Tsotsis, Thomas K. et al.

Patent Trials and Appeals Board

Feb 4, 2020

13833686 - (D) (P.T.A.B. Feb. 4, 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.
13/833,686 03/15/2013 Thomas K. Tsotsis 038190/427621 4331
67141 7590 02/04/2020
Boeing and Alston & Bird, LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
patentadmin@boeing.com
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS K. TSOTSIS, MARVI A. MATOS, ALPANA
RANADE, and LAURA M. MURPHY
Appeal 2019–004753
Application 13/833,686
Technology Center 1700
BEFORE BEVERLY A. FRANKLIN, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8, 10, and 32. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Boeing
Company. Appeal Br. 1.
Appeal 2019-004753
Application 13/833,686

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CLAIMED SUBJECT MATTER

Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:

1. A composite, comprising: a substrate comprising a fiber
reinforced polymeric matrix, and a barrier coating comprising
a silicon-oxy-carbide (SOC) layer having a thickness from
about 10 to about 400 nm, the SOC layer attached directly to
at least one surface of the substrate, wherein the fibers
comprise carbon or graphite fibers, and the polymeric matrix
is selected from a polyimide, an epoxy, bismaleimide, and a
cyanate ester.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yanagihara et al. JP2010- 158832 July 22, 2010
McCormick et al. US 2008/0241506 A1 Oct. 2, 2008
Durandeau et al. US 2009/0202817 A1 Aug. 13, 2009
CAS Registry Number: 39345-87-4, SciFinder® American Chemical
Society (ACS), 2016 (hereafter “RN “33–3”).
David R. Harding et al., “Oxidation Protective Barrier Coatings for High-
Temperature Polymer Matrix Composites”, J. Mater. Res., Vol. 9, No. 6,
Jun 1994, Cambridge.org (hereafter “Harding”).
Cas Registry Number 7839-33-3 Scifinder (2017) (hereafter “RN “33–
3”).

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REJECTIONS
1. Claims 1–8, 10, and 32 are rejected under pre-AIA 35 U.S.C.
§103(a) as obvious over Yanagihara (English machine translation) as
evidenced by RN ‘87-4, further in view of McCormick, and further in view
of Harding as evidenced by RN ‘33–3.
2. Claim 2 is rejected under pre-AIA 35 U.S.C. §103(a) as obvious
over Yanagihara as evidenced by RN ‘87-4, in view of McCormick, further
in view of Harding as evidenced by RN ’33-3, and further in view of
Durandeau.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in 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.”). After considering the evidence
presented in this Appeal (including the Examiner’s Answer, the Appeal
Brief, and the Reply Brief), we are persuaded that Appellant identifies
reversible error. Thus, we reverse the Examiner’s rejections, with the
following emphasis.
We agree with Appellant that the Examiner’s proposed modification
of Yanagihara in view of McCormick is misplaced. We refer to the
Examiner’s position as set forth on pages 5–7 of the Final Office Action.
Therein, the Examiner states:

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a. However Yanagihara does not expressly disclose the polyamide-
imide resin is an imide resin with a coating of the silicon oxycarbide
as well as a nitride.

b. McCormick discloses in the abstract protected polymeric film
comprises a polymeric film substrate having a first major surface and
a second major surface opposite the first major surface, and a
protective structure provided on at least the first major surface of the
substrate, wherein the protective structure comprises a layer of boron
oxide and an inorganic barrier layer such as inorganic oxide,
oxynitride, or oxycarbide, such as silicon oxides, nitrides or carbides;
and metals such as silicon, aluminum or combinations thereof (See ¶
0006). From ¶ 0025 of McCormick the term “polymeric” refers to
homopolymers and copolymers, as well as homopolymers or
copolymers that may be formed in a miscible blend such as for
polyimide (For Claim 10) or polyamideimides. McCormick discloses
at Fig. 1 and ¶ 0023 that the inorganic barrier layer 18 is intermediate
substrate 12 and boron oxide layer 16 {i.e. the inorganic layer
is directly on the polyimide}. McCormick divulges at ¶s 0002, 0008
and 0018 that the protected polymeric film has a reduced tendency to
transmit moisture providing protective structures with reduced
inherent, but potentially undesirable, tendency of polymeric films to
transmit moisture which inhibition of the transmission of moisture can
be used in a variety of applications such as for substrates for use with
organic electronic devices such as organic electroluminescent devices,
organic transistors, liquid crystal displays, and other electronic
components.
. . . . . . . . . . . . . . . . . .

Here the polyamide imide and polyimide with an inorganic barrier
layer thereon of silicon oxycarbide or silicon nitride is for a protective
layer to inhibit the transmission of moisture.

c. One of ordinary skill in the art would have considered it obvious
at the time of the invention to have from Yanagihara a composite of a
polymer like polyamideimide having directly attached a silicon
oxycarbide plasma deposited gas barrier coating of a thickness of 5 to
300 nm, as afore-described, where from McCormick the
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polyamideimide is substituted or used with polyimide substrate and
the silicon oxycarbide is used with or for silicon nitride motivated to
have a protective layer to inhibit the transmission of moisture as for
the composite of Claims 1–10 and 32.

The Examiner states that the motivation to combine Yanagihara with
McCormick is “to have a protective layer to inhibit the transmission of
moisture as for the composite.” Ans. 20–21.
However, as Appellant explains in the Appeal Brief,
McCormick relies on the “protective structure” (more particularly, the boron
oxide layer) to provide protection against moisture. Appeal Br. 8. Appellant
explains that McCormick states “the present invention provides a method for
reducing the transmission of moisture by a polymeric film by applying a
protective structure, such as those described above, to at least a first
major surface of the polymeric film.” McCormick, ¶ [0009]; Reply Br. 5–6.
Appellant states that McCormick clearly defines the “protective structure” as
“the layer of boron oxide and the inorganic barrier layer that have been
provided on the polymeric film substrate.” Id. at ¶ [0019]. Reply Br. 6.
Appellant argues that it is the protective structure that provides moisture
protection, not the underlying substrate. Appellant states that, thus, if one of
ordinary skill in the art were motivated to modify Yanagihara in view of
McCormick to provide moisture protection to the composite of Yanagihara,
such would result in the substitution of the barrier layer of Yanagihara with
the protective structure of McCormick. Appellant thus submits that the
moisture protection disclosed in McCormick provides no motivation
regarding modification of the substrate of Yanagihara as proposed by the
Examiner. Reply Br. 6. We are persuaded by this line of argument.
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Furthermore, as Appellant points out, the substrate film of Yanagihara
requires transparency, and nowhere does McCormick describe the polyimide
as being transparent. Appeal Br. 7–8.
Appellant also submits that the further modification of Yanagihara in
view of the teachings of Harding would destroy the light transmittance of
Yanagihara’s film for the reasons stated by Appellant on pages 9–10 of the
Appeal Brief, with which we agree.
In view of the above, we agree with Appellant that on this
record, the Examiner’s proposed modification of Yanagihara appears
to be premised on an impermissible use of hindsight after review of
Appellant’s disclosure, rather than on a supported reason to modify
Yanagihara available to an ordinarily skilled artisan and consistent
with the teachings thereof. KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007) (The fact finder must be aware “of the distortion
caused by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning”; citing Graham v. John Deere Co., 383 U.S.
1, 36 (1966) (warning against a “temptation to read into the prior art
the teachings of the invention in issue”)).
We therefore reverse the rejections.
CONCLUSION
We reverse the Examiner’s decision.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Reversed Affirmed
1–8, 10 and
32
103 Yanagihara, RN
‘87–4, McCormick
and Harding
1–8, 10 and
32

2 103 Yanagihara, RN
‘87–4,
McCormick,
Harding, RN ‘33–3
and Durandeau
2
Overall
Outcome
1–8, 10 and
32

REVERSED