Ex Parte Shinde et al

Patent Trial and Appeal Board

Jan 28, 2016

12198478 (P.T.A.B. Jan. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/198,478 08/26/2008
28524 7590 02/01/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Sachin R. Shinde
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.
2008Pl2582US 4139
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
02/01/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SACHIN R. SHINDE and ANAND A. KULKARNI 1
Appeal2014-002413
Application 12/198,478
Technology Center 1700
Before PETER F. KRATZ, N. WHITNEY WILSON, and WESLEY B.
DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 3, 4, 6-15, 17, and 18. We have
jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.
BACKGROUND
Appellants' claimed invention is directed to a method of preparing
wear resistant coatings. The claimed method includes providing a bond
1 Appellants identify Siemens Energy, Inc. as the Real Party in Interest.
App. Br. 1.
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Application 12/198,478
coating and thermal spraying a nanosized nanocrystalline metallic powder
onto the bond coating. Claims 1, 11, and 15.
Independent claim 1 is illustrative:
1. A method of forming a wear resistant coating on a
workpiece comprising:
forming a bond coating on the workpiece;
atomizing a metallic liquid comprising molybdenum and
at least one ofNiCrBSi, S, brass, and bronze, in an atmosphere
to form a crystalline metallic powder;
milling the crystalline metallic powder to form a
nanosized nanocrystalline metallic powder; and
thermal spraying the nanosized nanocrystalline metallic
powder onto the bond coating of the workpiece.
App. Br. 28.
Independent claims 11 and 15 are directed to forming a wear resistant
coating on a combustion turbine component rather than a workpiece.
THE REJECTIONS
Claims 1, 6, and 8-10 stand rejected under 35 U.S.C. § 103(a) over
Severns et al. (US 3,257,178, issued June 21, 1966) ("Severns") in view of
Lavernia (US 5,939,146, issued August 17, 1999), Berczik (US 5,595,616,
issued January 21, 1997), and Thermal Spraying: Practice, Theory, and
Application pp. 27-28 (1985) ("TS"), and optionally Anand et al. (US
5,126,104, issued June 30, 1992) ("Anand").
Claims 3, 4, 11-15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) over Severns in view ofLavernia, Berczik, TS, and optionally
Anand, as applied to claims 1, 6, and 8-10, and Admitted Prior Art (Spec.
i-fi-12-5) and optionally Goto et al. (US 2006/0086695 Al, published April
27, 2006) ("Goto").
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Application 12/198,478
Claim 7 stands rejected under 35 U.S.C. § 103(a) over Severns in
view of Lavernia, Berczik, TS, and optionally Anand, as applied to claims 1,
6, and 8-10, and Ramser (US 4,449,902, issued May 22, 1984).
DISCUSSION
Upon consideration of the evidence, Appellants' arguments, and the
Examiner's findings and reasoning, 2 we find Appellants' arguments and
evidence fail to identify reversible error in the Examiner's obviousness
rejection of any of the claims. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) ("[E]ven assuming that the examiner had failed to make a prima facie
case, the Board would not have erred in framing the issue as one of
'reversible error."'). In particular, are unpersuaded of reversible error in the
Examiner's obviousness rejections based on combinations of the applied
prior art including Anand, which we, accordingly, affirm. 3 We decline to
reach the cumulative rejections over combinations that do not include
Anand. We add the following.
The Examiner finds that Severns teaches a method of forming a wear
resistant coating on a workpiece by thermal spraying of a crystalline,
metallic powder formed of particles comprising molybdenum. Final Act. 3-
4 (citing Severns col. 1, 11. 10-15, 35--45; col. 2, 11. 55---65; col. 6, 11. 5-30;
col. 7, 11. 20-30; col. 8, 11. 30-35; col. 10, 11. 10-15, 44--70; col. 18, 11. 30-
2 We refer to the Final Office Action (mailed April 23, 2013), the Appeal
Brief (filed September 19, 2013), the Examiner's Answer (mailed October
16, 2013), and the Reply Brief (filed December 16, 2013).
3 The Examiner further advises that should claims 11, 12, and 13 be found
allowable, claims 15, 17, and 18 would be objected to (Final Act. 13-14) or
be subject to a double patenting rejection (Ans. 2), however, neither an
objection nor rejection on this ground is before us.
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40). The Examiner further finds de facto that Severns teaches that
prealloying metals included in the metallic powder is desired, but that this is
met even when the metals are introduced as unalloyed powders due to
melting during thermal spraying. Ans. 17-19 (responding to Appellants'
arguments at Appeal Brief 21-22 citing Severns col. 7, 11. 14--41 ).
The Examiner finds that Lavernia---directed to thermal spraying to
form coatings-teaches milling chip or coarse grain material to form
nanosized nanocrystalline metallic powder for thermal spraying and that
using the nanosized nanocrystalline material provides desired high hardness
coatings. Final Act. 4--5 (citing Lavernia col. 2, 11. 40-60; col. 3, 11. 10-30;
col. 4, 11. 40-65; col. 11, 11. 1-5, 45-50).
The Examiner finds Berczik teaches that molybdenum alloys for use
in jet engines and other high temperature applications desirably have boron
and silicon for oxidation resistance and that such alloys have a crystalline
structure. Final Act. 5 (citing Berczik col. 1, 11. 10-25; col. 6, 11. 25-26; col.
19, 11. 20-30, claim 1 ).
The Examiner finds Anand---directed to thermal spray coating and
suitable powders preparing coatings-teaches a prealloyed Mo-NiCrBSi
powder and that prealloying the metals together in the powder used
strengthens the coating structures formed by thermal spray coating. Final
Act. 6-7 (citing Anand col. 1, 11. 5-15; col. 1, 1. 45 through col. 2, 1. 2; col.
3, 11. 40-55; col. 4, 11. 20-25, 64--68; col. 6, 11. 25--45).
The Examiner finds TS teaches that it is well-known to provide a
bond coating before thermal spraying to form an overlaying coat because the
bond coating helps adhere the overlaying coat to the surface. Final Act. 7
(citing TS 27-28). The Examiner further finds TS teaches bond coating can
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Application 12/198,478
be used without surface roughening and that its use can serve as an
alternative to a roughened surface. Ans. 7-9 (citing TS 27-28).
The Examiner concludes, inter alia, that it would have been obvious
to one of ordinary skill in the art at the time of the invention to have used
thermal spray coating with a crystalline powder that includes molybdenum
as taught by Severns (Final Act. 3--4 ), that comprised boron and silicon for
oxidation resistance as taught by Berczik (id. at 5), and that was a prealloyed
Mo-NiCrBSi powder as taught by Anand (id. at 6-7; Ans. 18-19), for
strengthening coating structure as taught by both Anand and Severns (Final
Act. 6-7; Ans. 17-19). The Examiner also concludes that it would have
been obvious to have milled the prealloyed Mo-NiCrBSi powder to form
nanosized nanocrystalline metallic powder to provide the desired high
hardness coatings as taught by Lavernia and because discovering the
optimum or workable range in size would have been routine
experimentation. Final Act. 4--5 (citing In re Aller, 220 F.2d 454, 456
(CCPA 1955)). The Examiner further concludes it would have been obvious
to have included a bond coating to improve the adherence of the
nanocrystalline metallic powder when it is thermally sprayed onto the bond
coating as taught by TS. Final Act. 7-8.
Regarding applying coating to a combustion turbine component, such
as a compressor vane or compressor vane mount, the Examiner finds it to be
admitted prior art (APA) to provide wear resistant components applied by
thermal spraying to increase the life of such components. Final Act. 9
(citing Spec. i-fi-12-5). The Examiner further finds Goto teaches providing
thermal spray coatings of alloy materials including a metal such as
molybdenum to provide a desirable abrasion resistant and lubricious coating.
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Final Act. 10 (citing Goto ilil 4--5). The Examiner concludes it would have
been obvious to one of ordinary skill at the time of the invention,
accordingly, to apply the wear resistant thermal spray coating to combustion
wear resistant components. Final Act. 10-11.
