UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Jun 14, 2021

2020003779 (P.T.A.B. Jun. 14, 2021)

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.
15/110,819 07/11/2016 Xia Tang 75040U02;
67097-2798 PUS1
4193
54549 7590 06/14/2021
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
IVEY, ELIZABETH D
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
06/14/2021 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 XIA TANG, PAUL SHEEDY, TANIA BHATIA KASHYAP,
WAYDE R. SCHMIDT, and DANIEL G. GOBERMAN
Appeal 2020-003779
Application 15/110,819
Technology Center 1700
Before KAREN M. HASTINGS, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HASTINGS, 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 1, 3, 4, 6, 8–10, 12–15, 21, 22, and 24–
26. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Raytheon
Technologies Corporation, with a confirmatory license to the Navy,
Secretary of The United States of America. Supplemental Appeal Br. 2
(filed April 28, 2020).
Appeal 2020-003779
Application 15/110,819
2
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An article comprising:
a silicon oxycarbide-based layer having Si, O, and C in a
covalently bonded network, the silicon oxycarbide-based layer
having first and second opposed surfaces, the silicon oxycarbide-
based layer being composed of a continuous matrix phase of
either SiO2 or barium-magnesium alumino-silicate, dispersed
regions of silicon oxycarbide within the continuous matrix phase,
and dispersed regions of the other of the SiO2 or the barium-
magnesium alumino-silicate within the continuous matrix phase,
wherein the silicon oxycarbide has a composition SiOxMzCy,
where M is at least one metal selected from the group consisting
of aluminum, boron, alkaline earth metals and combinations
thereof, x < 2, y > 0 and z < 1 and x and z are non-zero; and
a calcium-magnesium alumino-silicate-based layer
interfaced with the first surface of the silicon oxycarbide-based
layer.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hongoh US 2012/0034491 A1 Feb. 9, 2012
Schmidt US 2012/0328886 A1 Dec. 27, 2012
Schmidt US 2013/0183531 A1 July 18, 2013

REJECTION
Claims 1, 3, 4, 6, 8–10, 12–15, 21, 22, and 24–26 are rejected under
35 U.S.C. § 103 as being unpatentable over the Schmidt references
(hereafter referred to respectively as Schmidt ’531 and Schmidt ’886) and
Hongoh. Final Act. 4.

Appeal 2020-003779
Application 15/110,819
3
OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejection (See generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s arguments focus on independent claim 1 (generally
Appeal Br.; Reply Br.).
Appellant argues Hongoh’s teachings are limited to a CMAS layer for
an underlying YSZ (yttria stabilized zirconia) layer and that there would
have been no reason for one skilled in the art to apply this CMAS layer to
the “silicon-oxycarbide based layer of Schmidt ’531” (Appeal Br. 3; Reply
Br. 1–2). Appellant further contends that Hongoh’s use of an YSZ thermal
barrier coating on its gas turbine engine component leads away from the
claimed invention (Appeal Br. 3).
Appeal 2020-003779
Application 15/110,819
4
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the applied prior art as a whole and the inferences that one of
ordinary skill would have made.
First, as pointed out by the Examiner, Schmidt ’531 explicitly teaches
that one or more topcoats may be added to its silicon-oxycarbide layer for
further protection of its gas turbine engine component (Schmidt ’531 ¶ 46;
Ans. 8). All of the applied prior art, as well the instant Specification, is
directed to materials useful for gas turbine engine components (Spec. ¶ 4;
Schmidt ’531 ¶ 3; Schmidt ’886 ¶ 2; Hongoh ¶ 1). Second, contrary to
Appellant’s argument, Hongoh does not limit its teachings to a CMAS
topcoat on a yttria stabilized zirconia; indeed the claims and disclosure of
Hongoh encompass applying the CMAS reactive layer on a thermal barrier
coating “formed from any suitable material known in the art” (Hongoh ¶ 12,
see also Hongoh’s claim 1; Ans. 8).
Accordingly, Appellant has not shown reversible error in the
Examiner’s position that one of ordinary skill in the art would have readily
inferred from the overall teachings of the applied prior art that Hongoh’s
CMAS reactive coating would have been a predictable, known coating for
use as a top coat for the gas turbine engine materials of Schmidt
’531/Schmidt ’886 to add more durability thereto (e.g., Ans. generally; Final
Act. 6–7). Under the flexible inquiry set forth by the Supreme Court, the
PTO must take account of the “inferences and creative steps,” or even
routine steps, that an ordinary artisan would employ. Ball Aerosol &
Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir.
2009). One of ordinary skill would have readily inferred and appreciated
from the applied prior art as a whole that a known CMAS topcoat as
exemplified in Hongoh to protect the known thermal barrier coating of
Appeal 2020-003779
Application 15/110,819
5
Schmidt ’531/Schmidt ’886 would have been within the skill and creativity
of one of ordinary skill in the art.
Likewise, Appellant’s argument that Hongoh teaches away from the
use of a CMAS coating on de facto anything except for an YSZ material
(Appeal Br. 3) is not persuasive for reasons already detailed above. Whether
the prior art teaches away from the claimed invention is a question of fact.
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well established
that a prior art reference must be considered in its entirety, i.e., as a whole,
when determining if it would have led one of ordinary skill in the art away
from the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1550 (Fed. Cir. 1983). One of ordinary skill in the art would
have readily appreciated that there are numerous known suitable materials
for a gas turbine engine components that one may apply the CMAS topcoat
of Hongoh. See In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments.); Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (Even a “statement
that a particular combination is not a preferred embodiment does not teach
away absent clear discouragement of that combination.”). Appellant has not
sufficiently explained why the claimed subject matter is “more than the
predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417; see also Ans. 24, 25.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, as well as all claims dependent thereon, noting that Appellant relies
upon the arguments made for claim 1 for all the other claims.

Appeal 2020-003779
Application 15/110,819
6
CONCLUSION
The Examiner’s rejection is AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6,
8–10, 12–
15, 21,
22, 24–26
103 Schmidt 531,
Schmidt 886,
Hongoh
1, 3, 4, 6, 8–
10, 12–15,
21, 22, 24–
26

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