14788005 - (D) (P.T.A.B. Apr. 30, 2020)

Rolls-Royce Corporation

Patent Trials and Appeals BoardApr 30, 2020

14788005 - (D) (P.T.A.B. Apr. 30, 2020)

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. 14/788,005 06/30/2015 Jun Shi 1106-075US01/RCA10954 1008 120486 7590 04/30/2020 Shumaker & Sieffert, P.A. Rolls-Royce Corporation 1625 Radio Drive Suite 100 Woodbury, MN 55125 EXAMINER PETERS, BRIAN O ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 04/30/2020 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): pairdocketing@ssiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN SHI, KANG N. LEE, and ANN BOLCAVAGE Appeal 2019-005614 Application 14/788,005 Technology Center 3700 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 7, 9–11, 13–18, and 21–26. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Rolls-Royce Corporation. Appeal Br. 3. Appeal 2019-005614 Application 14/788,005 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to coated components including cooling holes. Claims 7, 11, and 22 are independent. Claim 7, reproduced below, is illustrative of the claimed subject matter: 7. An article comprising: a substrate; a plurality of cooling holes in the substrate; and a thermal barrier or environmental barrier coating on the substrate, wherein the thermal barrier or environmental barrier coating comprises an oxide-based coating, wherein the thermal barrier or environmental barrier coating defines a plurality of apertures formed in the thermal barrier or environmental barrier coating, wherein a location of each aperture of the plurality of apertures corresponds to a respective location of each cooling hole of the plurality of cooling holes, wherein the thermal barrier or environmental barrier coating covers and partially occludes each cooling hole of the plurality of cooling holes, wherein a cooling hole of the plurality of cooling holes defines a diameter D1, measured parallel to an outer surface of the substrate, wherein an aperture of the plurality of apertures defines a diameter D2 above the cooling hole, wherein the diameter D2 is measured parallel to the outer surface of the substrate, wherein D2 is less than D1, and wherein the thermal barrier or environmental barrier coating does not extend into any of the plurality of cooling holes. Appeal 2019-005614 Application 14/788,005 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Schwedland US 3,606,572 Sept. 20, 1971 Hattori US 6,033,619 Mar. 7, 2000 Klein US 7,909,581 B2 Mar. 22, 2011 Bunker US 2012/0163984 A1 June 28, 2012 REJECTIONS I. Claim 25 is rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 4. II. Claims 7, 9, 11, 15, 17, 18, and 22–25 are rejected under 35 U.S.C. § 103 as unpatentable over Klein and Schwedland. Final Act. 4. III. Claims 10 and 26 are rejected under 35 U.S.C. § 103 as unpatentable over Klein, Schwedland, and Hattori. Final Act. 10. IV. Claims 13, 14, 16, and 21 are rejected under 35 U.S.C. § 103 as unpatentable over Klein, Schwedland, and Bunker. Final Act. 11. OPINION Rejection I, Indefiniteness The Examiner considers that claim 25 is unclear because it depends from itself. Final Act. 4. Appellant does not address Rejection I. See Appeal Br. 6–14. Accordingly, this rejection is summarily affirmed. Rejection II, Obviousness Based on Klein and Schwedland The Examiner finds that Klein discloses many of the limitations of claim 7 including a turbine blade having a substrate with a plurality of Appeal 2019-005614 Application 14/788,005 4 cooling holes defining a diameter D1 and a coating on the substrate having a corresponding plurality of apertures defining a diameter D2, but that Klein does not disclose that the coating covers and partially occludes each of the plurality of cooling holes, and that D2 is less than D1. Final Act. 4–5. The Examiner finds that Schwedland discloses a turbine blade having a plurality of layers and that an outermost layer includes a cooling hole smaller than holes in other layers. Id. at 5. The Examiner concludes that it would have been obvious to modify the cooling holes of Klein to partially occlude inner cooling holes “in order to provide ample cooling airflow to the outermost cooling hole and to meter out the proper amount of cooling airflow from the outermost cooling hole.” Id. The Examiner rejects independent claims 11 and 22 based on similar findings and reasoning. Appellant argues, inter alia, that “Klein and Schwedland are directed to different technical solutions to cooling a turbine blade.” Appeal Br. 10. According to Appellant, Schwedland uses holes of a particular shape and having a particular arrangement in order to provide sufficient cooling, and that a person having ordinary skill in the art would understand that Klein does not need a similar arrangement because Klein uses a thermal barrier coating for cooling. Id. at 10–11. The Examiner responds that Schwedland’s holes correspond to Klein’s holes based on the location of the layer, not whether the layer is characterized as a substrate or a coating. Ans. 6. According to the Examiner, Klein already has a coating, and “is being modified merely to change cooling hole size based upon the location of the layer the cooling holes are located in as established by Schwedland.” Id. The Examiner concludes that “[t]he rejection is not so narrow as to only contemplate Appeal 2019-005614 Application 14/788,005 5 modifying coating layer. The rejection is broad enough to contemplate modifying Klein’s substrate and/or coating.” Ans. 7. Appellant replies that the Examiner is ignoring the functional and compositional differences between Schwedland’s layers and Klein’s coating. Reply Br. 2. Appellant asserts that Klein’s coating 10 acts as a thermal insulator and functions to lower the temperature of the Klein’s substrate 4, and is applied by a vapor deposition process, whereas Schwedland uses layers of heat resistant metal to define the airfoil and relies on the arrangement of the holes so that cooling air passing through the holes cools the airfoil. Id. at 3. Appellant thus argues that, based on these differences in composition and function, a person having ordinary skill in the art would not have modified Klein’s substrate 4, layer 7, or layer 10, as proposed by the Examiner. Appellant has the better position. Klein discloses that components such as turbine blades and vanes, include “protective layers protecting the component against corrosion or excessive introduction of heat.” Klein, 1:19–21. Klein discloses that the protective layer is a coating applied “by means of suitable coating processes, such as for example electron beam physical vapor deposition (EB-PVD).” Id. at 5:42–44. Klein also discloses that the component can be refurbished by removing the protective layers from the components, repairing, if necessary, and recoating the component so that the component can be reused. Id. at 5:45–51. As Appellant correctly notes, Klein includes cooling holes 16 and covered safety cooling holes 13 with the covered safety cooling holes 13 “arranged at locations where, when the component 1 is in operation, no additional or further film cooling is required on account of the presence of the thermal barrier coating 10.” Appeal 2019-005614 Application 14/788,005 6 Klein, 2:61–64; Appeal Br. 10. If the thermal barrier coating flakes off or is abraded, the safety cooling holes will open to provide additional cooling. Id. at 3:1–4. As such, we agree with Appellant that a coating as in Klein has a specific known composition and function that is distinct from those in the blade structure of Schwedland. In Schwedland, turbine vanes and blades are formed from multilayer metal sheets, and Schwedland improves the leading edge structure of these components “to facilitate the cooling of the leading edge and make it more feasible to form such laminated sheet metal blades with relatively sharp leading edges from difficultly workable material such as certain high temperature alloys.” Schwedland, 1:30–37. Schwedland’s improvement is attained, in part, by forming the holes in echelon “so that they only partially overlap,” and by forming rows of holes in a diamond shape “so that after folding the leading edge there will always be at least a small hole left to let the leading edge cooling air out, thus making the design nearly insensitive to forming irregularities which might seal off the air supply.” Id. at 3:12–21. Because partial closing of the inner holes occurs due to the folding, Schwedland forms the holes in the inner layers “much larger than the outlet holes 29, [so that] ample air can get through the holes in the other layers to reach the holes in the outside layer.” Id. at 3:61–70. Schwedland discloses that this leading edge structure enables production of “a relatively sharp fold at the leading edge without cracking or loss of structural integrity of the laminated and bonded sheet metal, while preserving a structure which provides for flow of air through numerous small holes or pores in the leading edge for transpiration cooling.” Id. at 1:46–52. Appeal 2019-005614 Application 14/788,005 7 We agree with Appellant that, based on the differences in the function and composition of the cooling holes of Klein and Schwedland, one of ordinary skill in the art would not have found it obvious, based on the teachings of Schwedland, to modify Klein in the manner proposed by the Examiner. First, the term “thermal barrier coating” is a recognized term in the art that relates to barrier layers that are applied by a process such as a vapor deposition process and then holes are formed. Klein, 4:1–11. By contrast, the holes in Schwedland are first formed in each sheet and then the sheets are laminated together so that the overlying sheet covers and partially occludes the hole below. Schwedland, 3:1–21. The Examiner does not identify evidence indicating that these processes are interchangeable. Second, as Appellant correctly notes, Klein’s thermal barrier coating is designed to protect the substrate to obviate the need for additional cooling. See Appeal Br. 10. Specifically, the coating of Klein forms a thermal barrier that protects the substrate, but is designed to be abraded, and once the coating is worn down and the thermal protection is reduced, additional cooling would occur by safety cooling holes 13 opening. Klein, 3:1–4. The Examiner does not provide a reasoned technical explanation as to how the proposed modification would affect Klein’s cooling performance once the coating is abraded. Third, Schwedland makes the inner holes larger than the outermost hole because the inner holes are partially closed when the blade is folded. Schwedland, 3:61–63. Given that Klein forms his holes using a different process than Schwedland, and relies on the thermal barrier abrading to adjust the cooling rate, and given that Klein’s blade is not folded, the Examiner has not provided sufficient technical reasoning showing that the proposed Appeal 2019-005614 Application 14/788,005 8 modification would have been obvious to a person of ordinary skill in the art. We therefore conclude that the Examiner’s reasoning, i.e., “in order to provide ample cooling airflow to the outermost cooling hole and to meter out the proper amount of cooling airflow from the outermost cooling hole,” is not supported by a rational underpinning. Accordingly, we reverse the Examiner’s rejection of independent claims 7, 11, and 22, and claims 9, 15, 17, 18, and 23–25 depending therefrom as unpatentable over Klein and Schwedland. Rejections (III) and (IV); Hattori, and Bunker Claims 10, 13, 14, 16, 21, and 26 depend from one of claims 7, 11, and 22. Appeal Br. 16–21 (Claims App.). The Examiner’s use of Hattori and Bunker does not remedy the deficiency discussed above regarding Rejection (II). See Final Act. 11–13. Accordingly, for the same reasons, we do not sustain Rejections (III) and (IV). NEW GROUND OF REJECTION As discussed above, in light of the functional and structural differences between Klein’s coating and Schwedland’s laminated layers, the Examiner did not establish that one of ordinary skill in the art would have found it obvious to combine the teachings of Klein with those of Schwedland. However, we find that the claim limitations for which the Examiner relied upon Schwedland are found in Bunker. Specifically, Bunker teaches that a thermal barrier or environmental barrier coating 130 covers and partially occludes each cooling hole 112 of a plurality of cooling holes, and that a diameter, D2, of the aperture 132 in the barrier coating Appeal 2019-005614 Application 14/788,005 9 overlying the cooling hole is less than a diameter D1 of the cooling hole. Bunker ¶¶ 67, 71, Fig. 9. Bunker, similar to Klein, discloses a barrier coating including “MCrAl(X), where ‘M’ is an element selected from the group consisting of Fe, Co and Ni and combinations thereof; and ‘X’ is yttrium, tantalum, silicon, hafnium, titanium, zirconium, boron, carbon, or combinations thereof.” Bunker ¶ 62; Klein, 5:28–34; see also Spec. ¶ 30. As in Klein, Bunker discloses that holes can be formed by laser or electron beam. Bunker ¶¶ 50, 65; Klein, 3:53–56; see also Spec. ¶ 57. Also similar to Klein, Bunker discloses that embodiments that include a thermal barrier coating can include additional holes that are opened if the coating is damaged or separates from the substrate. Bunker ¶ 82; Klein, 2:64–3:4; see also Spec. ¶ 26. Thus, Bunker discloses a cooling arrangement having a similar function and composition to that of Klein. Bunker also discloses that variations in the size of the apertures, whether they are angled, and their alignment “will be determined by the particular cooling configuration desired for the component.” Bunker ¶ 71. Accordingly, we determine that a person of ordinary skill in the art would have found it obvious to modify the plurality of apertures in Klein’s coating to define a diameter D2 above Klein’s cooling hole 16 having a diameter D1 so that D2 is less than D1. One of ordinary skill in the art would have been capable of applying this known method of aperture formation to Klein’s device, and the results would have been predictable to one of ordinary skill in the art. See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). Here, the size of the aperture “will be determined by the particular cooling configuration desired for the component.” Bunker ¶ 71. Accordingly, for the reasons discussed Appeal 2019-005614 Application 14/788,005 10 above, we enter a NEW GROUND OF REJECTION of independent claims 7, 11, and 22 as unpatentable over Klein and Bunker. Although we decline to reject dependent claims 9, 10, 13–18, 21, and 23–26 under our discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our decision to decline does not mean the remaining claims are patentable. Rather, we merely leave the patentability determination of these claims to the Examiner. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 25 112(b) indefiniteness 25 7, 9, 11, 15, 17, 18, 22–25 103 Klein, Schwedland 7, 9, 11, 15, 17, 18, 22–25 10, 26 103 Klein, Schwedland, Hattori 10, 26 13, 14, 16, 21 103 Klein, Schwedland, Bunker 13, 14, 16, 21 7, 11, 22 103 Klein, Bunker 7, 11, 22 Overall Outcome: 25 7, 9–11, 13–18, 21–24, 26 7, 11, 22 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2019-005614 Application 14/788,005 11 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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; 37 C.F.R. § 41.50(b)