United Technologies Corporation

Patent Trials and Appeals Board

Mar 1, 2021

2020001539 (P.T.A.B. Mar. 1, 2021)

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.
15/863,172 01/05/2018 Henry H. Thayer 100340US01-U(17-321) 9889
52237 7590 03/01/2021
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
MCCLURE, CHRISTINA D
ART UNIT PAPER NUMBER
1718
MAIL DATE DELIVERY MODE
03/01/2021 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 HENRY H. THAYER, REBECCA L. RUNKLE,
and DMITRI NOVIKOV
____________

Appeal 2020-001539
Application 15/863,172
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, MONTÉ T. SQUIRE, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–8, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision refers to the Specification filed Jan. 5, 2018 (“Spec.”); Final
Office Action dated Feb. 27, 2019 (“Final Act.”); Advisory Action dated
May 20, 2019 (“Advisory Act.”); Appeal Brief filed July 29, 2019 (“Appeal
Br.”); Supplemental Appeal Brief filed Apr. 20, 2020 (“Suppl. Appeal Br.”);
Examiner’s Answer dated Oct. 3, 2019 (“Ans.”); and Reply Brief filed Dec.
2, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Raytheon Technologies Corporation
as the real party in interest. Suppl. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention relates to a process for coating a gas turbine blade with
an abrasive. Spec. ¶ 6; Abstract. Claim 1 illustrates the subject matter on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief:
1. A process for coating a gas turbine blade with an abrasive,
said process comprising:
positioning said gas turbine blade in a nest, said gas
turbine blade comprising a tip having a top surface,
prepositioning a metal powder material on said top
surface;
fusing said metal powder material to said top surface by
use of a laser to form a base layer on said top surface;
prepositioning an abrasive composite material on said base
layer opposite said top surface;
fusing said abrasive composite material to said base layer
by use of said laser to form an abrasive coating on said base layer;
and
removing said gas turbine blade from said nest.
Appeal Br. 19.
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Condit et al. (“Condit”) US 4,741,973 May 3, 1988
Larsson US 5,989,492 Nov. 23, 1999
Das et al. (“Das”) US 2014/0163717 A1 June 12, 2014
Balbach et al.
(“Balbach”)
US 2016/0160661 A1 June 9, 2016
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1–3 and 5–7 are rejected under 35 U.S.C. § 103 as being
unpatentable over Balbach in view of Das (“Rejection 1”). Ans. 3.
2. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable
over Balbach in view of Das as applied to claim 1 above, and further in view
of Larsson (“Rejection 2”). Ans. 9.
3. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable
over Balbach in view of Das as applied to claim 1 above, and further in view
of Condit (“Rejection 3”). Ans. 11.
OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejections based essentially on the factual findings and reasons the Examiner
provides in the Answer, Advisory Action, and Final Office Action. We add
the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 1–3 and 5–7 under § 103 as obvious over
Balbach in view of Das. Ans. 3. Appellant presents argument for the
patentability of claims 1–3 and 5–7 as a group. Appeal Br. 9. We select
independent claim 1 as representative and claims 2, 3, and 5–7 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Balbach and Das
suggests a process for coating a gas turbine blade satisfying the limitations
of claim 1 and would have rendered the claim obvious. Ans. 3–6.
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Appellant argues the Examiner’s rejection should be reversed because
the proposed combination of Balbach and Das would change the principle of
operation of Balbach. Appeal Br. 13 (“[T]he modification the Office Action
proposes eliminates the principle operational technique of the Balbach et al.
reference.”); Reply Br. 4. Appellant contends the principle of operation of
Balbach’s process uses a laser metal forming process (i.e., a laser melting
deposition process) to form the abrasive coating layer wherein abrasive
particles and matrix powder particles are mixed in a powder nozzle,
transported by a carrier gas and then coaxially injected via the powder
nozzle around a focused, high intensity laser beam to form a melt pool.
Appeal Br. 10–11 (citing Balbach ¶¶ 18–20, 22, Fig. 5), 14; Reply Br. 1.
Appellant contends Das’s process is completely different and, in
contrast, uses a laser melting technique (i.e., a layer by layer additive
manufacturing process) to form the abrasive coating wherein material is
prepositioned on the top surface of the blade and fused to the blade tip by
use of a laser. Appeal Br. 13–14; see also Reply Br. 2–3.
Appellant argues that, in light the differences between Balbach’s and
Das’s processes, the modification of Balbach in view of Das the Examiner
proposes would eliminate “key process steps” of Balbach, and thus would
eliminate Balbach’s principle of operation. Appeal Br. 13 (arguing Balbach
would “no longer mix the abrasive particles and the matrix material particles
in the powder nozzle, no longer transport the particles by a carrier gas . . .
and no longer coaxially inject the mixed particles as a focused jet of powder
into the melt pool”), 14 (arguing the combination “eliminates the powder
nozzle injection” and “eliminates any melt pool disturbance caused by the
powder blowing mechanism of Balbach”).
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Appellant further argues the proposed combination of Balbach and
Das does not teach or suggest the claimed process and is based on
impermissible hindsight. See Appeal Br. 9 (“The combination of Balbach
and Das references fails to teach or suggest a process for coating a gas
turbine blade with an abrasive . . . as claimed in claim 1.”), 17 (arguing the
“only way to arrive at the claimed invention starting from the primary
reference of Balbach et al. to Das is to use hindsight”); Reply Br. 4 (arguing
the combination of prior art references “is purely motivated through
impermissible hindsight”).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based essentially on the factual findings and
reasons the Examiner provides at pages 3–6 and 13–16 of the Answer, pages
2–5 of the Advisory Action, and pages 3–6 of the Final Office Action, which
a preponderance of the evidence supports.
Contrary to what Appellant argues (Appeal Br. 13–14), on this appeal
record, we agree with the Examiner that the proposed combination of
Balbach and Das would not change the principle of operation of Balbach. As
the Examiner finds (Ans. 3, 13), Balbach teaches a process for coating a gas
turbine blade with an abrasive coating and that the principle of operation of
Balbach is providing a coated substrate having an oxidation-resistant coating
consisting of a wear-resistant abrasive coating layer. Balbach, Abstract, ¶¶ 1,
30, Figs. 1, 3.
As the Examiner further finds and explains (Ans. 13), although
Balbach discusses use of laser metal forming as a process to form an
abrasive coating, the benefits thereof, and reasons it may be preferable for
use in certain embodiments (Balbach ¶¶ 18–19, 36, Fig. 5), such disclosure
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is exemplary or of preferred embodiments and does not limit or negate
Balbach’s broad disclosure regarding its principle of operation and
suggestion that laser metal forming may not be required in other
embodiments (id. ¶ 35). See In re Applied Materials, Inc., 692 F.3d 1289,
1298 (Fed. Cir. 2012) (“A reference must be considered for everything that
it teaches, not simply the described invention or a preferred embodiment.”);
see also In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not
limited to the disclosure of specific working examples.”).
The Examiner also provides a reasonable basis why one of ordinary
skill in the art would have been motivated to modify Balbach’s process in
view of Das’s teachings to arrive at the claimed invention and had a
reasonable expectation of success. Ans 4–6, 13–16; see also KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or
problem known in the art can provide a reason for combining the elements in
the manner claimed).
As the Examiner finds (Ans. 4–5), Das teaches a process for coating a
gas turbine blade with an abrasive coating wherein a layer of abrasive/metal
powder composite material is prepositioned onto the top surface of the blade
and fused to the blade using a laser to form an abrasive coating. Das ¶¶ 20,
153, 160, 164, 167, 174, 189, Figs. 5, 6, 9. As the Examiner further finds
(Ans. 5–6, 14–15), Das explicitly teaches that “the use of a pre-placed
powder bed eliminates melt pool disturbance that would be caused by the
powder blowing mechanism used in cladding processes, removing another
potential cause of poor microstructure formation.” Das ¶ 153.
As the Examiner also finds (Ans. 14), the modification of Balbach in
view of Das would provide for laser forming of the coating onto the
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substrate so that the powdered material melts and fuses to the surface and
forms an epitaxial layer, with the additional benefit of eliminating melt pool
disturbance that can cause poor microstructure formation.
Based on the above findings and analysis, as the Examiner determines
(Ans. 5–6, 14–16), the modification of Balbach in view of Das the Examiner
proposes would not change the principle of operation of Balbach. Rather, as
the Examiner explains, because Das teaches that use of a pre-placed powder
bed eliminates melt pool disturbances caused by the powder blowing
mechanism, which provides an improvement over Balbach’s process, we
determine the principle of operation of Balbach would be maintained and
improved in the process of Balbach in view of Das.
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings and analysis. Appellant’s contention that the
combination of the Balbach and Das references fails to teach or suggest the
process of claim 1 (Appeal Br. 9) is not persuasive because it is conclusory
and, without more, does not show reversible error in the Examiner’s
findings. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
Appellant’s contentions that the “only way to arrive at the claimed
invention starting from the primary reference of Balbach et al. to Das is to
use hindsight” (Appeal Br. 17) and the combination “is purely motivated
through impermissible hindsight” (Reply Br. 4) are not persuasive because
they too are conclusory. De Blauwe, 736 F.2d at 705. Moreover, on this
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appeal record, we find the Examiner’s rejection is based on explicit
disclosures in Balbach and Das and what those disclosures considered as a
whole reasonably would have suggested to one of ordinary skill in the art,
rather than based on impermissible hindsight, as Appellant argues. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (acknowledging that “[a]ny
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning” but such reconstruction is proper “so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure”).
Accordingly, we affirm the Examiner’s rejection of claims 1–3 and
5–7 under 35 U.S.C. § 103 as obvious over Balbach and Das.
Rejections 2 and 3
In response to the Examiner’s § 103 rejections of claim 4 as obvious
over Balbach, Das, and Larsson (Rejection 2) and claim 8 as obvious over
Balbach, Das, and Condit (Rejection 3), Appellant argues the rejections
should be reversed for principally the same reasons it presents above in
response to the Examiner’s rejection of claim 1. See Appeal Br. 9, 15–18
(arguing the combination of Balbach and Das is impermissible and would
change the principle of operating of Balbach); Reply Br. 4 (“[T]he
combination of Balbach et al. with Das/Larsson/Condit is purely motivated
through impermissible hindsight and would change the principle of
operation of the primary reference”).
Thus, based on the factual findings, analysis, and conclusions the
Examiner provides in this appeal record, and for principally the same
reasons we discuss above for affirming the Examiner’s rejection of claim 1
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as obvious over Balbach and Das, we affirm the Examiner’s rejection of
claim 4 under 35 U.S.C. § 103 as obvious over Balbach, Das, and Larsson
and rejection of claim 8 under 35 U.S.C. § 103 as obvious over Balbach,
Das, and Condit.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–3, 5–7

103 Balbach, Das 1–3, 5–7
4 103 Balbach, Das,
Larsson
4
8 103 Balbach, Das,
Condit
8
Overall
Outcome
1–8

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).
AFFIRMED