Ex Parte Schmidt et al

Patent Trial and Appeal Board

Dec 17, 2018

13149027 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/149,027 05/31/2011 Wayde R. Schmidt
54549 7590 12/19/2018
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. CONFIRMATION NO.
PA3626U;67097-1454PUS1 1670
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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 and PAUL SHEEDY
Appeal2017-009476
Application 13/149,027
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER L. CRUMBLEY, and
LILAN REN, Administrative Patent Judges.
Opinion for the Board by REN, Administrative Patent Judge.
Opinion concurring-in-part and dissenting-in-part by GAUDETTE,
Administrative Patent Judge.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-009476
Application 13/149,027
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
7, 8, 22-24, 27, 28, 33, and 36. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a composite article which may be used in
gas turbine engines. Spec. ,r 1. The composition article "includes a
substrate, at least one protective layer on the substrate, and an intermediate
layer between the protective layer and the substrate." Id. ,r 3. "The
intermediate layer includes a first material that occupies a first continuous
region and a second material that occupies a second continuous region next
to the first continuous region." Id. Claim 33, reproduced below, is
illustrative of the claimed subject matter:
33. A composite article comprising:
a substrate formed of a metal alloy or ceramic material;
a protective layer on the substrate, the protective layer
formed of a ceramic oxide; and an intermediate layer between,
and in contact with each of, the protective layer and the
substrate,
the intermediate layer including a co-continuous
microstructure with first, second, and third materials of
different compositions that occupy, respectively, first, second,
and third distinct continuous regions in the co-continuous
1 The real party in interest is identified as United Technologies Corporation.
Appeal Brief of March 20, 2017 ("App. Br."), 2.
2 In this opinion, we refer to the Specification of May 31, 2011 ("Spec.").
the Final Office Action of August 24, 2016 ("Final Act."), the Examiner's
Answer of May 30, 2017 ("Ans."), and the Reply Brief of June 30, 2017
("Reply Br.").
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Application 13/149,027
microstructure, the first, second, and third distinct continuous
regions being continuous with respect to extending
continuously from the substrate to the protective layer,
the second distinct continuous region is contiguous with
each of the first distinct continuous region and the third distinct
continuous region in the co-continuous microstructure and the
first distinct continuous region is contiguous with the third
distinct continuous region in the co-continuous microstructure,
the first, second, and third distinct continuous regions are
each individually amorphous in shape,
and the first material and the substrate have equivalent
compositions, the second material and the protective layer have
equivalent ceramic oxide compositions, and the third material
has a ceramic or metallic composition of different composition
than the protective layer and the substrate.
App. Br. 20 (Claims Appendix) (emphasis added).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Crombie III
Gilman et al.,
Schlichting et al.,
EP 0139396 July 13, 1988; hereinafter
"Crombie"
US 5,030,517 July 9, 1991; hereinafter
"Gilman"
US 2008/0044662 Al Feb. 21, 2008; hereinafter
"Schlichting"
REJECTIONS
Claims 7, 8, 22-24, 27, 28, 33, and 36 are rejected under 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as being indefinite. Final Act. 2.
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Claims 7, 23, 28, 33, and 36 are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as being unpatentable over Crombie, Schlichting, and Gilman.
Final Act. 6.
Claim 27 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as being
unpatentable over Crombie, Schlichting, and an additional reference. Final
Act. 14.
Claims 8, 22, 24, and 33 are are rejected under 35 U.S.C. § 103(a)
(pre-AIA) as being unpatentable over Crombie, Gilman, and additional
respective references. Final Act. 10, 13.
OPINION
Indefiniteness
The Examiner finds claim 33 indefinite3 because "[i]t is unclear
whether the microstructure is intended to mean that the region is of a micro
size or if the continuous region has a continuous micro structure." Final Act.
2. In support of the rejection, the Examiner cites to the Specification which
states the following:
The intermediate layer 26 includes a first material 28a
that occupies a first continuous region 28b and a second,
different material 30a that occupies a second continuous region
30b next to the first continuous region 28b. That is, the second
material 30a is different from the first material 28a in at least
one of composition, microstructure ( e.g., crystallographic phase
3 Appellants only address the indefinteness rejection of claim 33 which is the
sole independent claim. See, e.g., App. Br. 3-12. Claims 7, 8, 22-24, 27,
28, and 36 stand rejected for indefiniteness solely based on their dependency
from claim 33. Final Act. 6. Appellants do not present separate arguments
regarding the indefiniteness rejection of these dependent claims.
