Patrick Choquet et al.

Patent Trials and Appeals Board

Aug 10, 2020

2019001906 (P.T.A.B. Aug. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/870,351 04/25/2013 Patrick Choquet 704.1023CON 5129
23280 7590 08/10/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
CHEN, KEATH T
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
08/10/2020 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK CHOQUET, ERIC SILBERBERG,
BRUNO SCHMITZ, and DANIEL CHALEIX

Appeal 2019-001906
Application 13/870,351
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 20, 22–26, 29, 31–36, 39–49, 51,
and 53–56.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42 (Application Data Sheet filed April 25, 2013 at 1–2). The
Appellant identifies “ArcelorMittal” as the real party in interest (Appeal
Brief filed October 3, 2018 (“Appeal Br.”) at 2).
2 See Appeal Br. 7–26; Reply Brief filed January 2, 2019 (“Reply Br.”) at
2–4; Final Office Action entered November 9, 2017 (“Final Act.”) at 2–28;
Examiner’s Answer entered November 2, 2018 (“Ans.”) at 3–25.
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I. BACKGROUND
The subject matter on appeal relates to a vacuum deposition facility
for depositing coatings formed from metal alloys on a substrate
(Specification filed April 25, 2013 (“Spec.”) ¶ 2). Figure 2 (some
annotations added) is illustrative of the claimed subject matter and is
reproduced from the Drawings filed April 25, 2013, as follows:

Figure 2 above depicts a facility 1 comprising, inter alia, a vacuum
deposition chamber 2, a substrate S fed by a rotary support roller 20, a coater
or extraction chamber 7 for spraying a sonic vapor jet onto the substrate S,
an evaporation crucible 3 provided with an induction heater 30, a pump P,
and a melting or recharging furnace 5 provided with an induction heater 50
into which ingots L are introduced (Spec. ¶¶ 26–33).
Representative claim 20 is reproduced from the Claims Appendix to
the Appeal Brief, as follows:
20. A vacuum deposition facility for continuously depositing
coatings formed from metal alloys comprising at least two
metallic elements on a running substrate, comprising:
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a vacuum deposition chamber;
means for running the substrate through the chamber;
a sonic vapor jet coater depositing a coating on the
substrate;
means for feeding the coater with a vapor, the vapor
having the at least two metallic elements in a predetermined and
constant ratio;
means for evaporating a metal alloy bath to the vapor, the
means for evaporating including an evaporation crucible
including an induction heater, the evaporation crucible including
the metal alloy bath having the at least two metallic elements, the
vapor being fed to the coater; and
means for adjusting a composition of the metal alloy bath,
so an initial composition of metal alloy bath remains constant
during deposition, the metal alloy bath being homogenous, the
means for adjusting the composition of the metal alloy bath
including means for feeding the evaporation means with a molten
metal alloy of a controlled composition, the means for feeding
the evaporation means including a recharging furnace.
(Claims App. 1 (emphases added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103(a) (pre-
AIA) as follows:3
A. Claims 20, 22, 26, 29, 31, 35, 36, 45–49, 51, and 53 as
unpatentable over Vanden Brande et al.4 (“Vanden Brande
’234”), Schade van Westrum et al.5 (“Schade van Westrum

3 In certain instances, it appears that claim 52, which was canceled in the
Amendment filed December 26, 2016, was inadvertently listed as rejected
and pending, rejected claim 51 was omitted (Ans. 5, 9, 12; Final Act. 8, 15,
22).
4 US 2004/0026234 A1, published February 12, 2004.
5 US 2004/0022942 A1, published February 5, 2004.
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’942”), and Hirokawa et al.6 (“Hirokawa ’791”);
B. Claims 25, 34, 39–44, 55, and 56 and “alternatively” claims 20,
22, 26, 29, 31, 35, 36, 45–49, and 53 as unpatentable over
Vanden Brande ’234, Schade van Westrum ’942, Hirokawa
’791, and Shintaku et al.7 (“Shintaku ’506”);
C. Claims 23, 24, 32, and 33 as unpatentable over Vanden Brande
’234, Schade van Westrum ’942, Hirokawa ’791, optionally
Shintaku ’506, and Ukigaya et al.8 (“Ukigaya ’067”);
D. “Alternatively,” claims 40, 41, 43, and 44 as unpatentable over
Vanden Brande ’234, Schade van Westrum ’942, Hirokawa
’791, optionally Shintaku ’506, and Shimogori et al.9
(“Shimogori ‘837”); and
E. Claim 54 as unpatentable over Vanden Brande ’234, Schade
van Westrum ’942, Hirokawa ’791, optionally Shintaku ’506,
and Yadin et al.10 (“Yadin ’290”).
(Ans. 3–25; Final Act. 2–28).

