the cited evidence in the appeal briefs and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final
Act. 2-16; Ans. 2-25. Pursuant to our authority under 37 C.F.R. § 4I.50(b ),
we also enter a new ground of rejection under 35 U.S.C. § I03(a).
Rejection 1
The Appellants separately address claims 1, 66, 67, 68, and 69. See
App. Br. 7-13. We address those claims below. The remaining claims
subject to Rejection 1 will stand or fall with the claim from which they
depend. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1. The Examiner finds that Ganti discloses a coating on a
substrate in which the coating comprises a glassy matrix material with metal
nano-particles dispersed therein. Final Act. 2.
Concerning the limitation that "a distance between each of the
plurality of metal nano-particles" is "substantially equal to wavelength of
phonons transporting heat through the coating," the Examiner finds that,
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because Ganti discloses an embodiment in which nanoparticles have the
same spacing (100 nm) as an embodiment disclosed by the Specification,
" [that] embodiment of Gan ti necessarily discloses the particle spacing
limitation, because 100nm spacing inherently is 'substantially equal to
wavelength of phonons transporting heat through the coating."' Id. at 2-3.
Concerning the limitations that "particle size of the plurality of nano-
particles is configured based on the preselected range of temperatures," and
"the glassy matrix material is configured to exhibit phonon mean free path
lengths at least as long as the wavelength of phonons transporting heat
through the coating," the Examiner finds that Ganti's coating "compris[es]
structure and materials identical to those as presently claimed" and
necessarily meets those limitations. Id. at 3.
The Appellants raise several arguments in opposition to the rejection,
which we address in tum below.
1. In the Appeal Brief, the Appellants first argue that Ganti does not
disclose a glassy matrix material. 2 App. Br. 8. The Appellants' argument
focuses on whether substrate 110 of Ganti constitutes a glassy matrix, and
the Appellants argue that it does not because substrate 110 is "rough or
uneven, and thus not glassy." Id. The Appellants further argue:
2 In a previous appeal involving this application, the Appellants did not
contest the Examiner's finding that Ganti discloses a glassy matrix. See
generally Appeal Brief dated March 18, 2013. Although the Examiner's
rejections were reversed for other reasons as a result of that appeal, the
Board entered a new ground of rejection. See Decision dated August 28,
2015, at 16-18. In entering the new ground, the Board adopted the
Examiner's findings (which, at that time, had not been contested) concerning
Ganti's disclosure of a glassy matrix material. Id. at 16.
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Furthermore, paragraph 19 of Ganti only discloses that
"Substrate 110 may comprise at least one of a metal, an alloy, a
plastic, a ceramic, or any combination thereof' and "may take
the form of a film, a sheet, or a bulk shape." However, Ganti
gives no indication that the surface is a "glassy matrix," as
claimed.
Id. Although the Appellants acknowledge that the Examiner relies on
Ganti' s "coating structure" and "materials identical to those presently
claimed" (i.e., ceramic), the Appellants argue the Examiner's findings are
incorrect "for the reasons given above," i.e., the arguments concerning
Ganti's substrate. See id.
Those arguments are not persuasive because they do not meaningfully
address the Examiner's rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... "); In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art."). The paragraphs
cited by the Examiner do not solely concern Ganti's substrate, and the most
reasonable understanding of the Examiner's rejection is that the Examiner is
not relying on Ganti' s substrate as corresponding to the claimed glassy
matrix. See Final Act. 2-3.
Rather, the rejection cites paragraphs 18, 21, 24, and 31 of Ganti,
which describe "[s]urface 120" that may be a polymer or a ceramic, and
substrate 110 that may also be ceramic. Ganti ,r,r 18, 19. Paragraph 20
discloses that surface 120 may be integral with the substrate or "may
comprise a layer that is disposed or deposited onto" the substrate. Id. ,r 20.
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Paragraph 21 discloses that the surface includes a "plurality of features,"
which may be "substantially spherical features," and it specifically discloses
an embodiment in which "spherical or sphere-like features, each having a
diameter of about 100 nm, are spaced about 100 nm apart." Id. ,r 21.
Paragraph 24 references Figure 5 and discloses that the features may be "a
plurality of nanoparticles ... deposited on" a substrate, over which a coating
of polymer is applied. Id. ,r 24. Paragraph 31 describes an embodiment in
which a plurality of nanoparticles is combined with a ceramic precursor to
form a slurry, which is then applied to a substrate and "heated to convert the
ceramic precursor into a ceramic, such as, but not limited to an oxide,
carbide, nitride, silicide, or combinations thereof, thereby forming a
textured, low-wettability surface comprising the plurality of nanoparticles
embedded in a ceramic coating." Id. ,r 31.
In view of the Examiner's findings and citations to Ganti, the most
reasonable understanding of the Examiner's rejection is that the Examiner
was relying on Ganti's ceramic coating (in which nanoparticles are
embedded) as Ganti's glassy matrix. See Final Act. 2-3. In focusing their
arguments on Gan ti's substrate, and failing to meaningfully address the
disclosures of Ganti discussed above, the Appellants fail to identify
reversible error in the Examiner's determination that Ganti's ceramic coating
in which nanoparticles are embedded corresponds to the claimed glassy
matrix. See Jung, 637 F.3d at 1365.
Additionally, although the Appellants assert that if something is
"rough or uneven," it is "not glassy," they provide no evidence in support of
that assertion. See App. Br. 8; see also In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) ("Attorney's argument in a brief cannot take the place of
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evidence."). And, although the Appellants assert that "Ganti gives no
indication that the surface is a 'glassy matrix,"' id., that naked assertion fails
to address the Examiner's finding that, because Ganti discloses ceramic
coatings in which nanoparticles are embedded, and the Appellants' claim 8
recites that "the glassy matrix material is a ceramic," Gan ti's ceramic
coating falls within the scope of the term "glassy matrix material." See Final
Act. 3 (finding that the materials of Ganti are "identical to those as presently
claimed" and that "Ganti teaches glassy matrix material identical to that
presently claimed"); see Lovin, 652 F.3d at 1357. Accordingly, the
arguments presented in the Appeal Brief fail to show reversible error in the
Examiner's determination that Ganti teaches a glassy matrix material. In
view of Ganti' s disclosures, a person of ordinary skill in the art would have
at once envisaged a ceramic coating in which metal nanoparticles are
embedded, the nanoparticles being about 100 nm in diameter and being
spaced apart by about 100 nm. See Ganti ,r,r 18-21, 24, 31.
In the Reply Brief, the Appellants raise the following new arguments:
( 1) "Just because Ganti discloses a ceramic does not mean that it is a glassy
matrix" because, according to the Appellants, "most ceramics [are] not
glassy," (2) "Ganti discloses many materials for its coating. However, none
of those materials is necessarily a glassy matrix." Reply Br. 8-10; see also
Reply Br. 13, 15-16 ("[O]ne cannot logically conclude that the ceramics in
Ganti necessarily match the ceramic in claim 8 (because the claim 8 ceramic
is a glassy matrix) .... "), 20, 25, 28. Those arguments are untimely
because they were not presented in the Appeal Brief, and the Appellants
have not attempted to show good cause for presenting them for the first time
in the Reply Brief. See 37 C.F.R. § 41.41(b)(2). Accordingly, those
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arguments are waived and do not provide a basis for reversal of the
Examiner's rejection.
2. The Appellants also assert that Ganti does not disclose particle
spacing "substantially equal to wavelength of phonons transporting heat
through the coating," as required by claim 1. App. Br. 9. They argue that
"even if the spacing as in claim 1 is possible from the disclosure of Ganti, a
disputed point, mere probabilities or possibilities may not establish
inherency." Id. They further argue that "the materials in Ganti may create
different phonons relative to what is claimed." Id. at 10.
Those arguments are not persuasive. Ganti does not merely disclose
the "possib[ility ]" of 100 nm particle spacing; Ganti specifically discloses
100 nm nanoparticles spaced about 100 nm apart. Ganti ,r 21. The
Appellants' Specification discloses that "[t]he size of the nano-particles is
substantially similar to the wavelength of the phonons transporting heat
through the coating at a preselected temperature," and the Appellants'
Specification discloses an embodiment in which nanoparticles are spaced at
"approximately 50nm to 100nm." With regards to materials, as set forth
above, Ganti discloses metal nanoparticles, and it discloses ceramic coatings
in which the nanoparticles are embedded. The Appellants disclose that the
glassy matrix may be ceramic. Spec. ,r 9; see also Claim 8.
