Ex Parte Kaiser et al

Patent Trial and Appeal Board

Sep 16, 2016

12085399 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/085,399 12/19/2008
22116 7590 09/20/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Axel Kaiser
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.
2005Pl5025WOUS 8247
EXAMINER
KHATRI, PRASHANT J
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AXEL KAISER, ECKART SCHUMANN, and
RAMESH SUBRAMANIAN
Appeal2015-004134
Application 12/085,399
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 28, 30 through 33, and 37 through 46.2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
The subject matter on appeal is generally directed to a layer system
comprising a substrate, an inner ceramic layer, and an outer ceramic layer.
(Spec. ,-i,-i 21, 22, 26, 27, 29.) The total thickness of the inner and outer
ceramic layers is about 300 µm to about 800 µm, and the thickness of the
1 Appellants identify the Real Party in Interest as Siemens Aktiengesellschaft
(Appeal Brief filed September 25, 2014 ("App. Br.") at 3.)
2 Final Office Action entered May 27, 2014 ("Final Act.").
Appeal2015-004134
Application 12/085,399
inner ceramic layer is 10% to 50% of the total thickness of both ceramic
layers. (Spec. iJ 42, 50, 52.)
Details of the appealed subject matter are recited in representative
claim 28, which is reproduced below from the Claims Appendix to the
Appeal Brief:
28. A layer system, comprising:
a substrate;
an outer ceramic layer arranged on the substrate where
the ceramic layer comprises a pyrochlore structure
Gdv(ZrxHfy)Oz, where x + y = 2;
an inner ceramic layer that comprises a 6 wt%-8 wt%
yttrium stabilized oxide layer arranged between the outer
ceramic layer and the substrate; and
wherein the inner ceramic layer has a layer thickness of
between 10% and 50% of the total layer thickness of the inner
ceramic layer and the outer ceramic layer, and the total layer
thickness of the inner ceramic layer and the outer ceramic layer
is about 300 µm to about 800 µm.
Appellants seek review of the following grounds of rejection
maintained by the Examiner in the Answer entered on December 24, 2014
("Ans."):
Claims 28, 30-33, 37-39, and 44--46 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of U.S. Patent 6,177,200 Bl issued in the
name of Maloney on January 23, 2001 (hereinafter referred to as
"Maloney") in view ofKaraulov et al., Phase Formation in the Zr02-Hf02
- Gd203 and the Zr02- Hf02- Yb203 Systems, 40 Refractories and
Industrial Ceramics 479 (1999) (hereinafter referred to as "Karaulov").
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Application 12/085,399
Claim 40 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Maloney in view ofKaraulov and U.S. patent 6,756,131 B2 issued in the
name of Oguma et al. on June 29, 2004 (hereinafter referred to as "Oguma").
Claim 41under35 U.S.C. § 103(a) as unpatentable over the disclosure
of Maloney in view ofKaraulov and U.S. Patent Application publication
200410180233 Al published in the name of Stamm on September 16, 2004
(hereinafter referred to as "Stamm").
Claim 43 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Maloney in view of Karaulov and U.S. patent 5,507,623 issued in the
name of Kojima et al. on April 16, 1996 (hereinafter referred to as
"Kojima").
Claim 42 under 35 U.S.C. § 103(a) as unpatentable over the disclosure
of Maloney in view ofKaraulov, Kojima, and U.S. patent 4,034,142 issued
in the name of Hecht on July 5, 1977 (hereinafter referred to as "Hecht").
(See Ans. 2, 5, 6, 8, and 9.)
DISCUSSION
Upon consideration of the evidence on this appeal record in light of
the arguments advanced by the Examiner and Appellants, we concur with
Appellants that the Examiner does not carry the burden of establishing a
prima facie case of obviousness regarding the subject matter recited in
claims 28, 30-33, and 37--46 within the meaning of 35 U.S.C. § 103(a).
Accordingly, we reverse the Examiner's§ 103(a) rejections of these claims
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Application 12/085,399
substantially for the reasons set forth in the Appeal Brief. We add the
discussion below primarily for emphasis and completeness. 3
The Examiner has the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in the claims on appeal. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he [patent] examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a primafacie case ofunpatentability."); see also In re Jung, 637
F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that while "the applicant
must identify to the Board what the examiner did wrong, ... the examiner
retains the burden to show [ unpatentability ]").
The Examiner finds that Maloney discloses a coating for a metallic
substrate that comprises an outer thermal barrier coating, corresponding to
the outer ceramic layer recited in claim 28, and an inner ceramic bond coat,
corresponding to the inner ceramic layer recited in claim 28. (Final Act. 2.)
The Examiner finds that Maloney discloses that when the thermal barrier
coating is applied to a blade of a gas turbine engine, reducing or increasing
the thickness of the coating affects the life of the blade and the substrate
creep life. (Final Act. 3.) The Examiner determines that it would have been
obvious to one of ordinary skill in the art to adjust the thickness of the
thermal barrier coating based on operating conditions and desired properties
3 For the purposes of this appeal, we select claim 28, the broadest claim on
appeal, as representative, and decide the propriety of the rejections under 35
U.S.C. § 103(a) based on this claim alone.
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Application 12/085,399
to optimize the performance of the coating. (Id.)
The Examiner finds that Maloney discloses adjusting the thickness of
the ceramic bond coat applied to a turbine blade to allow for rotation of the
blade while achieving desired thermal characteristics, and the Examiner
determines that it would have been obvious to one of ordinary skill in the art
to adjust the thickness of this layer appropriately. (Final Act. 3-4.) The
Examiner further finds that Maloney exemplifies a thermal barrier coating
having a thickness of 49 µm, and a ceramic bond coat with a thickness of 0.5
mils (12.7 µm). (Final Act. 4.) The Examiner determines that the
exemplified ceramic bond coat constitutes about 25% of the total thickness
of both exemplified coatings based on his or her calculation, and concludes
that the total thickness of the coatings can be adjusted appropriately. (Final
Act. 4, 12.)
However, the Examiner does not demonstrate that one of ordinary
skill in the art reasonably would have been led to produce inner and outer
ceramic layers having the total thickness of about 300 µm to about 800 µm,
with the thickness of the inner layer being 10% to 50% of such total
thickness, as recited in claim 28. Maloney discloses ceramic coatings that
have particular utility in gas turbine engines, and explains that weight is
always a critical factor when designing gas turbine engines, particularly for
rotating parts. (Maloney col. 1, 11. 13-14; col 2, 11. 11-12.) Maloney further
explains that ceramic thermal barrier coatings are not load supporting
materials, and consequently they add weight without increasing strength.
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Application 12/085,399
(Ivfaloney col. 2, 11. 13-15.) Ivfaloney teaches that ceramic thermal barrier
material should therefore add the minimum weight while providing the
maximum thermal insulation capability. (Maloney col. 2, 11. 15-17.)
Maloney also discloses that reducing the thickness of a thermal barrier
coating (outer ceramic layer) on a typical turbine blade by 50% lowers the
blade pull by about 1,500 pounds at typical operating conditions, resulting in
a significant increase in the life of the blade and permitting the mass of the
disk to which the blade is attached to be reduced. (Maloney col. 8, 11. 14-
22.) Maloney further discloses that when a ceramic bond coat (inner
ceramic layer) is applied to a turbine blade, it should be no thicker than
necessary to cover the underlying material because it adds weight to the
blade, contributing significantly to blade pull. (Maloney col. 10, 11. 59-64.)
In this context, Maloney exemplifies a thermal barrier coating, (Gd,Y,Zr)02
coating, having a thickness of 49 µm-in which a ceramic bond coat
composed of 7YSZ is applied to a substrate between a metal bond coat and a
thermal barrier coating in one embodiment and exemplifies a ceramic bond
coat with a thickness of 0.5 mils (12.7 µm) in another embodiment.
(Maloney col. 9, 11. 6-17 and col. 10, 11. 55-66.) Nowhere does Maloney
recognize the importance of increasing the total thickness of the thermal
barrier coating and the ceramic bond coat from its exemplified total
thickness to a much greater total thickness of about 300 µm to about 800 µm
(about 5 to about 13 times higher than the combined thickness of the thermal
barrier coating and the ceramic bond coat exemplified in Maloney referred
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Application 12/085,399
to by the Examiner). (Ivfaloney cols. 6-11.) Nor does Ivfaloney recognize
the importance of retaining the recited relative thicknesses of the thermal
barrier coating and the ceramic bond coat having such total thickness. Id.
As stated by the predecessor to our reviewing court in In re Sebek, 465 F .2d
904, 907 (CCPA 1972):
Where, as here, the prior art disclosure suggests the outer
limit of the range of suitable values, and that the optimum
resides within that range, and where there are indications
elsewhere that in fact the optimum should be sought within that
range, the determination of optimum values outside that range
may not be obvious.
On this record, we find that the Examiner does not identify any teaching in
Maloney that indicates or would have suggested the total and relative
thicknesses of the thermal barrier coating and the ceramic bond coat recited
in claim 2 8.
In reaching this determination, we also consider the Examiner's
assertion that the thickness of the thermal barrier coating and the ceramic
bond coat disclosed in Maloney "are dependent upon the dimensions of the
turbine blade," and one of ordinary skill in the art could have determined an
appropriate thickness for each layer that would prevent blade pull while
maintaining desired thermal characteristics. (Ans. 12.) However, the
Examiner provides no evidence to support the assertion that the thickness of
both coatings would depend on the dimensions of a turbine blade on which
the layers are coated, nor does the Examiner take official notice that this was
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Application 12/085,399
known in the art at the time of the invention. (Id.) Even assuming that it
was known that the dimensions of a turbine blade would affect the
thicknesses of the thermal barrier coating and the ceramic bond coat, the
Examiner does not establish that one of ordinary skill in the art would have
been led from Maloney' s disclosures to produce a coating for a turbine blade
in which the total and relative thicknesses of both layers correspond to the
corresponding values recited in claim 28 inasmuch as Maloney teaches or
suggests decreasing the thickness of the thermal barrier coating and the
ceramic bond coat to prevent a significant decrease in the life of the blade as
indicated supra. The Examiner does not rely on the remaining prior art
references to remedy the above deficiencies. (Ans. 2-12.)
Accordingly, on this record, we are constrained to reverse the
Examiner's rejections of claims 28, 30-33, and 37- 46 under 35 U.S.C.
§ 103(a).
ORDER
In view of the reasons set forth in the Appeal Brief and above, the
Examiner's§ 103(a) rejections of claims 28, 30-33, and 37- 46 are reversed.
REVERSED
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