Ex Parte Maly et al

Patent Trial and Appeal Board

Mar 19, 2014

11648494 (P.T.A.B. Mar. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL PATRICK MALY,
WILLIAM THOMAS CARTER, JR. THOMAS JOSEPH KELLY,
and MARK DAVID VELIZ
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Appeal 2012-007556
Application 11/648,494
Technology Center 1700
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Before TERRY J. OWENS, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007556
Application 11/648,494

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-8, 10, 12-14, and 16-20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to restored or regenerated articles, particularly
gas turbine engine components. (Spec.3 [0001].) Claims 1 and 10 are
representative of the invention and are reproduced below from the Claims
Appendix to the Appeal Brief:
1. An article comprising:
a body comprising a residual substrate comprised of a first material,
and a layer comprised of a second material similar in composition to the first
material overlying at least a portion of the residual substrate, wherein the
residual substrate and the layer are integrally bonded at an interface
therebetween, and wherein the layer comprises a deposit from a deposition
process selected from vapor phase deposition, ion plasma deposition,
cathodic arc deposition, sputtering, and combinations thereof; and
an environmental coating on the body being at least partly diffused
into the layer creating a diffusion zone, wherein the environmental coating
comprises a deposit from a deposition process selected from vapor phase
deposition, cathodic arc deposition, and combinations thereof.
10. The article according to claim 1 wherein the layer includes at
least a portion adapted to be load-bearing structure.

The Examiner maintains the following rejections under 35 U.S.C.
§103(a):

1 Final Office Action mailed Apr. 18, 2011.
2 Appeal Brief filed Oct. 3, 2011 (“App. Br.”).
3 Specification filed Dec. 29, 2006.
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Application 11/648,494

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1. claims 1-3, 6-8, 12-14, and 18-20 are rejected as unpatentable
over Minor et al. (US 2006/0049236 A1, published Mar. 9, 2006) in view of
Worthing, Jr. et al. (US 6,875,292 B2, patented Apr. 5, 2005) (Ans.4 4-10);
2. claims 4, 5, 16, and 17 are rejected as unpatentable over Minor
in view of Worthing, further in view of Fusaro, Jr. et al. (US 6,592,948 B1,
patented Jul. 15, 2003) (Ans. 10-11);
3. claim 10 is rejected as unpatentable over Minor in view of
Worthing, further in view of Restall (US 4,382,976, patented May 10, 1983)
(Ans. 11-12);
4. claims 1, 2, 6-8, 125-14 and 18-20 are rejected as unpatentable
over Minor in view of Rickerby (US 6,176,982 B1, patented Jan. 23, 2001)
(Ans. 13-17);
5. claims 4, 5, 16, and 17 are rejected as unpatentable over Minor
in view of Rickerby, further in view of Fusaro (Ans. 17-18); and
6. claim 10 is rejected as unpatentable over Minor in view of
Worthing, further in view of Restall (Ans. 18-20).
Appellants present separate arguments in support of patentability of
dependent claim 10 (App. Br. 8-10.) Appellants’ arguments in support of
patentability of the remaining appealed claims are based on limitations
common to the independent claims, i.e., claims 1, 12, and 18. Accordingly,
dependent claims 2-8, 13, 14, 16, 17, 19, and 20 stand or fall with the
independent claims. 37 C.F.R. § 41.37(c)(1)(vii).

