Ex Parte Feist et al

Patent Trials and Appeals Board

Jan 29, 2019

12937310 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/937,310 06/02/2011
23908 7590 01/31/2019
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Jorg Peter Feist
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.
FRYHP0189US 1786
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORG PETER FEIST and
JOHN RA YMENT NICHOLLS
Appeal2018-003460
Application 12/937,310
Technology Center 1700
Before JAMES C. HOUSEL, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge DENNETT,.
Opinion concurring filed by Administrative Patent Judge HOUSEL.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 92, and 107-119. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 6-17, 91, and 105 are withdrawn from consideration and, thus, are
not subject to the appealed rejections. Final Act. 1.
Appeal2018-003460
Application 12/937,310
The claims are directed to components coated with thermal barrier
coatings. Such components typically are used in the aviation and power
generation industries and are subjected to high temperatures. Spec. 1.
Claim 1, reproduced below from the Claims Appendix, illustrates the
claimed subject matter:
1. A component coated with a thermal barrier coating
(TBC), wherein the TBC includes an outer surface layer and at
least one underlying layer, wherein the outer surface layer has a
thickness of at least 20% and not more than 50% of a thickness
of the TBC, has a lower average porosity than the at least one
underlying layer and includes an additional phase therewithin.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Subramanian US 6,387,539 B 1
("Subramanian '539")
Subramanian US 6,703,137 B2
("Subramanian '137")
May 14, 2002
Mar. 9, 2004
Spitsberg et al. US 6,875,529 Bl Apr. 5, 2005
("Spitsberg")
Floyd et al. ("Floyd") US 2007/0036997 Al Feb. 15, 2007
Feist et al. ("Feist") WO 2007 /023293 A2 Mar. 1, 2007
Yang et al., Role of Y4Af2Q9 in High Temperature Oxidation
Resistance of NiC0CrAlY-Zr02·Y203 Coatings, 23 J. Mater.
Sci. Technol., 568-570 (2007).
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections as obvious under 35 U.S.C. § I03(a):
(1) Claims 1-3, 107, 109-111, 116, 118, and 119 over Floyd in view
of Spitsberg;
2
Appeal2018-003460
Application 12/937,310
(2) Claims 4 and 5 over Floyd in view of Spitsberg, and further in
view of Subramanian '5 3 9;
(3) Claims 108 and 117 over Floyd in view of Spitsberg, and further
in view of Subramanian ' 13 7;
(4) Claims 112-114 over Floyd in view of Spitsberg, and further in
view of Feist;
( 5) Claims 112 and 115 over Floyd in view of Spitsberg, and further
in view of Yang;
( 6) Claim 92 over Floyd in view of Spitsberg, and further in view of
Feist; and
(7) Claim 92 over Floyd in view of Spitsberg, and further in view of
Yang. Final Act. 2-8; App. Br. 6-22.
OPINION
All of the rejections in this case require the combination of at least
Floyd and Spitsberg to find obviousness of the claims. Final Act. 2-8. Our
decision in this case turns on whether one of ordinary skill in the art at the
time of the invention would have had a reasonable expectation of success in
combining these two references, as required to provide a prima facie case of
obviousness.
The Examiner rejects independent claim 1 over Floyd in view of
Spitsberg. Id. at 2-3. The Examiner finds that Floyd discloses a multilayer
thermal barrier coating (TBC) comprising an outer layer that is substantially
less porous than an inner layer, but is silent with respect to the relative
thickness of the inner and outer layers. Id. at 3. The Examiner finds that
Spitsberg discloses a TBC comprising an inner and outer layer wherein the
3
Appeal2018-003460
Application 12/937,310
outer layer is thinner than the inner layer, the inner layer comprising from
50% to 95% of the total thickness of the TBC. Id. The Examiner concludes
that it would have been obvious to use inner and outer TBC layers having
the relative thickness as disclosed in Spitsberg in the TBC of Floyd. Id. In
other words, the Examiner combines the porosity of the TBC outer layer
taught by Floyd with the relative thickness of the TBC inner and outer layers
taught by Spitsberg to achieve the invention claimed in claim 1. The
Examiner finds that Spitsberg teaches the same sort of structure as Floyd
because Spitsberg discloses that the outer layer is denser than the inner layer
and has a reduced porosity. Ans. 9.
Appellants argue that the skilled artisan would not have contemplated
modifying the TBC taught by Floyd with the TBC taught by Spitsberg.
App. Br. 9-11.
Floyd discloses a TBC with an inner layer that is porous, and an outer
layer that is "substantially free of interconnected porosity." Floyd ,r,r 21, 22.
Floyd describes the outer layer of the TBC as being "much thinner" than the
inner layer, and "very thin with respect to the inner layer." Id. ,r,r 19, 22.
Spitsberg discloses a TBC with an inner layer comprising 50% to 95% of the
thickness of the TBC. Spitsberg col. 6, 11. 46-51. Presumably, 5% to 50%
of the thickness comprises the outer layer. Spitsberg teaches that "making
the outer layer[] denser, i.e., [] reducing its porosity" provides the benefits
of additional impact and erosion resistance. Spitsberg col. 7, 1. 65---col. 8, 1.
1. This denser outer layer has a fraction of porosity of about 0.20 or less,
typically about 0.10 to about 0.20 (i.e., about 10% to about 20%). Spitsberg
col. 8, 11. 1-3.
4
Appeal2018-003460
Application 12/937,310
Appellants contend that Spitsberg's teaching of an outer layer having
10% to 20% porosity is contrary to Floyd's teaching of an outer layer that is
substantially free of pores. App. Br. 9-10. Appellants argue that the skilled
artisan would have had no reasonable expectation of success in combining
Floyd and Spitsberg. Id. at 12. According to Appellants, one of ordinary
skill in the art would have understood that combining Floyd's very thin outer
layer having substantially no porosity with Spitsberg, which teaches the
claimed relative layer thickness but 10% to 20% porosity, would promote
failure of the TBC due to reduced strain tolerance and cracking. Id. at 10.
In support, Appellants cite to the Specification and Subramanian '13 7, a
reference cited by the Examiner in other rejections. See id.
The Specification indicates that sintering on the surface of a TBC
causes formation of a surface layer that is much denser than the underlying
bulk of the TBC, which does not experience high surface temperatures.
Spec. 2, 3rd and 4th paragraphs. The much denser, sintered outer layer causes
the TBC to have reduced strain tolerance that will cause cracking. Id.
Subramanian '137 indicates that a dense top ( outer) layer will have relatively
lower thermal strain tolerance due to its lower pore content, thus the outer
layer is segmented ( and, therefore, less dense) to provide additional strain
relief in that layer. Subramanian '137, col. 4, 1. 66-col. 5, 1. 6.
Appellants also argue that the Examiner errs in finding that Floyd and
Spitsberg teach the same sort of structure because both references teach an
outer layer that is denser than the inner layer. Reply Br. 3--4. As Appellants
point out, Spitsberg teaches that additional impact and erosions resistance
benefits can be obtained by making the outer layer denser, but does not teach
5
Appeal2018-003460
Application 12/937,310
making the outer layer denser than the inner layer. Id. at 4; see also
Spitsberg col. 7, 1. 65---col. 8, 1. 1.
A reasonable expectation of success is a necessary part of a prima
facie case of obviousness. In re Vaeck, 947 F.2d 488,493 (Fed. Cir. 1991).
"Both the suggestion [to combine references] and the reasonable expectation
of success must be founded in the prior art, not in the applicant's
disclosure." Id. Whether or not a person of ordinary skill in the art would
have had a reasonable expectation that a particular combination of
references would work is a pure question of fact. Alza Corp. v. Mylan Labs.,
Inc., 464 F.3d 1286, 1289 (Fed. Cir. 2006).
On the record before us, Appellants persuade us that the skilled artisan
would not have combined the references with a reasonable expectation of
success by providing some evidence of technological incompatibility. See
Orthopedic Equip. Co., Inc. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983).
The Examiner fails to provide a prima facie case of obviousness by
combining the teaching of Floyd and Spitsberg. We, therefore, reverse the
rejection of claim 1 as obvious over the references.
Because the rejections of all of the pending claims require the
combination of Floyd and Spitsberg to support obviousness, we reverse
these rejections for the reasons above.
DECISION
The rejections of claims 1-5, 92, and 107-119 is reversed.
REVERSED
6
Appeal2018-003460
Application 12/937,310
HOUSEL, Administrative Patent Judge, concurring
I concur in the judgment of the Board that, based on Appellants'
arguments and evidence, the Examiner fails to establish a prima facie case of
obviousness by the combined teachings of Floyd and Spitsberg. However, I
write separately because, in my view, Floyd alone anticipates claim 1 under
35 U.S.C. § 102(b ), or in the alternative, renders obvious the subject matter
of claim 1 under 35 U.S.C. § 103(a).
Anticipation is established when an entire prior art range, a preferred
prior art range, or exemplified or listed prior art value is within a claimed
range. Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999-1000;
Titanium Metals Corp. v. Banners, 778 F.2d 775, 781; In re Perkins, 346
F.2d 981,983 (CCPA 1965). Further, when there is substantial overlap
between the ranges disclosed in the prior art and recited in the claims such
that one of ordinary skill in the art could readily envisage the claimed range
from the prior art range, anticipation is established. Perricone v. Medicis
Pharma. Corp., 432 F.3d 1368, 1376-77 (Fed. Cir. 2005); In re Schaumann,
572 F .2d 312, 315 (CCP A 1978); see also, Atlas Powder Co. IRE CO Inc.,
190 F.3d 1342, 1345 (Fed. Cir. 1999).
Although the Examiner finds that "Floyd is silent to the thickness
ration claimed" (Final Act. 3), I disagree. To the contrary, Floyd not only
teaches a thermal barrier coating having a porous inner layer and a much
thinner outer densified, substantially non-porous layer (Floyd ,r,r 15, 19-21 ),
but also that, in an exemplary embodiment, the inner layer is between about
1 to about 10 mils ( or 25-250 µm) and the outer layer is less than about 1
mil ( or 25 µm), preferably no greater than 0.2 mils ( or 5 µm) (id. ,r 22).
Given Floyd's inner layer thickness range of 25-250 µm and outer layer
7
Appeal2018-003460
Application 12/937,310
thickness range of 5-25 µm, the possible range of Floyd's outer layer
thickness is 2-50% of the inner layer thickness. 2 Thus, there is substantial
overlap between the range disclosed in Floyd and the range recited in claim
1.
Appellants fail to direct our attention to any disclosure or evidence
establishing any criticality to the smaller recited range, much less
establishing any difference in property or performance for the smaller
recited range, over the broader range disclosed by Floyd. Indeed, we note
Appellants disclose a range of outer layer thickness to TBC thickness of at
least 2% but not more than 50% (Spec. 3:30-31 and 7:1-11). Therefore, in
my view, one of ordinary skill in the art would readily envisage the claimed
range from Floyd's range, thereby establishing anticipation.
In the alternative, a prima facie case of obviousness is established
when a recited narrow range is within a broader prior art range. In re
Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re Peterson, 315 F.3d
1325, 1329-30 (Fed. Cir. 2003). Such is clearly the case here regarding the
ratio of outer layer thickness to TBC thickness. Further, as stated above,
Appellants fail to establish any criticality or difference in property or
performance for the smaller recited range as compared to the broader range
disclosed by Floyd. Accordingly, in my view, the component of claim 1
2 Floyd's TBC thickness is the sum of the inner and outer layer thicknesses.
Floyd's minimum outer layer thickness, 5 µm, divided by the maximum
TBC thickness, 255 µm, yields a ratio of outer layer thickness to TBC
thickness of about 2%. Floyd's maximum outer layer thickness, 25 µm,
divided by the minimum TBC thickness, 50 µm, yields a ratio of outer layer
thickness to TBC thickness of 50%.
8
Appeal2018-003460
Application 12/937,310
would have been prima facie obvious to one of ordinary skill in the art in
view of Floyd.
9