Ex Parte Wan et al

Patent Trial and Appeal Board

Mar 5, 2018

13841371 (P.T.A.B. Mar. 5, 2018)

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.
13/841,371 03/15/2013 Julin Wan 259235-1 6027
6147 7590 03/07/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
EXAMINER
FERGUSON, LAWRENCE D
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
03/07/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney @ ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIN WAN, MILIVOJ KONSTANTIN BRUN,
PETER JOEL MESCHTER, REZA SARRAFI-NOUR, and
DON MARK LIPKIN
Appeal 2017-006500
Application 13/841,371
Technology Center 1700
Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1-15 and 31—40. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, General Electric Company, which, according to
the Appeal Brief, is the real party in interest. Appeal Brief filed September
27, 2016 (“App. Br.”),2.
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Application 13/841,371
STATEMENT OF THE CASE
Appellant claims an article comprising a substrate and a coating
provided on a surface of the substrate. App. Br. 2-5. Claims 1 and 31
illustrate the subject matter on appeal and are reproduced below:
1. An article, comprising:
a substrate; and
a coating provided on a surface of the substrate, the
coating comprising
at least one metal silicide layer consisting essentially of
MoSE or WSE or (Mo, W)SE or a platinum group metal
silicide; and
at least one layer consisting essentially of SEN4.
31. An article, comprising:
a substrate formed of a ceramic matrix composite that
contains SiC as a reinforcement and a matrix phase; and
a coating provided on a surface of the substrate, the
coating comprising
at least one metal silicide layer consisting
essentially 0/M0SE or WSE or (Mo, W)SE or a platinum group
metal silicide; and
at least one layer consisting essentially 0/SEN4,
wherein a thickness ratio of the at least one metal silicide layer
and the at least one layer of Si3N4provides the coating with a
coefficient of thermal expansion substantially equal to a
coefficient of thermal expansion of the substrate.
App. Br. 12, 14 (Claims Appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered May 5, 2016 (“Final Act.”), and maintains the rejections in
the Examiner’s Answer entered January 13, 2017 (“Ans.”):
I. Claims 1-7 under 35 U.S.C. § 102(b) as anticipated by Hebsur
(US 5,429,997, issued July 4, 1995);
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II. Claims 8-13 and 15 under 35 U.S.C. § 103(a) as unpatentable
over Hebsur;
III. Claims 1—4, 6, and 8 under 35 U.S.C. § 102(b) as anticipated by
Berczik et al. (US 2010/0104859 Al, published April 29, 2010);
IV. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over Hebsur
in view of Berczik;
V. Claims 31-37, 39, and 40 under 35 U.S.C. § 103(a) as
unpatentable over Hebsur; and
VI. Claim 38 under 35 U.S.C. § 103(a) as unpatentable over Hebsur
in view of Berczik.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1-5 and 7 under 35 U.S.C. § 102(b) as anticipated by Hebsur,
rejections of claims 8-10, 12, 13, 15, 36, 37, 39, and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Hebsur; rejections of claims 14 and 38 under
35 U.S.C. § 103(a) as unpatentable over Hebsur in view of Berczik; and
rejection of claims 1^1 and 8 under 35 U.S.C. § 102(b) as anticipated by
Berczik, for the reasons set forth in the Final Action, the Answer, and below.
We reverse the Examiner’s rejection of claim 6 under 35 U.S.C. § 102(b) as
anticipated by Hebsur, rejections of claims 11 and 31-35 under 35 U.S.C.
§ 103(a) as unpatentable over Hebsur, and rejection of claim 6 under
35 U.S.C. § 102(b) as anticipated by Berczik, for the reasons set forth below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d 1072,
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1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the [Ejxaminer’s
rejections”)).
Rejection I
Claims 1—5 and 7
Appellant argues claims 1-5 and 7 together on the basis of claim 1, to
which we limit our discussion. App. Br. 5-6; 37 C.F.R. § 41.37(c)(l)(iv).
Hebsur discloses a molybdenum disilicide (MoSi2)-silicon nitride
(SEN4) composition used as a matrix material in a fiber-reinforced
composite structure. Col. 3,11. 39-41; col. 4,11. 14-16. Hebsur discloses
that the MoSE- SEN4 matrix material is interspersed with a reinforcing
material in the composite structure, and discloses that preferred reinforcing
materials comprise silicon carbide. Col. 4,11. 19-22,30-31. Hebsur
discloses producing a composite structure by consolidating the MoSi2-Si3N4
matrix material with reinforcing fibers, whiskers, or filaments, to form a ply
or plate of reinforced MoSF- SEN4 matrix material, and then consolidating a
plurality of plies of the reinforced MoSF- SBN4 matrix material. Col. 4,11.
33-47.
The Examiner construes “consisting essentially of’ recited in claim 1
as equivalent to “comprising,” and indicates that Appellant has the burden to
show that the additional ingredients disclosed in Hebsur are excluded from
claim 1 as materially affecting the basic and novel characteristics of
Appellant’s invention. Final Act. 3. The Examiner thus interprets the
plurality of consolidated plies disclosed in Hebsur “as including a substrate,
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a coating on the substrate comprising at least one metal silicide layer
consisting essentially of MoSE and a layer consisting essentially of SBN4, as
in claim 1.” Final Act. 2-3.
Appellant argues that the “molybdenum disilicide and the silicon
nitride [disclosed in Hebsur] are not provided in separate layers, as claimed,
but rather are mixed.” App. Br. 5. Appellant asserts that, “even assuming it
was reasonable to interpret each ply or plate of Hebsur as a layer, which
Applicants do not concede, none of the layers (i.e. plies) would consist
essentially of either MoSE or WSE or (Mo, W)SE or a platinum group metal
silicide nor would any of the layers consist essentially of SBN4 as each layer
(ply) would include a MoSi2/Si3N4 mixture.” Id.
Appellant further asserts that the Specification demonstrates that the
additional ingredients disclosed in Hebsur would materially change the
characteristics of the invention of claim 1—which Appellant asserts to be
“the CTE’s of MoSE and SEW’ —and would therefore be excluded from
claim 1 by the “consisting essentially of’ transitional phrase. App. Br. 5-6.
Appellant relies on Figure 2 and paragraph 21 of the Specification, which
Appellant argues disclose an alternating layer structure as recited in claim 1
that is distinguished from the structure shown in Figure 1 and described in
paragraphs 19 and 20 of the Specification, which includes a coating system
comprising two primary phases, MoSE and SBN4. App. Br. 6. Appellant
argues that paragraph 30 of the Specification discloses that the mechanism
of reducing a coefficient of thermal expansion mismatch between the
coating and the substrate operates differently between the examples of layer-
by-layer coatings (Fig. 2) and the examples of a layer including a mixture of
the MoSE and SBN4 phases (Fig. 1). Id. Appellant asserts that paragraph 30
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further discloses that in the case of the layer-by-layer coatings, the desired
ratio of MoSE and SEN4 may be determined from an effective coefficient of
thermal expansion, which is a function of the individual coefficients of
thermal expansion of MoSEand SEN4. Id.
However, Figure 1, Figure 2, and the relied-upon paragraphs of the
Specification do not establish that the presence of SEN4 as disclosed in
Hebsur in the metal silicide layer recited in claim 1, and the presence of
MoSE as disclosed in Hebsur in the SEN4 layer recited in claim 1, would
materially affect the basic and novel characteristics of the article of claim 1.
Although Appellant asserts that “the CTE’s of MoSF and SEW’ are the
basic and novel characteristics of the article of claim 1, claim 1 does not
recite the coefficients of thermal expansion of the MoSE and SEN4 layers,
and these layers, therefore, need not have any particular coefficient of
thermal expansion, including a coefficient of thermal expansion that matches
that of the recited substrate. Nonetheless, the relied-upon drawings and
portions of the Specification, as well as Appellant’s arguments, do not
establish that the presence of SEN4 as disclosed in Hebsur in the metal
silicide layer recited in claim 1, and the presence of MoSE as disclosed in
Hebsur in the SEN4 layer recited in claim 1, would prevent one of ordinary
skill in the art from achieving a desired coefficient of thermal expansion for
the coating layers of the article of claim 1 such that the coefficient of
thermal expansion of the coating could not be substantially equal to that of
the substrate. Accordingly, Appellant does not establish that the additional
ingredients disclosed in Hebsur would be excluded from the coating layers
recited in claim 1.
