Ex Parte PILLHOEFER et al

Patent Trial and Appeal Board

Apr 11, 2017

13962360 (P.T.A.B. Apr. 11, 2017)

United States Patent and Trademark Office
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.
13/962,360 08/08/2013 Horst PILLHOEFER 6570-P50082 6681
13897 7590 (
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
04/13/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail @ Abel-IP.com
hmuensterer @ abel-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORST PILLHOEFER, ERWIN BAYER, THOMAS DAUTL,
and STEFAN MUELLER
Appeal 2016-003205
Application 13/962,3601
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
SHELDON M. McGEE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 21—40.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants state that the real party in interest is “MTU Aero Engines
AG” (Appeal Brief filed on August 24, 2015, hereinafter “Appeal Br.,” 3).
2 Appeal Br. 3—22; Reply Brief filed on January 28, 2016, hereinafter “Reply
Br.,” 2—5; Final Office Action (notice emailed on April 13, 2015),
hereinafter “Final Act.,” 2—14; Examiner’s Answer (notice emailed on
December 2, 2015), hereinafter “Ans.,” 2—14.
Appeal 2016-003205
Application 13/962,360
BACKGROUND
The subject matter on appeal relates to a process for producing a
protective layer on a component (e.g., a component for a gas turbine or an
aircraft engine) to provide protection against high temperatures and
aggressive media (Specification, hereinafter “Spec.,” 1,11. 11—16).
Representative claim 21 is reproduced from page 23 of the Appeal Brief
(Claims Appendix) (emphasis added), as follows:
21. A process for producing a protective layer for protecting a
component against high temperatures and aggressive media,
wherein the process comprises forming a surface layer
comprising aluminum and chromium on a surface of the
component to be provided with the protective layer by
(i) chromizing and (ii) alitizing, the chromizing and/or alitizing
of the component surface to be protected being carried out
concurrently but differently in different regions of the surface to
afford a protective layer having at least two regions which differ
with respect to a concentration of chromium and/or a
concentration of aluminum.
REJECTIONS ON APPEAL
The Examiner rejected the claims under pre-AIA 35 U.S.C. § 103(a)
as follows:
I. Claims 21—30, 32, and 34-40 as unpatentable over
Monson3 in view of Beers et al.4 (hereinafter “Beers”);
II. Claim 31 as unpatentable over Monson in view of Beers,
3 US 3,290,126, issued on December 6, 1966.
4 US 5,225,246, issued on July 6, 1993.
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Bianco et al.5 (hereinafter “Bianco”), and Basta et al.6
(hereinafter “Basta”);
III. Claim 33 over Monson in view of Beers and Shankar et
al.7 (hereinafter “Shankar”).
(Final Act. 2—14; Ans. 2—14.)
DISCUSSION
Rejection I
The Appellants provide general arguments under a sub-heading
captioned “Traverse” and some additional arguments under various sub­
headings identified by certain claim(s) (Appeal Br. 6—20). Notwithstanding
the Appellants’ use of various sub-headings, we address claims individually
below only to the extent that they have been argued separately within the
meaning of 37 C.F.R. § 41.37(c)(l)(iv). Claims that are not argued
separately within the meaning of the rule stand or fall with claim 21, which
we select as representative. In this regard, skeletal arguments or arguments
merely amounting to assertions that the references do not disclose or suggest
certain claim limitations are not arguments for separate patentability within
the meaning of the rule. See In re Lovin, 652 F.3d 1349, 1356—57 (Fed. Cir.
2011).
Claim 21:
The Examiner finds Monson teaches a method for producing a
protective layer on a component (i.e., an article) by chromizing and alitizing
5 Robert Bianco et al., “Pack Cementation Diffusion Coatings,”
Metallurgical and Ceramic Protective Coatings 236—60 (Kurt H. Stem ed.
1996).
6 US 5,658,614, issued on August 19, 1997.
7 US 4,526,814, issued on July 2, 1985.
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but acknowledges that the reference “does not explicitly teach chromizing
and / or alitizing in different regions of the surface concurrently but
differently to result in the protective layer having different regions which
differ with respect to a concentration of chromium or aluminum” (Final Act.
2—3). The Examiner finds further, however, that Beers describes a method
for providing protective coatings on a blade (i.e., a turbine blade) in which
the coating on the blade’s platform region is thinner than in other regions to
avoid deleterious fracturing in the platform region while providing tailored
high protection against oxidation and corrosion in other regions {id. at 3).
The Examiner finds that Beers teaches such a difference in thicknesses to
result in, e.g., a corresponding difference in aluminum concentrations in the
blade region of about 23% and in the blade platform region of about 18%
{id.). The Examiner concludes (id.):
Therefore, it would have been obvious to one of ordinary skill in
the art at the time of invention to have applied chromizing and /
or alitizing in different regions concurrently but differently
resulting in the protective layer having different regions, as such
an incorporation would predictably provide / allow for the
tailored application of such protective coatings where [they] are
most suitably required while limiting protection (and expenditure
of materials) to portions where such high levels of protection
would not be needed, or as in the scenario described by Beers
such a thickness is deleterious with respect to fracturing, so
article life would be improved.
Regarding Beers, the Appellants contend that Beers “is not concerned
with different concentrations and/or layer thicknesses of any metal that is
different from aluminum (such as, e.g., chromium) in two different regions
of a protective surface layer on a turbine blade”—i.e.. Beers “clearly fails to
suggest that instead of a single metal (aluminum) a combination of two or
more metals may be employed (let alone a combination of chromium and
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aluminum)” (Appeal Br. 10-11). In addition, the Appellants argue that “the
thickness of a coating and the concentration of a metal in a coating
apparently are two different things” (id. at 13).
The Appellants’ arguments fail to identify a reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
As a preliminary matter, we observe that the Appellants devote
considerable portions of their Appeal Brief to arguments relating to the lack
of a sufficient reason to combine Beers with Monson (e.g., Appeal Br. 8) (“It
is not seen that one of ordinary skill in the art would assume that the
problem addressed by BEERS also exists ... in the case of the protectively
coated nickel or cobalt articles of MONSON” and “MONSON does not even
mention turbine blades . . .”). The Examiner’s obviousness analysis,
however, relies primarily or exclusively on teachings found in Beers (Final
Act. 3). Thus, notwithstanding the Appellants’ position that the Examiner
stated that the rejection is based on the combined teachings of Monson and
Beers (Appeal Br. 12; Ans. 4), the Appellants were on notice that the
Examiner based the obviousness conclusion primarily or exclusively on
Beers. In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976) (no violation of
procedural due process where the Board, without changing the thrust of the
rejection, limited the discussion of the evidence to less than that discussed
by the Examiner).
Turning to the merits, we find no merit in the Appellants’ argument
that Beers does not teach both chromizing and alitizing. As the Examiner
finds (Ans. 4—5), Beers teaches that “a shield is provided for use in coating
articles with oxidation and/or corrosion resistant metals such as aluminum,
chromium, and the like, by out-of-pack gas phase deposition” (col. 2,11. 50—
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53) (emphasis added). That teaching would not only have suggested the use
of aluminum and chromium individually but also collectively. In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
We are also unpersuaded by the Appellants’ argument that Beers’s
coating thickness and coating concentration are unrelated. Consistent with
the Examiner’s finding (Ans. 8—9) (citing Beers col. 3,11. 43—56 and col. 4,
11. 56—68), Beers teaches explicitly that “[a]s the coating thickness increases,
the interdiffusion of the aluminum and the substrate decreases, thereby
increasing the percent by weight of aluminum in the aluminide coating” (col.
1,11. 45 49). A person having ordinary skill in the art would have
reasonably expected that such a decrease in interdiffusion with increasing
coating thickness would also occur when the coating material includes both
aluminum and chromium, as suggested by Beers, thereby resulting in Cr and
A1 concentration differences between regions having different thicknesses.
For these reasons, we uphold the Examiner’s rejection of claim 21.
Claim 24\
Claim 24, which depends from claim 21, recites that “the at least two
regions differ with respect to the concentration of chromium and the
concentration of aluminum” (Appeal Br. 23).
