Ex Parte Farmer et al

Board of Patent Appeals and Interferences

Mar 18, 2010

10959843 (B.P.A.I. Mar. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GILBERT FARMER
and JAMES ANTHONY GROESCHEN
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Appeal 2009-003743
Application 10/959,843
Technology Center 1700
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Decided: March 19, 2010
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003743
Application 10/959,843

A. Introduction1
Gilbert Farmer and James Anthony Groeschen (“Farmer”) timely
appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 1-11
and 14-20. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to methods of coating a fuel
assembly. According to Farmer, gas turbine engine components such as fuel
nozzles and swirlers are provided with wear coatings. Farmer explains that a
fuel nozzle is typically positioned in a surrounding assembly called a
swirler, and that although the nozzle is bolted to the combustor case and the
swirler is constrained axially in the combuster, the swirler is configured to
float radially in the combuster, which leads to surface contact between the
nozzle and the swirler. (Spec. 1, ¶ [0002].) Hence, wear coatings are
desirable to prolong the useful life of the components. Manufacturing
tolerances are tight, however (id., ¶ [0003]), and there are regions of parts
that should not be coated (id. at 2, ¶ [0005]). Thus, it is desirable to mask
those regions that are not to be coated. (Id.) The claimed process is said to
provide solutions to these problems.

1 Application 10/959,843, Electroplated Fuel Nozzle/Swirler Wear Coat,
filed 6 October 2004. The specification is referred to as the
“843 Specification,” and is cited as “Spec.” The real party in interest is
listed as the General Electric Company. (Appeal Brief, filed 19 May 2008
(“Br.”), 2.)
2 Office Action mailed 15 October 2007 (Final Rejection, cited as “FR”), 1.
Claims 12, 13, and 21-26 have been withdrawn from consideration.
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Representative Claim 1 is reproduced from the Claims Appendix to
the Principal Brief on Appeal:
1. A method of applying a wear coat to a preselected surface
portion of a fuel assembly, the method comprising:
[a] masking the surface of the fuel assembly with a
liquid-phase material to form a mask;
[b] cooling at least a portion of the liquid-phase material
to form a solid phase material;
[c] demasking with a fluid prior to applying the wear
coat, a portion of the solid phase material of the mask
from the preselected surface portion of the fuel assembly
surface to provide an exposed surface portion of the fuel
assembly; and
[d] applying the wear coat to the preselected surface
portion of the fuel assembly.
(Claims App., Br. 25; indentation and bracketed labels added.)
The Examiner has maintained the following grounds of rejection:3
A.4 Claims 1-4, 6-11, and 14-16 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Speirs5 and Gal-Or.6

3 Examiner’s Answer mailed 4 June 2008 (“Ans.”), 3, 6.
4 We have corrected the formal statements of rejection, which indicate
claims 1-4 and 6-16 stand rejected (FR 2; Br. 4, 8, 9; Ans. 3), to account for
the withdrawal from consideration of claims 12 and 13. Neither the
Examiner nor Farmer refer substantively to claims 12 and 13.
5 Kenneth K. Speirs et al., Masking Method for Use in Aluminizing Selected
Portions of Metal Substrates, U.S. Patent 3,904,789 (1975).
6 Leah Gal-Or et al., Electrophoretic Diamond Coating and Compositions
for Effecting Same, U.S. Patent 6,258,237 B1 (2001).
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B. Claims 5 and 17-20 stand rejected under and 35 U.S.C. § 103(a)
in view of the combined teachings of Speirs, Gal-Or, and
Brewe.7
Farmer contends (Br. 11-12) that the Examiner erred by relying on
hindsight in reasoning, without relying on evidence of record, that it would
have been obvious “to have modified the method of Speirs et al. by
demasking a portion of the wax prior to applying the electroplated coating,
because it would obviate the use of a masking tape, and because the wax
would be removed more quickly with water than with a tape.” (FR 4,
ll. 4-8.) Moreover, according to Farmer, “the Examiner fails to establish that
removal with hot water from preselected surfaces is present anywhere in the
prior art.” (Br. 12.) Farmer presents the same argument for claim 14, and
argues each of the dependent claims by reciting the limitation and urging
that “Speirs, alone or in combination with Gal-Or [and/or Brewe] fails to
disclose the limitation, as claimed.” (E.g., Br. 13 [see also Br. 20].)
The Examiner responds (Ans. 3), that Speirs does teach masking a
surface with a liquid material (a wax) (id., citing Speirs col. 4, ll. 21-28); that
the wax must harden; that the wax is removed with hot water (id., citing
Speirs col. 5, ll. 28-31), prior to applying an aluminide wear coat (id., citing
Speirs, col. 2, ll. 52-64.) The only difference, according to the Examiner,
between the teachings of Speirs and the claimed wear-coating process is the
fuel-assembly substrate. Such substrates, however, are taught by Gal-Or to
be coated with a wear coat. The Examiner concludes that it would have

7 Susan Brewe et al., Non-Chlorinated Solvent Dewax Process, U.S. Patent
5,209,785 (1993).
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Application 10/959,843

been obvious to coat fuel assemblies by the process described by Speirs, and
that the subject matter covered by claim 1 would have been obvious.
Farmer did not file a Reply Brief.
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Speirs
Speirs describes processes of aluminiding8 selected portions of a steel
part by [1] masking the surface of those areas that are not to be aluminided
with a masking metal such as copper (Speirs, col. 2, ll. 53-56);
[2] embedding the masked steel part in an aluminiding cementation pack and
heating the pack to an aluminiding temperature (id. at ll. 57-60); and
[3] selectively dissolving the metal mask (id. at ll. 61-63).
In more detail, these steps comprise [1a] degreasing the steel
assembly or part with a solvent such as trichloroethylene (Speirs col. 4,
ll. 33-34); [1b] applying masking tape wherever the masking copper plating
is desired—i.e., wherever aluminiding is not desired (id. at ll. 34-38);
[1c] dipping the taped part (i.e., the article) into molten wax to coat at least
the untaped surfaces (id. at ll. 40-43); [1d] removing the tape to expose the
areas to be copper plated (id. at ll. 44-45); [1e] trimming the wax edges and

8 Although Speirs uses the term “aluminizing” throughout, to avoid
confusion, we use the term “aluminiding” to describe the formation of iron-
and copper-aluminides in the process described by Speirs.
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cleaning the part in a cold soap solution and then rinsing the part in
deionized water (id. at ll. 46-57); [2a] coating the exposed areas of the
article with copper in a copper plating bath (id. at col. 4, l. 58 to col. 5,
l. 26); [2b] rinsing the part and removing the wax by melting in a hot water
solution followed by vapor degreasing (id. at col. 5, ll. 27-31); [3a] placing
the copper-plated part in a retort, surrounding the part with a mixture of
aluminum, aluminum oxide, and aluminum chloride, and heating to
aluminiding temperatures (e.g., 42 hours at 875°F (id. at ll. 36-59));
[3b] cleaning the part with room temperature 50% nitric acid to dissolve the
underlying layer of copper and thereby remove the overlying layer of copper
aluminide, leaving the iron aluminide portions unaffected (id. at col. 5, l. 61,
to col. 6, l. 12).
C. Discussion
As the Appellant, Farmer bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
129 S.Ct. 1696, 1706 (2009) (“Lower court cases make clear that courts
have correlated review of ordinary administrative proceedings to appellate
review of civil cases in this respect. Consequently, the burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.”) (citations omitted). The Court explained further that “[t]o
say that the claimant has the ‘burden’ of showing that an error was harmful
is not to impose a complex system of ‘burden shifting’ rules or a particularly
onerous requirement . . . . [T]he party seeking reversal normally must
explain why the erroneous ruling caused harm.” Id.; see also, In re
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Chapman, 2010 WL 638277, at *6 (Fed. Cir. 2010) (discussing the role of
harmless error in appeals from decisions of the Board of Patent Appeals and
Interferences (“Board”)).
Since 1 December 1997, under 37 C.F.R. § 1.193(b)9 and succeeding
versions of the rule, Appellants have been permitted to have the last word as
a matter of right.10 This is appropriate, considering that Appellants bear the
burden of persuasion that the Examiner’s rejection is based on harmful error.
Nonetheless, Board rules provide, in accordance with general appellate
practice,11 that arguments not timely made are waived.
37 C.F.R. § 41.37(c)(1)(vii) (second sentence); see also In re Hyatt, 211
F.3d 1367, 1373 (Fed. Cir. 2000) (explaining that an argument not timely
raised in a brief to the Board cannot be relied on as a basis for overturning
the Board’s decision on appeal).
Initially, we find that the arguments for separate patentability of
independent claim 14 (Br. 16-19) are essentially the same as those set out for
claim 1 (id. at 9-13). Thus, there is no substantively separate argument for
claim 14, which stands or falls with claim 1. Similarly, the “separate”
arguments set out for the dependent claims are no more than a recitation of
what the claims recite, followed by a denial that any of the references
disclose the limitation. Such an “argument” is not considered a separate

