Ex Parte DeBiccari et al

Board of Patent Appeals and Interferences

Sep 20, 2010

11088380 (B.P.A.I. Sep. 20, 2010)

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.
11/088,380 03/23/2005 Andrew DeBiccari 085.11101-US (04-322) 1375
52237 7590 09/21/2010
BACHMAN & LAPOINTE, P.C. (P&W)
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510-2802
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
09/21/2010 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 ANDREW DEBICCARI, MELVIN FRELING, and
JEFFREY D. HAYNES
____________

Appeal 2009-007618
Application 11/088,380
Technology Center 1700
____________

Before SALLY G. LANE, MICHAEL P. TIERNEY, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007618
Application 11/088,380

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 3-19 and 21-48. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION under 37
C.F.R. § 41.50(b).
BACKGROUND
Appellants’ invention is directed to a method for applying a coating to
a component, such as a turbine blade or combustion chamber liner used in an
engine through the use of a cold spray process. (Spec., para. [0011],
[0012].)
Claims 24-26 and 29 are illustrative:
24. A process for applying a coating to a component
comprising the steps of:
providing a component having at least one surface to be
coated;
said component providing step comprises providing a
combustion chamber liner formed from a nickel-based alloy or
a copper based alloy;
depositing at least one layer of a powder coating material
onto said at least one surface using a non-oxidizing carrier gas
so that said powder coating material plastically deforms without
melting and bonds to said at least one surface upon impact with
said at least one surface; and
said depositing step comprises feeding said powdered
coating material to a spray nozzle at a feed rate of from 10
grams/min to 100 grams/min and depositing said at least one
layer on at least one surface of said combustion chamber liner.

25. A process for applying a coating to a component
comprising the steps of:
providing a component having at least one surface to be
coated;
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said component providing step comprises providing an
engine component having an airfoil surface and a plurality of
cooling holes in said surface;
depositing at least one layer of a powder coating material
onto said at least one surface using a non-oxidizing carrier gas
so that said powder coating material plastically deforms without
melting and bonds to said at least one surface upon impact with
said at least one surface;
said depositing step comprises depositing said at least
one layer of powder coating material without bridging said
cooling holes in said surface; and
said depositing step further comprising feeding said
powdered coating material to a spray nozzle at a feed rate of
from 10 grams/min to 100 grams/min.

26. The process according to claim 24, wherein said
combustion chamber liner is formed from a nickel-based alloy
and said depositing step comprises depositing a copper based
alloy material on said combustion chamber liner.

29. The process according to claim 25, wherein said depositing
step comprises providing said powder coating material in
particle form having a particle size no greater than 10 microns.

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Alkhimov US 5,302,414 April 12, 1994
Nakashima US 5,326,646 July 5, 1994
Holmes US 6,314,720 B1 Nov. 13, 2001
Beele US 6,365,013 B1 Apr. 2, 2002
Subramanian US 2002/0102360 A1 Aug. 1, 2002
Muehlberger US 6,759,085 B2 July 6, 2004
Raj US 6,838,191 B1 Jan. 4, 2005
Hu US 6,905,728 B1 June 14, 2005
U.S. Application 11/019,751 Dec. 21,2004
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Application 11/088,380

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U.S. Application 11/019,871
(the ‘871 Application)
Dec. 21, 2004
U.S. Application 11/020,799 Dec. 22, 2004

Appellants appeal the following rejections2:
1. Claims 3-19 and 21-48 under 35 U.S.C. § 103(a) as unpatentable over
U.S. Application 11/019,871;
2. Claims 25, 29-34, 39-41, and 46-48 under 35 U.S.C. § 103(a) as
unpatentable over Subramanian in view of Beele;
3. Claims 35-38 and 42-45 under 35 U.S.C. § 103(a) as unpatentable over
Subramanian in view of Beele, and further in view of Muehlberger;
4. Claims 25, 29-34, 39-41, and 47 under 35 U.S.C. § 103(a) as
unpatentable over Hu in view of Beele;
5. Claims 35-38 and 42-45 under 35 U.S.C. § 103(a) as unpatentable over
Hu in view of Beele, further in view of Muehlberger;
6. Claims 3-8, 13-15, 21-24, and 27 under 35 U.S.C. § 103(a) as being
unpatentable over Raj in view of Subramanian;
7. Claim 26 under 35 U.S.C. § 103(a) as being unpatentable over Raj in
view of Subramanian, and further in view of Holmes;
8. Claims 9-12 and 16-19 under 35 U.S.C. § 103(a) as being unpatentable
over Raj in view of Subramanian, further in view of Muehlberger; and
9. Claim 28 under 35 U.S.C. § 103(a) as being unpatentable over Raj in

2 The Examiner withdrew the obviousness type double patenting rejections
and rejections under 35 U.S.C. § 103 of certain claims over Applications
10/671,683 and 11/003,140 due to the abandonment of both applications.
(Ans. 4.) We also need not address the obviousness type double patenting
rejections and rejections of certain claims under 35 U.S.C. § 103 over
Applications 11/019,751 and 11/020,799, as both applications have been
abandoned according to the USPTO PALM database.
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view of Subramanian, further in view of Nakashima.

APPELLANTS’ CONTENTIONS
Appellants contend that the ‘871 Application does not disclose a
process of depositing a powder coating material to a combustion chamber
liner or an airfoil surface as recited in independent claims 24 and 25. (App.
Br. 37-38.) Appellants contend that the Examiner has failed to produce
evidence of the aspects of the claims asserted to be well known by the
Examiner. (App. Br. 38.)
Appellants argue that neither Raj nor Subramanian discloses a
combustion chamber liner. (App. Br. 43-44.) Appellants also contend that
none of Subramanian, Beele, Hu, or Raj discloses the feed rate of the
powdered coating material to a spray nozzle recited in the present claims.
(App. Br. 39, 42, and 43.) Appellants argue that the Examiner’s position
that the feed rate of the powder coating leaving the nozzle is the same as the
feed rate of feeding the powdered coating material to the spray nozzle is
pure speculation. (App. Br. 40.)
Regarding claim 26, Appellants argue that there is no reason why one
of ordinary skill in the art would replace Raj’s copper alloy with a nickel
alloy, because Raj is directed to providing coatings for copper alloys. (App.
Br. 45.) Appellants also contend that there is no disclosure in Holmes of
forming a lining from a nickel based alloy and then depositing a copper
based alloy over the nickel based alloy, such that Holmes teaches away from
claim 26 by using a non-copper based coating. (App. Br. 46.)

ISSUES
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The dispositive issues raised as a result of Appellants’ contentions are
as follows:
(1) Is there sufficient evidence on the record to support the
Examiner’s position that applying the cold spray process disclosed in the
’871 Application to coat a chamber liner or an airfoil substrate would have
been obvious to one of ordinary skill in the art?
(2) Did the Examiner provide a sufficient rationale for determining
that Subramanian, Beele, Hu, or Raj discloses the feed rate of the powdered
coating material to a spray nozzle recited in the present claims?
(3) Did the Examiner err in determining that the combination of Raj,
Subramanian, and Holmes suggest a combustion chamber liner that is
formed from a nickel-based alloy and a copper based alloy material
deposited on the combustion chamber liner as recited in claim 26?

PRINCIPLES OF LAW
When the Patent Office’s position is based on logic and sound
scientific principle, Appellants must specifically point out why the Patent
Office’s position is unsound. In re Soli, 317 F.2d 941, 945-47 (CCPA
1963). In addition, the court in Soli noted that another reference of record,
although not cited for showing that the use of controls was “standard
procedure” in the field of bacteriology, supported the Office’s position. (Id.
(FN 3)).
Our reviewing court’s predecessor court has stated “Patent Office
appellate tribunals, where it is found necessary, may take notice of facts
beyond the record which, while not generally notorious, are capable of such
instant and unquestionable demonstration as to defy dispute.” In re Ahlert,
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424 F.2d 1088, 1091 (CCPA 1970) (citing In re Knapp-Monarch Co., 296
F.2d 230 (1961). “With respect to core factual findings in a determination of
patentability, however, the Board cannot simply reach conclusions based on
its own understanding or experience — or on its assessment of what would
be basic knowledge or common sense. Rather, the Board must point to some
concrete evidence in the record in support of these findings.” In re Zurko,
258 F.3d 1379, 1386 (Fed. Cir. 2001).
FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We add the following factual findings
(FF):
1. Appellants’ Specification states: “[t]he cold spray process for
depositing powdered materials onto portions of a component which
needs to be restored is advantageous in that it provides sufficient
energy to accelerate particles to high enough velocities such that,
upon impact, the particles plastically deform and bond to the
surface of the component being restored or onto a previously
deposited layer. The cold spray process allows the build up of a
relative dense coating or structural deposit.” (Spec. para. [0012].)
2. Appellants’ Specification discloses “another advantage is that with
cold spray, it is possible to spray over a blade/vane surface and not
have the coating bridge the cooling holes in the surface. The
ability to apply a coating in a repair/refurbish operation and not
have to go back and clean out the holes, or at least greatly reduce
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the labor required to do this is a great advantage over current
operations.” (Spec. para. [0034].)
3. The ‘871 Application discloses that “the cold spray process may be
used during the repair of turbine engine components.” (Para.
[0010].)
4. The ‘871 Application discloses that a benefit of using cold spray
over prior art techniques such as plasma spray is to prevent
negatively impacting the properties of the underlying material.
(Para. [0002], [0004].)
5. The ‘871 Application discloses that the particle size of the powder
coating is between 5 and 50 microns and that providing a narrow
particle size distribution contributes to uniform particle velocity.
(Para. [0013].)
6. Subramanian discloses that it is known to provide an intermediate
metallic bond coat to a combustion turbine environment. (Para.
[0003].)
7. Subramanian discloses that a cold spray process may be beneficial
for application of a metallic bond coat. (Para. [0021].)
8. Subramanian discloses that the components of a gas turbine engine
“may include, for example, rotating blades, stationary vanes,
combustor baskets, ring segments, transitions, etc.” (Para. [0021].)
9. Subramanian discloses that in the cold spray deposition step,
particles of coating material of from 0.1 to 50 microns in size are
deposited on a target surface at a feed rate of 0.1 to 2 grams per
second. (Para. [0023].)
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10. Beele discloses a coating process for a turbine blade with cooling
holes that avoids blocking or unacceptable narrowing of the
cooling holes. (Col. 1, ll. 10-21.)
11. Beele discloses that to prevent blocking the cooling holes, a fluid is
applied through the cooling holes during the coating process. (Col.
1, ll. 34-40; col. 2, l. 67 – col. 3, l. 4.)
12. Hu discloses that high pressure turbine components including
airfoils may be repaired using cold gas-dynamic spray. (Col. 2, ll.
6-20; col. 4, l. 15.)
13. Hu discloses that the density of mass flow rate of the particles of
0.05 and 17 g/s-cm2. (Col. 6, ll. 41-45.)
14. Raj discloses depositing bond coats on copper alloy combustor
liners, where the coating may be applied by cold spraying. (Col. 1,
ll. 24-46; col. 2, ll. 41-52.)
15. Raj discloses that a bond coating material is applied between the
substrate and the top protective coating, where the bond coating
material includes Cu-Cr alloys that are applied by directly spraying
the powder on the substrate. (Col. 5, ll. 17-31.)
16. Holmes discloses protective coatings applied to the lining of
combustion chambers, where the lining materials include copper
and nickel-based alloys. (Col. 2, ll. 41-52.)

ANALYSIS
Appellants have argued certain dependent claims subject to each
ground of rejection separately. However, for many of the dependent claims,
Appellants have done no more than point out what the claims recite, which
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are not considered arguments for separate patentability for those claims. See
37 C.F.R. § 41.37(c)(1)(vii). Accordingly, we confine our discussion to
appealed claims 24-26, which contain claim limitations representative of the
arguments made by Appellants, and address other claims only to the extent
that Appellants have argued them separately pursuant to 37 C.F.R. §
41.37(c)(1)(vii).3
Issue 1
Rejection 1
While we agree with Appellants that the Examiner failed to point to
where the ‘871 Application discloses depositing a powder coating material
to a combustion chamber liner formed from a nickel based or copper based
material, or to an airfoil surface without bridging the cooling holes present in
the airfoil surface, we also note that Appellants have not pointed out the
errors in the Examiner’s statements that the aspects of the claims not
disclosed in the ‘871 Application are well-known. (See Ans. 47-48.)
Specifically, the Examiner stated that applying a powder coating material via
a cold spray process to such substrates was well known in the art. (Ans. 12.)
Our reviewing court has warned that basic knowledge cannot be relied
on for core factual determinations in a determining of patentability without
concrete evidence. Zurko, 258 F.3d at 1386. However, in the present case
there is ample evidence on the record to support the Examiner’s position.
Not only does the ‘871 Application disclose that a cold spray process may be
used to repair gas turbine engine components, but Raj and Hu expressly

3 Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
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disclose that cold spray may be used for coating or repairing combustion
chamber liners and airfoils, respectively. (FF 12, 14.) In addition, Beele
also evidences that it is well known to coat an airfoil substrate without
blocking the airfoil holes. (FF 11.)
Further, Appellants have not addressed the Examiner’s rationale that it
would have been obvious to use a cold spraying process to the specific well
–known substrates of turbine engines in order to impart the advantages of
applying particles with plastic deformation and without melting.
Regarding claims 3 and 4, as pointed out by the Examiner, the particle
sizes recited in the claims overlap or lie within the particle sizes disclosed by
the ‘871 Application. (Ans. 48; FF 5.) Moreover, contrary to Appellants’
argument, the ‘871 Application appears to recognize the same benefits to the
particle sizes as disclosed in Appellants’ Specification. (FF 5.)
Therefore, we affirm the Examiner’s rejection of the claims as being
obvious over the ‘871 Application, but because our rationale includes
reference to Raj, Hu, and Beele, we designate our affirmance of this
rejection as a new ground of rejection.

Issue 2
Rejections 2 and 3
We are unconvinced by Appellants’ argument that Subramanian
discloses the feed rate of the material leaving the nozzle rather than the
recited feed rate to the nozzle, and consequently Subramanian does not
provide a basis for one skilled in the art to have optimized the feed rate into
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the nozzle. As stated by the Examiner, Subramanian does not specify
whether the disclosed feed rate is the feed rate of the material as it enters the
nozzle or the feed rate of the material as it leaves the nozzle. (Ans. 51.) The
Examiner’s position is that Alkhimov, incorporated by reference into
Subramanian, provides evidence that the mass flow rate of particles, which
is related to mass feed rate, is a result effective variable. (Ans. 52-53.)
Thus, contrary to Appellants’ argument, the Examiner’s position that the
flow rate is a result effective variable is not mere speculation, but based on
the specific teachings of the prior art. Accordingly, Appellants’ arguments
are not persuasive.
Regarding claims 29 and 30, Subramanian discloses particle sizes of
between 0.1 to 50 microns, which overlap the ranges recited in claims 29
and 30. (FF 9.) Appellants argue that neither Subramanian nor Beele
recognize the significance to keeping the particles size within this range in
order to increase particle size velocities. (App. Br. 40-41.) However, we
agree with the Examiner that Appellants have not established any showing
of unexpected benefits of increased particle size velocity. Therefore,
Appellants have not overcome the Examiner’s prima facie case of
obviousness.

Rejections 4 and 5
We are not persuaded by Appellants’ argument that because Hu is
directed to repairing components, Hu does not teach coating processes. We
agree with the Examiner that Appellants have provided no persuasive
evidence to support the position that repairing and coating are mutually
exclusive. (Ans. 55-56.) Moreover, Appellants’ Specification states that the
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cold spray process is for restoring or repairing components. (FF 1.)
Accordingly, we are not convinced by Appellants’ argument.
Appellant also argues that the feed rate cannot be optimized as recited
in the present claims because Hu does not disclose the feed rate of the
particle coating material in the nozzle. However, Appellants have not
addressed the Examiner’s rationale that the mass flow rate density provides
evidence that the recited feed rate is a result effective variable. (Ans. 19-
20.) Therefore, we affirm the Examiner’s rejection over Hu in view of
Beele.
Rejections 6, 8, and 9
Raj expressly discloses that the bond coatings on the combustion
chamber liners may be applied by cold spraying. (FF 14.) Therefore,
Appellants’ argument that Raj does not disclose cold spray processes fails to
consider the teachings of Raj as a whole. As discussed above, Subramanian
provides evidence that the feed rate is a result effective variable. Thus,
Appellants’ arguments are not persuasive.
Issue 3
Rejection 7
We are also unconvinced by Appellants’ argument that the claim 26
would not have been obvious to one of ordinary skill in the art in view of
Raj in view of Subramanian and Holmes. Appellants admit that Holmes
discloses that the combustion chamber liner may either be copper or nickel
based alloy. (App. Br. 46; FF 16.) Contrary to Appellants’ argument, Raj
discloses the use of copper alloys as bond coatings on the liner substrate.
(FF 15.) Accordingly, we agree with the Examiner, that it would have been
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obvious to coat a nickel alloy combustion chamber liner with a copper alloy
using a cold spray process.
DECISION
We affirm the Examiner’s § 103 rejections of claims 3-19 and 21-48.
However, we designate our affirmance of the Examiner’s rejection of claims
3-19 and 21-48 over the ‘871 Application as a new ground of rejection.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) also provides that the
Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

TIME PERIOD
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) (2009).
ORDER
AFFIRMED
NEW GROUND OF REJECTION (37 C.F.R. §41.50(b))

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rvb

BACHMAN & LAPOINTE, P.C. (P&W)
900 CHAPEL STREET
SUITE 1201
NEW HAVEN, CT 06510-2802