Ex Parte Strock et al

Patent Trial and Appeal Board

Jun 27, 2017

13236926 (P.T.A.B. Jun. 27, 2017)

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.
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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
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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
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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).
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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,
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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
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