HONEYWELL INTERNATIONAL INC.

Patent Trials and Appeals Board

Mar 16, 2022

2021001760 (P.T.A.B. Mar. 16, 2022)

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. 14/312,869 06/24/2014 Vladimir K. Tolpygo H0042669 (002.0342) 1031 89955 7590 03/16/2022 HONEYWELL/LKGLOBAL Intellectual Property Services Group 855 S. Mint Street Charlotte, NC 28202 EXAMINER UTT, ETHAN A ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): DL-PMT-SM-IP@Honeywell.com honeywell@lkglobal.com patentservices-us@honeywell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VLADIMIR K. TOLPYGO and WIL BAKER Appeal 2021-001760 Application 14/312,869 Technology Center 1700 Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and N. WHITNEY WILSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-6, 8-10, and 20-24. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 This Decision includes citations to the following documents: Specification filed June 24, 2014 (“Spec.”); Non-Final Office Action entered March 5, 2020 (“Non-Final Act.”); Appeal Brief filed October 5, 2020 (“Appeal Br.”); and Examiner’s Answer entered October 27, 2020 (“Ans.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Honeywell International Inc. as the real party in interest. Appeal Br. 1. Appeal 2021-001760 Application 14/312,869 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to thermal barrier coatings for turbine engines. Spec. ¶ 3. Claim 1 is reproduced below and is illustrative of the claimed subject matter (Appeal Br. 12, Claims App.): 1. A thermal barrier coating composition consisting of, by mole percent: about 8% to about 30% YO1.5; about 8% to about 30% YbO1.5; about 8% to about 30% TaO2.5; about 0% to about 10% HfO2; and a balance of ZrO2, and trace impurities at less than 0.5%, wherein the thermal barrier coating composition is a multi-phase material comprising a tetragonal zirconia phase and at least one additional phase selected from the group consisting of: a tantalate phase, a cubic zirconia phase, and an orthorhombic phase, and wherein the tetragonal zirconia phase and the at least one additional phase are nonreactive with one another and remain as separate phases in the thermal barrier coating composition. Claim 20 is also independent and recites a turbine engine component including a similar thermal barrier coating composition as recited in claim 1. Appeal Br. 14, Claims App. Appeal 2021-001760 Application 14/312,869 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Zhu et al. (“Zhu”) US 2005/0026770 A1 Feb. 3, 2005 Fu et al. (“Fu”) US 2010/0159270 A1 June 24, 2010 Tolpygo US 2010/0327213 A1 Dec. 30, 2010 REJECTIONS 1. Claims 1-5, 8, 9, and 20-24 are rejected under 35 U.S.C. § 103 as being unpatentable over Tolpygo and Zhu. Non-Final Act. 3-12. 2. Claims 6, 9, and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Tolpygo, Zhu, and Fu. Non-Final Act. 12-16. 3. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Tolpygo, Zhu, and Fu. Non-Final Act. 16. OPINION We confine our discussion to claim 1, which is sufficient to dispose of the rejections on appeal. Rejection 1 The Examiner’s Rejection In rejecting claim 1 as unpatentable over Tolpygo and Zhu, the Examiner found Tolpygo discloses a thermal barrier coating composition including YO1.5, TaO2.5, and the balance ZrO2. Non-Final Act. 3. The Examiner found that although Tolpygo discloses the thermal barrier composition may include additional rare earth metal oxides, Tolpygo does Appeal 2021-001760 Application 14/312,869 4 not disclose the presence of YbO1.5. Id. The Examiner found Zhu discloses a thermal barrier coating composition including YO1.5, TaO2.5, up to 25% YbO1.5 (Yb2O3), and a balance of HFO2 and/or ZrO2. Id. The Examiner found Zhu discloses YbO1.5 and TaO2.5 are useful for providing a defect clustering effect in a thermal barrier coating composition, which improves the stability of the thermal barrier coating composition through improved resistance to sintering. Id. The Examiner found that Zhu does not disclose individual ranges for YbO1.5 and TaO2.5, but one of ordinary skill in the art would have been able to determine the appropriate individual percentages based on the desired effects discussed in Zhu. Id. at 3-4. The Examiner determined it would have been obvious to modify Tolpygo’s thermal barrier composition to further include about 8% to about 17% YbO1.5 and about 8% to about 17% TaO2.5 as suggested by Zhu in order to improve the resistance to sintering of the thermal barrier coating composition. Non-Final Act. 4. The Examiner acknowledged that claim 1 recites the composition “consists of” the recited components and that Zhu discloses a “group B dopant for purposes of providing the defect clustering effect that improves sintering resistance” is present. Non-Final Act. 5. The Examiner determined that “in making the modifications described above, namely for purposes of