Ex Parte DeBiccari et al

Board of Patent Appeals and Interferences

Apr 29, 2008

11003140 (B.P.A.I. Apr. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW DEDICCARI and JEFFREY D. HAYNES
____________

Appeal 2008-2223
Application 11/003,140
Technology Center 1700
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Decided: April 29, 2008
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHUNG K. PAK, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 4, 5, and 7-19.
Claim 1 is illustrative:
1. A method for repairing components formed from a superalloy
material comprises the steps of:

providing a component formed from a nickel base superalloy material
having a defect to be repaired;
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Application 11/003,140

providing a nickel base superalloy repair material as a metal powder;

removing the defect in such a way that a sloping surface is achieved to
receive the repair material;

feeding said nickel base superalloy repair material metal powder to a
spray nozzle at a feed rate of from 10 grams/min. to 100 gram/min. at a
pressure in the range of from 200 psi to 500 psi using a carrier gas selected
from the group consisting of helium, nitrogen, an inert gas, and mixtures
thereof; and

depositing said nickel base superalloy repair material onto said
sloping surface of said component formed from a nickel base superalloy
material using a non-oxidizing carrier gas so that said repair material
plastically deforms without melting and bonds to said surface upon impact
with said surface.

The Examiner relies upon the following co-pending applications and
prior art in the rejection of the appealed claims:
Alkhimov U.S. 5,302,414 Apr. 12, 1994
Pinkerton U.S. 6,465,039 B1 Oct. 15, 2002
James U.S. 6,491,208 B2 Dec. 10, 2002
Haynes CA 2 444 917 (CA ‘917) Apr. 18, 2004
Haynes GB 2 394 479 A (GB ‘479) Apr. 18, 2004
Muehlberger U.S. 6,759,085 B2 Jul. 6, 2004
Hu U.S. 6,905,728 B1 Jun. 14, 2005

U.S. Application Serial No. 11/019,751, filed December 21, 2004 (SN ‘751)
U.S. Application Serial No. 11/020,799, filed December 22, 2004 (SN ‘799)
U.S. Application Serial No. 11/088,380, filed March 23, 2005 (SN ‘380)

Appellants’ claimed invention is directed to a method for repairing
components formed from a nickel base superalloy material. The method
entails removing the defect in such a way that a sloping surface is achieved
which receives the repair material comprising a nickel base superalloy. The
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Application 11/003,140

repair material is fed through a spray nozzle at the recited feed rate and
pressure such that it plastically deforms without melting and bonds to the
surface of the component.
The present application is related to U.S. Serial No. 10/671,683. The
related application is directed to a process for applying a coating to a
substrate by feeding metal powder to a spray nozzle at essentially the same
feed rate and pressure presently claimed. In a Decision dated October 29,
2007, the Board sustained the Examiner’s rejection of the appealed claims
under 35 U.S.C. § 103(a). The Board found that the Examiner established
that the powder feed rate in a spray deposition process of the type claimed
was known to be a conventional process parameter that would have been
obvious to optimize by one of ordinary skill in the art. The related
application went abandoned after the Board decision and, therefore, the
Examiner’s double pending rejection based on the related application is now
moot and will not be listed below in the statement of the rejections of the
appealed claims.
The appealed claims stand provisionally rejected under judicial
created doctrine of obviousness-type double patenting as follows:
(1) claims 1, 4, 5, and 7-19 over claims 1, and 7-21 of co-pending
application Serial No. 11/019, 751 in view of James,
(2) claims 1, 4, 5, and 7-19 over claims 1, 3, 9, 10, and 12-23 of co-
pending application Serial No. 11/020,799 in view of James,
(3) claims 1, 4, 5, and 7-19 over claims 3, 5-19, 24, 25, and 29-48 of
co-pending application Serial No. 11/088,380 in view of James.

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The appealed claims also stand rejected under 35 U.S.C. 103(a) as follows:
(4) claims 1, 4, 5, 7, and 12-14 over James,
(5) claims 8-11 and 15-18 over James in view of Muehlberger,
(6) claim 19 over James in view of Pinkerton,
(7) claims 1, 4, 5, 7, and 12-14 over Hu in view of James,
(8) claims 8-11 and 15-18 over Hu in view of James and Muehlberger,
(9) claim 19 over Hu in view of James and Pinkerton,
(10) claims 1, 4, 5, and 7-19 over GB ‘479 in view James,
(11) claims 1, 4, 5, and 7-19 over CA ‘917 in view of James.
We have carefully reviewed each of Appellants’ arguments for
patentability. However, we find ourselves in complete agreement with the
Examiner’s reasoned analysis and application of the prior art, as well as her
cogent and thorough disposition of the arguments raised by Appellants.
Accordingly, we will adopt the Examiner’s reasoning as our own in
sustaining the rejections of record, and we add the following for emphasis
only.
We consider first the obviousness-type double patenting rejections.
SN ‘751 claims a process for depositing a powder metal onto a substrate
through a nozzle at the recited feed rate, but fails to claim Appellants’ nickel
base superalloy as the coating and substrate materials, and removing the
defect in the substrate to provide a sloping surface for receiving the
superalloy repair material. However, James discloses that it was known in
the art to repair superalloy surfaces with superalloy coatings by using the
cold spraying process of the type presently claimed and claimed in SN ‘751.
Also, James teaches removing the defect in such a way that produces a
sloping surface for receiving the repair material. Accordingly, based on the
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James disclosure, we are in full agreement with the Examiner that it would
have been obvious for one of ordinary skill in the art to use a nickel base
superalloy material for the coating in the claimed process of SN ‘751 and
repair any defect with the same superalloy material in the manner disclosed
by James.
Appellants point out that the claims in the instant application do not
include the treatment steps recited in the claims of SN ‘751. However, the
“comprises” language of the instant claims does not exclude the steps
claimed in SN ’751. Appellants also maintain that “[n]one of the claims in
the co-pending application are directed to a method employing the method
steps set forth in claim 1 of the instant application” (page 13 of principal
Brief second paragraph). However, we agree with the Examiner that this is
irrelevant inasmuch as the dispositive issue is whether methods within the
scope of the appealed claims would have been obvious over the subject
matter claimed in the co-pending application in light of the James disclosure.
Appellants also contend that “there is nothing in James et al. which
teaches applying a nickel base superalloy repair material onto a nickel base
superalloy component” (sentence bridging pp. 13-14 of principal Brief).
However, James expressly discloses that special materials, such as nickel
based superalloy materials, are known to be used for components exposed to
very high temperatures (col. 1, l. 17 et seq.), and we are convinced that one
of ordinary skill in the art would have understood that the cold spray repair
process of James is directed to such superalloy materials (see col. 4, line 23
et seq.). Also, the Examiner properly notes that James specifically teaches
that the repair material may be the same material which forms the
component being repaired (col. 6, lines 50-55).
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Our reasons for sustaining the Examiner’s obviousness-type double
patenting rejections over SN ‘799 and SN ‘380 in view of James are
essentially the same. Again, the fact that the claims of the co-pending
applications recite steps that are not excluded by the appealed claims does
not invalidate the rejections. We find that the Examiner has properly
concluded that it would have been obvious for one of ordinary skill in the art
to include the presently claimed repair steps in the processes of the co-
pending applications in view of the James disclosure. While Appellants
contend that one would not want to perform the claimed method in the
context of coating a combustion chamber liner according to the claims of SN
‘380, Appellants have not advanced any particular reason why this would be
the case. The same is true for Appellants’ argument with respect claim 25 of
SN’380 which is directed to depositing a coating on a component having a
foil surface with plurality a of cooling holes.
We now turn to the Examiner’s § 103 rejection of claims 1, 4, 5, 7 and
12-14 over James. For the reason set forth above, we totally reject
Appellants’ argument that Jones “does not teach or suggest repairing a
nickel based superalloy using a nickel base superalloy repair material” (p. 24
principal Brief, second para.). As for Appellants’ argument that James also
does not teach or suggest the claimed feed rate and pressure, we find that the
Examiner has properly established that such parameters are result effective
variables in the art of cold spraying that would have been obvious for one of
ordinary skill in the art to optimize with routine experimentation. In re
Boesch, 617 F.2d 272, 276 (CCPA 1980). Also, as noted above regarding
the Board’s decision in the related case SN ‘683, the Board agreed with the
Examiner’s finding that the powder feed rate was known to be a
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conventional process parameter that would have been obvious to optimize.
Significantly, Appellants have proffered no objective evidence which
establishes that the recited feed rate is critical, i.e., it produces unexpected
results. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellants do not set forth separate, substantive arguments for the
rejection of claims 4, 5, 7, and 12-14 over James, or against the § 103
rejections over James in view of Muehlberger and James in view of
Pinkerton. We direct attention to pages 27 and 28 of the principle of Brief.
Regarding the § 103 rejection over Hu in view of James, it logically
follows that since we find that the subject matter of claims 1, 4, 5, 7, and 12-
14 would have been obvious over the disclosure of James alone, we also find
that the subject matter would have been obvious over the combined
teachings of Hu and James. Appellants do not dispute the Examiner’s
factual determination that Hu discloses a method of repairing components
formed from a nickel base superalloy material with a nickel base superalloy
material by a cold spraying process of the type claimed. Appellants also do
not argue against the Examiner’s legal conclusion that it would have been
obvious in view of James for an artisan to remove the defect of Hu in a way
as to provide a sloping surface which receives the repair material. It is
Appellants’ contention that Hu “is silent on the point of feed rates” (p. 29 of
principal Brief). However, as explained above, we find that the Examiner
has established that the feed rate is a result effective variable that would
have been obvious to optimize with routine experimentation. Also,
Appellants have not set forth separate substantive arguments against the §
103 rejections over Hu in view of James and Muehlberger and Hu in view of
James and Pinkerton.
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Concerning the § 103 rejections over GB ‘479 in view of James and
CA ‘917 in view of James, we subscribe to the Examiner’s reasoning set
forth in the Answer. Appellants maintain that there is no disclosure in GB
‘479 or CA ‘917 “of repairing a defect in a nickel base superalloy
component using a nickel base superalloy repair material” (p. 32 of Principal
Brief, second full sentence). However, as pointed out by the Examiner, the
references are directed to spray coating a component formed from a metal
alloy material, in general, with stainless steel as an example, wherein the
coating may be a nickel base alloy (see p. 2, ll. 24-26 and p. 4, ll. 21-23).
Accordingly, we find no error in the Examiner’s legal conclusion that it
would have been obvious for one ordinary skill in the art to select a nickel
base superalloy material for the component and coating of
GB ‘479 and CA ‘917 in performing the process of James for providing a
sloping surface for receiving the repair material.
As a final point, we note that Appellants base no argument on
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the prima facie case of obviousness established by the
Examiner.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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.
AFFIRMED

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