Ex Parte Lee et al

Patent Trial and Appeal Board

Jul 25, 2016

12750971 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121750,971 03/31/2010
28863 7590 07/27/2016
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.
1106-014US01/LWA10632 9776
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
07/27/2016 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):
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 and DAVID J. THOMAS
Appeal2015-001716
Application 12/750,971
Technology Center 1700
Before: CATHERINE Q. TIMM, WESLEY B. DERRICK, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-5, 7-19, and 21-30. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 In our Decision below, we refer to the Final Office Action appealed from
mailed April 3, 2014 (Final Act.), the Appeal Brief filed August 29, 2014
(Appeal Br.), the Examiner's Answer mailed September 30, 2014 (Ans.),
and the Reply Brief filed November 25, 2014 (Reply Br.).
2 Appellants identify the real party in interest as Rolls-Royce Corporation,
the assignee of record. Appeal Br. 3.
Appeal2015-001716
Application 12/750,971
STATEMENT OF CASE
The claims are directed to methods for slurry-based coating
techniques for smoothing surface imperfections. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method comprising:
depositing a first coating over at least a portion of a
substrate, wherein the substrate comprises at least one of a
superalloy, a ceramic, or a ceramic matrix composite, wherein
the substrate defines a surface imperfection, and wherein a
surface of the first coating opposite the substrate substantially
reproduces the surface imperfection;
depositing from a slurry a second coating over at least a
portion of the surface of the first coating, wherein, upon
deposition of the second coating, a surface of the second
coating opposite the first coating does not substantially
reproduce the surface imperfection, and wherein the second
coating comprises mullite and at least one of a rare earth
silicate, a rare earth oxide, boron oxide, an alkali metal oxide,
an alkali earth metal oxide, barium strontium aluminosilicate,
barium aluminosilicate; strontium aluminosilicate; calcium
aluminosilicate, magnesium
aluminosilicate, or lithium aluminosilicate; and
reacting the mullite with the at least one of the rare earth
silicate, the rare earth oxide, boron oxide, the alkali metal
oxide, the alkali earth metal oxide, barium strontium
aluminosilicate, barium aluminosilicate, strontium
aluminosilicate, calcium aluminosilicate, magnesium
aluminosilicate, or lithium aluminosilicate to form at least one
of a rare earth aluminosilicate glass phase, an alkali
aluminosilicate glass phase, an alkali earth aluminosilicate glass
phase, or a borosilicate glass phase.
Claims Appendix at Appeal Br. 15.
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Appeal2015-001716
Application 12/750,971
REJECTIONS
The Examiner made the following rejections:
A. Claims 1-2, 5, 8-12, 15-16, 19, 22-25 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over
Sangeeta3 in view ofWang4 and Sarrafi-Nour. 5 Final Act.
2.
B. Claim 4 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Sangeeta in view of Wang and Sarrafi-
Nour and further in view ofBruce. 6 Id. at 6.
C. Claims 13 and 17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sangeeta in view of Wang and
Sarrafi-Nour and further in view of Weil. 7 Id. at 7.
OPINION
The Examiner rejects independent claims 1 and 15 (among others) as
being unpatentable over Sangeeta in view of Wang and Sarrafi-Nour. Final
Act. 2. The Examiner finds that Sangeeta teaches much of Appellants'
invention. Id. at 2-5. But, the Examiner acknowledges that "Sangeeta does
not explicitly teach wherein the mullite is in combination with at least one
oxide or silicate of La, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb,
Lu, Y, or Sc." Id. at 4. But, the Examiner finds that Wang teaches both a
3 Sangeeta et al., US 6,294,261 Bl, issued September 25, 2001 (hereinafter
"Sangeeta").
4 Wang et al., US 6,485,848 Bl, issued November 26, 2002 (hereinafter
"Wang").
5 Sarrafi-Nour et al., US 2009/0004427 Al, published January 1, 2009
(hereinafter "Sarrafi-Nour").
6 Bruce et al., US 5,683,825, issued November 4, 1997 (hereinafter
"Bruce").
7 Weil et al., US 5,355,668, issued October 18, 1994 (hereinafter "Weil").
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Appeal2015-001716
Application 12/750,971
ceramic based mullite coating and that "a number of alumina-silicates I and
rare earth oxides I silicate such as yttrium silicate predictably serve a mullite
modifier reducing thermal stress, improving crack resistance, and improving
toughness (See, for example, col 2 line 39---col 59, and col 3 lines 50-66,
claim 11 )." Id. Therefore, the Examiner explains that a person skilled in the
art would have found it obvious to use "one of the claimed modifiers, such
as yttrium silicate, in combination with the mullite in the slurry coating of
Sangeeta as such an incorporation would reducing thermal stress, improving
crack resistance, and improving toughness of the mullite based coating." Id.
The Examiner also notes that Sangeeta/W ang do not teach that reacting the
mullite with a silicate or oxide to form a glass phase as claimed. Id.
However, the Examiner finds that Sarrafi-Nour teaches barrier coatings that
are enhanced by a self-sealing layer that
comprises at least about 1 % by volume of a glass phase that is
