Ex Parte Sarrafi-Nour et al

Patent Trial and Appeal BoardJul 18, 2016

13744958 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/744,958 01/18/2013 6147 7590 07/20/2016 GENERAL ELECTRIC COMPANY GLOBAL RESEARCH ONE RESEARCH CIRCLE BLDG. Kl-3A59 NISKAYUNA, NY 12309 FIRST NAMED INVENTOR Reza Sarrafi-Nour 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. 225497-2 3436 EXAMINER LANGMAN, JONATHAN C ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 07/20/2016 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 REZA SARRAFI-NOUR, PETER JOEL MESCHTER, CURTIS ALAN JOHNSON, KRISHAN LAL LUTHRA, and LARRY STEVEN ROSENZWEIG Appeal2015-001568 Application 13/744,958 Technology Center 1700 Before PETER F. KRATZ, KAREN M. HASTINGS, and WESLEY B. DERRICK, Administrative Patent Judges. Hi~\~STIJ\JGS, ,L4dministrative Patent Jitdge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 1-9, 11-14, 17-22 and 24-26. We have jurisdiction over the appeal under 35 U.S.C. Â§6(b). 1 Appellants identify that the real party in interest as "General Electric Company" (App. Br. 2). Appeal 2015-001568 Application 13/744,958 We AFFIRM. Claim 1 is illustrative (emphasis added to highlight key limitation): 1. An article comprising: a substrate comprising silicon; a bondcoat comprising silicon disposed over the substrate; a substantially hermetic self-sealing layer disposed over the bondcoat, wherein the self-sealing layer comprises an alkaline-earth aluminosilicate and includes a plurality of phases, at least one of the phases forming a liquid or glassy phase at or above a sealing temperature, that is below a melting temperature of the self-sealing layer, to flow into and at least partially fill defects in the self-sealing layer; and an intermediate layer disposed between the self-sealing layer and the bondcoat, wherein the intermediate layer comprises a barrier material that is substantially inert with respect to silica. Claim 26, the only other independent claim, is likewise to an article similar to claim 1, with the disputed limitation regarding a phase "forming a liquid or glassy phase" being common to both claims 1 and 26 (Claims Appendix). The Examiner maintains, and Appellants appeal, the following rejections: I. Claims 1-9, 11-14, 17-20, and 26 under 35 U.S.C. Â§102(b) as anticipated by, or in the alternative underÂ§ 103(a) as obvious over, Spitsberg (U.S. 2005/0238888 Al, published Oct. 24, 2005). 2 Appeal 2015-001568 Application 13/744,958 II. Claim 21 under 35 U.S.C. Â§ 103(a) as unpatentable over Spitsberg in view of Spitsberg 2 (U.S. 5,985,470, issued Nov. 16, 1999). III. Claim 22 under 35 U.S.C. Â§ 103(a) as unpatentable over Spitsberg, Spitsberg 2, further in view of Saak (U.S. 2006-0014029 Al, published Jan. 19, 2006). IV. Claims 24 and 25 under 35 U.S.C. Â§ 103(a) as unpatentable over Spitsberg, Eaton (U.S. 6,254,935 Bl, patented Jul.3, 2001) and Saak. For the first ground of rejection, Appellants argue the claims as a group (App. Br. 10), and do not present any arguments for the remaining grounds of rejection (App. Br. generally). Thus, we select claim 1 as representative. ANALYSIS We have reviewed each of Appellants' arguments for patentability. However, we determine that a preponderance of the evidence supports the Examiner's finding that the claimed subject matter of each independent claim is anticipated, or alternatively obvious, within the meaning ofÂ§ 102 or Â§ 103 in view of the applied prior art. Accordingly, we will sustain the Examiner's rejections for essentially those reasons expressed in the Answer, including the Examiner's Response to Argument section, and we add the following primarily for emphasis. Appellants contend that the Examiner has not responded to their argument that Spitsberg' s heat treatment "likely" sinters the material to achieve the sealing of its substantially single phase material (App. Br. 5; Reply Br. 2), and thus the claimed "phase forming a liquid or glassy phase at or above a sealing temperature" does not function as recited in each independent claim "to flow into and at least partially fill defects" since 3 Appeal 2015-001568 Application 13/744,958 Spitsberg explicitly states that its second phase is volatilized (App. Br. 5, 6, citing Spitsberg i-f37; Reply Br. 2). The Examiner aptly points out that Spitsberg also explicitly states that the second phase is indeed still present in the lower region of the coating 24; it is only volatilized in the outermost surface region (Ans. 11-13; Spitsberg i-f37). It is well established that when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). It is also well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based onÂ§ 102 orÂ§ 103 since the burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have not provided any persuasive reasoning or credible evidence to refute the Examiner's determination that the second phase taught and suggested in Spitsberg is capable of forming a liquid or glassy phase as recited in each independent claim because 1) this capability is dependent on a temperature treatment (e.g., Ans. 12), and 2) the temperature treatment of Spitsberg that volatizes the second phase at the outermost layer reasonably would have caused the second phase that remains in the lowermost region to flow into and partially fill defects in the lowermost region (e.g., Ans. 12). 4 Appeal 2015-001568 Application 13/744,958 Spitsberg explicitly states this second phase in present. Attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellants have not met their burden to show that the article of Spitsberg does not inherently satisfy the claimed invention. 2 Accordingly, the Examiner has presented a prima facie case of unpatentability of the article as recited in each of claims 1 and 26 for all the reasons set forth in the Final Action and Answer. Appellants' do not present any additional arguments for the Â§ 103 rejections of dependent claims 21, 22, 24, and 25 (e.g., Ans. 6-1 O; generally App. Br.). Accordingly, the Examiner'sÂ§Â§ 102 and 103 rejections are affirmed with respect to all of the claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. ORDER AFFIRMED 2 Notably, since Spitsberg and this case share a common assignee, Appellants are in the best position to provide such evidence. 5