Ex parte SIMPSON

Board of Patent Appeals and Interferences

Mar 27, 1998

08028473 (B.P.A.I. Mar. 27, 1998)

Application for patent filed March 9, 1993.1
1
Paper No. 17
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MATTHEW A. SIMPSON
______________
Appeal No. 96-2535
Application 08/028,4731
_______________
ON BRIEF
_______________
Before COHEN, PATE, CRAWFORD, Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 20. These are the only claims in the application.
The claimed invention is directed to a mechanical seal
with a wear layer composed of a polycrystalline diamond film
coating. The diamond coating has two layers with the top
Appeal No. 96-2535
Application 08/028,473
2
layer having reduced wear resistance characteristics. The
independent claims on appeal, claim 1 and 14, are reproduced
below to further illustrate the claimed subject matter.
1. A mechanical member adapted to have at least a
portion of its surface slidingly engaged as a wear surface by
a mating surface, said member comprising:
a body having a wear surface, and
a coating of polycrystalline diamond film on the wear
surface, the coating having a first, outer thickness region of
a first material remote from the underlying body and a second,
inner thickness region of a second material under the first
thickness region, the second material having a morphology
different from that of the first material.
14. A seal assembly for a rotating shaft, comprising:
first and second seal members having mating surfaces for
mutually sliding engagement;
at least the first member mating surface having a
polycrystalline diamond film coating, the coating having a
surface with a reduced wear resistance.
The references of record relied upon by the examiner as
evidence of anticipation and obviousness are:
Linda Plano, Ian Hayward and John Wegand, “CVD Diamond Films
For Tribological Applications”, Crystalline Final Report
Contract No.
N00014-89-C-0151 (March 30, 1990).
Appeal No. 96-2535
Application 08/028,473
Our understanding of this reference is by virtue of an English2
language translation.
3
Obata et al. (Obata)2
(Japanese Kokai) 2-192483 July 30, 1990
THE REJECTIONS
The following rejections are before us on appeal.
Claims 1 through 13 and 19 are rejected under 35 U.S.C.
§ 112, first paragraph, inasmuch as the specification does not
provide descriptive support for the term “morphology.”
Claims 1 through 13 and 19 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. According to
the examiner, it is unclear what is meant by the term
“morphology” as it is used throughout the claims on appeal.
Additionally, the examiner states that the “underlying body”
limitation of claim 1, line 8, lacks proper antecedent basis
and the term “individual crystallites” in claims 13 and 19
lacks proper antecedent basis.
Appeal No. 96-2535
Application 08/028,473
4
Claims 1, 2, and 7 stand rejected under 35 U.S.C. §
102(b) as anticipated by the report entitled “CVD Diamond
Films For Tribological Applications”, Plano et al.
Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as unpatentable over Obata in view of CVD Diamond Films For
Tribological Applications, Plano et al.
Appeal No. 96-2535
Application 08/028,473
5
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review, we have reached the determination
that the rejections entered by the examiner under 35 U.S.C. §
112, first and second paragraphs, cannot be sustained.
Furthermore, rejections of claims 1-13 and 15-19 based on
prior art cannot be sustained. However, we will sustain the
rejection of claims 14 and 20 based on prior art grounds. Our
reasons for this conclusion follow.
Turning to the rejection of claims 1 through 13 and 19
under 35 U.S.C. § 112, first paragraph, the examiner has
stated that the specification does not provide descriptive
support for the use of the claim term “morphology.” Appellant
argues that a polycrystalline material of any kind has a
morphology as an inherent feature. Appellant has referred to
the prior art, e.g., the Plano reference which uses the term
“morphology.” Further-more, the appellant has provided a
dictionary definition which is indicative of the use of
morphology as the structure or form of something.
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Application 08/028,473
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We merely note that the appellant does not have to
provide ipsis verbis support, In re Lukach, 442 F.2d 967, 969,
169 USPQ 795, 796 (CCPA 1971). The description in the
specification must merely allow persons of ordinary skill in
the art to recognize that the inventor invented what is now
claimed. In this instance, given the use of the term
“morphology” in the relevant prior art as evidenced by the
Plano disclosure, it is our view that the specification
clearly conveys that appellant was in possession of the
subject matter of polycrystalline diamond
morphologies at the time the application was filed.
Consequently, the rejection of claims 1 through 13 and 19
under 35 U.S.C.
§ 112, first paragraph, is reversed.
