Rolls-Royce Corporation et al.

Patent Trials and Appeals Board

May 13, 2021

2020003114 (P.T.A.B. May. 13, 2021)

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.
15/488,037 04/14/2017 Nasrin Al Nasiri 1106-239US01/RCA11555 2432
120486 7590 05/13/2021
Shumaker & Sieffert, P.A.
Rolls-Royce Corporation
1625 Radio Drive
Suite 100
Woodbury, MN 55125
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
05/13/2021 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NASRIN AL NASIRI, SEAN E. LANDWEHR,
ADAM LEE CHAMBERLAIN, and
WILLIAM EDWARD LEE

Appeal 2020-003114
Application 15/488,037
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.
HOUSEL, 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 1–7, 9–11, and 13–22, which constitute
all the claims pending in this application. Claims 8 and 12 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Roll-Royce Corporation and Rolls-Royce
plc as the real parties in interest. Appeal Brief (“Appeal Br.”) filed
November 21, 2019, 3.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to methods of forming environmental barrier
coatings on ceramic or ceramic matrix composite (“CMC”) substrates to
reduce exposure of the substrate to elements and compounds present in the
operating environment of high temperature mechanical systems, such as gas
turbine engines. Specification (“Spec.”) filed April 14, 2014, ¶¶ 2–3.2
Appellant discloses that, in some examples, a method includes oxidizing a
surface of a silicon-containing substrate to form a layer including silica,
depositing, from a slurry including at least one rare earth oxide, a layer
including the at least one rare earth oxide on the layer including silica, and
heating the layer including the at least one rare earth oxide and the layer
including silica to cause the at least one rare earth oxide and silica to react to
form a layer including at least one rare earth silicate. Id. ¶ 4.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A method comprising:
oxidizing a surface of a silicon-containing substrate to
form a layer including silica on the surface of the silicon-
containing substrate;
depositing, from a slurry including particles, on the layer
including silica, a layer including the particles, wherein the
particles comprise less than about 5 wt. % total of any additives
and a balance of at least one rare earth oxide, and wherein the

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
June 25, 2019, the Examiner’s Answer (“Ans.”) dated January 21, 2020, and
the Reply Brief (“Reply Br.”) filed March 20, 2020.
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layer including the particles includes the at least one rare earth
oxide and any additive present in the particles; and
heating at least the layer including silica and the layer
including the particles to cause the silica and the at least one rare
earth oxide to react and form a layer including at least one rare
earth silicate.
Independent claim 20 recites a method similar to claim 1, wherein the
oxidation step entails heating at a temperature between about 1200°C and
about 1400°C, the at least one rare earth oxide of the deposition step is
limited to at least one of ytterbium oxide, yttrium oxide, erbium oxide, and
lutetium oxide, and the reaction step between the rare earth oxide and silica
is performed at a temperature of between about 1300°C and about 1400°C.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Bruce et al. (“Bruce”) US 5,683,825 Nov. 4, 1997
Yasrebi et al. (“Yasrebi”) US 5,927,379 July 27, 1999
Hisamatsu et al.
(“Hisamatsu”)
US 2005/0249977 A1 Nov. 10, 2005
Hazel et al. (“Hazel952”) US 2006/0280952 A1 Dec. 14, 2006
Hazel et al. (“Hazel061”) US 2009/0239061 A1 Sept. 24, 2009
Kirby et al. (“Kirby”) US 2011/0027559 A1 Feb. 3, 2011
Hayashi et al.
(“Hayashi”)
US 2013/0183503 A1 July 18, 2013

William D. Callister, Jr., MATERIALS SCIENCE AND ENGINEERING: AN
INTRODUCTION 93–100 (5th ed. 2000) (“Callister”).
M. Aparicio et al., Colloidal Stability and Sintering of Yttria-Silica
and Yttria-Silica-Alumina Aqueous Suspensions, 19 J. EUR. CERAMIC
SOC’Y 1717 (1999) (“Aparicio”).
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Ziqu Sun et al., Recent Progress on Synthesis, Multi-Scale Structure,
and Properties of Y-Si-O Oxides, 59 INT’L MATERIALS REVIEWS 7,
357–83 (2014) (“Sun”).
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. §103:
1. Claims 1–4, 13–18, and 20–22 as unpatentable over
Hazel952 in view of Hazel061, as evidenced by Callister;
2. Claims 5–7 as unpatentable over Hazel952 in view of
Hazel061, and further in view of Kirby;
3. Claims 5, 6, and 9 as unpatentable over Hazel952 in view of
Hazel061, and further in view of Aparicio;
4. Claims 10 and 11 as unpatentable over Hazel952 in view of
Hazel061, and further in view of Hayashi;
5. Claims 17 and 20 as unpatentable over Hazel952 in view of
Hazel061, and further in view of Sun;
6. Claim 18 as unpatentable over Hazel952 in view of
Hazel061, as evidenced by Callister, and further in view of
Hisamatsu;
7. Claim 19 as unpatentable over Hazel952 in view of
Hazel061, and further in view of Bruce;
8. Claims 1–4, 13–18, and 20 as unpatentable over Hazel952 in
view of Hazel061 and Yasrebi, as evidenced by Callister;
9. Claims 5–7 as unpatentable over Hazel952 in view of
Hazel061 and Yasrebi, and further in view of Kirby;
10. Claims 5, 6, and 9 as unpatentable over Hazel952 in view of
Hazel061 and Yasrebi, and further in view of Aparicio;
11. Claims 10 and 11 as unpatentable over Hazel952 in view of
Hazel061 and Yasrebi, and further in view of Hayashi;
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12. Claims 17 and 20 as unpatentable over Hazel952 in view of
Hazel061 and Yasrebi, and further in view of Sun;
13. Claim 18 as unpatentable over Hazel952 in view of
Hazel061 and Yasrebi, as evidenced by Callister, and further
in view of Hisamatsu; and
14. Claim 19 as unpatentable over Hazel952 in view of
Hazel061 and Yasrebi, and further in view of Bruce.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, 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
Appellant’s arguments and the evidence of record, we are not persuaded of
reversible error in the stated rejections. Therefore, we affirm the Examiner’s
obviousness rejections based substantially on the fact findings, reasoning,
and conclusions set forth in the Final Office Action and the Examiner’s
Answer, which we adopt as our own. We offer the following for emphasis
only.
Rejection 1
The Examiner maintains the rejection of claims 1–4, 13–18, and 20–
22 under 35 U.S.C. § 103 as unpatentable over Hazel952 in view of
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Hazel061, as evidenced by Callister.3 Appellant separately argues claims 1
and 20 only, which we address separately below.

Claim 1
The Examiner finds that Hazel952 teaches a method substantially as
set forth in claim 1 including slurry deposition methods to deliver
precursors, as well as techniques for preparing diffusion coatings such as
chemical vapor deposition (“CVD”) and pack cementation, but fails to teach
that the deposition step is from a slurry including particles of the rare earth
oxide. Final Act. 4–5. However, the Examiner finds that Hazel061 teaches
methods of applying protective barrier coatings to turbine components,
wherein slurry coating is a well-known and predictable alternative to other
known methods (e.g., CVD and pack cementation) for depositing diffusion
coatings. Id. at 5. The Examiner concludes that it would have been obvious
to have deposited Hazel952’s rare earth oxide coating from a slurry
including particles of at least the rare earth oxide because Hazel061 teaches
that slurry deposition is a well-known and conventional method to
predictably deposit such a diffusion coating. Id.
Appellant argues that the Examiner relies upon an incorrect
comparison between Hazel061’s aluminide coatings and Hazel952’s
corrosion resistant metal silicate coatings. Appeal Br. 11. Appellant asserts
that diffusion aluminide coatings do not include ceramics, such as metal
silicates and rare earth oxides. Id. at 12. Appellant contends, therefore, that