We accordingly sustain the Examiner’s rejection of claims 1-5 and 7
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under 35 U.S.C. § 102(b) as anticipated by Hebsur.
Claim 6
Claim 6 depends from claim 1 and recites that a thickness ratio of the
at least one metal silicide layer and the at least one layer of SEN4 provides
the coating with a coefficient of thermal expansion substantially equal to a
coefficient of thermal expansion of the substrate.
The Examiner finds that because the plurality of plies of reinforced
MoSi2/Si3N4 matrix material disclosed in Hebsur “comprise the same
materials and are essentially the same, it is inherent for the plurality of plies
to have a thickness ratio that provides the coating with a coefficient of
thermal expansion substantially equal to a coefficient of thermal expansion
of the substrate.” Final Act. 4 (citations omitted). The Examiner further
finds that “[pjroducts of identical chemical composition [cannot] have
mutually exclusive properties. Therefore, because Hebsur has the same
chemical structured coating material on a substrate, the properties, including
thickness ratio and coefficient of thermal expansion of the layered materials
are necessarily present.” Ans. 20.
As discussed above, claim 1 does not exclude a plurality plies having
a chemical composition as disclosed in Hebsur in which a first ply includes a
matrix material comprising MoSE (as well as SEN4) and a reinforcing
material comprising silicon carbide, and a second ply includes a matrix
material comprising SFN4 (as well as MoSE) and a reinforcing material
comprising silicon carbide. However, the chemical composition and
resulting properties of such plies are distinct from the thicknesses of the
plies. Contrary to the Examiner’s assertions, a plurality of plies as disclosed
in Hebsur comprising the same materials as recited in claim 1 would not
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necessarily (and inherently) have a thickness ratio as recited in claim 6 by
virtue of only the chemical composition of the plies.
The Examiner does not identify any disclosure in Hebsur of a
relationship between the thicknesses of the plies in the composite structure
described in the reference and the coefficient of thermal expansion of the
MoSE- SEN4 matrix material in the plies. Nor does the Examiner identify
any disclosure in Hebsur indicating that a thickness ratio of at least first and
second plies in the composite structure would provide the MoSE- SEN4
matrix material in the plies with a coefficient of thermal expansion
substantially equal to that of the silicon carbide reinforcing material
(substrate). It follows that the Examiner does not provide a sufficient factual
basis to establish that Hebsur inherently discloses a thickness ratio of at least
one metal silicide layer and at least one layer of SEN4 that provides a coating
comprising the layers with a coefficient of thermal expansion substantially
equal to a coefficient of thermal expansion of a substrate, as required by
claim 6. We accordingly do not sustain the Examiner’s rejection of claim 6
under 35 U.S.C. § 102(b) as anticipated by Hebsur.
Rejection II
Appellant provides arguments directed to the separate patentability of
claims 9, 10, and 11, and relies on the arguments made for claim 9 in
asserting the patentability of claim 12. App. Br. 8-9. We accordingly
decide the appeal as to Rejection II based on claims 9 and 12, which we
address together, and claims 10 and 11, which we address separately.
37C.F.R. §41.37(c)(l)(iv).
Claims 9 and 12
Claim 9 depends from claim 1 and recites that the percentage of SEN4
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is greater than about 55% by volume of the coating. Independent claim 12
recites an article comprising, inter alia, a coating comprising MoSF and
SFN4 wherein a percentage of SFN4 is greater than about 55% by volume of
the coating.
Hebsur discloses that the MoSF- SFN4 composition contains “a high
volume fraction” of SFN4, and discloses that a preferred composition
comprises at least about 20% by volume SFN4, while a more preferred
composition comprises from about 30% to about 50% by volume SFN4.
