Ex Parte Strock et al

Patent Trial and Appeal Board

Apr 29, 2013

11764888 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/764,888 06/19/2007 Christopher W. Strock 67097-832PUS1;PA0003632US 6462
54549 7590 04/29/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
KATZ, VERA
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
04/29/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER W. STROCK and GEORGE H. REYNOLDS
____________

Appeal 2012-003298
Application 11/764,888
Technology Center 1700
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003298
Application 11/764,888

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1, 3-7, 9-12, 28, 29 and 33-36.2, 3 We have jurisdiction
under 35 U.S.C. § 6(b).
“Th[e] invention relates to protective thermal barriers and, more particularly,
to abradable ceramic barrier systems.” (Spec.4 [0001].) Such barriers are applied,
for example, as coatings on components within a gas turbine engine to protect the
components from erosion, oxidation, corrosion, etc., thereby enhancing durability
and maintaining efficient operation of the engine. (Id. at [0002].)
The Examiner maintains the following grounds of rejection:
1. claims 1, 4-7, 9, 10, 12, 28, 29, and 33-36 are rejected under
35 U.S.C. § 102(b) as anticipated by Morrison 424 (US 6,197,424 B1, issued Mar.
6, 2001) or Morrison 155 (2003/0207155 A1, published Nov. 6, 2003) (Ans.5 5-8);
2. claims 9, 28, 29, and 33-35 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Morrison 424 in view of Morrison 155 (Ans. 9);
3. claim 3 is rejected under 35 U.S.C. §103(a) as unpatentable over
Morrison 424 or Morrison 155, in view of Aggias (US 3,607,824, issued Sep. 21,
1971) (Ans. 8, 10); and
4. claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Morrison 424 in view of Nissley (US 5,780,171, issued Jul. 14, 1998) (Ans. 9).
Appellants present separate arguments in support of patentability of
dependent claim 11. (See App. Br. 5-6.) Patentability of the remaining dependent

1 Final Office Action mailed Feb. 25, 2011 (“Final”).
2 Appeal Brief filed Jul. 21, 2011 (“App. Br.”).
3 Both the Examiner (see Final 1) and Appellants (see App. Br. 2) erroneously
include cancelled claim 8 in the list of finally rejected claims.
4 Specification filed Jun. 19, 2007, as amended Jul. 19, 2010.
5 Examiner’s Answer mailed Oct. 7, 2011.
Appeal 2012-003298
Application 11/764,888

3
claims is not separately argued and, therefore, claims 3-7, 9, 10, 12, 28, 29, and 33-
36 stand or fall with claim 1, the sole independent claim on appeal. 37 C.F.R.
§ 41.37(c)(1)(vii). For reference, claims 1 and 11 are reproduced below from the
Claims Appendix to the Appeal Brief (emphasis added):
1. A composite article comprising:
a substrate;
a ceramic member on at least a portion of the substrate, the ceramic member
is selected from a group consisting of a closed cell ceramic foam and a ceramic
matrix composite having ceramic reinforcement dispersed within a ceramic matrix;
and
a ceramic bond coat securing the substrate and the ceramic member together,
wherein the ceramic member has a first pyrolysis temperature6 and a ceramic bond
coat has a second pyrolysis temperature that is less than the first pyrolysis
temperature.
11. The composite article as recited in Claim 1, further comprising a bond
coat disposed between the substrate and the ceramic bond coat, wherein the bond
coat comprises at least one of nickel, cobalt, iron, chromium, aluminum, or
yttrium.
For the reasons discussed below, we sustain the rejections based on
Morrison 424 as the primary reference and, therefore, AFFIRM the Examiner’s
decision to reject claims 1, 3-7, 9-12, 28, 29 and 33-36. We do not reach the
rejections based on Morrison 155 as the primary reference.
The issue raised with respect to the rejection of claim 1 is: did the Examiner
reversibly err in finding Morrison 424 teaches a composite wherein the pyrolysis
temperature of the ceramic bond coat is less than the pyrolysis temperature of the
ceramic member? (See App. Br. 4-5.)