On this record, Ganti' s disclosure of materials and particle spacing
that fall within the scope of the Appellants' disclosure was sufficient to shift
the burden to the Appellants to show that Ganti' s compositions would not
inherently possess the disputed limitation. See In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) ("[W]hen the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
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the burden of showing that they are not."); In re Best, 562 F.2d 1252, 1255-
56 (CCPA 1977) ("Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."). As set forth above, in view of
Ganti' s disclosures a person of ordinary skill in the art would have at once
envisaged compositions in which 100 nm metal nanoparticles, spaced 100
nm apart, are embedded in a ceramic coating. The Appellants have not
carried their burden of showing that such an embodiment would not
inherently possess the disputed limitation. The fact that Ganti is not strictly
limited to 100 nm particle spacing, and therefore also contemplates
embodiments that may not fall within the scope of claim 1, does not detract
from the disclosures discussed above and relied on by the Examiner.
In the Reply Brief, the Appellants argue for the first time that
paragraph 43 of their Specification indicates that "phonon dispersion and
scattering depend on more than just the spacing of the particles." Reply
Br. 4. The Appellants point out that paragraph 43 (which was not cited or
discussed in the Appeal Brief) describes mass ratio, effective matrix spring
constant, and other properties. Id.; see also id. at 11, 13-14, 15, 19. As
explained above, arguments raised for the first time in the Reply Brief are
untimely and waived.
However, we observe that, even assuming that the properties of the
matrix and nanoparticles influence the wavelength of the phonon, Ganti
discloses both materials ( metal nanoparticles embedded in ceramic coatings)
and spacing (100 nm) that fall within the scope of the Appellants' disclosure.
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That is sufficient to shift the burden to the Appellants to show that Ganti's
composition comprising 100 nm metal nanoparticles, spaced 100 nm apart
and embedded in a ceramic matrix, does not possess the recited particle
distance substantially equal to the wavelength of phonons transporting heat
through the coating. See Spada, 911 F.2d at 708; Best, 562 F.2d at 1255-56.
The Appellants have not carried that burden. The Appellants have not
persuasively identified any "variable" in Ganti that supports their arguments.
See Reply Br. 5 ("[W]hat is likely is that the phonons in Ganti's coating
have a wavelength different than 100 nm because of the other variables that
affect phonon wavelength and reflections." ( emphasis added)).
3. The Appellants argue that Ganti does not disclose "wherein
particle size of the plurality of nano-particles is configured3 based on the
preselected range of temperatures, and wherein the glassy matrix material is
configured to exhibit phonon mean free path lengths at least as long as the
wavelength of phonons transporting heat through the coating." App. Br. 10.
The argument is based on the same arguments discussed above and found
unpersuasive. Id. (arguing that "Ganti does not disclose identical materials
3 It is unclear what it means for a "particle size" to be "configured," and the
Appellants have not cited any portion of the Specification clarifying the
meaning of that term. The Specification does not appear to use the word
"configured" in association with the term "particle size." See generally
Spec. Consistent with the Specification, we interpret "configured" to be
synonymous with "selected." See Spec. ,r 45 (describing "selections" of
matrix and nano-particle materials "based at least in part on the temperature
ranges" that have been preselected); see also original claim 3 8 ("selecting
the size of the metal nano-particles based on the selected temperature
range"). In the event of further examination of the application on appeal, the
Appellants and Examiner may wish to clarify that.
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to those claimed" and that "mere similar spacing of particles does not
necessarily result in the claimed configuration"). The Appellants also assert
that the Examiner's rejection does not show that Ganti's composition
"necessarily" possesses the recited properties sufficient to establish
inherency. Id. at 11.
Those arguments are not persuasive essentially for reasons stated
above. With regards to the limitation that "particle size of the plurality of
nano-particles is configured based on the preselected range of temperatures,"
we further observe that claim 1 is directed to a composition, not a method.
Thus, if the structural components or features (such as materials, particle
size, and spacing) of Ganti' s composition fall within the scope of the claim,
the reason for the selection of those components or features (i.e., whether or
not a given feature such as particle size is selected "based on the preselected
range of temperatures") is not relevant to whether the claimed composition
is structurally distinguishable from the composition of the prior art. Cf In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); In re Gardiner, 171
F.2d 313, 315-16 (CCPA 1948) ("It is trite to state that the patentability of
apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof."). Given that Ganti discloses 100 nm
particles with 100 nm spacing, and the Specification discloses that spacing
of 50 nm to 100 nm corresponds to a temperature range of 100-250°F,
Spec. ,r 44, the Appellants fail to distinguish the claimed composition from
the composition of Ganti on the basis of the "particle size of the plurality of
nano-particles is configured based on the preselected range of temperatures"
recitation of claim 1. It is irrelevant whether Ganti' s particle spacing would
have been selected in view of a preselected temperature range.
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Additionally, the Examiner does not rely on probabilities. As set forth
above, in view of Ganti's disclosures a person of ordinary skill in the art
would have at once envisaged compositions in which 100 nm metal
nanoparticles, with 100 nm spacing, are embedded in a ceramic matrix. The
similarity, if not identity, of that composition to the claimed compositions, is
sufficient to shift the burden to the Appellants to show that Ganti' s
composition does not possess a "glassy matrix material ... configured to
exhibit phonon mean free path lengths at least as long as the wavelength of
phonons transporting heat through the coating." See Spada, 911 F.2d at 708;
Best, 562 F.2d at 1255-56. That some of Ganti's compositions may not
inherently fall within the scope of claim 1 does not defeat Ganti's disclosure
of compositions that do fall within the scope of claim 1.
We have carefully considered the Appellants' arguments concerning
claim 1, but we are not persuaded of reversible error in the rejection. See
Jung, 637 F.3d at 1365.
Claim 66. Claim 66 depends from claim 1 and further recites
"wherein [the] coefficient of thermal expansion of the glassy matrix material
substantially matches [the] coefficient of thermal expansion of the
substrate."
The Examiner finds that because "Ganti teaches that the glassy matrix
material and the substrate may comprise identical material, i.e. ceramic and
absent evidence to the contrary, it is clear that the coefficient of thermal
expansion of the glassy matrix material of Ganti would substantially match
[the] coefficient of thermal expansion of the substrate." Final Act. 5
( citation omitted).
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The Appellants argue that "Ganti discloses several different materials
which may make up the surface and the substrate," and "[t]he Office Action
is relying on a mere possibility that the same type of material may be
selected for both the substrate and the coating." App. Br. 12-13.
That argument is not persuasive. Ganti expressly discloses that the
surface material may be a ceramic or a polymer. Ganti ,r 18. Ganti
expressly discloses that the substrate may be a ceramic, a metal, an alloy, a
plastic, or a combination of those materials. Id. ,r 19. In view of those
disclosures, a person of ordinary skill in the art would have at once
envisaged an embodiment in which both the surface coating and the
substrate are the same ceramic material. The Appellants do not
meaningfully assert otherwise. The Appellants do not assert that a
composition in which the substrate and surface coating are the same material
would fall beyond the scope of claim 66. As explained above, the fact that
Ganti also discloses embodiments in which the substrate and surface coating
are not necessarily the same material ( and thus may not fall within the scope
of claim 66) does not detract from Gan ti's disclosures that would have
enabled a person of ordinary skill in the art to at once envisage compositions
in which the substrate and surface coating are the same material and,
therefore, have the same coefficient of thermal expansion. The Appellants
have not identified reversible error in the Examiner's rejection of claim 66.
See Jung, 637 F.3d at 1365.
Claim 67. Independent claim 67 is similar to claim 1 but additionally
requires, inter alia, that the array of nanoparticles is "configured to produce
interfering reflections of phonons." For reasons essentially the same as
those set forth above in the discussion of claim 1, the Examiner finds that
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Ganti' s composition comprising 100 nm metal nanoparticles, spaced 100 nm
apart and embedded in a ceramic matrix, would necessarily produce
interfering reflections of phonons. Final Act. 5-6.
The Appellants disagree for reasons similar to those discussed above.
App. Br. 12. Additionally, the Appellants describe a scientific article that
"describes forming nanocrystalline silicon," which allegedly shows that "by
changing one of the temperature and the hold time, the resultant grain size
and/or density of the resulting silicon may be changed," and that "the
resultant grain size and density may affect the thermal properties of the
silicon." Id. at 12.
We understand the purpose of the Appellants' discussion of that
article to be to abstractly suggest that the specific method by which Ganti's
composition is formed might influence the thermal properties of Ganti' s
composition. Even assuming everything the Appellants say about the article
is true, that discussion is insufficient to carry the Appellants' burden of
showing that Ganti's embodiment relied upon by the Examiner (i.e., 100 nm
metal nanoparticles spaced apart by 100 nm and embedded in a ceramic
matrix) would not inherently produce interfering reflections of phonons. See
Spada, 911 F.2d at 708; Best, 562 F.2d at 1255-56. As set forth above,
those particle sizes, spacing, and materials fall within the scope of the
Appellants' disclosure, and the Appellants have given no persuasive reason a
person of ordinary skill in the art would not have expected them to fall
within the scope of claim 67. Even assuming that the specific method by
which Ganti' s composition is formed may have some influence on the
thermal properties of Ganti' s composition, the Appellants' discussion of the
article provides no basis to believe that the effect would be such as to
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remove Ganti's composition from the scope of the claim. In that regard, we
observe that the Appellants identify no relevant disclosure in either their
own Specification, or in Ganti, that would suggest the methods by which the
compositions are produced affects whether the compositions are "configured
to produce interfering reflections of phonons," as recited by claim 67.
The Appellants have not identified reversible error in the Examiner's
rejection of claim 67. See Jung, 637 F.3d at 1365.
Claim 68. Claim 68 depends from claim 67 and further recites that
"the plurality of nano-particles have a thermal conductivity substantially
greater than [the] thermal conductivity of the glassy matrix material."
The Examiner finds that because "Ganti teaches plurality of nano-
particles and glassy matrix material identical to those presently claimed and
absent evidence to the contrary, it is clear that the thermal conductivity of
the plurality of the nano-particles are substantially greater than the thermal
conductivity of the glassy matrix material." Final Act. 6.
The Appellants argue that "Ganti is silent as to a 'thermal
conductivity."' App. Br. 13. The Appellants further argue that "Ganti
discloses that the nano-particles may be metallic or non-metallic, coated or
uncoated, and may have a low wettability or not. With a variety of types of
possible nano-particles and a variety of types of polymers or ceramics it is
not true that Ganti necessarily have [sic] the feature of claim 68." Id.
That argument fails to identify reversible error in the rejection. As the
Appellants concede, Ganti expressly discloses that the nanoparticles may be
metallic or nonmetallic. Ganti ,r 24. In view of that disclosure, a person of
ordinary skill in the art would at once envisage a composition in which the
nanoparticles are metal nanoparticles. As set forth above, a person of
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ordinary skill would also at once envisage a composition in which the metal
nanoparticles are embedded in a ceramic matrix. Id. ,r 31. As set forth
above, and as the Examiner explains in the Answer, see Ans. 21, the fact that
some of Ganti' s compositions may not fall within the scope of claim 68 does
not detract from Ganti's disclosure of compositions that do fall within the
scope of claim 68. The Appellants do not assert that a composition with
metal nanoparticles embedded in a ceramic matrix would not meet the
additional requirement of claim 68. On this record, the Appellants have not
identified reversible error in the Examiner's rejection of claim 68. See Jung,
637 F.3d at 1365.
Claim 69. Claim 69 depends from claim 67 and further recites
"wherein: particle size of the plurality of nano-particles is configured based
on the preselected range of temperatures."
The Appellants argue that because Ganti is concerned with surface
qualities of its substrate, and with textures of its surfaces, the features of
claim 69 "are not inherent in the material of Ganti." App. Br. 13.
Essentially for reasons stated above, that argument fails to carry the
Appellants' burden of showing that Ganti' s embodiments that have particle
sizes, spacing, and materials that fall within the scope of the claims and the
Appellants' disclosure, would not have inherently possessed the additional
limitations of claim 69. See Spada, 911 F.2d at 708; Best, 562 F.2d at 1255-
56. The Appellants have not identified reversible error in the Examiner's
rejection of claim 69. See Jung, 637 F.3d at 1365.
Rejection 2
Although the Appellants quote claim language from certain claims
subject to Rejection 2 and allege that those limitations are missing from
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Ganti and Burton, the Appellants do not address the Examiner's specific
findings and conclusions concerning those claim limitations. See App. Br.
