Ex Parte Schmitz et al

Patent Trial and Appeal Board

Sep 27, 2016

13881163 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/881,163 07 /12/2013
22116 7590 09/29/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Friedhelm Schmitz
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.
2010P21601WOUS 1097
EXAMINER
LA VILLA, MICHAEL EUGENE
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRIEDHELM SCHMITZ
and WERNER STAMM
Appeal2015-001349
Application 13/881, 163
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 8-10, 12-15, 17, and 18 of
Application 13/881,163 under 35 U.S.C. § 103(a) as obvious and also
provisionally rejected those claims on the ground of nonstatutory
obviousness-type double patenting (OTDP). 1 Final Act. (Mar. 7, 2014).
1 Appellants canceled claims 8 and 17 by filing an after Final Rejection
amendment, which the Examiner entered. Amendment 1, Remarks 2, 3
(May 7, 2014); Adv. Act. 1 (June 2, 2014).
Appeal2015-001349
Application 13/881,163
Appellants2 seek reversal of the rejection based upon§ 103(a)
pursuant to 35 U.S.C. § 134(a). We have jurisdiction. 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE the obviousness
rejection. We decline to review the provisional OTDP rejection.
BACKGROUND
The '163 Application describes an alloy for use as a protective layer
on metal components. Spec. 1: 1---6. The Specification describes the layer as
providing gas turbine and steam turbine engine components with long term
stability and high-temperature resistance against corrosion and oxidation.
Id. at 2:21-26; 2:30-3:2.
Claim 18 is representative of the '163 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
18. A component, comprising:
a substrate which is nickel-based or cobalt-based;
a protective layer compnsmg an alloy in order to protect against
corrosion and oxidation at high temperatures, the alloy, comprising:
24% to 26 wt.% cobalt,
12 % to 14 wt. % chromium,
10% to 12 wt. % aluminum;
0.2% to 0.5 total wt. % of one or more rare earth elements, and
remainder nickel; and
a ceramic thermal barrier layer applied onto the protective layer,
wherein the component is a component of a gas turbine, and
2 Siemens Aktiengesellschaft of Munich, Germany, is identified as the real
party in interest. App. Br. 3.
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Appeal2015-001349
Application 13/881,163
wherein the alloy does not comprise silicon.
App. Br. 11.
REJECTIONS
On appeal, the Examiner maintains3 the following rejections:
1. Claims 9, 10, 12-15, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Sommer4 and Stamm. 5 Ans. 3.
2. Claims 9, 10, 12-15, and 18 are provisionally rejected for OTDP over
claims 15-17 and 26-30 of co-pending Application 13/701,155. Ans. 4.
DISCUSSION
Rejection 1. Appellants argue for the reversal of the obviousness
rejection of dependent claims 9, 10, and 12-15 on the basis of limitations
present in independent claim 18. See App. Br. 5-8. We, therefore, limit our
analysis to claim 18 for the obviousness rejection of these claims.
nependent claims 9, l 0, and 12-15 'Nill stand or fall \vi th claim 18.
37 C.F.R. § 41.37(c)(l)(iv).
Claim 18 is directed to a component comprising a substrate, a
protective layer, and a ceramic thermal barrier layer applied onto the
protective layer. The protective layer comprises an alloy, which comprises
3 The Examiner has withdrawn the indefiniteness rejection, the provisional
OTDP rejections of the instant claims over the claims of abandoned
Application Nos. 13/997,365 and 13/977,747, and the obviousness rejection
of the instant claims as unpatentable over Preston, US 4,005,989, issued Feb.
1, 1977. Ans. 4--5.
4 US 6,280,857 Bl, issued Aug. 28, 2001.
5 EP 1790743 Al, published May 30, 2007.
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Appeal2015-001349
Application 13/881,163
claimed wt. % ranges of cobalt, chromium, aluminum, one or more rare
earth elements, with the balance of the alloy being nickel. The alloy of
claim 18 does not comprise silicon. Appellants argue that the Examiner
erred by finding that the combination of Sommer and Stamm describes or
suggests such an alloy. App. Br. 6, 8.
