Ex Parte Daeubler et al

Board of Patent Appeals and Interferences

Jun 29, 2012

10581147 (B.P.A.I. Jun. 29, 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.
10/581,147 05/31/2006 Manfred A. Daeubler 5038.1027 1959
23280 7590 07/02/2012
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
SAVAGE, JASON L
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
07/02/2012 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 MANFRED A. DAEUBLER and
KLAUS SCHWEITZER
____________

Appeal 2010-008892
Application 10/581,147
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, 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 17-39. We have jurisdiction pursuant to
35 U.S.C. § 6.

Appeal 2010-008892
Application 10/581,147

2
Appellants’ claimed invention is directed to a running-in coating for
gas turbines that comprises a specified material and is made to have a
specified hardness, and a method for applying such a coating to a gas turbine
housing using a polymer as part of the coating material. The polymer can be
burned out of the coating whereby pores can be left behind in the coating
(Spec. para. 0025). Appellants explain that the coating porosity determines
the density and hardness of the coating (id. at para. 0018).
Claims 17 and 21 are illustrative and reproduced below:
17. A running-in coating for gas turbines for application
to a housing of the gas turbine to seal a radial gap between the
housing of the gas turbine and rotating blades of the same, the
running-in coating comprising CoNiCrAlY-hBN and a
polymer.
21. A gas turbine, comprising a housing and a plurality
of rotating blades defining a radial gap therebetween, the
housing having a running-in coating applied thereto, the
running in coating including CoNiCrAlY-hBN, the Rockwell
hardness of the running-in coating being in a range of 20 to 60.
The Examiner relies on the following prior art reference as evidence
in rejecting the appealed claims:
Sileo et al. US 5,536,022 July 16, 1996
Claims 21 and 23-25 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Sileo. Claims 17-20, 22, and 26-39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sileo.
We reverse the stated rejections. Our reasoning follows.
Appeal 2010-008892
Application 10/581,147

3
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
Concerning the anticipation prong of the Examiner’s first stated
rejection of claims 21 and 23-25, the Examiner relies on an inherency
assertion with respect to the required Rockwell hardness of the gas turbine
housing coating set forth in independent claim 21 (Ans. 3). In so doing the
Examiner asserts that Sileo employs the same materials and the same
method employed by Appellants and cites to paragraphs 24 through 26 of
Appellants’ Specification in so doing. However, paragraph 0024 of
Appellants’ Specification makes plain that Appellants mix their metal and
hexagonal boron nitride coating material with a polymer (polyester) in their
claimed method, as indicated by Appellants (App. Br. 6). The Examiner has
not established that Sileo employs such use of polymer in their claimed
method (see generally Ans.). Moreover, the Examiner has not otherwise
established that the plasma spraying process used by Sileo corresponds to
that employed by Appellants. This is important as the Examiner
acknowledges the teachings of Sileo respecting the effect of processing
parameters on coating properties (Ans. 4; Sileo, col. 5, ll. 36-55; Reply Br.
2). As such, the Examiner has not discharged the initial burden of
establishing a prima facie case of anticipation by pointing out where all of
the claim limitations are described in a single reference either expressly or
inherently. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986). In this regard, “Inherency . . . may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
Appeal 2010-008892
Application 10/581,147

4
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
Concerning the obviousness prong of the first stated rejection and the
Examiner’s second stated obviousness rejection, the Examiner has not
reasonably established why one of ordinary skill in the art would have been
led to select parameters for applying the coating of Sileo that would have
resulted in a coating hardness (and porosity) consonant with the hardness
claimed by Appellants by employing a polymer in the method as expressly
required by independent claims 17 and 26 (second stated rejection) or
otherwise reasonably explained why one of ordinary skill in the art could
and would have been led to select some other processing parameter
alternative that would have led to the claimed coating hardness in the
separate obviousness rejection of claims 21 and 23-25 (first rejection). In
this regard, we agree with Appellants that the Examiner has not established
that Sileo suggests to one of ordinary skill in the art combining the
disparaged prior art technique of using a non-metallic material, such as a
polymer, for increasing porosity with the disclosed inventive method of
Sileo (App. Br. 4-6; Reply Br. 3; Sileo, col. 2, ll. 35-52 and col. 3, ll. 9-16).
Rather, Sileo teaches going in a different direction wherein the coating has a
low porosity as urged by Appellants (col. 3, ll. 16-39, col. 3, l. 59-col. 4, l. 5,
and col. 5, ll. 13-17). As argued by Appellants, the evidence indicates the
Examiner is incorrect in asserting that one of ordinary skill in the art would
have been led to modify the coating porosity in a direction contrary to the
teachings of Sileo and the Examiner’s conclusive contentions are not
sufficient to establish the contrary given Sileo’s disclosures indicating that
increased porosity is to be avoided (App. Br. 4; Reply Br. 3). The
Appeal 2010-008892
Application 10/581,147

5
Examiner’s argument to the effect that Sileo would have led one of ordinary
skill in the art to tailor the processing parameters to arrive at the claimed
hardness values while retaining the porosity desired by Sileo appears to be
premised on impermissible hindsight or conjecture as the Examiner has not
established that Sileo was interested in obtaining such hardness values while
retaining the sought after reduced coating permeability of Sileo and/or
provided additional evidence to establish that such would have been an
expected or possible result by following the teachings of Sileo (Ans. 8 and
9).

On this record, we reverse the stated rejections.

ORDER
The Examiner’s decision to reject the appealed claims is reversed.

REVERSED

bar/sld