Werner Stamm

Patent Trials and Appeals BoardAug 13, 2019

14342247 - (D) (P.T.A.B. Aug. 13, 2019)

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. 14/342,247 02/28/2014 Werner Stamm P/5070-129 (V29754) 1099 119119 7590 08/13/2019 Ostrolenk Faber LLP 845 THIRD AVENUE New York, NY 10022 EXAMINER LA VILLA, MICHAEL EUGENE ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 08/13/2019 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): pat@ostrolenk.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WERNER STAMM __________ Appeal 2018-008520 Application 14/342,247 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and JANE E. INGLESE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 the Examiner’s Non-Final rejection of claims 17, 18, 22–24, 26 and 28–35.1 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. 1 The Appellant identifies Siemens Aktiengesellschaft as the real party in interest (App. Br. 1). Appeal 2018-008520 Application 14/342,247 2 Appellant’s invention is directed to a protective single layer for protecting a component against corrosion and oxidation (Spec. 1:3–5 (see claims 17 and 30)). Claim 17 is illustrative of the subject matter on appeal: 17. A protective single layer for protecting a component against corrosion and/or oxidation, wherein the single layer has the composition of an alloy, which contains at least the following elements (data in wt.%): 22% to 26% cobalt (Co), 15% to 16% chromium (Cr), 10.5% to 12% aluminum (Al), at least 0.3% of tantalum and a maximum of 1.5% tantalum, a total of 0.2% to 0.6% of yttrium (Y) and, optionally, at least one metal selected from the group consisting of: (1) scandium (Sc) and (2) the rare earth elements other than yttrium (Y), and a remainder of nickel (Ni), the alloy not containing rhenium (Re) and not containing silicon (Si), no silicon precipitates are formed, thereby preventing embrittlement of the alloy during use, and the protective single layer is applied by plasma spraying. (App. Br. 54, Claims App.) Appellant appeals the following rejections: 1. Claims 17, 18, 22–24, 26, and 28–35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sommer et al. (US 6,280,857 B1; iss. Aug., 28, 2001, hereinafter “Sommer”) in view of Stamm (EP 1790743 A1; iss. May 30, 2007, hereinafter “Stamm ‘743”) (Ans. 3– 5). Appeal 2018-008520 Application 14/342,247 3 2. Claims 30, 33, and 34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Stamm (US 2004/0180233 A1; pub. Sept. 16, 2004, hereinafter “Stamm ‘233”) (Ans. 5–6). 3. Claims 17, 18, 22–24, 26, and 28–35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Preston (US 4,005,989; iss. Feb. 1, 1997) in view of Sommer (Ans. 6–7). 4. Claims 17, 18, 22–24, 26, and 28–35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Khan et al. (US 2004/0079648 A1; pub. Apr., 29, 2004, hereinafter “Khan”) (Ans. 7–8). 5. Claims 17, 18, 22–24, 26, and 28–35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Khan in view of Stamm ‘743 (Ans. 8– 9). 6. Claims 17, 18, 22–24, 26, and 28–30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Goebel et al. (US 4,326,011; iss. Apr. 20, 1982, hereinafter “Goebel”) in view of Khan (Ans. 9–10). 7. Claims 17, 18, 22–24, 26, 28, and 30–35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hirota (JP 04032546 A; pub. Feb, 04, 1992) in view of Khan (Ans. 10–11). 8. Claims 17, 18, 22, 24, 26, 28, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hirota (Ans. 11–12). FINDINGS OF FACT & ANALYSIS Rejections (1), (6), (7), and (8) The Examiner’s findings and conclusions regarding Sommer, Stamm ‘743, Goebel, Hirota and Khan are located on pages 3–5 and 9–12 of the Answer. Appeal 2018-008520 Application 14/342,247 4 Regarding rejections (1) and (6), Appellant argues that claims 17 and 30 require that the alloy used in the protective single layer does not contain rhenium (Re) or silicon (Si), which is not taught or suggested by Sommer, Stamm ‘743, Goebel and Khan (App. Br. 8, 35). Appellant contends that Sommer teaches that using Re in the alloy improves corrosion and oxidation resistance of the coating (App. Br. 7). Appellant argues that comparative examples (e.g., EC3 in Table 2(b)) in Sommer demonstrate that without the Re the alloy coating has poor properties (App. Br. 7). Regarding rejection (6), Appellant argues that Goebel’s alloy coating contains silicon which is excluded by the claims (App. Br. 35). Although the Examiner finds that Sommer teaches that Re and Si are added to improve corrosion and oxidation resistance, the Examiner determines that it would have been obvious to eliminate Re if improved corrosion and oxidation resistance is not desired (Ans. 3–4). The Examiner finds that Stamm ‘743 teaches that chromium, aluminum, yttrium and M (i.e., a metal element) are the essential elements of the alloy (Ans. 3). The Examiner finds that Stamm ‘743’s teaching implies that other non-essential elements may be omitted from the MCrAlY alloy (Ans. 3). The Examiner’s reason for eliminating Re from Sommer’s alloy composition appears to be based on impermissible hindsight. Sommer teaches that Re