The examiner has rejected claims 1 through 13 and 19
under 35 U.S.C. § 112, second paragraph, as indefinite on
three separate grounds. Firstly, the examiner states that it
is unclear what is meant by the term “morphology.”
The test of whether a claim complies with § 112, second
paragraph, is:
whether the claim language, when read by a person
Appeal No. 96-2535
Application 08/028,473
7
of ordinary skill in the art in light of the
specification, describes a subject matter with
sufficient precision that the bounds of the claimed
subject matter are distinct. In re Merat, 519 F.2d
1390, 1396, 186 USPQ 471, 476 (CCPA 1975).
As we noted, above, with respect to the rejection of § 112,
first paragraph, the claim term “morphology” is often used and
well recognized in the art of polycrystalline materials.
Accordingly, when the claims on appeal refer to a claim
structure requiring a certain morphology, it is our view that
the metes and bounds of the claimed subject matter can be
determined with sufficient precision by one of ordinary skill
viewing the claimed subject matter. Accordingly, the
rejection of claims 1 through 13 and
19 insofar as they are based on the presence of the term
“morphology” is reversed.
Secondly, the examiner has rejected claim 1 and the
claims that depend thereon for the stated reason that “the
underlying body” in line 8 of claim 1 lacks proper antecedent
basis. A review of the text of claim 1 denotes that claim 1,
in line 4, sets out a “body” having a wear surface. In line
5, there is recited a coating of polycrystalline diamond on
the wear surface of the body. As such, the reference to
Appeal No. 96-2535
Application 08/028,473
Webster’s Third New International Dictionary, G. & C. Merrium Co.,3
Springfield, MA (1971).
8
underlying body in claim 8 can be readily understood as
referring to the body of line 5 which underlies the
polycrystalline diamond film. Accordingly, we are of the view
that the subject matter of claim 1 can be clearly understood
in relation to the term “underlying body” as it appears in
line 8. Consequently, the rejection of claims 1 through 13
based on the lack of antecedent basis of the term “underlying
body” is reversed.
Thirdly, the examiner has rejected claims 13 and 19 under
35 U.S.C. § 112, second paragraph, for the reason that the
term “individual crystallites” in claims 13 and 19 is said to
lack a proper antecedent basis. Here again, we are in
agreement with the appellant who states that a polycrystalline
film such as is claimed in claim 1 would of necessity be
composed of individual crystallites. Furthermore, we take
official notice of the dictionary definition of the term
“crystallite” as “a single
grain in a polycrystalline medium.” Examined in this way, 3
it is clear that the appellant is correct in the use of the
Appeal No. 96-2535
Application 08/028,473
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term “crystallite” to refer to the individual grains of the
polycrystalline material. The metes and bounds of claims 13
and 19 can be readily determined by one of ordinary skill.
Therefore, the rejection of these claims under 35 U.S.C. §
112, second paragraph, is reversed.
The examiner has rejected claims 1, 2 and 7 under 35
U.S.C. 102(b) as anticipated by the report entitled “CVD
Diamond Films For Tribological Application”, hereinafter
referred to as Plano. We are in agreement with the examiner
that Plano discloses throughout the report, that one type of
diamond film coating is commonly referred to as the
“cauliflower” type surface. We further agree with the
examiner that Plano discloses that this surface has a reduced
wear resistant property when compared with other morphologies
having higher centerline average ranges in nanometers. See
Table 5 on page 17 of Plano. However, we do
not agree with the examiner’s further finding of fact that the
cauliflower-type surface can be considered to be an overlayer
with a different morphology than the underlying cauliflower-
type surface. We find that Plano contemplates a tribologic
coating on a substrate with the tribologic coating of the same
Appeal No. 96-2535
Application 08/028,473
10
morphology throughout. Therefore, we are in agreement with
the appellant that there is no suggestion in either Plano or
the Obata references of using a combination of diamond film
layers of different morphologies. As the appellant points
out, morphology of the cauliflower surface layer disclosed in
Plano is the same morphology as the underlying diamond layer.
Both layers are of the same cauliflower morphology. As the
appellant succinctly states, it is important to note that the
cauliflower-like features are not only visible at the surface
but are present also in the underlying bulk of this particular
reduced wear resistance morphology diamond film. (Appeal
Brief, page 12). For this reason, it is our conclusion that
Plano cannot be said to have two discrete diamond layers of
different morphology as required by claim 1. Accordingly, the
rejection of claim 1 under
35 U.S.C. § 102(b) cannot be sustained.
Turning to the rejection under 35 U.S.C. § 103 and
considering claims 1 through 13 first, we note that Obata also
does not disclose the polycrystalline diamond wear surface
having two distinct morphologies. Thus, Obata does not in any
way overcome the shortcomings of Plano which we have
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Application 08/028,473
11
discussed, supra. Therefore, the rejection of claims 1
through 13 under
35 U.S.C. § 103 is reversed, inasmuch as the examiner has not
made out a prima facie case of obviousness.
With regard to the rejection of claims 14, we note that
Obata teaches a mechanical seal with first and second seal
members having mating surfaces for a mutual sliding
engagement. See Obata at, for example, practical Example 1,
page 6 of the translation. Secondly, we note that Plano
discloses that it would have been obvious to make a
polycrystalline diamond surface with a reduce wear
characteristic such as the smooth cauliflower layer, which was
not even tested for its tribological properties, inasmuch as
it was known by those of ordinary skill that the smooth
cauliflower morphology had a reduced resistance to wear.
As stated by appellant on pages 16 and 17 of the Appeal
Brief,
At best, it [the combination of the disclosures of
Obata and Plano] would result in a single layer of
diamond with a cauliflower-like morphology as
disclosed in Plano et al on the seal disclosed in
Obata et al, a structure distinctly different from
what is being claimed by Appellant. In Plano et al,
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Application 08/028,473
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the cauliflower-like material was not even tested
for its wear characteristics, thereby leading those
of ordinary skill in the art away from considering
it for wear applications and teaching away from
Applicant’s invention. (Appellant’s Brief, page 16-
17).
We regard this as a clear admission that the subject matter of
claim 14, which does not require two different morphological
layers, would have been obvious just as posited by the
appellant in the Brief. All claim 14 requires is a first
layer of reduced wear characteristic. The underlying portion
below this layer could also have the reduced wear
characteristic. Claim 20 is also of this same scope.
Therefore, the rejection of claims 14 and 20 under 35 U.S.C. §
103 is affirmed. With regard to claims 15 through 19, claim
15 requires both an underlayer and overlayer and one of
ordinary skill would not have found this claimed subject
matter to be obvious from Plano and Obata. Therefore, the
rejection of claims 15 through 19 under 35 U.S.C. § 103 is
reversed.
Pursuant to 37 CFR § 1.196(b), this Board enters the
following rejection.
Appeal No. 96-2535
Application 08/028,473
13
Claims 14 and 20 are rejected under 35 U.S.C. § 112,
second paragraph, for failing to particularly point out and
distinctly claim the subject matter applicant regards as the
invention. Claim 14 calls for a coating of polycrystalline
diamond that has reduced resistance to wear in its exterior
surface region. The specific wording of the claim would have
raised in the mind of one of ordinary skill what the reduced
resistance to wear of the coating is measured relative to.
The claim gives no indication, inasmuch as no underlying layer
or other structure of differing morphology is recited. Under
these circumstances it is impossible to determine the metes
and bounds of claim 14 and claim 20 dependent thereon.
Accordingly, a rejection under
35 U.S.C. § 112, second paragraph, is proper.
SUMMARY
The rejection of claims 1, 13, and 19 under 35 U.S.C. §
112, first paragraph, has been reversed.
The rejection of claims 1 through 13 and 19 under 35
U.S.C.
§ 112, second paragraph, has been reversed.
Appeal No. 96-2535
Application 08/028,473
14
The rejection of claims 1, 2 and 7 under 35 U.S.C. §
102(b) has been reversed.
The rejection of claims 1 through 13 and 15 through 19
under 35 U.S.C. § 103 as been reversed.
The rejection of claims 14 and 20 under 35 U.S.C. § 103
has been affirmed.
Pursuant to 37 CFR § 1.196(b) a new rejection of claims
14 and 20 has been entered by the Board.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
Appeal No. 96-2535
Application 08/028,473
15
37 CFR § 1.196(b) also provides that the appellant,
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 proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or
145 with respect to the affirmed rejection, the effective date
of the affirmance is deferred until conclusion of the
prosecution before the examiner unless, as a mere incident to
the limited prosecution, the affirmed rejection is overcome.
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Application 08/028,473
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If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
Appeal No. 96-2535
Application 08/028,473
17
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
WILLIAM F. PATE, III ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 96-2535
Application 08/028,473
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