Col. 3,1. 67-col. 4,1. 9. The Examiner finds that “[bjecause Hebsur
discloses the silicon nitride can have a volume of about 50%, about 50% can
include amounts greater than 50%.” Final Act. 4-5 (citing Titanium Metals
Corp. of America v. Banner, 778 F.2d 775 (Fed. Cir. 1985)).
Appellant argues that, unlike the present case, Titanium Metals is “a
case much like the range cases (e.g. In re Peterson) where the claimed
amount falls directly within the established prior art range.” App. Br. 8.
Appellant contends that the range of claim 9 falls outside the range disclosed
by Hebsur, which Appellant asserts is 20-50%, and Appellant argues that
Hebsur does not disclose or suggest a percentage of SFN4 that is greater than
about 55% by volume of the coating. Id.
However, Hebsur’s disclosure of a range of SFN4 in the MoSF-
SFN4 composition that is at least about 20% by volume of the composition
encompasses or overlaps the SFN4 range of greater than about 55% by
volume recited in claim 9, rendering the recited range prima facie obvious.
In re Peterson, 315 F.3d 1325, 1329-330 (Fed. Cir. 2003) (“In cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
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case of obviousness . . . “In fact, when, as here, the claimed ranges are
completely encompassed by the prior art, the conclusion is even more
compelling than in cases of mere overlap.” Id. at 1330.
Moreover, even Hebsur’s disclosure of a more preferred range of
SFN4 of from about 30% to about 50% by volume would have suggested to
one of ordinary skill in the art—by virtue of being “more preferred” rather
than required, and through use of the term “about” to describe the endpoints
of the range—that Hebsur’s MoSb- SFN4 composition would not be limited
to including only from 30% to 50% by volume of SFN4, but could also
include volume percentages of SFN4 outside this more preferred range, such
as about 55% as recited in claim 9. Because Appellant does not demonstrate
the criticality of the range recited in claim 9, Appellant’s arguments are
unpersuasive of reversible error in the Examiner’s rejection. In re Woodruff
919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.).
Claim 10
Claim 10 depends from claim 1 and recites that the at least one metal
silicide layer consists essentially of MoSF that is about 1% to about 45% of
the volume of the coating. The Examiner finds that “[bjecause Hebsur
discloses the molybdenum disilicide can have a volume of about 50%, about
50% can include amounts lower than 50%.” Final Act. 5 (citing Titanium
Metals, 778 F.2d 775).
Appellant argues that the Examiner’s rejection is “nothing more than
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speculation, assumption, and hindsight” because Hebsur does not disclose or
suggest at least one metal silicide layer that consists essentially of MoSE
that is about 1% to about 45% of the volume of the coating. App. Br. 9.
However, Hebsur’s disclosure that the MoSi2-Si3N4 composition
comprises at least about 20% by volume SEN4 implicitly indicates that the
composition comprises about 80% or less of MoSE by volume,
encompassing the range of about 1% to about 45% of MoSE by volume
recited in claim 10, rendering the recited range prima facie obvious.
Peterson, 315 F.3d at 1329-330.
Moreover, even Hebsur’s disclosure of a more preferred range of
SEN4 of from about 30% to about 50% by volume implicitly discloses a
MoSE volume percentage of about 50% to about 70%. As discussed above
in connection with claim 9, by virtue of being a “more preferred” rather than
required range, and through use of the term “about” to describe the
endpoints of the range, one of ordinary skill in the art would have
understood that Hebsur’s MoSi2-Si3N4 composition would not be limited to
including only from 50% to 70% by volume of MoSE, but could also
include volume percentages of MoSE outside this more preferred range, such
as about 45% as recited in claim 10. Because Appellant does not
demonstrate the criticality of the range recited in claim 10, Appellant’s
arguments are unpersuasive of reversible error in the Examiner’s rejection.
Woodruff 919 F.2d at 1578.
Claim 11
Claim 11 depends from claim 1 and recites that the at least one metal
silicide layer consists essentially of MoSE and a ratio of the thickness of the
at least one layer of MoSE to the thickness of the at least one layer of SEN4
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is about 0.01 to about 0.75.
The Examiner finds that because Hebsur discloses consolidation of
identical plies, each ply would have the same thickness, resulting in a
thickness ratio of 1. Final Act. 6; Ans. 22. The Examiner further finds that
‘“about 0.75’ can include higher amounts, including 1.” Final Act. 6.
However, even assuming that one of ordinary skill in the art would
have understood Hebsur to disclose consolidation to identical plies resulting
in a thickness ratio of 1, a thickness ratio of “about 0.75” as recited in claim
11 differs from a thickness ratio of 1 by about 25%. The Examiner does not
establish that one of ordinary skill in the art would have understood that a
thickness ratio of 1 as supposedly disclosed by Hebsur would have
reasonably suggested a thickness ratio of 0.75. Specifically, the Examiner
does not identify any disclosure in Hebsur or provide any other evidence or
reasoning establishing that one of ordinary skill in the art would have
understood that a 25% difference in the thickness ratio of the plies of the
composite structure disclosed in Hebsur would not be meaningful, or would
be appropriate. In re Patel, 566 Fed. App. 1005, 1010 (Fed. Cir. 2014) (non-
precedential) (“a rejection based on ranges approaching each other might
well be appropriate where there is a teaching in the prior art that the end
points of the prior art range are approximate, or can be flexibly applied.”).
We accordingly do not sustain the Examiner’s rejection of claim 11 under
35 U.S.C. § 103(a) as unpatentable over Hebsur.
Therefore, we sustain the Examiner’s rejection of claims 8-10, 12, 13,
and 15 under 35 U.S.C. § 103(a) as unpatentable over Hebsur, but reverse
the Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Hebsur.
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Rejection V
Claims 31—35
We need consider only independent claim 31 because claims 32-35
depend from claim 31.
As set forth above, claim 31 recites that a thickness ratio of the at least
one metal silicide layer and the at least one layer of SEN4 provides the
coating with a coefficient of thermal expansion substantially equal to a
coefficient of thermal expansion of the substrate.
The Examiner finds that because the plurality of plies of reinforced
MoSi2/Si3N4 matrix material disclosed in Hebsur “comprise the same
materials and are essentially the same [as claimed], it would have been
obvious to one of ordinary skill in the art for the plurality of plies to have a
thickness ratio that provides the coating with a coefficient of thermal
expansion substantially equal to a coefficient of thermal expansion of the
substrate.” Final Act. 9 (citations omitted).
However, similar to the situation discussed above in connection with
claim 6, the Examiner does not identify any disclosure in Hebsur of a
relationship between the thickness of the plies in the composite structure
described in the reference and the coefficient of thermal expansion of the
MoSi2-Si3N4 matrix material in the plies. Nor does the Examiner identify
any disclosure in Hebsur indicating that a thickness ratio of at least first and
second plies in the composite structure would provide the MoSE-Sf^
matrix material in the plies with a coefficient of thermal expansion
substantially equal to that of the silicon carbide reinforcing material
(substrate).
Although the Examiner asserts in the Answer that a thickness ratio as
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recited in claim 31 would “achieve the predictable result of sustaining the
durability of the coated material” (Ans. 26), the Examiner does not provide
any objective evidence in support of this assertion. Thus, the Examiner does
not provide objective evidence, or reasoning with rational underpinning,
establishing that the relied-upon disclosures in Hebsur would have led one of
ordinary skill in the art to produce an article comprising a coating in which a
thickness ratio of at least one metal silicide layer of the coating and at least
one of SEN4 layer of the coating provides the coating with a coefficient of
thermal expansion substantially equal to a coefficient of thermal expansion
of a substrate, as required by claim 31.
We accordingly do not sustain the Examiner’s rejection of claims 31-
35 under 35 U.S.C. § 103(a) as unpatentable over Hebsur.
Claims 36, 37, 39, and 40
Appellant presents arguments directed to claim 36 only. App. Br. 8-
10. Therefore, claims 37, 39, and 40 stand or fall with claim 36. 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 36 recites an article, comprising: a substrate formed of a
ceramic matrix composite that contains SiC as a reinforcement and a matrix
phase; and a coating provided on a surface of the substrate, the coating
comprising MoSE and SEN4 wherein a percentage of SBN4 is greater than
about 55% by volume of the coating.
Appellant argues that the Examiner’s citation of Titanium Metals
against claim 36 is deficient for all of the reasons Appellant presents in
connection with claims 9-12 (discussed above). App. Br. 10.
However, Appellant’s arguments are unpersuasive of reversible error
in the Examiner’s rejection of claim 36 for the same reasons discussed above
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in connection with claims 9 and 12. We accordingly sustain the Examiner’s
rejection of claims 36, 37, 39, and 40 under 35 U.S.C. § 103(a) as
unpatentable over Hebsur.
Rejections IV and VI
To address these rejections, Appellant argues that Berczik fails to cure
the deficiencies of Hebsur discussed with respect to claims 1 and 36. App.
Br. 11. Because we are unpersuaded of reversible error in the Examiner’s
rejections of claims 1 and 36 under 35 U.S.C. § 103(a) as unpatentable over
Hebsur for the reasons discussed above, Appellant’s position as to these
rejections is also without merit.
Rejection III
Claims 1—4 and 8
Appellant argues claims 1—4 and 8 together on the basis of claim 1, to
which we limit our discussion. App. Br. 10-11; 37 C.F.R. § 41.37(c)(l)(iv).
Berczik discloses an article comprising a substrate coated with bond
coat layer 32 that comprises MoSE and SEN4. ^ 21, 23; Fig. 2. Berczik
discloses disposing a functionally graded material layer 34 comprising
molybdenum disilicide and silicon nitride on bond coat layer 32. 21, 24;
Fig. 5.
Appellant argues that Berczik does not disclose or suggest a “multi­
layer structure with each layer consisting essentially of the claimed
materials.” App. Br. 10-11.
Similar to the situation with Rejection I discussed above, Appellant
does not establish that the presence of Sf N4 as disclosed in Berczik in the
metal silicide layer recited in claim 1, and the presence of MoSE as disclosed
in Berczik in the SEN4 layer recited in claim 1, would materially affect the
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basic and novel characteristics of the article of claim 1. App. Br. 10-11.
Accordingly, Appellant does not establish that the additional ingredients
disclosed in Berczik would be excluded from the coating layers recited in
claim 1 by the recited “consisting essentially of’ transitional phrases. We
accordingly sustain the Examiner’s rejection of claims and 8 under
35 U.S.C. § 102(b) as anticipated by Berczik.
Claim 6
We do not sustain the Examiner’s rejection of claim 6 under
35 U.S.C. § 102(b) as anticipated by Berczik. The Examiner does not
identify any disclosure in Berczik of a relationship between the thicknesses
of bond coat layer 32 and functionally graded material layer 34 and the
coefficient of thermal expansion of a coating formed by the layers. Nor does
the Examiner identify any disclosure in Berczik indicating that a thickness
ratio of bond coat layer 32 and functionally graded material layer 34 would
provide such a coating with a coefficient of thermal expansion substantially
equal to that of the substrate, ft follows that the Examiner does not provide
a sufficient factual basis to establish that Berczik inherently discloses a
thickness ratio of at least one metal silicide layer and at least one layer of
SEN4 that provides a coating comprising the layers with a coefficient of
thermal expansion substantially equal to a coefficient of thermal expansion
of a substrate, as required by claim 6.
DECISION
We affirm the Examiner’s rejection of claims 1-5 and 7 under
35 U.S.C. § 102(b) as anticipated by Hebsur; rejections of claims 8-10, 12,
13, 15, 36, 37, 39, and 40 under 35 U.S.C. § 103(a) as unpatentable over
Hebsur; rejections of claims 14 and 38 under 35 U.S.C. § 103(a) as
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unpatentable over Hebsur in view of Berczik; and rejection of claims
and 8 under 35 U.S.C. § 102(b) as anticipated by Berczik. We reverse the
Examiner’s rejection of claim 6 under 35 U.S.C. § 102(b) as anticipated by
Hebsur; rejections of claims 11 and 31-35 under 35 U.S.C. § 103(a) as
unpatentable over Hebsur; and rejection of claim 6 under 35 U.S.C. § 102(b)
as anticipated by Berczik.
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-IN-PART
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