Regarding atomizing the metallic liquid in an oxidizing atmosphere
when forming the crystalline metallic powder that is then milled, the
Examiner finds Ramser teaches using inert gases or gases with a
predetermined amount of oxidizing gases when making metal particles by
atomizing molten metal in order to provide a minimum protective oxidation
layer to minimize subsequent oxidation. Final Act. 11 (citing Ramser col. 1,
11. 5-10; col. 3, 1. 65 through col. 4, 1. 10). The Examiner concludes it would
have been obvious to one of ordinary skill in the art at the time of the
invention to have atomized the metallic liquid in an oxidizing atmosphere in
preparing the nanosized nanocrystalline particles in order to provide a
desirable protective oxidation layer. Final Act. 12.
Claims 1, 6, and 8-10
Appellants argue that modification of Severns by further milling of
the atomized crystalline powder as taught by Lavernia would not have been
obvious because the surface layer formed would be different thereby
rendering Severns inoperable for its intended purpose (App. Br. 16), because
there is no reasonable expectation of success because the specific alloy
composition and powder size are critical parameters (id. at 16-18), and
because it would be more difficult than Severns' unmodified method due to
the further milling step (id. at 18-19). In these arguments, Appellants rely
heavily on Severns' disclosure that "some trial and error and testing" is
usually required, going so far as to contend Severns indicates the process is
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unpredictable and that "one skilled in the art is limited to the specific
processes and preparations and size of the atomized crystalline powder"
disclosed. App. Br. 17-18 (citing Severns col. 7).
We do not find Appellants' arguments supported by persuasive
evidence. The record does not support by a preponderance of the evidence
that Severns would be rendered inoperable for its intended purpose. The
record also does not support that one of ordinary skill in the art would not
have had a reasonable expectation of success. "Obviousness does not
require absolute predictability of success ... all that is required is a
reasonable expectation of success." In re 0 'Farrell, 853 F.2d 894, 903-904
(Fed. Cir. 1988). Further, Appellants' arguments fail to properly "take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ" in overcoming difficulties in combining the teachings
of the cited references. KSR Int 'l. Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Appellants' arguments also fail to address the relied on basis for the
combination to include further milling, providing desired high hardness
coatings.
Appellants argue that modifying Severns to include boron and silicon
as taught by Berczik would detract from the alloy's function and the ability
to thermally coat a normally prepared surface. App. Br. 19.
Appellants' argument is unpersuasive. Appellants' argument is
grounded on the contention that Severns cannot be modified without
detracting from its function, but persuasive evidence of this is lacking. In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (attorney argument cannot
take the place of evidence). Further, we find Appellants' argument
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unpersuasive of reversible error for the grounds of rejection where the
Examiner relies on Anand for its disclosure of the alloy composition.
Appellants argue that Anand is not properly combinable because
Severns teaches elemental components of the coating must be pre-alloyed
prior to deposition (Severns col. 7, 11. 14--41) and one skill in the art would
not be motivated to use the powder of Anand due to the tendency of the
coating to crack or spall. App. Br. 21-23.
We do not find Appellants' arguments persuasive where the Examiner
has determined Anand teaches Mo and NiCrBSi alloyed together (i.e., Mo-
NiCrBSi) in a powder (prealloying) and that the prealloying strengthens the
coating structures formed by thermal spray coating (Final Act. 6-7) and
there is no persuasive evidence on this record that one of ordinary skill in the
art would be discouraged from using the prealloyed powder of Anand or not
find it obvious-armed with the knowledge of the cited prior art, including
Anand-to form a crystalline metallic powder by atomizing a metallic liquid
comprising molybdenum and NiCrBSi.
Appellants argue TS teaches away from applying molybdenum and its
alloys onto a bond coating and that Lavernia and Severns-in teaching the
surface to be sprayed is to be roughened to increase bonding strength-both
teach away from use of a bond coating. App. Br. 12-15, 20-21.
As to applying molybdenum onto a bond coating, Appellants contend
that TS, at section 3.8, teaches preparing a clean smooth surface and argues
this is typically an inadequate surface preparation (App. Br. 13) and that TS,
at section 3. 8 .1, teaches molybdenum has poor oxidation resistance and is
therefore not suitable (id. at 13-14). Appellants contend TS, accordingly,
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teaches away from use of a bond layer with a molybdenum coating. App.
Br. 13-15, 19-20.
As to the roughened surface, Appellants argue pitted surfaces are
necessary for successful thermal spray coating (App. Br. 10-11) and point to
disclosure in both Lavernia and Severns where roughening is used to prepare
surfaces for thermal spraying (id. at 11-13). Appellants further argue that
the bond coating provides a pit free bond coating and would probably make
the coating of Severns substantially more difficult to apply. App. Br. 20.
Appellants contend Lavernia and Severns, accordingly, teach away from use
of a bond layer. App. Br. 13.
Having carefully considered the record, we are not persuaded by
Appellants' arguments that there is any teaching away. See, e.g., DyStar
Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006) ("We will not read into a reference a teaching
away from a process where no such language exists."). Whether a reference
teaches away from a claimed invention is a question of fact. In re Harris,
409 F.3d 1339, 1341 (Fed. Cir. 2005). "A reference does not teach away ...
if it merely expresses a general preference for an alternative invention but
does not 'criticize, discredit, or otherwise discourage' investigation into the
invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)).
We do not find Appellants' contentions that a clean smooth surface is
typically an inadequate surface preparation for a molybdenum coating
sufficiently supported by evidence on this record or, as Appellants merely
contend what is typically inadequate, that this rises to a teaching away.
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Particularly, we find the cited teachings as to roughness and roughening a
surface before thermal spraying do not rise to a teaching away. Ans. 6-7
(citing Lavernia col. 6, 11. 55-60; Severns col. 10, 11. 55---60). Further, there
is no teaching away where the bond coat itself can be formed with a
desirably rough profile for receiving a thermal spray coat. Ans. 7-8 (citing
TS 27-28). As to Appellants' contentions regarding molybdenum's
susceptibility to oxidation (App. Br. 13-14), we find these unpersuasive
where the cited record does not foreclose that molybdenum can be used-
particularly as the combination of teachings here provides corrosion
resistance-and Appellants fail to establish that conditions identified for
which use of molybdenum is not suited-"use in air at temperatures
susceptible to corrosion in aqueous salt solutions" (TS section 3 .8.1 }-are
necessarily expected (generally App. Br. & Reply Br.).
For these reasons, we affirm the Examiner's obviousness rejection of
claims 1, 6, and 8-10 over Severns in view of Lavernia, Berczik, TS, and
Anand.
Claims 3, 4, 11-15, 17, and 18
Appellants argue the claimed subject matter is an improvement over
the admitted prior art, i.e., Spec. i-fi-12-5 (App. Br. 25), but this is not a
cogent argument that it would not have been obvious to coat jet turbine
components using the improved method. Appellants also argue one of skill
in the art would not have a reasonable expectation of success using the
method Goto uses to apply a coating to a turbine blade (App. Br. 25-26), but
this is likewise not a cogent argument that it would not have been obvious to
coat jet turbine components. The basis of the rejection was a combination of
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references in which Goto was relied on solely for what was to be coated, not
for Goto' s particular method or process.
For these reasons, we affirm the Examiner's obviousness rejection of
claims 3, 4, 11-15, 17, and 18 over Severns in view ofLavernia, Berczik,
TS, Anand, and AP A, and also in further view of Goto.
Claim 7
Appellants argue Ramser's "specific atomizing atmosphere" would
have deleterious effects on the Severn's coating---emphasizing that specific
composition and techniques are important in Severns-and that one skilled
in the art would not see why the oxidizing atmosphere of Ramser would be
applied to Severns. App. Br. 26-27.
Appellants' skeletal arguments are unpersuasive because they fail to
address the combined teachings of the references as applied by the Examiner
and, being merely attorney argument, are not indicative of reversible error.
Accordingly, we affirm the Examiner's obviousness rejection of claim
7 over Severns in view of Lavernia, Berczik, TS, Anand, and Ramser.
CONCLUSION
The Examiner's rejection of claims 1, 3, 4, 6-15, 17, and 18 under
35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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