Ex Parte Bewlay et al

Patent Trial and Appeal BoardApr 28, 2016

13545625 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/545,625 07/10/2012 6147 7590 05/02/2016 GENERAL ELECTRIC COMPANY GLOBAL RESEARCH ONE RESEARCH CIRCLE BLDG. Kl-3A59 NISKAYUNA, NY 12309 FIRST NAMED INVENTOR Benard Patrick Bewlay 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. 228946 -2 7378 EXAMINER SCHLEIS, DANIEL J ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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 BENARD PATRICK BEWLAY, PAZHAYANNUR RAMANATHAN SUBRAMANIAN, JOSEPH DAVID RIGNEY, RICHARD DIDOMIZIO, and VO RAMON SUP ATARA W ANICH DHEERADHADA 1 Appeal2014-008490 Application 13/545,625 Technology Center 1700 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. Â§ 134(a) from a decision of the Primary Examiner finally rejecting claims 1-10 and 12-20. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is General Electric Co. Appeal Brief filed March 31, 2014 ("Br.") at 2. 2 Final Action mailed September 30, 2013 ("Final Act.") and the Examiner's Answer mailed May 22, 2014 ("Ans.") at 2--4. Appeal2014-008490 Application 13/545,625 The subject matter on appeal relates to a coating for promoting oxidation resistance of a niobium alloy substrate. Br. 3. The coating is useful for components that are exposed to high temperature environments, such as in a gas turbine engine. Id. Claim 1 is illustrative of the claims on appeal, and reproduced below from the Claims Appendix of the Appeal Brief: 1. A coating capable of promoting the oxidation resistance of a surface of a niobium-based substrate, wherein the coating is formed from a composition containing greater than 30 atomic percent to about 60 atomic percent molybdenum, silicon, and at least one of niobium, titanium, chromium, hafnium, iron, rhenium, tantalum, and tungsten, wherein the coating comprises an M5Sb matrix containing intermetallic phases comprising at least one of MSb and M3Sb where M is any of molybdenum, niobium, titanium, chromium, hafnium, iron, rhenium, tantalum, and/or tungsten. Claims 1-10 and 12-20 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Zhao. 3 DISCUSSION Appellants present arguments in four groups. In Group 1, Appellants present argument for claims 1--4, 6, 8, 15-18, and 20, focusing on claim 1 and not raising a distinct argument for patentability of independent claim 15 or any dependent claims. Br. 11-14. In Group 2, Appellants present argument for dependent claims 5 and 19 together, focusing on a common limitation. Br. 14--15. In Group 3, Appellants present argument for claims 3 Zhao et al., US 6,607,847 B2, issued Aug. 19, 2003 ("Zhao"). 2 Appeal2014-008490 Application 13/545,625 9, 10, and 12-14 together, focusing on a common limitation. Br. 16-17. In Group 4, Appellants present argument only for claim 7. Br. 17-18. Thus, we limit our discussion to claims 1, 5, 7, and 12. Dependent claims will stand or fall with the respective claims from which they depend. Upon consideration of the record in light of each of Appellants' contentions raised in the briefs, we determine that a preponderance of the evidence supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the Â§ 103 rejections for essentially the reasons set out by the Examiner in the Answer. We add the following for emphasis. Group 1 The Examiner finds that Zhao discloses a molybdenum-based refractory metal intermetallic composition comprising between about 13-16 atomic% silicon, about 25--40 atomic% chromium, and a balance of molybdenum. Ans. 3. The Examiner further finds that "the amount of molybdenum present within the composition determines the amount and type of phases present" and concludes that in view of the overlap in Zhao' s composition and the claimed range, it would have been obvious to select amounts of silicon, chromium and molybdenum within the claimed range, which would have resulted in the claimed intermetallic being present in the composition within the claimed volume fractions. Id. Appellants argue that Zhao does not disclose a matrix of intermetallic phases or the claimed volume fractions of those phases, and that the Examiner improperly relied on the disclosure of Appellants' Specification in reaching a determination of obviousness. Br. 11-12. Appellants' argument is not persuasive of reversible error. The overlap between the ranges in the 3 Appeal2014-008490 Application 13/545,625 composition of Zhao and the claimed ranges establishes prima facie obviousness. In re Peterson, 315 F.3d 1325, 1330 (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 case of obviousness.") Appellants have not directed us to any evidence to rebut the prima facie case, such as unexpected results, and thus have failed to provide any reason why Zhao' s composition would not also have the claimed intermetallic phases present within the claimed volume fractions. Further, the Examiner did not improperly rely on Appellants' Specification, but rather based the obviousness determination on knowledge which was within the level of ordinary skill in the art. Ans. 6-7. As the Examiner correctly concludes, a person of ordinary skill in the art "need not look to the instant application in order to select a value within the range taught by Zhao." Id. Accordingly, we sustain the rejection of claims 1--4, 6, 8, 15-18, and 20 as unpatentable over Zhao. Group 2 Dependent claims 5 and 19 contain an additional limitation that the composition contains a specified volume range of each of three intermetallic phases. Br. 20, 22. Appellants argue that the Examiner has not made a case of prima facie obviousness because Zhao does not disclose relative volumes of the intermetallic phases. As discussed above, prima facie obviousness is established by the overlap between the ranges of molybdenum, silicon, and chromium disclosed in Zhao, and the claimed ranges. Appellants have not directed us to any evidence to rebut the prima facie case; accordingly, we sustain the rejection of the Group 2 claims for the same reasons as the Group 1 claims. 4 Appeal2014-008490 Application 13/545,625 Group 3 Claim 12 is directed to a gas turbine engine component comprising a substrate comprising a niobium-based alloy or a niobium-silicide composite and "a coating on the substrate" wherein the coating comprises a specified composition. Br. 16, 21. Appellants argue that Zhao does not disclose "a coating on the substrate" because Zhao discloses a braze between its niobium-based substrate and molybdenum-based silicide layer. Br. 16. Appellants' argument is not persuasive of reversible error. Claim 12 does not require that the coating be directly in contact with the substrate, and thus encompasses Zhao' s disclosure of a braze between the substrate and coating layer. See AFG Indus., Inc. v. Cardinal JG Co., 239 F.3d 1239, 1251 (Fed. Cir. 2001) (claim language "formed on" does not mean "'directly in contact with."') Group 4 Dependent claim 7 contains an additional limitation that "the coating has fewer than five vertical cracks per linear inch." Br. 20. Appellants argue that the Examiner has not made a case of prima facie obviousness because Zhao has no disclosure that relates to cracks. Br. 18. As discussed above, prima facie obviousness is established by the composition of the coating disclosed in Zhao. As the Examiner correctly concludes, a person of ordinary skill in the art would expect the amount of cracks to follow from the composition, absent evidence to the contrary. Ans. 3--4. Appellants have not directed us to any such evidence to rebut the prima facie case; accordingly, we sustain the rejection of the Group 4 claims for the same reasons as the Group 1 claims. 5 Appeal2014-008490 Application 13/545,625 ORDER Upon consideration of the record, and for the reasons given above: It is ORDERED that the decision of the Examiner to reject claims 1- 10 and 12-20 under 35 U.S.C. Â§ 103 as unpatentable over Zhao, is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 6