Ex Parte Bossmann et al

Patent Trial and Appeal Board

Sep 19, 2018

12723559 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/723,559 03/12/2010
135838 7590 09/21/2018
Studio Torta (RINGFENCE)
c/o BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313
Hans-Peter Bossmann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1033275-000886 5535
EXAMINER
WANG, XIAOBEI
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
ADIPDOCl@BIPC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-PETER BOSSMANN, SHARATH BACHEGOWDA,
MATTHIEU ESQUERRE, and RICO ITEN
Appeal 2016-007 590
Application 12/723,559
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 4, 5, 7, and 9--40. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification
filed Mar. 12, 2010 ("Spec."); Final Office Action dated June 29, 2015
("Final"); Appeal Brief filed Nov. 30, 2015 ("Appeal Br."); Examiner's
Answer dated June 3, 2016 ("Ans."); and Reply Brief filed Aug. 3, 2016
("Reply Br.").
2 Appellants identify the real party in interest as Alstom Technology Ltd.
Appeal Br. 2.
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Application 12/723,559
"The ... invention relates to the field of thermal barrier coatings
(TBC) as used in particular for the protection of components exposed to the
hot gas path of machines such as gas turbines." Spec. ,r 2. More
specifically, the invention is directed to
a multilayer thermal protection system, in which a first ceramic
layer (TBC layer) is attached via a bond coat layer on a metallic
substrate. On the first ceramic layer there is provided at least
one second ceramic layer attached to the first ceramic layer via
a ceramic adhesive layer. The first ceramic layer is normally
applied by plasma spraying ( or another thermal spraying
method) and the second ceramic layer comprises monolithic
ceramic elements adhesively attached by the ceramic adhesive
layer to the first ceramic layer.
Id. ,r 14. The Specification discloses that"[ m ]onolithic ceramic elements
are ... pre-fabricated elements which can be in the form of tiles, columnar
structures, block structures or the like." Id. ,r 15. According to the
Specification, it is important that the monolithic ceramic elements "are pre-
manufactured and already sintered prior to the application to the substrate.
These monolithic ceramic elements are typically sintered at temperatures of
around 1600°C and therefore do not undergo a further sintering process
anymore when mounted in the machine." Id.
Of the appealed claims, claims 1 and 20 are independent. See
generally Appeal Br., Claims Appendix. The preamble of claim 20 recites
"[a] method for the production of a multilayer thermal protection system."
Id. at Claims Appendix 3--4. Claim 20 recites limitations similar to those in
claim 1, which is reproduced below. Id. at Claims Appendix 1.
1. A multilayer thermal protection system,
compnsmg:
a metallic substrate;
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Application 12/723,559
Id.
a first ceramic layer;
a bond coat layer attaching the first ceramic layer to the
metallic substrate, wherein the first ceramic layer is applied to
the bond coat layer by plasma spraying;
a second ceramic layer attached to the first ceramic layer,
wherein the second ceramic layer includes monolithic ceramic
elements adhesively attached to the first ceramic layer; and
a ceramic adhesive layer attaching the second ceramic
layer to the first ceramic layer, wherein a temperature
capability, T max 2, of the second ceramic layer is at least 100°C
larger than a temperature capability, T max 1, of the first ceramic
layer,
wherein the monolithic ceramic elements of the second
ceramic layer are based on alpha alumina, magnesia, or alpha
alumina and magnesia,
wherein the monolithic ceramic elements are pre-
fabricated elements comprising a tile, a columnar structure, a
block structure, or a mixture thereof,
wherein the pre-fabricated elements are pre-
manufactured and sintered prior to application to the substrate,
wherein the pre-fabricated elements are sintered at
temperatures around 1600°C so as not to undergo further
sintering when mounted in a machine, and
wherein the pre-fabricated elements do not undergo
further sintering in a first condition when the pre-fabricated
elements have a closed porosity in a range of O to 10%, and in a
second condition when the pre-fabricated elements have an
open plus closed porosity in a range of 15 to 90%.
Claims 1, 4, 5, 7, and 9--40 stand rejected under (1) 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply
with the written description requirement, (2) 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite, and
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(3) 35 U.S.C. § I03(a) as unpatentable over Margolies (US 2009/0110903
Al, published Apr. 30, 2009) in view of Vance (US 2006/0216547 Al,
published Sept. 28, 2006), Movchan et al., (US 2005/0202168 Al, published
Sept. 15, 2005) (hereinafter "Movchan") and L. M. Foster et al., (Reactions
Between Aluminum Oxide and Carbon The AhOs-Al4C3 Phase Diagram, 39
J. American Ceramic Society 1-11 (1956)), as evidenced by Jon Martin
Andersson (Controlling the Formation and Stability of Alumina Phases,
Linkoping Studies in Science and Technology, Dissertation No. 987 (2005))
and Nagaraj et al., (US 2005/0170200 Al, published Aug. 2005) (hereinafter
"Nagaraj").
Rejections under 35 U.S. C. § 112
The final wherein clause in each of claims 1 and 20 reads as follows:
"wherein the pre-fabricated elements do not undergo further sintering in a
first condition when the pre-fabricated elements have a closed porosity in a
range of O to 10%, and in a second condition when the pre-fabricated
elements have an open plus closed porosity in a range of 15 to 90%." The
Examiner contends the claims do not comply with the written description
requirement of 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, because the original Specification does not support use of the
conjunctive term "and" in the final wherein clause of claims 1 and 20. Ans.
3. The Examiner further contends there is no support in the Specification for
the pre-fabricated elements "not undergoing 'further sintering' in association
with closed or open porosities." Id. at 17.
The Examiner also determines the claim limitations "first condition"
and "second condition" in the final wherein clause of claims 1 and 20 render
the claims indefinite under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-
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AIA), second paragraph. Ans. 4. The Examiner contends "[i]t is unclear
what 'condition' means in the context of the claimed invention," noting that
the Specification does not describe what the conditions are, how the
conditions are achieved, and whether the material must have both
conditions. Ans. 4.
Appellants contend the final wherein clause is supported by paragraph
56 of the Specification, which reads as follows: "The ceramic part 1 is
preferably alpha alumina based and/or magnesia based. The ceramic part 1
can be gas tight ( closed porosity in the range of 0-10% ), or have open plus
closed porosity ranging from 15o/o-90%." Appeal Br. 6-7. Appellants
argue one of ordinary skill in the art would recognize from Specification
paragraph 5 6 that "the ceramic layer 1, as one of the pre-fabricated elements
recited in claims 1 and 20, is configured to have closed or open porosities,
thereby representing two different states or conditions[;] pre-fabricated
elements satisfy both conditions, but they need not occur simultaneously."
Appeal Br. 8. Appellants contend one of ordinary skill would understand
that the term "condition" is used in the claims in a manner consistent with its
ordinary and customary meaning, "i.e., the state of something." Id.
Appellants further contend the ordinary artisan would understand that the
ceramic part described in Specification paragraph 56 is an example of the
monolithic ceramic elements described in Specification paragraph 15 as
"pre-manufactured and already sintered prior to the application to the
substrate" and "typically sintered at temperatures of around 1600°C ...
[ such that they] do not undergo a further sintering process anymore when
mounted in the machine." Reply Br. 3 ( quoting Spec. ,r 15).
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To satisfy the written description requirement, a patent applicant must
"convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention. The invention is,
for purposes of the 'written description' inquiry, whatever is now claimed."
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991). We
agree with the Examiner's finding that the original Specification does not
support the use of the conjunctive term "and" in the final wherein clause of
claims 1 and 20. Specification paragraph 56 uses the conjunctive term "or"
which is used to indicate alternatives. See, e.g., The American Heritage
Dictionary of the English Language, Fifth Edition (2018), available at
https ://www. ah dictionary. com/word/ search.html? q =or. Appellants have not
explained persuasively how the Specification would clearly convey to the
ordinary artisan that the pre-fabricated elements can possess two conditions
when use of the term "or" indicates those conditions are mutually exclusive.
Appellants have not explained how the two conditions could occur
simultaneously, and if they need not occur simultaneously, as asserted by
Appellants (Appeal Br. 8), then it is unclear why the claims do not recite the
conjunctive term "or," as used in the originally-filed Specification.
We also agree with the Examiner that the Specification does not
support the recitation in the final wherein clause of claims 1 and 20 that the
pre-fabricated elements do not undergo further sintering in association with
closed or open porosities. Appellants argue the ordinary artisan would
understand that the ceramic part having a closed porosity or an open plus
closed porosity as described in paragraph 56 is an example of the pre-
fabricated elements described in paragraph 15 as being sintered such that
they do not undergo a further sintering process when mounted in a machine.
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Reply Br. 3. Appellants have not provided persuasive evidence to support
this assertion as to the understanding of the ordinary artisan. See In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot
take the place of evidence). We agree with the Examiner that the
Specification does not support the final wherein clause of claims 1 and 20.
Although the Specification supports the penultimate wherein clause in both
claims 1 and 20, i.e., "wherein the pre-fabricated elements are sintered at
temperatures around 1600°C so as not to undergo further sintering when
mounted in a machine," the final wherein clause of claims 1 and 20 is not
limited to the condition in which the pre-fabricated elements are mounted in
a machine. In other words, claims 1 and 20 do not require that the first and
second conditions occur when the prefabricated elements are mounted in a
machine.
For the above reasons, we sustain the Examiner's rejection of claims
1, 4, 5, 7, and 9--40 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement.
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309
(Fed. Cir. 2014). "[T]he definiteness of the language employed must be
analyzed-not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art." In re Moore,
439 F.2d 1232, 1235 (CCPA 1971).
We agree with Appellants that the ordinary artisan would understand
the term "condition" in claims 1 and 20 is used in accordance with its
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ordinary and customary meaning of "the state of something." Appeal Br. 9.
American Heritage Dictionary of the English Language, Fifth Edition
(2018), available at
https ://www. ah dictionary. com/word/ search.html? q =condition.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
4, 5, 7, and 9--40 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph, as indefinite.
Rejection under 35 U.S.C. § 103(a)
Appellants argue patentability of claims 1, 4, 5, 7, and 9--40 on the
basis of limitations common to claims 1 and 20. See generally Appeal Br.
9-12. Accordingly, we decide the appeal of all claims subject to this ground
of rejection on the basis of claims 1 and 20. See 37 C.F.R. § 4I.37(c)(iv).
We have reviewed the evidence relied on by the Examiner and agree
that it supports the Examiner's findings that the cited references teach or
suggest all limitations recited in claims 1 and 20, and that one of ordinary
skill in the art would have been motivated to combine the references to
achieve the claimed invention. See generally Ans. 5-17.
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner's position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006). With respect to the rejection under 35 U.S.C. § 103(a),
Appellants' arguments are limited to contentions that ( 1) the applied prior
art, alone or in combination, "do[es] not disclose or suggest both features
(1) and (2)" of the final wherein clause (Appeal Br. 10), and does not
disclose or suggest that "the pre-fabricated elements are sintered at
temperatures around 1600°C so as not to undergo further sintering when
mounted in a machine" as recited in the penultimate wherein clause of
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claims 1 and 20 (see Appeal Br. 11-12). We do not find these arguments
persuasive for the reasons explained by the Examiner in the Answer. See
Ans. 21-25. We add the following for emphasis.
As explained by the Examiner, the final wherein clause does not
positively recite that the pre-fabricated elements have the claimed porosities.
Ans. 21. Rather, the final wherein clause recites conditional limitations: if
the elements have a closed porosity in a range of O to 10%, then they do not
undergo further sintering in a first condition; and if the elements have an
open plus closed porosity in a range of 15 to 90%, then they do not undergo
further sintering in a second condition. Appellants agree that the broadest
reasonable interpretation of the claim term "condition" is simply an
unspecified "state of something." See Appeal Br. 9. Thus, as found by the
Examiner, "unless the prior art pre-fabricated elements undergo further
sintering merely by existing," there are conditions/states of being in which
further sintering will not occur when the pre-fabricated elements have the
recited porosities. Ans. 22. As explained above, we do not interpret the
final wherein clause of claims 1 and 20 as limited to the condition in which
the pre-fabricated elements are mounted in a machine.
Turning next to Appellants' contention that the references fail to teach
or suggest the penultimate wherein clause, we agree with the Examiner that
this is a product-by-process limitation. See Ans. 7, 24. The Examiner relied
on Vance for a teaching of the claimed "second ceramic layer includ[ing]
monolithic ceramic elements." Ans. 6. The Examiner found that Vance
teaches monolithic ceramic elements are pre-manufactured and do not
undergo further sintering when mounted in a machine. Id. at 7 ( citing Vance
,r 25). Appellants argue Vance does not disclose that the pre-fabricated
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elements are sintered at temperatures around 1600°C. Reply Br. 7.
Appellants, however, have not provided persuasive argument or evidence to
refute the Examiner's finding that Vance's prefabricated elements, though
made by a different process, would possess the same properties recited in the
penultimate wherein clause, i.e., would not undergo further sintering when
mounted in a machine. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)
("If the product in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process."). In this regard, we note that
claims 1 and 20 do not specify a particular type of machine in which the pre-
fabricated elements are mounted or specify temperatures at which the pre-
fabricated elements must not undergo further sintering. Nor does the
Specification support an interpretation of the penultimate wherein clause as
requiring mounting in a gas turbine operating at a particular temperature.
See, e.g., Spec. ,r 2 ("The present invention relates to the field of thermal
barrier coatings (TBC) as used in particular for the protection of components
exposed to the hot gas path of machines such as gas turbines." ( emphasis
added)), ,r 3 (noting that gas turbines operate at firing temperature up to
1750°C).
In sum, Appellants have not persuaded us of reversible error in the
Examiner's conclusion of obviousness. Accordingly, we sustain the
rejection of claims 1, 4, 5, 7, and 9--40 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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