3 The Examiner relies on Callister only with regard to dependent claim 18,
which has not been argued separately. Therefore, we need not further discuss
Callister in this Decision.
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an ordinary artisan would have had no apparent reason to look to Hazel061’s
diffusion aluminide coating when considering modifying Hazel952’s metal
silicate layer. Id. Appellant also contends that the Examiner has not
established that CVD, pack cementation, and slurry deposition were well-
known and predictable alternatives for applying Hazel952’s materials for a
corrosion resistant metal silicate coating. Id.; see also Reply Br. 6–7.
Further, Appellant asserts that, to the extent that Hazel061 describes
depositing a ceramic coating, Hazel061 describes using a gel-forming
solution including a ceramic metal oxide precursor, e.g., yttrium methoxide,
and not yttria or another rare earth oxide. Appeal Br. 12; Reply Br. 7–8.
Appellant also asserts that, to the extent that Hazel952 forms a metal silicate
coating by reaction, the metal oxide is deposited by vapor deposition
techniques, rather than by slurry deposition. Appeal Br. 13; Reply Br. 8–9.
Appellant’s arguments are not persuasive of reversible error.
Hazel952 teaches that the corrosion resistant metal silicate coating may be
formed by reaction between a metal source, e.g., metal oxide such as yttria,
and a silica source, wherein the metal source may be deposited by
techniques “similar to those used to prepare diffusion coatings (e.g.,
aluminide diffusion coatings), including chemical vapor deposition (CVD)
techniques, pack cementation techniques, etc., well known [to] those skilled
in the art.” Hazel952 ¶ 48; see also Ans. 4. Hazel061 discloses that diffusion
aluminide coatings may be formed by CVD, pack cementation, or slurry
coating, among others. Hazel061 ¶ 7. Thus, an ordinary artisan would have
understood that slurry coating was a known alternative to CVD and pack
cementation for depositing the metal oxide source.
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Appellant is correct that Hazel061 discloses applying a gel-forming
solution including a metal oxide precursor at a first temperature to a surface,
followed by heating the gel to a second temperature to convert the precursor
to a metal oxide as another way to form the metal oxide coating. Hazel061
¶ 11. However, this disclosure does not negate Hazel061’s disclosure that
slurry coating was a known alternative method to Hazel952’s deposition
techniques, such as CVD and pack cementation, for depositing metal oxide
compounds onto a silica surface. And, as the Examiner sets forth (Ans. 4–5),
the rejection does not rely on Hazel061’s gel-forming solution to deposit
Hazel952’s metal oxide on the silica substrate, but on Hazel952’s explicit
teaching that the metal oxide may be deposited by known techniques for
depositing diffusion coatings and Hazel061’s teaching that slurry coating
was one of those known techniques. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) (citations omitted) (“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference. . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.”).
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 1 as unpatentable over Hazel952 in view of Hazel061. Because
Appellant does not separately argue claims 2–4, 13–18, 21 and 22, we
likewise sustain the Examiner’s obviousness rejection of these claims
consistent with 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Claim 20
Appellant repeats limitations of claim 20, and contends that the
Examiner failed to establish that Hazel952 in view of Hazel061 renders
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claim 20 obvious “for at least the reasons presented with respect to claim 1.”
Appeal Br. 14. However, we are not persuaded by Appellant’s arguments
presented with respect to claim 1 that the Examiner reversibly erred in the
findings, reasoning, and conclusion that claim 1 would have been obvious
over Hazel952 in view of Hazel061 for the reasons given in the Final Office
Action, the Examiner’s Answer, and above. Accordingly, we likewise
sustain the Examiner’s obviousness rejection of claim 20 as unpatentable
over Hazel952 in view of Hazel061.
Rejections 2–7
The Examiner maintains the rejections of various dependent claims
under 35 U.S.C. § 103 as unpatentable over Hazel952 in view of Hazel061,
and further in view of Kirby, Aparicio, Hayashi, Sun, Callister, Hisamatsu,
or Bruce. Final Act. 8–12.
Appellant contends that none of Kirby, Aparicio, Hayashi, Sun,
Callister, Hisamatsu, or Bruce remedy deficiencies in the combination of
Hazel952 and Hazel061, as applied to claim 1. Appeal Br. 15–20.
Because we are not persuaded of any deficiency in the Examiner’s
combination of Hazel952 and Hazel061, as applied to claim 1, we sustain
each of the Examiner’s obviousness rejections of dependent claims 5–7, 9–
11, and 17–20.
Rejections 8–14
The Examiner rejects claims 1–7, 9–11, and 13–20 under 35 U.S.C. §
103 as unpatentable over Hazel952 in view of Hazel061and Yasrebi, alone,
or further in view of Kirby, Aparicio, Hayashi, Sun, Callister, Hisamatsu, or
Bruce. Final Act. 12–21.
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Appellant argues that these rejections suffer from the same
deficiencies as argued against Rejections 1–7. Appeal Br. 21–29. Appellant
argues that Yasrebi fails to remedy these deficiencies. Id. Again, because we
are not persuaded of any deficiency in the Examiner’s combination of
Hazel952 and Hazel061 requiring remedy by Yasrebi, we sustain Rejections
8–14 for the reasons set forth in the Final Office Action, the Examiner’s
Answer, and above.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Answer, the Examiner’s decision to
reject claims 1–7, 9–11, and 13–22 under 35 U.S.C. § 103 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 13–18,
20–22
103 Hazel952, Hazel061,
Callister
1–4, 13–18,
20–22

5–7 103 Hazel952, Hazel061,
Kirby
5–7
5, 6, 9 103 Hazel952, Hazel061,
Aparicio
5, 6, 9
10, 11 103 Hazel952, Hazel061,
Hayashi
10, 11
17, 20 103 Hazel952, Hazel061,
Sun
17, 20
18 103 Hazel952, Hazel061,
Callister, Hisamatsu
18
19 103 Hazel952, Hazel061,
Bruce
19
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1–4, 13–18,
20
103 Hazel952, Hazel061,
Yasrebi, Callister
1–4, 13–18,
20

5–7 103 Hazel952, Hazel061,
Yasrebi, Kirby
5–7
5, 6, 9 103 Hazel952, Hazel061,
Yasrebi, Aparicio
5, 6, 9
10, 11 103 Hazel952, Hazel061,
Yasrebi, Hayashi
10, 11
17, 20 103 Hazel952, Hazel061,
Yasrebi, Sun
17, 20
18 103 Hazel952, Hazel061,
Yasrebi, Callister,
Hisamatsu
18
19 103 Hazel952, Hazel061,
Yasrebi, Bruce
19
Overall
Outcome
1–7, 9–11,
13–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED