Ex Parte Czech et al

Patent Trials and Appeals Board

Mar 28, 2019

14122495 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/122,495 02/03/2014
27799 7590 04/01/2019
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Norbert Czech
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.
410001-616PUS/343753 9702
EXAMINER
LANGMAN, JONATHAN C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORBERT CZECH, SHARAD CHANDRA
and ROLAND HERZOG
Appeal2018-004316
Application 14/122,495
Technology Center 1700
Before JEFFREY B. ROBERTSON, MICHAEL G. McMANUS,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 15 and 16 of Application
14/122,495 under 35 U.S.C. § 103(a) (pre-AIA). Final Act. (Feb. 24, 2017)
2-5. Appellants 1 seek reversal of the rejection of these claims pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Man Diesel & Turbo SE is identified as the real party in interest. Appeal
Br. 1.
Appeal2018-004316
Application 14/122,495
BACKGROUND
Certain parts used in gas turbines are operated in a "hot gas region."
Spec. 1. In order to lower the material temperature of these components,
such parts are provided with thermal barrier coatings. Id. Thermal barrier
coatings "[a]re always formed of a metallic bond layer which is diffusion
bonded to the base material (base metal) and a ceramic layer on top of the
bond layer." Id. The prior art includes certain known methods of applying
thermal barrier coatings.
The first described method concerns coatings that are vapor deposited
by electron beam physical vapor deposition (EB-PVD). Id. at 2. The
Application teaches that EB-PVD barrier coatings have a "columnar, strain-
tolerant structure" that provides good resistance to thermal cycle fatigue. Id.
The second described method is thermal spraying. Id. In thermal spraying,
"[ d]ue to the fact that the ceramic layer is bonded to the bond layer
mechanically in this case, the bond layer is deliberately in rough
condition when sprayed in order to maximize the interface and, therefore,
the adhesive forces." Id. (emphasis added). The Application teaches that
thermal spraying is "usually by air plasma spraying." Id.
The Application teaches a method where "good resistance to thermal
fatigue is achieved in the protective layer while still allowing the method to
be carried out in a simple manner." Id. In the method of the Application, a
base layer is applied by thermal spraying. Id. Additionally, the Application
teaches that, "[t]o further enhance resistance to oxidation, the MCrAlY coats
are overaluminized with an Al diffusion layer." Id. at 3. The
overaluminized coating is then subjected to an abrasion treatment so that the
outer portion, with the greatest proportion of aluminum, is removed. Id.
The abrasion treatment removes the top layer of aluminum down to a
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Application 14/122,495
"diffusion zone," where the "diffusion zone" is about 20% aluminum. Id.
Aluminum imparts a desirable resistance to oxidation but also increases the
"risk of embrittlement." Id. at 2-3.
The Application teaches that the foregoing method permits "a good
bonding of the ceramic layer ... without the need for a rough bond layer."
Id. at 3.
Claim 15 is illustrative of the subject matter on appeal and is
reproduced below with certain language bolded for emphasis:
15. A component part (10) for use in a hot gas region of a gas
turbine (1 ), the component part (10) having a surface that is at
least partially provided with a protective layer resistant to high-
temperature degradation by corrosion and erosion, the
protective layer comprising:
a MCrAlY-based bond layer (12) having a surface
roughness of Ra ::; 2 µm applied to the surface;
an Al diffusion layer (14) coating the bond layer (12),
wherein the coating is done by overaluminizing, and wherein
the Al diffusion layer (14) is subjected to an abrasion treatment
to remove an outer build-up layer (14.2) from the Al diffusion
layer (14); and
a ceramic thermal barrier coating (13) of yttria partially
stabilized zirconia applied to the remaining Al diffusion
layer (14) by air plasma spraying,
wherein the applied bond layer (12) is subjected to a
polishing treatment before being overaluminized such that
the surface roughness of Ra ::; 2 µm is produced at the bond
layer (12).
Appeal Br. 10-11 (Claims App.) (emphasis added).
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Application 14/122,495
REJECTION
The Examiner maintains the following rejection:
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious over N agaraj et al. 2 in view of Beele et al. 3 and/ or
further in view of Schaeffer et al. 4 Final Act. 2-5.
DISCUSSION
Surface Roughness
In support of the rejection of claims 15 and 16, the Examiner found
that Beele teaches a MCrAlY base layer that is polished to a surface
roughness (Ra) of less than 2 microns as required by claims 15 and 16.
Final Act. 3.
Appellants argue that none of the cited references teach a MCrAlY-
based bond layer having a surface roughness of Ra :S 2 µm "whether taken
alone or in combination." Appeal Br. 3, 5 ("none of the cited references
disclose a bond layer with a surface roughness of Ra :S 2 µm"). This
argument is rejected as Beele teaches "[t]he alloy layer has a preferred
surface roughness of less than 2 micrometers at a surface adjacent the
aluminide layer." Beele, 7:29-30.
Product-by-Process
The Examiner additionally determined that, although the claims
include a product-by-process limitation requiring air plasma spraying, there
2 US 2009/0162692 Al, published June 25, 2009) ("Nagaraj").
3 WO 96/34130, published Oct. 31, 1996 ("Beele").
4 US 2007/0071905 Al, published Mar. 29, 2007 ("Schaeffer").
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Application 14/122,495
is no "particular structure of the ceramic thermal barrier coating that results
from the air plasma spraying that would differentiate it from prior art
thermal barrier coatings deposited by EB[-]PVD." Answer 7. Accordingly,
the Examiner determined, the air plasma spraying limitation does not
differentiate the claims over EB-PVD prior art. Id. We do not adopt such
determination.
"[W]hen considering the patentability of product claims that contain
process limitations, claim scope is generally based on the product itself, not
