Ex Parte Murphy

Board of Patent Appeals and Interferences

Dec 17, 2010

10734078 (B.P.A.I. Dec. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/734,078 12/11/2003 Kenneth S. Murphy MP333 7966
7590 12/20/2010
ECKERT SEAMANS CHERIN & MELLOTTT, LLC
ALCOA TECHNICAL CENTER,
100 TECHNICAL CENTER DRIVE
ALCOA CENTER, PA 15069-0001
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
12/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KENNETH S. MURPHY
______________

Appeal 2009-005353
Application 10/734,078
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
PETER F. KRATZ, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 11-17 in the Office Action mailed July 3,
2007. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2007).
We affirm-in-part the decision of the Primary Examiner.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Claim 11 illustrates Appellant’s invention of a coated article, and is
representative of the claims on appeal:
11. A coated article, comprising a nickel base superalloy substrate
consisting essentially of, in weight %, about 3% to about 12% Cr, up to
about 15% Co, up to about 3% Mo, about 3% to about 10% W, up to about
6% Re, about 5% to about 7% Al, up to about 2% Ti, up to about 1% Fe, up
to about 2% Nb, about 3% to about 12% Ta, up to about 0.07% C, about
0.030% to about 0.80% Hf, up to about 0.10% Zr, up to about 0.02% B, up
to about 0.050% of a rare earth element, and balance Ni and incidental
impurities, an outwardly grown diffusion aluminide bondcoat on the
substrate, and a ceramic thermal barrier coating disposed on the bondcoat,
wherein spallation life of the ceramic thermal barrier coating during cyclic
oxidation is prolonged.
Appellant requests review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 11-16 over Nishihata
(JP 2000-42755 A) in view of Warnes (US 5,989,733); claims 11 and 17
over Gell (US 4,116,723) in view of Warnes; claims 11 and 17 over Shaw
(US 3,832,167) in view of Warnes; claims 11 and 17 over Gell in view of
Spitsberg (US 6,551,423); and claims 11 and 17 over Shaw in view of
Spitsberg. Br. 8; Ans. 3, 6, 8, 10, and 12.
Appellant argues claim 11 with respect to all of the grounds of
rejection. See generally Br. Thus, we decide this appeal based on claim 11.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
Opinion
I.
We determine that claim 11 specifies any coated article comprising at
least a nickel base superalloy substrate consisting essentially of the recited
elements as specified by the weight percent ranges; any outwardly grown
diffusion aluminide bondcoat on the substrate; and any ceramic thermal
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barrier coating disposed on the bondcoat. See Spec., e.g., 2-3. We note that
dependent claim 16 specifies that the outwardly grown diffusion aluminide
bondcoat comprises a single phase platinum-modified diffusion aluminide
coating.
With respect to the elements in the nickel base superalloy substrate,
we essentially agree with the Examiner’s findings of ranges of elements
specified in independent claim 11 for the nickel base superalloy substrate set
forth in the tables in the Answer. Ans. 4, 6, 8, 10, and 12. We find that in
the Examiner’s tables, the range of the element Co should be specified as
“up to about 15%” by weight. We further find that the Examiner’s tables do
not make clear that claim 11 specifies that any rare earth element can be
present “up to about 0.050%” by weight in the nickel base superalloy
substrate. We interpret the phrase “up to about” a specific upper limit to
define a weight percent range which includes “zero” as a lower limit. In
addition to Co and a rare earth element, this language is used to specify the
ranges for the elements Mo, Re, Ti, Fe, Nb, C, Zr, and B, all of which are
thus optional elements in the claimed nickel base superalloy substrate. See
Spec., e.g., 2-3 and Table 1. See, e.g., In re Mochel, 470 F.2d 638, 640
(CCPA 1972). With respect to the rare earth element in the Examiner’s
tables, we determine that dependent claim 12 specifies that the rare earth
element can be “selected from the group consisting of Y and Lanthanide
series elements with atomic numbers from 58 to 71,” which range includes
the element Ce. We further determine that claim 13, dependent on claim 12,
specifies that the rare earth element of claim 12 must be present
in the range of about 0.0005 to about 0.050 weight %.
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We determine that dependent Claim 17, which is included in the
grounds of rejection over Gell and over Shaw, specifies that the nickel base
superalloy substrate “comprises a gas turbine engine blade.”
We determine that the plain claim language “wherein spallation life of
the ceramic thermal barrier coating during cyclic oxidation is prolonged” in
claim 11, specifies that the spallation life of any ceramic thermal barrier
coating on any outwardly grown diffusion aluminide bondcoat on any
specified nickel base superalloy substrate during cyclic oxidation is
“prolonged” to any extent. See generally Spec.
II. Claim 11: Nishihata in view of Warnes
The Examiner finds that Nishihata would have disclosed to one of
ordinary skill in this art a nickel base superalloy substrate which does not
have an outwardly grown diffusion aluminide bondcoat and a ceramic
thermal barrier coating disposed on the bondcoat. The Examiner further
finds that Warnes discloses coating a nickel base superalloy substrate with
an outwardly grown diffusion aluminide bondcoat followed by a ceramic
thermal barrier coating on the bondcoat which provides higher resistance
during high temperature oxidation. Ans. 4, citing Warnes abstract, col. 2,
ll. 26-55, col. 4, ll. 39-68, col. 9, ll. 38-61, and Figs, 1 and 5. On this basis,
the Examiner concludes that one of ordinary skill in the art would have
combined Nishihata and Warnes and thus would have applied the bondcoat
and ceramic thermal barrier coating of Warnes on Nishihata’s nickel base
superalloy substrate to improve oxidation resistance at high temperatures,
thus arriving at a coated article falling within appealed claim 11. Ans. 4-5.
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Appellant contends that Nishihata and Warner would not have
suggested combining these references to obtain a coated article falling
within claim 11 to one of ordinary skill in the art. Br. 11. Appellant argues
that Nishihata would not have suggested that Warnes’ thermal barrier
coating system of bondcoat and thermal barrier coat should be used with the
high pressure piping made from Nishihata’s nickel base superalloy.
We find that Nishihata would have disclosed to one of ordinary skill
in this art nickel base superalloy substrates which can be used to form piping
and forged products, including pipelines, wherein the nickel base superalloy
provides high-temperature strength and corrosion resistance for heat-
resistant pressure-proof pipelines in petrochemical plants. Nishihata, e.g., ¶¶
0001, 0018, 0019 and 0030-0046. Nishihata would have further disclosed a
bonding method for the nickel base superalloy pipes which employs a nickel
base alloy for diffusion bonding. Nishihata, e.g., ¶¶ 0001, 0007-0017.
We agree with the Examiner’s findings of fact from the teachings of
Warnes, and Appellant does not dispute the findings. Ans., e.g., 4; Br. 11.
We add the following for emphasis. We find that Warnes would have
described to one of ordinary skill in the art coated articles formed by coating
a nickel base superalloy blade for a gas turbine engine having an outwardly
grown platinum aluminide diffusion coating, modified as described, as an
intermediate bondcoat for an outer ceramic thermal barrier coating to
substantially improve oxidation resistance at an elevated temperature.
Warnes, e.g., abstract, cols. 2-7 and 9, and Fig. 1.
On this record, we agree with Appellant that the Examiner has not
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explained why Nishihata would have suggested to one of ordinary skill in
the art that the high-temperature strength and corrosion resistance above that
provided by the disclosed nickel base superalloy is required for the pipes and
other articles formed with that superalloy as taught by the reference. Thus,
the Examiner erred in not explaining why one of ordinary skill in this art
would have been motivated to apply Warnes’ thermal barrier coating system
to Nishihata’s nickel base superalloy articles.
Accordingly, in the absence of a case of obviousness, we reverse the
ground of rejection of claims 11-16 under 35 U.S.C. § 103(a) over the
combined teachings of Nishihata and Warnes.
II. Claim 11: Gell in view of Warnes and in view of Spitsberg,
and Shaw in view of Warnes and in view of Spitsberg
A.
We agree with the Examiner’s findings of fact from the teachings of
Gell, Shaw, Warnes, and Spitsberg, and Appellant does not dispute the
findings. Ans., e.g., 4, 6-7, 8-9, 11-12, and 12-13; Br., e.g., 16-17, 20-21,
24-25, and 28-29. We add the following for emphasis. We find that Gell
would have described to one of ordinary skill in the art a nickel base
superalloy which can be used to fabricate blades and vanes for gas turbine
engines. Gell e.g., cols. 3-6. We find that Shaw would have described to
one of ordinary skill in the art a nickel base superalloy which can be used to
fabricate blades for gas turbine engines. Shaw, e.g., col. 1, l. 23 to col. 4,
l. 20. We further find that each of Gell and Shaw would have disclosed
nickel base superalloys containing Hf. Gell, e.g., col. 5, l. 4; Shaw, e.g.,
col. 1, l. 52.
In addition to our findings from Warnes above, we further find that
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the references would have described to one of ordinary skill in the art that in
the coated articles, the outwardly grown platinum aluminide diffusion
bondcoat is formed on the nickel base superalloy substrate, which contains
Hf, by first depositing a platinum layer and then depositing an aluminum
containing layer. See above p. 5; Warnes, e.g., col. 2, ll. 27-64.
We find that Spitsberg would have described to one of ordinary skill
in the art coated articles formed by coating a nickel base superalloy blade for
a gas turbine engine with a platinum aluminide coating, modified as
described, as an intermediate bondcoat for an outer ceramic thermal barrier
coating, which can be yttria-stabilized zirconia, to obtain a thermal barrier
coating system having coatings with better adhesion. Spitsberg, e.g.,
abstract, cols. 2-6, and Fig. 2. Spitsberg would have acknowledged that it
was known in the art to form a platinum aluminide bondcoat by depositing
platinum and then aluminum. Spitsberg col. 1, ll. 41-50. Spitsberg would
have taught that the platinum aluminide bond coating can be applied to any
nickel base superalloy blade, and illustrates the nickel base superalloy with a
particular nickel base superalloy which does not contain Hf. Spitsberg col.
2, l. 11 to col. 4, l. 5.
B.
The Examiner finds that the nickel base superalloy substrates
described by each of Gell and Shaw include nickel base superalloy
substrates falling within claim 11 in view of the overlap in weight percent
ranges of the elements that are in common; and that in each of Gell and
Shaw, the nickel base superalloy substrate does not include a claimed
ceramic thermal barrier coating on any outwardly grown diffusion aluminide
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bondcoat on the described nickel base superalloy substrate. Ans. 6-7, 8-9,
11, and 13. The Examiner determines that one of ordinary skill in the art
would have combined each of Gell and Shaw with Warnes and with
Spitsberg, and thence would have been led to apply an outwardly grown
diffusion aluminide bondcoat on the described nickel base superalloy
substrate followed by forming a ceramic barrier coating on the bondcoat in
order to obtain the benefits of such a protective barrier system as taught in
each of Warnes and Spitsberg. Ans. 7, 9, 11, and 13.
C.
We cannot agree with Appellant’s position that the Examiner erred in
applying each of Gell and Shaw in view of Warnes and of Spitsberg to the
claimed coated article encompassed by claim 11. Br. 15-18, 19-22, 23-26,
and 27-30. Contrary to Appellant’s argument that the only motivation to
combine each of Gell and Shaw with Warnes and with Spitsberg is hindsight
based on Appellant’s claims, we find that each of Gell and Shaw and each of
Warnes and Spitsberg are directed to the preservation of nickel base
superalloy turbine blades for gas turbine engines. See above pp. 6-7. Thus,
as the Examiner points out, one of ordinary skill in this art would have been
motivated to combine each of Gell and Shaw with Warnes and with
Spitsberg, and thence would have been led to coat the nickel base superalloy
substrates of each of Gell and Shaw with an outwardly grown diffusion
aluminide bondcoat followed by a ceramic thermal barrier coating to obtain
the benefits of prolonged turbine blade service as taught by Warnes and by
Spitsberg. Ans., e.g., 7, 9, 11, and 13. Accordingly, one of ordinary skill in
the art routinely following the combined teachings of each of Gell and Shaw
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with Warnes and with Spitsberg would have reasonably arrived at the
claimed coated article encompassed by claim 11. See, e.g., KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 415-16 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”); In re Kahn, 441 F.3d 977, 985-88
(Fed. Cir. 2006); In re Sovish, 769 F.2d 738, 742-43 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art); In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is . . . what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1364 (Fed. Cir. 2007) (“the expectation of success need only be
reasonable, not absolute”); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988) (“For obviousness under § 103, all that is required is a reasonable
expectation of success.”).
We are not persuaded otherwise with respect to the combination of
each of Gell and Shaw with Spitsberg by Appellant’s contention that
Spitsberg does not disclose the claimed nickel base superalloy substrate,
because Spitsberg’s alloy does not contain Hf, and thus the combinations are
based on “hindsight.” Br. 25 and 29. Contrary to Appellant’s position, we
recognized that Spitsberg teaches the application of the platinum aluminide
bondcoat of the thermal barrier coating system on any nickel base superalloy
turbine blade, even though Spitsberg’s preferred nickel base superalloy does
not include Hf. See above p. 7. Indeed, Appellant does not argue that one of
ordinary skill in this art would not have applied the protective system of
Spitsberg on the turbine blades of each of Gell and Shaw which are formed
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from nickel base superalloys containing Hf. See Br. 25 and 29. See Gell,
e.g., col. 5, l. 4; Shaw, e.g., col. 1, l. 52. We note here that Appellant’s
“hindsight” contentions with respect to the combination of each of Gell and
Shaw with Warnes are not argued with specificity. Br. 17 and 21.
We are also not convinced of “hindsight” in the Examiner’s analysis
with respect to the combination of each of Gell and Shaw with Warnes and
with Spitsberg by the evidence in the “not prior art” Clark and Levi articles
as argued by Appellant. Br. 18, 22, 26, and 30, citing Br. 12-13.2 According
to Appellant, Clarke “discusses the status of thermal barrier coating systems
comprising a yttria-stabilized zirconia (YSZ) thermal barrier coating
deposited onto an oxidation resistant bondcoat applied on a nickel based
superalloy component,” and opines that it was not known which of such
coatings was best for different applications. Br. 12, citing Clarke pp. 389-
90. Appellant contends that it is thus apparent from Clarke that “Applicant’s
significant prolongation of spallation life of the thermal barrier coating is
unexpected, and thus the Examiner’s “hindsight analysis-based rejection” is
in error. Br. 13. According to Appellant, the Examiner’s error is further
apparent from Levi “that a system perspective must be taken where interplay

2 D.R. Clarke and C.G. Levi (Clarke), “Materials Design for the Next
Generation Thermal Barrier Coatings,” Annu. Rev. Mater, Res. 2003,
33:383-417 (April 18, 2003); C.G. Levi, “Emerging materials and processes
for thermal barrier systems,” Current Opinion in Solid State and Materials
Science, vol. 8, pp. 1-15 (2004). Appellant initially submitted the articles in
the Request for Continued Examination filed April 18, 2006, and again in
the Evidence Appendix to the Brief. Br. 35. Neither the Examiner nor
Appellant has made these documents of record on a reference citation form.
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between the substrate alloy, bondcoat, and thermal barrier coating must be
considered.” Br. 13, citing Levi p. 2.
Contrary to Appellant’s contention, Clarke is prior art with respect to
the claimed invention encompassed by the appealed claims under 35 USC §
102(a) until established otherwise because the present Application was filed
December 11, 2003. Appellant is correct that Levi is not prior art. In any
event, we consider these documents as reflecting opinion in the art at the
time the Application was filed. In this respect, neither Clarke nor Levi
support Appellant’s position. Indeed, as the Examiner points out, both
Warnes and Spitsberg make it clear that at the time the claimed invention
was made, it was known in the art to apply to nickel base superalloy
substrates used for turbine blades disclosed by Gell and Shaw, which fall
within claim 11, bondcoats, that fall within claim 11, which are further
coated with ceramic thermal barrier coatings, falling within claim 11, as
taught by Warnes and by Spitsberg. We find no evidence in Clarke and Levi
establishing that one of ordinary skill in the art would not have combined the
alloys of each of Gell and Shaw with the bondcoats and thermal barrier coats
of the thermal barrier coating systems disclosed by each of Warnes and
Spitsberg. Furthermore, as the Examiner finds, Clarke establishes that other
rare earth metals do not perform in the same manner as Y. Ans. 20, citing
Clarke p. 412.
We are further not persuaded by Appellant’s contentions that the
combinations of each of Gell and Shaw with Warner and with Spitsberg do
not disclose the property of the spallation life of any ceramic thermal barrier
coating on any outwardly grown diffusion aluminide bondcoat on any
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specified nickel base superalloy substrate during cyclic oxidation is
“prolonged” to any extent as claimed in claim 11. Br. 17, 21. 25, and 29.
We find that it is disclosed in the Specification that “[s]pallation of the
[thermal barrier coating] is significantly prolonged when the bondcoat
comprises an outwardly grown, single phase diffusion aluminide bondcoat
and the substrate comprises the superalloy with Hf and with or without Y
present as substrate alloying elements.” Spec. 3:13-16; see also Spec., e.g.,
8-10 and Figs. 3-5. The Specification further illustrates spallation life using
an outwardly grown, single phase platinum-modified diffusion aluminide
coating and a ceramic thermal barrier coating of yttria stabilized zirconia.
Spec. 8-10 and Figs. 3-5. We emphasize that the plain language of claim 11
specifies any ceramic thermal barrier coating on any outwardly grown
diffusion aluminide bondcoat on any specified nickel base superalloy
substrate, and we find no basis in the claim language or in the disclosure in
the Specification to limit the plain language of claim 11 to embodiments
disclosed in the Specification. See above pp. 2-4. See, e.g., Phillips v. AWH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)(en banc); In re Van Geuns,
988 F.2d 1181, 1184-85 (Fed. Cir. 1993); In re Zletz, 893 F.2d 319, 321-22
(Fed. Cir. 1989).
In our view, the Examiner has shown that the combinations of each of
Gell and Shaw with Warnes and with Spitsberg would have reasonably
resulted in the claimed coated articles having the same nickel base
superalloy with Hf and with and without Y as a substrate, an outwardly
grown diffusion aluminide bondcoat on the substrate, and a ceramic thermal
barrier coating on the bondcoat. Thus, we find that it reasonably appears
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that the claimed coated articles encompassed by claim 11 and the coated
articles suggested to one of ordinary skill in the art by the combinations of
applied references are identical or substantially identical even though the
claimed spallation life property is not disclosed by the combinations of
applied references.
Accordingly, the burden shifted to Appellant to patentably distinguish
the claimed coated articles encompassed by claim 11 from the coated articles
suggested to one of ordinary skill in the art by the combinations of applied
references. See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”); In re Best, 562 F.2d 1252, 1254-56 (CCPA
1977)3; In re Skoner, 517 F.2d 947, 950-51 (CCPA 1975) (“Appellants have
chosen to describe their invention in terms of certain physical characteristics
. . . . Merely choosing to describe their invention in this manner does not
render patentable their method which is clearly obvious in view of [the
reference].” (citation omitted)); See also, e.g., In re Kahn, 441 F.3d 977,

3 Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
Best, 562 F.2d at 1255 (footnote and citations omitted).
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985-86 (Fed. Cir. 2006) (“‘On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
We are not convinced that Appellant has carried this burden with the
contentions advanced which we have addressed above. We are also not
convinced by Appellant’s further contentions that Gell and Shaw are
inapplicable because W, Ta, and Hf are disclosed by Gell as optional
elements, and Shaw discloses that W and Ta are optional elements. Br. 16,
20, 24, and 28. Indeed, Appellant does not argue the positions with
specificity, failing to show the criticality of the claimed ranges of these
elements as the Examiner points out. Ans., e.g., 19 and 20-21.
D.
Turning now to the evidence in the Specification relied on by
Appellant in these respects, Appellant contends that Specification Figures
3-5, as explained at pages 8-10 of the Specification, “illustrate the significant
and unexpected prolongation of spallation life of the ceramic thermal barrier
coating achieved when the ceramic thermal barrier coating is disposed on the
recited outwardly grown diffusion aluminide bondcoat on the recited
superalloy substrate composition.” Br. 27; see also Br. 15, 19, 23, and 27.
According to Appellant, the “significant prolongation of spallation life of the
thermal barrier coating is unexpected from the oxidation resistance exhibited
by” outwardly grown diffusion aluminide bondcoated alloys MDC-150L and
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inwardly grown diffusion aluminide bondcoated alloys LDC-2E as shown in
Specification Figure 2. Br. 15, 19, 23, and 27.
The Examiner does not dispute Appellant’s view of the evidence in
the Specification. Ans., e.g., 17-19. The Examiner finds that Specification
Figures 3 and 4 show “increasing the amount of [Hf] in nickel base
superalloys having a ceramic thermal barrier [sic, coating] disposed on an
outwardly grown diffusion aluminide bondcoat . . . in the presence of no [Y]
would result in significant prolongation of spallation life of the ceramic
thermal barrier coating,” and that Specification Figure 5 shows that
increasing the amount of Hf in nickel base superalloys with Y increases
spallation life. Ans. 17-18. The Examiner determines that claim 11 does not
require the presence of a rare earth element or limit the rare earth element to
Y, and thus, finds that the showings in the Specification which are limited to
the presence and absence of Y are not commensurate in scope with claim 11
because “it cannot be assumed that each and every rare earth element in
combination with [Hf] would necessarily” achieve the same result with
respect to spallation life shown in the Specification. Ans. 18-19; see also
Ans. 20, citing Clarke p. 412. See above pp. 11-12. .
With respect to the Examiner’s contention that the illustrative
embodiments described at pages 8-10 of the Specification, with the results
reported in Specification Figures 3-5, are not commensurate in scope with
the claims, we find from Specification Table 1 that the three claimed
superalloys 1-3 and prior art superalloy CMSX-4 have similar amounts of
the same elements with the exception of Hf, which is always present, and Y,
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which is essentially present only in claimed superalloys 1 and 2.4 Spec. 5.
We further find that in the claimed coated article embodiments, the bondcoat
is a particular outwardly grown, single phase platinum-modified diffusion
aluminide coating, designated MDC-150L, and the ceramic thermal barrier
coating comprises yttria stabilized zirconia. Spec. 8-10 and Figs. 3-5.
Furthermore, the claimed coated article embodiments having superalloys 1-3
and bondcoat MDC-150L and the prior art coated embodiment having prior
art superalloy CMSX-4 and bondcoat MDC-150L, are compared with
apparent prior art coated article embodiments having the same superalloys 1-
3 and CMSX-4 but an inwardly grown, multi-phase platinum-modified
diffusion aluminide coating, designated LDC-2E, and an ceramic thermal
barrier coating comprising yttria stabilized zirconia. Spec. 8-10 and Figs. 3-
5.
We find that Warnes compares coated articles having nickel base
superalloys having particular outwardly grown platinum aluminide diffusion
bondcoats, designated MDC-151L and MDC-152L which contain Hf and
can contain Y, and ceramic thermal bond coatings, with coated articles
having nickel base superalloys with outwardly grown, single phase
platinum-modified diffusion aluminide coating, designated MDC-150L and

4 We find that in Specification Table 1, the amounts of Hf, Y, and S in the
alloys are stated in “ppm” by weight and the amounts of the rest of the
elements in the alloys are stated in “% Wt.” Spec. 5. In claim 11, the
amounts of the elements of the alloys are stated in “weight %,” wherein Hf
is present in the range of “about 0.030% to about 0.80%,” and Y, a rare earth
element, if present is in the range of “up to about 0.050%.” See above p. 3.
Appellant has not adduced evidence establishing the amounts stated in
“weight %”of Hf and Y in the illustrative claimed and prior art superalloy.
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with inwardly grown, multi-phase platinum-modified diffusion aluminide
coating, designated LDC-2E and ceramic thermal bond coatings. Warnes
col. 3, l. 11 to col. 9, l. 61. See also above pp. 5-6 and 7. We find that the
results of cyclic oxidation tests of compared embodiments as reported in the
Table show that the MDC-151L and MDC-152L embodiments have
increased cycles to failure and relative life. Warnes, e.g., col. 7, l. 38 to col.
9, l. 61. We find that Spitsberg would have described coated articles having
a nickel base superalloy with desulfurized platinum aluminide diffusion
bondcoats and yttria-stabilized zirconia ceramic thermal barrier coatings.
Spitsberg, e.g., col. 2, l. 11 to col. 4, l. 49, col. 6, ll. 45-63. See also above p.
7.
On this record, we agree with the Examiner that the showings based
on the claimed coated articles embodiments in the Specification are not
commensurate in scope with the claims when compared with the applied
prior art. We determined that claim 11 is not limited to these embodiments,
and further note that claim 16 which limits claim 11 by specifying a single
phase platinum-modified diffusion aluminide bondcoat, is not rejected in the
grounds we consider here. See above pp. 2-3, 4, 6, and 10-11. Indeed, we
find that the limited showings do not provide assurance that the same result
would be exhibited by the myriads of coated articles based on the same or
similar nickel base superalloys, outwardly grown diffusion aluminide
bondcoats, and ceramic thermal barrier coatings encompassed by claim 11
and suggested by the combinations of each of Gell and Shaw with Warnes
and with Spitsberg would behave in the same manner. See, e.g., In re
Kulling, 897 F.2d 1147, 1149-50 (Fed. Cir. 1990) (objective evidence
Appeal 2009-005353
Application 10/734,078
18
directed to optional embodiments); In re Lindner, 457 F.2d 506, 508 (CCPA
1972) (“The claims, however, are much broader in scope, covering mixtures
of numerous compounds, and . . . there is no ‘adequate basis for reasonably
concluding that the great number and variety of compositions included by
the claims would behave in the same manner as the [single] test
composition.’”).
E.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of each of Gell and Shaw with Warnes and with
Spitsberg with Appellant’s countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 11 and 17 would have been obvious as a matter of law under 35
U.S.C. § 103(a).
III.
In summary, we have affirmed the grounds of rejection of claims 11
and 17 over the combined teachings of each of Gell and Shaw with Warnes
and with Spitsberg, and have reversed the ground of rejection of claims
11-16 over the combined teachings of Nishihata and Warnes.
The Primary Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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