Ex Parte Schmidt et al

Patent Trial and Appeal Board

Jun 28, 2016

13271294 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/271,294 10/12/2011 Wayde R. Schmidt
54549 7590 06/30/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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
ATTORNEY DOCKET NO.
PA17950U;
67097-1569PUS1
CONFIRMATION NO.
2759
EXAMINER
ADKINS, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WAYDE R. SCHMIDT, TANIA BHATIA
KASHYAP, and PAUL SHEEDY1
Appeal2015-000942
Application 13/271,294
Technology Center 1700
Before MICHAEL P. COLAIANNI, MONTE T. SQUIRE, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants timely appeal under 35 U.S.C. § 134(a) from a rejection2
of claims 12-30.3 (App. Br. 3.) We have jurisdiction. 35 U.S.C. § 6(b).
We reverse.
1 The Real Party in Interest is identified as United Technologies
Corporation. (Appeal Brief, filed 17 July 2014 ("App. Br."), 2.)
2 Final Office Action mailed 29 January 2014 ("Final Rejection"; cited as
"FR.").
3 Claims 1-11 have been canceled. (FR. 2.)
Appeal2015-000942
Application 13/271,294
OPINION
A. Introduction4
The subject matter on appeal relates to "a method for fabricating a
ceramic material." (Spec. iJ 2.) The '294 Specification provides:
(Id.)
The method includes impregnating a porous structure with a
mixture that includes a preceramic material and a filler. The
filler has at least one free metal. The preceramic material is
then cured and rigidized to form a green body. The green body
is then thermally treated to convert the rigidized preceramic
material into a ceramic matrix within the pores of the porous
structure. The same thermal treatment or a second, further
thermal treatment is used to cause the at least one free metal to
move to internal porosity defined by the ceramic matrix.
The method "[i]nfiltrat[es] the free metal into the internal pores of the
ceramic matrix and pores defined within or at least partially by the porous
structure thereby at least partially fills the pores to enhance the densification
of the ceramic material" and other properties such as thermal conductivity.
(Id. iJiJ 9, 11.)
Figure 2 of the '294 Specification is reproduced below:
4 Application 13/271,294, Methodfor Fabricating a Ceramic Material, filed
12 Oct. 2011. We refer to the '"294 Specification," which we cite as
"Spec."
2
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Application 13/271,294
FlG.2
Figure 2 of the '294 Specification illustrating an example
ceramic component 30
FIG. 2 of the '294 Specification shows component 30 which "includes a
porous structure 32 and a polymer-derived ceramic matrix 34 within pores
36 of the porous structure 32." (Spec. ii 20.) "The polymer-derived ceramic
matrix 34 defines internal pores 3 8 that result from the conversion of the
rigidized material to ceramic during the above-described thermal treatment
to form the ceramic matrix 34." (Id. ii 21.) "The internal pores 38 are
interconnected, non-interconnected, surface connected or non-surface
connected. At least one of a free metal or a free metal-derived compound 40
is located within the internal pores 3 8 of the polymer-derived ceramic matrix
34 and the residual pores 32a." (Id.)
Representative claim 12 reads:
A ceramic component comprising:
a porous structure;
a polymer-derived ceramic matrix within pores of the
porous structure, the polymer-derived ceramic matrix defining
closed internal pores from a conversion of polymer to ceramic
to form the polymer-derived ceramic matrix; and
at least one of a free metal and a free metal-derived
compound within the closed internal pores of the polymer-
derived ceramic matrix.
3
Appeal2015-000942
Application 13/271,294
(App. Br. 7 (emphases added).)
The Examiner maintains the following grounds of rejection: 5
A. Claims 12-18 and 21-23 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Gray et al. (US Patent No.
5,441,762, issued Aug. 15, 1995) ("Gray").
B. Independent claim 19 and claim 20 (which depends from claim
19) are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gray.
B 1. Claims 24-26, 28, and 30 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Gray in view of Barsoum et
al. (US Patent Application No. 2010/0055492 Al, published
Mar. 4, 2010) ("Barsoum").
B2. Claims 256 and 27 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Gray in view of Fehlner
(US Patent No. 3,407, 125, issued Oct. 22, 1968) ("Fehlner").
B3. Claims 25, 26, and 29 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Gray in view of Talsma
(US Patent No. 3,255,027, issued June 7, 1966) ("Talsma").
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
5 Examiner's Answer mailed 18 September 2014 ("Ans.").
6 The Examiner rejected claim 25 for obviousness based on various
combinations of Gray and other additional references. (FR. 5, 8, & 9.)
4
Appeal2015-000942
Application 13/271,294
Rejection A: Claim 127
The cited reference Gray discloses a method "to form protective
layers on composite materials which have a matrix of either carbon or
ceramic material." (Gray, 2, 11. 17-19.) In the first step of the method, "the
composite article is coated with a mixture of solid particles suspended in a
liquid polymeric silicon-containing binder" or a "green coating." (Id. at. 2,
11. 20-26.) Upon curing of the binder, the "cured coating is then infiltrated
and covered by a ceramic layer deposited by chemical vapor infiltration
(CVI)." (Id. at. 2, 11. 42-44.) Gray further provides that "this CVI layer is
itself subsequently coated with a solution of a curable preceramic polymer
[which] ... will wet and fill any microcracks or pores remaining after the
CVI process." (Id. at 2, 11. 44--48.)
Based on the disclosure, particularly that "the polymer derived
ceramic matrix fills the pores of the porous structure" in Gray, the Examiner
finds that the ceramic matrix "fills the pores and thus closes the internal
pores"; thus anticipating the claimed ceramic component having "a porous
structure" and "a polymer-derived ceramic matrix within pores of the porous
structure, the polymer-derived ceramic matrix defining closed internal pores
from a conversion of polymer to ceramic to form the polymer-derived
ceramic matrix" as recited in claim 12. (FR. 3.) The Examiner reasons that
because the "claim as written does not distinguish that the closed internal
pores are different from the pores within the porous structure," they "are the
same pores" and therefore anticipated by the porous material disclosed in
Gray. (Ans. 9.)
7 Claims 13-18 and 21-23 stand or fall with claim 12. (App. Br. 3.)
5
Appeal2015-000942
Application 13/271,294
Although claims are given their broadest reasonable interpretation
during examination, each element in a claim is nonetheless material to
defining the scope of the invention. See Warner-Jenkinson Co. v. Hilton
Davis Chemical Co., 520 U.S. 17, 27 (1997). "[E]very limitation positively
recited in a claim must be given effect in order to determine what subject
matter that claim defines." In re Wilder, 429 F.2d 447, 450 (CCPA 1970).
Claim 12 at issue here recites two distinct limitations: "pores of [a]
porous structure" and "internal pores" that are "from a conversion of
polymer to ceramic." The '294 Specification discloses that in order to make
the composite recited in claim 12, "a preceramic material and a filler
material" is first "infiltrated into a porous structure." (Spec. iJ 10.) It is not
until the preceramic material is subsequently "rigidized" and "thermally
treated" that a ceramic matrix is formed "within the pores of the porous
structure." (Id.) As a result of "the conversion of the polymer to a ceramic
to form the polymer-derived ceramic matrix," "[t]he polymer-derived
ceramic matrix[] contains internal pores." (Id. iJ 3.) Such "internal pores
are voids, micro-cracks or other open regions that are formed during the
conversion of the preceramic material to ceramic." (Id. iJ 11.) The '294
Specification further discloses that the thermal treatment may be "used to
cause the [filler] ... to move into pores" which "include internal porosity
defined by the ceramic matrix as well as pores defined within or at least
partially by the porous structure." (Id. f 10.)
Consistent with the text of the disclosure, FIG. 2 of the '294
Specification illustrates "pores 36 of the porous structure 32" as distinct
from "internal pores 38 of the polymer-derived ceramic matrix 34." (Spec.
iii! 20-21; see also FIG. 2.) Whereas "the porous structure 32 is a fibrous
structure" containing "continuous, non-continuous or chopped fibers" that
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Appeal2015-000942
Application 13/271,294
are "ceramic, metallic and/or carbon fibers," the "polymer-derived ceramic
matrix 34 defines internal pores 3 8 that result from the conversion of the
rigidized material to ceramic during the ... thermal treatment to form the
ceramic matrix 34." (Spec. iii! 14, 20-iJ 21.)
The Examiner's interpretation that "the pores of the porous structure
and the defined closed internal pores are the same pores" vitiates the express
claim limitation of "internal pores from a conversion of polymer to
ceramic." See Warner-Jenkinson Co., 520 U.S. at 27 (holding that claims
should not be construed so broadly as to vitiate an express claim limitation).
The Examiner's interpretation is inconsistent with the '294 Specification
which distinguishes "pores of a porous structure" and "internal pores" that
are "from a conversion of polymer to ceramic." On the record before us, we
hold that the Examiner erred in construing the claim term "internal pores
from a conversion of polymer to ceramic" to be the same pores as "pores of
the porous structure." The anticipation rejection of claim 12, based on the
erroneous claim construction, is reversed. Because claims 24-30 under the
35 U.S.C. § 103 rejection are dependent claims of claim 12 and the
Examiner relies on the same flawed claim construction, the obviousness
rejection of these claims are reversed.
For the same reason, we reverse the obviousness rejection of
independent claim 19 and its dependent claim 20 based on Gray.
REVERSED
7