Ex Parte Sykora et al

Patent Trial and Appeal Board

Feb 27, 2019

13992466 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/992,466 10/09/2013
22045 7590 03/01/2019
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Frank Sykora
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.
GALI0106PUSA 1031
EXAMINER
BERMAN, JASON
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK SYKORA,
ALI ERDEMIR, MUSTAFA URGEN,
and OSMAN LEVENT ERYILMAZ
Appeal2017-011674
Application 13/992,466 1
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an
Examiner's decision finally rejecting claims 1, 3-12, 15-18, 20-24, and 35-
37. Claims 25-34 are also pending but have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The real parties in interest are said to be Galleon International Corporation
and UChicago Argonne. Appeal Brief dated March 6, 2017 ("Br."), at 2.
Appeal2017-011674
Application 13/992,466
Claim 1, the only independent claim on appeal, is reproduced below
from the Claims Appendix to the Appeal Brief. The limitation at issue is
italicized.
1. A method of forming a metal nitride coating on a
substrate to be exposed to hydrocarbons, the method
compnsmg:
providing a substrate in a chamber;
providing at least one cathode in the chamber, the at least
one cathode containing at least one soft metal and at least one
hard metal;
providing nitrogen in the chamber;
depositing a film onto the substrate by physical vapor
deposition (PVD), the film including a bulk layer and an outer
termination layer, each of the bulk layer and the outer
termination layer including the at least one soft metal and the at
least one hard metal, the at least one soft metal increasing a
hardness of bulk layer to at least 2,000 Vickers (HV);
mitigating the deposition of the termination layer; and
removing the termination layer from the film, leaving the
remaining bulk layer disposed over the substrate;
wherein when the substrate is exposed to hydrocarbons in
an environment having at least one of wear additives, friction
modifiers and naturally occurring compounds, a durable
tribological layer is formed on an outer surface of the bulk layer
to create a coating having low friction and anti-wear properties.
According to claim 1, the bulk layer and the termination layer include
the same soft metal and the same hard metal. The Appellants disclose that
hard metals include molybdenum (Mo), chromium (Cr), titanium (Ti),
vanadium (V), tungsten (W), niobium (Nb), hafnium (Hf), zirconium (Zr),
iron (Fe), aluminum (Al), silicon (Si), and yttrium (Y) and soft metals
include copper (Cu), nickel (Ni), indium (In), tin (Sn), gallium (Ga), bismuth
2
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Application 13/992,466
(Bi), silver (Ag), gold (Au), platinum (Pt), lead (Pb), palladium (Pd), and
antimony (Sb). Spec. 6, 11. 1---6.
The Appellants disclose that the termination layer generally has a
lower hardness and more surface roughness than the bulk layer. The
Appellants also disclose that the termination layer is less homogeneous than
the bulk layer and generally has less wear resistance than the bulk layer.
Spec. 8, 11. 9-14. Therefore, according to the Appellants, it is advantageous
to eliminate the termination layer by both mitigating the formation of the
termination layer and removing any termination layer that ultimately forms
on the substrate. Spec. 8, 11. 14--17.
The claims on appeal stand rejected as follows: 2
(1) claims 1, 3-7, 9, 10, 12, 16-18, 20, 21, 24, 35, and 363 under
35 U.S.C. § I03(a) as unpatentable over Gorokhovsky et al. 4 in view of
Hugosson; 5
(2) claims 8 and 11 under 35 U.S.C. § I03(a) as unpatentable over
Gorokhovsky in view ofHugosson, and further in view of Morita et al.; 6
2 Claim 37 was finally rejected under 35 U.S.C. § 112, second paragraph.
Final Office Action dated February 11, 2016 ("Final Act."), at 2-3. That
rejection was withdrawn by the Examiner. Examiner's Answer dated
June 30, 2017 ("Ans."), at 2.
3 The statement of rejection (1) in the Final Office Action does not include
claims 35 and 36. Final Act. 4. The body of rejection (1), however,
addresses claims 35 and 36. Final Act. 7. Therefore, the statement of
rejection (1) has been corrected in this Decision on Appeal to include
claims 35 and 36.
4 US 2007/0284255 Al, published December 13, 2007 ("Gorokhovsky").
5 US 6,887,562 B2, issued May 3, 2005 ("Hugosson").
6 US 2008/0233388 Al, published September 25, 2008 ("Morita").
3
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Application 13/992,466
(3) claim 15 under 35 U.S.C. § I03(a) as unpatentable over
Gorokhovsky in view of Hugosson, and further in view of V ergason; 7 and
(4) claims 22 and 23 under 35 U.S.C. § I03(a) as unpatentable over
Gorokhovsky in view of Hugosson, and further in view of Ito et al. 8
B. DISCUSSION
The Examiner finds Gorokhovsky discloses the claimed method with
the exception of depositing a hard metal and a soft metal for a high hardness
result. Final Act. 5. The Examiner relies on Hugosson to establish the
obviousness of using both a hard metal and a soft metal in Gorokhovsky's
method. Final Act. 5.
The Appellants argue, inter alia, that "the cited references do not
disclose the limitation of 'removing the termination layer from the film,
leaving the remaining bulk layer disposed over the substrate."' Br. 8.
The Examiner finds that paragraphs 31 and 32 of Gorokhovsky
disclose the claimed "removing" step. Final Act. 4. The Appellants,
however, argue that paragraphs 31 and 32 of Gorokhovsky "include
absolutely no disclosure of removing a termination layer and leaving a bulk
layer disposed over the substrate, as claimed." Br. 8.
Gorokhovsky discloses:
[0029] Alternatively, a blank (unsharpened) substrate can
be coated with a cermet bondcoating segment, then sharpened.
The sharpened surface is then cleaned and coated with a low-
friction, anti-galling top coat. The method comprises the steps
of:
[0030] i) providing a blank (unsharpened) substrate ..
7 US 5,037,522, issued August 6, 1991 ("Vergason").
8 US 2004/0026402 Al, published February 12, 2004 ("Ito").
4
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Application 13/992,466
[0031] ii) depositing a first hard thin film cermet
bondcoating segment on a blank substrate by vapor deposition
process;
[0032] iii) sharpening the substrate by grinding,
cutting, twisting, and/or polishing for developing at least one
side of at least one cutting edge;
[0033] iv) cleaning the substrate ... ;
[0034] v) depositing a second low friction anti-galling
thin film nanocomposite top coating segment on a top of
substrate by vapor deposition process. [Italics added.]
The Appellants also argue that the process described in Gorokhovsky
paragraphs 29--34 "is described in more detail later in the specification,
particularly in paragraph 0084 and shown in Figures 1 la-1 ld." Br. 9.
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Application 13/992,466
In paragraph 84, Gorokhovsky discloses that Figure I la, reproduced
below, "shows the cross-section of [a] blank drill (before the flute is ground)
coated with Ti/TiN/TiCN/TiC multilayer gradient coating 70."
Fig. i 1 a
10
Gorokhovsky Figure 11 a is a cross-section of a
rotary dental instrument in a first stage of fabrication.
The Appellants contend that "Figure 11 a and the description thereof
correspond to paragraphs 0030 and 0031, wherein an unsharpened substrate
is coated with a hard thin film cermet 70." Br. 10.
6
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Application 13/992,466
Gorokhovsky Figure 11 b, reproduced below, "shows the same tool
after grinding which produces a flute." Gorokhovsky ,r 84.
Fig.11 b
Gorokhovsky Figure 11 b is a cross-section of a
rotary dental instrument in a second stage of fabrication.
The Appellants contend that "Figure 11 b and the description thereof
correspond to paragraph 0032, wherein a grinding process is performed on
select portions of the coated substrate. As shown in Figure 1 lb, the cermet
coating 70 is removed in its entirety by the grinding process." Br. 10.
7
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Application 13/992,466
Gorokhovsky Figure I le, reproduced below, "shows the drill after the
first stage of the second coating process, which produces the ionitrided
layer 72 on the inner side of the flute, where TiN coating was removed by
grinding." Gorokhovsky ,r 84 (italics added).
Fig. 11 C
?()
.•. , .. ,./
Gorokhovsky Figure 11 c is a cross-section of a
rotary dental instrument in a third stage of fabrication.
8
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Application 13/992,466
Gorokhovsky Figure 1 ld, reproduced below, "shows the final
product, a triplex coated drill, having the top segment TBCN low friction
anti-galling coating 74, which overlays the TiN on the outer side of the flute
and ionitrided layer on the inner side of the flute." Gorokhovsky ,r 84.
Fig. 1 ld
Gorokhovsky Figure 11 d is a cross-section of a
rotary dental instrument in a final stage of fabrication.
The Appellants argue:
In light of this additional description and figures,
Appellant respectfully submits that it is clear that the grinding
process described in paragraphs 0032 and 0084 does not
disclose removing only a termination layer and leaving a bulk
layer. Rather, the grinding process described in Gorokhovsky
removes the cermet multilayer entirely in some areas and
leaves it entirely intact in other areas.
Br. 10-11 ( original emphasis omitted).
9
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Application 13/992,466
The Examiner does not address the Appellants' arguments directed to
Gorokhovsky Figures 1 la---d. Rather, the Examiner finds the Appellants
disclose that the termination layer may be removed by polishing, grinding,
milling, etc. Ans. 5. The Examiner finds that "the same exact process,
grinding and polishing, performed by the prior art [i.e., Gorokhovsky ], even
if for a different reason, will inherently have the same result." Ans. 5.
Paragraphs 31 and 32 of Gorokhovsky, relied on by the Examiner,
disclose that the substrate, not a termination layer, is ground, cut, twisted,
and/or polished to develop at least one side of a cutting edge.
Gorokhovsky ,r 32. To the extent that a portion of the termination layer (as
well as a portion of the bulk layer) is removed along with the substrate, the
Examiner has failed to establish that in a subsequent step, the remaining
portion of the termination layer is removed, "leaving the remaining bulk
layer disposed over the substrate" as recited in claim 1. Br., Claims
Appendix.
Similarly, in the embodiment depicted in Gorokhovsky Figures 11 a---d,
a portion of Ti/TiN/TiCN/TiC multilayer gradient coating 70, along with a
portion of the substrate underlying coating 70, is removed by grinding. See
Gorokhovsky Fig. 11 b. In that embodiment, the remaining portion of
coating 70 is left intact, whereby the entire termination layer is not removed
from the film as required by claim 1. 9
In sum, a preponderance of the evidence of record does not support
the Examiner's finding that Gorokhovsky discloses the step of "removing
9 Consistent with the language of claim 1, the Appellants interpret claim 1 as
removing the termination layer from the film "to leave only the bulk layer
disposed over the substrate" (emphasis added). Br. 5.
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Application 13/992,466
the termination layer from the film, leaving the remaining bulk layer
disposed over the substrate" as recited in claim 1. Br., Claims Appendix.
Therefore, the obviousness rejection of claims 1, 3-7, 9, 10, 12, 16-18, 20,
21, 24, 35, and 36 is not sustained.
The Examiner does not rely on the remaining prior art of record to
cure the deficiency in the obviousness rejection of claim 1 identified above.
Therefore, the obviousness rejections of claims 8, 11, 15, 22, and 23 also are
not sustained.
C. DECISION
The Examiner's decision is reversed.
REVERSED
11