Dmitri Novikov et al.

Patent Trials and Appeals Board

Sep 25, 2019

14732905 - (D) (P.T.A.B. Sep. 25, 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.
14/732,905 06/08/2015 Dmitri Novikov 76287US02 (14-194-2) 9062
52237 7590 09/25/2019
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
FLORES, JUAN G
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
09/25/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DMITRI NOVIKOV, DAVID ULRICH FURRER,
and SERGEI F. BURLATSKY
____________

Appeal 2019-0023971
Application 14/732,9052
Technology Center 3700
____________

Before ANTON W. FETTING, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1, 3–10, 17, and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references the Appeal Brief (“Appeal Br.,” filed Aug. 17,
2018), the Reply Brief (“Reply Br.,” filed Jan. 28, 2019), the Examiner’s
Answer (“Ans.,” mailed Nov. 28, 2018), and the Final Office Action (“Final
Act.,” mailed Mar. 19, 2018).
2 According to Appellants, the real party in interest is United Technologies
Corporation. Appeal Br. 2.
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BACKGROUND
The Specification discloses that “[t]he present disclosure relates to
components for a gas turbine engine and, more particularly, to a stiffness
controlled abradable seal system therefor.” Spec. ¶ 2.
CLAIMS
Claims 1 and 10 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A stiffness controlled abradable seal system for a gas
turbine engine, comprising:
a solid lubricant material comprising at least one metal
combined with at least one member of a class of ternary
compounds, said at least one metal combined with said at least
one member of a class of ternary compounds is defined by the
general composition Mn+1AXn, wherein M is an early transition
metal selected from groups IIIB, IVB, VB, and VIB, A is an
element selected from groups IIIA, IVA, VA, VIA, and VIIA, X
is either carbon or nitrogen, and n is an integer between 1 and 3
to minimize a friction coefficient.3
Appeal Br. 16.
REJECTIONS4
1. The Examiner provisionally rejects claims 1, 3–10, and 17 on the ground
of nonstatutory double patenting as being unpatentable over claims 1 and
6–10 of co-pending Application No. 14/731,743.
2. The Examiner rejects claims 1, 3–5, 10, and 19 under 35 U.S.C.
§ 102(a)(1) as anticipated by Strock.5

3 The relevant groupings of elements are depicted in Figure 9.
4 The Examiner has withdrawn the rejections under 35 U.S.C. § 112. See
Ans. 9.
5 Strock, US 8,017,240 B2, iss. Sept. 13, 2011.
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3. The Examiner rejects claim 17 under 35 U.S.C. § 103 as unpatentable
over Strock.
4. The Examiner rejects claims 1 and 6 under 35 U.S.C. § 103 as
unpatentable over Glahn6 in view of Strock.
5. The Examiner rejects claims 1 and 7–9 under 35 U.S.C. § 103 as
unpatentable over Alvanos7 in view of Strock.
DISCUSSION
Rejection 1
Appellants do not present arguments regarding the double patenting
rejection. See Appeal Br. 10. Accordingly, we summarily sustain this
rejection.
Rejection 2
With respect to claims 1 and 10, the Examiner finds that Strock
discloses a solid lubricant material as claimed, and in particular, the
Examiner notes that “Strock discloses the composition as MXZ instead of
MAX but these two are equivalents.” Final Act. 6–7 (citing Strock col. 2,
ll. 19–54). Appellants argue that the claim is not anticipated because Strock
discloses MXZ rather than MAX and Strock does not recite carbon or
nitrogen. See Appeal Br. 10–12. We are not persuaded of error. Strock
discloses “[a]n example of a particularly suitable metallic matrix composite
is Ti3SiC2.” Strock col. 2, ll. 43–44. Thus, Strock plainly discloses a
material with the claimed formula Mn+1AXn, regardless of whether it is
labeled as MXZ or MAX, because Ti is a transition metal in group IVB, Si is

