Ex Parte Tang et al

Patent Trial and Appeal Board

Mar 23, 2016

13088599 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/088,599 04/18/2011
52237 7590
Bachman & LaPointe, P,C,
900 Chapel St., Suite 1201
New Haven, CT 06510
03/23/2016
FIRST NAMED INVENTOR
Xia Tang
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.
PA-0000348-US-AA(05-574-2 8797
EXAMINER
PENNY, TABATHAL
ART UNIT PAPER NUMBER
1712
MAILDATE DELIVERY MODE
03/23/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Exparte XIA TANG, TANIA BHATIAKASHYAP, DAVID C. JARMON,
WAYDE R. SCHMIDT, HARRY E. EATON, and JOHN G. SMEGGIL
Appeal2014--005448
Application 13/088,599
Technology Center 1700
Before TERRY J. OWENS, BEYERL YA. FRANKLIN, and
AVEL YN M. ROSS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1, 2, 3, 5, 6, 8, 9, 12, 13, 14, 16, 17, 18, 19, and 31.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
Appeal2014-005448
Application 13/088,599
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A process for applying an oxidation resistant coating to an article,
compnsmg:
forming a slurry consisting of at least about 10% by volume to up to
about 99% by volume at least one silica based material having a viscosity of
about lxl 07 poise to about ixlOv poise at a temperature of about l ,292°F
(700°C) to about 3,272°F (1,800°C), at least about 1 % by volume to
up to about 90% by volume of at least one oxygen scavenger selected from
the group consisting of at least one silicide of molybdenum, chromium,
titanium, hafnium, zirconium, yttrium, and mixtures thereof or a boride
of at least one of the following: molybdenum, tantalum, chromium, titanium,
hafnium, zirconium, yttrium and mixtures thereof, and a liquid medium;
coating an article with said slurry to form a slurry coated article; and
heat treating under an inert atmosphere said slurry coated article to
form an article having at least one oxidation resistant coating layer
containing said at least one oxygen scavenger.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Wojcik
Schrewelius
Wlodek
Moh
Terentieva
Hasz
Moore
Di Chiara
Stewart
us 3,623,897
us 2,992,959
us 4,666,733
us 5,204,289
us 5,677,060
us 5,871,820
US 2003/0106311 Al
US 6,919,103 B2
US 7,767,305 Bl
2
Nov. 30, 1971
July 18, 1991
May 19, 1987
Apr. 20, 1993
Oct. 14, 1997
Feb. 16, 1999
Jun. 12,2003
July 19, 2005
Aug.3,2010
Appeal2014-005448
Application 13/088,599
Weissler, 7.2.1 Fabrication of Glass Systems, Vacuum Physics and
Technology, (1979), pp. 314-315.
THE REJECTIONS
1. Claims 1-3, 6, 8, 12, 14, and 16-19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Stewart in view of Schrewelius (as
evidenced by Weissler).
2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stewart in view of Schrewelius, as applied to claims 1-3, 6, 8, 12, 14,
and 16-19 above, and further in view of Wittenaur.
3. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stewart in view of Schrewelius, as applied to claims 1-3, 6, 8, 12, 14,
and 16-19 above, and further in view of Terentieva and Wlodek.
4. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stewart in view of Schrewelius, as applied to claims 1-3, 6, 8, 12, 14,
and 16-19 above, and further in view of Wojcik.
5. Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stewart in view of Schrewelius, Terentieva, and Wlodek, as applied to
claim 9 above, and further in view of Moh, Moore, DiChiara, and Hasz.
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Appeal2014-005448
Application 13/088,599
ANALYSIS
The Examiner's stated positon for Rejection 1 is set forth on pages 2-
6 of the Final Office Action, which we do not repeat herein.
Appellant's primary argument is that the modification of Stewart
according to Schrewelius as proposed by the Examiner frustrates the purpose
of Stewart such that the proposed combination is unobvious. Appeal Br. 8-
10. Appellants point out that Stewart requires the use of tantalum-based
ceramics to achieve the objectives therein. Appeal Br. 9. Appellants submit
that therefore to modify Stewart by eliminating the tantalum disilicide and
including the molybdenum disilicide of Schrewelius obviates the objectives
of Stewart. Id.
The Examiner responds by stating that Schrewelius teaches that heat-
resistant oxidation-proof materials can be produced by molybdenum
disilicide-only ceramics, and that such a teaching provides motivation for
1• r- • .1 • , • 1 r- n. , , • 1 1 1 .1 1 1 1 momrymg me ceramic macena1 or ~1ewan w mcmae omy me m01yoaenum
disilicide component. The Examiner states that this combination does not
change the principle operation or negate the objectives of Stewart because
the ceramic of the combined references would still act as a heat resistant
system as is desired by Stewart. Ans. 2-3. However, in making this
statement, the Examiner overlooks certain other objectives of Stewart.
Stewart not only desires an insulating structure that can withstand high
temperatures, Stewart desires a composite that is impervious to hot gas
penetration. Stewart, col. 2, 11. 42--45. Stewart also desires a composite that
is capable of surviving high heating rates and large thermal gradients
characteristic of aeroconvective heating environment. Stewart, col. 3, 11. 57-
60. The Examiner does not direct us to evidence in the record that such
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Appeal2014-005448
Application 13/088,599
objectives can be achieved by eliminating the tantalum-based ceramic used
in Stewart by incorporating the type of material taught in Schrewelius. "If
the proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification." In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984). We add that the invention of Schrewelius is
directed to electrical resistance elements of the type having an incandescent
heating section in strand, strip or similar form, and terminal end sections
associated with the heating sections. Schrewelius, col. 2, 11. 21-27. Stewart
is directed to applications in the aeroconvective heating environment
experienced by vehicles entering into Earth's atmosphere from space. Such
differing applications highlight the differing objectives between Stewart and
Schrewelius raised by Appellants. The Examiner points to one common
objective (withstand high heat), but other objectives are also required by
Stewart necessitating the use of tantalum-based ceramics to achieve such
objectives, and the Examiner has not directed us to evidence in the record
that molybdenum disilicide would equally meet these other objectives.
We thus are convinced by Appellants' arguments in the record and
reverse Rejection 1. We also reverse Rejections 2-5 because the Examiner
does not rely upon the other applied references in these other rejections to
cure the stated deficiencies of the combination of Stewart in view of
Schrewelius.
DECISION
Each rejection is reversed.
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Appeal2014-005448
Application 13/088,599
ORDER
REVERSED
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