Ex Parte WERNER et al

Patent Trial and Appeal Board

Dec 20, 2018

14543384 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/543,384 11/17/2014
13897 7590 12/25/2018
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Andre WERNER
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.
6570-P50192 2609
EXAMINER
ZAMORA ALVAREZ, ERIC J
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE WERNER, OLAF ANDERSEN,
RALF HAUSER, and CRIS KOSTMANN 1
Appeal2018-002805
Application 14/543,384
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andre Werner et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 11-30. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as MTU Aero Engines AG of
Munich, Germany. Appeal Br. 3.
Appeal2018-002805
Application 14/543,384
BACKGROUND
Sole independent claim 11, reproduced below, illustrates the claimed
invention.
11. A run-in coating for a turbomachine, wherein the
run-in coating is for attaching to a seal between a rotor and a
stator and comprises a metallic scaffold, which scaffold is
formed from an arrangement of metal fibers and comprises
interstices which are filled with an inorganic-nonmetallic filler
material.
REJECTIONS
I. Claims 11-19, 22, 23, 29, and 30 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Turnquist (US 6,547,522 B2, iss. Apr.
15, 2003) and Ainsworth (US 4,639,388, iss. Jan. 27, 1987). Final Act. 6.
II. Claim 20 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Turnquist, Ainsworth, and Kaya (US 5,459,114, iss. Oct.
17, 1995). Final Act. 9.
III. Claim 21 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Turnquist, Ainsworth, and Bossmann (US 2002/0132131
Al, pub. Sept. 19, 2002). Final Act. 10.
IV. Claims 24 and 27 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Turnquist, Ainsworth, and Spadafora (US 4,960,817, iss.
Oct. 2, 1990). Final Act. 11.
V. Claims 25 and 26 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Turnquist, Ainsworth, Spadafora, and Hazel (US
7,666,528 B2, iss. Feb. 23, 2010). Final Act. 12.
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VI. Claim 28 also stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Turnquist, Ainsworth, Spadafora, and Hazel. Final Act.
13-14.
ANALYSIS
Rejection I- Claims 11-19, 22, 23, 29, and 30
Claims 11-14, 18, 19, 22, 23, 29, and 30
Regarding claim 11, the Examiner finds that Turnquist discloses a seal
assembly for turbines, including "a run-in coating (abradable portion, 150)"
comprising "a metallic scaffold (150) ... formed from an arrangement of
metal fibers ... that are pressed or sintered together or infiltrated with resin
or other material .... " Final Act. 6 (citing Turnquist 3:57---61). The
Examiner then finds that Ainsworth discloses abradable "ceramic-metal"
seals for use in "gas turbines," the seals including a ceramic layer (IOA) for
penetrating "into and through the interstices of a woven wire strip" (12A) to
"obtain a reinforced, strong mechanical bond between the ceramic and an
anchoring matrix consisting of a plurality of interwoven wires." Id. at 6-7
( citing Ainsworth 8: 61---64 ).
The Examiner concludes that it would have been obvious to modify
Turnquist to use Ainsworth's "ceramic as the filling material between the
interstices of the metallic scaffold because this would result in a reinforced
and strong mechanical bond between the ceramic and the ... interwoven
wires." Id. at 7 (citing Ainsworth 8:61---63). "Further, the metal fibers,
which form the anchoring system, minimize failure of the ceramic from
shear strains and tensile strains." Ans. 6 ( citing Ainsworth 4:25-30).
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Appellants argue claims 11-14, 18, 19, 22, 23, 29, and 30 as a group.
Appeal Br. 6-14. We select claim 11 as representative. Claims 12-14, 18,
19, 22, 23, 29, and 30 stand or fall with claim 11. Appellants first argue that
that Turnquist's abradable seal embodiment, relied upon by the Examiner,
"is only one of several and clearly not a preferred embodiment." Appeal Br.
6-7.
To the extent that Appellants intend the existence of multiple
embodiments to evidence Turnquist teaching away from the Examiner's
proposed combination with Ainsworth, the Examiner responds that
"[a]lthough Turnquist discloses of multiple embodiments, no preference is
given to a particular embodiment," and "disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments (see MPEP § 2123 (II))." Ans. 3.
The Examiner is correct. We are not persuaded by Appellants'
argument, because, "[ t ]he prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed .... " In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
Appellants also argue that a skilled artisan would not have considered
Ainsworth ( or covering metal fibers with ceramic) when looking to modify
or improve Turnquist's abradable seal portion, because the abradable part of
Turnquist's seal is predominantly "metal fibers which are pressed and
sintered together," whereas the abradable part of Ainsworth's seal "is a
chemically-bonded layer of a ceramic composition." Appeal Br. 8.
According to Appellants, Ainsworth's matrix of interwoven wires "only
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serves to (indirectly) anchor the chemically-bonded abradable layer of a
ceramic composition to the substrate ... and apparently does not take part in
the abrasion of the seal." Id. Appellants contend that this is illustrated by
Ainsworth's Figure 2, which shows that "the metallic anchoring matrix 12A
is ... completely covered by the ceramic layer 1 OA," with "[ t ]he anchoring
effect of the metallic anchoring matrix 12A [being] improved by virtue of
the penetration of the ceramic into and through the interstices of the woven
wire strip." Id. Appellants go on that "at least some" of Ainsworth's
metallic anchoring configurations would not be suitable for abrasion "even if
the anchoring were not covered by the ceramic layer." Id. at 9.
The Examiner responds that Ainsworth's Figure 7 includes sintered
metal fibers 12E embedded in, and mechanically bonded to, a ceramic layer
lOE. Ans. 5 (citing Ainsworth Fig. 7, 8:30, 5:17-20); see Ainsworth 3:51-
57. According to the Examiner, Ainsworth discloses "disadvantages of
solely using a metallic abradable coating seal and of solely using a ceramic
abradable seal," in that "[m]etallic abradables have poor oxidation resistance
and experience melting" and ceramic abradables "exhibit less thermal
expansion or contraction than metals ... and are more likely to fail by
spalling or peeling." Ans. 5. (citing Ainsworth 1:25-38). Ainsworth
proposes "using a ceramic metal composite as an abradable seal." Id. ( citing
Ainsworth 2:64---66, 3:54--55, 7:32-33, 8:61---64).
Appellants reply that Ainsworth's Figure 7 shows metal fibers
"covered by" ceramic material, and reason that because "the metal fibers are
covered by the ceramic material it is apparent that they are not present on the
surface of the abradable seal and thus are necessarily unable to take part in
the abrasion of the seal." Reply Br. 2.
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We are not persuaded by Appellants' argument, because claim 11
does not recite the metallic scaffold being exposed or "taking part in" the
seal abrasion. Claim 11 merely recites a run-in coating comprising a
metallic scaffold "formed from an arrangement of metal fibers" having
"interstices ... filled with an inorganic-nonmetallic filler material." Appeal
Br. 23 (Claims App.). Further, it is not clear why, even if Tumquist's seal
were predominantly metal and Ainsworth's seal were predominantly
ceramic, such fact would deter one skilled in the art from combining aspects
of their abradable seals as set forth in the rejection.
Appellants argue that even if one skilled in the art assumed that
Ainsworth's ceramic material would form a strong mechanical bond with
Tumquist's metal fibers, "there is no reason for covering" Tumquist's metal
fibers "(which are themselves abradable) with an abradable ceramic material
because this would make the metal fibers of TURNQUIST superfluous, at
least as far as their abradable properties are concerned." Appeal Br. 9
( emphasis omitted).
Appellants' arguments regarding superfluity are not persuasive. As
explained above, Ainsworth (1) teaches that solely metallic abradable seals
have poor oxidation resistance and experience melting due to the high
temperatures within a gas turbine engine, (2) ceramic abradable seals exhibit
less thermal expansion or contraction than metals at any temperature and are
more likely to fail by spalling or peeling when subjected to extreme
temperature changes, and (3) proposes "an improved ceramic-metal
composite abradable seal ... , wherein both the ceramic and metal take part
in the abrasion of the seal." Ans. 7 (citing Ainsworth 1:25-27, 1:30-38,
2:62---63). These teachings underlie the Examiner's reasoning that it would
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have been obvious to modify Turnquist with Ainsworth's "ceramic as the
filling material between the interstices of [Turnquist's] metallic scaffold" to
establish "a reinforced and strong mechanical bond between the ceramic and
the anchoring .... " Ans. 8 (citing Ainsworth 7:31-32, 8:61---63).
Turnquest' s metal fibers "would not be superfluous ... because the metal
fibers would serve to minimize failure of the ceramic from shear strains and
tensile strains." Id. (citing Ainsworth 4:25-30). Further, that a device is
suitable for use by itself, does not necessarily make the improvement thereof
non-obvious. Nor does such self-sufficiency teach away from the
modification.
Appellants next comment that "it would have to be asked why" or "in
which way this reinforced and strong mechanical bond between a ceramic
and the pressed and sintered together metal fibers of the abradable portion"
would improve Turnquist's seal, given that Turnquist's seal has an abradable
part consisting of, inter alia, metal fibers and Ainsworth's seal has an
abradable portion consisting of a ceramic material. Appeal Br. 10.
According to Appellants, "the additional use of a ceramic and in particular,
in or as an abradable portion of the seal and consequently, a strong bond
between the metal fibers and such a ceramic, is clearly unnecessary." Id. at
12.
As explained above, the fact that an improvement or modification is
not absolutely necessary does not, itself, establish non-obviousness of the
modification, or teach against the modification.
Appellants further argue that the Examiner erred in finding that
Feltmetalâ„¢, as referenced in Appellants' Specification and Turnquist, is a
sintered metal fiber felt filled with ceramic foam. Appeal Br. 12.
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Appellants contend that Feltmetalâ„¢ "is not filled with anything, let alone
with ceramic foam." Id.
The Examiner acknowledges this error, but concludes that "this
misinterpretation does not change the Examiner's interpretation of the prior
art of record and the claim rejections as discussed above." Ans. 8-9. We
agree with the Examiner. The Examiner's error regarding the composition
of Feltmetalâ„¢ does not establish an error in a finding necessary to establish
obviousness of the claim.
Appellants then argue that Turnquist' s inventors "can be assumed to
have been aware of' Ainsworth's disclosure, "but apparently did not share
the Examiner's opinion." Appeal Br. 13.
The Examiner responds that Turnquist discloses metal fibers
"infiltrated with resin or other material" (Ans. 9. (citing Turnquist 3:58---60)
( emphasis added)) and Ainsworth discloses metal fibers filled with, or
embedded in, ceramic. Id. at 11 (citing Ainsworth 3:54--57, 9:30-34).
Turnquist, thus, contemplated its metal fibers being infiltrated with other
material. Appellants have not explained why one skilled in the art, having
considered both Ainsworth and Turnquist, would not have considered
ceramic to be another suitable material to infiltrate Turnquist's metal fibers
therein. That Turnquist may have known of ceramic, and did not include
ceramic specifically, is not persuasive evidence that one skilled in the art
would not have understood ceramic to be a suitable material for infiltrating
metal fibers in an abradable seal.
Appellants reply that "it is not seen that one of ordinary skill in the art
would consider a ceramic material as the 'other material', for at least the
reason that a resin and a ceramic material are apparently completely
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different from each other." Reply Br. 2. Lacking an explanation regarding
why this is so, and in what specific regard they are different, we are not
persuaded by this argument, and we sustain the rejection of claims 11-14,
18, 19, 22, 23, 29, and 30.
Claims 15-17
Dependent claims 15-17 recite the metal fibers being "formed from
an FeCrAl alloy." The Examiner finds this disclosure in Ainsworth. Final
Act. 7-8 (citing Ainsworth 7:4--8). According to the Examiner, Ainsworth
discloses its "metallic component (i.e. the sintered metal fibers, Col. 3, lines
54-55) [being] made from an iron base alloy (Col. 7, lines 5-6) [ containing]
iron (Fe), 15% of Cr, and 0.2% Al, and therein can be considered as an
FeCrAl alloy." Ans. 11.
Appellants reply that "the alloy referred to by the Examiner
additionally contains inter alia 26% of Ni, 1.3% of Mo, 2% of Ti, 1.35% of
Mn and thus, can clearly not be considered to be an FeCrAl alloy (but rather
an FeCrNiMoTi ... Al alloy)." Reply Br. 4.
Because Ainsworth's alloy deliberately contains other alloying
elements, including a substantial 26% Ni, the Examiner has not stablished
that Ainsworth specifically discloses the claimed FeCrAl alloy. For this
reason, we do not sustain the rejection of claims 15-17.
Rejection II- Claim 20
The Examiner finds that Kaya discloses, for ceramic products
applicable to gas turbines, that "a polysilazane-type polymer substance can
be used to impregnate a metal fiber ... to produce ceramic products ... with
excellent heat and corrosion resistance, high strength, and high reliability."
Final Act. 10 (citing Kaya 3:60-62, 27:16-20). The Examiner concludes
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that it would have been obvious to use a polysilazane-type polymer
substance in the silicon-containing polymer of the proposed combination of
Turnquist and Ainsworth "to produce reinforced ceramic composites with
excellent heat and corrosion resistance, high strength, and high reliability."
Id. (citing Kaya 27:16-20).
In addition to the above arguments relevant to the patentability of
claims 11, 18, and 19, from which claim 20 depends, Appellants argue that
Kaya's "material of high density and high strength is [not] suitable for use in
an (abradable) run-in coating which comprises a (polymer-derived) ceramic
foam." Appeal Br. 16.
The Examiner disagrees, responding that Kaya discloses that its
polysilazane-type polymer substance can be impregnated into a porous
ceramic, "which is analogous to a ceramic foam," and therefore "the
impregnation of a polysilazane-type polymer substance into a metal ceramic
composite [ of the proposed combination of Turnquist and Ainsworth] is
applicable and rendered obvious." Ans. 13.
Appellants reply that Kaya does not relate to subject matter that is
"remotely related to an (abradable) run-in coating for a turbomachine or a
component thereof, let alone to a filler material for filling interstices
between (abradable) metal fibers." Reply Br. 4.
Lacking an explanation of why Kaya's material is not suitable for use
in an abradable run-in coating, or why Kaya's ceramic products applicable
to gas turbines are not related to an abradable run-in coating, we are not
persuaded by Appellants' arguments. We sustain the rejection of claim 20.
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Rejection III- Claim 21
The Examiner finds that Bossmann "relates to a protective coating for
a thermally stressed component, such as a turbine component," and that
Bossmann discloses "a sealing coating (4) applied to the outer surface of a
turbine blade consisting of a silicon carbonitride-based material ... [ the
coating having] sufficient thermal stability along with corrosion, oxidation,
and erosion resistance." Final Act. 10-11 (citing Bossmann ,r,r 20, 21). The
Examiner concludes that it would have been obvious to use Bossmann's
silicon carbonitride-based material to form the ceramic foam of the proposed
combination of Turnquist and Ainsworth, "because this material has
sufficient thermal stability along with corrosion, oxidation, and erosion
resistance ... [ to enhance] the material properties of the coating. Id. at 11.
In addition to the above arguments relevant to the patentability of
claims 11 and 18, from which claim 21 depends, Appellants argue that there
is "an apparent and significant difference between [Bossmann's] protective
coating and an ( abradab le) run-in coating," such that one skilled in the art
"would not consider [Bossmann's] protective coating for a thermally
stressed component for protection from corrosion and/or oxidation ... to be
suitable (also) for use as and in any respect similar to a run-in coating and
vice versa." Appeal Br. 17-18.
The Examiner responds that, although there maybe be "a significant
difference between a protective coating and a run-in coating," the rejection
only relies on Bossmann to teach that "silicon carbonitride has the
advantageous benefits of providing thermal stability, corrosion resistance,
oxidation resistance, and erosion resistance." Ans. 14 ( citing Bossmann
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Appellants reply that Bossmann does not relate to subject matter that
is "remotely related to an (abradable) run-in coating for a turbomachine or a
component thereof, let alone to a filler material for filling interstices
between (abradable) metal fibers." Reply Br. 4.
Lacking an explanation of the difference between Bossmann's
protective coating and an abradable run-in coating, why such a difference
would prevent a skilled artisan from considering Bossmann's protective
coating for use in an abradable run-in coating, or why Bosmann's protective
coating for turbine components is not related to an abradable run-in, we are
not persuaded by Appellants' arguments, and we sustain the rejection of
claim 21.
Rejection IV- Claims 24 and 27
Regarding claims 24 and 27, which depend from claim 11 and recite
the filler material comprising self-curing cement, and for which the
Examiner relies on the disclosure of Spadafora, Appellants argue that (1) the
claims are patentable for the reasons set forth above regarding claim 11, and
(2) one skilled in the art would not consider a protective coating that
prevents corrosion and is thermally stable at high temperatures to be suitable
for use as a run-in coating, as argued above regarding Bossmann in
Rejection III. Appeal Br. 19.
The Examiner responds that Spadafora discloses using organic
solvents to maintain a coating in a liquid state until application, and to aid in
drying the coating, and that blending solvents into a silicon-based resin
allows a coating thereof to dry within eight hours and partially self-cure at
room temperature and completely cure upon first high temperature use. Ans.
15. According to the Examiner, one skilled in the art would appreciate the
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advantages of using organic solvents found in Spadafora's coatings "for
the[ir] beneficial curing properties." Id. at 15-16.
Appellants reply that Spadafora does not relate to subject matter that
is "remotely related to an (abradable) run-in coating for a turbomachine or a
component thereof, let alone to a filler material for filling interstices
between (abradable) metal fibers." Reply Br. 4.
Lacking an explanation of why a skilled artisan would not consider a
protective coating that prevents corrosion and is thermally stable at high
temperatures to be suitable for use as a run-in coating, or why Spadafora's
disclosure is not remotely related to abradable run-in coatings for a
turbomachine or a component thereof, we are not persuaded by Appellants'
arguments. We, therefore, sustain the rejection of claims 24 and 27.
Rejections V and VI- Claims 25, 26, and 28
Regarding dependent claims 25, 26, and 28, which recite the self-
curing cement of the filler material comprising calcium phosphate cement,
the Examiner finds this disclosure in Hazel and concludes that its use would
have been obvious in the combination of Turnquist, Ainsworth, and
Spadafora. Final Act. 13. Appellants argue that they "are unable to
recognize any relationship between the properties required for an ( abradable)
run-in coating and the properties required for a coating which is to protect a
ceramic thermal barrier coating from dissolution or spallation due to
contaminants, and neither has the Examiner provided any explanation in this
regard." Appeal Br. 20.
The Examiner responds that Hazel discloses sacrificial coatings for
protecting thermal barrier coatings on gas turbines "from dissolution or
spallation due to contaminants" to enhance coating life and reduce part
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failure. Ans. 16-17 (citing Hazel 3:36-40, 4:47-53). According to the
Examiner, one skilled in the art "would appreciate the advantages" of using
Hazel's sacrificial coating, particularly because Ainsworth discloses "that
ceramic laminates tend to fail by spalling," which would be prevented by
using Hazel's coating, such that "the incorporation of sacrificial coatings
(which contain calcium phosphate) into a metal ceramic composite is
applicable." Id. at 17 (citing Ainsworth 1:36-38).
Appellants reply that Hazel does not relate to subject matter that is
"remotely related to an (abradable) run-in coating for a turbomachine or a
component thereof, let alone to a filler material for filling interstices
between (abradable) metal fibers." Reply Br. 4.
Appellants' inability "to recognize any relationship between the
properties required for an (abradable) run-in coating and the properties
required for a coating ... to protect a ceramic thermal barrier coating from
dissolution or spallation" is not indicative of Examiner error. The Examiner
set forth a reason why a skilled artisan would modify the combination of
Turnquist, Ainsworth, and Spadafora to include Hazel's sacrificial coating
(Final Act. 13, 14; Ans. 17), and Appellants have not explained why the
Examiner's reasoning lacks a rational basis. For this reason, we sustain the
rejection of claims 25, 26, and 28.
DECISION
We AFFIRM the rejection of claims 11-14, 18, 19, 22, 23, 29, and 30
as unpatentable over Turnquist and Ainsworth.
We REVERSE the rejection of claims 15-17 as unpatentable over
Turnquist and Ainsworth.
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We AFFIRM the rejection of claim 20 as unpatentable over Turnquist,
Ainsworth, and Kaya.
We AFFIRM the rejection of claim 21 as unpatentable over Turnquist,
Ainsworth, and Bossmann.
We AFFIRM the rejection of claims 24 and 27 as unpatentable over
Turnquist, Ainsworth, and Spadafora.
We AFFIRM the rejection of claims 25 and 26 as unpatentable over
Turnquist, Ainsworth, Spadafora, and Hazel.
We AFFIRM the rejection of claim 28 as unpatentable over Turnquist,
Ainsworth, Spadafora, and Hazel.
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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