Ex Parte Kasule

Board of Patent Appeals and Interferences

Mar 22, 2012

11315535 (B.P.A.I. Mar. 22, 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.
11/315,535 12/21/2005 Asumini Kasule 085.11379-US (05-579) 9058
52237 7590 03/23/2012
BACHMAN & LAPOINTE, P.C.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
WONG, EDNA
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
03/23/2012 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 ASUMINI KASULE
____________________

Appeal 2010-005324
Application 11/315,535
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and DEBORAH
KATZ, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-7, 11-16, and 44-57. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a method for forming a coating on a
substrate, specifically a platinum modified NiCoCrAlY bondcoat on a
Appeal 2010-005324
Application 11/315,535

2
turbine engine component. The inventive bondcoat offers oxidation
protection to the nickel-based superalloy forming the turbine engine
component (Spec. ¶ 0011]). The addition of the platinum to the bondcoat
improves the adherence of the aluminum oxide scale that forms during use
of the turbine engine component (id.). Claim 1 is illustrative:
1. A method for forming a coating on a substrate
comprising the steps of:
providing a substrate;
depositing a layer of platinum onto a surface of said
substrate;
depositing a NiCoCrAlY layer onto said platinum layer;
and
forming a fully heat treated platinum modified
NiCoCrAlY bondcoat having a three-dimensional
interconnected two-phase microstructure with grain sizes
ranging from 0.5 to 30 microns by heat treating said substrate
with said deposited layers; and
said heat treating step comprising heating said substrate
with said deposited layers at a temperature in the range of from
1200 to 2100 degrees Fahrenheit for a time period in the range
of from 2.0 hours to 15 hours to form said fully treated
platinum modified NiCoCrAlY bondcoat.
The Examiner maintains, and Appellant appeals, the following
rejections:
A. The rejection of claim 53 under 35 U.S.C. 112, ¶ 2 as being
indefinite;
Appeal 2010-005324
Application 11/315,535

3
B. The rejection of claims 1 - 4 under 35 U.S.C. § 103(a) over
Clarke1 in view of Alperine2;
C. The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) over
Clarke, Alperine, and Hecht3;
D. The rejection of claim 7 under 35 U.S.C. § 103(a) over Clarke,
Alperine, and Rigney4;
E. The rejection of claims 11-16 under 35 U.S.C. § 103(a) over
Clarke, Alperine, and Darolia5;
F. The rejection of claim 44 under 35 U.S.C. § 103(a) over Clarke,
Alperine, and Duva6;
G. The rejection of claims 45-47 and 49-52 under 35 U.S.C. § 103(a)
over Clarke, Hecht, Alperine, and Darolia;
H. The rejection of claim 48 under 35 U.S.C. § 103(a) over Clarke,
Hecht, Alperine, Darolia, and Rigney;
I. The rejection of claim 53 under 35 U.S.C. § 103(a) over Clarke,
Hecht, Alperine, and Darolia, and Czech7;
J. The rejection of claims 54-56 under 35 U.S.C. § 103(a) over
Clarke, Alperine, Czech, and Darolia; and
K. The rejection of claim 57 under 35 U.S.C. § 103(a) over Clarke,
Alperine, Czech, Darolia, and Duva.

1 Clarke, US 4,477,538, patented Oct. 16, 1984.
2 Alperine et al., US 6,183,888 B1, patented Feb. 6, 2001.
3 Hecht, US 4,346,137, patented Aug. 24, 1982.
4 Rigney et al., US 7,371,426 B2, patented May 13, 2008.
5 Darolia et al., US 6,982,126 B2, patented Jan. 3, 2006.
6 Duva et al., US 2,984,603, patented May 16, 1961.
7 Czech et al., US 5,401,307, patented Mar. 28, 1985.
Appeal 2010-005324
Application 11/315,535

4
OPINION
A. INDEFINITENESS OF CLAIM 53
The Examiner rejects claim 53 as indefinite because it does not further
limit the claim from which it depends, i.e., claim 45.
Claim 45 is directed to a method for forming a coating on a substrate
and recites a step of “depositing a NiCoCrAlY layer.”
Claim 53 reads as follows:
53. The method according to claim 45, wherein said
NiCoCrAlY depositing step comprises depositing a layer of a
NiCoCrAlY material having a composition consisting of from
4.0 to 25 wt% chromium, from 2.0 to 28 wt% cobalt, from 5.5
to 15 wt% aluminum, from 0.1 to 0.6 wt% yttrium, up to 2.0
wt% hafnium, up to 2.0 wt% silicon, from 3.0 to 12 wt%
tantalum, from 1.0 to 12 wt% tungsten, from 1.0 to 10 wt%
rhenium, up to 2.0 wt% zirconium, up to 4.0 wt% niobium, up
to 4.0 wt% titanium, from 0.2 to 0.6 wt% molybdenum, and the
balance nickel.
(Claims App. at Br. 38 (emphasis added).)
According to the Examiner, the claim language “the layer of a
NiCoCrAIY material” recited in claim 53 does not further limit the
“NiCoCrAIY layer” of claim 45 because “a layer of a NiCoCrAIY material
is broader in scope than a NiCoCrAIY layer.” (Ans. 4.) The Examiner
interprets “NiCoCrAlY layer” as limited to a layer containing only nickel
(Ni), cobalt (Co), chromium (Co), aluminum (Al), and yttrium (Y) (id.).
The Examiner interprets “a layer of NiCoCrAlY material” as allowing for
the inclusion of additional elements such as the nine further elements recited
in claim 53 (Ans. 4 and 40).
Appeal 2010-005324
Application 11/315,535

5
Appellant contends that when claim 53 is read in light of the
Specification, its meaning is clear (Br. 10-11). Appellant further contends
that there is nothing inconsistent between claims 53 and 45 (id.).
35 U.S.C. § 112, ¶ 2 requires that the specification “conclude with one
or more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.” The purpose of the
requirement is to ensure that artisans may determine the boundaries of
protection provided by the claims and evaluate the possibility of
infringement and dominance. In re Hammack, 427 F.2d 1378, 1382 (CCPA
1970). To determine if the language meets the requirements of § 112, ¶ 2,
the language must be analyzed in light of the teachings of the prior art and in
light of the disclosure of the specification as it would be interpreted by one
possessing the ordinary level of skill in the art. In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
In broadly describing the invention, Appellant’s Specification refers
to depositing a NiCoCrAlY layer (Spec. ¶¶ [0005-06]). When explaining
the invention in more detail, the Specification refers to depositing “a layer
16 of NiCoCrAlY material,” and sets forth the possible compositions of that
NiCoCrAlY material, including compositions containing all the elements
recited in claim 53 (Spec. ¶ [0013]).
The Specification appears to use the phrase “depositing a NiCoCrAlY
layer” as a short hand way to refer to depositing layer 16 of NiCoCrAlY
material, whose range of compositions is set forth in the Specification at
paragraph [0013] (compare Spec. ¶¶ [0005-06] and with Spec. ¶ [0013]).
The Specification makes no distinctions between NiCoCrAlY and
NiCoCrAlY material.
Appeal 2010-005324
Application 11/315,535

6
Based upon the disclosure in the Specification, those of ordinary skill
in the art would read “NiCoCrAlY layer” as recited in claim 45 as
encompassing the material recited in claim 53. Therefore, the ordinary
artisan would understand the boundaries of claim 53.
The evidence supports the Appellant’s contention that the claim is not
indefinite. We do not sustain the rejection of claim 53 under 35 U.S.C.
§ 112, ¶ 2.

B. OBVIOUSNESS OF CLAIMS 1-4 OVER CLARKE IN VIEW
OF ALPERINE
The Examiner rejects claims 1-4 as obvious over Clarke in view of
Alperine (Ans. 5-8). According to the Examiner, Clarke teaches depositing
the required layers of platinum and NiCoCrAlY onto a substrate, and heat
treating to form a platinum modified NiCoCrAlY bondcoat (Ans. 5). The
Examiner acknowledges that Clarke does not set forth the temperatures and
times used for heat treating, and does not disclose that heat treating results in
a three-dimensional interconnected two-phase microstructure with grain
sizes ranging from 0.5 to 30 microns required by claim 1 (Ans. 6). The
Examiner relies upon Alperine as evidence of the temperatures and times
that would be used to conduct the heat treatment of Clarke, and finds that the
claimed microstructure would inherently result from the heat treatment
process (Ans. 6-7 and 48).
Appellant contends that there is no technical reason for performing the
heat treatment of Alperine in the process of Clarke (Br. 13-14; see also
Reply Br. 3-6). Appellant further contends that there is no evidence that the
claimed microstructure would be inherently produced (Br. 15). Appellant
Appeal 2010-005324
Application 11/315,535

7
does not argue any claim apart from the others. Therefore, we select claim 1
as representative.
Two dispositive issues arise:
1. Does the evidence as a whole support the Examiner’s finding with
regard to the temperatures and times that one of ordinary skill in the art
would have selected to perform the heat treatment of Clarke; and
2. Is it reasonable to conclude based upon the evidence that when
heat treating the bondcoating of Clarke in accordance with the temperatures
and times an ordinary artisan would have selected, the claimed
microstructure would inherently result?
We answer these questions in the affirmative.
Clarke, like Appellant, seeks to protect components of gas turbines
that are susceptible to high-temperature oxidation and corrosion by
depositing a platinum group underlayer onto the component, depositing a
MCrAlY layer onto the platinum group layer, and heat treating (Clarke, col.
1, ll. 6-15; col. 1, ll. 53-57; col. 3, ll. 58-65). There is no dispute that
Clarke’s MCrAlY composition includes the claimed NiCoCrAlY
composition (Br. 11-19; Reply Br. 3-7; Clarke, col. 1, ll. 59-63).
With regard to the temperature at which one should perform the heat
treatment, Clarke’s sole disclosure is that:
After deposition of the intermediate MCrAlY layer 12, the
coated structure may be subjected to a diffusion heat treatment
at a temperature selected to affect not only the MCrAIY layer
12 but perhaps the platinum metal underlayer 11 and the
substrate 6 as well.
(Clarke, col. 3, ll. 56-61.)
Appeal 2010-005324
Application 11/315,535

8
There is no dispute that at least one purpose of Clarke’s heat treatment
is to diffuse platinum into the MCrAlY layer to produce a platinum modified
bondcoat (see, e.g., Br. 22).
Alperine, like Clarke and Appellant, seeks to coat turbine engine
components to protect them from high-temperature oxidation and hot
corrosion (Alperine, col. 1, ll. 12-17). Alperine’s process involves
depositing a powdered alloy of MCrAlY, electrolytically depositing a
platinum group metal, and heat treating “to effect interdiffusion between the
powder first deposit and said electrolytic second deposit whereby the
platinum group metal is present throughout the thickness of the protective
coating.” (Alperine, col. 4, ll. 31-49; col. 5, ll. 53-59; col. 6, ll. 64-66.)
Because Alperine’s MCrAlY is deposited as a powder alloy, it has a
residual porosity consisting mainly of the spaces left between the powder
grains (Alperine, col. 5, ll. 52-57). The temperature and times for heat
treating are selected to cause complete interdiffusion between the MCrAlY
powder grains and the platinum group metal as well as close the residual
porosity of the coating (Alperine, col. 7, ll. 18-21 and ll. 34-38). In other
words, the platinum group metal not only fills the pores, but diffuses into the
alloy, i.e., is present within the ß-NiAl phase of the alloy (Alperine, col. 4, ll.
50-54, as informed by col. 2, ll. 14-37; col. 3, ll. 16-19; col. 6, ll. 3-8; and
col. 8, ll. 44-47).
Alperine discloses that the heat treating temperature may be between
750 and 1250 C, i.e., 1382 to 2282 F, a temperature range substantially
overlapping the claimed range of 1200 to 2100 F (Alperine, col. 7, ll. 32-
34). The preferred heat treating time of 2 to 16 hours also substantially
overlaps the claimed time range of 2 to 15 hours (id.).
Appeal 2010-005324
Application 11/315,535

9
In considering the question of the obviousness of the claimed
invention in view of the prior art relied upon, we are guided by the basic
principle that the question under 35 U.S.C. § 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. See Merck &
Co., v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) and In re
Keller, 642 F.2d 413, 425 (CCPA 1981). We are also guided by the basic
principle that where a reference discloses the general conditions of a
process, it is normally obvious to determine, through routine experi-
mentation, the workable or optimized ranges of the specific conditions
necessary for conducting the process. See In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“where the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.”).
In the present case, Clarke suggests steps of depositing platinum and
NiCoCrAlY layers, and diffusion heat treating to create a bondcoat.
Because Clarke does not disclose the temperature and times at which to
perform the diffusion heat treatment, one of ordinary skill in the art would
have performed routine experimentation to find the optimal or workable
ranges for obtaining the desired diffusion.
Alperine provides evidence of the type of temperatures and times that
the ordinary artisan would have arrived at when optimizing the diffusion
heat treatment of Clarke. This is because Alperine desires to diffuse
platinum group metal into the same type of MCrAlY alloy compositions
taught by Clarke. While Alperine also desires to fill pores, that does not
negate the fact that Alperine also heats to interdiffuse.
Appeal 2010-005324
Application 11/315,535

10
The evidence as a whole supports the Examiner’s finding with regard
to the temperatures and times that one of ordinary skill in the art would have
selected to perform the heat treatment of Clarke. The evidence supports the
conclusion that the claimed temperatures and times would have been
obvious for conducting Clarke’s diffusion heat treatment.
Turning to the question of whether it is reasonable to conclude, based
upon the evidence of record, that when heat treating the bondcoating of
Clarke in accordance with the temperatures and times an ordinary artisan
would have selected, the claimed microstructure would inherently result, we
note that Appellant’s own Specification seems to indicate that the claimed
microstructure is a result of the diffusion heat treatment (Spec. ¶ [0014]).
There is no evidence to the contrary (see Spec, in its entirety).
Where an examiner has reason to believe that a characteristic in a
claim may, in fact, be an inherent characteristic of the prior art, the examiner
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic the
applicant is relying on for patentability. In re Best, 562 F.2d 1252, 1254-55
(CCPA 1977) (quoting In re Swinehart, 439 F.2d 210 (CCPA 1971). An
examiner’s belief is reasonable where the starting materials and processing
of the prior art are so similar to those disclosed by the applicant that it
appears that the claimed property would naturally result when conducting
the process as taught in the prior art. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986); Best, at
1255.
Given that Clarke is optimizing a bondcoat of substantially the same
composition for the same reasons, i.e., to increase oxidation and hot
Appeal 2010-005324
Application 11/315,535

11
corrosion resistance, as Appellant, and Alperine provides evidence that the
optimized temperatures and times of diffusion heat treatment are
substantially the same as those claimed, it is reasonable to conclude that the
claimed microstructure would inherently occur when the ordinary artisan
diffusion heat treated Clarke’s coated structure. Because the finding of
inherency is reasonable, the burden shifts to Appellant to show through
objective evidence that, in fact, the claimed microstructure will not
necessarily occur when diffusion heat treatment is conducted as taught in the
prior art. See Spada, at 708; Best, at 1255. Appellant has not provided such
evidence.
Appellant has not convinced us of an error in the Examiner’s rejection
of claims 1-4.

C. OBVIOUSNESS OF CLAIMS 5 AND 6 OVER CLARKE, ALPERINE,
AND HECHT
Claim 5 requires that the platinum in the platinum modified
NiCoCrAlY bondcoat of claim 1 be present in an amount from about 5.0 to
70 wt%. Claim 6 requires that the platinum concentration be from about 10
to 60 wt%.
To reject claims 5 and 6, the Examiner adds Hecht as evidence that
one of ordinary skill in the art would have sought to reach the claimed
concentration of platinum in the process of Clarke to obtain the properties
disclosed by Hecht (Ans. 10-11).
Appellant contends that Hecht teaches away from the claimed method
because Hecht adds platinum without depositing a platinum layer (Br. 20).
According to Appellant, one would have been motivated by Hecht to form a
Appeal 2010-005324
Application 11/315,535

