Ex Parte Hu et al

Board of Patent Appeals and Interferences

Mar 25, 2008

10819816 (B.P.A.I. Mar. 25, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YIPING HU, FEDERICO RENTERIA
and MURALI MADHAVA
____________

Appeal 2008-1541
Application 10/819,816
Technology Center 1762
____________

Decided: March 25, 2008
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 13 and 16-23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-1541
Application 10/819,816

I. BACKGROUND
The invention relates to a method for applying a wear resistant coating
to a turbine blade by cold gas-dynamic spraying the coating onto the blade,
performing a hot isostatic pressing (“HIP”) treatment and performing at least
one heat treatment. Claims 13, 17, 19 and 21 are illustrative of the subject
matter on appeal:
13. A method for applying a wear resistant coating to a turbine blade,
the method comprising the steps of:
cold gas-dynamic spraying powder materials to form a coating on at
least a portion of the turbine blade;
performing a hot isostatic pressing on the coated turbine blade; and
heat treating the coated turbine blade after performing the hot isostatic
pressing.

17. The method of claim 16 wherein the wear resistant coating is
formed on edge of the z-notch shroud.

19. The method of claim 18 further comprising the step of performing
a rapid cooling of between 45 and 60 degrees F per minute to a desired
temperature level after the hot isostatic pressing.

21. The method of claim 13 wherein the step of cold gas-dynamic
spraying particles to form a coating on at least a portion of the turbine blade
comprises forming a coating thickness of between 0.010 to 0.220 inches.

The Examiner relies on the following prior art references to show
unpatentability:

Cretella et al. (“Cretella”) US 4,291,448 Sep. 29, 1981
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Kenton US 4,302,256 Nov. 24, 1981
DeLuca et al. (“DeLuca”) US 5,788,785 Aug. 4, 1998
Arnold US 5,956,845 Sep. 28, 1999
Seth et al. (“Seth”) US 6,780,458 Aug. 24, 2004
Raj US 6,838,191 Jan. 4, 2005
Slattery US 2005/0084701 Apr. 21, 2005
The Examiner made the following rejections:
1. Claims 13, 16, 18 and 20 under 35 U.S.C. § 103(a) as obvious over
Seth in view of Raj and DeLuca;
2. Claims 13, 16, 18, 20 and 22 under 35 U.S.C. § 103(a) as obvious
over Seth in view of Slattery and DeLuca;
3. Claim 17 under 35 U.S.C. § 103(a) as obvious over Seth in view of
Raj, DeLuca and Cretella;
4. Claim 17 under 35 U.S.C. § 103(a) as obvious over Seth in view of
Slattery, DeLuca and Cretella;
5. Claims 19 and 23 under 35 U.S.C. § 103(a) as obvious over Seth in
view of Raj, DeLuca and Kenton;
6. Claims 19 and 23 under 35 U.S.C. § 103(a) as obvious over Seth in
view of Slattery, DeLuca and Kenton;
7. Claim 21 under 35 U.S.C. § 103(a) as obvious over Seth in view of
Raj, DeLuca and Arnold; and
8. Claim 21 under 35 U.S.C. § 103(a) as obvious over Seth in view of
Slattery, DeLuca and Arnold.
Appellants contend that the following groups of claims are separately
patentable: (1) claims 13, 16, 18, 20 and 22, (2) claim 17, (3) claims 19 and
23, and (4) claim 21. Accordingly, we decide these grounds of rejection on
the basis of claims 13, 17, 19 and 21. See 37 C.F.R. § 41.37(c)(1)(vii).

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II. DISCUSSION
Claims 13, 16, 18, 20 and 22
First, we address claims 13, 16, 18, 20 and 22. Claims 13, 16, 18 and
20 stand rejected under 35 U.S.C. § 103(a) as obvious over Seth in view of
Raj and DeLuca, and claims 13, 16, 18, 20 and 22 stand rejected under
35 U.S.C. § 103(a) as obvious over Seth in view of Slattery and DeLuca.
Because separate arguments were not provided for the dependent claims, we
decide these grounds of rejection based on claim 13.
Appellants argue that Seth teaches away from the combination of the
cold spray technique taught by Seth with further heat treatments. (App. Br.
5 and 9). The Examiner responds that the particular statement relied upon
by Appellants does not teach away from the combination and that reliance
on the teachings in the other references supports combining a cold spray
technique with heat treatments. (Ans. 15-16 and 26-27). Appellants also
argue that neither Raj nor Slattery suggests HIP (i.e., hot isostatic pressing)
or heat treatment following a cold spraying method. (App. Br. 5-6 and 9).
The Examiner responds by pointing out the broad teachings of Raj and
Slattery and that these references are relied upon in combination with Seth
and DeLuca. (Ans. 17-18 and 26-27). Appellants also argue that there
would be no motivation to combine the free-standing component methods
taught by DeLuca to a cold sprayed coating. (App. Br. 6 and 9). The
Examiner responds by emphasizing the fact that the combination of
references teach the invention rather than relying on DeLuca alone and
points to the “desirable microstructure benefits for a metal material” taught
by DeLuca. (Ans. 18 and 28).
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Thus, the issues on appeal arising from the contentions of Appellants
and the Examiner are: (1) does Seth teach away from combining a cold
spray-coating method with heat treatment; and (2) have the Appellants
shown that the Examiner reversibly erred in combining the teachings of
Seth, Raj and DeLuca or, alternatively, the teachings of Seth, Slattery and
DeLuca in the rejections under consideration?
We answer both questions (1) and (2) in the negative and conclude
that Seth does not teach away from combining a cold spray coating method
with heat treatment and that the Examiner has not reversibly erred in
combining the teachings of the cited references. In fact, we adopt the
Examiner’s well-reasoned and cogent findings and conclusions and add the
following primarily for emphasis.
First, we address the question of whether Seth teaches away from
combining a cold spray coating method with a heat treatment. A reference
“teaches away” when an artisan upon reading it would be discouraged from
following the path set out in the reference or would be led in a direction
divergent from the path that was taken by the applicant. See In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994). As an example, a reference may teach
away from a use when that use would render the result inoperable.
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001);
see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining that
there is no teaching away when the “disclosure does not criticize, discredit,
or otherwise discourage the solution claimed”).
Seth teaches that “the heat input during the application of a wear alloy
coating may cause warping of a relatively thin substrate member such as a
turbine blade” and “may melt or otherwise metallurgical [sic,
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metallurgically] degrade properties of an underlying single crystal or
directionally stabilized substrate material or a proximate brazed joint.”
(Seth, col. 2, ll. 9-15). Thus, Seth teaches undesirable results may occur
from using a heat or thermal process for applying a wear resistant coating.
This teaching does not instruct one of ordinary skill in the art that a
subsequent heat treatment after cold spray coating would never be
appropriate.
Seth also teaches that, in applying a “wear alloy” with the use of “a
cold spray process” that “imparts only a small amount of heat to the
underlying substrate material,” “no heat-treating of the component is
required after the coating deposition, unlike prior art thermal processes.”
(Seth, col. 5, ll. 35-54). As the Examiner notes “Seth indicates that a heat
treating [sic, treatment] is not understood to be necessary in its process, not
that performing a heat treatment would destroy the invention,” and that heat
treatments would not “change the principle of operation of Seth” nor render
Seth inoperable. (Ans. 15-16 and 26). The instruction in Seth, that heat
treatment is not required, does not suggest to one of ordinary skill in the art
that a heat treatment would never be suitable for combination with the
benefits provided by a cold spray coating method. Further, as discussed in
detail below, Raj and Slattery both provide sufficient rationale for
combining a cold spray coating method with a subsequent heat treatment
that may or may not have been fully appreciated by Seth. Therefore, we
decline to read Seth as teaching away from the use of a subsequent heat
treatment after a cold spray coating method, as suggested by Appellants.
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We now address the question of whether Appellants have shown that
the Examiner reversibly erred in combining the teachings of Seth, Raj and
DeLuca or, alternatively, the teachings of Seth, Slattery and DeLuca.
The Appellants have the burden of showing that the Examiner
reversibly erred. See In re Kahn, 441 F.3d 977, 985-86 (“On appeal to the
Board, an applicant can overcome a rejection by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.” (emphasis
omitted)).
According to KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742
(2007), “[o]ne of the ways in which a patent's subject matter can be proved
obvious is by noting that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
patent's claims.” See also In re Kahn, 441 F.3d 977, 987-88, (Fed. Cir.
2006)(“consider what the combined teachings, knowledge of one of ordinary
skill in the art, and the nature of the problem to be solved as a whole would
have suggested to those of ordinary skill in the art.”).
We first determine that the teachings of Raj are properly combined
with the teachings of Seth. Raj teaches the application of a bond coat by a
variety of techniques including “low pressure or vacuum plasma spray,”
“cold spraying, arc spraying, physical vapor deposition, chemical vapor
deposition and other similar techniques.” (Raj, col. 2, ll. 44-49). In an
example, Raj also teaches: “The bond coat was then deposited on the
substrate by low pressure or vacuum plasma spraying and this was followed
by depositing the NiAl top coat by the same process. Consolidation of the
overlay and bond coats was conducted by hot isostatically pressing (HIP) at
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suitable pressure, temperatures, and hold times.” (Raj, col. 4, ll. 35-40). We
also note that Figures 1 and 2 of Raj illustrate the differences between
sprayed coatings before (Figure 1) and after (Figure 2) consolidation via
HIP. (Raj, col. 4, ll. 44-48). Thus, Figures 1 and 2 demonstrate to one of
ordinary skill in the art the benefits of adding a HIP procedure to spray
coating methods for consolidation of coating.
We agree with the Examiner that Raj teaches broadly the use of HIP
following cold spraying (or any of several spraying techniques) for the
benefit of consolidation of the coatings. (Ans. 17-18). We find Appellants’
arguments regarding the use of only “thermal plasma spraying” with HIP in
the example unpersuasive because a reference may be relied upon for all that
it would have reasonably suggested to one having ordinary skill in the art.
Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989)(“the fact
that a specific [embodiment] is taught to be preferred is not controlling,
since all disclosures of the prior art, including unpreferred embodiments,
must be considered”); see also In re Susi, 440 F.2d 442, 446 n.3 (disclosed
examples and preferred embodiments do not constitute a teaching away from
a broader disclosure or non-preferred embodiments). Therefore, we
conclude that one of ordinary skill in the art, knowing from the teaching of
Raj that consolidation via HIP benefits coatings applied by a cold-spray
method, would have been motivated to use a subsequent HIP process after
the cold-spray coating application taught by Seth.
For similar reasons, we determine that the teachings of Slattery are
properly combined with the teachings of Seth. Slattery teaches that “the gas
used for cold spraying can become trapped in the deposited material, thereby
affecting the ductility or other properties of the material” (Slattery, ¶ [0004])
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and that “[d]uring the deposition of the structural material 16 on the base
member 14, small amounts of the hydrogen gas are trapped in pockets,
bubbles, gaps, or other voids.” (Slattery, ¶ [0034]). Slattery teaches that
“[a]s a result of the HIP treatment, discontinuities in the preform can be
removed, such as by consolidating the structural material 16 to reduce or
eliminate bubbles, gaps, or other voids formed during cold spraying.”
(Slattery, ¶ [0042]). As such, Slattery also teaches the benefits of
consolidation with HIP after a cold spray process, such as the cold spray
coating of Seth, to address pockets, bubbles, gaps or voids caused by the
cold spray process. Therefore, we conclude that one of ordinary skill in the
art, knowing from the teaching of Slattery that consolidation via HIP
benefits coatings applied by a cold-spray method, would have been
motivated to use a subsequent HIP process after the cold-spray coating
application taught by Seth.
We next determine that the teachings of DeLuca are properly
combined with the teachings of Seth as modified by Raj or Slattery. DeLuca
teaches that
[t]he superalloy … was thermally processed using
the following parameters: HIP at 2165º F. (1185º
C.) for 4 hours at 25 ksi (172 MPa); solutioned at
2165º F. (1185º C.) for two hours; rapid vacuum
cooled to below 1000º F. (538º C.); precipitation
heat treated at 1975º F. (1079º C.) for four hours;
air cooled to room temperature; aged at 1600º F.
(871º C.) for 20 hours; and air cooled to room
temperature.
(DeLuca, col. 5, ll. 16-23). As such, DeLuca teaches HIP followed by a heat
treatment “to provide marked increases in the fatigue resistance and crack
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propagation when used in more common applications, such as gas turbine
engines.” (DeLuca, col. 2, ll. 41-49).
We note that Seth has already taught that “the heat input during the
application of a wear alloy coating may cause warping of a relatively thin
substrate member such as a turbine blade” and “may melt or otherwise
metallurgical [sic, metallurgically] degrade properties of an underlying
single crystal or directionally stabilized substrate material or a proximate
brazed joint.” (Seth, col. 2, ll. 9-15). Thus, based on the teachings of Seth,
one of ordinary skill in the art would have appreciated that a subsequent HIP
treatment, as taught by Raj and Slattery, after the cold spray coating
application of Seth may cause similar damage to the underlying structure as
does a thermal spray coating technique. As such, Seth provides an
appropriate rationale for adding the subsequent heat treatment teachings of
DeLuca to bolster the underlying turbine materials. 1
Therefore, we find that one of ordinary skill in the art, knowing from
the teaching of Seth that a heat treatment, such as the HIP treatment
suggested by Raj and Slattery, may cause defects in the underlying

1 We note that Slattery also teaches that the underlying material (base
member 14) “can undergo a material treatment, such as hot isostatic pressing
(HIP), heat treating, aging, quenching, stretching, annealing, or solution
annealing, to obtain desired mechanical or chemical properties, as is known
in the art.” (Slattery, ¶ [0042]). Thus, it appears that Slattery alone suggests
the use of certain “material treatments” that are “known in the art” to be
appropriate for treating an underlying material, such as heat treating, aging
and quenching (or rapid cooling). Nonetheless, the Examiner relies on
DeLuca for processes directed to “high strength nickel base superalloy
material” that are used in “common applications, such as gas turbine
engines.” (DeLuca, col. 2, ll. 41-49).
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materials, would have been motivated to use the heat treatments taught by
DeLuca to bolster the underlying superalloy of the turbine.
We also conclude that the Appellants have not shown that the
Examiner reversibly erred in combining the teachings of Seth, Raj and
DeLuca in rejecting claims 13, 16, 18 and 20 or, alternatively, the teachings
of Seth, Slattery and DeLuca in rejecting claims 13, 16, 18, 20 and 22.
Claim 17
We next turn to separately argued claim 17. To reject claim 17, the
Examiner adds Cretella as further evidence of what was known in the art at
the time of the invention with respect to the application of a wear resistant
coating to the edges of a z-notch shroud.
Appellants argue that the “plasma spraying” teaching of Cretella does
not suggest that “a cold sprayed wear resistant coating on the z-notch shroud
of a turbine blade would adequately provide the necessary protection and
durability.” (App. Br. 6-7, and 10). The Examiner responds that “the
suggestion to apply the cold sprayed coating as claimed to a z-notch is
clearly provided in the primary reference to Seth which provides the cold
gas-dynamic spraying of the wear resistant coating, and the suggestion to
use the process for ‘combustion turbine z-notch shrouds.’" (Ans. 21 and 30).
Thus, the issue on appeal arising from the contentions of Appellants
and the Examiner is: have the Appellants shown that the Examiner
reversibly erred in combining the teachings of Cretella with the teachings of
Seth, Raj and DeLuca or, alternatively, the teachings of Seth, Slattery and
DeLuca? We answer this question in the negative.
Seth further teaches that “the process and [wear resistant] coating
described herein…is especially useful for … combustion turbine z-notch
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shrouds.” (Seth, col. 6, ll. 64-67). Based on the teachings of Seth, one
skilled in the art would have appreciated that a wear resistant coating would
be suitable for those locations of the combustion turbine z-notch shrouds that
wear. We note that one skilled in the art of combustion turbines would also
have been aware of the locations that particularly wear, i.e., the edges.
Thus, Seth alone provides a sufficient suggestion to support the obviousness
of applying the coating to z-notch shroud edges. Nonetheless, the Examiner
supplements the evidence of obviousness with Cretella, which teaches
“restoring the shroud of a turbine blade which has become worn, and
particularly those edges of the shroud in the vicinity of what is commonly
known as the Z-notch.” (Cretella, abstract; col. 1, ll. 33-40). We conclude
that one skilled in the art reading Cretella would have discerned that the
edges of the z-notch shroud, as required by claim 17, are a suitable location
for applying the wear resistant coating of Seth. We further conclude that the
Appellants have not shown that the Examiner reversibly erred in combining
Cretella with the references used to reject claim 13.
Claims 19 and 23
We next turn to separately argued claims 19 and 23. Both claims 19
and 23 recite a step of “performing a rapid cooling of between 45 and 60
degrees F per minute to a desired temperature level after the hot isostatic
pressing.” We select claim 23 to represent the issues on appeal. To reject
claims 19 and 23, the Examiner adds Kenton as further evidence of what
was known in the art with respect to the use of a rapid cooling step following
a HIP step.
Appellants argue that “there is no reason for a person of ordinary skill
in the art to read [the cast forming process of] Kenton and determine that the
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heat treatments disclosed therein are suitable or even desirable following
formation of a coating using a cold spraying process.” (App. Br. 8 and 11).
The Examiner responds that Kenton “provides clarification as to what a
desirable rapid cool down would be when HIP treating a metal alloy.” (Ans.
22 and 32).
Thus, the issue on appeal arising from the contentions of Appellants
and the Examiner is: have the Appellants shown that the Examiner
reversibly erred in combining the teachings of Kenton with the teachings of
Seth, Raj and DeLuca or, alternatively, the teachings of Seth, Slattery and
DeLuca? We answer this question in the negative.
Along with the Examiner, we note that DeLuca teaches a HIP
treatment followed by a rapid cooling step, which is then followed by heat
treatment and aging steps. (DeLuca, col. 5, ll. 16-23). We note that based
on the teachings of DeLuca alone one skilled in the art would have been able
to optimize the particular degree of rapid cool down to obtain a desirable
result. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007)
(discovery of an optimum value of a variable in a known process is usually
obvious); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]t is not
inventive to discover the optimum or workable ranges by routine
experimentation.”).
Nonetheless, the Examiner supplements the evidence with Kenton
which teaches a method for manufacturing superalloy products, such as a
turbine blade, that includes “[f]ollowing completions of the HIP treatment,
the parts are rapidly cooled in situ at a cooling rate over 20ºC. per minute,
preferably at least about 30º C. per minute, e.g., about 30º to 50º C. or 60º C.
per minute or higher.” (Kenton, col. 6, ll. 18-21). A change of 25ºC equates
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to a change of 45ºF, and a change of 30ºC equates to a change of 54ºF,
which are within the range of claims 19 and 23. Kenton provides further
evidence that those of ordinary skill in the art would have used temperatures
within the claimed range when cooling the product of Seth after a HIP
treatment of Raj or Slattery. Therefore, we conclude that the Appellants
have not shown that the Examiner reversibly erred in combining the
teachings of Kenton with the teachings of Seth, Raj and DeLuca or,
alternatively, the teachings of Seth, Slattery and DeLuca.
Claim 21
We next turn to separately argued claim 21. To reject claim 21, the
Examiner adds Arnold as further evidence of what was known in the art at
the time of the invention with respect to applying a wear resistant coating in
a thickness of between 0.010 and 0.220 inches.
Appellants argue that “[the rejections of claim 21] should not be
sustained at least for the same reasons set forth previously regarding
independent claim 13, from which claim 21 depends.” (App. Br. 8 and 12).
Since Appellants argue only that dependent claim 21 is patentable
because it depends from claim 13, we sustain the rejection for the reasons
provided above with respect to claim 13.
III. CONCLUSION
The totality of the evidence weighs in favor of the Examiner’s
determination that Seth does not teach away from combining a subsequent
heat treatment step with a cold spray coating and that Seth, Raj and DeLuca
or, alternatively, Seth, Slattery and DeLuca are properly combined
references to reject claims 13, 16, 18, 20 and 22. The totality of the
evidence weighs in favor of concluding that Cretella is properly combined
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with the references used to reject claim 13 in the rejection of claim 17. The
totality of the evidence weighs in favor of concluding that Kenton is
properly combined with the references used to reject claim 13 in the
rejection of claims 19 and 23. The totality of the evidence weighs in favor
of concluding Arnold is properly combined with the references used to reject
claim 13 in the rejection of claim 21. Appellants have provided no effective
argument nor submitted any evidence to sufficiently rebut a prima facie case
of obviousness of claims 13 and 16-23.
IV. DECISION
The decision of the Examiner is affirmed.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tc/cam

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