4 Examiner’s Answer mailed Nov. 28, 2011.
5 The Examiner appears to have inadvertently failed to include claim 12 in
the statement of this ground of rejection. (Final 10; Ans. 13.) We view this
as harmless error, as the Examiner clearly discusses claim 12 in the body of
the rejection. (See id.)
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We have fully considered the arguments advanced by Appellants in
support of patentability, but are not convinced of error in the Examiner’s
conclusion of obviousness for the reasons expressed in the Answer.
Claims 1-8, 10, 12-14, and 16-20
The Examiner finds Minor discloses a turbine component comprising
a substrate integrally bonded at an interface with a layer of material which is
similar in composition to the substrate material. (Ans. 4-5.) The Examiner
finds one of ordinary skill in the art would have been motivated to apply an
environmental coating to Minor’s component, the coating being at least
partly diffused into the layer, based on Worthing’s disclosure of using a
diffusion aluminide coating to protect turbine hardware (id. at 6) and
Rickerby’s disclosure of applying an environmental protective aluminide
coating to a turbine part, the coating being partly diffused into the part (id. at
13-14).
Appellants contend the Examiner reversibly erred in finding Minor
discloses a “residual substrate” as recited in the claims. (App. Br. 6-7, 9.)
Appellants maintain a residual substrate is defined in the Specification “as
that portion of the component that remains ‘after stripping’ the
environmental coating including the diffusion zone 18.” (Id. at 6-7 (citing
Spec. [0019-0020].) Appellants argue Minor’s turbine component never
included an environmental coating and, therefore, does not meet the
limitation of a residual substrate. (Id. at 7, 9.)
The appealed claims are product claims. “The patentability of a
product does not depend on its method of production. If the product in a
product-by-process claim is the same as or obvious from a product of the
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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).
Appellants have not clearly explained how, or directed us to any
evidence which supports a finding that a substrate which was treated to
remove an environmental coating and a diffusion zone (i.e., the claimed
“residual substrate”) patentably differs from a substrate comprising
substantially the same material which was not previously coated (i.e.,
Minor’s substrate). To the contrary, the Specification indicates the residual
substrate comprises the same material as the original base substrate.6
Because Appellants have not convinced us of error in the Examiner’s
finding that Minor discloses a “residual substrate” as recited in the claims,
we sustain the rejections of claims 1-8, 12-14, and 16-20.
Claim 10
The Examiner finds “Restall discloses that diffusion interaction
between coatings and substrate alloys reduces the load-bearing cross-
sectional area of the substrate which is significant for thin wall components
such as turbine blades.” (Id. at 11, 19.) The Examiner further finds Restall
discloses a coating deposition method which reduces the extent of diffusion
interaction with the substrate, yet provides superior corrosion protection as
compared to conventional deposition methods. (Id. at 12, 19.) Based on the
advantages described by Restall, the Examiner determines it would have

6 “In an exemplary method, the component 10 includes a base substrate 12
and an environmental coating 14.” (Spec. [0018].) “The environmental
coating 14 may be a diffusion coating wherein a diffusion zone 18 forms at
the interface of the coating and the underlying material. During the stripping
process, the environmental coating, including the diffusion zone 18 is
removed.” (Id. at [0019].) “After stripping, the component comprises a
residual substrate 20 comprising the base material.” (Id. at [0020].)
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been obvious to have formed the environmental coating on Minor’s
component so as to reduce diffusion interaction, thereby retaining part of the
load-bearing property of the layer of material added to the underlying
substrate. (Id. at 12, 19-20.)
Appellants argue “Restall fails to teach or suggest with reasonable
expectation of success any use of the coating as a load-bearing structure.
Restall seeks to minimize the effect of a diffusion coating on the underlying
substrate, so as not to detract from the mechanical properties of the
underlying substrate.” (App. Br. 8-9.) However, Appellants have not shown
error in the Examiner’s findings that the combined teachings of the
references suggest the structure recited in appealed claim 10, i.e., that
reducing the extent of diffusion interaction of Worthing’s and Rickerby’s
environmental coatings with Minor’s layer of added material, as suggested
by Restall, would have resulted in the claimed structure.
Because Appellants have not convinced us of error in the Examiner’s
conclusion of obviousness, we also sustain the rejections of claim 10.
In conclusion, for the reasons expressed in the Answer and above, we
affirm the Examiner’s decision to reject claims 1-8, 10, 12-14, and 16-20.
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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