MTU Aero Engines AG

Patent Trials and Appeals Board

Nov 20, 2020

2020002763 (P.T.A.B. Nov. 20, 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.
15/204,181 07/07/2016 André WERNER 6570-P50304 5501
13897 7590 11/20/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
PRAGER, JESSE M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
11/20/2020 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRÉ WERNER, MANUEL PUSCH, PHILIPP UTZ, and
HEINRICH WALTER
Appeal 2020-002763
Application 15/204,181
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 19–38. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as MTU Aero Engines
AG. Appeal Br. 3.
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Application 15/204,181

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to sealing fin armoring and a method for
applying the armoring to the sealing fin of a blade. Claims 19 and 33 are
independent. Claim 19, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
19. A method for coating a sealing fin of a blade of a
turbomachine with armoring, wherein the method comprises
applying onto the sealing fin a slurry which comprises particles
of MCrAlY or particles for forming an MCrAlY layer, where M
represents nickel and/or cobalt, and aluminizing the sealing fin
having the slurry applied thereon, and wherein the method
further comprises depositing a layer formed of hard material on
the aluminized sealing fin.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wydra US 7,101,448 B2 Sept. 5, 2006
Boeck US 2013/0149165 A1 June 13, 2013
Walter US 2013/0189429 A1 July 25, 2013
Strock US 2016/0305442 A1 Oct. 20, 2016
Werner2 DE 102005038374 A1 Feb. 15, 2007
REJECTIONS3
I. Claims 19–24, 26–28, 30–34, and 36–38 are rejected under 35
U.S.C. § 103 as unpatentable over Boeck, Werner, and Wydra.

2 Our citations to Werner refer to the English-language translation made of
record on June 13, 2019.
3 A rejection of claims 21, 26, 27, and 38 under 35 U.S.C. § 112(a), as
failing to comply with the written description requirement and a rejection of
claim 31 under 35 U.S.C. § 112(b) as indefinite are withdrawn in the
Answer. Ans. 3; see also Final Act. 2–3.
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II. Claims 23–25 and 35 are rejected under 35 U.S.C. § 103 as
unpatentable over Boeck, Werner, Wydra, and Strock.
III. Claim 29 is rejected under 35 U.S.C. § 103 as being
unpatentable over Boeck, Werner, Wydra, and Walter.
OPINION
Rejection I; Obviousness Based on Boeck, Werner, and Wydra
Claim 19
The Examiner finds that Boeck applies an armor coating to a sealing
fin of a blade, but does not use a slurry, does not form a MCrAlY layer and a
hard material layer on the MCrAlY layer, and does not aluminize. Final
Act. 4. The Examiner finds that Werner applies a MCrAlY layer to a blade,
aluminizes the tip, and then forms a hard material on the aluminized tip. Id.
The Examiner also finds that Wydra discloses a coating process that uses a
slurry containing MCrAlY. The Examiner concludes that it would have
been obvious to modify the method of Boeck by applying a MCrAlY layer,
aluminizing, and depositing a layer formed of hard material on the
aluminized sealing fin, as taught by Werner, “to provide a method for
producing a wear-resistant temperature, oxidation and corrosion resistant,
abrasive protective layer which is relatively simple and inexpensive to carry
out.” Final Act. 5 (citing Warner ¶ 4). The Examiner also determines that it
would have been obvious to apply the MCrAlY layer as a slurry, as taught
by Wydra, “to provide a high quality cladding for a blade tip region in an
easy and inexpensive manner.” Id. (citing Wydra, 1:66–2:3; 2:35–43).
Hard Material
Appellant argues that the claims require “a layer formed of hard
material,” whereas Werner’s layer relied upon by the Examiner “is not a
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layer formed of hard material but a layer of a MCrAlY matrix having hard
material particles embedded therein.” Appeal Br. 10.
The Examiner responds that MCrAlY is a hard material. Ans. 3. In
the alternative, the Examiner asserts that the layer of Warner “is formed” of
a hard material because the hard particles are a “constituent of the layer.”
Id. According to the Examiner, both of the offered alternatives are
consistent with the Specification. Ans. 4.
Appellant replies that neither alternative is consistent with the
Specification. Reply Br. 2–4. Specifically, Appellant argues that MCrAlY
is not considered to be a hard material, because the Specification discloses
that hard particles are added to MCrAlY to add a wear protection function.
Reply Br. 2 (citing Spec. 5:7–9). Appellant asserts that the Specification
also discloses different embodiments in which one embodiment has
MCrAlY and the other embodiment adds hard material particles to the
MCrAlY layer. Reply Br. 3 (citing Spec. 9:14–25). According to Appellant,
the Specification makes clear that “the hard material (particles or layer) and
the MCrAlY (particles or layer) recited in the instant claims are different
materials.” Id.
Appellant further argues that the phrase “formed of” requires more
than just the inclusion of the hard material in the layer, and instead requires
that “the layer formed of hard material is a layer which contains nothing but
hard material.” Reply Br. 4 (citing Spec. 9:5–12)(emphasis added).
According to Appellant, because the Specification and claims distinguish
between a layer formed of hard material and a layer that comprises hard
material particles one of ordinary skill in the art would not consider a layer
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formed of hard material and a layer that includes hard material particles to
be the same. Id.
We are persuaded by Appellant’s argument that MCrAlY is not a hard
material as recited. However, we agree with the Examiner’s alternative
finding, namely, that the pertinent claim limitation is met by the inclusion of
hard particles. In other words, we disagree with Appellant’s claim
interpretation in which the phrase “formed of” in claim 19 requires “nothing
but” hard material. See Reply Br. 4.
The Specification discloses “an oxidation-resistant MCrAlY layer.”
Spec. 5:2. The Specification further discloses adding hard material particles,
“so that, besides the oxidation resistance, the applied MCrAlY can at the
same time also fulfill the function of the wear protection layer.” Spec. 5:7–
9. Based on this disclosure, the Specification appears to require the addition
of a material other than MCrAlY to provide the attributes of a hard material,
e.g., wear protection. Thus, the Specification appears to distinguish between
MCrAlY and a hard material. Moreover, Werner does as well. Werner
discloses applying a further layer that “consists of an MCrAlY matrix with
embedded hard material particles.” Warner ¶ 7. Given that both the
Specification and Werner disclose adding hard material particles to
MCrAlY, one of ordinary skill in the art would not understand MCrAlY by
itself to be a hard material consistent with how this term is used in the
Specification and art.
However, we do not agree with Appellant that inclusion of hard
material particles is excluded by the use of the phrase “formed of” in claim
19. The Examiner’s position is that Warner’s layer “is formed” of a hard
material because the hard particles are a “constituent of the layer.” Ans. 3.
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Appellant relies on page 9, lines 5–12 of the Specification as support for its
position that the term “formed of” requires nothing but hard material. There,
the Specification discloses that “[a] hard material layer, for example an
oxide-ceramic layer comprising titanium oxide and aluminum oxide is
applied by means of a spraying method.” Spec. 9:5–6 (emphasis added).
The Specification further discloses, “[t]he hard material layer may be formed
from one or more constituents and may comprise oxides, carbides and/or
nitrides. In particular, the hard material layer may be formed from
aluminum oxide and/or titanium oxide.” Spec. 5:20–22 (emphasis added).
Inclusion of words “may” and “comprise/comprising,” which are open-
ended, suggests that materials other than those specifically enumerated are
contemplated. The Examiner’s finding is, thus, consistent with the
Specification.
Rib Coating
Appellant further contends that “merely because WERNER mentions
the coating of the tip of a blade this would [not] render it obvious to one of
ordinary skill in the art to coat the radially outer rib arrangement with at
least one rib disclosed in BOECK by the method disclosed in WERNER.”
Appeal Br. 11 (emphasis omitted).
Appellant’s argument is not persuasive because Boeck already coats
the rib (“on each of the radially outer end faces of ribs 2 . . . there is disposed
a coating 3”), and the Examiner proposes to apply the coating to the rib
based on Werner’s method. Boeck ¶ 27; see also Final Act. 4. Appellant
does not attack the Examiner’s reasoning for the combination, stated above,
which we find to be reasonable because it comes directly from Werner. See
Werner ¶ 4; see also Final Act. 5.
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Coating Method
Appellant argues that because Boeck only uses a thermal spraying
method, there is no motivation to replace Boeck’s method with a slurry and
with Warner’s (regular) spraying, brushing or dipping. Appeal Br. 11.
According to Appellant, the underlying objective of Boeck is increasing the
coating in the radial outward direction in order to reduce the gap between
ribs. Id. at 12–14 (citing Boeck ¶¶ 5–10, 16–18, 28, 29). Appellant asserts
that using a slurry would not achieve this reduction and would render Boeck
“unsuitable for the intended purpose.” Id. at 14.
The Examiner responds that because the intended purpose of Boeck is
to provide an abrasive coating for a tip of a sealing fin, and because Boeck’s
blade would continue to operate as a sealing fin with an abrasive coating on
the tip, the proposed modification does not render the prior art unsatisfactory
for its intended purpose. Ans. 6–7.
Appellant replies that Boeck requires a coating with a contour that can
only be applied by spraying not by using a slurry. Reply Br. 4–5.
Appellant’s arguments on this point are unavailing for two reasons.
First, we agree with the Examiner that Boeck would still function as a
sealing fin. Second, even if Boeck were to require a contour, Appellant has
provided only attorney argument that no contour would result and lacks
persuasive evidence supporting the attorney argument. By contrast, a side-
by-side comparison of Appellant’s Figure 2 and Boeck’s Figure 2,
reproduced below, appears to directly contradict Appellant’s assertion.
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Appellant’s Figure 2 (left) shows, in a cross section through a sealing
fin 2, one embodiment of armoring 30 such as is used for the armoring of a
rotor blade. Spec. 8:17–18. Boeck’s Figure 2 (right) shows an enlargement
of the excerpt of shroud 1 with a rib arrangement. Boeck ¶ 27.
Boeck discloses that because “the axial distance (horizontal in FIG. 2)
increases between outer flanks 3.1 of the outer contour of a coating 3; the
coating will be broader radially outwardly in the axial direction.
Correspondingly, a gap s between the outer flanks of adjacent coatings is
reduced.” Boeck ¶ 29. Although we appreciate that it may be difficult to
form the underlying slurry layer with a contour, this layer is then coated with
a hard material layer based on the disclosure in Warner. Given the similarity
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in appearance between Boeck’s coating 3.1 and Appellant’s hard material
layer 33, we do not agree that Boeck as modified by Warner would not or
could not have an increase in the coating in the radial outward direction in
order to reduce the gap between ribs. Accordingly, we do not agree that the
proposed modification would render Boeck unsatisfactory for its intended
purpose.
We have considered all of Appellant’s arguments in support of the
patentability of independent claim 19, but find the Examiner has the better
position. For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s rejection of independent claim 19.
Claims 23, 24, 33, and 34—Aluminum Oxide
Aside from the unpersuasive arguments discussed above, Appellant
asserts that Werner does not disclose the specifically recited materials of
claims 23, 24, 33, and 34, such as aluminum oxide/titanium oxide. Appeal
Br. 14–15.
The Examiner responds that the rejection relies on Wydra, not
Werner, to disclose aluminum oxide, and reiterates that the phrase “formed
of is not exclusive language, and that the claim does not require that the
layer only be formed of aluminum oxide and/or titanium oxide.” Ans. 8.
The Examiner has the better position. The phrase “and/or” in claims
23 and 33 requires that one or both materials are present. Here, the
Examiner finds that “Wydra discloses the hard material comprises aluminum
oxide.” Final Act. 6 (citing Wydra, 2:27). Wydra discloses “us[ing]
particles of BN, SiC or Al2O3, since these particles are harder.” Wydra,
2:27–28. Thus, Appellant’s arguments as to Warner do not apprise us of
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error based on the combination of Boeck, Warner, and Wydra. We sustain
the rejection of claims 23, 24, 33, and 34
Claims 20–22, 26–28, 30–32, and 36–38
Appellant does not argue separately for the other dependent claims.
See Appeal Br. 8–15. Accordingly, we sustain the rejection of claims 20–
22, 26–28, 30–32, and 36–38 as unpatentable over Boeck, Werner, and
Wydra.