6 Glahn et al., US 8,109,717 B2, iss. Feb. 7, 2012.
7 Alvanos et al., US 2007/0059158 A1, pub. Mar. 15, 2007.
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in group IVA, and carbon is disclosed. Accordingly, Appellants have not
identified any error in this rejection, and thus, we sustain the rejection of
claims 1 and 10 as anticipated. We also sustain the rejection of dependent
claims 3–5, and 19, for which Appellants do not provide separate arguments.
Rejection 3
With respect to claim 17, the Examiner acknowledges that Strock
does not teach a solid lubricant material that “includes an about 25% volume
fraction of MAX phase content material.” Final Act. 8. The Examiner finds
that Strock discloses “a volume fraction range of approximately 30% to
approximately 50% of MAX phase content material” and thus, the Examiner
determines that it would have been obvious to include “an about 25%
volume fraction of a MAX content material because a prima facie case of
obviousness exists where the claimed ranges or amounts do not overlap with
the prior art range but are merely close.” Id.
We are persuaded of error in this rejection because the Examiner has
not sufficiently supported the determination that the claimed range of about
25% would have been obvious in view of the prior art’s disclosure of a range
of 30% to 50%. The Examiner is correct in stating that a prima facie case of
obviousness exists where the claimed ranges or amounts do not overlap with
the prior art but are merely close. Titanium Metals Corp. of America v.
Banner, 778 F.2d 775, 783, (Fed. Cir. 1985). However, this is because,
where the claimed amount and prior art amount are sufficiently close, “one
skilled in the art would have expected them to have the same properties.”
Id. Here, we find that the Examiner has not explained adequately why the
claimed percentage and the prior art range are not patentably distinct. In
particular, the Examiner does not provide evidence or explanation showing
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why one of ordinary skill in the art would consider these percentages to be
“merely close” such that one of ordinary skill in the art would expect them
to exhibit the same or similar properties. For this reason, we find reversible
error in the rejection, and thus, we do not sustain the rejection of claim 17.
Rejection 4
With respect to claim 1, the Examiner finds:
Glahn teaches a stiffness controlled abradable seal system for a
gas turbine engine (Fig.1 ), comprising: a static seal surface
(Fig.5, 170) in contact with a rotating seal surface (Fig.5,
182/184) at a seal interface; and a cantilevered arm that supports
one of said rotating seal surface (Fig.5, 186) and said static seal
surface.
Final Act. 9. The Examiner acknowledges that Glahn does not teach a
lubricant material with the chemical formula claimed, but the Examiner
relies on Strock, as discussed above, regarding this material. Id. The
Examiner concludes that it would have been obvious to modify Glahn’s seal
system with a lubricant as taught by Strock
to minimize a friction coefficient as taught by Strock because
said material composition lowers the rub forces in gas turbine
engines and the clearance between the abradable seal and the
rotating element, and provides both metallic and ceramic
characteristics to the abradable seal, balancing the need for
erosion control and abradability.
Id. at 10. The Examiner also finds that using this material would increase
“the overall efficiency of the gas turbine engine.” Ans. 13 (citing Strock
col. 4, ll. 26–35).
Appellants argue that the rejection provides “no teaching, suggestion,
motivation, or reason to modify Glahn in view of Strock as proposed.”
Appeal Br. 13. We are not persuaded of error. The Examiner points to
evidence in Strock regarding the use of Strock’s matrix material to reduce
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the weight of the abradable seal, increase its durability, lower the rub forces
in a gas turbine engine, and increase the overall efficiency of the engine.
Ans. 13 (citing Strock col. 4, ll. 21–29). Appellants do not adequately
explain why this evidence does not support the Examiner’s reasoning for
providing the proposed combination. Thus, we are unpersuaded of error and
we sustain the rejection of claim 1 here. We also sustain the rejection of
dependent claim 6, for which Appellants do not provide separate arguments.
Rejection 5
With respect to this rejection, Appellants argue only that the Examiner
erred because “Strock does not disclose an equivalent chemical formula for a
solid lubricant, as discussed above.” Appeal Br. 14. However, because we
found no error above in the Examiner’s finding that Strock does disclose the
claimed chemical formula, we are not persuaded of error by this argument
here. Accordingly, we sustain the rejection of claims 1 and 7–9 as obvious
over Alvanos in view of Strock.
CONCLUSION
We AFFIRM the provisional rejection of claims 1, 3–10, and 17 on
the ground of nonstatutory double patenting as being unpatentable over
claims 1, 6, 7, 8, 9, and 10 of copending Application No. 14/731,743.
We AFFIRM the rejection of claims 1, 3–5, 10, and 19 under
35 U.S.C. § 102(a)(1) as anticipated by Strock.
We REVERSE the rejection of claim 17 under 35 U.S.C. § 103 as
unpatentable over Strock.
We AFFIRM the rejection of claims 1 and 6 under 35 U.S.C. § 103 as
unpatentable over Glahn in view of Strock.
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We AFFIRM the rejection of claims 1 and 7–9 under 35 U.S.C. § 103
as unpatentable over Alvanos in view of Strock.
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