Ex Parte Ivory et al

Patent Trials and Appeals BoardJan 7, 2019

13725138 - (D) (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/725, 138 11943 7590 O""Shea Getz P.C. FILING DATE FIRST NAMED INVENTOR 12/21/2012 Steven Ivory 01/09/2019 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. P A-0025245-US 6072 EXAMINER 10 Waterside Drive, Suite 205 DU GER, JASON H Farmington, CT 06032 ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 01/09/2019 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): uspto@osheagetz.com shenry@osheagetz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN IVORY, MONIKA D. KINSTLER, and JOHN H. FINN1 Appeal2018-002941 Application 13/725, 13 8 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and ANNETTE R. REIMERS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Steven Ivory et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1, 3-7, 9, 10, and 12. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 The Appeal Brief identifies United Technologies Corporation as the real party in interest. Br. 3. Appeal2018-002941 Application 13/725, 138 CLAIMED SUBJECT MATTER Appellants' invention relates to a gas turbine engine and, more particularly, to a combustor section therefor. Spec. ,r 1. Claims 1 and 7 are independent. Claim 1 is illustrative and is reproduced below: 1. A liner panel for use in a combustor of a gas turbine engine compnsmg: a cold side having a backside feature; and hot side with a barrier coating that is stripped only in a localized, damaged area to facilitate a variable polarity weld. THE REJECTIONS The Examiner has rejected: (i) Claim 10 under 35 U.S.C. Â§ 112(a), first paragraph, as failing to comply with the written description requirement; (ii) Claims 7, 9, and 12 under 35 U.S.C. Â§ I02(b) as being anticipated by Draghi (US 5,972,424, issued Oct. 26, 1999); (iii) Claims 1 and 5 under 35 U.S.C. Â§ I02(b) as being anticipated by, or in the alternative, under 35 U.S.C. Â§ I03(a) as being unpatentable over Emilianowicz (US 2010/0031664 Al, published Feb. 11, 201 O); (iv) Claims 3, 4, and 6 under 35 U.S.C. Â§ I03(a) as being unpatentable over Emilianowicz in view ofDarolia (US 6,558,813 B2, issued May 6, 2003); (v) Claims 7, 9, 10, and 12 under 35 U.S.C. Â§ I03(a) as being unpatentable over Draghi in view of Reitz (US 2010/0247740 Al, published Sept. 30, 201 O); 2 Appeal2018-002941 Application 13/725, 138 (vi) Claims 1 and 5 under 35 U.S.C. Â§ 103(a) as being unpatentable over Caldwell (US 7,216,485 B2, issued May 15, 2007) in view of Draghi and Reitz; (vii) Claim 3 under 35 U.S.C. Â§ 103(a) as being unpatentable over Caldwell in view of Draghi, Reitz, and Spitsberg (US 7,150,922 B2, issued Dec. 19, 2006); (viii) Claim 4 under 35 U.S.C. Â§ 103(a) as being unpatentable over Caldwell in view of Draghi, Reitz, and Margolies (US 7,833,586 B2, issued Nov. 16, 2010); and (ix) Claim 6 under 35 U.S.C. Â§ 103(a), as being unpatentable over Caldwell in view of Draghi, Reitz, and Bruce (US 5,981,088, issued Nov. 9, 1999). ANALYSIS Claim 10 - Written Description The Examiner determines that claim 10 fails to comply with the written description requirement. Final Act. 2. The Examiner takes the position that paragraph 37 of the Specification discloses completely acid stripping the thermal barrier coating instead of stripping only in a localized, damaged area, because, in conventional acid stripping, an entire coated substrate is dipped in an acid bath. Ans. 4. The Examiner also explains that paragraph 3 7 of the Specification discloses that acid stripping the thermal barrier coating "removes the thermal barrier coating," which implies not removing just the thermal barrier coating in a localized, damaged area. Id. We agree with Appellants that there is no basis for the Examiner to infer such a narrow reading of the Specification. See Br. 7. The written 3 Appeal2018-002941 Application 13/725, 138 description requirement is satisfied when the disclosure of the application reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharmaceuticals v. Eli Lilly, 598 F.3d 1336, 1351 (Fed. Cir. 2010). Paragraph 37 of the Specification states: With Reference to Figure 4 in one disclosed non-limiting embodiment of a repair process, the thermal barrier coating is stripped in a localized area which is damaged to facilitate a variable polarity weld (step 200). Alternatively, the thermal barrier coating is stripped completely from the liner panels 72, 74. In one disclosed non-limiting embodiment, the thermal barrier coating is acid strip[p Jed which removes the thermal barrier coating but does not effect [sic] the diffusion-aluminide coating from the cold side 110. Spec. ,r 3 7. Contrary to the Examiner's assertion, this paragraph discloses both localized area stripping and complete stripping, and that acid stripping may be employed. Even if conventional acid stripping involves dipping an entire coated substrate in an acid bath, as posited by the Examiner, the Examiner does not establish that the identification of acid stripping in the last sentence of paragraph 37 is solely directed to that conventional acid stripping process. For these reasons, we do not sustain the rejection of claim 10 under 35 U.S.C. Â§ 112(a), first paragraph, as failing to comply with the written description requirement. Claims 7, 9, and 12 - Anticipation - Draghi The Examiner finds that Draghi discloses all of the limitations set forth in claim 7. Final Act. 2-3 ( citing Draghi, col. 1, 11. 10-20, col. 4, 11. 46-49, col. 5, 11. 9-31; Figs. 1-3). The Examiner finds, pertinent to an issue 4 Appeal2018-002941 Application 13/725, 138 joined on appeal, that Draghi discloses stripping a thermal barrier coating only in a localized, damaged area because Draghi discloses that its tip 20 often requires repair and thus, tip 20 corresponds to the localized, damaged area, as claimed. Id. at 2 (citing Draghi, col. 4, 11. 46-49); see also Ans. 5. The passage in Draghi relied on by the Examiner as disclosing this limitation states, "[f]ollowing inspection, any residual abrasive material on the tip 20 may be removed with any conventional method, such as grinding. The blade 18 may then be inspected to determine whether the tip 20 requires repairs." Draghi, col. 4, 11. 46-49 ( emphasis omitted). As Appellants maintain, the stripping of residual abrasive material, as disclosed in that passage, cannot properly be regarded as a stripping of a thermal barrier coating limited only to a localized damaged area, because the entirety of the thermal barrier coating on the tip is stripped prior to any determination as to whether any localized damaged area suitable for repair exists. Br. 8. As such, the Examiner has not established that Draghi discloses "stripping a thermal barrier coating only in a localized, damaged area," as claimed. Accordingly, the Examiner has not established by a preponderance of the evidence that claim 7 is anticipated by Draghi. The rejection of claim 7, and of claims 9 and 12 depending therefrom, as being anticipated by Draghi, is not sustained. Claims 1 and 5 - Anticipation/Obviousness - Emilianowicz The Examiner finds that Emilianowicz discloses all of the limitations set forth in claim 1. Final Act. 3---6 ( citing Emilianowicz ,r,r 15-54, Fig. 6). Among the findings, the Examiner finds that Emilianowicz discloses a replacement panel 240 having a side corresponding to a hot side including a 5 Appeal2018-002941 Application 13/725, 138 barrier coating that is stripped only in a localized, damaged area, as claimed. Id. at 4--5. In arriving at this position, the Examiner treats claim 1 as a product-by-process claim, noting that the claimed stripping of a thermal barrier coating results in substantially the same structure as not including a thermal barrier coating in the first place. Id. at 5-6. The Examiner explains that, because there is no thermal barrier coating at the peripheral edge 250 of replacement panel 240, Emilianowicz's panel is substantially the same in structure as the liner panel of claim 1. Id. at 5---6. Even if we accept the Examiner's position that the limitation directed to the thermal barrier coating being "stripped" makes this limitation of claim 1 a product-by process limitation, a replacement panel that does not have a damaged area, as in Emilianowicz, is structurally different from a panel having a damaged area that the replacement panel replaces. Similarly, a damaged area of the original panel is removed such that the replacement panel can be fitted thereto, and therefore has no damaged area remaining. Thus, the Examiner has not established that Emilianowicz discloses structure substantially the same as the claimed localized damage area that is free of thermal barrier coating. Accordingly, the Examiner has not established by a preponderance of the evidence that claim 1 is anticipated by Emilianowicz. The rejection of claim 1, and of claim 5 depending therefrom, as being anticipated by Emilianowicz, is not sustained. We note, from the header of the rejection, that the Examiner alternatively concludes that it would have been obvious to modify the replacement panel of Emilianowicz in order to arrive at the claimed liner panel. See id. at 3. However, the Examiner does not explain what aspect of 6 Appeal2018-002941 Application 13/725, 138 Emilianowicz's replacement panel is being modified. See id. at 3---6. The alternative rejection of claim 1, and of claim 5 depending therefrom, as being unpatentable over Emilianowicz, is also not sustained. Claims 3, 4, and 6 - Obviousness - Emilianowicz/Darolia Darolia is not relied on by the Examiner to cure the deficiency noted above with respect to Emilianowicz. See Final Act. 7. The rejection of claims 3, 4, and 6, as being unpatentable over Emilianowicz and Darolia is not sustained. Claims 7, 9, 10 and 12 - Obviousness - Draghi/Reitz Appellants do not argue claims 9, 10, and 12 separately from claim 7. Br. 10. We take claim 7 as representative of this group, and claims 9, 10 and 12 stand or fall with claim 7. Alternatively to the anticipation rejection over Draghi, the Examiner finds that Draghi discloses all of the limitations set forth in claim 7 except stripping a thermal barrier coating only in a localized, damaged area. Final Act. 7-8. The Examiner relies on Reitz as disclosing this missing limitation. Id. at 8 (citing Reitz ,r,r 102-110). The Examiner concludes that it would have been obvious to modify the method of repairing a component of a gas turbine engine of Draghi to strip only at a localized, damaged area to save money and time. Id. (citing Reitz ,r 12). Appellants contend that [a]s set forth in Reitz at paragraph [0110], either only part of a thermal barrier coating (TBC) layer is removed or the complete TBC layer is locally removed. Reitz fails to tie the local removal of the TBC layer in paragraph [O 11 OJ to the damaged 7 Appeal2018-002941 Application 13/725, 138 location/area. Reitz at paragraph [O 109] simply refers to local removal of damaged parts in case of preparation of a surface. Br. 10. Appellants' contentions are unpersuasive. Paragraph 109 of Reitz states that "[i]t is important to note that in accordance with the invention, there is no complete removal of the entire ceramic coating, but only damaged parts are locally removed in case of a preparation of the surface." Reitz ,r 109 ( emphasis added). Paragraph 110 of Reitz states that "[d]epending on the type and kind of defect, either only part of the TBC [(thermal barrier coating)] layer is removed, the complete TBC layer is locally removed, or, in addition to complete TBC removal, the bond coat layer is removed." Id. ,r 110. Reitz further discloses that "there should be smooth transitions between the surfaces of the repaired patch region and the surrounding intact barrier coating." Id. ,r 111. We agree with the Examiner that these passages evidence that Reitz discloses stripping a thermal barrier coating only in a localized, damaged area. Ans. 9--10. We further agree with the Examiner's response to Appellants' contention, that to the extent Appellants are arguing paragraph 109 ofReitz's reference to "parts" as not including the thermal barrier coating, that is contrary to Reitz' s disclosure because in the same sentence, Reitz states that "there is no complete removal of the entire ceramic coating." Id. at 10; see also Reitz ,r 109. Accordingly, Appellants do not apprise us of Examiner error in the rejection of claim 7 