Ex Parte Bernaski et al

Board of Patent Appeals and Interferences

Jul 16, 2012

10903321 (B.P.A.I. Jul. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/903,321 07/30/2004 Ryan Richard Bernaski EH-11319 4647
30188 7590 07/16/2012
PRATT & WHITNEY
400 MAIN STREET
MAIL STOP: 132-13
EAST HARTFORD, CT 06108
EXAMINER
LUND, JEFFRIE ROBERT
ART UNIT PAPER NUMBER
1716
MAIL DATE DELIVERY MODE
07/16/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RYAN RICHARD BERNASKI and BARTOLOMEO PALMIERI
____________

Appeal 2011-006732
Application 10/903,321
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 8, 10-12,
and 23-28 directed to a fixture adapted to selectively mask portions of a gas
turbine engine component while a coating is applied to the unmasked
portions. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

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Application 10/903,321

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STATEMENT OF THE CASE
Claim 8 is illustrative of the subject matter on appeal:
8. A fixture for selectively masking portions of a gas turbine engine
component disposed therein while a workpiece coating is being applied to
unmasked portions thereof, predetermined surfaces of the fixture
comprising:
an average surface roughness of about 25 Ra or less to
minimize the amount of workpiece coating bridging that will occur
between the fixture and the gas turbine engine component when the
workpiece coating is applied; and

a Rockwell hardness of about 65 Rc or more to ensure the
fixture can maintain an average surface roughness of about 25 Ra or
less throughout repeated applications of the workpiece coating,

where the predetermined surfaces include at least portions of the surfaces of
the fixture proximate the gas turbine engine component where workpiece
coating bridging might occur across a gap in a plasma spray coating process
that is configured to minimize the amount of rework needed on the gas
turbine engine component after the gas turbine engine component is coated,
and the fixture and the gas turbine engine component disposed therein define
the gap that is as small as about 0.020 inches.

The Examiner relies upon these references in the rejection (Ans. 3):1
Maxfield US 5,642,641 Jul. 1, 1997
Marszal US 5,792,267 Aug. 11, 1998
Koshiishi US 5,919,332 Jul. 6, 1999
Schaeffer US 5,891,267 Apr. 6, 1999
Shimoyama JP 11-042867 A Feb. 16, 1999
Arvin 2004/0109735 A1 June 10, 2004

1 Our analysis makes reference to the Examiner’s Answer mailed July 22,
2010 (“Ans.”), the Appeal Brief filed April 14, 2010 (“App. Br.”), and the
Reply Brief filed September 20, 2010 (“Reply Br.”).
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THE REJECTIONS
Claims 8, 10-12, and 23-28 are pending and stand rejected. The
Appellants seek review of the following rejections under 35 U.S.C. § 103(a):
Claims 8, 10-12, and 23-28 over Marszal in view of Koshiishi and
Shimoyama; claims 12 and 25-27 over Marszal in view of Koshiishi,
Shimoyama, Maxfield, and Arvin; and claim 28 over Marszal in view of
Koshiishi, Shimoyama, and Schaeffer.

ISSUE
The following dispositive issue arises:
Does the Examiner err in concluding that the applied art would have
prompted an ordinary artisan to combine the elements of “an average surface
roughness of about 25 Ra or less” and “a Rockwell hardness of about 65 Rc
or more” in a gas turbine masking fixture as specified in claim 8?
We answer the question in the affirmative and REVERSE.

ANALYSIS
(with Findings of Fact and Principles of Law)
Claim 8 is the only independent rejected claim. Our analysis of the
above issue is dispositive of all rejections before us in this appeal.
Claim 8 is directed to a fixture adapted to selectively mask portions of
a gas turbine engine component while a workpiece coating is applied to the
unmasked portions. Claim 8; Spec. ¶¶ [0003-0004]. “[I]n the hottest
sections of modern gas turbine engines, metallic materials are utilized in hot
gas paths at temperatures above their melting points.” Spec. ¶ [0002].
“During engine operation,” certain “surfaces of the turbine vanes are directly
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Application 10/903,321

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exposed to the hot gases, and are therefore susceptible to accelerated
oxidation and corrosion.” Id. at ¶ [0003]. “[A] ceramic coating is generally
applied to” exposed surfaces of the vane, but surfaces that “are not directly
exposed to the hot gases” are left uncoated because “coating these []
surfaces may actually be detrimental and degrade the fatigue life of the
attachment mechanisms and other highly stressed regions thereof.” Id. Thus
a fixture is used to selectively mask portions of the vane. However, when
the coating is applied, “bridging of the ceramic coating . . . often occurs
between the vane and the fixture itself.” Spec. ¶ [0004]. The undesirable
formation of a coating bridge may cause “some of the ceramic coating to
chip away from the vane, or cause extra ceramic coating to adhere to the
vane, when the vane is removed from the fixture.” Id.; see Marszal 1:63-
2:16. This in turn requires “a significant amount of handiwork and/or
rework in order to prepare the vane for use in a gas turbine engine.” Ibid.
The Appellants address the bridging problem by utilizing “controlled
average surface roughness to ensure that the workpiece coating does not
adhere to the fixtures, and controlled Rockwell hardness to ensure that the
fixtures can maintain those desired surface roughnesses throughout time in
the harsh, abrasive coating environments in which they are used.” Id. at ¶
[0006]. Specifically, claim 8 is directed to a fixture with surfaces having,
inter alia, “an average surface roughness of about 25 Ra or less” and “a
Rockwell hardness of about 65 Rc or more.”
The Examiner finds that Marszal teaches a fixture for selectively
masking portions of a gas turbine engine component, and that Marszal’s
mask has “a Rockwell hardness and a surface roughness.” Ans. 4 (citing
Marszal Abstract). The Examiner admits that Marszal “does not teach a
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specific surface roughness and a specific hardness of the mask,” but reasons
that “[e]very mask inherently must have a surface roughness and hardness,
because the surface roughness and the hardness are properties of the material
that the mask is made from.” Id. On that basis, the Examiner determines
that the Appellants’ “invention is an optimization of the surface roughness
and the hardness of a known mask.” Id.
The Examiner relies on Koshiishi and Shimoyama for disclosures of
materials that possess the claimed “average surface roughness of about 25
Ra or less” and the claimed surface “hardness of about 65 Rc or more.”
Claim 8; Ans. 4. Surface roughness in Koshiishi is related to preventing
secondary reaction products from sticking to an alumina-based ceramics
layer that is part of a sealed ring on an electrode in a semiconductor etching
apparatus. Ans. 4; Koshiishi 27:4-12; see also Koshiishi 2:22-59; 25:9-10;
26:16-26. The surface hardness in Shimoyama, by contrast, is related to the
durability of a metal layer in a print screening mask wherein an opening
corresponds “to a print image pattern in a polyimide or polyester sheet.”
Ans. 4; Shimoyama Abstract.
We have reviewed the rejections and the Examiner’s responses to the
Appellants’ arguments, and discern no findings that relate the disparate
teachings of Koshiishi or Shimoyama to the environments or stresses
encountered in the “hottest sections of modern gas turbine engines” or “the
harsh, abrasive coating environments in which” gas turbine masking fixtures
are used. Spec. ¶¶ [0002, 0006]; see KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (it may be necessary “to look to interrelated teachings of
multiple patents . . . in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
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at issue”). Indeed, the Appellants contend that “the Examiner has taken
pieces of non-related art and pieced them together” to arrive at the claimed
invention. App. Br. 5; see Reply Br. 5 (the Examiner uses “hindsight [] to
cobble these references together”). The Appellants do “not claim to have
invented a degree of hardness that was previously undiscovered” or “to have
invented a surface roughness that has never been exposed.” App. Br. 5. The
Appellants admit that “the concepts may not be brand new,” but “they are
novel to this field, and they have never before been used to solve” the
bridging problem that occurs between a masking fixture and a gas turbine
component during a workpiece coating application. Id. In the Appellants’
view, therefore, this appeal “goes to the core of the KSR opinion.” Id.
We agree. Marszal is the only applied reference that is
unquestionably within the Appellants’ field of invention. See Ans. 4.
Marszal discusses at length the bridging problem that occurs between a
masking fixture and a gas turbine component during a coating application.
Marszal 1:63-2:16. Marszal further proposes a solution to the bridging
problem that involves using a masking fixture that “includes a removable,
disposable shield” that “is periodically replaced with a new shield.” Id. at
4:45; 5:51-54; see App. Br. 3. Significantly, Marszal nowhere mentions
surface roughness or hardness, let alone suggests that these two properties
bear upon the bridging problem. See generally Marszal.
The Examiner finds that Marszal’s masking fixture, like any masking
fixture, “inherently” possesses a surface roughness and hardness, which an
ordinary artisan would have had reasons to optimize. Ans. 8. However, it is
unclear to us, and the Examiner has not adequately explained, why
Marszal’s disclosure would have prompted an ordinary artisan to focus on
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these two particular elements, nowhere mentioned in Marszal, to solve the
bridging problem in the precise fashion that is specified in claim 8. Where,
as here, the applied art is not interrelated, “it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine elements in the way the claimed new invention does.” KSR
Int’l Co., 550 U.S. at 418; see In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir.
1998) (“hindsight” is inferred when the specific understanding or principle
leading to the modification of the prior art is not adequately explained).
For the above reasons, we reverse the rejections of claims 8, 10-12,
and 23-28.
CONCLUSION
We reverse the rejections of claims 8, 10-12, and 23-28.

REVERSED
kmm