Ex Parte Lane et al

Board of Patent Appeals and Interferences

Jan 31, 2012

12177567 (B.P.A.I. Jan. 31, 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.
12/177,567 07/22/2008 Jay E. Lane 2008P06866US 4687
28524 7590 01/31/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
SNELTING, ERIN LYNN
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
01/31/2012 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 JAY E. LANE and
GARY B. MERRILL
________________

Appeal 2011-001071
Application 12/177,567
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001071
Application 12/177,567

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This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 through 20. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of forming a
turbine component. Claim 1 is illustrative:
1. A method of forming a turbine component having a
vapor resistant layer, comprising:
providing an inner tool and an outer tool, wherein the
inner and outer tools define a mold for forming a turbine
component;
applying a vapor resistant layer to the inner tool;
applying a ceramic insulation layer over the vapor
resistant layer in the mold;
partially firing the vapor resistant layer and the ceramic
insulation layer to form a bisque turbine component; and
removing the outer tool.

The Examiner maintains the following rejections:
1) claims 1-5 and 15-20 under 35 U.S.C. § 103(a) as unpatentable
over Morrison ‘878 (US 2005/0167878 A1, published Aug. 4, 2005),
Nagaraj (US 2002/0187327 A1, published Dec. 12, 2002), and Thorne
(US 7,112,301 B2, issued Sep. 26, 2006);
2) claims 6-12 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Morrison ‘878, Nagaraj, and Thorne, and further in view of Morrison ‘359
(US 7,093,359 B2, issued Aug. 22, 2006); and
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3) claim 13 under 35 U.S.C. § 103(a) as unpatentable over Morrison
‘878, Nagaraj, Thorne and Morrison ‘359, and further in view of Butner (US
2002/0197465 A1, published Dec. 26, 2002).
With respect to rejection (1), Appellants’ arguments focus on claim 1
only.
With respect to rejections (2) and (3), Appellants provide no
additional argument and instead refer to the arguments made regarding the
rejection of independent claim 1 in rejection (1). (Br. 17). Therefore, claims
6-12 and 14 in rejection (2) and claim 13 in rejection (3) stand or fall with
our decision regarding claim 1 in rejection (1).

REJECTION (1)
ISSUE
Did Appellants establish that the Examiner reversibly erred in
determining that the combined teachings of Morrison ‘878, Nagaraj, and
Thorne would have rendered obvious the method of forming a turbine
component having the step of applying a vapor resist layer to the inner tool
and the step of partially firing the vapor resistant layer and the ceramic
insulation layer to form a bisque turbine component required by claim 1
within the meaning of § 103(a)? We decide this issue in the negative.

PRINCIPLES OF LAW
“Many of appellant’s arguments fail from the outset because . . . they
are not based on limitations appearing in the claims.” In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
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Application 12/177,567

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The term “comprising” is “inclusive or open-ended” and “does not
exclude additional unrecited elements or method steps.” Abbot Labs. v.
Sandoz, Inc., 544 F.3d 1341, 1360 (Fed. Cir. 2008) (internal quotations
omitted).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).

ANALYSIS AND CONCLUSION
Appellants argue that Thorne does not disclose the formation of a
component together with a vapor resistant inner layer at the same time. (Br.
15 and 16). Appellants argue that Thorne teaches away from the claimed
invention which includes forming a component with a vapor resistant layer
at the same time because Thorne teaches that the component must first be
created and then MCrAlY bond coating 30 is applied before alumina based
ceramic coating 32 is applied. Id. at 16.
Appellants also argue that Thorne does not disclose the use of a single
vapor resistant layer. Id. In that regard, Appellants argue that Thorne at
column 2, line 60 to column 3, line 3, teaches a coating having two layers
(i.e., alumina based ceramic coating 32 and MCrAlY bond coating 30) and
not a single layer. Id.
Appellants’ arguments are without persuasive merit because they fail
to address the Examiner’s stated case (Ans. 4-6) based on modifying the
method of Morrison ‘878 by coating the inner tool with a vapor resistant
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layer as taught by Thorne and Nagaraj. Though Appellants argue the
Examiner engaged in impermissible hindsight in making the combination of
prior art (App. Br. 16), Appellants do not specifically dispute the Examiner’s
reason for combining Morrison ‘878, Nagaraj, and Thorne. (Compare Ans.
4-6 with Br. 9-17). We find the Examiner based the combination on the
teachings of the prior art, not impermissible hindsight.
In addition, with respect to Appellants’ arguments (Br. 15 and 16)
directed to forming a component together with a vapor resistant inner layer
at the same time and the use of a single vapor resistant layer, we agree with
the Examiner (Ans. 16) that these features argued by Appellants are not
limitations in the claim. See Self, 671 F.2d at 1348. For the same reason,
Appellants’ argument that Thorne teaches away from the claimed invention
is not persuasive because the claims do not require that the component and
the vapor resistant layer be formed at the same time.
Moreover, we note that Appellants’ open-ended transitional claim
language “comprising” does not exclude any additional layers such as, for
example, a MCrAlY bond coating layer. Abbot Labs., 544 F.3d at 1360.
Therefore, it is immaterial whether Thorne teaches a MCrAlY bond coating
layer because the claims do not exclude this layer.

Accordingly, we sustain the Examiner’s § 103 rejection.

ORDER
The Examiner’s decision is affirmed.

Appeal 2011-001071
Application 12/177,567

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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)(1).

AFFIRMED
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