is present in the composition in an amount of 1 to 8% and Si is added in an amount of 1 to 2.3% (Sommer, Table 1). Sommer teaches that Re and Si amounts outside these ranges reduce the corrosion and oxidation resistance of the alloy (Sommer col. 4, ll. 47–48). In light of these teachings, the Examiner’s finding that one of ordinary skill in the art would have eliminated the Re and Si content if oxidation and corrosion resistance Appeal 2018-008520 Application 14/342,247 5 was not desired runs contrary to what Sommer teaches one of ordinary skill in the art. Sommer’s goal is to provide a gas turbine coating that has improved mechanical, oxidation, and corrosion properties to address the long exposure times customary in stationary gas turbines (Sommer col. 2, ll. 28–34). Stamm ‘743 also teaches adding from 1 to 4% Re to the MCrAlY alloy for oxidation and corrosion protection (Stamm ‘743 ¶ 14). Although the Examiner determines that one of ordinary skill in the art would eliminate the use of Re if the corrosion and oxidation resistance was not desired, the Examiner’s findings run counter to the teachings of both Sommer and Stamm ‘743 that Re in an amount between 1 and 8% is necessary to achieve desirable oxidation and corrosion resistance. We, therefore, reverse the Examiner’s 35 U.S.C. § 103(a) rejection over Sommer and Stamm’743. Regarding rejection (6), Goebel teaches forming a MCrAlY alloy coating and then enriching the outer surface of the coating with silicon (Goebel col. 2, ll. 28–33). Goebel teaches that the silicon rich layer has a thickness of from 10 to 40% of the total coating thickness (Goebel col. 2, ll. 37–38). Goebel discloses that a silicon coating is applied to the MCrAlY overlay coating and the silicon diffuses into the MCrAlY coating (Goebel col. 4, ll. 7–36). We understand Goebel to teach that the MCrAlY alloy coating and the silicon coating diffuse together to form a silicon-enriched outerlayer with a gradation in silicon content in the coating. In other words, a single layer coating is ultimately formed that contains silicon, which is Appeal 2018-008520 Application 14/342,247 6 contrary to claims 17 and 30. On this record, we reverse the Examiner’s 35 U.S.C. § 103(a) rejection over Goebel in view of Khan2. Regarding rejections (7) and (8), Appellant argues that Hirota teaches that tantalum oxide (TaO) is part of the alloy coating composition, rather than tantalum metal (i.e., Ta) as in the claim (App. Br. 40). Appellant contends that it is unclear how much tantalum metal is in the composition (App. Br. 40). Appellant argues that Hirota teaches in Figure 2 that the tantalum oxide amount is less than 0.5%, which would result in minimizing the amount of tantalum in the alloy (App. Br. 40). Appellant contends that if Hirota’s alloy containing less than 0.5% TaO protects a substrate, it would be contradictory for one of ordinary skill in the art remove the TaO and add tantalum metal (App. Br. 44). Although the Examiner finds that Khan would have suggested adding tantalum metal to the alloy to improve corrosion resistance, Hirota’s disclosure to use less than 0.5% tantalum oxide points at reducing the amount of tantalum in the alloy. The Examiner finds that Hirota’s disclosure of 0.5% TaO is greater that the lower limit of the range of tantalum metal in the alloy (Ans. 19). The Examiner finds that “an amount of TAO of 0.5 wt.% would correspond to 0.3 wt.% or more Ta” (Ans. 19). The Examiner directs us to the “reasons of the rejection” as supporting this finding regarding the amount of tantalum metal in the alloy (id.). We have reviewed the rejection provided on pages 10 to 11 of the Answer and do not find any calculation or analysis supporting the Examiner’s position that Hirota’s 2 The Examiner does not rely on Khan to address the addition of silicon in the coating (Ans. 9–10). Khan does not cure the deficiency noted with regard to Goebel. Appeal 2018-008520 Application 14/342,247 7 teaching alone would meet the amount of tantalum (i.e., from 0.3 to 1.5% in claim 17 or at least 0.3% in claim 30). The Examiner’s reliance on Khan to suggest adding more tantalum seems to contradict the direction of tantalum amounts taught by Hirota; that is Hirota seeks to minimize the “TAO” concentration. On this record, we find that the preponderance of evidence favors Appellant’s argument of non-obviousness over Hirota, alone, and Hirota in view of Khan. We reverse rejections (7) and (8). REJECTION (2): STAMM ‘233 The Examiner’s finding and conclusions regarding Stamm ‘233 are located on pages 5 to 6 of the Answer. Appellant argues that unlike claims 17 and 30, Stamm ‘233 requires using rhenium in the protective layer composition (App. Br. 25). Appellant contends that Stamm ‘233’s disclosure and recitation in claims 1, 11, 20, and 30 that 0 to 20% rhenium may be used in the composition would not have rendered obvious the exclusion of rhenium from the composition (App. Br. 25). A reference is good for all that it teaches to one of ordinary skill in the art. See, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures of the prior art, including unpreferred embodiments, must be considered.”