15. Quotations of claim language accompanied by naked assertions that the
limitations are missing from the prior art do not comply with the Board's
rules and fail to identify reversible error in the Examiner's rejection. Lovin,
652 F.3d at 1357; see also 37 C.F.R. § 4I.31(c)(l)(iv).
Beyond the naked assertions regarding certain quoted limitations, the
Appellants also argue that Burton teaches away from claim 1 because Burton
teaches "packing smaller nano-particles into spaces between larger particles
to decrease the total amount of binder between particles," and that is
"different than what is claimed." App. Br. 15 ("Burton's teachings are
actually contrary to the features of claim 1." (emphasis omitted)).
That argument is unpersuasive. The Examiner relies on Ganti for the
particle spacing and on Burton for other disclosures. "The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed .... " In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Even assuming that Burton discloses
a different particle spacing than that of claim 1, the Appellants identify no
disclosure in Burton that criticizes, discredits, or otherwise discourages the
claimed particle spacing or the particle spacing of Ganti. Nor do the
Appellants provide any basis to doubt the Examiner's proposal of combining
Ganti and Burton. See App. Br. 15. On this record, we are not persuaded
that "Burton's teachings are actually contrary to the features of claim 1"
merely because they are different from the features of claim 1.
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In the Reply Brief, the Appellants argue for the first time that "Burton
provides no explanation that cobalt or tungsten particles could be used in
Ganti' s process. Ganti provides no explanation that cobalt or tungsten could
be used in his process." Reply Br. 21-22. Those arguments are untimely
and waived because they were not presented in the Appeal Brief, and the
Appellants have not attempted to show good cause for presenting them for
the first time in the Reply Brief. See 37 C.F.R. § 4I.41(b)(2).
The Appellants also argue that Ganti is nonanalogous art. App.
Br. 15. Specifically, they argue that Ganti is not from the same field of
endeavor as the claimed invention because Ganti "is in the field of liquid
wettability of solid surfaces and coating the same," whereas "[t]he claims
relate[] to thermal barriers." Id.
Art is analogous to the claimed invention if ( 1) the art is "from the
same field of endeavor, regardless of the problem addressed," or (2) the art
is "reasonably pertinent to the particular problem with which the inventor is
involved." In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). "The
Supreme Court's decision in KSR International Co. v. Teleflex, Inc. directs
us to construe the scope of analogous art broadly .... " Wyers v. Master
Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) (internal citation omitted).
Particularly in view of the Federal Circuit's instruction to "construe
the scope of analogous art broadly," we are not persuaded by the Appellants'
argument. Some of the appealed claims are directed to "a coating on a
substrate," e.g., Claim 1, whereas others recite in the preamble "[a] thermal
barrier coating," e.g., Claim 29. The structural elements of both sets of
claims are essentially the same (i.e., metal nanoparticles embedded in a
glassy matrix). Compare Claim 1, with Claim 29. More specifically, all of
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the appealed claims concern coatings comprising nanoparticles. As
described above, Ganti likewise describes coatings comprising
nanoparticles. Even were we to focus on the thermal aspects of the
Appellants' coatings, Ganti specifically describes applications for its
coatings in which "stability at high temperature is desired." Ganti ,r 31.
Even more specifically, both Ganti and the Appellants' Specification
describe aircraft applications for their coatings. Compare Ganti ,r 31
( aircraft turbines), with Spec. ,r 11 ("a thermal barrier coating is provided for
an aircraft part"). On this record, we determine that both Ganti and the
claimed invention are from the field of endeavor of nanoparticle coatings.
However, even were we to more narrowly construe the field of endeavor
( e.g., metal nanoparticle coatings with desirable thermal characteristics for
use with aircraft), we would still determine that Ganti and the claimed
invention are from the same field of endeavor.
Rejection 3
In the Appeal Brief, the Appellants simply argue that Murray does not
teach features of the claims that are allegedly missing from Ganti. See App.
Br. 16. However, as set forth above, we determine that Ganti teaches each
of those features. The Appellants' arguments concerning Murray alone are
not persuasive. See In re Keller, 642 F.2d 413,426 (CCPA 1981) ("[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references."). The
Appellants do not challenge the Examiner's combination of Murray with
Ganti. App. Br. 16. On this record, the Appellants have not identified
reversible error in Rejection 3. See Jung, 637 F.3d at 1365.
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In the Reply Brief, the Appellants raise new arguments concerning
Rejection 3. Because they were not presented in the Appeal Brief, and the
Appellants do not assert good cause for presenting them for the first time in
the Reply Brief, those arguments are untimely and waived. See 37 C.F.R.
