Ex Parte Strock et alDownload PDFPatent Trial and Appeal BoardJun 27, 201713236926 (P.T.A.B. Jun. 27, 2017) Copy Citation United States Patent and Trademark Office 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. 13/236,926 09/20/2011 Christopher W. Strock 67097-1558PUSl;PA0007302U 9272 54549 7590 06/29/2017 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER BROWN, ADAM WAYNE ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 06/29/2017 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): ptodocket @ cgolaw. com 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 2015-008053 Application 13/236,9261 Technology Center 3700 Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and ALYSSA A. FINAMORE, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Christopher W. Strock et al. (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—15. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, “United Technologies Corporation is the real party in interest of the present application.” Appeal Br. 1. Appeal 2015-008053 Application 13/236,926 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 12, and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An air seal for use with rotating structure in a gas turbine engine comprising: a substrate; and an abradable layer adhered to the substrate, the abradable layer comprising: a matrix of agglomerated hexagonal boron nitride and an oxide ceramic, and a second hexagonal boron nitride, wherein the second hexagonal boron nitride is interspersed with the matrix. Rejection2 Claims 1—15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Hajmrle et al. (US 2004/0142196 Al, published July 22, 2004; hereafter “Hajmrle”) and Miyamoto et al. (US 5,185,217, issued Feb. 9, 1993; hereafter “Miyamoto”). ANALYSIS Appellants initially argue claims 1—15 as a group and then, present further arguments for the patentability of claims 3, 7, 8, 10, 14, and 15 as a separate subgroup. Appeal Br. 3^4. We select claim 1 as representative of claims 1, 2, 4—6, 9, and 11—13 and claim 3 as representative of claims 3, 7, 8, 10, 14, and 15. See 37 C.F.R. § 41.37(c)(l)(iv). 2 The Examiner has withdrawn the nonstatutory double patenting rejection of claims 1, 12, and 13. Ans. 8. 2 Appeal 2015-008053 Application 13/236,926 Claims 1, 2, 4—6, 9, and 11—13 The Examiner finds that Hajmrle discloses substantially all of the subject matter of independent claim 1 except for “a matrix of an oxide ceramic, instead teaching a matrix of a metal or metal alloy formed with the matrix of hexagonal boron nitride.” Final Act. 7. The Examiner remedies this deficiency by turning to Miyamoto’s teaching “of a ceramic oxide mixed with hexagonal boron nitride to form an abradable coating.” Id. at 7— 8 (citing Miyamoto, col. 3,11. 39-44, col. 3,1. 67 — col. 4,1. 3). Thereafter, the Examiner determines that it would have been obvious to modify Hajmrle’s coating matrix “to include a ceramic oxide instead of a metal or metal alloy for the purpose of increasing the coatings resistance to thermal shock.” Id. at 8. The Appellants argue “the Examiner cannot properly argue that a skilled worker would modify the matrix in Hajmrle, which has an agglomerated hexagonal boron nitride” because “Miyamoto only discloses a matrix of hexagonal boron nitride and an oxide ceramic” and not “a matrix of agglomerated hexagonal boron nitride and an oxide ceramic.” Appeal Br. 3. The Appellants’ argument is not persuasive because it merely suggests a conclusion that a skilled worker would not have modified the Hajmrle’s matrix in view of Miyamoto’s teachings without providing a reason using evidence or technical reasoning why a skilled worker would not do so. See also Ans. 8—9. The Appellants argue “there is no support for the Examiner’s argument that Miyamoto discloses or suggests anywhere that adding an oxide ceramic to an agglomerated hexagonal boron nitride would improve shock resistance” because “there is nothing in Miyamoto that evaluates or 3 Appeal 2015-008053 Application 13/236,926 comments on whether the addition of a ceramic oxide would improve the properties of the hexagonal boron nitride mixture.” Appeal Br. 3. The Appellants’ argument is not persuasive. We agree with the Examiner’s response at pages 9-10 of the Answer and adopt it as our own. The Appellants argue “there is no reason to replace the metal in the matrix of Hajmrle” because “doing so would change the principle of operation of the Hajmrle matrix.” Appeal Br. 3; Reply Br. 2. The Appellants assert, “[paragraph 19 clearly discloses that the metal containing matrix of Hajmrle with its interspersed second hexagonal boron nitride provides ‘unexpected superior characteristics over prior art materials.’” Appeal Br. 3; Reply Br. 2—3. And, “[sjince Miyamoto precedes Hajmrle in time, Hajmrle contemplates the Miyamoto material and considers the Hajmrle material an improvement over it.” Appeal Br. 4; Reply Br. 3. The