flowable at tailored temperatures to flow into and at least
partially fill cracks or pores within and around the coating (See,
for example, [0014---0015]); the flowable phase is further taught
to preferably be a rare-earth aluminosilicate glass phase (See, for
example, [0018]). Therefore it would have been obvious to one
of ordinary skill in the art at the time of invention to have tailored
the composition of the slurry reactants (oxides/silicates) to yield
a rare-earth aluminosilicate glass phase as such a phase would
predictably enhance the coatings barrier and self-healing
capabilities.
Id. at 5.
Appellants present three arguments: ( 1) that the combination does not
teach reacting the mullite with the at least one of the enumerated silicates or
oxides to form a glass phase as claimed; (2) that there is "no apparent reason
to modify the Sangeeta in view of Wang coating to include a flowable phase
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Appeal2015-001716
Application 12/750,971
described in Sarrafi-Nour;" and (3) that there is no reason to "modify the
Sangeeta slurry/gel coating in view of the modified mullite bond coat
described by Wang." Id. We need only address Appellants' first argument
as it is dispositive of the issues before us.
Appellants contend that a recited limitation is missing from the
Examiner's combination of Sangeeta, Wang and Sarrafi-Nour. Appeal Br.
7. Specifically that none of the references teach reacting a mullite with the
claimed silicates or oxides "to form at least one of a rare earth
aluminosilicate glass phase, an alkali aluminosilicate glass phase, an alkali
earth aluminosilicate glass phase, or a borasilicate glass phase, as recited
by Appellant's independent claim 1." Id. Appellants direct the same
argument to the rejection of claim 15. Appeal Br. 11. Appellants urge that,
contrary to the Examiner's findings, "none of the applied references
describes that mullite can react with a rare earth oxide or rare earth silicate
to form a glass phase." Id. at 8. Appellants argue that "'Mullite is a stable
form of aluminum silicate ... "' and that the formation of mullite changes
the properties of both the alumina and silica---e.g., "the chemical activity of
alumina is lower when incorporated in mullite .... " Id. at 9. Moreover,
Appellants contend, Sarrafi-Nour does not teach a mullite coating. Id.
Id.
Thus, the Sarrafi-Nour description that a mixture of a rare earth
oxide, alumina, and silica may form a flowable phase does not
disclose or suggest that a mixture of mullite and a rare earth oxide
or rare earth silicate could be reacted to form a rare earth
aluminosilicate glass phase, as asserted by the Examiner.
The Examiner explains that the "blue print" for making Appellants'
invention is laid out in the references. The Examiner finds that Wang
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Application 12/750,971
teaches using nmllite in combination with aluminosilicates and rare earth
oxides/silicates to improve toughness and crack resistance of an underlying
substrate. Ans. 2. The Examiner finds that Sangeeta teaches a mullite
coating that "is open to additional silica and alumina." Id. And, "Sarrafi-
Nour has explicitly provided a ternary diagram for RE203"AhQ3"Si02
systems (Fig 1) to achieve rare earth aluminosilicate." Id. at 3. Therefore,
the "examiner maintains that it would have been obvious to one of ordinary
skill in the art at the time of invention to have tailored the composition of the
reactants to yield a rare-earth aluminosilicate phase as such a phase would
predictably enhance the coatings barrier and self-healing capabilities." Id. at
4.
We agree with Appellants and find that the relied on combination of
Sangeeta, Wang, and Sarrafi-Nour fails to teach reacting mullite with a rare
earth oxide or silicate to form a glass-phase aluminosilicate. The Examiner
relies upon Sarrafi-Nour to satisfy this limitation (Final Act. 4--5); but,
Sarrafi-Nour does not teach reacting mullite with a rare earth oxide or
silicate. Rather, Sarrafi-Nour applies heat treatment at a "sealing
temperature" which allows some or all of the sealing layer to be liquid or a
flowable glass. Sarrafi-Nour i-f 17. According to Sarrafi-Nour, once heat
treatment is applied, the cracks are no longer visible. Id. ,-r 31. But,
"reacting" as understood by the instant Specification involves more than
heat treatment to effect phase change. According to the Specification,
reacting involves
heat-treat[ ment] at temperatures of up to approximately 1500°C
in a vacuum, an inert atmosphere such as Ar or He, a reducing
atmosphere such as H2, or air to facilitate sintering and chemical
reaction in second coating 12. In some embodiments, the heat
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Application 12/750,971
treatment may last as long as approximately 10 hours, i.e., up to
approximately 10 hours.
Spec. i-fi-1 52 and 69 (emphasis added).
For the foregoing reasons, we are persuaded that the Examiner erred
in concluding that the combination of Sangeeta, Wang, and Sarrafi-Nour
renders obvious the subject matter of claims 1-5, 7-19, and 21-30 and we
do not sustain the rejection.
CONCLUSION
The Examiner reversibly erred in rejecting 1-5, 7-19, and 21-30
under 35 U.S.C. §103(a) as unpatentable in light of the recited art.
DECISION
For the above reasons, the Examiner's rejection of claims 1-5, 7-19,
and 21-30 is reversed.
REVERSED
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