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). In the present case, Stamm ‘233 clearly includes zero percent rhenium as part of the disclosure concerning acceptable amounts of rhenium in the coating composition (Stamm ‘233, ¶ 27 (see claim 1)). Stamm ‘233 may prefer using from 1% to 20% Re in the alloy, but that does Appeal 2018-008520 Application 14/342,247 8 not change Stamm ‘233’s broader, non-preferred disclosure that 0% Re may be used (see id.). On this record, we affirm the Examiner’s 35 U.S.C. § 103(a) rejection of claims 30, 33, and 34 over Stamm ‘233. REJECTION (3): PRESTON IN VIEW OF SOMMER The Examiner’s finding and conclusions regarding Preston and Sommer are located on pages 6 to 7 of the Answer. Appellant argues that Preston requires the use of silicon, which is excluded by claims 17 and 30 (App. Br. 26, 28). Appellant contends that Preston teaches using silicon in a coating underlying a MCrAlY alloy coating (App. Br. 26). Regarding claims 17, 22, 30, and 35, Appellant relies on arguments made regarding rejection (1), Sommer in view of Stamm ‘743 (App. Br. 26–29). In regard to claim 22, Appellant argues that neither Sommer nor Stamm ‘743 teach or suggest excluding Re, Si and at least one of the elements recited in claim 22 (App. Br. 19). Regarding claim 35, Appellant contends that claim 35 is limited to a maximum tantalum amount of 1.5 wt.% (App. Br. 24). Contrary to Appellant’s arguments, Preston teaches that silicon is added as part of forming the aluminide coating on which the MCrAlY coating is subsequently formed (Preston, col. 3, ll. 27–31, 63–68). In other words, Preston forms two coatings, one of which is the MCrAlY coating that satisfies the claim limitations of claims 17, 22, 30, and 35, with the exception of the amount of tantalum. The Examiner relies on Sommer to teach adding tantalum to the alloy coating composition to enhance corrosion resistance performance (Ans. 7). Appellant does not attack specifically the Appeal 2018-008520 Application 14/342,247 9 Examiner’s proposed modification of Preston’s alloy in view of Sommer’s teachings regarding the benefits of using tantalum or the claimed tantalum amounts (App. Br. 26–29). Preston’s teaching of a single layer of MCrAlY alloy coating as modified by Sommer’s teaching to add tantalum suffices to meet claims 17, 22, 30 and 35. The addition of silicon in a separate aluminide layer is not excluded by the claims. Indeed, Appellant discloses in the Specification that other coatings including a ceramic thermal barrier may be applied in addition to the MCrAlY alloy coating (Spec. 13:31–34; 14:1–5). On this record, we affirm the Examiner’s 35 U.S.C. § 103 rejections of claims 17, 18, 22–24, 26, and 28–35 over Preston in view of Sommer. REJECTIONS (4) AND (5) The Examiner’s findings and conclusions regarding Khan, alone, and Khan in view of Stamm ‘743 are located on pages 7 to 9 of the Answer. Appellant argues that Khan uses silicon to increase scale adhesion and oxidation resistance of the coating, which is contrary to claims 17 and 30 which exclude silicon (App. Br. 29–30). Appellant contends that Khan teaches away from the claim requirement that no silicon precipitates form by using silicon in the alloy coating composition (App. Br. 30). As admitted by Appellant, Khan discloses that the use of silicon is optional (App. Br. 30; Khan ¶ 14). Indeed, Khan teaches that Si, Hf, Zr and Ta, either alone or in combination, may be added to the alloy coating composition (See Khan ¶ 14 (emphasis added)). Khan plainly teaches that using silicon is not required. Appellant argues, however, that omitting silicon is not the same as the claim requirement that expressly excludes Appeal 2018-008520 Application 14/342,247 10 silicon (App. Br. 30). We disagree. Khan teaches that silicon is not necessary to add to the alloy composition and that other alternatives to silicon may be used. In other words, Khan includes embodiments that do not require the use of silicon, which is sufficient to meet Appellant’s claim. Regarding claims 22, 30, and 35, Appellant’s rely on arguments made regarding Khan alone and arguments make regarding the rejection of Sommer in view of Stamm ‘743 (App. Br. 31–34). The Examiner’s rejection (5) is based upon combining Stamm ‘743’s thermal spraying method with Khan’s alloy coating composition (Ans. 8–9). Appellant provides no specific argument against the combination of Stamm ‘743’s thermal spraying methods with Khan’s alloy composition. Appellant does not explain how arguments made regarding Sommer apply to a rejection based on the teachings of Khan, alone, or Khan in combination with Stamm ‘743. The Examiner has provided a prima facie case of obviousness which has not been sufficiently rebutted by Appellant. On this record, we affirm the Examiner’s 35 U.S.C. § 103(a) rejection of claims 17, 18, 22–24, 26, and 28–35 over Khan and the 35 U.S.C. § 103(a) rejection of claims 17, 18, 22–24, 26, and 28–35 over Khan in view of Stamm ‘743. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED