Ex Parte Beele

Patent Trial and Appeal Board

Jun 28, 2016

11598213 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111598,213 11/10/2006
20350 7590 06/30/2016
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Wolfram Beele
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.
92531-718851 (069200US) 7457
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
ipefiling@kilpatricktownsend.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WOLFRAM BEELE
Appeal2014-007720
Application 11/598,213
Technology Center 1700
Before CHUNG K. PAK, GEORGE C. BEST, and MONTE T. SQUIRE,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 4-7, 9-11, 14-16, and 20-
22 of Application 11/598,213 under 35 U.S.C. § 103(a) as obvious. Final
Act. (July 10, 2013). Appellant1 seeks reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 Sulzer Metco AG is identified as the real party in interest. Br. 3.
Appeal2014-007720
Application 11/598,213
BACKGROUND
The '213 Application describes methods for coating base bodies.
Spec. ii 2. These methods are said to be useful for coating turbine blades
used in airplane engines or industrial gas turbines. Id. ii 3.
Claim 1 is representative of the '213 Application's claims and is
reproduced below:
1. A method for the coating of a base body, wherein a layer
of a platinum modified aluminide of the kind PtMAl is produced
on the base body,
wherein M designates the metals iron (Fe) or nickel (Ni) or cobalt
(Co) or combinations of these metals,
wherein the layer is produced by means of a physical deposition
out of the gas phase (PVD),
wherein at least the two components platinum (Pt) and aluminum
(Al) are carried by an ionized inert gas and physically deposited
out of the vapor phase in metallic form and in a substantially
oxygen-free environment,
wherein the components platinum (Pt) and aluminum (Al) are
deposited simultaneously, and
wherein the physical deposition is carried out at a process
pressure of at least 0.1 mbar.
Br. 17 (Claims App.) (paragraphing and indentation added).
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Application 11/598,213
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4, 5, 9-11, 15, 16, and 20-22 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Saint
Ramond,2 Beele,3 and Cosack.4 Final Act. 5.
2. Claims 4-7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Saint Ramond, Beele, Co sack, and
Madhava. 5 Final Act. 8.
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Saint Ramond, Beele, Co sack, and Kohara. 6
Final Act. 9.
4. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Saint Ramond, Beele, Cosack, and the admitted
state of the prior art. Final Act. 10.
DISCUSSION
Rejections 1-4. Appellant stipulates that all of the dependent claims
stand or fall with independent claim 1 except for claim 9. Br. 6. Claim 9 is
argued separately. Id. We address each of the argued claims in tum.
2 US 6,645,351 B2, issued November 11, 2003.
3 US 6,346,301 B2, issued February 12, 2002.
4 WO 2005/052212 Al, published June 9, 2005. We cite US 2007/0125639
Al, published June 7, 2007, as the English-language counterpart.
5 US 2006/0046091 Al, published March 2, 2006.
6 US 2005/0276990 Al, published December 15, 2005.
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Application 11/598,213
Claim 1. The Examiner rejected claim 1 as unpatentable over the
combination of Saint Ramond, Beele, and Cosack. Final Act. 5. Appellant
presents five arguments for reversal of this rejection. We address these
arguments seriatim.
First, Appellant argues that the rejection should be reversed because
the Examiner has not identified a rational underpinning to support the legal
conclusion of obviousness. Br. 7-8. In particular, Appellant argues that the
Examiner erred by finding that a person of ordinary skill in the art would
have had reason to modify Saint Ramond to co-deposit platinum and
aluminum as described by Cosack. Id. at 7. As the Examiner found, Co sack
states that "'separate application of platinum and aluminum is a
disadvantage from the standpoint of process engineering.'" Final Act. 7
(quoting Cosack ,-i 3). Appellant argues that the Examiner erred by
considering the quoted passage from Cosack in a vacuum rather than in
context. Br. 7-8.
The Examiner responds that Co sack describes the prior art's separate
application of platinum and aluminum in two steps and describes the
advantages of combining these two steps into a single step to reduce
production time. Answer 8. The Examiner acknowledges that Cosack
describes the prior art as using different methods in the platinum deposition
step and the aluminum deposition step. Id. The Examiner also finds that,
even if the same deposition method is used in the platinum and aluminum
deposition steps, combination of the steps into a single operation would still
provide increased throughput and simplify process engineering. Id.
After consideration of these arguments and review of the prior art, we
are not persuaded that the Examiner erred in finding that a person of
ordinary skill in the art would have had a reason to modify Saint Ramond to
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Application 11/598,213
combine the platinum and aluminum deposition steps as described in
Co sack.
Second, Appellant argues that the rejection of claim 1 should be
reversed because the modifications proposed by the Examiner would
improperly change Saint Ramond' s principle of operation. Br. 8-9. In
particular, Appellant argues that Saint Ramond describes the formation of a
bonding underlayer by using physical vapor deposition (PVD) to deposit a
plurality of individual layers consisting of alternate layers of aluminum and
a platinum group metal and causing the resulting layers to react together
exothermically. Id. at 8. Appellant argues that replacing this process with
co-deposition of aluminum and the platinum group metal would eliminate
Saint Ramond's principle of operation. Id. at 8-9. Appellant contends that
"[ s ]uch a modification would 'require a substantial reconstruction and
redesign of the elements shown in [St. Ramond] as well as a change in the
basic principle under which the [St. Ramond] construction was designed to
operate."' Id. at 9 (quoting In re Ratti, 270 F.2d 810, 813 (CCPA 1959)).
We are not persuaded by this argument. We agree with the Examiner
that Appellant has an overly narrow view of Saint Ramond's principle of
operation. See Answer 9-10. Saint Ramond describes a method for creating
and intermetallic platinum-aluminum compound that serves as a bonding
underlayer between a superalloy metal substrate and ceramic outer layer and
provides corrosion protection. Saint Ramond col. 1, 11. 28-65. Saint
Ramond describes the need to control the way in which the bonding
underlayer interacts with the superalloy substrate:
With those known methods, the way in which the bonding
substrate is formed gives rise to interaction with the substrate.
The Applicant has observed the various elements of the
superalloy substrate diffusing into the bonding underlayer can
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Application 11/598,213
form undesirable precipitates therein that are liable in particular
to affect the alumina film developed on the surface of the
bonding underlayer. In addition, it is difficult to control the
precise composition of the bonding underlayer.
Id. at col. 2, 11. 41--49. Saint Ramond states that diffusion of elements from
the superalloy substrate into the bonding underlayer can be prevented by
avoiding application of heat in excess of 900° C. Id. at col. 3, 11. 27-29.
Based upon the foregoing, we find that Saint Ramond's principle of
operation is using PVD processes to avoid application of excess heat,
thereby preventing diffusion of material from the superalloy substrate into
the platinum metal aluminide coating. Appellant's arguments, therefore, are
unpersuasive because Appellant has misidentified Saint Ramond' s principle
of operation.
Moreover, the Examiner's proposed modifications of Saint Ramond
neither change the principle of operation nor require extensive redesign of
Saint Ramond's process or equipment. Cosack describes a PVD process for
the joint deposition of platinum and aluminum on a component to be coated.
See Cosack ,-i 5. In normal operation, Cosack's joint deposition process does
not require heating the diffusion of material from the substrate into the
coating that Saint Ramond describes as pernicious. Indeed, Cosack states
that if interdiffusion between the coating and the substrate is desired, an
optional heat treatment step should be employed. See id. ,-i 25. Furthermore,
modification of Saint Ramond's equipment to use Cossack's joint deposition
process merely requires replacement of Saint Ramond' s separate aluminum
and platinum sputtering targets with a single sputtering targets comprised of
a mixture of aluminum and platinum. See id. ,-i 21.
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For the foregoing reasons, we are not persuaded that the Examiner's
proposed modifications to Saint Ramond' s process would change its
principle of operation.
Third, Appellant argues that the Examiner's proposed modifications
of Saint Ramond would render Saint Ramond unsatisfactory for its intended
purpose. Br. 9-11. In particular, Appellant argues that the Examiner's
proposed modifications would render Saint Ramond unsatisfactory because
( 1) the modified process would fail to prevent diffusion of the superalloy
substrate material into the bonding underlayer and (2) would not alleviate
difficulties associated with precisely controlling the bonding underlayer' s
composition. Id. We address these arguments in tum.
Appellant's argument that the Examiner's proposed process would not
prevent diffusion of material from the substrate into the underlayer is based
upon Saint Ramond's statement that "[t]he first individual layer to be
deposited on the substrate is preferably a layer constituted essentially of
platinum, since platinum is less liable to diffuse into the metal substrate
th[a]n is aluminum." Saint Ramond col. 5, 11. 51-59 (quoted Br. 10).
Appellant argues that jointly depositing aluminum and platinum would place
some aluminum in contact with the underlying substrate, thereby allowing
the undesired interdiffusion to occur. Br. 10. We are not persuaded by this
argument because Saint Ramond describes the use of platinum as the first
layer to be deposited as preferable, but not as necessary. See Saint Ramond
col. 5, 11. 51-59. Appellant does not point us to any evidence that, under the
conditions described in Saint Ramond, aluminum will necessarily
interdiffuse with the superalloy substrate. Furthermore, Cosack describes
the need for an optional heat treatment step for interdiffusion to occur. See
Cosack ,-i 25.
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Appellant also argues that the Examiner's proposed modifications
would render the process unsuitable for Saint Ramond's purpose because the
modified process would not alleviate the difficulties associated with
precisely controlling the bonding underlayer' s composition. Br. 10-11. We
are not persuaded by this argument because Cosack describes its joint
deposition process as allowing control of the coating composition by
controlling the composition of the sputtering target. See Cosack ,-i 23. The
fact that Cosack uses a different, albeit slightly more complicated, method to
control coating composition does not render the Examiner's modified
process incapable of achieving the control described as desirable in Saint
Ramond.
For the foregoing reasons, we are not persuaded that the Examiner's
proposed modifications would render Saint Ramond unsatisfactory for its
intended purpose.
Fourth, Appellant argues that Beele is not available for use as part of
a rejection under§ 103 because it is non-analogous art. Br. 11-13.
To rely upon a reference as a basis for an obviousness rejection of
Appellant's claims, the reference must either ( 1) be in the field of the
inventor's endeavor or (2) be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441 F .3d 977, 986-87
(Fed. Cir. 2006); In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
Appellant argues that Beele is in a different field of endeavor from the
claimed invention. Br. 12-13. In particular, Appellant argues that the
claimed invention is directed to applying a platinum modified aluminide
layer to provide oxidation and hot corrosion resistance to the underlying
base body. Id. at 12. Beele, on the other hand, describes the formation of a
heat-insulating oxide layer consisting of zirconia and yttria on a metallic
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Application 11/598,213
substrate. Id. Thus, Appellant contends Beele is in a different field of
endeavor from the claimed invention.
We are not persuaded by this argument.
Appellant's Specification broadly describes the field of endeavor to
which the claimed method belongs: "The method relates to a method for
coating of a base body and also to a workpiece with a base body on which a
layer is applied in accordance with this method." Spec. ,-i 2. The Examiner
described the field of endeavor in a more limited fashion and found that
Saint Ramond, Cosack, and Beele are within this field. Answer 15
("Generally, Beele [describes] a cathode sputtering method onto a gas
turbine blade (see column 6, lines 36--40) [,] and this is the same as Saint
Ramond and Cosack and [,] thus [,] in the same technology area."). See
generally id. at 15-1 7.
We, therefore, agree with the Examiner's finding that Beele is in the
same field of endeavor as the claimed invention.
Fifth, Appellant argues that the combination of Saint Ramond, Beele,
and Cosack does not describe or suggest a method for coating a base body at
a process pressure of at least 0.1 mbar. Br. 14. In particular, Appellant
argues that the Examiner has not provided any "technical reasoning as to
how one of ordinary skill in the art moves from the ranges of St. Ramond
and/or Cosack to the range of Beele." Id. Based upon this assertion,
Appellant argues that the rejection of claim 1 is based on impermissible
hindsight. Id.
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Application 11/598,213
We are not persuaded by Appellant's argument. 7 As the Examiner
found, Beele describes formation of a coating by a sputtering process that is
performed at pressures less than l mbar, preferably 0.3-0.9 mbar. Beele col.
6, 11. 24-27. Thus, Beele describes a range which overlaps Appellant's
claimed range of greater than 0 .1 mbar. The claimed range, therefore, is
prima facie obvious. In re Boesch, 617 F.2d 272, 275 (CCPA 1980) (where
ranges overlap, a prima facie case of obviousness is made out); see also In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (a prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art); In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (same). Appellant has not provided sufficient
argument or evidence-for example, evidence of unexpected results-to
rebut the prima facie case of obviousness.
In view of the foregoing, we affirm the Examiner's rejection of claim
1 as unpatentable under § 103 over the combination of Saint Ramond,
Cosack, and Beele. Based upon Appellant's stipulation, Br. 6, we also
affirm the rejection of claims 2, 4-7, 10, 11, 14-16, and 20-22.
Claim 9. Appellant presents separate argument for the patentability
of claim 9. Claim 9 reads:
Claim 9. A method in accordance with claim 1 wherein all
components of the layer are deposited in one method step
essentially simultaneously.
Appeal Br. 18 (Claims App.).
7 In view of our disposition of this issue, we need not address Appellant's
arguments regarding the question of whether or not the Examiner erred by
finding that pressure was an art-recognized result-effective variable at the
time of the invention.
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Appellant argues that the combination of Saint Ramond, Beele, and
Cosack does not describe or suggest the limitation added by claim 9. Br. 15.
We are not persuaded by this argument. Cosack states that "[i]n
addition to aluminum and platinum, the [sputtering target] may also contain
nickel and optionally cobalt. Nickel and cobalt, like platinum, may also be
integrated as islands, i.e., inserts, into a sheet of high-purity aluminum."
Co sack ,-i 22.
We, therefore, affirm the rejection of claim 9.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1, 2,
4-7, 9-11, 14-16, and 20-22 pursuant to§ 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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