Ex Parte Grylls et al

Board of Patent Appeals and Interferences

Apr 23, 2010

11214292 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD JOHN GRYLLS and
THEODORE ROBERT GROSSMAN
____________________

Appeal 2009-013895
Application 11/214,292
Technology Center 1700
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Decided: April 23, 2010
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 14 and 18-35 under 35 U.S.C. § 102(b) as
anticipated by, or under 35 U.S.C. § 103(a) as unpatentable over, Rigney
(US 6,153,313, issued November 28, 2000). We have jurisdiction under
35 U.S.C. § 6(b).
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We AFFIRM.
Appellants’ invention relates to an airfoil of a turbine engine having
a predominately β phase NiAl alloy composite coating achieved by an
electroplating technique (Spec. ¶ [0001] and [0025]). Claim 14 is
illustrative:
14. An article for use in a gas turbine substrate
comprising:
a superalloy substrate, wherein the superalloy is selected
from the group of nickel base superalloys, cobalt base
superalloys, iron base superalloys and combinations thereof;
and
a coating applied over the substrate, the coating being
formed by a method comprising:
plating a nickel matrix and embedded powders, the
powders selected from the group consisting of Ni, Cr, Al,
Zr, Hf, Ti, Ta, Si, Ca, Fe, Y, Ga, and combinations
thereof, such that upon deposition, the powders form a
second phase dispersed in the substantially nickel matrix
which forms a first phase; and
depositing aluminum by an aluminiding process
over the nickel matrix and embedded powders, the
aluminum deposited in sufficient amount to provide a
NiAl stoichiometry to the nickel matrix and embedded
powders to form a substantially β phase NiAl coating
having additional alloying elements.
II. DISPOSITIVE ISSUE
Appellants first present arguments with respect to independent claims
14, 26, and 31 as a group (Br. 10), for which we select claim 14 to represent
the group.
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Appellants contend that, because Rigney teaches a plasma vapor
deposition process (PVD), Rigney does not teach the process steps of plating
a nickel matrix and embedded powders and depositing aluminum by an
aluminiding process for obtaining the NiAl coating (Br. 10-11). Appellants
also assert that the use of heat for homogenization taught by Rigney is not
needed when a coating is applied using the claimed process steps and that
Appellants’ invention need not obtain a homogenized composition because
only a “substantially β-phase NiAl coating” is claimed (Br. 11). Appellants
also assert that the PVD process taught by Rigney “does not allow for
coating of complex articles, such as airfoils” (Br. 11).
The issue raised by the contentions of Appellants and the Examiner is:
has the Examiner erred in finding that Rigney anticipates the claimed β-
phase NiAl coated article, specifically turning on the fact that Rigney does
not teach the claimed “plating” and “depositing aluminum by an aluminiding
process” steps recited in claim 14?
III. FINDINGS OF FACT
The Examiner has made several unrebutted findings in support of his
ultimate finding that the claimed coated article would be identical to or
substantially identical to Rigney’s coated article in terms of structures and
compositions (Ans. 4), including:
1. Rigney teaches a layer predominately comprised of β-NiAl and
Appellants claim a layer formed substantially of β-NiAl, each including
alloying elements (Ans. 5; see Rigney, col. 5, ll. 19-21);
2. The range represented by the term “substantially beta phase
NiAl” as claimed is considered to overlap the range represented by the
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description of Rigney et al. of a coating formed 'predominantly' in the beta-
NiAl phase (Ans. 7);
3. Both the claimed process and Rigney process result in a layer
with a 1:1 ratio of Ni to Al, whether by use of heat or without, to form a
homogeneous composition (Ans. 7);
4. The plasma vapor deposition taught by Rigney is a common
method for coating articles such as an airfoil (Ans. 8); and
5. Rigney teaches applying the coating to turbine blades, which
include an airfoil (Ans. 8; see Rigney, col. 4, ll. 40-62).
IV. PRINCIPLES OF LAW
It has long been held that “[i]f the product in a product-by-process
claim is the same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a different
process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985); In re Brown,
459 F.2d 531, 535 (CCPA 1972) (“[I]t is the patentability of the product
claimed and not of the recited process steps which must be established.”);
In re Wertheim, 541 F.2d 257, 271 (CCPA 1976) (“the patentability of the
products defined by the claims, rather than the processes for making them, is
what we must gauge in light of the prior art.”).
“Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).
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V. ANALYSIS
We sustain this rejection for the reasons cogently presented by the
Examiner in the answer. Specifically, claim 14 is a product-by-process
claim for which we look to the product claimed, not the process steps, for
patentability. The Examiner has provided reasonable and unrebutted
evidence to support a finding that the claimed coated article and the coated
article taught by Rigney are identical or substantially identical, despite being
formed by different processes. Appellants have provided no evidence
establishing a structural or compositional difference between the two
coatings. We agree with the Examiner that, without evidence to the contrary,
“an end-product beta-NiAl layer including alloying elements is considered to
be just that no matter what method is used in its formation” (Ans. 5-6). See
In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“[A] compound and all of
its properties are inseparable; they are one and the same thing.”).
Appellants present no other arguments with respect to any of the
dependent claims in addition to those discussed above (Br. 11).
VI. CONCLUSION
On the record before us1 and for the reasons discussed above, we
sustain the rejection maintained by the Examiner.
VII. DECISION
We affirm the decision of the Examiner.

1Only 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) (2008).
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VIII. 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).
AFFIRMED

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