12
NiCoCrAlY coating without depositing a layer of platinum and heat treating
(Br. 20-21).
Hecht is also directed to forming a protective coating for use on gas
turbine engines (Hecht, col. 1, ll. 7-14). Hecht explains that differences in
thermal expansion between the substrate and coating cause coating stresses
resulting in fatigue cracking during thermal cycling (Hecht, col. 2, ll. 36-58).
To reduce stress and hence fatigue cracking, Hecht reduces the coefficient of
thermal expansion of the coating so it approaches that of the substrate
(Hecht, col. 2, ll. 59-63). Hecht discloses that adding 18% platinum to
NiCrCoAlY accomplishes the required reduction in coefficient of expansion
and also preserves or even increases the oxidation resistance of the coating
(Hecht, col. 3, ll. 20-33). The addition of 15-20% platinum is said to more
than double the coating life (Hecht, col. 3, ll. 66-67).
Hecht discloses a preference, based on cost, for forming the coating
by sputtering (Hecht, col. 4, ll. 14-19).
When the prior art teaches away from a combination, that
combination is more likely to be nonobvious, KSR Int'l. Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007), but to teach away, a reference must discourage
one of ordinary skill in the art from following the path set out in the
reference, or lead that person in a direction divergent from the path that was
taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Various types of teachings may support a finding of “teaching away.” These
include known disadvantages in old devices that would naturally discourage
the search for new inventions, teachings leaving the impression that the
product would not have the property sought by the applicant, and reference
combinations that would produce a seemingly inoperative device. Id.
Appeal 2010-005324
Application 11/315,535

13
(citations omitted). “Although a reference that teaches away is a significant
factor to be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.” Id. For
instance, when there is nothing within the reference teaching that the
claimed element should not, or cannot, be used, and further cited prior art
teaches the propriety of employing the missing element, the teachings of
both reference must be weighed together. Para-Ordnance Mfg., Inc. v. SGS
Importers Int'l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995)
Hecht merely teaches sputtering as an example method of forming a
coating with the desired level of platinum. Such a teaching is not a teaching
away from other known methods of forming platinum modified NiCoCrAlY
coatings, such as the method of Clarke. Disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure.
In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
The weight of the evidence supports the Examiner’s conclusion of
obviousness.

D. OBVIOUSNESS OF CLAIM 7 OVER CLARKE, ALPERINE, AND
RIGNEY
With regard to the rejection of claim 7 in which the Examiner adds
Rigney as evidence of obviousness, Appellant advances no arguments in
addition to the arguments already addressed above. Therefore, Appellant
has not convinced us of an error in this rejection, and we sustain this
rejection for the reasons discussed above.

Appeal 2010-005324
Application 11/315,535

14

E. OBVIOUSNESS OF CLAIMS 11-16 OVER CLARKE, ALPERINE,
AND DAROLIA
To reject claims 11-16, the Examiner adds Darolia. Appellant argues
the claims as a group. We select claim 11 as representative. Claim 11
further requires that the method of claim 1 further comprise “applying a
ceramic topcoat having a thickness in the range of from about 1.0 to 50 mils
over and in direct contact with a surface of said bondcoat.”
The Examiner acknowledges that Clarke does not disclose forming a
ceramic top coat in direct contact with the bondcoat (Ans. 12-13). Clarke
describes depositing a platinum overlayer over the bondcoat (Clarke, col. 1,
ll. 53-57). According to the Examiner, it would have been obvious to one of
ordinary skill in the art to have applied Darolia’s ceramic top coat instead of
Clarke’s platinum overlayer “because applying a ceramic topcoat (a thermal
barrier coating (TBC)) over the MCrAIY bondcoat would have protected
superalloy components within the hot gas path of gas turbine engines as
taught by Darolia (col. 1, lines 13-25; and col. 2, lines 36-39). The TBC's
would have exhibited both lower thermal conductivities and improved
erosion resistance (col. 8, lines 24-45).” (Ans. 14.)
Appellant contends that the ordinary artisan would not have
substituted Darolia’s ceramic coating for Clarke’s platinum coating because
the coatings have different properties (Br. 22-23; Reply Br. 8-9).
Clarke does not disclose the reason for applying the platinum group
overlayer (Clarke, col. 3, ll. 62-68). Appellant states that Clarke wants a
platinum overlayer because it prevents the formation of an aluminum oxide
scale on an outer surface of the coating system, but Appellant does not cite
Appeal 2010-005324
Application 11/315,535

