Ex Parte Lee

Patent Trial and Appeal Board

May 10, 2018

14033043 (P.T.A.B. May. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/033,043 09/20/2013
28863 7590 05/14/2018
SHUMAKER & SIEFFERT, P.A.
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
KangN. Lee
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.
1106-003US02/RCA10502USCO 6464
EXAMINER
LANGMAN, JONATHAN C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
05/14/2018 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KANG N. LEE
Appeal2017-006786
Application 14/033,043
Technology Center 1700
Before MICHAEL P. COLAIANNI, JENNIFER R. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1-8 and 10-142. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant is the Applicant, Rolls-Royce Corporation, which, according to
the Appeal Brief, is the real party in interest. Appeal Brief filed July 25,
2016 ("App Br."), 3.
2 Claims 15-20 stand withdrawn from consideration. Final Office Action
entered February 25, 2016 ("Final Act."), 1.
Appeal2017-006786
Application 14/033,043
STATEMENT OF THE CASE
Appellant claims an article comprising a substrate, at least one layer
formed over the substrate comprising a thermal barrier coating layer, and a
CMAS-resistant layer formed over the at least one layer comprising a
thermal barrier coating layer. Claim 1 illustrates the subject matter on
appeal and is reproduced below with contested language italicized:
1. An article comprising:
a substrate comprising at least one of a superalloy, a
ceramic, or a ceramic matrix composite;
at least one layer formed over the substrate, wherein the
at least one layer comprises a thermal barrier coating layer, and
wherein the thermal barrier coating layer comprises at least one
of rare earth oxide-stabilized zirconia or rare earth oxide-
stabilized hafnia; and
a CMAS-resistant layer formed over the at least one
layer, wherein the CMAS-resistant layer comprises free rare
earth oxide, free silica, and an alkali oxide and is essentially
free of zirconia and hafnia, wherein the CMAS-resistant layer is
the outermost layer, and wherein the CMAS-resistant layer
comprises at least 10 mol. % free rare earth oxide.
App. Br. 11 (Claims Appendix).
The Examiner sets forth the rejection of claims 1-8 and 10-14 under
35 U.S.C. § 112, first paragraph for failing to comply with the written
description requirement in the Final Office Action, and maintains the
rejection in the Examiner's Answer entered January 26, 2017 ("Ans.").
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we reverse the Examiner's rejection of
claims 1-8 and 10-14 under 35 U.S.C. § 112, first paragraph for the reasons
set forth below.
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Application 14/033,043
We need consider only claim 1, the sole independent claim on appeal,
which requires the CMAS-resistant layer of the claimed article to comprise
free rare earth oxide, free silica, and an alkali oxide.
The Examiner finds that Appellant's Specification does not provide
written description support for a CMAS-resistant layer that comprises both
free rare earth oxide and free silica. Final Act. 3. The Examiner finds that
Appellant's Specification indicates that a rare earth oxide mixed with silica
is "equivalent" to a rare earth silicate. Ans. 5 (citing Spec. i-f 46, Table 1 ).
The Examiner further relies on the disclosure in Appellant's Specification
that the CMAS-resistant layer may be applied to the thermal barrier coating
layer "using any useful method including, for example, plasma spraying,
electron beam vapor deposition, chemical vapor deposition and the like."
Ans. 5 (citing Spec. i-f 37). Based on these disclosures, the Examiner
determines that application of the CMAS-resistant layer using plasma
spraying, electron beam vapor deposition, or chemical vapor deposition
would "necessarily result in reactions occurring" between the rare earth
oxide and silica to form rare earth silicate. Ans. 5.
The Examiner interprets the CMAS-resistant layer recited in claim 1
as a "final coating" rather than "an intermediate unreacted layer." Id. The
Examiner determines that while some molar percentages of rare earth oxide
and silica in the CMAS-resistant layer "may provide over saturation"
resulting in some unreacted "free" rare earth oxide or unreacted "free" silica
in the final deposited coating, the Specification does not describe a final
CMAS-resistant coating that includes both free rare earth oxide and free
silica. Final Act. 3. The Examiner indicates that Appellant has the burden
of showing that the deposition methods described in the Specification would
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Appeal2017-006786
Application 14/033,043
result in a final CMAS-resistant coating comprising both unreacted free rare
earth oxide and unreacted free silica. Ans. 5.
However, in rejecting claims for failing to comply with the written
description requirement, the Examiner bears the initial burden of
establishing that the Specification, claims, and drawings as originally filed,
as a whole, would not reasonably convey to those skilled in the art that
Appellant had possession of the subject matter of the appealed claims at the
time the Application was filed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane); In re Alton, 76 F.3d 1168, 1172,
1175-76 (Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262---64
(CCPA 1976)). The original disclosure does not have to describe the
invention later claimed in haec verba. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563---64 (Fed. Cir. 1991); Wertheim, 541 F.2d at 262 ("The function
of the description requirement is to ensure that the inventor had possession,
as of the filing date of the application relied on, of the specific subject matter
later claimed by him; how the specification accomplishes this is not
material.") (Citations omitted).
The Specification explicitly indicates that the CMAS-resistant layer
includes at least one rare earth oxide, and further indicates that the "CMAS-
resistant layer ... may also include alumina and/or silica in addition to the at
least one rare earth oxide." Spec. i-fi-140-41 (reference numerals omitted).
Although the Examiner asserts that deposition of the CMAS-resistant layer
using plasma spraying, electron beam vapor deposition, or chemical vapor
deposition would necessarily result in reaction of the rare earth oxide and
silica to form rare earth silicate, such that one or both of the rare earth oxide
and the silica would be completely consumed in the reaction, and would no
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Appeal2017-006786
Application 14/033,043
longer exist in "free" form, claim 1 does not require deposition of the
CMAS-resistant layer using these techniques. Furthermore, the Examiner
does not provide any object evidence to support the assertion that the
entirety of one or both of free rare earth oxide and free silica would react
completely during formation of the CMAS-resistant layer, such that free rare
earth oxide and free silica would not both exist in the final layer. Reply
Br. 5.
Although paragraph 46 of the Specification does refer to "rare earth
silicates (e.g. a rare earth oxide mixed with silica (Si02))" the Examiner
does not explain why one of ordinary skill in the art would understand that
forming the CMAS-resistant layer "using any useful method" as disclosed in
the Specification (i-f 37}-and encompassed by claim I-would necessarily
result in complete reaction between the entirety of one or both of the free
rare earth oxide and free silica, in view of the statement in the Lee
Declaration that particular conditions are required to form a rare earth
silicate from a rare earth oxide and silica. Declaration under 37 C.F.R.
§ 1.132 of Kang N. Lee submitted to the Patent and Trademark Office on
November 9, 2015, 2, II., i12.
Accordingly, on this appeal record, the Examiner does not
demonstrate that the Specification as a whole would not reasonably convey
to those skilled in the art that the inventor had possession of a CMAS-
resistant layer comprising both free rare earth oxide and free silica, as recited
in claim 1, at the time the application was filed.
Therefore, consistent with Appellant's arguments, we do not sustain
the Examiner's rejection of claims 1-8 and 10-14 under 35 U.S.C. § 112,
first paragraph.
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Application 14/033,043
DECISION
We reverse the Examiner's rejection of claims 1-8 and 10-14 under
35 U.S.C. § 112, first paragraph.
REVERSED
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