Ex Parte Neal et al

Patent Trial and Appeal Board

Jun 20, 2013

12257581 (P.T.A.B. Jun. 20, 2013)

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.
12/257,581 10/24/2008 James W. Neal PA-0003896U;
67097-1053
7344
54549 7590 06/20/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
06/20/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES W. NEAL, MICHAEL J. MALONEY,
DAVID A. LITTON, BENJAMIN J. ZIMMERMAN
and CLIFFORD A. HAMMOND
____________

Appeal 2012-003149
Application 12/257,581
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH,
and JAMES C. HOUSEL, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003149
Application 12/257,581

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 2 through 12 and 14 through 24. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ invention is directed to coating process to increase a
bonding strength of a ceramic coating. Spec. ¶ [0001]. Claim 14 is
illustrative of the subject matter on appeal and is reproduced below:
14. A method for use in a coating process, comprising:
depositing a ceramic coating on a bond coat that is
disposed on a substrate, the ceramic coating including gadolinia
stabilized zirconia, the bond coat including a metal-chromium-
aluminum-yttrium layer, where the metal includes at least one
of nickel, cobalt, or iron, and the substrate including a nickel
alloy; and
establishing a desired surface roughness Rz of the bond
coat prior to depositing the ceramic coating to control a
bonding strength between the bond coat and the ceramic
coating, wherein the surface roughness Rz is an average of
surface heights over unit lengths of the bond coat, each of the
surface heights extending between a highest surface peak and a
lowest surface valley within one of the unit lengths.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Neal US 4,428,213 Jan. 31, 1984
Burns US 2003/0039764 A1 Feb. 27, 2003
Singh US 2003/0180571 A1 Sept. 25, 2003
Schlichting US 2006/0024527 A1 Feb. 2, 2006
Tymashov US 2007/0096620 A1 May 3, 2007
Freling US 2007/0172703 A1 July 26, 2007

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Application 12/257,581

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A. Weisenburger et al., Pulsed Electron Beam Treatment of
MCrAlY Bondcoats for EB-PVD TBC Systems Part 1 of 2:
Coating Production, 202 SURFACE & COATINGS TECH. 704-708
(2007), available at www.sciencedirect.com.

Pellets LLC, Cut Wire Shot Applications,
http://web.archive.org/web/20060316170328/http://www.peliec
tsllc.com/documenC28.html, dated by Internet Archive
Wayback Machine as available 3/16/2006 (Pellets).

Appellants, App. Br. 3-4, request review of the following rejections
from the Examiner’s final Office action:
I. Claims 3, 5, 9-11 and 14-18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Weisenburger and Schlichting.

II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weisenburger, Schlichting and Singh.

III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weisenburger, Schlichting and Tymashov.

IV. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weisenburger, Schlichting and Burns.

V. Claim 3, 5, 8-11 and 14-18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Burns, Weisenburger and Schlichting.

VI. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burns, Weisenburger, Schlichting and Pellets.

VII. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burns, Weisenburger, Schlichting, Pellets and Neal.

VIII. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burns, Weisenburger, Schlichting and Singh.

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IX. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burns, Weisenburger, Schlichting and Tymashov.

X. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burns, Weisenburger, Schlichting, Singh and Neal.

XI. Claims 19-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burns, Weisenburger, Schlichting and Neal.

XII. Claims 3, 5, 8-11, 14-18 and 21-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Freling, Burns, and Weisenburger.

XIII. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freling, Burns, Weisenburger and Pellets.

XIV. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freling, Burns, Weisenburger, Pellets and Neal.

XV. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freling, Burns, Weisenburger and Singh.

XVI. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freling, Burns, Weisenburger and Tymashov.

XVII. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Freling, Burns, Weisenburger, Singh and Neal.

XVIII. Claims 19-20 and 23-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Freling, Burns, Weisenburger and Neal.

OPINION
Rejections I, V, and XI (Rejections of Independent Claims)
The dispositive issue for these rejections is: Did the Examiner err in
determining that the combination of Weisenburger and Schlichting would
have led one skilled in the art to a coating process comprising the step of
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establishing a desired surface roughness Rz of a bond coat prior to depositing
a ceramic coating to control a bonding strength between the bond coat and
the ceramic coating as required by the subject matter of independent
claims14 and 19?1,2
After thorough review of the respective positions provided by
Appellants and the Examiner, we answer this question in the negative and
AFFIRM for the reasons presented by the Examiner.
Focusing on Rejection I, the Examiner found that Weisenburger
teaches a coating method comprising the steps of establishing a desired
surface roughness Rz of an MCrAlY bond coat disposed on a substrate
(turbine) and depositing a ceramic coating (such as yttrium stabilized
zirconia (YSZ)) on the bond coat disposed on a substrate. Ans. 5. The
Examiner also found that Weisenburger does not explicitly teach the ceramic
coating as comprising gadolinia stabilized zirconia (GSZ). Id. The
Examiner relied on Schlichting to teach as known to use ceramic coatings
comprising blends of YSZ and GSZ as turbine thermal barrier coatings
(TBC) for improved coating toughness and low thermal conductivities at
lower thicknesses. Id. at 5-6. The Examiner concluded that it would have
been obvious to one of ordinary skill in the art to modify the method of
Weisenburger to incorporate GSZ into the YSZ ceramic coating composition