The Appellants argue that “it is not seen that BEERS also provides a
motivation to additionally vary the coating thickness (let alone the
concentration) of chromium” {id. at 15). As we discussed above, however, a
person having ordinary skill in the art would have found it obvious to use
both aluminum and chromium to form Beers’s protective coating, as
suggested by Beers, and when both metals are used, the regions having
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different thicknesses would necessarily have different A1 and Cr
concentrations due to differences in interdiffusion.
Therefore, we uphold the rejection of claim 24.
Claim 25:
Claim 25, which depends from claim 21, recites that “the protective
layer has three regions which differ with respect to the concentration of
chromium and/or the concentration of aluminum” (Appeal Br. 23).
The Appellants argue that the Examiner has not “identified a third
region of a turbine blade which according to BEERS is to be treated
differently from the two regions of the turbine blade disclosed therein” (id.
at 16). The Examiner, however, relies on Beers’s Figure 1 and column 4,
lines 16—25, and explains that a region with the highest concentration would
be the region that is not shielded, a region with an intermediate
concentration would be the low pressure platform region, and a region with
the lowest concentration would be the high pressure platform region (Final
Act. 4—5). The Appellants fail to explain, with any reasonable degree of
specificity, why the Examiner’s findings are erroneous. Lovin, 652 F.3d at
1356 n. 8 (approving the Board’s interpretation of “Rule 41.37 to require
applicants to articulate more substantive arguments if they wish for
individual claims to be treated separately”).
Therefore, we uphold the rejection of claim 25.
Claims 34 38:
Claim 34 recites (Appeal Br. 25):
34. The process of claim 21, wherein the at least two regions
of the protective layer comprise at least two regions selected
from (1) a region having a chromium concentration of from 40 %
to 90 % by weight and an aluminum concentration of from 5 %
to 35 % by weight, (2) a region having a chromium concentration
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of from 5 % to 15 % by weight and an aluminum concentration
of from 5 % to 35 % by weight, and (3) a region having a
chromium concentration of from 15 % to 40 % by weight and an
aluminum concentration of from 5 % to 35 % by weight.
Claims 35—38 are said to recite ranges narrower than those recited in claim
34 {id. at 18).
The Appellants contend that “[i]t is not seen that any of the recited
concentration ranges, let alone any of the combinations of concentration
ranges recited in claim 34, is rendered obvious by MONSON in view of
BEERS” {id. at 17). The Appellants, however, fail to explain why the
Examiner’s factual findings, analysis, and legal conclusion (Final Act. 7—8)
include reversible error. Moreover, A1 and Cr are included in Beers’s
coatings to provide resistance to oxidation and corrosion (col. 2,11. 53—55).
Therefore, consistent with the Examiner’s position (Final Act. 8), a person
having ordinary skill in the art would have understood that the amounts or
concentrations for A1 and Cr are result-effective variables, the optimum
ranges of which would have been discoverable by routine experimentation.
In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”).
For these reasons, we uphold the Examiner’s rejection of claims 34—
38.
Claim 39:
The Appellants merely state what claim 39 recites and then refer to
the arguments offered for claims 24, 25, and 34—38 (Appeal Br. 19—20).
Because we did not find the arguments offered from claims 24, 25, and 34—
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38 persuasive, we also uphold the Examiner’s rejection of claim 39 for the
same reasons.
Rejection II
For claim 31, the Appellants argue that the Examiner’s reasons “are
based on mere speculation . . . and hindsight. . . ” because Basta discloses
repairing a previously aluminided blade by CVD, “which has virtually
nothing in common with the processes of MONSON or BEERS, both of
which do not at all relate to repair.” (Appeal Br. 21). In addition, the
Appellants rely on the same arguments offered for claim 21 (id.).
The Appellants’ naked assertion that the rejection is based on mere
speculation and hindsight because Basta relates to repair is ineffective to
identify a reversible error in the Examiner’s rejection, which provided
specific factual findings and reasoning (Final Act 10-11). Lovin, 652 F.3d
at 1356 n. 8.
Rejection III
For claim 33, the Appellants rely on the same arguments offered for
claim 21 (Appeal Br. 22). Because we found the arguments for claim 21
unpersuasive, we also sustain the rejection of claim 33.
SUMMARY
Rejections I—III are affirmed. Therefore, the Examiner’s final
decision to reject claims 21—40 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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