6 US 5,107,791, issued April 28, 1992.
7 US 5,132,506, issued July 21, 1992.
8 US 2010/0173067 A1, published July 8, 2010.
9 US 5,002,837, issued March 26, 1991.
10 WO 2005/116290 A1, published December 8, 2005.
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III. DISCUSSION
Rejection A
1. Grouping of Claims
For Rejection A, the Appellant provides arguments under various
headings and sub-headings identified by certain groups of claims (Appeal
Br. 7–21). To the extent that a particular claim is argued separately from
representative claim 20 within the meaning of 37 C.F.R. § 41.37(c)(1)(iv),
we address it on an individual basis in accordance with the rule. Otherwise,
all other claims subject to this rejection stand or fall with claim 20.
2. The Examiner’s Position
With respect to claim 20, the Examiner finds that the limitation
“means for adjusting a composition of the metal alloy bath, so an initial
composition of metal alloy bath remains constant during deposition” is
further defined as “including means for feeding the evaporation means with
a molten alloy of a controlled composition,” which, in turn, is further
defined as “including a recharging furnace” (Final Act. 3; Ans. 3). The
Examiner concludes that, therefore, both the “means for adjusting a
composition” and the “means for feeding the evaporation means” are not
interpreted under 35 U.S.C. § 112, ¶ 6, because these means are further
modified by the structural limitation “recharging furnace” (id.). Under this
interpretation, the Examiner determines that the limitations concerning the
metal alloy having two metallic elements relate to intended use rather than
structural limitations (Final Act. 11; Ans. 7).
Turning to the prior art teachings, the Examiner finds that Vanden
Brande ’234 describes most of the limitations recited in claim 20, but
acknowledges that the reference does not disclose: (i) the specified “means
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for running the substrate through the chamber”; (ii) “a sonic vapor jet coater
depositing a coating on the substrate”; and (iii) a “means for evaporating
including an evaporation crucible including an induction heater” (Final Act.
11–12; Ans. 7). Relying on Schade van Westrum ’942, the Examiner
concludes that: (i) “it would have been obvious to a person having ordinary
skill in the art to have added roller 10, as taught by [Schade van Westrum]
’942, to continuous[ly] feed substrate 1 to the vacuum chamber 2 of [Vanden
Brande] ’234”; and (ii) “to have added a sonic restriction 4 to coat substrate
6 of [Schade van Westrum] ’942 to the enclosure 7 to coat substrate S of
[Vanden Brande] ’234 . . . for the purpose of composition uniformity and
thickness of the coating” (Final Act 13; Ans. 8) (bolding added). And,
relying on Hirokawa ’791, the Examiner concludes that (iii) “it would have
been obvious to a person having ordinary skill in the art to have replaced the
plasma evaporation of [Vanden Brande] ’234 with high frequency induction
heating for evaporation . . . as taught by [Hirokawa] ’791, for the purpose of
producibility and universality . . . and/or for its suitability with predictable
results” (Final Act. 10; Ans. 8).
3. The Appellant’s Contentions
The Appellant contends that the Examiner’s interpretation of “means
for adjusting a composition of the metal alloy bath, so an initial composition
of metal alloy bath remains constant during deposition,” as recited in claim
20, constitutes “clear error” (emphasis omitted) because “[t]he phrase ‘so an
initial composition of metal alloy bath remains constant during deposition’ is
a positively recited part of the means for adjusting” (Appeal Br. 7).
Similarly, the Appellant argues that the Examiner’s refusal to consider the
highlighted portion of the limitation “means for feeding the coater with a
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vapor, the vapor having the at least two metallic elements in a
predetermined and constant ratio” (emphasis added) in claim 20 as
“positively recited limitations” is “contrary to law” (id. at 7–8 (emphasis
omitted)). According to the Appellant, “it is difficult to apply a coating
made of at least two metallic elements in a manner that the coating will have
a constant composition over a substrate” but that
[c]laim 20 addresses this problem by providing a deposition
facility which maintains a constant composition in a
homogeneous metal bath, evaporates the metal bath into a vapor,
feeds a sonic vapor jet coater with the vapor, where the fed vapor
has the at least two metallic elements in a predetermined and
constant ratio, and deposits the coating on the substrate with the
sonic jet vapor coater.
(id. at 9).
The Appellant also contends that although Vanden Brande ’234
“mentions in passing” that the coating may be an alloy, it does not discuss
maintaining the alloy composition to be constant in the bath or providing a
