Ex Parte Lee

Patent Trial and Appeal Board

Mar 27, 2018

14208205 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/208,205 03/13/2014
28863 7590 03/29/2018
SHUMAKER & SIEFFERT, P.A.
1625 RADIO DRIVE
SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
KangN. Lee
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.
l 106-058US01/RCA10951 7022
EXAMINER
MCCLURE, CHRISTINA D
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KANG N. LEE
Appeal2017-007346
Application 14/208,205
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, 4--13, and 16-20 1 of
Application 14/208,205 under 35 U.S.C. § 103 as obvious. Final Act. 2-21
(July 26, 2016). Appellant2 seeks reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we affirm.
1 Claims 3, 14, and 15 are withdrawn from consideration by the Examiner
pursuant to 3 7 C.F .R. § l. l 42(b) as drawn to a non-elected invention. Final
Act. 2.
2 Rolls-Royce Corp. is identified as the applicant and real party in interest.
Appeal Br. 3.
Appeal2017-007346
Application 14/208,205
BACKGROUND
The '205 Application describes methods for vapor deposition of
environmental barrier coatings. Spec. i-f 2. In particular, the '205
Application describes techniques for depositing environmental barrier
coatings on internal surfaces and non-line-of-sight surfaces of gas turbine
engine components. Id. i-f 6.
Claim 1 is representative of the '205 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method comprising:
directing an electron beam at a coating source to create a
vapor plume, wherein the coating source comprises alumina
and at least one rare earth oxide;
transporting the vapor plume using a gas stream provided
adjacent to the coating source to within an internal cavity
defined by a surface of a substrate of a gas turbine engine blade,
vane, blade track, or combustor liner, and wherein the substrate
comprises at least one of a silicon-containing ceramic or a
ceramic matrix composite; and
depositing the alumina and the at least one rare earth oxide
from the vapor plume over the surface of the internal cavity to
form a calcia-magnesia-alumina-silicate (CMAS)-resistant
environmental barrier coating (EBC) comprising the alumina
and the at least one rare earth oxide.
Appeal Br. 14 (Claims App.).
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Application 14/208,205
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4--12, 16-18, and 20 are rejected under 35 U.S.C.
§ 103 as unpatentable over the combination of Lee '442 3 and
Boutwell. 4 Final Act. 3; Answer 2.
2. Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Lee '442, Boutwell, and Lee '432. 5
Final Act. 18; Answer 17.
3. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Lee '442, Boutwell, and Haas. 6 Final
Act. 21; Answer 20.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 2, 4--12, 16-18, and 20
as obvious over the combination of Lee '442 and Boutwell. Final Act. 3;
Answer2.
Appellant argues for reversal of this rejection with respect to two
separate groups of claims: (i) claims 1, 2, and 4--7, Appeal Br. 7-10; and
(ii) claims 8-12, 16-18, and 20. Id. at 10-11. We address Appellant's
arguments regarding each group of claims in tum.
Claims 1, 2, and 4-7. Appellant argues for reversal of the rejection of
these claims as obvious based upon the limitations of independent claim 1
3 WO 2012/027442 Al, published Mar. 1, 2012.
4 US 2009/0162539 Al, published June 25, 2009.
5 WO 2011/123432 Al, published Oct. 6, 2011.
6 WO 2011/085109 Al, published July 14, 2011.
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Application 14/208,205
and do not present substantive argument with respect to dependent claims 2
and 4--7. The dependent claims, therefore, stand or fall with representative
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that this rejection should be reversed because:
(1) Boutwell would have led one of ordinary skill in the art to use tape cast
barrier coatings to coat internal cavity surfaces, but would not have led such
an artisan any reason to modify Lee '442, Appeal Br. 8-9, (2) "Boutwell
discloses that 'the tape cast barrier coatings can overcome line-of-sight
issues presented by conventional barrier coatings," such as CVD and
EBPVD, id. at 9, and (3) "[t]he Examiner is reading Boutwell selectively,"
but not "as a whole," because it "does not suggest that any technique
capable of overcoming line-of-sight issues can or should be modified to coat
interior surfaces." Reply Br. 6-7. We address these arguments below.
First, Appellant's argument ( 1) is not persuasive because the
Examiner has identified a sufficient motivation to modify Lee '442 in view
of Boutwell' s teachings.
To establish a prima facie case of obviousness, the Examiner must
provide an adequate reason for a person of ordinary skill in the art at the
time of the invention to have modified the reference or combination of
references to arrive at the claimed invention. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) ("[I]t can be important to identify a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.").
In rejecting claim 1, the Examiner found Lee '442 teaches or suggests
each recited method step, with the exception of depositing a barrier coating
on the internal cavity of a gas turbine engine by an electron beam vapor.
Answer 1-3. The Examiner found, however, that "Lee '442 does teach that
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Application 14/208,205
the process may improve coating uniformity on surfaces that are not readily
exposed to a cloud of vaporized target material, such as surfaces that are not
in a line-of-sight between the targets and the substrate." Id. at 3--4 (citing
Lee '442 i157).
The Examiner further found that Boutwell teaches that: (i) "most high
temperature gas turbine engine components would benefit from both exterior
and interior coating with a barrier coating," Answer 4 (citing Boutwell i1i17,
18), and (ii) "tape cast barrier coatings can overcome line-of-sight issues
presented by conventional barrier coatings[,] thereby allowing the barrier
coating to be conveniently placed both externally and internally on the
component." Id. (citing Boutwell i132).
Thus, the Examiner determined that it would have been obvious for
the ordinary skilled artisan to modify Lee '44 2 's directed vapor deposition
(DVD) to coat the interior surface of a substrate with barrier coatings
because Boutwell teaches that such surfaces also benefit from the coatings.
Answer 22. The Examiner further determined that because Lee '442 teaches
that DVD overcomes the issues of line-of-sight coating, it would have been
capable of forming such coatings by directing the vapor cloud to the interior
surface that is not readily exposed. Id. at 21-22.
We agree with the Examiner. The applied prior art teaches that line-
of-sight issues may be overcome by employing various techniques-a
person of ordinary skill in the art at the time of the invention would have
reasonably inferred that Lee '442's DVD technique may overcome such
issues. It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR, 550 U.S. at 418; see
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also In re Fritch, 972 F.2d 1260, 1264---65 (Fed. Cir. 1992) (a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom).
Appellant's argument is not directed to the Examiner's rationale set
forth above and in the Answer for modifying Lee '442 to incorporate
Boutwell's teachings. Thus, Appellant's argument does not identify
reversible error in the Examiner's determination.
Second, Appellant's arguments (2) and (3) are unpersuasive because
the applied prior art teaches two techniques that overcome line-of-sight
issues. Appellant does not dispute that such issues may be overcome by
employing Lee '442's DVD or Boutwell's tape cast barrier coatings. Lee
'442 i-f 57; Boutwell i-f 32.
Moreover, there is no dispute that modifying Lee '442's DVD
technique with Boutwell's tape cast barrier coatings would have rendered
Lee '442 inoperable for its intended use. Answer 21; Reply Br. 5. Thus,
such modification would have come at the expense afforded by employing
Lee '442's DVD, such as increased coating control. Lee '442 i-f 57.
Thus, a person of ordinary skill in the art would have understood and
weighed this tradeoff in benefits. Winner Int 'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit
comes at the expense of another benefit, ... should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.").
Appellant's argument fails to identify reversible error in the
Examiner's determination that it would have been obvious to employ any
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Application 14/208,205
known technique that overcomes line-of-sight issues, including Lee '442's
DVD. "The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR, 550 U.S. at 416.
Claims 8-12, 16-18, and 20. Appellant relies on the same arguments
that we previously found unpersuasive in connection with arguments for
reversal of claims group (1) above. Appeal Br. 11. They are similarly
unpersuasive for the reversal of claims 8-12, 16-18, and 20. 37 C.F.R.
§ 41.37(c)(l)(iv).
For the reasons set forth above and in the Answer, we are not
persuaded by any of Appellant's arguments for reversal of the obviousness
rejection of claims 1, 2, 4--12, 16-18, and 20. We, therefore, affirm
Rejection 1.
Rejection 2. The Examiner rejected claim 13 as obvious over the
combination of Lee '442, Boutwell, and Lee '432. Final Act. 18; Answer
17.
Appellant relies on the same arguments that we previously found
unpersuasive in connection with arguments for reversal of claims group (1)
above. Appeal Br. 11. They are similarly unpersuasive for the reversal of
claim 13. 37 C.F.R. § 41.37(c)(l)(iv). Thus, we affirm Rejection 2.
Rejection 3. The Examiner rejected claim 19 as obvious over the
combination of Lee '442, Boutwell, and Haas. Final Act. 21; Answer 20.
Appellant relies on the same arguments that we previously found
unpersuasive in connection with arguments for reversal of claims group (1)
above. Appeal Br. 12. They are similarly unpersuasive for the reversal of
claim 19. 37 C.F.R. § 41.37(c)(l)(iv). We, therefore, affirm Rejection 3.
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DECISION
For the reasons set forth above, we affirm the obviousness rejections
based upon the combination of Lee '442 and Boutwell, either with or
without: (i) Lee '432 or (ii) Haas.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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