Ex Parte Ivory et al

Patent Trials and Appeals Board

Jan 7, 2019

13725138 - (D) (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/725, 138
11943 7590
O""Shea Getz P.C.
FILING DATE FIRST NAMED INVENTOR
12/21/2012 Steven Ivory
01/09/2019
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P A-0025245-US 6072
EXAMINER
10 Waterside Drive, Suite 205 DU GER, JASON H
Farmington, CT 06032
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
01/09/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@osheagetz.com
shenry@osheagetz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN IVORY,
MONIKA D. KINSTLER, and JOHN H. FINN1
Appeal2018-002941
Application 13/725, 13 8
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven Ivory et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1, 3-7, 9, 10, and 12. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief identifies United Technologies Corporation as the real
party in interest. Br. 3.
Appeal2018-002941
Application 13/725, 138
CLAIMED SUBJECT MATTER
Appellants' invention relates to a gas turbine engine and, more
particularly, to a combustor section therefor. Spec. ,r 1.
Claims 1 and 7 are independent. Claim 1 is illustrative and is
reproduced below:
1. A liner panel for use in a combustor of a gas turbine engine
compnsmg:
a cold side having a backside feature; and
hot side with a barrier coating that is stripped only in a
localized, damaged area to facilitate a variable polarity weld.
THE REJECTIONS
The Examiner has rejected:
(i) Claim 10 under 35 U.S.C. § 112(a), first paragraph, as failing to
comply with the written description requirement;
(ii) Claims 7, 9, and 12 under 35 U.S.C. § I02(b) as being anticipated
by Draghi (US 5,972,424, issued Oct. 26, 1999);
(iii) Claims 1 and 5 under 35 U.S.C. § I02(b) as being anticipated by,
or in the alternative, under 35 U.S.C. § I03(a) as being unpatentable over
Emilianowicz (US 2010/0031664 Al, published Feb. 11, 201 O);
(iv) Claims 3, 4, and 6 under 35 U.S.C. § I03(a) as being unpatentable
over Emilianowicz in view ofDarolia (US 6,558,813 B2, issued May 6,
2003);
(v) Claims 7, 9, 10, and 12 under 35 U.S.C. § I03(a) as being
unpatentable over Draghi in view of Reitz (US 2010/0247740 Al, published
Sept. 30, 201 O);
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Application 13/725, 138
(vi) Claims 1 and 5 under 35 U.S.C. § 103(a) as being unpatentable
over Caldwell (US 7,216,485 B2, issued May 15, 2007) in view of Draghi
and Reitz;
(vii) Claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Caldwell in view of Draghi, Reitz, and Spitsberg (US 7,150,922 B2, issued
Dec. 19, 2006);
(viii) Claim 4 under 35 U.S.C. § 103(a) as being unpatentable over
Caldwell in view of Draghi, Reitz, and Margolies (US 7,833,586 B2, issued
Nov. 16, 2010); and
(ix) Claim 6 under 35 U.S.C. § 103(a), as being unpatentable over
Caldwell in view of Draghi, Reitz, and Bruce (US 5,981,088, issued Nov. 9,
1999).
ANALYSIS
Claim 10 - Written Description
The Examiner determines that claim 10 fails to comply with the
written description requirement. Final Act. 2. The Examiner takes the
position that paragraph 37 of the Specification discloses completely acid
stripping the thermal barrier coating instead of stripping only in a localized,
damaged area, because, in conventional acid stripping, an entire coated
substrate is dipped in an acid bath. Ans. 4. The Examiner also explains that
paragraph 3 7 of the Specification discloses that acid stripping the thermal
barrier coating "removes the thermal barrier coating," which implies not
removing just the thermal barrier coating in a localized, damaged area. Id.
We agree with Appellants that there is no basis for the Examiner to
infer such a narrow reading of the Specification. See Br. 7. The written
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Application 13/725, 138
description requirement is satisfied when the disclosure of the application
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date. Ariad
Pharmaceuticals v. Eli Lilly, 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Paragraph 37 of the Specification states:
With Reference to Figure 4 in one disclosed non-limiting
embodiment of a repair process, the thermal barrier coating is
stripped in a localized area which is damaged to facilitate a
variable polarity weld (step 200). Alternatively, the thermal
barrier coating is stripped completely from the liner panels 72,
74. In one disclosed non-limiting embodiment, the thermal
barrier coating is acid strip[p Jed which removes the thermal
barrier coating but does not effect [sic] the diffusion-aluminide
coating from the cold side 110.
Spec. ,r 3 7. Contrary to the Examiner's assertion, this paragraph discloses
both localized area stripping and complete stripping, and that acid stripping
may be employed. Even if conventional acid stripping involves dipping an
entire coated substrate in an acid bath, as posited by the Examiner, the
Examiner does not establish that the identification of acid stripping in the
last sentence of paragraph 37 is solely directed to that conventional acid
stripping process.
For these reasons, we do not sustain the rejection of claim 10 under 35
U.S.C. § 112(a), first paragraph, as failing to comply with the written
description requirement.
Claims 7, 9, and 12 - Anticipation - Draghi
The Examiner finds that Draghi discloses all of the limitations set
forth in claim 7. Final Act. 2-3 ( citing Draghi, col. 1, 11. 10-20, col. 4, 11.
46-49, col. 5, 11. 9-31; Figs. 1-3). The Examiner finds, pertinent to an issue
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Application 13/725, 138
joined on appeal, that Draghi discloses stripping a thermal barrier coating
only in a localized, damaged area because Draghi discloses that its tip 20
often requires repair and thus, tip 20 corresponds to the localized, damaged
area, as claimed. Id. at 2 (citing Draghi, col. 4, 11. 46-49); see also Ans. 5.
The passage in Draghi relied on by the Examiner as disclosing this
limitation states, "[f]ollowing inspection, any residual abrasive material on
the tip 20 may be removed with any conventional method, such as grinding.
The blade 18 may then be inspected to determine whether the tip 20 requires
repairs." Draghi, col. 4, 11. 46-49 ( emphasis omitted). As Appellants
maintain, the stripping of residual abrasive material, as disclosed in that
passage, cannot properly be regarded as a stripping of a thermal barrier
coating limited only to a localized damaged area, because the entirety of the
thermal barrier coating on the tip is stripped prior to any determination as to
whether any localized damaged area suitable for repair exists. Br. 8. As
such, the Examiner has not established that Draghi discloses "stripping a
thermal barrier coating only in a localized, damaged area," as claimed.
Accordingly, the Examiner has not established by a preponderance
of the evidence that claim 7 is anticipated by Draghi. The rejection of claim
7, and of claims 9 and 12 depending therefrom, as being anticipated by
Draghi, is not sustained.
Claims 1 and 5 - Anticipation/Obviousness - Emilianowicz
The Examiner finds that Emilianowicz discloses all of the limitations
set forth in claim 1. Final Act. 3---6 ( citing Emilianowicz ,r,r 15-54, Fig. 6).
Among the findings, the Examiner finds that Emilianowicz discloses a
replacement panel 240 having a side corresponding to a hot side including a
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Application 13/725, 138
barrier coating that is stripped only in a localized, damaged area, as claimed.
Id. at 4--5. In arriving at this position, the Examiner treats claim 1 as a
product-by-process claim, noting that the claimed stripping of a thermal
barrier coating results in substantially the same structure as not including a
thermal barrier coating in the first place. Id. at 5-6.
The Examiner explains that, because there is no thermal barrier
coating at the peripheral edge 250 of replacement panel 240, Emilianowicz's
panel is substantially the same in structure as the liner panel of claim 1. Id.
at 5---6. Even if we accept the Examiner's position that the limitation
directed to the thermal barrier coating being "stripped" makes this limitation
of claim 1 a product-by process limitation, a replacement panel that does not
have a damaged area, as in Emilianowicz, is structurally different from a
panel having a damaged area that the replacement panel replaces. Similarly,
a damaged area of the original panel is removed such that the replacement
panel can be fitted thereto, and therefore has no damaged area remaining.
Thus, the Examiner has not established that Emilianowicz discloses structure
substantially the same as the claimed localized damage area that is free of
thermal barrier coating.
Accordingly, the Examiner has not established by a preponderance of
the evidence that claim 1 is anticipated by Emilianowicz. The rejection of
claim 1, and of claim 5 depending therefrom, as being anticipated by
Emilianowicz, is not sustained.
We note, from the header of the rejection, that the Examiner
alternatively concludes that it would have been obvious to modify the
replacement panel of Emilianowicz in order to arrive at the claimed liner
panel. See id. at 3. However, the Examiner does not explain what aspect of
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Emilianowicz's replacement panel is being modified. See id. at 3---6. The
alternative rejection of claim 1, and of claim 5 depending therefrom, as
being unpatentable over Emilianowicz, is also not sustained.
Claims 3, 4, and 6 - Obviousness - Emilianowicz/Darolia
Darolia is not relied on by the Examiner to cure the deficiency noted
above with respect to Emilianowicz. See Final Act. 7. The rejection of
claims 3, 4, and 6, as being unpatentable over Emilianowicz and Darolia is
not sustained.
Claims 7, 9, 10 and 12 - Obviousness - Draghi/Reitz
Appellants do not argue claims 9, 10, and 12 separately from claim 7.
Br. 10. We take claim 7 as representative of this group, and claims 9, 10 and
12 stand or fall with claim 7.
Alternatively to the anticipation rejection over Draghi, the Examiner
finds that Draghi discloses all of the limitations set forth in claim 7 except
stripping a thermal barrier coating only in a localized, damaged area. Final
Act. 7-8. The Examiner relies on Reitz as disclosing this missing limitation.
Id. at 8 (citing Reitz ,r,r 102-110). The Examiner concludes that it would
have been obvious to modify the method of repairing a component of a gas
turbine engine of Draghi to strip only at a localized, damaged area to save
money and time. Id. (citing Reitz ,r 12).
Appellants contend that
[a]s set forth in Reitz at paragraph [0110], either only part of a
thermal barrier coating (TBC) layer is removed or the complete
TBC layer is locally removed. Reitz fails to tie the local removal
of the TBC layer in paragraph [O 11 OJ to the damaged
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Application 13/725, 138
location/area. Reitz at paragraph [O 109] simply refers to local
removal of damaged parts in case of preparation of a surface.
Br. 10.
Appellants' contentions are unpersuasive. Paragraph 109 of Reitz
states that "[i]t is important to note that in accordance with the invention,
there is no complete removal of the entire ceramic coating, but only
damaged parts are locally removed in case of a preparation of the surface."
Reitz ,r 109 ( emphasis added). Paragraph 110 of Reitz states that
"[d]epending on the type and kind of defect, either only part of the TBC
[(thermal barrier coating)] layer is removed, the complete TBC layer is
locally removed, or, in addition to complete TBC removal, the bond coat
layer is removed." Id. ,r 110. Reitz further discloses that "there should be
smooth transitions between the surfaces of the repaired patch region and the
surrounding intact barrier coating." Id. ,r 111. We agree with the Examiner
that these passages evidence that Reitz discloses stripping a thermal barrier
coating only in a localized, damaged area. Ans. 9--10. We further agree
with the Examiner's response to Appellants' contention, that to the extent
Appellants are arguing paragraph 109 ofReitz's reference to "parts" as not
including the thermal barrier coating, that is contrary to Reitz' s disclosure
because in the same sentence, Reitz states that "there is no complete removal
of the entire ceramic coating." Id. at 10; see also Reitz ,r 109.
Accordingly, Appellants do not apprise us of Examiner error in the
rejection of claim 7 as being unpatentable over Draghi and Reitz. We thus
sustain the rejection of claim 7 as being unpatentable over Draghi and Reitz.
Claims 9, 10, and 12 fall with claim 7.
Claims 1 and 5 - Obviousness - Caldwell/Draghi/Reitz
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Appellants do not argue claim 5 separately from claim 1. Br. 10-11.
We take claim 1 as representative of this group, and claim 5 stands or falls
with claim 1.
The Examiner finds that Caldwell, Draghi, and Reitz disclose all of
the limitations of claim 1. Final Act. 8-10. More specifically, the Examiner
finds that Caldwell discloses a liner panel (liner 22) comprising a cold side
74 and a hot side 70, for which the hot side has a thermal barrier coating 126
and a localized damaged area. Id. at 8-9 (citing Caldwell, col. 1, 11. 47---col.
2, 1. 5). The Examiner relies on Draghi as disclosing a method of repairing a
gas turbine component coated with a thermal barrier coating using variable
polarity welding, and on Reitz as disclosing a method of repairing a
component of a gas turbine engine in which a thermal barrier coating is
stripped only in a localized, damaged area, as discussed above. Id. at 9. The
Examiner concludes that it would have been obvious to modify the liner
panel of Caldwell to have a hot side with a barrier coating that is stripped
only in a localized, damaged area and then welding the localized, damaged
area, as taught by Draghi and Reitz, to increase the number of times a liner
panel can be repaired and to save time and money. Id. at 9-10 (citing
Caldwell, col. 2, 11. 34--40; Reitz ,r 12).
Appellants contend that "Caldwell is silent regarding the chemical or
mechanical processes stripping the thermal barrier coating only in a
localized, damaged area." Br. 10.
Appellants' argument does not address the rejection, as the Examiner
does not rely on Caldwell, but rather relies on Reitz as disclosing stripping a
barrier coating only in a localized, damaged area. See Final Act. 9-10; see
also Ans. 10.
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Accordingly, Appellants do not apprise us of Examiner error in the
rejection of claim 1 as being unpatentable over Caldwell, Draghi, and Reitz.
We thus sustain the rejection of claim 1 as being unpatentable over
Caldwell, Draghi, and Reitz. Claim 5 falls with claim 1.
Claim 3 - Obviousness - Caldwell/Draghi/Reitz/Spitsberg
Claim 4 - Obviousness - Caldwell/Draghi/Reitz/Margolies
Claim 6 - Obviousness - Caldwell/Draghi/Reitz/Bruce
Appellants do not provide any substantive arguments for the
rejections of claims 3, 4, and 6, and rely on the arguments presented above
for the rejection of claim 1 over Caldwell, Draghi, and Reitz. See Br. 11.
For the reasons discussed above with respect to the rejection of claim 1, we
are not apprised of error in these rejections.
Accordingly, the rejections of claims 3, 4, and 6 are sustained.
DECISION
The rejection of claim 10 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement is reversed.
The rejection of claims 7, 9, and 12 under 35 U.S.C. § 102(b) as being
anticipated by Draghi is reversed.
The rejection of claims 1 and 5 under 35 U.S.C. § 102(b) as being
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Emilianowicz is reversed.
The rejection of claims 3, 4, and 6 under 35 U.S.C. § 103(a) as being
unpatentable over Emilianowicz and Darolia is reversed.
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The rejection of claims 7, 9, 10, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Draghi and Reitz is affirmed.
The rejection of claims 1 and 5 under 35 U.S.C. § 103(a) as being
unpatentable over Caldwell, Draghi, and Reitz is affirmed.
The rejection of claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Caldwell in view of Draghi, Reitz, and Spitsberg is
affirmed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Caldwell, Draghi, Reitz, and Margolies is affirmed.
The rejection of claim 6 under 35 U.S.C. § 103(a), as being
unpatentable over Caldwell, Draghi, Reitz, and Bruce is affirmed.
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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