constant ratio of the metallic elements in the vapor (id.). Regarding the
sonic vapor jet coater, the Appellant argues that Vanden Brande ’234 uses an
“entirely different mechanism” involving a plasma discharge to evaporate
liquid metal in a holding tank located directly under the substrate and “there
is no reason why one of ordinary skill in the art would combine the choking
conditions for vapor deposition described in [the Schade van Westrum] ’942
publication with formation of the cold plasma in the [Vanden Brande] ’234
publication” (id.). According to the Appellant, “[t]he uniformity desired in
the Schade van Westrum ’942 publication is not an issue in the [Vanden
Brande] ’234 publication since [the Vanden Brande] ’234 publication does
not disclose a vapor deposition coating process for a multi metal coating”
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(id. at 10). As for Schade van Westrum ’942, the Appellant argues that this
reference does disclose deposition of two different metals using a sonic
vapor jet coater but that, in addressing the significant challenges associated
with processing different metals, it teaches using separate reservoirs for each
metal (id.).
4. Opinion
Starting with claim construction, we are in complete agreement with
the Examiner that the recitations “means for adjusting a composition . . .”
and the “means for feeding the evaporation means . . .” in claim 20 are not
means-plus-function limitations under 35 U.S.C. § 112, ¶ 6, because they are
both further defined by the structural limitation “recharging furnace” (Ans.
3; Final Act. 3). Consequently, the metal alloy limitations, including actual
adjustment of the metallic alloy composition or ratio of the metallic
elements, relate to the material worked upon or the manner of operating an
apparatus rather than means-plus-function limitations under 35 U.S.C. § 112,
¶ 6, that define the claimed facility. Cole v. Kimberly-Clark Corp., 102 F.3d
524, 531 (Fed. Cir. 1996) (“To invoke this statute, the alleged means-plus-
function claim element must not recite a definite structure which performs
the described function.”).
In any event, for the reasons below, the Appellant’s arguments fail in
totality to identify reversible error in the Examiner’s rejection as maintained
against claim 20. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Vanden Brande ’234’s Figure 1 (some annotations added) is
reproduced, as follows:
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Vanden Brande ’234’s Figure 1 above discloses an apparatus, which
is presumably located in a facility, for depositing a metal layer on a substrate
1 using a cold plasma 6 inside an enclosure 7, wherein the apparatus
comprises, inter alia, a vacuum chamber 2 in which the substrate 1 is
continuously fed in a direction defined by arrow 13 and coated in the plasma
6 by a metal vapor formed from a liquid metal 12 kept in a holding tank 8
supplied from a reservoir 4 of liquid metal (Vanden Brande ’234 ¶¶ 27, 51–
63, 72; Abstract; Fig. 1). Vanden Brande ’234 teaches that the metal
coatings are of “excellent quality” and may be based on a metal alloy such
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as a Zn alloy (id. ¶ 75). Vanden Brande ’234 also contemplates using a
magnetic induction field to enable magnetron discharge around the holding
tank 8 (id. ¶ 97).
Although the Appellant correctly points out that Vanden Brande ’234
does not disclose a sonic vapor jet coater (Appeal Br. 8), we agree with the
Examiner that Schade van Westrum ’942 would have prompted a person
having ordinary skill in the art to implement such a device in Vanden Brande
’234 in the manner claimed by the Inventors (Ans. 8; Final Act. 13). Schade
van Westrum ’942, like Vanden Brande ’234, discloses a system for
applying a coating formed of at least two components or elements on a
substrate by vapor deposition (Schade van Westrum ’942 Abstract). Schade
van Westrum ’942 does state that when one vessel is used containing two or
more elements (e.g., Zn-Mg), it makes it difficult to control the vapor ratio
and, often, a disproportionate loss of one element occurs (id. ¶¶ 4–5, 38).
But that problem is not unique to one vessel systems, as Schade van
Westrum ’942 further states that the use of two or more vessels is also
problematic (id. ¶ 5 (last three sentences)). To overcome this problem,
Schade van Westrum ’942 teaches using choking conditions by sonic means
to deposit the two elemental vapors, thereby resulting in “good control of the
process, in particular of the flow of the vapours, and thus the composition
uniformity and thickness of the coating” (id. ¶¶ 7–8, 11–22).
Given the collective teachings found in Schade van Westrum ’942 and
Vanden Brande ’234, we agree with the Examiner that a person having
ordinary skill in the art would have been prompted to implement Schade van
Westrum ’942’s choking conditions using sonic means in Vanden Brande