9 First published at 62 Fed. Reg. 53132, 53197 (1997).
10 62 Fed. Reg. 53132, 53169, first col. (1997).
11 See, e.g., Ex parte Borden, 93 USPQ2d 1473, 1475-76 (BPAI 2010)
(“informative”).
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argument for patentability. 37 C.F.R. § 41.37(c)(1)(vii), last sentence.
Thus, all dependent claims stand or fall with claim 1.
Farmer does not dispute the Examiner’s finding that the iron-
aluminide layer is a wear coat. Nor does Farmer dispute the propriety of the
combination of the teachings of Speirs with the teachings of Gal-Or or with
the teachings of Brewe, save that the latter references do not, in Farmer’s
view, make up for the deficiencies Farmer perceives in Speirs. All such
arguments have been waived.
Farmer did dispute the Examiner’s findings set out in the Final
Rejection, and in response, the Examiner substituted additional findings
regarding the teaching of Speirs. Farmer did not seek supervisory review of
these actions, nor has Farmer objected by way of a Reply Brief. Under the
present circumstances, in which Speirs, a relatively short, clear reference,
has been before Farmer since the first action on the merits (11 June 2007) of
the present Request for Continued Examination, we do not find it credible
that the basic teachings of Speirs were not apparent, e.g., from the abstract.
Moreover, Farmer had the opportunity to seek correction of any procedural
errors committed by the Examiner in the Answer by petition, or to address
any substantive errors by filing a Reply Brief. Farmer did neither. On the
facts of this case, we find no prejudice attaches in considering the rejections
maintained by the Examiner.
The method covered by appealed claim 1 comprises step [a], masking
the surface of a fuel assembly with a liquid. This step is met by Speirs
dipping the tape-masked part into molten wax (step [1c], supra). The next
step [b], cooling at least some of the liquid to form a solid is accomplished
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by the time the tape is removed in Speirs step [1d]. The third step [c] of the
claimed method—removing at least a portion of the solid mask by exposure
to a fluid—is met by the removal of the wax following the copper plating by
rinsing in hot water and by the hot vapor degreasing in Speirs step [2b].
That step removes the remaining portion of the wax, exposing a preselected
area for coating by a wear coat. Finally, final step [d] of the claimed
process, applying the wear coat to the preselected portion of the part, is met
by Speirs aluminiding step [3a]. Farmer has not contested the Examiner’s
finding that Gal-Or describes coating fuel assembly parts or that Brewe
describes waxes having appropriate melting points. Other than arguing that
neither Gal-Or nore Brewe makes up for the deficits of Speirs, Farmer does
not contest the combination of the teachings of Gal-Or with the teachings of
Speirs. As noted supra, we find no such deficits in the teachings of Speirs.
The presence of additional steps in Speir’s disclosed method between the
solidification of the liquid mask and the selective removal or portions of that
mask with a fluid are of no moment, as the transitional phrase “comprising”
leaves the claim open to unrecited steps and materials.
Farmer’s additional arguments for the patentability of claim 1, e.g.,
that “[n]othing discloses how to manage fluid directed to the surface or how
removal is achieved to the fuel assembly” (Br. 13), are without merit
because there are no such limitations in claim 1.
We thus AFFIRM the rejections maintained by the Examiner.
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D. Order
We AFFIRM the rejection of claims 1-4, 6-11, and 14-16 under
35 U.S.C. § 103(a) in view of the combined teachings of Speirs and Gal-Or.
We AFFIRM the rejection of claims 5 and 17-20 under
35 U.S.C. § 103(a) in view of the combined teachings of Speirs, Gal-Or, and
Brewe.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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