Ex Parte Shinde et alDownload PDFPatent Trial and Appeal BoardJan 28, 201612198478 (P.T.A.B. Jan. 28, 2016) Copy Citation 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. Appeal2014-002413 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"). 2 Appeal2014-002413 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. 3 Appeal2014-002413 Application 12/198,478 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 4 Appeal2014-002413 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. 5 Appeal2014-002413 Application 12/198,478 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 6 Appeal2014-002413 Application 12/198,478 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 7 Appeal2014-002413 Application 12/198,478 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, 8 Appeal2014-002413 Application 12/198,478 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. 9 Appeal2014-002413 Application 12/198,478 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 10 Appeal2014-002413 Application 12/198,478 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 cdc 11 Copy with citationCopy as parenthetical citation