’234’s facility with a reasonable expectation of improving the compositional
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uniformity and coating thickness of Vanden Brande ’234’s coating layer.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”).
The Appellant’s argument (Appeal Br. 9–10) that Vanden Brande
’234 would not have been combined with Schade van Westrum ’942 because
the former uses an “entirely different mechanism” from that of the latter is
unpersuasive because it fails to consider what the collective teachings would
have suggested to one of ordinary skill in the art. 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.”).
To the extent that Vanden Brande ’234 contemplates coating two or
more metallic vapors, the problems discussed in Schade van Westrum ’942
would also reasonably be expected to occur in Vanden Brande ’234 but
would be solvable using Schade van Westrum ’942’s choking conditions
using sonic means. KSR, 550 U.S. at 417.
As for the Appellant’s argument that Schade van Westrum ’942
requires the use of two vessels rather than only one, we are in complete
agreement with the Examiner’s analysis (Ans. 18–19 (citing, e.g., Schade
van Westrum ’942’s Figure 1 showing only one vessel and Figures 4(a),
7(a), and 7(b) as providing an additional improvement)). Moreover, claim
20 does not preclude the use of two vessels. See In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998) (The “name of the game is the claim” and
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unclaimed features cannot impart patentability to claims); In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”).
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejection as maintained against claim 20.
With respect to claim 47, which depends from claim 20 and further
recites that “the coating has a homogenous [sic] composition” (Claims App.
4), the Appellant argues that “a person of ordinary skill in the art at the time
of the invention would have expected the system of the ’234 publication to
not provide a homogenous coating” (Appeal Br. 11). But that argument fails
to consider the collective teachings of Schade van Westrum ’942 and
Vanden Brande ’234, as we discussed above. Therefore, we also sustain the
rejection as maintained against claim 47.
With respect to claims 29 (and claims 31, 35, 36, 48, and 49
dependent therefrom), 45 (and claim 46 dependent therefrom), and 53, the
Appellant’s arguments are substantially the same as that offered in support
of claim 20 (Appeal Br. 11–21). Therefore, these arguments are
unpersuasive for the same reasons discussed for claim 20.
As for the additional argument in support of claim 53 (Claims App. 5)
that Hirokawa ’791’s replenisher 21 is not a “regulator for maintaining an
initial composition of the liquid metal bath” because Hirokawa ’791 uses a
single pellet that is evaporated and no liquid metal bath is formed or
regulated (Appeal Br. 21), the Examiner concludes that the term “regulator”
is not defined in the Specification, and, therefore, it reads on an ingot feed or
is the same as the “means for adjusting a composition of the metal alloy
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bath” (Non-Final Action entered March 13, 2017 at 5; see also Spec. ¶ 30
(using an ingot of an alloy with the desired composition)). The Appellant
fails to explain how the term “regulator,” when given its broadest reasonable
interpretation consistent with the Specification, is patentably distinct from
the components that facilitate the control of the metallic alloy composition in
the prior art. Therefore, we also discern no persuasive merit in the
Appellant’s additional argument for claim 53.
Rejections B–E.
The Appellant does not offer any argument that is meaningfully
different from those in support of claim 20. Therefore, we also sustain
Rejections B–E for the same reasons given for Rejection A.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
20, 22, 26, 29,
31, 35, 36, 45–
49, 51, 53
103(a) Vanden Brande
’234, Schade van
Westrum ’942,
Hirokawa ’791
20, 22, 26,
29, 31, 35,
36, 45–49,
51, 53

25, 34, 39–44,
55, 56; 20, 22,
26, 29, 31, 35,
36, 45–49, 53
103(a) Vanden Brande
’234, Schade van
Westrum ’942,
Hirokawa ’791,
Shintaku ’506
20, 22, 25,
26, 29, 31,
34–36, 39–
49, 53, 55,
56

23, 24, 32, 33 103(a) Vanden Brande
’234, Schade van
Westrum ’942,
Hirokawa ’791,
optionally
Shintaku ’506,
Ukigaya ’067
23, 24, 32,
33

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Claims
Rejected
35 U.S.C. § References Affirmed Reversed
40, 41, 43, 44 103(a) Vanden Brande
’234, Schade van
Westrum ’942,
Hirokawa ’791,
optionally
Shintaku ’506,
Shimogori ’837
40, 41, 43,
44

54 103(a) Vanden Brande
’234, Schade van
Westrum ’942,
Hirokawa ’791,
optionally
Shintaku ’506,
Yadin ’290
54
Overall
Outcome
20, 22–26,
29, 31–36,
39–49, 51,
53–56

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