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Application 13/149,027
and/or orientation), or other physical property such that the
regions 28b and 30b are perceptibly distinct (e.g., such as by
metallographic techniques).
Spec. ,r 12 ( cited in Final Act. 2 & Ans. 20).
The Examiner finds that unless the claim term microstructure means
"the crystallographic phase and/or orientation," the scope of the claim is
unclear because "[t]he specification simply provides no guidance on any
requisite area or thickness that would be considered microstructure under
this interpretation" and "it is unclear whether a structure that is continuous
between a substrate and a protective layer within the microstructure
interpretation however includes a width or length outside of the
microstructure would be considered to be a microstructure." Final Act. 3;
see also Ans. 24 (stating that "the Examiner interpreted the term
microstructure to refer to the microstructure as defined in the specification,
e.g. crystallographic phase and/or orientation" otherwise the claim would be
indefinite).
Appellants, on the other hand, argue that "microstructure" "is
commonly understood as the microscopic structure or the small scale
structure of a material defined as the structure of a prepared surface of
material as revealed by a microscope above 25X magnification." App. Br. 5
(citing Merriam-Webster dictionary and ASM Metals Handbook). The
Examiner finds Appellants' construction ambiguous because "these are two
separate definitions" one directed to "a specific magnification" whereas the
other "requires the use of a microscope." Ans. 26. The Examiner also states
that the plain meaning as proposed by Appellants is ambiguous because it
"does not set forth a lower limit for the size of this structure" and "the
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specification does not set forth any particular method of producing the
product, is not limited to the type of material beyond general categories of
materials, does not provide any examples of a thickness, and is not limited to
a particular type of article." Id.
The second paragraph of 35 U.S.C. § 112 requires that the
specification "conclude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the applicant regards as his
invention." 35 U.S.C. § 112 ,r 2 (2011). "[C]laims are required to be cast in
clear- as opposed to ambiguous, vague, indefinite -terms." In re Packard,
751 F.3d 1307, 1313 (Fed. Cir. 2014). Exact precision is not required. The
test for determining the question of indefiniteness may be formulated as
whether the claims "set out and circumscribe a particular area with a
reasonable degree of precision and particularity." In re Moore, 439 F.2d
1232, 1235 (CCPA 1971). With regard to the reasonableness standard, one
must consider the language in the context of the circumstances. Packard,
7 51 F .3d at 1313. "[T]he definiteness of the language employed must be
analyzed-not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art." Moore, 439
F.2d at 1235.
In this case, we agree with Appellants that the passage at issue in the
specification (i-f 12)- "the second material 30a is different from the first
material 28a in at least one of composition, microstructure (e.g.,
crystallographic phase and/or orientation), or other physical property such
that the regions 28b and 30b are perceptibly distinct ( e.g., such as by
metallographic techniques)" - would not be understood by the ordinary
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artisan as an explicit definition of the claim term microstructure. We also
agree with Appellants that a more reasonable reading of this passage is that
"a crystallographic phase and/or an orientation of the microstructure may
differ as attributes of a micro structure - not that crystallographic phase
and/or orientation are synonyms for micro structure." See Reply Br. 3.
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. Packard, 751 F.3d at 1309 (Fed. Cir.
2014) ("Indefiniteness, as a subset of claim construction, is a question of law
which this court reviews without deference."). In this case, claim 33 reciting
the term "microscturure" is reasonably precise to "notify the public of what
is within the protections of the patent, and what is not." Id. at 1313 (holding
that in an indefinteness inquiry "how much clarity is required necessarily
invokes some standard of reasonable precision in the use of language in the
context of the circumstances."). More specifically, the meaing of the claim
term "micro structure" is not ambigious or vague when read in context of the
limitation of "the intermediate layer including a co-continuous
microstructure with first, second, and third materials of different
compositions that occupy, respectively, first, second, and third distinct
continuous regions in the co-continuous microstructure." The claim term
"microstructure" does not refer to attributes or characterstics such as
crystallographic phase or orientation but rather the structure itself, which
varies on a microscopic scale and which attributes such as crystallographic
phase or orientation may define. Contrary to the Examiner's conclustion
that "[i]t is unclear whether the microstructure is intended to mean that the
region is of a micro size or if the continuous region has a continuous
microstructure" (Final Act. 2), the plain language of claim 33 does not recite
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"a continuous microstructure" but rather that the three "distinct continuous
regions" are "in the co-contious microstructure" and that these "continuous
regions being continuous with respect to extending continuously from the
substrate to the protective layer."
To the extent that the Examiner concludes that the specification sets
forth an "explicit definition" that "microstructure is the crystallographic
phase and/or orientation" which the Examiner applies as the plain and
ordinary meaning of the term for the indefiniteness rejection, the Examiner
reversibly erred. See Final Act. 6 (finding that "the only indication as to
what Applicant intended to mean with the term microstructure is directed to
the crystallographic phase and/or orientation").
The Examiner also faults Appellants for "it is unclear how Applicant
wishes this term to be interpreted." Ans. 18. According to the Examiner,
it is unclear how Applicant wishes this term to be interpreted.
It is unclear whether the 'co-continuous microstructure'
requires a region to have the same microstructure ( e.g.
crystallographic phase and/or orientation) but allows for the
resulting structure to be visible to the naked eye or if the phrase
requires that each region likewise be microscopic and not
visible to the naked eye, viz. that the region itself is
. .
m1croscop1c.
Id. While the Examiner does not expressly state that the claim term
"microstructure" excludes a structure that is micro-sized, the Examiner
faults Appellants for proposing that a microstructure is "either a microscopic
structure or the small structure of a material defined as the structure of a
prepared surface of material as revealed by a microscope above 25x
magnification" - both of which the Examiner determines to render claim 33
indefinite. Ans. 23-24. The Examiner additionally finds: "The specification
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does not provide any guidance on the size of zones. Accordingly, there is no
indication that a zone the size of Crombie would be outside of the scope of
the claim." Id. at 19. To the extent that the Examiner broadly includes in
the recited "microstructure" any structure regardless of size or excludes from
the recited "microstructure" a micro-sized structure, we find that the
Examiner reversibly erred.
In rejecting Appellants' argument that a microstructure does not
include all structures regardless of size, the Examiner refers to U.S. Patent
Application Publication 2008/0145694 ("Bucci") which according to the
Examiner,
sets forth a ceramic coating having a coherent, continuous
columnar grain structure. [i-f26] This structure is a
microstructure [i-f27] The microstructure is continuous in that
each monolayer includes a plurality of columnar grains which
are generally oriented and extend through all, or substantially
all, of the thickness of the layer. [i-f27] The thickness can be
from 0.005 inches to about 0.1 inches. [i-f22] This size would be
visible to the naked eye.
Ans. 19. Bucci describes "ceramic coating 18" which "forms a
coherent, continuous columnar grain structure." Bucci ,r 27. The
particular coating 18 "may be formed by applying multiple
monolayers 24" and "[t]he degree of columnarity is directly related to
the quantity and distribution of columnar grains extending both within
and between individual monolayers 24." Id. ,r,r 24, 27. The thickness
of "from about 0.005 to about 0.100 inches" referred to by the
Examiner is the thickness of coating 18 and not the underlying
micro structure. Ans. 19 ( citing Bucci ,r 22). The Examiner therefore
reversibly erred in so far as relying on Bucci in rejecting Appellants'
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arguments by finding that the thickness of a coating "visible to the
naked eye" necessarily results in the microstructure from which the
coating is formed is also visible to the naked eye.
Based on the foregoing, we do not sustain the Examiner's
indefiniteness rejection. 4
Obviousness
The Examiner provides that "the art rejections directed to the claims
necessarily fail" if the indefiniteness rejection fails. Ans. 30; see Reply Br.
2. The obviousness rejection of claim 33 is therefore reversed as a result of
the reversal of the indefiniteness rejection.
The obviousness rejections of claims that depend from claim 33 are
reversed for the same reason.
DECISION
The Examiner's decision is reversed.
REVERSED
4 In the Examiner's Answer, the Examiner issues a conditional rejection
finding that a reversal of the indefiniteness rejection would lead to an
enablement rejection. Ans. 29. The Examiner finds that if claim 33 is not
indefinite, it is not enabled because "it would be appropriate to then raise a
further 35 U.S.C. 112, first paragraph rejection based on a lack of
enablement or scope of enablement for the claims." Id. at 29--30. Because
no such rejection has been entered by the Examiner on the record before us,
we decline to enter a new ground of rejection based on enablement for the
first time during this appeal. In the event that prosecution continues, the
Examiner may wish to consider whether such a rejection is appropriate and
whether to enter it in the record.
10
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYDE R. SCHMIDT and PAUL SHEEDY
Appeal2017-009476
Application 13/149,027
Technology Center 1700
GAUDETTE, Administrative Patent Judge, concurring-in-part and
dissenting-in-part
I respectfully dissent from the majority's decision to reverse the
rejections of claims 7, 8, 22-24, 27, 28, 33, and 36 under 35 U.S.C. § 103(a).
I agree with the majority's decision to reverse the rejection of claims 7, 8,
22-24, 27, 28, 33, and 36 under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre-
AIA), second paragraph, but for reasons that differ from those expressed by
the majority.
The respective positions of the Examiner and Appellants in this appeal
are based on a difference in their interpretations of the term "microstructure"
in the claim 3 3 phrase "the intermediate layer including a co-continuous
microstructure with first, second, and third materials of different
compositions that occupy, respectively, first, second, and third distinct
continuous regions in the co-continuous microstructure." The Examiner
contends the term "microstructure," as used in claim 33, encompasses
Appeal2017-009476
Application 13/149,027
crystallographic phase and/or orientation. Final Act. 2. In support of this
argument, the Examiner cites Specification paragraphs 12 and 15. See id.
Specification paragraph 12 describes the first and second materials of the
intermediate layer as differing "in at least one of composition,
microstructure ( e.g., crystallographic phase and/or orientation), or other
physical property such that the [first and second] regions ... are perceptibly
distinct (e.g., such as by metallographic techniques)." Specification
paragraph 15 discloses that because of these differences in the first and
second materials, the intermediate layer serves different functions in the
composite article. For example, "the materials may be selected to serve
various individual purposes, such as adhesion, oxygen gettering, thermal
expansion matching, thermo-mechanical compliance or other desirable
purpose within the composite article." Spec. ,r 27.
Appellants agree that "[i]n one context 'microstructure' is used in
[the] specification ... to describe differences between the materials."
Appeal Br. 9. Appellants argue, however, that in claim 33, the term
"micro structure" is used another context: "to describe size of the regions."
Id. Appellants contend "[t]hese uses and contexts are certainly not
incompatible, as the regions are very small and the materials also have
features such as crystallographic phase and/or orientation that are very
small." Id.
The Examiner maintains Appellants' position that the term
"microstructure" is used in two different contexts in the Specification
renders claim 33 indefinite under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, because it is unclear whether the term
"microstructure" in claim 33 means the regions have a microscopic size or
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have a continuous structure on a microscopic level, e.g., crystallographic
phase and/or orientation. Final Act. 2. The Examiner also contends
Appellants' interpretation of the term "micro structure" in claim 3 3 as
meaning microscopic size renders the claim indefinite because the
Specification "provides no guidance on any requisite area or thickness that
would be considered microstructure under this interpretation." Id. at 3.
Appellants argue that construing the term "microstructure" in claim
33 as referring to crystallographic phase and/or orientation is unreasonable.
Appeal Br. 4. Appellants argue "the modifier 'co-continuous' describes
(due to proximity to the word 'microstructure') an attribute of the
'microstructure' of the 'layer."' Id. Appellants contend that because claim
3 3 does not recite structures in the intermediate layer other than the three
regions, the ordinary artisan would understand that the "co-continuous
microstructure" is made up of only the three regions. Id. Appellants'
argument, as I understand it, is that an interpretation of the "micro structure"
of the intermediate layer in claim 33 as referring to crystallographic phase or
orientation of that layer as a whole is unreasonable because each of the three
regions that make up the intermediate layer has its own crystallographic
phase or orientation. See id.
Appellants also disagree that construing "microstructure" in claim 33
as meaning a structure that is microscopic in size renders the claim indefinite
due to lack of guidance in the Specification on what area or thickness would
be considered microsized (see Final Act. 3). Appeal Br. 4--5. Appellants
cite an online version of the Merriam Webster Dictionary and Wikipedia to
support their contention that the ordinary artisan would understand the term
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"microstructure" in claim 33 as meaning that the intermediate layer has a
size that is visible by a microscope above 25X magnification. See id. at 5.
"Indefiniteness, as a subset of claim construction, is a question of
law .... " In re Packard, 751 F.3d 1307, 1309 (Fed. Cir. 2014). During
examination, claim terms are given their broadest reasonable construction
consistent with the Specification. In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007).
A cross-section of a portion of a composite article----e.g., a turbine
blade, turbine vane, compressor blade or vane, combustor liner, or a blade
outer air seal (Spec. ,r 1 O}-"having a co-continuous microstructure" (id.
,r 8) is described in connection with Figure 3, reproduced below.
--~-
_EIG,3
132a
132b
.........__-.28b
126
·28a
As shown in Figure 3, composite article 120 includes substrate 22, protective
layer 24, and intermediate layer 126 therebetween. Spec. ,r 25. Intermediate
layer 126 is "designed with a multi-functional microstructure." Id. ,r 11
( emphasis added); see id. ,r 25. Intermediate layer 126 has first continuous
region 28b, second continous region 30b, and third continuous region 132b.
Id. ,r,r 13, 26. The written description clarifies that the term "continuous"
refers to the fact that each region has at least one area of contact with the
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substrate and one area of contact with the protective layer (id. ,r 13), and
further discloses that the regions may be amorphous in shape and
interpenetrate each other (id. ,r 14). Though not apparent in the two-
dimensional view of the intermediate layer shown in Figure 3, nor explicitly
described in the Specification, one of ordinary skill in the art would
understand from the description in Specification paragraphs 13 and 14 that
all three regions may converge at a point within the three-dimensional layer,
rendering each of the regions contiguous with the other two regions. The
Specification also contemplates the presence of additional, continuous
regions in the intermediate layer. See Spec. ,r 24.
Claim 33 recites "the intermediate layer including a co-continuous
microstructure with first, second, and third materials of different
compositions that occupy, respectively, first, second, and third distinct
continuous regions in the co-continuous microstructure." Claim 33
(emphasis added). The Federal Circuit has "consistently interpreted
'including' and 'comprising' to have the same meaning, namely, that the
listed elements ... are essential but other elements may be added." Lochner
Techs, LLC v. Vizio, Inc., 567 F. App'x 931 (Fed. Cir. 2014) (quoting Lucent
Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1214 (Fed. Cir. 2008)). Thus,
the plain language of claim 33 does not use the term "microstructure" to
describe the structure of the intermediate layer as a whole. Appellants have
not identified, nor do I find in the Specification any use of the term
"micro structure" to describe a characteristic of the intermediate layer as a
whole. See Spec. ,r,r 11, 24, 25 (indicating the intermediate layer may
include regions other than the described co-continuous microstructure)
supra. Rather the term "microstructure" is used in the Specification to
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describe characteristics of the materials that occupy the first, second, and
third regions within the intermediate layer. The Specification explicitly
describes those characteristics as including crystallographic phase and/or
orientation. Therefore, I conclude that under the broadest reasonable
interpretation of claim 33, the term "microstructure" describes the
characteristics of the first, second, and third materials that occupy the first,
second, and third regions within the intermediate layer, and those
characteristics include crystallographic phase and/or orientation.
The Examiner's determination that the meaning of the claim term
"microstructure" is unclear stems from Appellants' argument that the term
means microscopic size. See Final Act. 2-6; Ans. 24--25. I do not agree
with Appellants that a plausible construction of the third paragraph in the
body of claim 33 is that the intermediate layer as a whole, or the first,
second, and third regions, are microscopic in size. Moreover, "[t]he
subjective intent of the inventor when he used a particular term is of little or
no probative weight in determining the scope of a claim." Markman v.
Westview Instruments, Inc., 52 F .3d 967, 985 (Fed. Cir. 1995) ( en bane),
aff'd, 517 U.S. 370 (1996).
Because I determine the argued claim language is amenable to only
one plausible construction, I would reverse the rejection under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, and I would reach
the merits of the rejection under 35 U.S.C. § 103(a). Cf Ex parte Miyazaki,
89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) ("[I]f a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
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bounds of the claimed invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.").
In rejecting the claims under 35 U.S.C. § 103(a), the Examiner
interprets the term "microstructure" in claim 33 as meaning "the
microstructure of the material, for example the crystallographic phase and/or
orientation, is continuous in the respective regions." Final Act. 6. This
construction is consistent with what I determine to be the broadest
reasonable construction, as explained above. The Examiner finds Crombie
describes applying a coating to a gas turbine blade by depositing materials in
each of three distinct zones/regions using a plasma spray (Final Act. 6-7): a
high temperature corrosion resistant material in hot-end zone 14, a low
temperature corrosion resistant material in cool-end zone 16, and a transition
zone 18 there between comprising a mixture of the materials used in the hot-
end and cool-end coatings ( Crombie 3: 10-14 ). 5 The Examiner relies on
Gilman as evidence that a plasma spray forms amorphous shapes. Final Act.
7. The Examiner finds, therefore, that Crombie' s three regions are
individually amorphous in shape and interpenetrate each other. Id.
The Examiner acknowledges Crombie does not disclose a protective
layer, but finds one of ordinary skill in the art would have added such layer
to Crombie' s coated substrate based on Schlichting' s teaching that such
coating improves the lifespan of the turbine blade. Id. at 7-8. The Examiner
5It is clear from the claims and written description that each of the first,
second, and third materials may comprise more than one constituent. See
Spec. ,r,r 16-17, claims 27, 28, and 33 (because claim 33 requires that the
first, second, and third materials have different compositions, and dependent
claims 27 and 28 specify that hafnia or gadolinia may be present in all three
materials, claim 3 3 necessarily encompasses first, second, and third
materials that each comprise more than one constituent).
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finds each of the regions in Crombie' s coating has a crystallographic phase
and/or orientation that extends from the substrate to the protective layer in
Crombie/Schlichting composite article. Id. at 7. This finding is reasonable
because Crombie describes the use of the same materials used by the present
inventors. Compare Crombie 4:41--47 (disclosing that exemplary materials
for the coatings have the formula MCrAlY, where Mis Ni and/or CO in the
material used for the hot-end coating and Mis Fe or FeNi, or combinations
thereof for the cool-end coating, with Spec. ,r,r 17-18 (disclosing that first
and second materials may include different metallic materials having the
formula MCrAlY where M is at least one of nickel, cobalt, iron or a
combination thereof); see Final Act. 7 ("[S]ince [the process of providing the
respective zones and composition] . . . determine the microstructure of the
composition, it would be expected that the microstructure of each of these
continuous zones would be ... continuous."). Like the first, second, and
third materials used in the intermediate layer described in the present
Specification, the materials used in Crombie' s coating serve different
functions within the composite article. Compare Spec. ,r,r 15, 27 (describing
the first, second, and third materials as serving the functions of adhesion,
oxygen gettering, thermal expansion matching, thermo-mechanical
compliance or other desirable purpose), with Crombie 4:25-33 (describing
the high temperature material as having good high temperature creep
resistance, the low temperature material as having good low temperature
ductility, and the transition zone as preventing problems that typically would
occur at the interface between two different materials). The Examiner also
provides reasons, with supporting evidence, why the ordinary artisan would
have utilized equivalent compositions for the first material and substrate, the
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second material and protective layer, and a different composition for the
third material. See Final Act. 9-10.
Appellants argue Crombie' s coating is not a microstructure because
the three zones/regions are in a large-scale macrostructure. Appeal Br. 12,
15. I do not find this argument persuasive because, as discussed above, the
broadest reasonable interpretation of "microstructure," as used in claim 33,
does not require a structure having a microscopic size. Moreover, this
argument does not identify error in the Examiner's finding that the regions
in Crombie's coating have a crystallographic phase and/or orientation (i.e.,
micro structure) that extends from the substrate to the protective layer. See
Final Act. 19.
Appellants argue Crombie's first, second and third zones 14, 16, 18
are not contiguous as required in the fourth paragraph in the body of claim
33. Appeal Br. 12-13. I do not find this argument persuasive because the
amorphous shape of each of the zones reasonably would be expected to
result in contiguous zones as explained above in connection with Figure 3 of
the present Application.
The additional arguments made by Appellants in support of
nonobviousness are unpersuasive for the reasons fully explained by the
Examiner in the Response to Argument section of the Answer. See Ans. 30-
33.
For the above reasons, I concur in the majority's decision to reverse
the rejection of claims 7, 8, 22-24, 27, 28, 33, and 36 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, but I respectfully
dissent from the majority's decision to reverse the rejections of claims 7, 8,
22-24, 27, 28, 33, and 36 under 35 U.S.C. § 103(a).
9
Appeal2017-009476
Application 13/149,027
On the present record, I would affirm the Examiner's decision to
reject claims 7, 8, 22-24, 27, 28, 33, and 36.
10