15
to any supporting evidence for this statement (Br. 22). In fact, there is some
evidence of record indicating that allowing an aluminum oxide to form was
considered desirable as the aluminum oxide forms a protective layer (see,
e.g., Alperine, col. 1, ll. 56-62; Hecht, col. 3, ll. 44-51; Czech, col. 2, ll. 55-
59).
Darolia teaches a thermal barrier coating (TBC) of ceramic (Darolia,
col. 1, ll. 13-21). Darolia explains that gas turbine engines are often
protected with thermal barrier coatings typically formed of ceramic materials
(Darolia, col. 1, ll. 23-25). These coatings are made so they expand and
contract without causing damaging stresses that lead to spallation (Dariola,
col. 1, ll. 30-40). Darolia places the ceramic coating directly onto the
bondcoat (Darolia, col. 3, ll. 60-61). The bondcoat develops an aluminum
oxide (alumina) scale as a result of oxidation, such as during deposition of
the TBC as well as during high temperature excursions of the gas turbine
component during engine operation (Darolia, col. 4, ll. 2-6). This alumina
scale chemically bonds the TBC to the bondcoat and substrate (Darolia, col.
4, ll. 6-8).
“[I]f a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
When one of ordinary skill in the art desired the properties of
Darolia’s ceramic top coat on a bondcoated turbine component of the type
taught by Clarke, one would have found it obvious to deposit the ceramic
Appeal 2010-005324
Application 11/315,535

16
top coat directly onto Clarke’s bondcoat in order to properly bond the
ceramic to the alumina scale that would be produced by the bondcoat.
The evidence supports the Examiner’s conclusion of obviousness.

F. OBVIOUSNESS OF CLAIM 44 OVER CLARKE, ALPERINE, AND
DUVA
Appellant states that claim 44 stands or falls with claim 3. Claim 3
stands or falls with claim 1 (see the discussion of Rejection B, above). As
Appellant has not identified an error in the Examiner’s rejection of claim 44,
we sustain the rejection of claim 44 for the reasons presented with respect to
claim 1.

G. OBVIOUSNESS OF CLAIMS 45-47 AND 49-52 OVER CLARKE,
HECHT, ALPERINE, AND DAROLIA
With respect to the rejection of claims 45-47 and 49-52, Appellant
relies upon the arguments advanced with respect to the rejection of claims 5
and 6 and the rejection of claims 11-16. Appellant also argues that the fact
that the Examiner has to apply four references to meet the limitations, with
one teaching away, and another not combinable with the others, speaks to
the hindsight nature of the rejection (Br. 25-26). However, as we discussed
above, teaching away and non-combinability has not been established.
Moreover, the number of references being combined is not alone enough to
establish non-obviousness.
For these reasons and the reasons we discuss above with regard to the
rejection of claims 5 and 6, and the rejection of 11-16, we sustain the
rejection of claims 45-47 and 49-52.
Appeal 2010-005324
Application 11/315,535

17

H. OBVIOUSNESS OF CLAIM 48 OVER CLARKE, HECHT,
ALPERINE, DAROLIA, AND RIGNEY
With regard to the rejection of claim 48, Appellant does not advance
any new arguments. Therefore, Appellant has not identified an error in this
rejection.

I. OBVIOUSNESS OF CLAIM 53 OVER CLARKE, HECHT,
ALPERINE, DAROLIA, AND CZECH
To reject claim 53, the Examiner relies upon Clarke, Hecht, Alperine,
and Darolia as applied in the rejection of claims 46-47 and 49-52, and adds
Czech as evidence that the composition of claim 53 would have been
obvious to one of ordinary skill in the art.
Appellant contends that none of the references disclose the claimed
NiCoCrAlY material, particularly, the chromium concentration (Br. 26-28;
Reply Br. 11-13). We do not agree.
Claim 53 requires that the composition consist of:
4.0 to 25 wt% chromium (Cr),
2.0 to 28 wt% cobalt (Co),
5.5 to 15 wt% aluminum (Al),
0.1 to 0.6 wt% yttrium (Y),
up to 2.0 wt% hafnium (Hf),
up to 2.0 wt% silicon (Si),
3.0 to 12 wt% tantalum (Ta),
1.0 to 12 wt% tungsten (W),
1.0 to 10 wt% rhenium (Re),
Appeal 2010-005324
Application 11/315,535

18
up to 2.0 wt% zirconium (Zr),
up to 4.0 wt% niobium (Nb),
up to 4.0 wt% titanium (Ti),
0.2 to 0.6 wt% molybdenum (Mo), and
the balance nickel (Ni).
Clarke discloses that typical MCrAlY coatings contain small
proportions of yttrium (on the order of 1-2%), relatively larger proportions
of chromium and aluminum (on the order of 15-40% and 10-25%
respectively), and the remaining balance selected from the group of cobalt,
nickel or iron (Clarke, col. 1, ll. 21-27). Clarke’s disclosed concentration of
chromium of 15-40% overlaps the claimed range of 4.0-25%.
Alperine discloses that hafnium, zirconium, cerium, lanthanides, and,
in general, most of the rare earths can play a role similar to that of yttrium in
MCrAlY coatings and may be used in place of yttrium (Alperine, col. 2, l.
65 to col. 3, l. 21; col. 6, ll. 3-8). Alperine suggests using 10-40 wt% Cr, 2-
25 wt% Al, 0-25 wt% Y, and discloses preferred compositions in the Table
of Figure 2. The Table of Figure 2 discloses compositions including Ni, Co,
Cr, Al, Y and Ta within the claimed ranges. Alperine’s chromium range
also overlaps the claimed range and is substantially similar to that of Clarke.
Alperine range differs from Clarke range only in that it allows for lower
levels of chromium than Clarke.
Czech describes a protective coating resistant to corrosion at medium
and high temperatures essentially consisting of: 25 to 40 wt% nickel, 28 to
32 wt% chromium, 7 to 9 wt% aluminum, 1 to 2 wt% silicon, 0.3 to 1 wt%
of at least one reactive element of the rare earths, at least 5 wt% cobalt; and
impurities, as well as selectively from 0 to 15 wt% of at least one of the
Appeal 2010-005324
Application 11/315,535

19
elements of the group consisting of rhenium, platinum, palladium,
zirconium, manganese, tungsten, titanium, molybdenum, niobium, iron,
hafnium, and tantalum (Czech, col. 2, ll. 8-21).
While the chromium content of Czech’s coating is higher than that
claimed and in the higher end of Clarke’s and Alperine’s ranges, Czech
provides evidence that it was known in the art to include elements such as
silicon, tungsten, rhenium, niobium, titanium, and molybdenum in MCrAlY-
type protective coatings. Clarke and Alperine provide evidence that using
chromium concentrations within the claimed range was known in the art.
The evidence as a whole supports the Examiner’s conclusion that it
would have been obvious to formulate a MCrAlY composition for use in the
method of Clarke having the composition of claim 53.

J. OBVIOUSNESS OF CLAIMS 54-56 OVER CLARKE, ALPERINE,
CZECH, AND DAROLIA
With respect to the rejection of claims 54-56, Appellant’s arguments
fail to be persuasive for the same reasons as discussed above with respect to
the rejection of claim 53.

K. OBVIOUSNESS OF CLAIM 57 OVER CLARKE, ALPERINE,
CZECH, DAROLIA, AND DUVA
With respect to the rejection of claim 57, Appellant does not present
any new arguments over and above those already addressed. Therefore, we
sustain the rejection for the reasons already discussed.
Appeal 2010-005324
Application 11/315,535

20

CONCLUSION
We sustain the Examiner’s rejections.

DECISION
The Examiner’s decision is affirmed.

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)(1).

AFFIRMED

cam