Ex Parte Heutling et al

Patent Trials and Appeals Board

Sep 28, 2017

12988045 - (D) (P.T.A.B. Sep. 28, 2017)

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.
12/988,045 11/08/2010 Falko Heutling M078 P02141-US 7538
3017 7590 09/28/2017
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5TH FLOOR
PROVIDENCE, RI 02903
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
09/28/2017 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 FALKO HEUTLING, THOMAS UIHLEIN
and WOLFGANG EICHMANN
________________

Appeal 2017-000364
Application 12/988,045
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5–12 and 16–24. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim an erosion protection coating. Claim 1 is
illustrative:
1. An erosion protection coating, in particular for gas
turbine components, having a horizontally segmented
and/or multi-layered construction comprising:
Appeal 2017-000364
Application 12/988,045

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a plurality of first layers each having a thickness
between 0.5 μm and10 μm; each of the plurality of first
layers consisting of a plurality of alternating sub-layers of
CrAlN and CrN on top of one another; the top most sub-
layer and the bottom most sub-layer being a CrN layer,
each of the sub-layers having a thickness between 10 nm
and 200 nm; each of the first layers being nanostructured
in configuration;
a plurality of second layers, each being of CrN, each
having a thickness of 0.5 μm to 5 μm; the first layers
being harder than the second layers;
wherein the plurality of first layers and the plurality
of second layers are disposed on top of one another in an
alternating manner, in such a way that an outer-lying
layer, that is farthest away from a gas turbine component
receiving the coating and which forms an outer surface of
the erosion protection coating, is one of the first layers.

The References
Nozaki US 2005/0047694 A1 Mar. 3, 2005
Coddet US 2008/0318069 A1 Dec. 25, 2008
Yasui1 WO 2007/083361 A1 July 26, 2007
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
5, 10, 11, 16, 17, 22 and 23 over Yasui in view of Nozaki and claims 6–9,
12, 18–21 and 24 over Yasui in view of Nozaki and Coddet.

1 Citations herein to Yasui are to US 2009/0123737 A1 (May 14, 2009)
which the Examiner relies upon as an English language equivalent of
WO 2007/083361 A1 (Ans. 2).
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Application 12/988,045

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OPINION
We reverse the rejections. We need address only the independent
claims (1 and 16).2 Those claims require an erosion protection coating
comprising 1) first layers having 10–200 nm thick CrN sublayers, and
2) second layers of 0.5–5 µm thick CrN.
Yasui discloses a steam turbine erosion protection coating comprising
alternating layers of CrN and AlCrN, each having a 10–100 nm thickness,
the total layer thickness being 10 µm or more (¶¶ 2, 3, 7, 8, 39; Fig. 9).
Nozaki discloses a gas turbine rolling bearing comprising, on its
raceway and/or rolling surfaces, a nitride layer with a 3 µm or less thick CrN
film thereon to make those surfaces less likely to smear, thereby extending
the rolling bearing’s life (¶¶ 1, 2, 6, 7, 9). “While the chromium nitride film,
which is hard and brittle, tends to suffer from cracks and chipping due e.g. to
foreign matter that gets stuck in the bearing if used alone, by forming the
chromium nitride film on the nitride layer formed as a base, it is possible to
prevent such cracks and chipping” (¶ 7).
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify the
thickness of the CrN layers, of Yasui, by using a range of up to 5 [sic, 3]
microns, as disclosed by Nozaki. One of ordinary skill in the art would have
been motivated in doing so in order to not result in cracks and chippings”
(Ans. 5), and “Nozaki’s explicit disclosure of using chromium nitride in
turbines is enough of a motivation for one of ordinary skill in the art to

2 The Examiner does not rely upon Coddet for any disclosure that remedies
the deficiency in Yasui and Nozaki as to the independent claims (Ans. 5–6).
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Application 12/988,045

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consider its contents and it would be obvious to do so in light of prolonging
the life of it” (Ans. 8–9).
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Nozaki discloses that “a chromium nitride film having a thickness
exceeding 3 micrometers are [sic, is] more likely to suffer from cracks and
chippings” (¶ 9). The Examiner does not establish that one of ordinary skill
in the art, in view of that disclosure, would have had an apparent reason to
increase the thickness of Yasui’s 10–100 nm (0.01–0.1 µm) thick CrN layers
(¶ 39) to up to 3 µm “in order to not result in cracks and chippings” (Ans. 5).
Regardless, the Appellants’ claims require a combination of 10–200 nm
and 0.5–5 µm CrN layer thicknesses. The Examiner does not establish that
Yasui and Nozaki would have provided one of ordinary skill in the art with
an apparent reason to use CrN layers having that combination of thicknesses.
Thus, the Examiner has not established a prima facie case of
obviousness of the Appellants’ claimed erosion protection coating.

DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 5, 10, 11, 16, 17, 22
and 23 over Yasui in view of Nozaki and claims 6–9, 12, 18–21 and 24 over
Yasui in view of Nozaki and Coddet are reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED