Ex Parte Tulyani et al

Patent Trial and Appeal Board

Mar 17, 2014

11366768 (P.T.A.B. Mar. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/366,768 03/01/2006 Sonia Tulyani PA-085.11714-US
(05-393)
4164
52237 7590 03/18/2014
BACHMAN & LAPOINTE, P.C.
c/o CPA Global attn. Pam Houser
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
03/18/2014 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 SONIA TULYANI, JOHN G. SMEGGIL, and TANIA BHATIA
____________

Appeal 2012-007520
Application 11/366,768
Technology Center 1700
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-007520
Application 11/366,768

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-5, 7-10, and 28.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is directed to a cost effective process for applying a
coating that acts as a barrier to corrosive environments to a complex shaped
part, such as a gas turbine component. (Spec. [0009], [0020].) Claim 1, the
sole independent claim on appeal, is representative of the invention, and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for depositing a protective coating upon a
substrate, comprising the steps of:
dipping a complex shaped substrate comprising a gas turbine
engine component into a slurry, said slurry comprising an aqueous solution
containing at least one refractory metal oxide selected from the group
consisting of hafnium, zirconium, titanium, niobium, cerium, yttrium,
aluminum, silicon, barium, strontium, scandium, lanthanum, gadolinium,
samarium, lutetium, ytterbium, europium, praseodymium, dysprosium,
erbium, promethium, holmium and combinations thereof and at least one
transient fluid additive present in an amount of about 0.1 percent to 10
percent by weight of said slurry;
heat treating said substrate to a first temperature of about 400°C at a
rate of about 3°C per minute;
maintaining said first temperature for about three hours;
heating said substrate from said first temperature to a second
temperature of about 1350°C at a rate of about 3°C per minute;
maintaining said second temperature for about seven hours;
and,
cooling said substrate to form a protective coating thereon.

1 Final Office Action mailed Jul. 21, 2011.
2 Appeal Brief filed Dec. 21, 2011 (“App. Br.”).
Appeal 2012-007520
Application 11/366,768

3
The Examiner maintains the following rejections under 35 U.S.C.
§103(a):
1. claims 1, 2, 4, 5, and 7-9 as unpatentable over Strangman et al.
(US 2003/0035945 A1, published Feb. 20, 2003) in view of Ishiguro et al.
(US 4,835,009, patented May 30, 1989), Kobayashi et al. (US 6,174,489 B1,
patented Jan. 16, 2001), Moh (US 5,204,289, patented Apr. 20, 1993), and
Lanning (US 3,163,256, patented Dec. 29, 1964) (Ans.3 4-12);
2. claim 3 as unpatentable over Strangman in view of Ishiguro,
Kobayashi, Moh, and Lanning, and further in view of Raybould et al. (US
2006/0099358 A1, published May 11, 2006) (Ans. 12-13);
3. claim 10 as unpatentable over Strangman in view of Ishiguro,
Kobayashi, Moh, and Lanning, and further in view of Radford et al.
(Zirconia electrolyte cells, Part I Sintering studies, 14 J. MATERIALS SCI. 59-
65 (1979) 59-65; hereafter Radford) (Ans. 13-14);
4. claim 28 as unpatentable over Strangman in view of Ishiguro,
Kobayashi, Moh, and Lanning, and further in view of Albrecht et al. (US
2004/0244910 A1, published Dec. 9, 2004) (Ans. 14-15);
5. claims 1-5 and 7-10 as unpatentable over Raybould in view of
Moh and Lanning (Ans. 15-22); and
6. claim 28 as unpatentable over Raybould in view of Moh and
Lanning, and further in view of Albrecht (Ans. 22-23).
Appellants request our review of above-listed grounds of rejection 1
and 4-6. (App. Br. 5.) Accordingly, we summarily sustain the rejection of
claim 3 over Strangman in view of Ishiguro, Kobayashi, Moh, Lanning, and
Raybould and the rejection of claim 10 over Strangman in view of Ishiguro,

3 Examiner’s Answer mailed Feb. 6, 2012.
Appeal 2012-007520
Application 11/366,768

4
Kobayashi, Moh, Lanning, and Albrecht (above-listed grounds of rejection 2
and 3). Appellants rely on the same arguments made in support of
patentability of claim 1 in traversing the rejections of claim 28 (grounds of
rejection 4 and 6). (App. Br. 12, 17.) With respect to ground of rejection 1,
Appellants raise separate arguments in support of patentability of dependent
claims 5 and 7. (See id. at 11-12.) Likewise, with respect to ground of
rejection 5, Appellants present separate arguments in support of patentability
of dependent claims 5, 7, and 8. (See id. at 15-17.)
Having fully considered the arguments advanced by Appellants in
support of patentability of claim 1, as well as the separate arguments in
support of patentability of dependent claims 5, 7, and 8, we are not
convinced of error in the Examiner’s conclusion of obviousness for the
reasons expressed in the Answer. (See Ans. 5-31.) We add the following.
Appellants’ principle contention is that the facts and reasons relied on
by the Examiner are insufficient to support the Examiner’s findings that it
was known in the art at the time of the invention to use a two stage heating
process in forming a ceramic coating on a substrate, and that one of ordinary
skill in the art would have found the specific heating temperatures and rates
matters of routine optimization. However, we agree with the Examiner that
Moh and Ishiguro (Ans. 7-8, 25) evidence that it was known in the art at the
time of the invention to heat a ceramic layer at a temperature of “about 400
ºC” (appealed claim 1) prior to sintering (Moh, col. 7, ll. 58-61 (about 25-
350ºC); Ishiguro, col. 7, ll. 33-35 (500ºC)) in order to remove binder, such
as poly(vinyl) alcohol (Moh, col. 7, ll. 19-20; Ishiguro, col. 5, ll. 57-59).
The prior art of record evidences that binders were commonly used in
ceramic materials (Kobayashi, col. 4, ll. 47-48; Moh, col. 3, ll. 59-65;
Appeal 2012-007520
Application 11/366,768

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Ishiguro, col. 5, ll. 57-59; Lanning, col. 2, ll. 35-36) “to bond the unfired
ceramic material to the carrier, to impart green strength to the coated carrier,
and to retain the formed unfired article in the desired shape after forming
and prior to sintering” (Lanning, col. 2, ll. 52-55). With respect to the
second stage, i.e., sintering, the Examiner’s finding (Ans. 7, 17) that
Kobayashi (col. 4, ll. 55-57 (1350-1500ºC)) and Raybould (see [0067]
(1400-1600ºC)) disclose sintering of yttria stabilized zirconia ceramics at
temperatures which overlap or are close to “about 1350 ºC” (appealed claim
1) is sufficient to support a prima facie case of obviousness. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). While none of the
references specifically disclose the heat treatments to remove binder and to
sinter should be conducted at a rate of about 3ºC/min, both Moh and
Lanning disclose that heating must be at a rate slow enough to prevent
breakage (Moh, col. 7, ll. 64-67; Lanning, col. 3, ll. 49-52), and Lanning
explicitly discloses that the ordinary artisan at the time of the invention
would have possessed the requisite knowledge and skills to determine
suitable heat treatment conditions, including heating rates (Lanning, col. 3,
ll. 53-59, cited in Ans. 9, 18).
Because the Examiner established a prima facie case of obviousness,
the burden shifted to Appellants to show criticality in the claimed heating
temperatures and rates. See Peterson, 315 F.3d at 1330. Appellants have
not directed us to, nor do we find, any evidence of criticality in the
Specification (see, e.g., Spec. [0028] (heating to about 300-500ºC); id.
(elevating temperature to about 1250-1450ºC for about 2-7 hrs); id. (heating
rates of 2-5ºC/min)).

Appeal 2012-007520
Application 11/366,768

6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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