Ex Parte Tryon et al

Patent Trial and Appeal Board

Sep 6, 2013

11741831 (P.T.A.B. Sep. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/741,831 04/30/2007 Brian S. Tryon 67097-800; 3914 3786
54549 7590 09/09/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
KRUPICKA, ADAM C
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
09/09/2013 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
____________

Ex parte BRIAN S. TRYON
and MICHAEL J. MALONEY
____________

Appeal 2012-004566
Application 11/741,831
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004566
Application 11/741,831
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On December 22, 2010, the Examiner finally rejected claims 1-16, 23,
and 24 of Application 11/741,831 under 35 U.S.C. § 103(a) as obvious
(Office Action (“FR”) Dec. 22, 2010). Appellants1 seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35
U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’831 application describes an improved multi-layered thermal
barrier coating that can be used to protect components used in high
temperature environments from oxidation and corrosion. Spec. ¶ [0002].
Conventional coatings often include a bond coat on the component surface
and a ceramic topcoat on the bond layer. Id. The bond coat reacts with
oxygen that diffuses through the ceramic layer and protects the component
from oxidation. Id. The bond coat, however, may also react with elements
present in the component, forming precipitated phases of material that can
compromise the component’s structural integrity. Id. at ¶ [0003]. The
thermal barrier coating described in the ’831 application reduces the
formation of these precipitated phases. Id. at ¶ [0005].
Claim is representative of the ’831 application’s claims and is
reproduced below:
1. A thermal barrier coating system comprising:
a substrate comprising a nickel superalloy having at least one of
rhenium and ruthenium;

1 United Technologies Corp. is identified as the real party in interest (App.
Br. 1).
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a first transition metal layer disposed on the substrate;
a bond coat disposed on the first transition metal layer; and
a second transition metal layer disposed on the bond coat.
(App. Br. Claims App’x 1).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-4, 6, and 9-12 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Clarke2 in view of Adelman3 (Ans. 8).
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Clarke in view of Adelman in view of Beltran4 in view of
Rickerby ’0295 (Ans 4-5).6
3. Claims 7, 8, and 13-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Clarke in view of Adelman and Marijnissen7 (Ans. 8).
4. Claims 1, 4, 10, 23, and 24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Clarke in view of Austin8 (Ans. 8).

2 U.S. Patent No. 4,477,538, issued Oct. 16, 1984.
3 U.S. Patent No. 4,859,416, issued Aug. 22, 1989.
4 U.S. Patent No. 3,617,264, issued Nov. 2, 1971.
5 U.S. Patent No. 6,218,029 B1, issued April 17, 2001.
6 The Examiner included this New Ground of Rejection in the Answer.
7 U.S. Patent No. 5,876,860, issued March 2, 1999.
8 U.S. Patent No. 5,151,249, issued Sept. 29, 1992.
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5. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Clarke in view of Austin in view of Beltran in view of Rickerby ’029
(Ans 6-7).9
6. Claims 1-4, 6, 7, and 9-16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Rickerby ’33710 in view of Adelman (Ans. 9).
7. Claims 1, 10, 23, and 24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Rickerby ’337 in view of Austin (Ans. 9).
DISCUSSION
Rejection 1. The Examiner rejected claims 1-4, 6, and 9-12 of the
’831 application as unpatentably obvious over the combination of Clarke
and Adelman (Ans. 8; FR 2). In arguing for reversal of this rejection,
Appellants do not rely upon the particular limitations of any of the claims
(see App. Br. 3-4). Therefore all of the claims subject to this rejection will
stand or fall with representative claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that the combination of Clarke and Adelman
describes every element of claim 1 (FR 2-3). Appellants do not challenge
these findings. Rather, they argue that the Examiner “[did] not give due
consideration to the claimed combination as yielding more than predictable
results” (App. Br. 3).
Appellants correctly point out that unexpected results, along with
other evidence of the “secondary considerations,” must be considered along
with all other evidence for and against patentability in reaching a final

9 The Examiner included this New Ground of Rejection in the Answer.
10 U.S. Patent No. 5,942,337, issued Aug. 24, 1999.
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conclusion regarding obviousness. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“After evidence or argument is submitted by the applicant
in response [to a prima facie case of obviousness], patentability is
determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”). To show
unexpected results, however, Appellants must demonstrate (1) that there
actually is a difference between the results obtained through the claimed
invention and those of the prior art and (2) that the difference actually
observed would not have been expected by one skilled in the art at the time
of invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). A showing
of unexpected results must be based upon evidence rather than argument or
speculation. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997); In re de
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.” (citing In re
Lindner, 457 F.2d 506, 508 (CCPA 1972))).
In this case, Appellants identify portions of their specification as their
evidence of unexpected results (App. Br. 3-4 (citing Spec. ¶¶ [0014], [0016]-
[0018]); Reply Br. 4-6). Our review of the entire Specification, including the
portions specifically cited by Appellants, reveals that the Specification is
devoid of any evidence that a person of ordinary skill in the art would have
thought the differences between the claimed thermal barrier coating system
and the prior art were unexpected or surprising. Appellants, therefore, only
have attorney argument in support of their contention that their claimed
thermal barrier coating system achieves unexpected results.
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In view of the foregoing, we find that Appellants have not
demonstrated the existence of unexpected results that must be weighed with
all of other evidence for and against patentability.
In view of the foregoing, we affirm the Examiner’s rejection of claims
1-3, 6, and 9-12 as obvious over the combination of Clarke and Adelman.
Because the Examiner entered a new ground of rejection, arguing that claim
4 is unpatentable over the combination of Clarke, Adelman, Beltran, and
Rickerby ’029 (Ans. 4), we treat the rejection of claim 4 as obvious over the
combination of Clarke and Adelman as withdrawn.
Rejection 2. The Examiner rejected claim 4 as obvious over the
combination of Clarke, Adelman, Beltran, and Rickerby ’029 (Ans. 4).
Appellants present three arguments for reversal of this rejection (Reply
Br. 1-3).
First, Appellants argue that this rejection is improper “because the
claimed combination involves additional complexity compared with the
cited prior art and results flowing from the claimed combination would not
have been predictable based on the cited prior art” (id. at 2 ). Appellants
argue that the Examiner has not provided an adequate reason for a person of
ordinary skill in the art to want to combine the descriptions of Clarke and
Adelman (id. (“When a combination invention involves additional
complexity as compared with the prior art, the invention may be nonobvious
unless an examiner can articulate a reason for including the added features
or steps.”)).
We are not persuaded by this argument. In making the rejection, the
Examiner found that the combined descriptions of Clarke and Adelman
would have suggested using Adelman’s superalloy composition in Clarke’s
structure “to provide a turbine construction having enhanced mechanical
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properties leading to a more reliable and longer lasting turbine engine” (Ans.
4-5). We do not discern error in this finding. See, e.g., Unigene Labs., Inc. v.
Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (explaining that the
references collectively, but not necessarily expressly, must guide the skilled
artisan to the claimed invention).
Second, Appellants argue that the rejection is improper because the
prior art did not recognize the compatibility of Clarke’s coating system with
Adelman’s super alloy (Reply Br. 2-3). Such recognition, however, is not
required for there to be a prima facie case of obviousness. Rather, the
question is what the combined teachings of the references would have
suggested to a person of ordinary skill in the art. In re Mouttet, 686 F.3d
1322, 1332-33 (Fed. Cir. 2012). As discussed above, we do not discern error
in the Examiner’s finding that a person of ordinary skill in the art would
have applied Clarke’s coating system to Adelman’s superalloy.
Furthermore, we do not discern—and Appellants have not
identified—any reason why a person of ordinary skill in the art would not
have had a reasonable expectation that these references could be combined.
While Appellants argue that the art is unpredictable (Reply Br. 3), a person
of ordinary skill in the art would be able to overcome the degree of
unpredictability normally found in this field through the use of ordinary
creativity. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(explaining that a person of ordinary skill in the art possesses “ordinary
creativity, [and is] not an automaton”). Neither Appellants’ Specification nor
claims identify any portion of the process for making the claimed invention
as requiring special processing conditions that a skilled artisan would have
been unable to discover through the use of ordinary skill and creativity.
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Third, Appellants argue that the results flowing from the claimed
combination would not have been predictable from the cited prior art (Reply
Br. 3). In particular, Appellants argue that “neither of the cited references
teach reaction zones involving rhenium/ruthenium nor predict that the
combination would alleviate the formation of such reaction zones” (id.). We
are not persuaded by this argument for two reasons. First, Beltran and
Rickerby ’029 are cited by the Examiner as evidence that the reaction zones
would form under the operating conditions normally found in turbine
engines (Ans. 5). Second, “it is not required . . . that the prior art disclose or
suggest the properties newly-discovered by an applicant in order for there to
be a prima facie case of obviousness.” In re Dillon, 919 F.2d 688, 697 (Fed.
Cir. 1990) (en banc).
Accordingly, we affirm the Examiner’s rejection of claim 4 as
obvious over the combination of Clarke, Adelman, Beltran, and Rickerby
’029.
Rejection 3. The Examiner rejected claims 7, 8, and 13-16 as obvious
over the combination of Clarke, Adelman, and Marijnissen (Ans. 8; FR 3-4).
These dependent claims all include the additional limitation that the thermal
barrier coating system further comprises a ceramic topcoat. Appellants argue
that the rejection of these claims should be reversed for two reasons: (1) the
rejection of base claims 1 and 10 as obvious over the combination of Clarke
and Adelman should be reversed for the reasons discussed in Rejection 1,
which also renders these claims unobvious (App. Br. 4), and (2) the
Examiner failed to establish a prima facie case of obviousness because
neither Marijnissen nor the other references describe or suggest the use of a
ceramic topcoat on a platinum layer (id. at 5).
We are not persuaded by these arguments.
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First, as we discussed above, we are not persuaded by Appellants’
arguments that the Examiner erred in concluding that claims 1 and 10 were
obvious over the combination of Clarke and Adelman.
Second, we are not persuaded that the Examiner erred in finding that
Marijnissen described or suggested the application of a ceramic topcoat to a
platinum-overcoated substrate. As the Examiner points out, Marijnissen
expressly states that its ceramic topcoat may be applied to a metallic surface
(Ans. 13 (citing Marijnissen col. 7, ll. 31-36); see also col. 5, ll. 66-67
(“Alternatively, the multilayered ceramic barrier topcoat may be formed
directly on a superalloy or other substrate [without the use of a bond
coat].”)). Appellants also argue that the Examiner erred in finding that a
person of ordinary skill in the art would have had a reasonable expectation
of success in the application of Marijnissen’s ceramic topcoat to Clarke’s
platinum overlayer (App. Br. 5). Appellants argue that a person of ordinary
skill in the art would have expected the ceramic overcoat in such a
combination to be subject to an unacceptable amount of chipping, spalling,
eroding, or delaminating (id.; Reply Br. 6 (citing Marijnissen col. 1, ll. 58-
61)). Appellants’ reliance on Marijnissen to support their argument is
misplaced. While Marijnissen does state that conventional ceramic coatings
are subject to delamination, col. 1, ll. 58-61, Marijnissen further describes
the development of strain-tolerant ceramic coatings that reduce or eliminate
this problem, col. 1, l. 65-col. 2, l. 12. Marijnissen describes an improved
version of one such strain-tolerant ceramic coating. See, e.g., col. 4, ll. 53-
58. Accordingly, a person of ordinary skill in the art would have had a
reasonable expectation of success in using Marijnissen’s ceramic topcoat on
a platinum overcoated substrate.
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We therefore affirm the rejection of claims 7, 8, and 13-16 as obvious
over the combination of Clarke, Adelman, and Marijnissen.
Rejection 4. The Examiner rejected claims 1, 4, 10, 23, and 24 as
obvious over the combination of Clarke and Austin (Ans. 8; FR 4).
Appellants argue that this rejection should be reversed for the reasons
presented in connection with Rejection 1 (App. Br. 5). As discussed above,
we are not persuaded by these arguments and affirm the Examiner’s
rejection with respect to claims 1, 10, 23, and 24.
Appellants also present an additional argument for reversal of this
rejection with respect to claim 4 (id. at 5-6). In the Answer, the Examiner
entered a new ground of rejection of claim for as obvious over the
combination of Clarke, Austin, Beltran, and Rickerby ’029 (Ans. 6).
Accordingly, we treat the rejection of claim 4 as obvious over Clarke and
Austin as withdrawn.
Rejection 5. The Examiner rejected claim 4 as obvious over the
combination of Clarke, Austin, Beltran, and Rickerby ’029 (Ans. 6).
Appellants argue that this rejection should be reversed for the reasons that
they presented in arguing for reversal of Rejection 2 (Reply Br. 3-4).
As discussed above, we are not persuaded by these arguments.
Accordingly, we affirm the Examiner’s rejection of claim 4 as obvious over
the combination of Clarke, Austin, Beltran, and Rickerby ’029.
Rejection 6. The Examiner rejected claims 1-4, 6, 7, and 9-16 as
obvious over the combination of Rickerby ’337 and Adelman (Ans. 9;
FR 5). Appellants argue that this rejection should be reversed for the reasons
they advanced in connection with Rejection 1 (App. Br. 6). As discussed
above, we are not persuaded by these arguments and affirm the Examiner’s
rejection.
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Rejection 7. The Examiner rejected claims 1, 10, 23, and 24 as
obvious over the combination of Rickerby ’337 and Austin (Ans. 9; FR 7).
Appellants argue that this rejection should be reversed for the reasons they
advanced in connection with Rejection 1 (App. Br. 6). As discussed above,
we are not persuaded by these arguments and affirm the Examiner’s
rejection.
CONCLUSION
For the reasons set forth above, we have affirmed all of the
Examiner’s rejections of claims 1-16, 23, and 24 of the ’831 application.

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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