Ex Parte Hongoh

Patent Trial and Appeal Board

Sep 3, 2015

12850877 (P.T.A.B. Sep. 3, 2015)

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.
12/850,877 08/05/2010 Masamichi Hongoh PA-0011828-US(10-275) 1680
52237 7590 09/04/2015
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
LANGMAN, JONATHAN C
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
09/04/2015 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 MASAMICHI HONGOH
____________

Appeal 2013-005906
Application 12/850,877
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 11–21. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
The invention relates to “a coating system for a turbine engine component.”
Spec.3 1:4–5. “The durability and the maximum temperature capability of a
thermal barrier coating (TBC) system used in gas turbine engines is often limited
by deposits of calcium-aluminosilicate (CMAS).” Id. at 1:8–11. CMAS can melt

1 Appellant identifies the Real Party in Interest as United Technologies Corporation
of Hartford, Connecticut. Appeal Brief filed Dec. 19, 2012 (“App. Br.”), 1.
2 Final Office Action mailed July 2, 2012; Advisory Action mailed Oct. 10, 2012.
3 Specification filed Aug. 5, 2010.
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Application 12/850,877

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and penetrate the TBC, making it susceptible to extensive spallation, leading, in
turn, to an attack on the underlying substrate. See id. at 1:11–24. To protect
against the detrimental effects of CMAS, it was known in the art at the time of the
invention to deposit an extra layer over the TBC. Id. at 1:25–26. According to the
Specification, a drawback of an extra layer was that it was not activated prior to the
turbine engine component encountering CMAS when in service. Id. at 1:27–30.
Because “CMAS comes with a variety of chemical compositions depending upon
its geographical origin,” effectiveness of the extra layer was unknown. Id. at 1:30–
2:2. The invention is said to overcome the drawbacks of the prior art extra layer by
depositing a reactive layer having known CMAS reaction kinetics over the TBC,
and activating the layer prior to the turbine engine component entering into service.
Id. at 2:21–24.
Claim 11, the sole independent claim on appeal, is reproduced below from
the Claims Appendix to the Appeal Brief (App. Br. 11):
11. A turbine engine component comprising:
a substrate;
a thermal barrier coating deposited on the substrate;
a reactive layer deposited on the thermal barrier coating;
said reactive layer having a composition which does not contain
yttria; and
said reactive layer having known CMAS reaction kinetics and
being activated prior to the turbine engine component entering into
service.
The Examiner maintains the following grounds of rejection (see Ans.4 3–9):
1. Claims 11–21 are rejected under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement.

4 Examiner’s Answer mailed Jan. 29, 2013.
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2. Claims 11–19 and 21 are rejected under 35 U.S.C. §102(b) as
anticipated by Darolia et al. (US 2008/0145674 A1, published June 19, 2008
(“Darolia ʼ674”)).
3. Claims 11–20 are rejected under 35 U.S.C. §102(b) as anticipated by
or under 35 U.S.C. §103(a) as unpatentable over Darolia et al. (US 2007/0160859,
published Jul. 12, 2007 (“Darolia ʼ859”)).
We have fully considered the arguments advanced by Appellant in the
Appeal and Reply Briefs, but are not convinced of reversible error in the
Examiner’s rejections for the reasons expressed in the Answer. We add the
following to address arguments raised in the Reply Brief which indicate some
misapprehensions on the part of Appellant with respect to the scope of the claims
and the Examiner’s burden of proof.
Rejection of claims 11–21 under 35 U.S.C. §112, first paragraph, as failing to
comply with the written description requirement
Appellant disagrees with the Examiner’s finding that the Application, as
originally filed, does not support the negative claim limitation “said reactive layer
having a composition which does not contain yttria” (claim 11). See Ans. 3.
“The purpose of the written description requirement is to ensure that the
scope of the right to exclude, as set forth in the claims, does not overreach the
scope of the inventor’s contribution to the field of art as described in the patent
specification.” In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1319 (Fed. Cir. 2011) “[C]laim construction is inherent in any written description
analysis.” Id. Under 35 U.S.C. §112, first paragraph, negative claim limitations
are “adequately supported when the specification describes a reason to exclude the
relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012).
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Appellant argues “[i]t is clear from page 4, lines 12 - 25 of the originally
filed application that Appellant, at the time of filing the instant application,
understood that the reactive layer composition does not need to contain yttria.”
Reply Br.5 3. The referenced portion of the Specification describes a single
embodiment of the reactive layer composition. We do not find, and Appellant has
not identified, any disclosure in the Specification indicating that the inventors
intended to limit the reactive layer composition to this specific embodiment or to a
composition that is free of components other than those explicitly listed. In other
words, the disclosure of a particular composition which excludes a broad genus of
components does not amount to a disclosure of a composition that excludes one
particular compound. See In re Bimeda Research & Dev. Ltd., 724 F.3d 1320,
1323–24 (Fed. Cir. 2013) (finding substantial evidence supported the Board’s
finding that “claim 32 failed the written description requirement because the
disclosure did not describe[ ] a formulation excluding a specific species of the anti-
infective genus, while permitting others to be present” (internal citations and
quotations omitted)); cf. Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
540 F.3d 1337, 1345 (Fed. Cir. 2008) (“[T]he fact that the specification describes
only a single embodiment, standing alone, is insufficient to limit otherwise broad
claim language.”).
Moreover, as indicated by the Examiner, the claim 11 reactive layer is not
limited to the composition of the powder mixture deposited on the TBC, but
encompasses the composition of the layer formed after thermo-chemical reaction
of the powder mixture with the TBC. Compare claim 18 (“The turbine engine
component of claim 17, wherein said melt temperature of the reactive layer is at
least 50 degrees Fahrenheit higher than the melt temperature of the CMAS

5 Reply Brief filed Mar. 27, 2013.
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encountered during service.”) with Spec. 4:27–30 (indicating that this feature is
achieved after thermo-chemical reaction of the powder mixture with the TBC); see
In re Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011) (“Claims of narrower scope
can be useful to clarify the meaning of broader, independent claims under the
doctrine of claim differentiation.”).
Rejection of claims 11–19 and 21 under 35 U.S.C. §102(b) as anticipated by
Darolia ʼ674
Appellant argues Darolia ʼ674 cannot anticipate because “[p]aragraph 0030 .
. . clearly says that the reaction layer 205 is made up of reaction products resulting
from the reaction between CMAS and yttria (see paragraph 0030, lines 12 -14),”
and “[t]he only way such reaction products form is if there is free yttria in the
reaction layer.” Reply Br. 4. Appellant’s argument is not persuasive, because the
Examiner provided a reasonable basis for finding that the reactive layer of Darolia
ʼ674, once activated, becomes yttrium calcium silicate and no longer contains the
reactant yttria. See Ans. 5, 11. The burden is on Appellant to show otherwise. See
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
(Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Whether the rejection is based
on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is
the same, and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art products.).
Appellant’s unsupported attorney argument is insufficient to meet this burden.
Appellant also argues “[t]here is no disclosure in Darolia ’674 that the
controlled atmosphere is applied prior to the turbine engine component being
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placed in service. One could expose the layer to a controlled atmosphere after it
has been placed in service.” Reply Br. 5.
As explained by the Examiner, the claim 11 limitation relating to activation
of the reactive layer is a process limitation. Appellant has not identified persuasive
evidence which shows that the process by which the Darolia ʼ674 reactive layer is
activated would result in a turbine engine component that differs in structure or
composition from a turbine engine component in which the reactive layer is
activated prior to the turbine engine component entering into service as recited in
claim 11. In this regard, we note the Specification indicates that a reaction layer
formed by activation in the manner recited in claim 11 has a higher melting
temperature than common CMAS encountered in the field. Spec. 5:26–29.
Appellant has not shown error in the Examiner’s finding that the reactive layer of
Darolia ʼ674 likewise includes this feature. See Ans. 6.
Rejection of claims 11–20 under 35 U.S.C. §102(b) as anticipated by or under
35 U.S.C. §103(a) as unpatentable over Darolia ʼ859
Appellant argues Darolia ʼ859 cannot anticipate because it only discloses
testing of coatings on substrates under conditions that simulate service
temperatures, and does not disclose a specific example in which a reactive layer is
activated on an actual turbine component prior to entering into service in the
manner recited in claim 11. Reply Br. 6. Appellant’s argument is not persuasive
because Darolia ʼ859 clearly describes the substrate to which the coating is applied
as a component of a gas turbine engine (see Darolia ʼ859 ¶ 28) and, as explained
above, Appellant’s argument is directed to a process limitation. Appellant has not
provided persuasive evidence of a difference in the structure or composition of
Darolia’s turbine engine component and a turbine engine component in which the
reactive layer is activated prior to the turbine engine component entering into
service as recited in claim 11.
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Appellant’s argument that Darolia ʼ859 fails to teach a coating applied to a
combustor panel as recited in claim 12 (Reply Br. 7–8) is not persuasive because
Appellant has not shown error in the Examiner’s finding that a shroud (see Darolia
ʼ859 ¶ 46) has the same structure as a combustor panel. See Ans. 8. In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“A reference may be from an
entirely different field of endeavor than that of the claimed invention or may be
directed to an entirely different problem from the one addressed by the inventor,
yet the reference will still anticipate if it explicitly or inherently discloses every
limitation recited in the claims.”); Hewlett-Packard Co. v. Mustek Sys., Inc., 340
F.3d 1314, 1324 n.6 (Fed. Cir. 2003) (“The anticipation analysis asks solely
whether the prior art reference discloses and enables the claimed invention, and not
how the prior art characterizes that disclosure.”).
CONCLUSION
Appellant’s arguments fail to identify reversible error in the Examiner’s
rejections for the reasons stated in the Answer and above. Accordingly, we affirm
the rejections of: (1) claims 11–21 under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement; (2) claims 11–19 and
21 under 35 U.S.C. §102(b) as anticipated by Darolia ʼ674; (3) claims 11–20 under
35 U.S.C. §102(b) as anticipated by Darolia ʼ859; and (4) claims 11–20 under
35 U.S.C. §103(a) as unpatentable over Darolia ʼ859.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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