Ex Parte Persky et al

Patent Trial and Appeal Board

Oct 31, 2012

11443796 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/443,796 05/30/2006 Joshua Persky PA-085.11482-US
(05-366)
5054
52237 7590 10/31/2012
BACHMAN & LAPOINTE, P.C.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
KATZ, VERA
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
10/31/2012 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 APPEALS BOARD
____________

Ex parte JOSHUA PERSKY,
DAVID A. LITTON, and DAVID L. LAMBERT
__________

Appeal 2011-004261
Application 11/443,796
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/443,796

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Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 26-30, and 32-45. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and DISMISS-IN-PART.
Appellants’ invention is directed to an erosion barrier for thermal
barrier coatings on turbine engine parts (Spec. 1).
Claim 26 is illustrative:
26. A workpiece comprising:
a substrate formed from a nickel base superalloy;
a thermal barrier coating deposited on and in direct
contact with said substrate;
said thermal barrier coating being formed from a zirconia
based material; and
a hard erosion barrier deposited over said thermal barrier
coating, said hard erosion barrier having a Vickers hardness in
the range of from 1300 to 2750 kg/mm2 and being formed from
a different material than said zirconia based material.
Appellants appeal the following rejections:
1. Claims 26, 27, and 36-39 are rejected under 35 U.S.C. §102(e) as
being unpatentable over Nagaraj (US 2007/0104969 A1 published
May 10, 2007) as evidenced by the CRC Handbook (JAMES F.
SHACKELFORD & WILLIAM ALEXANDER, CRC MATERIALS SCIENCE
AND ENGINEERING HANDBOOK 1 (CRC Press, 3d ed. 2001)).
2. Claims 28 and 29 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagaraj in view of Krishamurthy
(US 2007/0099027 A1 published May 3, 2007).
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3. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Nagaraj in view of Beals (US 2009/0114797 A1 published May
7, 2009) or Maloney (US 5,308,806 issued May 3, 1994).
4. Claims 32, 34, and 35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagaraj in view of Ackerman
(US 2005/0048305 A1 published Mar. 3, 2005).
5. Claims 40-45 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Nagaraj in view of Darolia (US 2005/0112398 A1
published May 26, 2005).

REJECTIONS (1) AND (5)
Rejections (1) and (5) were modified by the Examiner in the Answer
by adding the CRC handbook reference and the Darolia reference to the
rejections, respectively (Ans. 3, 5-6, and 10). The Examiner indicated the
modified rejections were new grounds of rejections1 (id. at 3, 5-6, 10, 18).
Page 18 of the Answer quotes 37 CFR § 41.39(b) which states that in reply
to a new grounds of rejection in an Answer Appellants must within two
months file either a request to reopen prosecution or file a reply brief to
maintain the appeal with regard to the claims under the new grounds of
rejection (id. at 18-19). Appellants have not complied with this requirement
as no request to reopen prosecution or reply brief has been filed. As
indicated in § 41.39(b), failure to file a request to reopen prosecution or a

1 Rejections (2), (3), and (4) do not include the CRC Handbook reference or
Darolia as part of the statement of rejection. Accordingly, unlike rejections
(1) and (5), we understand rejections (2), (3) and (4) as not being new
grounds of rejection.
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reply brief will result in sua sponte dismissal of the appeal as to the claims
subject to the new ground of rejection.
On this record and for the above reasons, we sua sponte dismiss the
appeal as to claims 26, 27, 36-39, and 40-45 subject to new grounds of
rejection.

REJECTION (2): Dependent Claims 28 and 29
Appellants argue the subject matter of claims 28 and 29 (App. Br. 9-
11).
Appellants argue that Krishnamurthy does not disclose a silicon
nitride or silicon carbide layer having the claimed Vickers hardness (id. at
10). Appellants contend that there is no reason to combine Krishnamurthy’s
antifriction wear coating with Nagaraj’s turbine blade because the
antifriction wear coating has nothing to do with Nagaraj’s coating. Id.
Appellants contend that the Examiner’s reason for combining lacks any
rational underpinning because one of ordinary skill in the art would not have
substituted Krishnamurthy’s layer designed to prevent friction on a bushing
or trunnion for the corrosion resistant layer of Nagaraj on a airfoil portion of
a turbine (id. at 11). Appellants contend that the Examiner’s reliance on In
re Best, 195 USPQ 430 (CCPA 1977) is misplaced because the Examiner
has not established that structures set forth in the secondary references are
identical or substantially identical (App. Br. 10).
The Examiner responds that Krishnamurthy teaches that silicon
carbide, silicon nitride, and alumina are interchangeable with one another
(Ans. 13). The Examiner finds that Krishnamurthy discloses that the silicon
carbide and silicon nitride layers possess high temperature stability and
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minimize wear loss or improve wear resistance, good toughness and strength
(id.). The Examiner finds that Nagaraj seeks to reduce spalling which
Krishnamurthy’s wear resistant coatings would have helped to reduce. Id.
The Examiner finds that Krishnamurthy discloses a Vickers hardness
range that overlaps the hardness range recited in the claims (id. at 14). In
light of the overlap in hardness between the prior art and the claims, the
Examiner finds that the claimed workpiece having a SiC or SiN coating with
the recited Vickers hardness would have been obvious over the combined
teachings of Nagaraj’s coating as modified by Krishnamurthy (id.).
The preponderance of the evidence favors the Examiner’s conclusion
of obviousness. We note that Appellants do not contest the Examiner’s
finding that Krishnamurthy teaches the silicon nitride, silicon carbide and
alumina are interchangeable or that Nagaraj’s teaching to provide a coating
suitable for avoiding spalling would have suggested the combination of
Krishnamurthy’s coating with Nagaraj’s coating.
Krishnamurthy and Nagaraj are both directed to providing protective
coating on turbine parts. Accordingly, for the uncontested reasons provided
by the Examiner, we agree that the combined teachings of Nagaraj and
Krishnamurthy would have suggested using Krishnamurthy’s coatings on
Nagaraj’s turbine as a wear resistant coating. We do not agree with
Appellants that the Examiner’s reliance on In re Best is misplaced because
once Krishnamurthy’s silicon nitride or silicon carbide are substituted for
Nagaraj’s alumina coating for the reasons provided by the Examiner, it is
reasonable to presume that the identical structure would have the same
Vickers hardness absent evidence to the contrary. Appellants have provided
no such evidence as is their burden to do.
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The overlap of the hardness ranges disclosed by Krishnamurthy and
the claimed ranges would have established prima facie obviousness. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.”).
On this record, we affirm the Examiner’s § 103 rejection of claims 28
and 29.

REJECTION (3): Claim 30
Regarding the combination of Nagaraj and Beals, Appellants argue
that there is no reason to combine Beals’ MbSi2 coating for refractory metals
with Nagaraj’s coating for turbine blades having no refractory metal (App.
Br. 12-13).
However, Appellants do not contest the Examiner’s finding that
Nagaraj’s nickel superalloy contains refractory elements and thus may be
considered analogous to refractory metals (Ans. 15). In light of the
Examiner’s uncontested finding, the preponderance of the evidence favors
the Examiner’s conclusion that there would have been a reason to combine
Beals’ MbSi2 coating for refractory metals with Nagaraj’s refractory metal
material.
Regarding the combination of Nagaraj and Maloney, Appellants argue
that there is no good reason to replace the corrosion resistant layer in
Nagaraj with the molybdenum disilicide structural material disclosed in
Maloney (App. Br. 15). We agree.
The Examiner does not respond specifically to Appellants’ argument
that Maloney teaches a structural material used to make sensors, kiln parts,
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or other structural elements. The Examiner reasons that substituting
Maloney’s molybdenum disilicide material for Nagaraj’s coating would
have been obvious to produce a layer with excellent high temperature
oxidation resistance and high thermal conductivity (Ans. 9-10). However,
the Examiner does not explain why one of ordinary skill would have looked
to Maloney’s structural material as a substitute for a coating layer on
Nagaraj’s turbine part. We fail to see any credible reason for such a
combination.
On this record, we affirm the Examiner’s § 103 rejection over Nagaraj
in view of Beals and we reverse the § 103 rejection over Nagaraj in view of
Maloney.

REJECTION (4): Claims 32, 34, and 35
Appellants argue that sealant layer 120 in Ackerman is not an
infiltration region between the thermal barrier coating and the erosion barrier
(App. Br. 13-14). Appellants contend that sealant layer 120 does not
infiltrate any layer (id. at 14).
The Examiner responds that Appellants have not defined “infiltration
region” in the Specification and paragraph 30 of the Specification merely
describes the thickness of the materials in the infiltration region (Ans. 16).
The Examiner reasons that Ackerman teaches layer 120 is formed by sol-gel
infiltration and seals microcracks which is considered to infiltrate into the
thermal barrier layer. Id.
The preponderance of the evidence favors Appellants’ argument of
nonobviousness. Paragraph 30 of the Specification describes the thickness
of the infiltration region between the erosion barrier and the thermal barrier
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coating as “measured down from the surface of the TBC [thermal barrier
coating].” We understand such disclosure to indicate that the erosion barrier
infiltrates into the thermal barrier layer to form an infiltration region. Our
interpretation is supported by the fact that thickness of the infiltration region
is measured from the surface of the thermal barrier coating.
Therefore, with this proper construction of infiltration region in mind,
we cannot agree that Ackerman’s sealant 120 constitutes an infiltration
region. Sealant 120 is a distinct, separate coating from any thermal barrier
coating such that it cannot be said that sealant 120 constitutes an infiltration
region whose thickness is measured relative to the layer into which the
sealant has infiltrated.
On this record, we reverse the Examiner’s § 103 rejection of claims
32, 34 and 35 over Nagaraj in view of Ackerman.

DECISION
We sua sponte dismiss the appeal with regard to claims 26, 27, 36-39,
and 40-45 subject to new grounds of rejection, which were not responded to
by Appellants in accordance with 37 CFR § 41.39 (b).
The Examiner’s decision with regard to claims 28-30 is affirmed.
The Examiner’s decision with regard to claims 32, 34, and 35 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED-IN-PART & DISMISSED-IN-PART
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