Appellants’ argument is not persuasive. We agree with the Examiner’s response at pages 10-11 of the Answer and adopt it as our own. In the Reply Brief the Appellants argue, “[t]he Examiner cannot properly argue that a skilled worker would modify the matrix in Hajmrle, which has a desired metallic content” because Hajmrle’s paragraph 26 describes “many desirable characteristics [that] are attributed to the metal content.” Reply Br. 1—2. The Appellants specifically list the desirable characteristics as “coating matrix that holds the solid lubricant in place,” “bonding] the coating to the substrate,” “providing] oxidation resistance,” and “due to softness[,] providing a] decrease in matrix strength, which improves abradability.” Id. at 2. The Appellants conclude that “[a] skilled worker would not modify Hajmrle’s metal matrix with an oxide ceramic, as the desired properties of the metal content would be lost, rendering Hajmrle 4 Appeal 2015-008053 Application 13/236,926 unsatisfactory for its intended purpose.” Id. The Appellants’ argument is not persuasive. Notably, [A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See [Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)] (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullity its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). The Examiner’s rejection of claim 1 modifies Hajmrle’s coating matrix “to include a ceramic oxide instead of a metal or metal alloy for the purpose of increasing the coatings resistance to thermal shock.” Final Act. 8. Additionally, as pointed out by the Examiner, “the use of a metallic coating is susceptible to deterioration at high temperatures.” Ans. 9 (citing Miyamoto, col. 2,11. 40-49). And, modifying Hajmrle’s coating matrix “to include a ceramic oxide instead of a metal or metal alloy” improves the ability of the coating matrix to maintain integrity at higher temperatures. Weighing the simultaneous advantages and disadvantages, we find that the disadvantages asserted by the Appellants do not obviate the advantages as discussed by the Examiner (e.g., having a coating with greater thermal shock resistance). Thus, we sustain the Examiner’s rejection of claim 1 as unpatentable over Hajmrle and Miyamoto. Claims 2, 4—6, 9, and 11—13 fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). 5 Appeal 2015-008053 Application 13/236,926 Claims 3, 7, 8, 10, 14, and 15 The Examiner finds that Hajmrle as modified by Miyamoto fails to disclose the limitations of dependent claim 3. Final Act. 8. The limitations of claim 3 include two ranges: first, “the amount by volume of the oxide ceramic in the abradable layer is about 25-45%”; and second, “the amount by volume of porosity is about 5-15% of the abradable layer” (Appeal Br., Claims App.). As for the first range, the Examiner finds that Hajmrle discloses “optimized relative percentages of the abradable coating material and the solid lubricant (hexagonal boron nitride).” Id. (citing Hajmrle para. 20). As for the second range, the Examiner finds that Hajmrle discloses “that the [abradable] coating should have a low porosity.” Id. at 8—9 (citing Hajmrle para. 25). Thereafter, the Examiner determines Since applicant has not disclosed that having the specific volume percentage of the ceramic oxide or specific percentage of porosity solves any stated problem or is for any particular purpose above providing an abradable coating and it appears that the coating of Hajmrle ’196 as modified by Miyamoto would perform equally well with the specific volume percentages as claimed by applicant, it would have been an obvious matter of design choice to modify the coating of Hajmrle ’ 196 as modified by Miyamoto by utilizing the specific volume percentages as claimed for the purpose of providing an abradable coating. Id. at 9. After acknowledging the Examiner’s rejection of claim 3, including a rationale of “‘design choice’ or Appellant not stating a problem solved by the claimed values,” the Appellants argue that the Examiner’s rationale is insufficient and fails to “provide some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Appeal Br. 4; Reply Br. 3; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 6 Appeal 2015-008053 Application 13/236,926 418 (2007). The Appellants’ argument is not persuasive. Here, the Examiner’s rejection includes findings and reasoning to support the conclusion of obviousness. Supra. In this case, the Appellants merely express a conclusion that the Examiner’s rationale is insufficient without providing a persuasive explanation based on evidence or technical reasoning why it is inadequate. See also Ans. 11. Thus, we sustain the Examiner’s rejection of claim 3 as unpatentable over Hajmrle and Miyamoto. Claims 7, 8, 10, 14, and 15 fall with claim 3. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We AFFIRM the Examiner’s decision rejecting claims 1—15. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation