Ex Parte Stamm

Patent Trial and Appeal Board

Feb 27, 2019

14236785 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/236,785 04/17/2014
119119 7590
Ostrolenk Faber LLP
845 THIRD A VENUE
New York, NY 10022
03/01/2019
FIRST NAMED INVENTOR
Werner Stamm
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.
P/5070-109 (V29443) 9728
EXAMINER
LA VILLA, MICHAEL EUGENE
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER STAMM
Appeal2017-006996
Application 14/236,785
Technology Center 1700
Before BEYERL YA. FRANKLIN, JEFFREY R. SNAY, and
JANEE. INGLESE, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 2, 5, 9, 11-13, 15, 16, and 19-23. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to the Specification ("Spec.") filed February 3, 2014; Final Office
Action ("Final Act.") dated May 17, 2016; Appellant's Appeal Brief ("App.
Br.") filed October 17, 2016; Examiner's Answer ("Ans.") dated February 3,
2017; and Appellant's Reply Brief ("Reply Br.") filed March 30, 2017.
2 Appellant identifies Siemens Aktiengesellschaft as the real party in
interest. App. Br. 1.
Appeal2017-006996
Application 14/236,785
BACKGROUND
The subject matter on appeal relates to coatings for use in protecting
against corrosion and/or oxidation. Spec. 1. According to the Specification,
increasing the proportions of aluminum and chromium in a protective
coating can improve the coating's resistance to corrosion and oxidation, but
also can form brittle phases that deteriorate the coating's ductility. Spec. 2.
Consequently, coating cracks may form when under mechanical loading that
occurs in a gas turbine. Id. The invention concerns a coating composition
which contains aluminum and chromium at levels that are high enough to
provide adequate oxidation and corrosion resistance, but low enough to
prevent formation of brittle phases. Spec. 4; App. Br. 4. Claim 12-the sole
independent claim on appeal-reads as follows:
12. A component, of a gas turbine, including
a substrate of the component which is nickel-based or
cobalt-based;
of
a protective layer consisting of an alloy, which consists
22% to 24% wt.% cobalt (Co),
14% to 16% wt.% chromium (Cr),
10.5% to 11.5% wt.% aluminum (Al),
0.2% to 0.4% wt.% yttrium (Y),
0.3% to 0.9% wt.% tantalum (Ta),
and balance of the alloy is nickel (Ni),
the protective layer residing over the substrate in order to
protect against corrosion and oxidation at high temperatures:
and
a ceramic thermal barrier layer applied onto the
protective layer, wherein the alloy of the protective layer does
not form brittle phases when the protective layer is exposed to
temperature of exhaust gas of a turbine, while protecting the
substrate against corrosion and oxidation.
App. Br. 23-24 (Claims Appendix).
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Appeal2017-006996
Application 14/236,785
REJECTIONS 3
I. Claims 20-22 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. Claims 2, 5, 9, 11-13, 15, 16, and 19-23 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Sommer4 and Schmitz. 5
III. Claims 2, 5, 9, 12, 15, 16, and 19-23 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Stamm6 and Sommer.
IV. Claims 11 and 13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Stamm, Sommer, and Schmitz.
V. Claims 2, 5, 9, 11, 12, 15, 16, and 19-23 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Khan. 7
VI. Claims 11 and 13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Khan and Schmitz.
VII. Claims 2, 5, 9, 11, 12, 15, 16, and 19-23 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Goebel8 and Khan.
VIII. Claims 13 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Goebel, Khan, and Schmitz.
3 The Examiner's reasoning in support of each of the prior art rejections is
found in an earlier Office Action, dated September 9, 2015 (hereafter "2015
Final Act.").
4 US 6,280,857 B 1, issued August 28, 2001 ("Sommer").
5 US 5,993,980, issued November 30, 1999 ("Schmitz").
6 US 2004/0180233 Al, published September 16, 2004 ("Stamm").
7 US 2004/0079648 Al, published April 29, 2004 ("Khan").
8 US 4,326,011, issued April 20, 1982 ("Goebel").
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Appeal2017-006996
Application 14/236,785
OPINION
Rejection I
With regard to Rejection I, the Examiner determines that it is unclear
how each of claims 20-22 is to be interpreted in a manner that would further
limit claim 12 from which they depend. Final Act. 3. The Examiner rejects
claims 20-22 as indefinite on that basis. Final Act. 3. Appellant argues that
each of the rejected claims would be understood as specifically identifying
certain brittle phases that are generically identified in parent claim 12. App.
Br. 3. Appellant also argues that "failure to further limit a claim is not
grounds for an indefinite rejection." Id.
A claim is properly rejected as indefinite if, after applying the
broadest reasonable interpretation, the metes and bounds of the claim are not
clear because the claim "contains words or phrases whose meaning is
unclear." Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at
*5 (PTAB Aug. 25, 2017) (precedential) (citing In re Packard, 751 F.3d
1307, 1310 (Fed. Cir. 2014) (per curiam)). Here, the Examiner determines
that "[t]he plain meaning of claim 12 would preclude all brittle phases."
Ans. 13. Based on that interpretation, the Examiner questions whether the
exclusion of specific brittle phases as recited in claims 20-22 further limits
the scope of claim 12. Final Act. 3; Ans. 13. However, the Examiner does
not identify any word or phrase in the rejected claims which the Examiner
determines to be unclear in meaning. Thus, irrespective of whether claims
20-22 set forth limitations not already required by claim 12, we are
persuaded that the Examiner has not articulated a sufficient basis for a
rejection based on indefiniteness.
Rejection I is not sustained.
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Appeal2017-006996
Application 14/236,785
Rejection II
Appellant argues the rejected claims as a group, directing the
arguments to features recited in claim 12. We select claim 12 as
representative, with all other rejected claims standing or falling with the
representative claim.
Relevant to Appellant's arguments on appeal, the Examiner finds that
Sommer discloses a nickel-based alloy that meets all of the compositional
requirements of claim 12, except that Sommer's disclosed alloy additionally
includes Si and Hf. 2015 Final Act. 5 ( citing Sommer Table 2(b ), example
EC6). The Examiner finds that Schmitz provides a reason to omit Si and Hf
from Sommer' s alloy because Schmitz identifies those components as non-
essential and optional in a protective coating such as that of Sommer. Id.
The Examiner characterizes the recited non-formation of brittle phase as a
property of the alloy based on its composition. Final Act. 6.
Appellant argues that "[ n Jone of the cited references discloses ...
proportions of the elements are to be selected in order to avoid brittle phases
when the alloy is exposed to the temperature of the exhaust gases of a
turbine." App. Br. 6. Particularly, Appellant states that "chromium content
of more than 16 wt% would result in formation of ... brittle phases." Id.
Appellant argues that Schmitz, Stamm, Khan, and Goebel, collectively,
propose chromium concentrations that range from 11--45%. Id. However,
Stamm, Khan, and Goebel are neither cited nor relied upon by the Examiner
in connection with Rejection II. As for Schmitz, the Examiner relies on that
reference solely for its teaching that Si and Hf are non-essential components
in a protective coating. Appellant does not explain why chromium
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Application 14/236,785
concentrations disclosed in any of these references negates Sommer's
disclosure in Example EC6 of an alloy having 14% chromium-a value
which falls within Appellant's recited chromium range of 14--16%.
Appellant points to the Declaration of Dr. W emer Stamm ("Deel."),
of record, explaining that the recited composition is intended to be ductile by
virtue of the recited chromium and cobalt content, which in tum decreases
generation of cracks, thereby reducing the need for aluminum for oxidation
of crack sites. App. Br. 3---6; Reply Br. 3-5. However, Appellant does not
dispute the Examiner's finding that Sommer's example EC6 contains
chromium, cobalt, and aluminum at concentrations within the claimed
ranges for those components. Nor does Appellant present evidence that
Sommer' s example EC6 would not have exhibited ductility and avoidance of
brittle phase formation.
In the Reply Brief, Appellant argues that the Examiner fails to
articulate a reason why one of ordinary skill would have modified Sommer' s
composition. Reply Br. 2. We disagree. The Examiner finds that Schmitz
identifies Si and Hf as unnecessary and therefore optional in a protective
coating composition. 2015 Final Act. 5. Appellant does not dispute that
finding. Nor does Appellant present persuasive evidence or technical
reasoning to show that removal of these optional ingredients would not have
been obvious to one skilled in the art. Thus, Appellant does not persuade us
of error in the Examiner's obviousness determination.
Rejection II is sustained.
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Appeal2017-006996
Application 14/236,785
Rejections III-VIII
With regard to each of Rejections III-VIII, Appellant reiterates the
same arguments presented in connection with Rejection II-namely, that the
prior art of record, collectively, proposes chromium concentrations that
range from 11--45% and, therefore, contemplate a chromium concentration
greater than 16%. App. Br. 6, 11, 15, 20. However, the fact that the prior
art generally recognizes a possibility of chromium concentrations exceeding
the claimed range does not negate the specific teachings in the relied-upon
prior art of compositions that contain chromium at a level that falls within or
overlaps the claimed range. See Stamm claim 16 (15-21 % chromium);
Khan claim 1 (16-20% chromium); Goebel 5:48-51 (15% chromium). In
cases where the relevant comparison between the claimed invention and the
prior art involves overlapping ranges, "even a slight overlap in range
establishes a primafacie case of obviousness." In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003); see also In re Brandt, 886 F.3d 1171, 1177-78
(Fed. Cir. 2018) (abutting ranges); In re Geisler, 116 F.3d 1465, 1469 (Fed.
Cir. 1997) ( overlap only at end points).
Appellant's argument does not reveal error in the Examiner's
obviousness determination. Accordingly, each of Rejections III-VIII also is
sustained.
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Appeal2017-006996
Application 14/236,785
DECISION
The Examiner's decision rejecting claims 2, 5, 9, 11-13, 15, 16, and
19-23 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).
AFFIRMED
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