The Boeing Company

Patent Trials and Appeals Board

Mar 23, 2022

2021001660 (P.T.A.B. Mar. 23, 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. 14/508,846 10/07/2014 Gregory M. Newbloom 13-1939-US-NP 1629 165241 7590 03/23/2022 Quinn IP Law / Boeing 21500 Haggerty Rd Suite 300 Northville, MI 48167 EXAMINER BAREFORD, KATHERINE A ART UNIT PAPER NUMBER 1718 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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): adomagala@quinniplaw.com patentadmin@boeing.com usdocketing@quinniplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte GREGORY M. NEWBLOOM, WILLIAM A. THOMPSON, MARC J. FRONING, and ARASH GHABCHI __________ Appeal 2021-001660 Application 14/508,846 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and MERRELL C. CASHION, JR., Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision finally rejecting claims 1, 3-6, 10-14, 21, and 23. Claims 7-9, 15, and 17-20 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as The Boeing Company. Appeal Brief dated July 28, 2020 (“Appeal Br.”), at 3. Appeal 2021-001660 Application 14/508,846 2 Representative claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. 1. A method for forming a polymeric hydrophobic coating on a substrate by a high velocity oxygen fuel (HVOF) thermal spray deposition process, comprising: feeding a HVOF thermal spray torch with a coating precursor, the coating precursor including polymeric particles of a polymer powder, the polymeric particles having an initial particle morphology; heating the polymeric particles with the HVOF thermal spray torch; controlling a heating temperature of the HVOF thermal spray torch to obtain a mixture of partially melted polymeric particles, which retain a fraction of the initial particle morphology, and fully unmelted polymeric particles, which fully retain the initial particle morphology, wherein controlling the heating temperature of the HVOF thermal spray torch comprises tuning at least one deposition parameter of the HVOF thermal spray process, including setting a fuel-to-oxygen ratio of the HVOF thermal spray torch to less than one to prevent complete melting and/or burning of the polymeric particles; accelerating the polymeric particles towards the substrate using the HVOF thermal spray torch; and impacting the substrate simultaneously with the partially melted polymeric particles and the fully unmelted polymeric particles to form the polymeric hydrophobic coating with an average surface roughness of between about 1 nanometer and about 100 micrometers. Appeal Br. 22. The Examiner maintains the following grounds of rejection on appeal: Appeal 2021-001660 Application 14/508,846 3 (1) claims 1, 3-5, 10, and 21 under 35 U.S.C. § 103 as unpatentable over EP 8982 in view of O’Donnell,3 Jones,4 Sato,5 Li,6 TS,7 and Kang,8 as evidenced by Muffoletto,9 Rehage,10 and Ritter;11 (2) claims 6 and 23 under 35 U.S.C. § 103 as unpatentable over EP 898 in view of O’Donnell, Jones, Sato, Li, TS, and Kang, as evidenced by Muffoletto, Rehage, and Ritter, further in view of Subramanian;12 and (3) claims 11-14 under 35 U.S.C. § 103 as unpatentable over EP 898 in view of O’Donnell, Jones, Sato, Li, TS, and Kang, as evidenced by Muffoletto, Rehage, and Ritter, further in view of Sakoske.13 B. DISCUSSION Claim 1 recites a method for forming a polymeric hydrophobic coating by a high velocity oxygen fuel (HVOF) thermal spray deposition process. Appeal Br. 22. The claimed method includes the step of controlling a heating temperature of the HVOF thermal spray torch to obtain a mixture of partially melted polymeric particles, which retain a fraction of the initial particle morphology, and fully 2 EP 0 988 898 A2, published March 29, 2000. 3 US 2011/0197928 A1, published August 18, 2011. 4 US 2006/0263516 A1, published November 23, 2006. 5 US 2010/0107982 A1, published May 6, 2010. 6 Mingheng Li and Panaglotis D. Christofides, Modeling and Control of High- Velocity Oxygen-Fuel (HVOF) Thermal Spray: A Tutorial Review, 18 J. of Thermal Spray Tech. 753-68 (2009). 7 Thermal Spraying Practice, Theory, and Application (American Welding Society, Inc., 1985). 8 US 2014/0251501 A1, published September 11, 2014. 9 US 5,716,422, issued February 10, 1998. 10 US 2013/0017401 A1, published January 17, 2013. 11 US 6,136,453, issued October 24, 2000. 12 US 2004/0202886 A1, published October 14, 2004. 13 US 2006/0246297 A1, published November 2, 2006. Appeal 2021-001660 Application 14/508,846 4 unmelted polymeric particles, which fully retain the initial particle morphology. Appeal Br. 22. The Appellant discloses that “the higher the degree of melting of the particles, the more the particles will flatten and flow freely to adhere to the substrate . . . and provide a durable coating.” Spec. ¶ 25. Partially melted or fully unmelted particles, on the other hand, which retain at least a fraction of their initial morphology, are said to produce a rough surface upon impact with a substrate. Spec. ¶ 31. According to the Appellant, a roughened surface contributes to the hydrophobicity of the coating because “air molecules, which are highly hydrophobic, may become entrapped in the protruding surface structures of a roughened surface and repel water and ice.” Spec. ¶ 24. Claim 1 recites that the step of controlling the heating temperature of the HVOF spray torch comprises “tuning at least one deposition parameter of the HVOF thermal spray process, including setting a fuel-to-oxygen ratio of the HVOF thermal spray torch to less than one to prevent complete melting and/or burning of the polymeric particles.”14 Appeal Br. 22 (emphasis added); see also Spec. ¶ 31 (disclosing that “hydrophobic coatings may be produced using fuel-to-oxygen ratios of between about 0.5 to about 0.9”). Claim 21, the other independent claim on appeal, recites a fuel-to-oxygen ratio within the range recited in claim 1 (i.e., “between about 0.5 to about 0.9”). Appeal Br. 26. EP 898 discloses using a HVOF process to provide a durable polyetheretherketone (PEEK) composite coating having a low porosity, typically less than 1% porosity. EP 898, at ¶ 11. The coating is said to be useful for bearing 14 We interpret claim 1 as requiring the fuel-to-oxygen ratio be set to less than one as well as permitting additional deposition parameters to be tuned, such as the fuel and/or oxygen feed rate(s) as recited in claim 21, to obtain a mixture of partially melted and fully unmelted polymeric particles. See Appeal Br. 26. Appeal 2021-001660 Application 14/508,846 5 components. EP 898, at ¶ 11. In contrast to the claimed invention, EP 898 discloses that the PEEK composite particles are partially or fully melted, creating a stream of semi-molten or molten particles that form a continuous coating having a lamellar structure. EP 898, at ¶ 23. EP 898 discloses that [a]n optimum window of spray parameters has been established to ensure low porosity and great bond strength to permit the PEEK composite layer to be used in load bearing environments. Preferably, the HVOF process is carried out with the aid of a thermal spray gun, such as the Miller Thermal Spray Gun, Model HV2000, available from Miller Thermal, Inc. . . . The Miller Thermal Spray Gun is equipped with a 12mm combustion chamber and the fuel gas, preferably hydrogen, to oxygen ratio is 3.33. EP 898, at ¶¶ 21-22 (emphasis added). EP 898 discloses that “if the PEEK powder is not heated sufficiently, unmelted particles are propelled against the desired substrate resulting in poor adhesion and undesirably high porosity.” EP 898, at ¶ 5 (emphasis added). The Appellant argues that EP 898 “fails to mention adjusting the HVOF thermal spray parameters to control a heating temperature that generates a mixture of partially melted polymeric particles and fully unmelted polymeric particles, as recited in the claims.” Appeal Br. 12 (emphasis added). In contrast to the claimed invention, the Appellant argues that the PEEK coatings disclosed in EP 898 “exhibit low porosity (low roughness) due to sufficiently high deposition temperatures that allow the PEEK particles to melt enough to strongly bind to the substrate.” Appeal Br. 12. Consistent with that disclosure, the Appellant argues that EP 898 “teaches setting the fuel-to-oxygen ratio to 3.33 under optimized HVOF spraying conditions to provide durable PEEK coatings.” Appeal Br. 17 (citing EP 898, at ¶ 21). The Appellant argues that “one of ordinary skill in the art Appeal 2021-001660 Application 14/508,846 6 would have avoided lowering the fuel-to-oxygen ratio to less than one to avoid poor substrate adhesion of PEEK at lower temperatures.” Appeal Br. 17 (citing EP 898, at ¶¶ 4-5). The Examiner recognizes that EP 898 does not disclose a particle mixture that includes fully unmelted particles or a fuel-to-oxygen ratio within the claimed range. See, e.g., Final Act. 11, 27.15 Nonetheless, the Examiner finds that the remaining prior art of record suggests that the fuel-to-oxygen ratio, as well as other parameters, may be adjusted “to give desirable increased surface roughness by giving controlled partial melting and where unmelted particles would further be expected to be conventionally and acceptably present.” Final Act. 27-28. We understand that the prior art of record describes how parameters of an HVOF deposition process may be modified to obtain a coating having a desired surface roughness. See, e.g., Final Act. 30 (finding that “Sato describes how spray parameters can be controlled to give partial melting and a rougher yet adhered coating”); Ans. 1416 (finding that the prior art suggests a desire to control the roughness of a coating for hydrophobic purposes as opposed to controlling particle melting to achieve increased deposition efficiency). However, the Examiner has failed to explain, in any detail, why one of ordinary skill in the art would have considered using a porous or rough hydrophobic coating in the load bearing environments described in EP 898. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (the examiner bears the initial burden of presenting a prima facie case of unpatentability). For that reason, we find that one of ordinary skill in the art would not have been motivated to reduce the fuel-to-oxygen ratio disclosed in EP 898 15 Final Office Action dated March 19, 2020. 16 Examiner’s Answer dated October 19, 2020. Appeal 2021-001660 Application 14/508,846 7 (i.e., 3.33) to a value less than one, as recited in claim 1. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (the determination of optimum values outside a disclosed range may not be obvious where the prior art suggests that the optimum should be sought within the disclosed range). The Examiner finds that EP 898 “is not limited just to described example conditions” and directs our attention to paragraph 31 of EP 898. Ans. 6. That paragraph states, in relevant part: It will be understood that the foregoing description is of a preferred exemplary embodiment of this invention, and that the invention is not limited to the specific form shown. For example, the method may be applied to a wide variety of components; the precise mixture of constituents in the PEEK composite may be adjusted for desired applications or effects; the HVOF parameters may be adjusted according to the PEEK composite mixture, the particulate size, the type of HVOF thermal spray gun utilized and the environment in which the process is implemented . . . . These and other modifications may be made in the design and arrangement of the elements [without] departing from the scope of the invention as expressed in the appended claims. EP 898, at ¶ 31 (emphasis added). EP 898 recognizes that PEEK “has many applications as a coating material” but warns that “if the PEEK powder is not heated sufficiently, unmelted particles are propelled against the desired substrate resulting in poor adhesion and undesirably high porosity.” EP 898, at ¶ 5 (emphasis added). Consistent with that disclosure in paragraph 5, EP 898 discloses that the process of the present invention “provides a durable PEEK composite coating having a low porosity, typically less than 1% porosity.” EP 898, at ¶ 11; see also EP 898, at col. 8, l. 56- col. 9, l. 1 (reciting, in claim 19, that “a porosity less than one percent” is attained in the spraying step). Based on the foregoing, we find that paragraph 31 of EP 898 Appeal 2021-001660 Application 14/508,846 8 in combination with the remaining disclosure weighs against reducing the fuel-to- oxygen ratio in EP 898 to a value within the claimed range. Finally, the Examiner finds “there would be at least some fully unmelted particles in the spray [of EP 898] from random fluctuations of gas phase and particle temperatures on impact.” Final Act. 12; see also Ans. 13 (relying on Li as evidence that “in spraying there can be ‘unmelted particles’”). To the extent that the Examiner is relying on inherency to establish that EP 898’s particle mixture includes fully unmelted particles as claimed, the Examiner has failed to direct us to any evidence establishing that the conditions of EP 898’s process necessarily produce fully unmelted particles. See Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939) (“The mere fact that a certain thing may result from a given set of circumstances is not sufficient [to establish inherency].”). In that regard, the evidence of record establishes that the fuel-to-oxygen ratio affects the temperature of the polymeric particles, and EP 898 discloses a fuel-to- oxygen ratio of 3.33, which is well outside the range recited in claim 1. See Final Act. 16 (finding that controlling the fuel-to-oxygen ratio affects melting); EP 898, at ¶ 22. Moreover, for the reasons discussed above, the Examiner has failed to establish that it would have been obvious to reduce EP 898’s fuel-to-oxygen ratio to “less than one” as claimed. Appeal Br. 22. Based on the foregoing, the obviousness rejections of claims 1, 3-6, 10-14, 21, and 23 are not sustained. C. CONCLUSION The Examiner’s decision is reversed. In summary: Appeal 2021-001660 Application 14/508,846 9 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-5, 10, 21 103 EP 898, O’Donnell, Jones, Sato, Li, TS, Kang, Muffoletto, Rehage, Ritter 1, 3-5, 10, 21 6, 23 103 EP 898, O’Donnell, Jones, Sato, Li, TS, Kang, Muffoletto, Rehage, Ritter, Subramanian 6, 23 11-14 103 EP 898, O’Donnell, Jones, Sato, Li, TS, Kang, Muffoletto, Rehage, Ritter, Sakoske 11-14 Overall Outcome 1, 3-6, 10- 14, 21, 23 REVERSED