Ex Parte Schmidt et al

Patent Trial and Appeal Board

Dec 28, 2016

12824569 (P.T.A.B. Dec. 28, 2016)

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.
12/824,569 06/28/2010 Wayde R. Schmidt PA012985U;67097-1338PUS1 1132
54549 7590 12/30/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
RUMMEL, IAN A
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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
Ex parte WAYDE R. SCHMIDT, PAUL SHEEDY, and
WILLIAM WERKHEISER
Appeal 2016-000862
Application 12/824,569
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and DEBRA
L. DENNETT, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
November 6, 2014 decision finally rejecting claims 1, 8, 10-17, 23, and 25—
33 (“Final Act.”).2 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We affirm-in-part.
1 Appellants identify the real party in interest as United Technologies
Corporation (Appeal Br. 2).
2 Although the claims were finally rejected in the November 6, 2014 Office
Action, the substance of those rejections was set forth in an Office Action
mailed April 29, 2014 (“Off. Act.”).
Appeal 2016-000862
Application 12/824,569
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a composite article which has a
powder-derived composite coating on the substrate (Abstract). The
composite coating includes discrete regions of a first material and discrete
regions of a second material, where at least one of the first and second
materials is a chemical precursor (id.). Details of the claimed invention may
be seen in illustrative claim 1, which is reproduced below from the Claims
Appendix of the Appeal Brief (emphasis in italics)'.
1. A composite article comprising:
a substrate; and
a fully powder-derived composite coating disposed on
the substrate and including discrete, elongated regions of a first
material and discrete, elongated regions of a second material,
and at least one of the first material or the second material is a
chemical precursor, wherein the first material is the chemical
precursor and is selected from a group consisting of sol-gel
precursor material, oligomeric material and combinations
thereof, and the second material is a metal selected from a
group consisting of cobalt, copper and combinations thereof.
REJECTIONS
I. Claims 1, 10-13, and 28—29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Strock3 in view of Davis.4
II. Claims 14—17 and 25—27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Strock in view of Davis, and further in view of Hazel.5
3 Strock et al., U.S. Patent Pub. 2008/0226879 Al, published September 18, 2008.
4 Davis, Handbook of Thermal Spray Technology (2004).
5 Hazel et al., U.S. Patent Pub. 2008/0280952 Al, published December 14, 2006.
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Application 12/824,569
III. Claims 8, 23, 31, and 33 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Strock in view of Davis, and further in view of
Takahashi.6
IV. Claim 32 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Strock in view of Davis, Takahashi, and further in view of
Kodas.7
V. Claims 25—27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hazel in view of Strock.
VI. Claims 1, 11—17, and 28—30 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hazel in view of Strock and Davis.
VII. Claims 8, 23, 31, and 33 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hazel in view of Strock, Davis, and Takahashi.
DISCUSSION
Rejections I-IV, VI, and VII. The Examiner construes the term
“sol-gel precursor material” to mean “a material that 1) is made via a sol-gel
technique and 2) able to be used as a precursor to a further material (Ans. 4—
5). The Examiner finds that Strock teaches a composite article in which a
cobalt material and a ceramic material such as silica are deposited onto a
substrate via thermal spraying a mixture of cobalt and/or copper and silica
powder (Off. Act. 2—3, citing Strock || 10, 13, and 24). The Examiner
further finds that the thermal spray technique taught by Strock would
6 Takahashi et al., “Aggregation Behavior of Alkoxide-Derived Silica in Sol-Gel
Process in Presence of Polyethylene oxide),” Journal of Sol-Gel Science and
Technology, 17, pp. 7—17 (2000).
7 Kodas et al., U.S. Patent Pub. 2006/0233422 Al, published September 25, 2008.
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Application 12/824,569
inherently result in discrete elongated regions of the metal and silica
powders (Off. Act. 3).
The Examiner also finds that Strock does not teach “that the silica
material may be a sol-gel material,” but that “it was well known in the art to
create such silica materials for thermal spray coating as sol-gel materials
{id., citing Davis, pp. 153—155). According to the Examiner, it would have
been obvious “to prepare the silica precursor material in [Strock] as a sol-gel
material” because doing so was known to be an energy efficient way to form
silica {id.).
Appellants argue, inter alia, that Davis does not disclose using the
thermal spraying technique on a sol-gel material, but instead teaches thermal
spraying a ceramic material and, therefore, that the combination of Strock
and Davis would not render obvious having a material as part of the coating
which is a sol-gel precursor material (Appeal Br. 3). Appellants also argue
that the Examiner’s construction of “sol-gel precursor material” improperly
reads the term “precursor” out of the claim (Appeal Br. 4).
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (emphasis added). The Examiner
states that his interpretation of the phrase “sol-gel precursor material” is
“both reasonable in light of the specification and literal, and completely in
keeping with ordinary practice in the art to refer to ceramic materials as ‘sol-
gel materials’ if they are ceramics that are made via a sol-gel technique”
(Ans. 5). However, the Examiner does not point to anything in the
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Application 12/824,569
Specification, or to any specific evidence regarding “the ordinary practice”
in the art. We agree with Appellants that the Examiner’s construction of
“sol-gel precursor material” is unreasonable in light of the Specification and
the plain meaning of the claim language. In particular, the Specification
explicitly states that the claimed composite article may be thought of as an
intermediate material until the chemical precursor, such as the sol-gel
precursor is fully or substantially fully converted to produce a ceramic
material (such as silica) (Spec. H 10, 11). As argued by Appellants, the
Examiner’s proposed construction would read the word “precursor” out of
the claim, and the Examiner has not persuasively justified such a
construction.8
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In light of our conclusion that the Examiner’s
construction of “sol-gel precursor material” is too broad, we also determine
that Appellants have demonstrated reversible error in the Examiner’s
8 The Examiner suggests Appellants’ proposed construction might render the
claims not enabled under 35 U.S.C. § 112 (Ans. 5). We do not make any
findings or reach any conclusions regarding this issue, as it is not properly
before us at this time.
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Application 12/824,569
determination that the combination of Strock and Davis renders obvious the
limitation “a sol-gel precursor material.”
For similar reasons, Appellants have shown error in Rejections VI and
VII.
Accordingly, we reverse Rejections I—IV, VI, and VII.9
Rejection V. The Examiner finds that Hazel teaches an
environmental barrier coating made by depositing a powdered silica source
with a metal source, followed by reaction of the silica and metal precursor
materials, and that the precursors can be applied with thermal spraying (Off.
Act. 7, citing Hazel, 41—43), but that Hazel does not specifically teach the
use of nickel and cobalt chlorides. The Examiner further finds that Strock
discloses using nickel and cobalt as the metallic material and, therefore, that
it would have been obvious to use nickel and cobalt in Hazel’s coating (id.).
Appellants argue that because Strock does not disclose the use of
chlorides, the rejection does not have a rational underpinning (Appeal Br. 8).
However, the Examiner finds that Hazel teaches that its barrier coating is
made by depositing a powdered silica source with a metal chloride (Ans. 7,
citing Hazel 41—43), and further that because Strock teaches the use of
cobalt as a metallic material in a barrier coating, it would have been obvious
to use cobalt chloride in Hazel’s coating (id.). We determine that Appellants
have not demonstrated reversible error the Examiner’s reasoning as to why a
person of skill in the art would have combined the teachings of Strock and
Hazel. Moreover, Appellants have not demonstrated error in the Examiner’s
determination that Hazel’s thermal spraying technique would result in
9 However, we affirm the rejection of claims 25—27 over Strock, Davis, and
Hazel for the reasons set forth in connection with Rejection V.
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Application 12/824,569
discrete elongated regions for the first and second materials, essentially for
the reasons articulated by the Examiner in Answer (Ans. 7).
Accordingly, we affirm Rejection V.
CONCLUSION
We REVERSE the rejection of claims 1, 10—13, and 28—29 under 35
U.S.C. § 103(a) as being unpatentable over Strock in view of Davis.
We REVERSE the rejection of claims 14—17 under 35 U.S.C. § 103(a)
as being unpatentable over Strock in view of Davis, and further in view of
Hazel.
We AFFIRM the rejection of claims 25—27 under 35 U.S.C. § 103(a) as
being unpatentable over Strock in view of Davis, and further in view of Hazel.
We REVERSE the rejection of claims 8, 23, 31, and 33 under 35
U.S.C. § 103(a) as being unpatentable over Strock in view of Davis, and
further in view of Takahashi.
We REVERSE the rejection of claim 32 under 35 U.S.C. § 103(a) as
being unpatentable over Strock in view of Davis, Takahashi, and further in
view of Kodas.
We AFFIRM the rejection of claims 25—27 under 35 U.S.C. § 103(a)
as being unpatentable over Hazel in view of Strock.
We REVERSE the rejection of claims 1, 11—17, and 28—30 under 35
U.S.C. § 103(a) as being unpatentable over Hazel in view of Strock and
Davis.
We REVERSE the rejection of claims 8, 23, 31, and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Hazel in view of Strock, Davis, and
Takahashi.
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Application 12/824,569
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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