§ 41.41(b)(2).
Rejection 4
The Appellants argue only that "Gray does not remedy the
deficiencies of Ganti." App. Br. 1 7. They do not challenge the Examiner's
combination of Gray with Ganti. Id. Because no distinct arguments are
presented against Rejection 4, we affirm Rejection 4 for reasons set forth
above. As above, to the extent new arguments are raised in the Reply Brief,
they are untimely and waived. See 37 C.F.R. § 4I.41(b)(2).
Rejections 5 and 6
The Appellants argue that Rejections 5 and 6 should be reversed
"[fJor at least the reasons above." App. Br. 17-18. The Appellants do not
challenge the Examiner's combination of Gray, Murray, and Burton with
Ganti. Id. Because no distinct arguments are presented against Rejections 5
and 6, we affirm Rejections 5 and 6 for reasons set forth above.
New Ground of Re} ection
Independent claims 1 and 67 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ganti.
Claim 1. As set forth above, Ganti describes "[s]urface 120" that may
be a polymer or a ceramic, and substrate 110 that may also be ceramic.
Ganti ,r,r 18, 19. Paragraph 20 discloses that surface 120 may be integral
with the substrate or "may comprise a layer that is disposed or deposited
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onto" the substrate." Id. ,r 20. Paragraph 21 discloses that the surface
includes a "plurality of features," which may be "substantially spherical
features," and it specifically discloses an embodiment in which "spherical or
sphere-like features, each having a diameter of about 100 nm, are spaced
about 100 nm apart." Id. ,r 21. Paragraph 24 references Figure 5 and
discloses that the features may be "a plurality of nanoparticles ... deposited
on" a substrate, over which a coating of polymer is applied. Id. ,r 24.
Paragraph 31 describes an embodiment in which a plurality of nanoparticles
is combined with a ceramic precursor to form a slurry, which is then applied
to a substrate and "heated to convert the ceramic precursor into a ceramic,
such as, but not limited to an oxide, carbide, nitride, silicide, or
combinations thereof, thereby forming a textured, low-wettability surface
comprising the plurality of nanoparticles embedded in a ceramic coating."
To the extent that those disclosures do not anticipate claim 1 (i.e.,
even if a person of ordinary skill in the art would not have at once envisaged
a composition falling within the scope of claim 1 in view of those
disclosures), the subject matter of claim 1 would have been obvious in view
of those disclosures.
Ganti discloses a coating on a substrate ( e.g., ,r,r 18-20, 24, 31 ).
Concerning the claimed "glassy matrix material," Ganti discloses that
the coating may be ceramic. E.g., Ganti ,r,r 18, 19, 31. Although Gan ti does
not explicitly disclose a "glassy" ceramic, a person of ordinary skill would
have understood that ceramics are either glassy or non-glassy, and Ganti
does not exclude glassy ceramics. Thus, Ganti' s broad disclosure of ceramic
coatings reasonably teaches or suggests both glassy and non-glassy
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ceramics. Additionally, Ganti discloses a variety of"[ s ]uitable ceramic
materials," including "inorganic oxides, carbides, nitrides, and combinations
thereof." Id. ,r 18. Ganti discloses as a "[n]on-limiting example" silicon
carbide. Id. In view of the disclosure of inorganic oxides and carbides, as
well as the specific "[ n ]on-limiting" disclosure of silicon carbide, a person
of ordinary skill in the art reasonably would have inferred that suitable
"inorganic oxides" would include silicon oxide, i.e., silica. The
Specification states: "As used herein, 'glass', 'glassy', 'glass compound',
'glass compound' [sic] and 'silica-based compound' refer to compounds
containing silica." Spec. ,r 40. Ganti's disclosure reasonably suggests silica-
based ceramics and, therefore, reasonably suggests a glassy matrix material.
Concerning the claimed "array comprising a plurality of metal nano-
particles," Ganti teaches or suggests "features" on its surface or in its coating
that may be, e.g., spherical features such as nanoparticles. E.g., Ganti ,r,r 21,
24, 31. Ganti expressly teaches that its nanoparticles may be metal. Id. ,r
24. Ganti teaches that its features "may be arranged in ... an ordered
array." Id. ,r 21.
