Ex Parte Madhava

Board of Patent Appeals and Interferences

Jun 1, 2009

10836791 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MURALI MADHAVA
____________

Appeal 2008-003932
Application 10/836,791
Technology Center 1700
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Decided:1 June 01, 2009
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Before PETER F. KRATZ, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-003932
Application 10/836,791

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-46 (Final Office Action, mailed Feb. 20,
2007), the only claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Independent claims 1 and 10 are illustrative of the subject matter on
appeal, and are reproduced from the Claims Appendix to the Appeal Brief
(“Br.”), filed Aug. 22, 2007:
1. A method for diffusion coating a surface of a metallic target
comprising the steps of:

providing a metal alloy comprising chromium and at least two
element selected from the group consisting of silicon, hafnium, tantalum,
rhenium, and yttrium;

converting the metal alloy to a metal alloy powder form;

blending a packing material comprising the metal alloy powder, a
halide activator, and an inert material;

placing the packing material into a diffusion box;

placing a target into a diffusion box such that the target is surrounded
by the packing material; and

heating the diffusion box to a temperature sufficient to cause diffusion
of metals from the metal alloy powder in the packing material into the
surface of the target.

10. A method for diffusion coating a surface of a metallic target
comprising the steps of:
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providing a metal powder comprising elemental chromium powder
and a powder of a master alloy of hafnium, nickel, yttrium, and silicon, and
wherein the metal powder has a mesh size of 140 or smaller;

mixing the metal powder with an inert material;

mixing a halide activator with the metal powder and binder material;

placing the metal powder, inert material, and halide activator in a
diffusion box so as to form a packing that surrounds the target; and

heating the packing surrounded target to a temperature between
approximately 1800°F and 2050°F and holding the temperature
therebetween for between about 2 to about 5 hours thereby causing diffusion
of the metals into the target surface.

The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Oct. 31, 2007, 3):
Hayman 4,156,042 May 22, 1979
Rapp 5,492,727 Feb. 20, 1996
Pillhöffer 6,887,519 B1 May 03, 2005
Ackerman 6,921,251 B2 Jul. 26, 2005
Nissim Shaltiel, New Products Presentation (Sep. 22, 2002), Chromalloy
Isreal, slides 1-5 (http://www.chromalloyisrael.com/products_6.htm)
(hereafter “Shaltiel”).

Appellant requests review of the following grounds of rejection (Br.
8):
1. claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over
Hayman in view of Ackerman;
2. claim 6 under 35 U.S.C. § 103(a) as unpatentable over Hayman
in view of Ackerman and further in view of Shaltiel;
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3. claims 7-11, 13-21, 23-27, and 29-31 under 35 U.S.C. § 103(a)
as unpatentable over Hayman in view of Ackerman and further in view of
Pillhöffer;
4. claims 22 and 28 under 35 U.S.C. § 103(a) as unpatentable over
Hayman in view of Ackerman and Pillhöffer and further in view of Shaltiel;
5. claims 12, 32-36, and 38-46 under 35 U.S.C. § 103(a) as
unpatentable over Hayman in view of Ackerman and Pillhöffer and further
in view of Rapp; and
6. claim 37 under 35 U.S.C. § 103(a) as unpatentable over
Hayman in view of Ackerman, Pillhöffer and Rapp and further in view of
Shaltiel.
ISSUE
Has Appellant shown reversible error in the Examiner’s finding that
Hayman and Ackerman disclose the use of chromium alloys as coating
materials?
We answer this question in the affirmative.
FINDINGS OF FACT (“FF”)
1. Independent claims 1, 10, 23, and 32, the sole independent
claims on appeal, are directed to methods for diffusion coating a metal target
surface. The claim 1 and claim 23 methods include a step of “providing a
metal alloy comprising chromium” (emphasis added) and additional
elements. The claim 10 and claim 32 methods recite a step of “providing a
metal powder comprising elemental chromium powder and a powder of a
master alloy” (emphasis added).
2. Hayman discloses “[a] process for [diffusion] coating an article
such as a turbine blade composed of [a] nickel-base alloy.” (Abstract.) The
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Application 10/836,791