Rejections II and III
Rejections II and III are based on the combination of Boeck, Werner,
and Wydra, with the addition of Strock for Rejection II and the addition of
Walter for Rejection III.
Appellant asserts that Strock and Walter do not cure the deficiencies
of Rejection I. Appeal Br. 15–17. For the reasons set forth above, however,
we are not apprised of any deficiency in Rejection I.
For rejection II, Appellant also asserts that the ceramic filled metallic
layer of Strock “is not formed of hard material but merely contains (a
relatively low volume fraction of) ceramic particles embedded in a metallic
matrix (similar to what is disclosed in WERNER).” Appeal Br. 16.
For the reasons set forth above, we do not agree that a layer formed of
hard material contains nothing but hard materials.
Accordingly, we sustain the rejections of claims 23–25 and 35 as
unpatentable over Boeck, Werner, Wydra, and Strock (Rejection II) and
claim 29 as unpatentable over Boeck, Werner, Wydra, and Walter (Rejection
III).
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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19–24, 26–
28, 30–34,
36–38
103 Boeck, Werner,
Wydra
19–24, 26–28,
30–34, 36–38

23–25, 35 103 Boeck, Werner,
Wydra, Strock
23–25, 35
29 103 Boeck, Werner,
Wydra, Walter
29
Overall
Outcome:
19–38
TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED