13337133 (P.T.A.B. Oct. 26, 2018)

Ex Parte Hass et al

Patent Trial and Appeal BoardOct 26, 2018

13337133 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/337, 133 12/25/2011 134006 7590 10/30/2018 Vorys, Sater, Seymour and Pease LLP (UVA) 1909 K St., NW Ninth Floor Washington, DC 20006 FIRST NAMED INVENTOR Derek D. Hass 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. 070239.000012/1 6897 EXAMINER LUND, JEFFRIE ROBERT ART UNIT PAPER NUMBER 1716 NOTIFICATION DATE DELIVERY MODE 10/30/2018 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): vmdeluca@vorys.com patlaw@vorys.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEREK D. HASS and HAYDN N.G. W ADLEY 1 Appeal2018-000130 Application 13/337,133 Technology Center 1700 Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and LILAN REN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1--4 and 6-11. We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM. 1 University of Virginia Patent Foundation is identified as the real party in interest (App. Br. 1 ). Appeal2018-000130 Application 13/337, 133 Appellants claim an apparatus for forming a thermal barrier coating system in communication with a substrate, such as a directed vapor deposition apparatus, an evaporation apparatus, and/or a sputtering apparatus, wherein the apparatus is adapted to deposit a bond coat on the substrate, a thermal barrier coat on the bond coat, and a sealant layer on the thermal barrier coat (independent claim 1; see also remaining independent claims 2--4). Further details of the claimed apparatus are set forth in representative claims 1 and 3, a copy of which taken from the Claims Appendix of the Appeal Brief appears below. 1. An apparatus forming a thermal barrier coating system in communication with at least a portion of at least one substrate, said apparatus comprising: a directed vapor deposition (DVD) apparatus, an evaporation (thermal, RF, laser, or electron beam) apparatus, a reactive evaporation apparatus, a sputtering (DC, RF, microwave and/or magnetron) apparatus, a reactive sputtering apparatus, an electron beam physical vapor deposition (EF-PVD) apparatus, an ion plasma deposition (IPD) apparatus, a low pressure plasma spray (LPPS) apparatus, a high velocity oxy-fuel (HVOF) apparatus, a vapor deposition apparatus, a cluster deposition apparatus, a cathodic arc deposition apparatus, or a jet vapor deposition apparatus, or any combination thereof, wherein said apparatus for forming said thermal barrier coating system is adapted to: deposit a first bond coat on at least a portion of said substrate; deposit a first thermal barrier coat on said bond coat; and deposit a sealant layer on said first thermal barrier coat, said sealant layer comprising a material having a coefficient of thermal expansion (CTE) of greater than 10 X 1 Q-6. 3. An apparatus for forming a thermal barrier coating system in communication with at least a portion of at least one substrate, said apparatus being adapted to: deposit a first bond coat on at least a portion of at least one said substrate; 2 Appeal2018-000130 Application 13/337, 133 deposit a first thermal barrier coat disposed on said bond coat; deposit a second bond coat on said first thermal barrier coat; deposit a second thermal barrier coat on said second bond coat; and wherein said apparatus being adapted whereby said bond coats and said thermal barrier coats are deposited without exposing said thermal barrier coating system to atmospheric conditions. Appellants present arguments regarding independent claims 1--4 but do not present separate arguments specifically directed to dependent claims 6-11 (App. Br. 6-15). Accordingly, these dependent claims will stand or fall with their parent independent claim 1. The Examiner rejects: (1) claims 3 and 4 under 35 U.S.C. Â§ 112, 1st paragraph, as being non- enabled (Non-final Action (dated October 31, 2016) 9-11); (2) claims 1 and 6-11 under 35 U.S.C. Â§ 112, 2nd paragraph, as being indefinite (id. at 12); (3) claims 1--4 and 6-11 under 35 U.S.C. Â§ 102(b) as anticipated by Hass et al. (WO 03/028428 A2, published April 10, 2003) (hereinafter "Hass WO 428") (id. at 12-15); (4) claims 1--4 and 6-11 under 35 U.S.C. Â§ 102(a) or (b) as anticipated by, or alternatively under 35 U.S.C. Â§ 103(a) as obvious over, "Applicants['] arguments filed April 27, 2016" (hereinafter "Applicants' admitted prior art") (id. at 15-17); and (5) claims 1--4 and 6-11 provisionally on the ground of non-statutory double patenting as being unpatentable over certain claims of copending Application No. 13/371,044 (id. at 18). 3 Appeal2018-000130 Application 13/337, 133 Rejection (1) The Examiner determines that Appellants' Specification provides enabling support for the types of apparatus recited in claim 1 but "does not reasonably provide enablement for every possible apparatus for forming a thermal barrier coating system [ as encompassed by the broad language of claims 3 and 4 ]" (id. at 9). According to the Examiner, "the breadth of claims 3 and 4 is so broad that it reads on coating apparatus not even considered or thought of in the art of turbine coating" (id. at 11 ). Specifically, the Examiner states that "[ f]or example, liquid, gel, or nano tube coating apparatus could be used to deposit the bond coat and thermal barrier coat" (id.). Appellants argue that "the [E]xaminer' s [ non-enablement] conclusion is improperly based on unsupported generalized assertions regarding only the alleged breadth of. .. claims [3 and 4] and the state of the art" (App. Br. 8). Appellants also argue that "[ u ]nder the principles of claim construction, the claimed invention is not properly construed as 'reading on every apparatus for forming a thermal coating system' but to the contrary must be construed as corresponding to the disclosed embodiments [i.e., the DVD and other types of apparatus recited in claim 1] and their equivalents" and accordingly "[t]hose skilled in the art ... would be able to make and use apparatus as disclosed and claimed without undue experimentation [ under a proper construction of claims 3 and 4]" (id.). We perceive merit in Appellants' argument. On the other hand, the Examiner's non-enablement determination lacks persuasive rationale primarily because the only examples given by the Examiner of allegedly non-enabled apparatus encompassed by claims 3 and 4 are "liquid, gel, or nano tube coating apparatus" (Non-final Action 11). We emphasize that 4 Appeal2018-000130 Application 13/337, 133 these examples relate to coating materials rather than apparatus structure. The Examiner provides the record with no evidence or rationale that such coating materials would require apparatus structure different and non- enabled relative to the types of concededly-enabled apparatus disclosed by Appellants. 2 Under these circumstances, we do not sustain the Examiner's Â§ 112, 1st paragraph, rejection of claims 3 and 4 as being non-enabled. Rejection (2) Concerning the claim 1 recitations "an evaporation ( thermal, RF, laser, or electron beam) apparatus" and "a sputtering (DC, RF, microwave and/or magnetron) apparatus," the Examiner states that these recitations render the claim and its dependent claims indefinite "because it is unclear whether the limitations [ sic, elements] enclosed in the parentheses are part of the claimed invention or not" (id. at 12). Appellants argue that "claim 1 recites an evaporation apparatus as either a thermal, RF, laser, or electron beam apparatus, and recites a sputtering apparatus as either a DC, RF, microwave and/or magnetron apparatus[, and accordingly] [ t ]here is no ambiguity in these recitations as to what is intended to be covered in the recited apparatus" (App. Br. 10). Appellants' argument is unpersuasive because it misrepresents the claim 1 recitations under consideration. Based on the record before us, Appellants fail to show error in the Examiner's determination that it is 2 To the contrary, the Examiner determines that the specific material being deposited does not structurally distinguish Appellants' claimed apparatus (see, e.g., id. at 15). We discuss this determination later in the opinion. 5 Appeal2018-000130 Application 13/337, 133 unclear whether the above-quoted parenthetical elements are part of the claimed apparatus. For example, the record provides no reasonable clarity as to whether these elements are an exclusive versus exemplary listing of elements. We sustain the Examiner'sÂ§ 112, 2nd paragraph, rejection of claims 1 and 6-11 as being indefinite. Rejections (3)----(5)2 In each of these rejections, the Examiner finds that the apparatus structures disclosed by Hass WO 428, described in Applicants' admitted prior art, and claimed in copending Application Number 13/371,044 are structurally identical to the apparatus of claims 1--4 and 6-11 and capable of performing the depositing functions recited in these claims (Non-final Action 12-18). With regard to rejections (4) and (5), the Examiner alternatively concludes that it would have been obvious to adapt the aforementioned apparatus structures so as to perform these depositing functions (id. at 16-18). Significantly, Appellants do not challenge these findings and alternative conclusions with any reasonable specificity (see App. Br. 10-15). Instead, Appellants argue that the rejection based on Hass WO 428 3 For purposes of assessing these rejections, we treat the previously quoted claim 1 recitations involved in the Â§ 112, 2nd paragraph, rejection as though they recite respectively "a thermal, RF, laser, or electron beam evaporation apparatus" and "a DC, RF, microwave and/or magnetron sputtering apparatus" in accordance with Appellants' argument concerning this rejection (App. Br. 10). 6 Appeal2018-000130 Application 13/337, 133 improperly ignores the "adapted to" claim language (id. at 12) and that the non-statutory double patenting rejection inappropriately relies on the specification as well as the claims of the copending Application as prior art (id. at 14).4 These arguments are factually erroneous characterizations of the rejections. Similarly, Appellants contest the rejection based on Applicants' admitted prior art (i.e., prior art described in previously filed arguments) by stating, for example, that "Appellant[s'] arguments are neither a patent nor a printed publication, and thus do not constitute statutory prior art under 35 U.S.C. 102 or 103" (id. at 15). Such statements are not relevant to the Examiner's rejection based on admitted prior art. For the reasons given above and in the Answer (Ans. 19--26), Appellants' arguments do not show reversible error in rejections (3}-(5). Therefore, we sustain these rejections. Conclusion We affirm the Examiner's decision rejecting claims 1--4 and 6-11. 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. Â§ 1.136(a). AFFIRMED 4 As a matter of clarification and contrary to Appellants' apparent belief (App. Br. 12), Ex parte Moncla, 2010 WL 2543659 (BPAI 2010) holds only that the Board's review of a provisional non-statutory double patenting rejection is premature when the provisional rejection is the only remaining rejection. This holding is not applicable here because the provisional rejection is not the only remaining rejection in the subject appeal. 7