the process. If the process limitation connotes specific structure and may be
considered a structural limitation, however, that structure should be
considered." In re Nordt Dev. Co., LLC, 881 F.3d 1371, 1374 (Fed. Cir.
2018) (internal citations omitted). Here, it is apparent from the Specification
that the "applied ... by air plasma spraying" limitation connotes specific
structure. The Specification teaches that EB-PVD barrier coatings differ
from thermal spray coatings as they have a "columnar, strain-tolerant
structure" that provides good resistance to thermal cycle fatigue. See Spec.
2 ( describing electron beam physical vapor deposition and thermal spraying
deposition); Reply 2-3.
Accordingly, we do not adopt the Examiner's determination that one
need not consider the structure implied by the air plasma spraying limitation.
This, however, is not dispositive of the appeal as the Examiner found that
Nagaraj teaches an air plasma sprayed thermal barrier coating. Final Act. 3.
Teaching Away
Appellants additionally argue that the primary reference, Nagaraj, and
a reference cited therein, Gupta, teach away from the claimed surface
roughness. Appeal Br. 3-8.
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Application 14/122,495
Appellants cite the following portion ofNagaraj regarding surface
roughness:
The bond coat inner layer deposited onto a substrate
using a thermal spray technique exhibits a rougher surface than
a bond coat inner layer deposited using an ion plasma
technique. For example, the bond coat inner layer, deposited
with a thermal spray technique, such as plasma spraying, may
have a surface roughness of from about 200-600 micro inches
(about 5.1-15.3 microns) RA, as taught in U.S. Pat. No.
5,236,745.
Nagaraj ,r 25 ( emphasis added). Appellants additionally cite to US
5,236,745 ("Gupta") which teaches as follows:
it has been recognized that a bond coating outer portion surface
should have a surface roughness, as applied, in the range of
about 200-600 microinches RA. It has been found that a
surface roughness of less than about 200 micro inches RA
provides insufficient roughness to anchor the subsequently
applied ceramic thermal barrier coating . . . . . Therefore,
according to the method form of the present invention, particles
of the bond coating alloy are selected to be of a size which,
after spray application, will provide a bond coating outer
portion with a surface roughness in the range of 200-600
microinches RA.
Gupta, 3: 16-31 (emphasis added). Appellants argue that, "in view of U.S.
Patent No. 5,236,745 one skilled in the art would not vary the surface
roughness from the disclosed range of 200-600 microinches." Appeal Br. 7.
A reference teaches away from a claimed invention when a person of
ordinary skill, "upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). Whether the prior art teaches away from the
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Application 14/122,495
claimed invention is a question of fact. DyStar Textilfarben GmbH v. C.H.
Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006); In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005) (holding that a reference teaches away from
following a path when a skilled artisan, upon reading the reference, would
be discouraged from that path). Further, "[a] known or obvious composition
does not become patentable simply because it has been described as
somewhat inferior to some other product for the same use." Gurley, 27 F.3d
at 553. The Federal Circuit has explained that "a given course of action
often has simultaneous advantages and disadvantages, and this does not
necessarily obviate motivation to combine." Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006). "The fact that the motivating benefit
comes at the expense of another benefit. .. should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another." Winner Int 'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000).
Here, Nagaraj teaches that "the bond coat inner layer ... may have a
surface roughness of from about 200-600 microinches (about 5.1-15.3
microns) RA." This is insufficient to discourage one skilled in the art from
using a lesser surface roughness.
While Gupta, not relied upon by the Examiner, states that "a surface
roughness of less than about [ 5 .1 microns] RA provides insufficient
roughness" for Gupta's purposes, Appellants point to no portion ofNagaraj
that would limit the Nagaraj's disclosure to Gupta's roughness value. On
the contrary, Nagaraj discloses the use of Gupta's process as an exemplary
embodiment. Nagaraj ,r 28. It is well settled that a reference may be relied
upon for all that it discloses and not merely the preferred embodiments as
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Application 14/122,495
suggested by Appellants. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) ("[A]ll disclosures of the prior art, including
unpreferred embodiments, must be considered." (quoting In re Lamberti,
545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1
(CCPA 1982) (explaining that a prior art reference's disclosure is not limited
to its examples).
Moreover, it is not apparent that the teachings of Gupta and Beele are
in direct conflict. A determination as to whether a reference would have led
one of skill in the art away from a given course involves a balancing of
factors. Here, Gupta does not address and rebut the findings of Beele. Nor
have Appellants addressed Beele' s stated rationale as to why it is "preferred
to polish the alloy layer 2 prior to placing the aluminide layer 3 to have a
surface roughness below 2 micrometers." Beele, 11:8-10.
Given the potential for technical differences between the references, a
teaching which may be applicable to the bond layer of Gupta may not be
applicable to that of Beele or Nagaraj. Accordingly, Appellants have not
shown error in the Examiner's analysis that "a surface roughness that may
not have necessarily been acceptable at the time of Gupta may [be
acceptable] based on the adhesive forces required for subsequent coating."
Answer 8.
In view of the foregoing, Appellants have failed to show that Nagaraj
and/or Gupta teach away from the surface roughness taught by Beele.
CONCLUSION
The rejection of claims 15 and 16 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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