Ex Parte Dopper

Board of Patent Appeals and Interferences

May 30, 2006

10085527 (B.P.A.I. May. 30, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

____________

Ex parte Gebhard Dopper
____________

Appeal No. 2006-0559
Application No. 10/085,527

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ON BRIEF

____________

Before CAROFF, HANLON, and DELMENDO, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner’s final rejection of claims 1-10,
12-13, and 18-25, all of the pending claims remaining in appellant’s involved application.
The claims on appeal are directed to a method for the surface preparation of a
metal component having a curved surface prior to the application of a ceramic coating to
the surface.
Appellant essentially argues the patentability of the appealed claims as a group,
rather than individually. Accordingly, the claims are considered as standing or falling
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Application No. 10/085,527

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together for purposes of this appeal. Therefore, we shall limit our consideration to claim 1,
the first of two independent claims, which reads as follows:
1. A method for the surface preparation of a metal component having a curved
surface to accept a ceramic coating comprising:

measuring a contour line geometry of the curved surface;

inputting the measured geometry into a control system; and

controlling a plurality of spray parameters of the ceramic coating via the control
system based on the geometry to direct a particle source toward the metal component, the
spray parameters comprising: a blasting distance, a blasting intensity, a blasting angle and
a blasting time such that at least one of the parameters remain constant during the surface
preparation.

The prior art references relied upon by the examiner are:
Taylor et al. (Taylor) 5,520,516 May 28, 1996
McComas et al. (McComas) Re 35,611 Sept. 23, 1997
Kaiba et al. (Kaiba) 6,096,132 Aug. 1, 2000

The following rejections are before us for review:
1. Claims 1-10 and 12-13 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
2. Claims 1-10, 12-13, and 18-25 stand rejected under 35 U.S.C. § 103(a) for
obviousness in view of Taylor alone, or in view of Taylor taken in combination with
McComas and Kaiba.
With regard to the 35 U.S.C. § 112 rejection, the examiner points out, and we
agree, that there is no descriptive support in appellant’s specification for controlling spray
parameters “of the ceramic coating” as recited in claim 1. Rather, the specification only
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Application No. 10/085,527

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focuses upon controlling the spray parameters of a particle jet used to abrade and roughen
a substrate prior to coating.
In response to the rejection, appellant merely refers to an amendment after final
which was submitted in an attempt to overcome the rejection. However, that amendment
was not entered by the examiner and, thus, is not before us. Accordingly, the 35 U.S.C.
§ 112 rejection is summarily affirmed.
In considering the 35 U.S.C. § 103 rejections, we shall follow the convention
adopted by the examiner in interpreting the “spray parameters” recited in claim 1 as
referring to a spray jet emanating from the recited “particle source”, rather than being
associated with a subsequently applied ceramic coating.
With regard to the 35 U.S.C. § 103 rejections, we have carefully considered the
evidentiary record in light of the positions taken by the examiner and the appellant. Having
done so, we conclude that the examiner has established a prima facie case of
obviousness with respect to the subject matter on appeal, which the appellant has not
adequately rebutted. Accordingly, we shall affirm each of the alternative rejections under
35 U.S.C. § 103.
First, we note that the claims have been rejected based upon Taylor alone. Taylor
(col. 3, line 60 - col. 4, line 14) discloses a method for roughening the tip of a gas turbine
blade prior to application of a zirconium oxide coating by abrasive grit blasting or,
alternatively, by using a high pressure pure waterjet. Taylor further indicates that jet
Appeal No. 2006-0559
Application No. 10/085,527

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pressure and nozzle traverse rate must be “carefully controlled” to avoid “too deep
erosion”.
In rejecting the claims over Taylor alone, the examiner has made a number of
significant observations which we find as being based upon reasonable and logical
presumptions about the knowledge and skill possessed by an engineer having ordinary
skill in the art. First, the examiner notes in her answer that the tip of a turbine blade has a
curved surface; of which the ordinary practitioner would have been well aware since it is
not a particularly subtle characteristic. Second, the examiner reasonably imputes
knowledge of basic spray jet parameters, such as blasting distance, intensity, angle and
time to the person of ordinary skill in the art; and logically suggests that such a person
would have recognized that such parameters would directly affect the amount and degree
of roughness produced at any point on a substrate surface. Third, the examiner indicates
that the engineer of ordinary skill would have recognized that it would be desirable to
achieve uniform roughness over the entire substrate surface in order to promote uniform
adherence of a subsequently applied coating over the entire surface. Fourth, since a
turbine blade tip is known to have a curved surface, one of ordinary skill would have
recognized that one way to achieve uniform roughening would be to require following the
contour line geometry of the curved surface. That is, one of ordinary skill in the art would
have recognized that uniform blasting may be achieved by maintaining a constant blasting
distance while also holding constant other critical parameters. In this regard, one of
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Application No. 10/085,527

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ordinary skill in the art would have been led to hold such parameters constant to the
greatest extent to achieve uniform blasting. Thus, it would have been prima facie obvious
within the context of 35 U.S.C. § 103 to maintain at least one basic spray parameter
constant along the contour line to achieve uniform roughness over the entire substrate
surface.
And, fifth, the examiner notes that an engineer of ordinary skill would have
appreciated that a process involving multiple parameters can be more efficiently controlled
by using an automatic control system, citing In re Venner, 262 F2d 91, 95, 120 USPQ 192,
194-5 (CCPA 1958). Also, see Dann v. Johnston , 425 U.S. 219, 96 S.Ct. 1393, 189
USPQ 257, 261 (1976).
Significantly, the appellant does not specifically refute any of the examiner’s findings
noted above as regards the rejection based upon Taylor alone. We regard each of those
findings as reasonable and logical presumptions regarding the knowledge and skill
possessed by an ordinary practitioner in the art. Certainly, a person of ordinary skill in the
art is presumed to know something about the art apart from what the references
specifically disclose, and to possess a level of skill commensurate with that knowledge. In
re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 773-74 (Fed. Cir. 1985); In re Bozek, 416
F2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Appeal No. 2006-0559
Application No. 10/085,527

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Since the appellant has not specifically refuted any of the examiner’ findings noted
above, we hold that the examiner has established a prima facie case of obviousness in
view of Taylor alone.
In the alternative, the examiner has rejected all of the appealed claims under 35
U.S.C. § 103 in view of Taylor combined with McComas and Kaiba. McComas apparently
is cited as further evidence of the need to control certain spray parameters when removing
material from a surface with a spray jet. Kaiba apparently is cited for its teaching of the
use of an automatic control system in applying a spray jet to a curved surface.
Although McComas relates to the removal of a coating from a surface rather than
roughening an uncoated surface, and Kaiba relates to a painting process instead of an
abrasive grit blasting process, as secondary references, we agree with the examiner that
they may be properly relied upon as further evidence of basic principles and techniques
applied when directing a spray jet at a curved surface. Accordingly, we find that the
combination of references relied upon by the examiner reinforces, and provides further
evidence to support, a prima facie case of obviousness based upon Taylor alone.
For all of the foregoing reasons, the decision of the examiner is affirmed.

Appeal No. 2006-0559
Application No. 10/085,527

Παγε 7
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED

MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

MLC/lp
Appeal No. 2006-0559
Application No. 10/085,527

Παγε 8
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPT.
186 WOOD AVENUE SOUTH
ISELIN, NJ 08830 Comment [jvn1]: Type or Paste
Address

LETTY

APPEAL NO. 2006-0559
APPLICATION NO. 10/085,527

APJ CAROFF

APJ HANLON

APJ DELMENDO

DECISION: AFFIRMED

PREPARED: May 30, 2006

OB/HD

PALM

ACTS 2

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REPORT