Ex Parte KRISHNA et al

Patent Trials and Appeals Board

Apr 1, 2019

13941673 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/941,673 07/15/2013 Kalaga Murali KRISHNA
13152 7590 04/01/2019
McNees Wallace & Nurick LLC
100 Pine Street
P.O. Box 1166
Harrisburg, PA 17108-1166
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.
268841/22113-0178 1266
EXAMINER
JOHNSON, NANCY ROSENBERG
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
04/01/2019 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 KALAGA MURALI KRISHNA,
PAD MAJ AP ARAKALA, and SURINDER SINGH P ABLA
Appeal2018-005479
Application 13/941,673
Technology Center 1700
Before KAREN M. HASTINGS, JEFFREY R. SNAY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 3, 4, 7-16, 18, and 19. 3 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 In this Decision, we refer to the Specification filed July 15, 2013
("Spec."), the Final Office Action dated December 9, 2016 ("Final Act."),
the Appeal Brief filed July 7, 2017 ("Appeal Br."), the Examiner's Answer
dated March 19, 2018 ("Ans."), and the Reply Brief filed May 4, 2018
("Reply Br.").
2 Appellant is the Applicant, General Electric Company, which, according
to the Appeal Brief, is the real party in interest along with the inventors.
Appeal Br. 1.
3 Claims 2, 5, 6, and 17 have been canceled. Response to Notice ofNon-
Compliant Amendment filed November 18, 2016, 2-5; Appeal Br. 2.
Appeal2018-005479
Application 13/941,673
The subject matter on appeal relates to a coating (independent
claim 1) and coated turbine component (independent claim 19). Claim 1,
reproduced below from the Claims Appendix of the Appeal Brief, is
illustrative of the claims on appeal.
1. A cured coating, comprising:
an epoxy-polyamide structure formed from a coating
composition comprising a phenolic resin and a curing
agent, the phenolic resin comprising a bisphenol F
constituent and an epichlorohydrin constituent;
wherein the cured coating is cross-linked from curing at
between 80°C and 120°C, from curing using infrared-
microwave radiation, or a combination thereof;
wherein the coating composition is solvent-free or
substantially solvent-free;
wherein the cured coating has a thickness between about
50 microns and about 90 microns;
wherein the cured coating is hydrophobic and
oleophobic;
wherein the composition comprises, by weight, between
about 40% and about 45% being the phenolic resin,
between about 8% and about 9% being the curing agent,
between about 5% and about 10% being an anti corrosive
agent, between about 10% and about 15% being a
thixotropic agent, between about 15% and about 20%
being an extender material, and between about 1 % and
about 2% being an erosion-resistant filler; and
wherein the cured coating is positioned on a turbine
component, the turbine component being a compressor
blade.
Appeal Br. 17 (Claims App.).
Claim 20 is withdrawn from consideration by the Examiner as directed to a
non-elected invention. Non-Final Office Action dated August 29, 2016, 2.
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Application 13/941,673
REJECTIONS
The Examiner maintains, and Appellant appeals, the following
rejections (Final Act. 2-12; Ans. 3; Appeal Br. 4):
Rejection 1: Claims 3 and 4 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement; and
Rejection 2: Claims 1, 3, and 7-16, 18, and 19 under 35 U.S.C. § 103
as unpatentable over Wakisaka et al. (US 2015/0368505 Al, published
December 24, 2015) ("Wakisaka") in view of Ganti et al.
(US 2006/0216476 Al, published September 28, 2006) ("Ganti"), and
McMordie et al. (US 5,985,454, issued November 16, 1999) ("McMordie").
DISCUSSION
After review of the cited evidence in light of the Appellant's and the
Examiner's opposing positions, we determine that the Appellant has not
identified reversible error in the Examiner's rejections except where
otherwise explained below. Thus, where we affirm the Examiner's
rejections, we do so for the reasons expressed in the Final Office Action, the
Answer, and below.
Rejection 1
The Examiner rejects claims 3 and 4 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2.
Regarding claim 3, the Examiner finds that the Specification fails to
disclose a porosity of less than about 3 percent by volume. Id. at 2-3. The
Examiner finds the only reference to "porosity" is in original claim 3 and the
property is called "discrete porosity." Id. at 3. According to the Examiner,
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Application 13/941,673
"[i]t is not clear that porosity and discrete porosity are the same
property." Id.
Regarding claim 4, the Examiner finds that the Specification provides
no unit of measurement for the surface roughness, and Appellant has not
provided sufficient evidence that the term "Ra" would be known to a person
of ordinary skill in the art as referring to micron. Id.
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant's Specification must "convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention." Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed.
Cir. 1991)).
Regarding claim 3, Appellant argues that the modifier "discrete" in
porosity does not remove the support for the presence of "porosity" in the
original application. Appeal Br. 5. Appellant also argues that paragraph 17
of the Specification explains that the effect of the anticorrosive agents
reduce porosity. We are persuaded, based on those arguments, that
Appellant has demonstrated that the Specification provides written
description support for "porosity" as recited in claim 3. Accordingly, we do
not sustain the Examiner's§ 112(a) rejection of claim 3.
Regarding claim 4, Appellant argues that one of ordinary skill in the
art reviewing paragraph 14 would reasonably understand that thickness
measurements would correlate to the Ra calculation and would utilize the
same units. Appeal Br. 6. This, however, is mere attorney argument, and
such arguments cannot take the place of evidence. See In re Payne, 606
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Application 13/941,673
F.2d 303, 315 (CCPA 1979). On this record, Appellant has not provided
sufficient evidence to support their contention that one of ordinary skill in
the art would reasonably understand that thickness measurements would
correlate to the Ra calculation or that it was well known in the art that
microns is the unit of measurement for Ra. Accordingly, we sustain the
Examiner's§ 112(a) rejection of claim 4.
Rejection 2
Appellant argues the claims subject to Rejection 2 as a group. See
Appeal Br. 7-15. We choose claim 1 as representative, and claims 3, 7-16,
18, and 19 will stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that W akisaka teaches claim 1 's cured coating,
but fails to disclose that the cured coating is (i) "hydrophobic and
oleophobic" and (ii) is "positioned on a ... compressor blade." Final
Act. 4--7 (citing Wakisaka, Abstract, ,r,r 33, 45, 57-73, 115). Appellant does
not contend otherwise. Appeal Br. 7-14. Regarding (i), the Examiner finds
that Ganti discloses an article that includes a textured surface disposed on its
surface, and thus has good wettability and resistance to icing, fouling, and
fogging. Id. at 6 (citing Ganti, Abstract, ,r,r 8, 34); Ans. 7 (citing Ganti
,r,r 32, 51 ). Regarding (ii), the Examiner finds that McMordie discloses that
one type of compressor component that desires an anti-corrosive coating is a
compressor blade. Ans. 8; Final Act. 7 (citing McMordie 1:14--16, 3:21-65,
6:54--57).
Because the Examiner finds that W akisaka in view of Ganti teaches
an anti-corrosive coating that is appropriate for compressor components, and
McMordie teaches that one type of compressor component that desires an
anti-corrosive coating is a compressor blade, the Examiner determines that it
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Application 13/941,673
would have been obvious to one of ordinary skill in the art to use
W akisaka' s cured coating, as modified by Gan ti, as a coating on a
compressor blade to prevent corrosion. Final Act. 6-7; Ans. 8.
Appellant contends that McMordie teaches that "[[]actors found to be
critical to polymerization/fouling are ... the smoother the surface the less
apt the component is to foul." Appeal Br. 9 (citing McMordie 2:25-28)
( emphasis omitted). In contrast, Appellant contends that the combined
teachings of Wakisaka and Ganti teach a surface with texture, which is
obviously not a smooth surface. Appeal Br. 10. Appellant then argues that
if one of ordinary skill in the art would have used a textured surface coating,
as taught by Wakisaka and Ganti, on a compressor blade, as taught by
McMordie, it would render the surface more apt to foul and increase the risk
of corrosion damage. Id. at 10. Thus, Appellant argues that "the proposed
modification would teach away from the teaching of McMordie and changes
the principle of operation of the combination." Id.
Appellant's arguments are not persuasive of reversible error because
they fail to address or identify error in the Examiner's rejection. As the
Examiner explains, Wakisaka is the primary reference in the rejection and
relied upon for teaching claim 1 's cured coating, which Appellant does not
dispute. Compare Ans. 6, with Appeal Br. 7-14. The Examiner relies on
McMordie for teaching that an antifouling and/or anticorrosion coating may
be used for compressor blades. Ans. 6. Although McMordie may teach the
smoother a surface, the less apt the component is to foul (McMordie 2 :24--
28), McMordie does not discourage the use of a textured coating on a
compressor blade. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away,
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Application 13/941,673
however, if it merely expresses a general preference for an alternative
invention but does not 'criticize, discredit, or otherwise discourage'
investigation into the invention claimed.") ( quoting In re Fulton, 391 F .3d
1195, 1201 (Fed. Cir. 2004)); see also Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) ("[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine."). Accordingly, we sustain the Examiner's
rejection of claims 1, 3, and 7-16, 18, and 19 under§ 103.
DECISION
The rejection of claims 3 and 4 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement is reversed as to claim 3,
and affirmed as to claim 4.
The rejection of claims 1, 3, and 7-16, 18, and 19 under 35 U.S.C.
§ 103 as unpatentable over Wakisaka in view of Ganti and McMordie 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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