as being unpatentable over Draghi and Reitz. We thus sustain the rejection of claim 7 as being unpatentable over Draghi and Reitz. Claims 9, 10, and 12 fall with claim 7. Claims 1 and 5 - Obviousness - Caldwell/Draghi/Reitz 8 Appeal2018-002941 Application 13/725, 138 Appellants do not argue claim 5 separately from claim 1. Br. 10-11. We take claim 1 as representative of this group, and claim 5 stands or falls with claim 1. The Examiner finds that Caldwell, Draghi, and Reitz disclose all of the limitations of claim 1. Final Act. 8-10. More specifically, the Examiner finds that Caldwell discloses a liner panel (liner 22) comprising a cold side 74 and a hot side 70, for which the hot side has a thermal barrier coating 126 and a localized damaged area. Id. at 8-9 (citing Caldwell, col. 1, 11. 47---col. 2, 1. 5). The Examiner relies on Draghi as disclosing a method of repairing a gas turbine component coated with a thermal barrier coating using variable polarity welding, and on Reitz as disclosing a method of repairing a component of a gas turbine engine in which a thermal barrier coating is stripped only in a localized, damaged area, as discussed above. Id. at 9. The Examiner concludes that it would have been obvious to modify the liner panel of Caldwell to have a hot side with a barrier coating that is stripped only in a localized, damaged area and then welding the localized, damaged area, as taught by Draghi and Reitz, to increase the number of times a liner panel can be repaired and to save time and money. Id. at 9-10 (citing Caldwell, col. 2, 11. 34--40; Reitz ,r 12). Appellants contend that "Caldwell is silent regarding the chemical or mechanical processes stripping the thermal barrier coating only in a localized, damaged area." Br. 10. Appellants' argument does not address the rejection, as the Examiner does not rely on Caldwell, but rather relies on Reitz as disclosing stripping a barrier coating only in a localized, damaged area. See Final Act. 9-10; see also Ans. 10. 9 Appeal2018-002941 Application 13/725, 138 Accordingly, Appellants do not apprise us of Examiner error in the rejection of claim 1 as being unpatentable over Caldwell, Draghi, and Reitz. We thus sustain the rejection of claim 1 as being unpatentable over Caldwell, Draghi, and Reitz. Claim 5 falls with claim 1. Claim 3 - Obviousness - Caldwell/Draghi/Reitz/Spitsberg Claim 4 - Obviousness - Caldwell/Draghi/Reitz/Margolies Claim 6 - Obviousness - Caldwell/Draghi/Reitz/Bruce Appellants do not provide any substantive arguments for the rejections of claims 3, 4, and 6, and rely on the arguments presented above for the rejection of claim 1 over Caldwell, Draghi, and Reitz. See Br. 11. For the reasons discussed above with respect to the rejection of claim 1, we are not apprised of error in these rejections. Accordingly, the rejections of claims 3, 4, and 6 are sustained. DECISION The rejection of claim 10 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the enablement requirement is reversed. The rejection of claims 7, 9, and 12 under 35 U.S.C. Â§ 102(b) as being anticipated by Draghi is reversed. The rejection of claims 1 and 5 under 35 U.S.C. Â§ 102(b) as being anticipated by, or in the alternative, under 35 U.S.C. Â§ 103(a) as being unpatentable over Emilianowicz is reversed. The rejection of claims 3, 4, and 6 under 35 U.S.C. Â§ 103(a) as being unpatentable over Emilianowicz and Darolia is reversed. 10 Appeal2018-002941 Application 13/725, 138 The rejection of claims 7, 9, 10, and 12 under 35 U.S.C. Â§ 103(a) as being unpatentable over Draghi and Reitz is affirmed. The rejection of claims 1 and 5 under 35 U.S.C. Â§ 103(a) as being unpatentable over Caldwell, Draghi, and Reitz is affirmed. The rejection of claim 3 under 35 U.S.C. Â§ 103(a) as being unpatentable over Caldwell in view of Draghi, Reitz, and Spitsberg is affirmed. The rejection of claim 4 under 35 U.S.C. Â§ 103(a) as being unpatentable over Caldwell, Draghi, Reitz, and Margolies is affirmed. The rejection of claim 6 under 35 U.S.C. Â§ 103(a), as being unpatentable over Caldwell, Draghi, Reitz, and Bruce 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 11