6 “The term ‘pyrolysis’ and its variations refer generically to thermal treatments,
such as sintering or other thermal processes.” (Spec. [0023].) “For example, the
pyrolysis temperature is a sintering temperature of the ceramic powder.” (Id. at
[0029].)
Appeal 2012-003298
Application 11/764,888

4
Appellants argue Morrison 424 teaches co-curing the layers of the composite
which “suggests that the layers can be concurrently consolidated under the same
conditions,” i.e. “that the layers have the same sintering or pyrolysis temperature.”
(Id.) The Examiner, in response, directs Appellants to the same disclosure relied
on in the Final Office Action (see Final 4 (citing Morrison 424 col. 5, ll. 5-20 and
col. 8, ll. 55-59)), explaining
Morrison ‘424 teaches that the ceramic member 10 is manufactured at
a firing temperature of 1600 ºC [col. 5, lines 5-17], while the bond
coat (adhesive) is cured at intermediate temperatures of from 800 ºC
to 1200 ºC and can be cured separately and subsequently [col. 8, lines
54-65]. Therefore, whether the layers are co-cured or not, the post-
treatment techniques would not preclude the presence of the inherent
properties of different pyrolysis temperatures attributed to treatment at
different temperatures.
(Ans. 12-13 (bracketing in original).)
Where the Examiner establishes a reasonable assertion of inherency and
thereby evinces that a claimed process appears to be identical to a process
disclosed by the prior art and/or that the products claimed by the applicant and
disclosed in the prior art appear to be the same, the burden is properly shifted to the
applicant to show that they are not. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1254-56 (CCPA 1977).
While Appellants have explained why the layers in Morrison 424’s co-cured
composites would not be expected to have different pyrolysis temperatures,
Appellants have not explained why the above-cited disclosure, wherein the layers
are cured separately at two different temperatures, is insufficient to support a
finding that Morrison 424’s ceramic member and bond coat would be expected to
Appeal 2012-003298
Application 11/764,888

5
have different pyrolysis temperatures as claimed.7 Nor have Appellants provided
persuasive evidence which supports a finding that the claimed composites and
prior art composites with separately cured layers are patentably distinct.
Accordingly, we are not persuaded of reversible error in the Examiner’s
finding that Morrison 424 teaches a composite wherein the pyrolysis temperature
of the ceramic bond coat is less than the pyrolysis temperature of the ceramic
member, as recited in appealed claim 1.
Turning now to claim 11, Appellants raise the following issue for our
consideration: did the Examiner reversibly err in finding one of ordinary skill in
the art would have had a reasonable expectation of success in including an
additional bond coat in the Morrison 424 composite based on Nissley’s teaching of
using an MCrAlY (wherein M is nickel, cobalt or iron) metallic bond coat between
a substrate and a coating to provide sufficient resistance to oxidation and
corrosion? (See Reply Br. 3.)
Appellants concede Morrison 424 discloses the use of an additional bond
coat. (Id.; see Morrison 424 col. 8, ll. 58-62 (“Coatings of mullite or alumina may
be applied to the substrate 8 prior to bonding to prevent fiber damage during curing
and/or to facilitate the bonding process. These coatings are especially desirable
when bonding to non-oxide substrates 8.”).) However, Appellants argue the
ordinary artisan would have recognized that, unlike the coating materials used by

7 We decline to consider Appellants’ argument regarding whether Morrison 424’s
phosphate adhesive material is properly considered a ceramic material, as
Appellants have not explained why this argument was raised for the first time in
the Reply Brief (filed Dec. 7, 2011 (“Rep. Br.”), 2). Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (Informative) (“The reply brief is not an opportunity to
make arguments that could have been made during prosecution, but were not. Nor
is the reply brief an opportunity to make arguments that could have been made in
the principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Appeal 2012-003298
Application 11/764,888

6
Morrison 424, Nissley’s “metallic material would likely not be able to withstand
the processing temperatures of the article in Morrison-424, or at least would be
chemically altered if exposed to such temperatures. Thus, one of ordinary skill in
the art would not expect to successfully incorporate the metallic bond coat from
Nissely [sic] into the article of Morrison-424.” (Reply Br. 3.) Appellants further
argue “one of ordinary skill in the art would not have [had] an expectation of
success for enhancing bonding by using the metallic bond coat of Nissley in
Morrison-424 because the article of Morrison-424 utilizes different layers than in
Nissley.” (Id.)
Appellants’ arguments are unpersuasive because Appellants have not
identified evidence in support thereof, and they appear to be based on speculation
(see e.g. id. (“would likely not be able to withstand the processing temperatures”
(emphasis added)) supra). Cf. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(argument by counsel cannot take the place of evidence); In re Kunzmann, 326
F.2d 424, 425 n.3 (CCPA 1964) (“[T]he examiner appears to have considered
thoroughly this assertion, and to have found otherwise. Since appellant has not
shown this finding to be clearly erroneous, we accept it as fact.”).
Accordingly, we are not persuaded the Examiner reversibly erred in finding
one of ordinary skill in the art would have had a reasonable expectation of success
in including an additional bond coat as recited in claim 11 in the Morrison 424
composite.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
bar