GENERAL ELECTRIC COMPANY

Patent Trials and Appeals Board

Oct 8, 2020

2019005559 (P.T.A.B. Oct. 8, 2020)

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.
15/199,084 08/01/2016 Patrick James McCluskey 283633-US-1
(551-0419US1)
1017
161134 7590 10/08/2020
The Small Patent Law Group LLC
225 S. Meramec Ave.
St. Louis, MO 63105
EXAMINER
YANG, ZHEREN J
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
10/08/2020 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):
GRCLegal.mail@ge.com
docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK JAMES MCCLUSKEY,
BERNARD PATRICK BEWLAY, AMBARISH JAYANT KULKARNI,
KRZYSZTOF JACEK LESNICKI, BYRON ANDREW PRITCHARD, and
NICOLE JESSICA TIBBETTS
Appeal 2019-005559
Application 15/199,084
Technology Center 1700
Before LINDA M. GAUDETTE, BRIAN D. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
Appeal 2019-005559
Application 15/199,084
2

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–5, 7, 8, 10, 11, 13–17, 19–22, and 24–26.3
We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to an anti-stick coating for components, such as
gas turbine engine components, that inhibits the accumulation of adherent,
contaminant deposits typically entrained in the flow of air through the
components during service. Spec. ¶ 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An article, comprising:
a substrate that is substantially opaque to visible light;
and
a coating disposed on the substrate, wherein the coating
comprises a coating material having an inherent index of
refraction, wherein the coating has an effective index of
refraction that is less than the inherent index of refraction, and
wherein the coating comprises a plurality of columnar
structures oriented such that a longitudinal axis of each of the
plurality of columnar structures form an angle with respect to a
direction tangential to the substrate that is less than 90 degrees,
and wherein each of the plurality of columnar structures have a
nominal width of less than 2.5 micrometers, and wherein each

1 This Decision includes citations to the following documents: Specification
filed June 30, 2016 (“Spec.”); Final Office Action dated July 26, 2018
(“Final Act.”); Appeal Brief filed December 19, 2018 (“Appeal Br.”);
Examiner’s Answer dated May 31, 2019 (“Ans.”); and Reply Brief filed July
16, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as General
Electric Company. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-005559
Application 15/199,084
3

of the plurality of columnar structures have a nominal
intercolumnar spacing of less than 5 micrometers such that the
effective index of refraction of the coating is less than 1.8.
Appeal Br. 7 (Claims App.).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Name Reference Date
Suzuki

US 2010/0039708 A1

Feb. 18, 2010

Kulkarni

US 2010/0247321 A1 Sept. 30, 2010
Varanasi

US 2013/0129978 A1 May 23, 2013
Schmidt US 2013/0236322 A1 Sept. 12, 2013

Zachary et al., (“The Long and Short of Last-stage Blades”, from
PowerMag, 15 December 2006, retrieved on 1 April 2017).
Siemens (“SGT-400 Industrial Gas Turbine”, Power Generation: (ISO)
12.90 MW(e)).
REJECTIONS
1. Claims 1–5, 7, 8, 10, 11, 13–17, 19–21, 25, and 26 are rejected
under 35 U.S.C. § 103 as unpatentable over Varanasi and Schmidt, as
evidenced by Suzuki and Zachary.
2. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable
over Varanasi and Schmidt, as evidenced by Suzuki and Zachary, further in
view of Siemens.
3. Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable
over Varanasi and Schmidt, as evidenced by Suzuki and Zachary, further in
view of Kulkarni.
Appeal 2019-005559
Application 15/199,084
4

OPINION
The Appellant argues that the Examiner reversibly erred in finding
that Varanasi discloses or suggests a “coating” “compris[ing] a plurality of
columnar structures” (independent claims 1, 26). Appeal Br. 4. The
Appellant’s argument is persuasive for the reasons discussed below.
The Specification defines the term “coating” as “a material disposed
on at least a portion of an underlying surface in a continuous or
discontinuous manner.” Spec. ¶ 12. The coating “comprises (a) a fluoride of
one or more alkaline earth elements, (b) alumina, silica, zirconia, or
chromia, or (c) a combination including any one or more of the foregoing
alternatives.” Id. ¶ 26. The underlying surface (substrate) may be “a titanium
alloy, a superalloy, or a ceramic-matrix composite.” Id. According to the
Specification, the coating may be applied to the substrate by physical vapor
deposition methods such as sputtering or evaporation, or by other known
techniques such as chemical vapor deposition, thermal spraying, plasma
spraying or spin coating. Id. ¶ 27. “Columnar structures . . . may be
deposited, for example, using electron-beam assisted physical vapor
deposition.” Id.
Varanasi discloses “articles, devices, and methods for controlling the
impingement behavior of molten metal/ceramic droplets on surfaces in
industrial processes.” Varanasi ¶ 6. Varanasi is said to have discovered that
the texture of a substrate surface can be engineered to achieve either
metalophobicity, such that impinging molten metal droplets bounce off the
surface, or metalophilicity, such that impinging molten metal droplets stick
to the surface. Id. ¶¶ 6, 41; see also id. ¶ 42 (disclosing that for applications
involving “metal fouling of turbines,” a “metalophobic surface is desired,”
and for applications involving “thermal spray coatings,” a “metalophilic
Appeal 2019-005559
Application 15/199,084
5

surface is desired.”). More specifically, Varanasi discloses “forming a
micro-scale and/or nanoscale surface texture upon the surface prior to
exposing the surface to an environment comprising liquid metal droplets or
ceramic droplets.” Id. ¶¶ 7, 10.
When discussing embodiments in which the substrate surface texture
is engineered so that the surface is metalophilic (i.e., impinging droplets
stick to the surface), Varanasi additionally describes “coating the surface
with a metal (e.g., an alloy) or ceramic in a thermal spray process.” Id. ¶ 10.
Varanasi discloses that the surfaces of intrinsically metalophobic materials
may become supermetalophobic when non-wetting features are introduced
to the surface. Id. ¶ 34. Varanasi defines “non-wetting features” as “physical
textures (e.g., random, including fractal, or patterned surface roughness) on a
surface that, together with the surface chemistry, make the surface non-
wetting.” Id. Varanasi discloses that non-wetting features may result from
chemical, electrical, and/or mechanical treatment of a surface. Id.
Varanasi describes experiments “conducted to observe molten metal
droplets impinging onto substrates whose surface texture features were
precisely controlled.” Id. ¶ 47. Varanasi tested “three different surface
textures on silicon—square microposts . . . , nanograss . . . , and mirror
polished silicon.” Id. Varnasi figure 2 shows the impingement of a molten
tin droplet on the “silicon surfaces with different texture dimensions,
including the smooth case.” Id.
The Examiner cites Varanasi paragraph 38 in support of a finding that
Varanasi describes a “coating” comprising a plurality of columnar
structures. Final Act. 2–3. Varnasi paragraph 38 is reproduced below with
added emphases:
Appeal 2019-005559
Application 15/199,084
6

Described herein are experiments with surfaces/coatings with
controlled impingement behavior of molten metal/ceramic
droplets, for which a systematic demonstration of development
towards complete rebound or deposition on target surfaces is
performed. These surfaces/coatings can improve efficiency and
reduce costs in a wide variety of industrial applications such as
power plant metal fouling, thermal spray coating, spray
forming, solder jet bumping, and rapid prototyping.
The Examiner contends that “the ‘/’ punctuation in ‘surfaces/coatings’ of
¶ 0038 of Varanasi takes on the meaning of the non-exclusive ‘or’, thus
implying that the two objects (viz. surfaces and coatings) have similar
designs and usages.” Ans. 6. The Examiner contends that paragraph 38
“makes it clear that the inventive concept of Varanasi may be either a
featured surface (formed on a substrate by an undisclosed means) or a
coating.” Ans. 6.
The Appellant argues that the Examiner has micharacterized
Varanasi’s reference to “surfaces/coatings” (Varanasi ¶ 38). The Appellant
cites Varanasi ¶ 7 in support of its contention that “the ‘surface’ of Varanasi
should be interpreted as the textured surface and ‘coating’ of Varanasi
should be interpreted as the liquid metal or ceramic droplets.” Appeal Br. 5.
The Appellant further argues that “the Examiner’s Answer has provided no
evidence that in the art the ‘/’ punctuation is automatically interpreted as
‘or’, or that one skilled in the art would ignore the teachings [of] Varanasi as
a whole to consider the ‘/’ punctuation to mean ‘or’.” Reply Br. 2.
“[P]reponderance of the evidence is the standard that must be met by
the [US]PTO in making rejections.” In re Caveney, 761 F.2d 671, 674 (Fed.
Cir. 1985).
A rejection based on section 103 clearly must rest on a factual
basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art. In making
Appeal 2019-005559
Application 15/199,084
7

this evaluation, all facts must be considered. The Patent Office
has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual
basis.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). When “there is a doubt as
to the factual basis supporting the conclusion . . . that the invention would
have been obvious to one of ordinary skill in the art[,] . . . the doubt should
be resolved in favor of the applicant.” In re Sporck, 301 F.2d 686, 690–91
(CCPA 1962).
Having considered the Examiner’s and the Appellant’s respective
arguments and evidence, as well as Varanasi’s disclosure in its entirety, we
are persuaded that the Examiner did not provide a sufficient factual basis to
support a finding that Varanasi discloses or suggests the claimed “coating.”
Rather, the Appellant has argued persuasively that Varanasi’s reference to
“surfaces/coatings” (Varanasi ¶ 38) more likely describes a substrate having
texture in the surface itself and a textured surface to which a coating has
been applied. See, e.g., id. ¶¶ 6–8, 10 (describing texturizing a surface prior
to coating with a metal or ceramic); compare id. ¶ 34 (“In certain
embodiments, non-wetting features result from chemical, electrical, and/or
mechanical treatment of a surface.”), with Schmidt4 ¶ 40 (describing
chemical and mechanical surface treatments to form geometric features as
involving, respectively, removal of surface portions and deformation).

4 The Examiner relied on Schmidt for a teaching of surface geometric
structures that are inclined at different angles with respect to a substrate
surface. See Final Act. 6.
Appeal 2019-005559
Application 15/199,084
8

In sum, for the reasons discussed above, the Appellant has persuaded
us of reversible error in the Examiner’s obviousness determination as to
independent claims 1 and 26. The Examiner relies on the same, unsupported
findings in rejecting the dependent claims. See generally Final Act. 7–11.
Accordingly, we do not sustain the rejections of claims 1–5, 7, 8, 10, 11, 13–
17, 19–22, and 24–26.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7, 8, 10,
11, 13–17,
19–21, 25,
26
103 Varanasi, Schmidt,
Suzuki, Zachary
1–5, 7, 8,
10, 11, 13–
17, 19–21,
25, 26
22 103 Varanasi, Schmidt,
Suzuki, Zachary,
Siemens
22
24 103 Varanasi, Schmidt,
Suzuki, Zachary,
Kulkarni
24
Overall
Outcome:

1–5, 7, 8,
10, 11, 13–
17, 19–22,
24–26
REVERSED