Strock, Christopher W. et al.

Patent Trials and Appeals Board

Apr 29, 2020

13586099 - (D) (P.T.A.B. Apr. 29, 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.
13/586,099 08/15/2012 Christopher W. Strock 67097-1887PUS1;59142US01 7629
54549 7590 04/29/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
FIGG, TRAVIS M
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
04/29/2020 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER W. STROCK, MICHAEL MALONEY,
DAVID A. LITTON, BENJAMIN JOSEPH ZIMMERMAN, and
BRIAN T. HAZEL

Appeal 2019-003919
Application 13/586,099
Technology Center 1700
____________

Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4–12, 18, and 20–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Aug. 15, 2012
(“Spec.”), the Final Office Action dated Aug. 30, 2018 (“Final Act.”), the
Appeal Brief filed Jan. 30, 2019 (“Appeal Br.”), the Examiner’s Answer
dated Feb. 21, 2019 (“Ans.”), and the Reply Brief filed Apr. 22, 2019
(“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies United Technologies Corporation as the
real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The subject matter on appeal relates to a thermal barrier coating
(TBC) for application to a gas turbine engine component. Spec. ¶ 1. Claim 1
is illustrative and reproduced from the Claims Appendix to the Appeal Brief
(disputed limitations italicized).
1. A component, comprising:
a substrate;
a thermal barrier coating deposited on at least a portion
of said substrate;
an outer layer deposited on at least a portion of said
thermal barrier coating, wherein said outer layer includes a
material that absorbs energy in response to an impact event
along at least a portion of said outer layer, wherein said outer
layer includes an outermost surface that includes a second
porosity that is greater than a first porosity of said thermal
barrier coating;
wherein said first porosity is in a first range of 5 to 30
volume percent and said second porosity is in a second range of
15 to 65 volume percent, wherein said first range and said
second range are overlapping ranges; and
wherein said thermal barrier coating includes a first
modulus of elasticity and said outer layer includes a second
modulus of elasticity that is a reduced modulus of elasticity as
compared to said first modulus of elasticity, and said first
modulus of elasticity is in the range of 10 to 50 MPa and said
second modulus of elasticity is in the range of 1 to 30 MPa.
Claim 18 is also independent and recites the same disputed
limitations as claim 1.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
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thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and Appellant’s arguments, we are not persuaded of reversible
error in the appealed rejections.
The Examiner rejects claims 1, 4–12, 18, and 20–22 as follows for the
reasons provided in the Final Office Action. Final Act. 2–6.
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 4, 6–10, 12, 18, 20–22 102(b) Stamm
3 as evidenced by
Kulkarni4
5 103(a) Stamm, Tholen,5 Kulkarni
11, 22 103(a) Stamm, Guo6
Appellant separately argues the rejections of claims 1, 5, 11, and 22.
Appeal Br. 4–7. Accordingly, claims 4, 6–10, 12, 18, 20, and 21 will stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Claims 1, 5, 11, and 22
are addressed below.
Claim 1
Appellant contends the Examiner erred in rejecting claim 1 over
Stamm because (1) Stamm does not explicitly disclose that the ranges for the