improving sintering resistance, it would have been obvious to provide a group B dopant in the amounts as Zhu suggests, the range of which overlaps that of the claimed trace impurities.” Id. Appeal 2021-001760 Application 14/312,869 5 Appellant’s Arguments Appellant argues that when Tolpygo is modified by Zhu as set forth by the Examiner, the effect of improving resistance to sintering would not be achieved. Appeal Br. 8. In particular, Appellant contends Zhu discloses the presence of a base oxide (ZrO2 or HFO2), a primary stabilizer (YO1.5), a “group A dopant” (YbO1.5), and a “group B dopant” (any of NdO1.5, GdO1.5, SmO1.5, or EuO1.5), whereas the modification of Tolpygo specifically excludes the addition of a group B dopant beyond trace impurity amounts. Id. at 5-6, 8. Appellant argues that the Examiner’s rationale of providing a group B dopant in ranges that overlap the claimed trace impurities is directly counter to Zhu, which according to Appellant, requires “the group A and B dopants need to be at least in a somewhat close molar ratio, preferably substantially equimolar.” Id. at 8-9. Appellant argues that the suggested modification of Tolpygo would result in molar ratios of “group A” dopants to “group B” dopants that are outside the range disclosed in Zhu to achieve paired oxide complexes for the defect clustering effect, adding that including an amount of “group B” dopant in the lower amount suggested would require a similar decrease in the amount of “group A” dopant in order to remain consistent with the disclosure in Zhu. Id. at 9. As a result, Appellant contends that the effect disclosed in Zhu would not be imparted to Tolpygo in the amounts suggested by the Examiner, which does not support a prima facie case of obviousness. Id. at 10-11. Discussion We are persuaded by Appellant’s arguments. The main thrust of Appellant’s argument is that Zhu, when read as a whole, does not envision Appeal 2021-001760 Application 14/312,869 6 combinations of group A and group B dopants in the ratios necessary to meet the recited mole percentages of each component in claim 1. The Examiner’s position is that the group B dopant disclosed in Zhu may be present in amounts from 0% to 25%, which overlaps with the range for the “trace impurities at less than 0.5%” recited in claim 1. Non-Final Act. 5. Thus, the Examiner specifically relies on the rationale that in combining Tolpygo with Zhu, one of ordinary skill in the art would have applied both the group A and group B dopants disclosed in Zhu to the composition of Tolpygo in order to achieve the benefits of sintering resistance. Although Zhu discloses group A and group B dopants are preferably present in substantially equal molar percentages, in a broader teaching, Zhu discloses molar percent ratios of up to 10:1 group A dopant to group B dopant may be used. Zhu ¶ 26. In this regard, Zhu discloses group A dopants include both TaO2.5 and YbO1.5 (Yb2O3). Id. at ¶ 23. Zhu discloses the group A dopants and group B dopants provide paired oxide complexes in a base oxide to provide defective lattice structures based on local ionic segregation (defect clustering), which improves sintering resistance. Id. at ¶¶ 26, 29-30. Because claim 1 requires at least 8% of both TaO2.5 and YbO1.5, and Zhu discloses both TaO2.5 and YbO1.5 (Yb2O3) as group A dopants, we agree with Appellant that claim 1 requires at least 16% of the “group A” dopants recited in Zhu. Thus, to be consistent with the Examiner’s rationale relying on Zhu’s disclosure of improved sintering resistance due to a defect clustering effect, the lowest percentage of group B dopant amounts allowed by Zhu would be 1.6% (a 10:1 ratio of group A dopant to group B dopant). This is more than three times the allowed amount of impurities in claim 1 of Appeal 2021-001760 Application 14/312,869 7 less than 0.5%, where claim 1 additionally uses the term “consisting of” such that the claim is “closed” to the presence of additional components. The Examiner has not sufficiently explained how Tolpygo would have been modified with Zhu to achieve the composition recited in claim 1, while at the same time achieving the benefits disclosed in Zhu. Accordingly, we reverse the Examiner’s rejection of claim 1 and of independent claim 20, which recites similar limitations, as well as the claims dependent from claims 1 and 20 subjected to Rejection 1. Rejections 2 and 3 Claims 6 and 8-10, the subject of Rejections 2 and 3, depend from independent claim 1. The additionally cited prior art does not remedy the deficiencies discussed above with respect to claim 1. Accordingly, we reverse Rejections 2 and 3 for similar reasons as discussed above for Rejection 1. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-5, 8, 9, 20-24 103 Tolpygo, Zhu 1-5, 8, 9, 20-24 6, 9, 10 103 Tolpygo, Zhu, Fu 6, 9, 10 8 103 Tolpygo, Zhu, Fu 8 Overall Outcome 1-6, 8-10, 20-24 REVERSED