Ex Parte Schlichting et al

Patent Trial and Appeal Board

May 13, 2015

13048966 (P.T.A.B. May. 13, 2015)

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.
13/048,966 03/16/2011 Kevin W. Schlichting 085.10565-US-AB(04-105-3) 9790
52237 7590 05/14/2015
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
BAREFORD, KATHERINE A
ART UNIT PAPER NUMBER
1718
MAIL DATE DELIVERY MODE
05/14/2015 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 KEVIN W. SCHLICHTING, PAUL H. ZAJCHOWSKI, and
SUSAN MANNING MEIER
1

__________

Appeal 2013-005341
Application 13/048,966
Technology Center 1700
__________

Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
ERIC B. GRIMES, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for forming a blended powder coating on a substrate (e.g., a turbine engine
component), which have been rejected as obvious. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1
According to Appellants, the Real Party in Interest is United Technologies
Corporation (Appeal Brief filed December 5, 2012, hereinafter “Appeal
Br.,” 1).
Appeal 2013-005341
Application 13/048,966

2
STATEMENT OF THE CASE
Claims 1, 2, 8, 10–21, and 23 are on appeal.
Sole independent claim 1 is representative and is reproduced from the
Appeal Brief below:
1. A process for forming a coating on a substrate
comprising the steps of:

providing a first rare earth oxide stabilized zirconia
composition;

providing a second composition selected from the group
consisting of a chromia-alumina composition, a gadolinia
stabilized zirconia composition and mixtures thereof;

blending said first rare earth stabilized zirconia composition
with said second composition prior to deposition to form a
blended powder;

providing said blended powder to a means for depositing said
blended powder onto said substrate; and

depositing said blended powder onto said substrate using said
depositing means.

(Claims App’x at Appeal Br. 13).

Appeal 2013-005341
Application 13/048,966

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The claims stand rejected as follows (Examiner’s Answer entered
January 4, 2013, hereinafter “Ans.,” 4–5; Final Office Action entered June
11, 2012 at 3–20):
I. Claims 1, 8, 10–14, 16–21, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Nissley
2
in view of Janssen
3
and either Bruce ’244
4

or Maloney.
5

II. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Nissley, in
view of Janssen, and either Bruce ’244 or Maloney, and further in
view of Bruce ’200.
6

III. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Nissley, in
view of Janssen, and either Bruce ’244 or Maloney, and further in
view of Bruce ’200 and Dietrich.
7

DISCUSSION
I.
The Examiner rejects claims 1, 8, 10–14, 16–21, and 23 under
35 U.S.C. §103(a) as unpatentable over Nissley in view of Janssen and either
Bruce ’244 or Maloney.

2
Nissley et al., US 5,705,231, patented Jan. 6, 1998 (hereinafter “Nissley”).
3
Janssen, US 3,912,235, patented Oct. 14, 1975.
4
Bruce et al., US 2004/0043244 A1, published Mar. 4, 2004 (hereinafter
“Bruce ’244”).
5
Maloney, US 6,284,323 B1, patented Sept. 4, 2001.
6
Bruce, US 2003/0224200 A1, published Dec. 4, 2003 (hereinafter “Bruce
’200”).
7
Dietrich et al., WO 02/40745 A1, published May 23, 2002 in German, with
US 2004/0043261 A1, published Mar. 4, 2004 being relied on by the
Examiner as the English translation of WO 02/40745 A1 (hereinafter
“Dietrich”).
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Application 13/048,966

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Appellants argue claims 1, 12–14, and 16–21 together, focusing on
claim 1 (Appeal Br. 6–11). Therefore, we confine our discussion to claim 1,
which we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
Pursuant to the rule, claims 12–14 and 16–21 stand or fall with claim 1.
We sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttals to arguments, which are all well-expressed
by the Examiner in the Final Action and in the Examiner’s Answer. We add
the following comments for emphasis.
In response to the Examiner’s determination of obviousness (Final
Action 8–9), Appellants argue, among other things, that “there is no logical
reason to combine the references” because “[w]hile it is true that one could
add gadolinia to zirconia to reduce thermal conductivity [as taught in, e.g.,
Bruce ’244], Nissley et al. is not interested in the thermal conductivity of the
coating” (Appeal Br. 7–8). According to Appellants, “[t]he only thing that
interests Nissley et al. is abradability” of a coating, and not its thermal
characteristics (id. at 8).
However, the teachings of Nissley are not as limited as Appellants
assert. As pointed out by the Examiner in the Answer, “Nissley specifically
teaches that its invention may have other potential applications, including as
a thermal barrier coating on gas turbine engine components such as vanes”
(Ans. 11) (citing Nissley’s col. 9, ll. 20–30). Thus, contrary to Appellants’
argument, a person of ordinary skill in the art looking to improve the thermal
barrier characteristics of Nissley’s coating would have looked to other prior
art teachings relating to thermal barrier coatings (e.g., Bruce ’244 ¶ 12).
As found by the Examiner (Ans. 16), Nissley teaches that materials
such as ceria, magnesia, calcia, or mixtures thereof can be used in place of
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Application 13/048,966

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yttria to stabilize the zirconia used in certain coatings. (Nissley, col. 7, ll.
18–21). While Bruce ’244 teaches gadolinium oxide (i.e., gadolinia, see
Specification 4 ¶ 13) is a zirconia stabilizer that provides a lower thermal
conductivity than 6–8% yttria (Bruce ’244 ¶¶ 12–13), Nissley’s yttria-
stabilized zirconia coatings and the gadolinia-stabilized zirconia coatings in
Bruce ’244 are structurally similar as rare earth metal oxide-stabilized
zirconias and share common thermal barrier characteristics (Nissley, col. 9,
ll. 23–30). Therefore, a person of ordinary skill in the art would reasonably
expect that such structurally similar zirconia-based coatings would likewise
share other similar properties, such as abradability. In re Mayne, 104 F.3d
1339, 1343 (Fed. Cir. 1997) (“Structural relationships often provide the
requisite motivation to modify known compounds to obtain
new compounds.”).
Maloney supports this notion. Maloney teaches that coatings that
contain gadolinia-zirconia oxide are useful as thermal barrier coatings
(Maloney, col. 3, ll. 5–10), and further discloses that such coatings may be
deposited “with a desired degree of porosity, for use as a seal” (id., col. 11,
ll. 17–20). This purpose is consistent with Nissley’s teaching that its coating
“must be soft enough to allow blade tips to cut into layer 22 and provide
sealing.” (Nissley, col. 6, ll. 23–24). We therefore agree with the
Examiner’s determination that “it is entirely logical to combine the
references” (Ans. 14).
Appellants have argued dependent claim 8 separately by asserting that
“one would not provide a gadolinia stabilized zirconia consisting of 10 to 80
wt% gadolinia and the balance zirconia because there is no evidence
provided by the Examiner that such a coating has sufficient erosion
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Application 13/048,966

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resistance for Nissley et al.’s purposes” (Appeal Br. 10). Appellants argue
dependent claim 23 using the same reasoning (id. at 11).
This argument is not persuasive. As noted above in the discussion of
claim 1, Nissley’s purpose is not limited to abradability. Rather, Nissley
teaches that its coatings can be used as thermal barrier coatings. (Nissley,
col. 9, ll. 26–28). Further, because Nissley’s yttria-stabilized zirconia
coatings share similar thermal barrier characteristics with the structurally
similar gadolinia-stabilized zirconia coatings disclosed in Bruce ’244 and
Maloney, a person of ordinary skill in the art would reasonably expect yttria-
and gadolinia-stabilized zirconia coatings to share other characteristics, such
as a similar degree of erosion resistance.
Therefore, the rejection of claims 8 and 23 is sustained.
Appellants have also argued dependent claims 10 and 11 separately by
stating that “none of the references recognize the blend ratios to be a result
effective variable” (Appeal Br. 10). This is unpersuasive because Nissley
teaches that “if increased erosion resistance is desired, then an increase in
the amount of 7 weight percent yttria stabilized zirconia should be
employed, whereas if an increase in abradability is desired, then more 20
[sic] weight percent yttria stabilized zirconia should be added.” (Nissley,
col. 6, ll. 28–32). Such a teaching is sufficient to demonstrate that the blend
ratios would be recognized as a result-effective variable. In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective.”).
Therefore, for the reasons set forth by the Examiner in the Final
Action and the Answer, and as outlined above, we affirm the Examiner’s
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rejection of claims 1, 8, 10–14, 16–21, and 23 as obvious based on the
combined disclosures of Nissley in view of Janssen and either Bruce ‘244 or
Maloney.
II.
The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Nissley, in view of Janssen, and either Bruce ’244 or
Maloney, and further in view of Bruce ’200.
The Examiner finds that
Nissley in view of Janssen and EITHER Bruce '244 OR
Maloney does not provide that the stabilized zirconia (first
composition) can be stabilized with yttria and lanthanum oxide,
although Nissley teaches using stabilized oxides in general
including yttria and that other stabilizer materials can be used
(column 4, lines 20-30, column 7, lines 15-25). Bruce '200
teaches that when providing a yttria stabilized zirconia, the
further addition of lanthanum oxide provides greater impact
resistance and reliability for use on a turbine airfoil as
compared to a 7% YSZ coating (paragraphs [0010], [0011],
[0017], [0023]), and that the coatings can be applied by EB-
PVD or other methods such as plasma spraying (paragraphs
[0011], [0016]).
(Final Act. 13).
The Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art
at the time the invention was made to modify Nissley in view of
Janssen and EITHER Bruce '244 OR Maloney to further use
lanthanum oxide and yttria to stabilize the zirconia of the first
composition as suggested by Bruce '200 to provide a greater
impact resistance and reliability for the turbine airfoil, since
Nissley applies a yttria stabilized zirconia to an airfoil and
indicates other oxide additives can be in the zirconia, and Bruce
'200 provides that a desirable such additive would be lanthanum
oxide to give greater impact resistance and reliability.
(Id.)
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Appellants argue that “Nissley et al. does not apply a coating to a
turbine airfoil” (Appeal Br. 11). The Examiner responds by noting that
Bruce ’200 provides that its coatings are not only applicable to turbine
components such as an airfoil 12, but can also be applied to “any turbine
component on which a thermal barrier coating is used ([0015])” (Ans. 20).
We agree with the Examiner because the coatings of Nissley and Bruce ’200
can be used for thermal barrier protection of turbine components. Thus,
Appellants’ argument does not identify reversible error.
Appellants further argue that “improving the impact resistance of a
coating is going to make the coating less abradable” (Appeal Br. 12).
However, Appellants offer no evidence to support this contention. Further,
Appellants fail to address the Examiner’s finding that, based on the
teachings of Nissley, “an erosion resistant abradable coating would be
desirably impact resistant” (Ans. 21).
Therefore, for the reasons set forth by the Examiner in the Final
Action and the Answer, and as outlined above, we affirm the Examiner’s
rejection of claim 2 as obvious based on the combined disclosures of Nissley
in view of Janssen and either Bruce ’244 or Maloney, and further in view of
Bruce ’200.
III.
The Examiner has rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Nissley, in view of Janssen, and either Bruce ’244 or
Maloney, and further in view of Bruce ’200 and Dietrich.
Appellants have waived arguments based on Dietrich (Appeal Br. 12).
Therefore, the rejection of claim 15 is sustained for the reasons set forth by
the Examiner in the Final Action and the Answer, and as outlined above.
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Application 13/048,966

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SUMMARY
We affirm the Examiner’s rejections of claims 1, 2, 8, 10–21, and 23.

TIME PERIOD FOR RESPONSE
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
cdc