3 US 2009/0311508 A1, published Dec. 17, 2009.
4 US 2009/0074961 A1, published Mar. 19, 2009.
5 US 2009/0097970 A1, published Apr. 16, 2009.
6 Huibin Xu, Hongbo Guo, Fushun Liu, Shengkai Gong, Development of
gradient thermal barrier coatings and their hot-fatigue behavior, 130
SURFACE AND COATINGS TECHNOLOGY 133–139 (2000).
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first and second porosity are overlapping ranges and (2) Stamm is silent
regarding the first and second modulus of elasticity required by the claim.
Appeal Br. 4–5. According to Appellant, Kulkarni does not cure Stamm’s
deficiencies, but, rather, teaches away from the claimed porosity and moduli
of elasticity ranges by its disclosure that the outer layer has a lower porosity
and higher modulus of elasticity compared to the inner layer. Id. at 5 (citing
Kulkarni ¶ 7).
The Examiner responds that the recitation “wherein said first range
and said second range are overlapping ranges” does not further narrow the
claim requirement that the first and second porosity fall within the claimed
ranges of 5–30 and 15–65 volume percent, respectively. Ans. 14. The
Examiner finds Stamm discloses a porosity between 5 and 11 volume
percent for the first porosity, which is within the claimed range of 5–30
volume percent. Id. at 15 (citing Stamm ¶ 23). The Examiner also finds
Stamm discloses a second porosity of the outer ceramic barrier layer of
between 20 and 27 volume percent, which is within the claimed range of 15–
65 volume percent. Id. (citing Stamm ¶ 23). According to the Examiner, the
claimed ranges are anticipated and aligned with Appellant’s disclosure that
the outermost layer includes a second porosity that is greater than the first
porosity of the thermal barrier layer. Id. at 15–16.
Regarding the claimed elastic modulus ranges, the Examiner responds
that because Stamm discloses the outer layer and thermal barrier coating are
composed of the same material with the same structure such as porosity,
Stamm’s thermal barrier coating and outer layer would necessarily possess
the claimed moduli of elasticity properties. Id. at 16. The Examiner finds
that Kulkarni’s disclosure that the elastic modulus in ceramic coatings is tied
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to the porosity/density of the porous ceramic layers is evidence that Stamm’s
thermal barrier coating and outer layer are expected to intrinsically possess
the same properties as the claimed elastic modulus ranges. Id. (citing
Kulkarni ¶¶ 4, 7, 37).
In the Reply Brief, Appellant maintains that Stamm fails to meet the
claim limitation regarding the porosity ranges, namely that the ranges are
overlapping. Reply Br. 1–2. Appellant asserts that Stamm explicitly states
that its porosity ranges do not overlap, and therefore Stamm cannot
anticipate claim 1. Id. at 1 (citing Stamm ¶ 22). According to Appellant, the
Examiner’s determination that Stamm’s layers inherently possess the
claimed moduli of elasticity is in error because Stamm’s structure is not
substantially identical to the claimed structure since the claimed porosity
ranges extend outside of Stamm’s disclosed porosity ranges. Id. at 3.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims as anticipated by Stamm. Appellant
does not dispute that Stamm discloses porosity ranges for the outer layer and
the thermal barrier coating that are completely encompassed by the porosity
ranges recited in claim 1. The additional recitation in claim 1 regarding the
relationship of the claimed ranges to each other goes to the breadth of the
claimed ranges and does not alter the fact that Stamm’s component
anticipates the claimed component because Stamm’s component meets the
porosity characteristics of the thermal barrier coating and the outer layer
required by claim 1. Thus, the claimed component is anticipated by Stamm
even though the claimed porosity ranges extend beyond those disclosed by
Stamm to the point that the ranges overlap. Ineos USA LLC v Berry Plastics
Corp., 783 F.3d 865, 869 (Fed. Cir. 2015) (holding a claimed range is
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anticipated by a prior art reference if the reference discloses a point within
the range); Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir.
1985) (claim reciting ranges that cover several compositions held anticipated
if one of those compositions is in the prior art).
Appellant’s argument that the Examiner has not demonstrated that
Stamm’s component necessarily possesses the claimed modulus of elasticity
is not persuasive of error for multiple reasons. First, Appellant does not
dispute the Examiner’s finding that the modulus of elasticity is a property of
multilayered ceramic thermal barrier coatings that is tied to the
porosity/density of the porous ceramic layers. Ans. 16 (citing Kulkarni ¶¶ 4,
7, 37). Second, Appellant’s assertion that Kulkarni does not disclose the
claimed modulus of elasticity because Kulkarni’s structure with an outer
layer having a lower porosity is opposite that of the claimed structure
(Appeal Br. 5) does not identify error because the Examiner relies on
Kulkarni only as evidence that modulus of elasticity is tied to porosity and
not for Kulkarni’s structure. Third, Appellant’s assertion that Stamm’s
structure is not substantially identical to claim 1 because claim 1
encompasses broader porosity ranges than Stamm (Appeal Br. 6; Reply Br.
3) does not identify error because Stamm’s porosity ranges are entirely
within the scope of the claimed porosity ranges. Fourth, Appellant’s
argument that because the specific porosity ranges claimed include
combinations not disclosed by Stamm, it cannot be assumed that Stamm
inherently includes the claimed modulus ranges (Appeal Br. 6) does not
identify error because it is premised on the entire range being disclosed for
purposes of anticipation, which is not the test for anticipation as discussed
above. It is also unpersuasive given the lack of evidence in support thereof.
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See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by
counsel cannot take the place of evidence).
The record has a preponderance of evidence that Stamm discloses the
same composition required by claim 1, which justifies requiring Appellant to
prove that Stamm’s product does not necessarily or inherently possess the
claimed modulus of elasticity. See In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (“[T]he PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product. . . . Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products.”). Appellant has not provided any such proof.
The preponderance of the evidence in this appeal record, therefore,
supports the Examiner’s conclusion that the claimed subject matter is
anticipated by Stamm as evidenced by Kulkarni. Accordingly, we sustain the
Examiner’s rejection of claim 1 for the above reasons and those expressed in
the Answer, including the Response to Argument section.
Claims 5, 11, and 22
Appellant contends that the Examiner erred in rejecting claims 5, 11,
and 22, which each depend from claim 1, for the same reasons provided with
respect to claim 1. Appeal Br. 6. Appellant also asserts that Guo fails to
disclose “an interface between said thermal barrier coating and said outer
layer is graded” as recited in claim 22 because Guo discloses a
microstructure and composition distribution that continuously changes
across the thickness of the coating. Id. at 7.
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We do not find Appellant’s arguments persuasive of error for the
reasons discussed above in connection with claim 1. We also do not find
persuasive Appellant’s argument regarding claim 22 because the Examiner
relies on both Stamm and Guo, rather than Guo alone, with respect to the
recited element. The Examiner specifically finds Stamm discloses an
intermediate barrier layer, i.e. interface, that may be present between the
outer layer and the inner layer, i.e. thermal coating layer, which contains a
porosity that gradually changes between the porosity value of the outer layer
and that of the inner layer, and, therefore, is graded. Final Act. 12; Ans. 18
(citing Stamm ¶ 26). One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant does not dispute
the Examiner’s finding that Stamm discloses an interface with a gradual
change in porosity and, thus, a graded interface. Appellant also does not
dispute the Examiner’s finding (Final Act. 12; Ans. 18) that Guo discloses a
benefit for gradient TBC layers.
For these reasons and those the Examiner provides, we affirm the
Examiner’s rejections of claims 5, 11, and 22 under 35 U.S.C. § 103.
TIME PERIOD FOR RESPONSE
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)(iv).
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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 6–10,
12, 18, 20–22 102(b)
Stamm as
evidenced by
Kulkarni
1, 4, 6–10,
12, 18, 20–22
5 103(a) Stamm, Tholen, Kulkarni
5
11, 22 103(a) Stamm, Guo 11, 22
Overall
Outcome
1, 4–12, 18,
20–22

AFFIRMED