process uses a “coating material in elemental or chemically combined form,
. . . selected from the group consisting of aluminium [sic], chromium,
titanium, zirconium, tantalum, niobium, yttrium, rare earth metals, boron and
silicon.” (Col. 2, ll. 23-27.) Hayman’s process is described as useful in
coating materials such as “nickel-base, cobalt base and iron-base alloys.”
(Col. 4, ll. 20-23.)
3. Ackerman discloses “a method for forming a protective coating
on a turbine engine rotor component.” (Col. 3, ll. 17-18.) Ackerman states
that the component “is usually made of a nickel-base alloy.” (Col. 4, ll. 62-
63.) “The aluminum or chromium coating may . . . be modified with
elements such as hafnium, zirconium, yttrium, silicon, titanium, . . . and
combinations thereof.” (Col. 4, ll. 2-6.)
4. The Examiner finds that both Hayman and Ackerman disclose
metal alloy coating materials. (Ans. 11-12.) The Examiner concedes that
neither reference discloses the specific combination of elements which make
up Appellants’ claimed alloys. (Ans. 4-5.) However, the Examiner
maintains that it would have been obvious to have used an alloy containing
the claimed combination of elements based on the combined teachings of the
references. (Ans. 12.)
5. Appellants contend that the Examiner’s obviousness
determination is based on an incorrect finding that Hayman in view of
Ackerman discloses or suggests metal alloy coating materials. (App. Br.
9:16-17.)
6. The Examiner argues “that there is no other reasonable
interpretation that one of ordinary skill in the art could give to chemically
combined forms of the metals given in Hayman besides some type of alloy
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of the materials.” (Ans. 12 (emphasis added).) The Examiner likewise
maintains that Ackerman’s description of using a modified chromium
coating (see, supra, FF 3) is reasonably interpreted as a disclosure of
chromium alloys. (Ans. 12.)
7. The Specification does not explicitly define the terms “metal
alloy” or “master alloy.”
8. The Examiner did not identify an explicit use of the term
“alloy” by either Hayman or Ackerman in describing the coating materials
utilized in their processes. (See generally, Ans.) Both Hayman and
Ackerman do use the term “alloy” when describing the components to which
the coating materials are applied. (See e.g., Hayman, col. 4, ll. 22-23 (FF 2);
Ackerman, col. 3, ll. 19-21, col. 4, ll. 62-63 (FF 3).)
9. US 4,153,453 to Hart et al., issued on May 8, 1979, about the
same time that Hayman issued. Hart “relates to a process for the production
of an alloy” (col. 1, ll. 3-4), including chromium alloys (see e.g., col. 1, ll.
16-21; col. 2, ll. 24-27), for use as permanent or removable coatings (col. 1,
ll. 54-58.). According to Hart,
Although it has been proposed in the past to
electrodeposit coatings made up of particles, incorporating
metal in [a] chemically combined state, in a metal matrix to
improve the hardness and/or wear resistance of the matrix
metal, such proposals have only resulted in the production of a
composite coating of particles incorporating metal in [a]
chemically combined state in a metal matrix and not an alloy.

(Col. 2, ll. 6-13 (emphasis added); see also, col. 2, ll. 19-23 (describing the
formation of chromium carbide and cobalt composite coatings which are not
alloys).)

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Application 10/836,791

PRINCIPLES OF LAW
In general, words used in a claim are accorded their ordinary and
customary meaning. Honeywell Int'l Inc. v. Universal Avionics Sys. Corp.,
488 F.3d 982, 992 (Fed. Cir. 2007). “[T]he ordinary and customary meaning
of a claim term is the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention.” Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Prior art
references may be “indicative of what all those skilled in the art generally
believe a certain term means” and “can often help to demonstrate how a
disputed term is used by those skilled in the art.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996). Netcraft Corp. v.
Ebay, Inc., 549 F.3d 1394, 1398 (Fed. Cir. 2008)
(While the lay meaning of “communications link” standing
alone may be broader than “internet access,” we are not
construing this term standing alone. See Phillips, 415 F.3d ,
1321 (“Properly viewed, the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the
entire patent.”). In order to properly determine the ordinary
meaning of the entire phrase at issue in this case, we must
consider the claim terms in light of the entire patent.)
The PTO's interpretation of claim terms should not be so broad that it
conflicts with the meaning given to identical terms in other patents from
analogous art. Cf. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(approving the Board's definition of claim terms consistent with their
definitions in CCPA cases).
ANALYSIS
The Examiner’s obviousness determination is based on an
interpretation of the claim term “alloy” as encompassing Hayman’s
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chemically combined forms of metals and Ackerman’s modified chromium
material. The Examiner’s interpretation runs counter to the use of these
terms in the references (see FF 2, 3, and 8 (using the term “alloy” to describe
the substrate, but not the coating material)) as well as in the related prior art
(see FF 9 (distinguishing “chemically combined” from “alloy” metals)).
Therefore, we are in agreement with Appellant that the Examiner reversibly
erred in finding that Hayman and Ackerman disclose the use of chromium
alloys as coating materials. Because all of the rejections are based on this
incorrect finding, we are constrained to reverse all six grounds of rejection.
CONCLUSION
The decision of the Examiner rejecting claims 1-46 is reversed.

REVERSED

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