Ganti teaches that the "features" are spaced apart from each other by a
distance, and Ganti specifically discloses an embodiment in which
"spherical or sphere-like features, each having a diameter of about 100 nm,
are spaced about 100 nm apart." Id. ,r 21.
In view of those disclosures, a nanoparticle coating comprising 100
nm metal nanoparticles spaced 100 nm apart and embedded in a glassy
ceramic matrix would have been obvious to a person of ordinary skill in the
art because Ganti teaches or suggests each element of such a nanoparticle
coating. Id. ,r,r 18-20, 24, 31. To the extent making specific selections to
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arrive at such a composition is required, a person of ordinary skill in the art
would have understood that specific features of the relevant disclosures
could have been selected in order to achieve a coating with the desired
properties. Ganti discloses a limited number of options for each selection.
For example, Ganti discloses that the nanoparticles "may be metallic, non-
metallic; or a combination of both." Id. ,r 24. Selection of metal
nanoparticles would have been obvious in view of that disclosure. Similarly,
Ganti discloses that its coating may be a polymer or a ceramic. Id. ,r 18.
Selection of a ceramic coating would have been obvious in view of that
disclosure. As set forth above, a person of ordinary skill in the art would
have understood that ceramics may be either glassy or non-glassy, and that
Ganti' s broad disclosure of "ceramic" encompasses both. Finally, although
Ganti' s compositions are not limited to 100 nm nanoparticles spaced 100 nm
apart, selection of such size and spacing would have been obvious in view of
Gan ti's express disclosure of such size and spacing. Id. ,r 21. Thus, a
nanoparticle coating comprising 100 nm metal nanoparticles spaced 100 nm
apart and embedded in a glassy ceramic matrix would have been obvious to
a person of ordinary skill in the art in view of Ganti's disclosures.
Most of the remaining recitations of claim 1 ("coating is configured to
manage flow of heat in a preselected range of temperatures," "distance ...
equal to wavelength of phonons," "glassy matrix material is configured to
exhibit phonon mean free path lengths") would flow naturally from the
composition rendered obvious by Ganti. Cf Ex parte Obiaya, 227 USPQ
58, 60 (BPAI 1985) ("The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
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otherwise be obvious."); In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)
("Even if no prior art of record explicitly discusses the [limitation],
[applicants'] application itself instructs that [ the limitation] is not an
additional requirement imposed by the claims on the [ claimed invention],
but rather a property necessarily present in [ the claimed invention]."); cf
also Best, 562 F.2d at 1255 ("Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."). A nanoparticle coating comprising
100 nm metal nanoparticles spaced 100 nm apart and embedded in a glassy
ceramic matrix appears to fall within the scope of the coating of claim 1 and
involves materials and spacing specifically described by the Specification.
E.g., Spec. ,r,r 9 (disclosing that "[t]he glass[y] matrix may be in the form of
a ceramic"), 44 ( disclosing "nano-particle period of approximately 50nm to
100nm in order to tune it for a temperature range of approximately 250°F to
100°F").
Finally, for reasons stated above, the recitation that "particle size ...
is configured based on the preselected range of temperatures" specifies a
reason for the selection of particle size and fails to structurally distinguish
the coating of claim 1 from the coating taught or suggested by Ganti.
Accordingly, the subject matter of claim 1 would have been obvious
in view of Ganti. We leave to the Examiner consideration of the dependent
claims.
Claim 67. The same analysis set forth above for claim 1 applies
equally to claim 67. The additional recitations of claim 67 ("array
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configured to produce interfering reflections of phonons," "wavelength of
the phonons ... is determined from the preselected range of temperatures")
would flow naturally from the composition rendered obvious by Ganti and
do not structurally distinguish Ganti's composition from the subject matter
of claim 67. Cf Obiaya, 227 USPQ at 60; Kubin, 561 F.3d at 1357; cf also
Best, 562 F.2d at 1255.
Accordingly, the subject matter of claim 67 would have been obvious
in view of Ganti. We leave to the Examiner consideration of the dependent
claims.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1-9, 11-14, 29-33,
61---64, and 66-72.
We enter a NEW GROUND OF REJECTION as set forth above for
independent claims 1 and 67.
37 C.F.R. § 4I.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that the Appellants, 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 ....
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(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
AFFIRMED
37 C.F.R. § 4I.50(b)
26