1 We focus our attention on independent claim 14. However, claims argued
separately will be addressed separately.
2 Appellants rely primarily on the arguments presented for Rejection I and
also address Rejections V, XI and XVIII. App. Br. 8 (Rejection V), 9
(Rejections XI, XII and XVIII). Accordingly, a discussion of Burns, Neal
and Freling is unnecessary for disposition of the present appeal.
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of Weisenburger to improve the TBC’s properties as taught by Schlichting.
Id. at 6.
Appellants argue that Weisenburger fails to establish any correlation
between surface roughness Rz and the bond strength between a bond coat
and a GSZ ceramic coating. App. Br. 5. Appellants further argue that
controlling bond strength by establishing a desired surface roughness Rz is
unknown from the cited prior art references. Id. Appellants additionally
argue that the Declaration under 37 CFR § 1.1323 (Declaration) establishes
that the inventors recognized the correlation between the surface roughness
Rz and the bonding strength of ceramic coatings that include GSZ, such that
the bonding strength of such coatings is greatly increased with the reduction
in the surface roughness Rz. Id. at 6.
We are unpersuaded by these arguments and agree with the
Examiner’s obviousness determination. Ans. 4-6. Appellants’ arguments
focus on whether one skilled in the art would have known to control the
bond strength between a bond coat and a ceramic coating by establishing a
desired surface roughness Rz of the bond coat. App. Br. 5. However, as
noted by the Examiner, Weisenburger discloses the importance of an Rz
roughness measurement of bond coats in the cyclic lifetime of thermal
barrier coatings (TBC). Ans. 32-33. Moreover, Weisenburger clearly states
that it is known from literature that a reduced surface roughness is one
prerequisite for long TBC life. Weisenburger 707 § 4. Thus, contrary to
Appellants’ arguments, one skilled in the art would have known the

3 Appellants are relying on the Declaration filed February 1, 2011, entered
into the record by the Examiner in the Final Office Action of March 30,
2011. Final Office Action 30.
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correlation between surface roughness Rz and TBC lifetime cycle (bond
strength between the ceramic coating and the bond coat) from Weisenburger.
While Appellants argue that the cited references do not specifically
teach this correlation with respect to the GSZ ceramic coating, we note that
Appellants’ claim 14 is written in open language (“including”) and, thus, not
limited to only GSZ ceramic coating. See also Spec. ¶ [0013].
Appellants have not adequately explained why one skilled in the art
would not have been capable of using Weisenburger’s coating process to
improve the bonding strength between a bond coat and a ceramic coating,
irrespective of the ceramic coating composition. See In re Sovish, 769 F.2d
738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary
skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Further,
given Weisenburger’s disclosure noted above, we also agree with the
Examiner that the Appellants’ Declaration is insufficient to support
patentability of the claims. Ans. 33-35.
Appellants also argue that, contrary to the Examiner’s interpretation,
Schlichting does not teach that blends of YSZ and GSZ provide improved
coating toughness and low thermal conductivity over conventional TBC
coatings such as YSZ. App. Br. 7. According to Appellants, Figures 1 and
2 of Schlichting illustrate improvement only against an unblended GSZ
coating. Id.
We are unpersuaded by these arguments as well. As noted by the
Examiner, Schlichting discloses the benefits of blending YSZ and GSZ.
Ans. 35-36; Schlitchting ¶ [0025]. Appellants have not adequately disputed
this finding. While Appellants argue that Figures 1 and 2 compare the
YSZ/GSZ blend against unblended GSZ (App. Br. 7), such disclosure does
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not diminish Schlichting’s teaching of the benefits of using the YSZ/GSZ
blend for a ceramic coating. See Merck & Co., Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior art,
including unpreferred embodiments, must be considered.”)(quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)); In re Susi, 440 F.2d 442, 446
n.3 (CCPA 1971).
Therefore, we sustain the Examiner’s Rejections I, V, and XI for the
reasons given above and presented by the Examiner.
The Examiner presented separate rejections of independent claim 14
under 35 U.S.C. § 103(a) as being unpatentable over Freling, Burns, and
Weisenburger (Rejection XII), and of independent claim 19 over Freling,
Burns, Weisenburger and Neal (Rejection XVIII). Ans. 20-22. Appellants
rely on the same arguments discussed above in addressing these rejections.
App. Br. 9. Accordingly, we sustain these rejections as well for the reasons
given above and presented by the Examiner.

Rejections II-IV, VI-X and XIII-XVII (Rejections of Dependent Claims)
In addition, the Examiner separately rejected the dependent claims
under a number of obviousness grounds relying on several additional
secondary references (Rejections II-IV, VI-X and XIII-XVII). See Answer
generally. In addressing the separate rejections of the dependent claims,
Appellants rely primarily on the arguments presented when discussing
Rejection I. App. Br. 7-9. Appellants did not substantially address or
further distinguish the cited secondary references based on the additional
limitations of dependent claims. Id.
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Accordingly, we sustain the Examiner’s Rejections II-IV, VI-X and
XIII-XVII for the reasons presented by the Examiner and given above.

ORDER
The decision of the Examiner rejecting claims 2- 12 and 14-24 under
35 U.S.C. § 103(a) is affirmed.
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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