Ex Parte Sheedy et al

Patent Trial and Appeal Board

Dec 16, 2015

13149515 (P.T.A.B. Dec. 16, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/149,515 05/31/2011 Paul Sheedy
54549 7590 12/18/2015
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.
PA12353;
67097-1449PUS1
CONFIRMATION NO.
1619
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
12/18/2015 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 PAUL SHEEDY, THOMAS H. LAWTON,
WILLIAM WERKHEISER, and TANIA BHATIA KASHY AP
Appeal2014-001809
Application 13/149,515
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's March
5, 2013 decision finally rejecting claims 1-10 and 14--19, and 23-26. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as United Technologies
Corporation (Appeal Br. 2).
Appeal2014-001809
Application 13/149,515
CLAHvIED SUBJECT ivIATTER
Appellants' invention is directed to a method of processing a
composite article by applying a barrier layer onto a bond coat on a substrate
at a temperature of less than 700°C (Abstract). The barrier layer includes at
least 50% yttrium disilicate and at least some (but no more than 50%)
yttrium monosilicate (Spec. i-f 24). Claims 1 and 17 are representative and
are reproduced below from the Claims Appendix of the Appeal Brief:
1. A method of processing a composite article, the method
compnsmg:
controlling a preheat temperature of a workpiece to be
less than 700°C/1292°F, the workpiece including a substrate
and a bond coat that is disposed on the substrate;
with the workpiece at the preheat temperature,
commencing deposition of a barrier layer of a barrier coating
system onto the bond coat; and
depositing the barrier layer, the barrier layer comprising a
rare earth silicate material that includes a rare earth element
selected from a group consisting of lanthanide series elements,
yttrium, scandium and combinations thereof, wherein the
depositing of the barrier layer includes deposition using thermal
spraying of a powder material, the powder material including at
least 50 wt. % of yttrium disilicate and a nonzero amount no
more than 50 wt. % of yttrium monosilicate.
17. A method of processing a composite article, the method
compnsmg:
a workpiece that includes a substrate and a bond coat that
is disposed on the substrate; and
a deposition process that includes any preparation of the
workpiece for deposition of a barrier layer of a barrier coating
system onto the bond coat, commencement of deposition of the
barrier layer and deposition of the barrier layer, and the
preparation of the workpiece for deposition is free of any
preheating of the workpiece prior to the commencement of
deposition, wherein the deposition process includes depositing
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Application 13/149,515
the barrier layer using thermal spraying of a powder material,
the powder material including at least 50 wt. % of yttrium
disilicate and a nonzero amount no more than 50 wt. % of
yttrium monosilicate.
REJECTIONS 2
I. Claims 17-19 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite. 3
II. Claims 1-10, 14, 17-19, 23, 25, and 26 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Naik4 in view of Saak, 5 either
alone or further in view of Grubba. 6
III. 7 Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Naik in view of Saak and Grubba.
IV. Claims 1-10, 14--19, 23, 25, and 26 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Lee8 in view of Grubba and
Saak.
2 The Examiner withdrew two rejections set forth in the Final Action:
(1) claims 1, 10, 14--29, 23, 25, and 26 under 35 U.S.C. § 103(a) over Lee in
view of Grubba, and (2) claim 24 under 35 U.S.C. § 103(a) over Lee in view
of Grubba and Andrus.
3 Claims 14 and 15 are also rejected under §112, second paragraph because
each is dependent on a cancelled claim. Appellants do not appeal the
rejection of claims 14 and 15, but state simply that "the dependencies of
claims 14 and 15 can be easily corrected depending on the outcome of this
Appeal" (Appeal Br. 3).
4 Naik et al., U.S. Patent Pub. 2011/0033630 Al, published February 10, 2011.
5 Saak et al., U.S. Patent Pub. 2006/0014029 Al, published January 19, 2006.
6 Grubba et al., U.S. Patent No. 3,625,717, issued December 7, 1971.
7 Rejections IV. and V. are new grounds of rejection raised for the first time
in the Answer.
8 Lee, U.S. Patent Pub. 2010/0080984, published April 1, 2010.
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Appeal2014-001809
Application 13/149,515
V. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee in view of Grubb and Saak, and further in view
of Andrus. 9
Appellants do not offer separate substantive arguments for Rejections
II-V, or separate arguments for any of the dependent claims or independent
claim 17. Accordingly, we will address all of the obviousness rejections
together.
DISCUSSION
REJECTION I
The Examiner concludes that claim 17 is indefinite because the
meaning of the phrase "free of any preheating" is unclear (Final Act. 3--4 ).
The Examiner finds that the phrase could have one of three meanings:
(1) not heating above ambient room temperature in the location where
coating occurs, (2) is not any temperature above absolute zero, or (3) "is not
at a specific temperature" (Final Act. 4 ). Appellants contend that in light of
the Specification's disclosure, "preheating" involves heating above room
temperature (App. Br. 3--4, citing Spec. i-fi-120-21 ).
In the examination context, the relevant inquiry under 35 U.S.C. § 112,
i12, "is to determine whether the claims do, in fact, 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) (emphasis added). "[T]he
definiteness of the language employed must be analyzed-not in a vacuum,
9 Andrus et al., U.S. Patent No. 5,250,360, issued October 5, 1993.
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Application 13/149,515
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." Id.
In this instance, we agree with the Examiner that the language of the
claim(" ... free of any preheating of the workpiece prior to the
commencement of deposition") is not sufficiently definite to meet the
requirements of§ 112, i-f 2. In particular, the Specification indicates that
preheating "may be conducted within a coating chamber ... or within a
preheat chamber that is separate from the coating chamber . . . . In some
examples the preheating is conducted within a kiln/furnace .... "(Spec. i-f 20).
The Specification also states that in a preheating step the "[a ]tmosphere is
generally not controlled and is typically ambient air" and that process may be
"free of any preheating step or steps, such that the workpiece is at a
temperature of approximately 20-40°C upon commencement of deposition of
the barrier layer 28 (Spec. i-fi-120, 21 ). Thus, although the phrase "free of any
preheating" might reasonably be read to mean at a temperature of
approximately 20--40°C, the Specification does not make clear that
"preheating" means above "room temperature." For example, a workpiece
which was stored at a low temperature (for example 5°C), would have to be
heated to reach a temperature of 20--40°C. In such a case, it is unclear
whether the process would meet the claim limitation "free of any preheating
... prior to commencement of deposition."
Accordingly, we affirm the rejection under§ 112.
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Application 13/149,515
REJECTIONS II and III
The Examiner finds that Naik teaches a method of processing a
composite article (i.e., a workpiece), including a preheat temperature of less
than 50°C (Final Act. 6, citing Naik, i-fi-12, 4, 45, 49). The Examiner further
finds that the workpiece includes a substrate and a bond coat disposed
thereon, where layer 14 alone or combined layers 14 and 18 from Naik's
FIG. 2 correspond to the claimed bond coat (Final Act. 6, citing Naik, i127).
The Examiner also finds that Naik discloses deposition of a barrier layer
onto the bond coat, the barrier layer comprising a rare earth silicate such as
ytterbium disilicate (Final Act. 7, citing Naik, i-fi-135, 39, 45, 46, 49). The
Examiner finds that Naik discloses that the barrier layer may be applied by
thermal spraying material, and concludes that, although Naik does not
specifically provide that the rare earth silicate is deposited as a powder
material, it would have been obvious to apply the rare earth silicate in
powder form by thermal spraying (Final Act. 7-8, citing Naik, i-fi-1 43--44).
The Examiner also finds that Naik discloses the use of ytterbium
mono- or disilicate for the barrier coating, and that Saak discloses that when
providing rare earth silicates for barrier coatings, it is well known to provide
yttrium silicates as well as ytterbium silicates (Final Act. 9, citing Saak,
i-f 13). Thus, the Examiner concludes that it would have been obvious to use
a mixture of yttrium mono silicate and yttrium di silicate as disclosed by Saak
in Naik's process because Naik teaches the use of rare earth silicates in
barrier coatings and Saak teaches that yttrium silicates (including
combinations of yttrium mono- and disilicate) are well known for use in
barrier coatings (Final Act. 9). The Examiner also concludes that it would
have been obvious to arrive at the claimed proportions of yttrium disilicate
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Application 13/149,515
(at least 50 wt%) and yttrium mono silicate (a non-zero amount less than 50
wt%) through routine optimization (Final Act. 9--10).
Appellants contend that the Examiner has not made an adequate
showing that the cited references disclose or render obvious the claimed
proportions of yttrium disilicate and yttrium monosilicate (Appeal Br. 5). In
particular, Appellants assert that because none of the cited art discloses any
specific amounts of yttrium monosilicate and yttrium disilicate, it would not
have been obvious to optimize their relative amounts to arrive at the claimed
proportions (id.).
However, Saak specifically states that the composition of its barrier
layer "is controlled to ensure that thermal mismatch stresses between coating
system 60 and substrate 20 are not unacceptably high" (Saak, i-f 16).
Similarly, the Specification of the application on appeal indicates that one of
the problems solved by the claimed proportions of yttrium mono- and
disilicates is the prevention of phase separation of the yttrium silicates to
form yttria (Y20 3), which is "undesirable" for "thermal expansion matching
between the barrier layer and ... the substrate" (Spec. i-f 24). Appellants
have not persuasively shown reversible error in the Examiner's finding
(Ans. 18) that Saak's disclosure that varying the composition of its barrier
layer to control thermal mismatch would lead a person of skill in the art to
optimize the proportions of yttrium mono- and disilicate for purposes of
optimizing the thermal expansion and arrive at the claimed proportions. We
also agree with the Examiner's finding (Ans. 20-21) that Appellants have
not demonstrated the criticality of the claimed amounts (at least 50% by
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Application 13/149,515
weight of the disilicate and no more than 50% by weight of the
monosilicate ). 10
Accordingly, we conclude that Appellants have not demonstrated
reversible error in the obviousness rejections of Naik in view of Saak. As
Appellants have not made independent substantive arguments with respect to
the obviousness rejections over Lee in view of Grubba and Saak (see Appeal
Br. 6-7, and Reply Br. 1-2), we also affirm those rejections.
CONCLUSION
We AFFIRM the rejection of claims 17-19 under 35 U.S.C. § 112,
second paragraph as being indefinite.
We AFFIRM the rejection of claims 1-10, 14, 17-19, 23, 25, and 26
under 35 U.S.C. § 103(a) as being unpatentable over Naik in view of Saak,
alone or optionally in view of Grubba.
We AFFIRM the rejection of claims 15 and 16 under 35 U.S.C. § 103(a)
as being unpatentable over Naik in view of Saak and Grubba.
10 Appellants argue for the first time in the Reply Brief that the claim recites
the proportions of the silicates in the powder used in the deposition of the
coating, while the references refer to the composition of the coating itself
(Reply Br. 2). We will not consider this argument because it is not
accompanied by a showing of good cause explaining why the argument
could not have been presented in the Appeal Brief. See Ex parte Borden, 93
USPQ2d 1473, 1476-77 (BPAI 2010) (informative). Although the
Examiner introduced two new grounds of rejection in the Answer, the
above-described argument would have been equally pertinent to the
obviousness rejections set forth in the Final Action and, therefore, should
have been raised in the Appeal Brief.
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Application 13/149,515
We AFFIRl\rI the rejection of claims 1-10, 14--19, 23, 25, and 26
under 35 U.S.C. § 103(a) as being unpatentable over Lee in view of Grubba
and Saak.
We AFFIRM the rejection of claim 24 under 35 U.S.C. § 103(a) as
being unpatentable over Lee in view of Grubb and Saak, and further in view
of Andrus.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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