In rejecting claim 1, the Examiner relied on Stamm, which discloses
that "[p ]rotective coatings for metal parts ... are known under the collective
name of MCrAlY, wherein M stands for at least one of the elements from
the group comprising iron, cobalt and nickel and other essential components
are chromium, aluminum and yttrium." Stamm i-f 2; see also Ans. 3.
According to the Examiner, this disclosure "implies that other alloying
ingredients are non-essential and may be omitted." Ans. 3 (citing Stamm
i-1 2 ).
The Examiner found that Sommer "teaches a range of MCrAlY
alloys" including EC6, which meets each of the claimed limitations except
this alloy contains 2 wt. % silicon, 0.5 wt.% tantalum, and 0.5 wt.%
hafnium. Ans. 2; see Sommer 3:39. The Examiner determined that "it
would have been obvious to one of ordinary skill in the art at the time of the
invention to omit any of the elements of the alloy of Sommer which are not
essential" because "Stamm teaches that such elements are not required for
effective MCrAlY performance, even if under certain circumstances,
inclusion of such elements may be desired." Ans. 3--4. Therefore,
according to the Examiner, "it would be obvious to omit Si .... " Id. at 4.
As explained by Appellants (e.g., App. Br. 5-8; Reply Br. 2-6), the
Examiner's findings are not supported by a preponderance of the evidence.
Our reviewing court has held that "[ o ]bviousness does not require
absolute predictability of success ... all that is required is a reasonable
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Appeal2015-001349
Application 13/881,163
expectation of success." In re Drage, 695 F.3d 1334, 1338 (Fed. Cir. 2012)
(quoting In re Kubin, 561F.3d1351, 1360 (Fed. Cir. 2009)). Here, the
Examiner finds that although Sommer teaches a range of MCrAlY alloys,
Sommer does not teach "omission of Si .... " Ans. 6. The Examiner has
merely identified an MCrAlY alloy with three additional elements, but has
not shown why a person skilled in the art would have reasonably expected to
achieve high-temperature resistance in a gas turbine engine component by
reducing the wt. % of silicon to zero. See Reply Br. 3 ("[b ]oth Sommer and
Stamm agree ... that alloys that can withstand increasing temperatures are
needed in the field of gas turbines").
We thus find that the Examiner's conclusion of obviousness is not
adequately supported by the facts of record, and must be reversed. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). Moreover, the Examiner has
not provided sufficient evidence or reasoning that one of ordinary skill had
"good reason to pursue the known options within his or her technical grasp."
r1 rn 1 1 f"'Y1 T 1 T , 1 ' 1 1 1 T\, T , 1 A /'"'\I"\ l"'I ,.... 1 -1 ,.... ,- f\ .)ee 1 a1reaa cnem. 1naus., Lra. v. Atpnapnarm rry., Lra., <+'IL t< .ja uJu,
1359 (Fed. Cir. 2007) (discussing the requirements of an "obvious to try" -
type obviousness rejection) (internal quotations and citation omitted). Thus,
on the record before us, we cannot sustain the rejection of claim 18 as
unpatentable over the combination of Sommer and Stamm.
We, therefore, reverse the§ 103(a) rejection of claims 9, 10, 12-15,
and 18 of the '163 Application.
Rejection 2. The Examiner maintains a provisional OTDP rejection
of claims 9, 10, 12-15, and 18 of the '163 Application. Ans. 4. Appellants
do not seek review of this provisional rejection (App. Br. 8-9) and state that
a terminal disclaimer will be considered if any claims of the ' 163
Application proceed to issuance. Id. at 9. Thus, we do not express any
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Appeal2015-001349
Application 13/881,163
opinion regarding this rejection. See Ex parte Jerg, No. 2011-000044, 2012
WL 1375142, at *3 (BPAI April 4, 2012) (Informative Decision) (explaining
that the PT AB has discretion as to whether or not to reach provisional
double patenting rejections when they are appealed because the claims relied
upon may have been amended since the rejection was first entered).
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 9,
10, 12-15, and 18 of the '163 Application.
REVERSED
Patent Owner:
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
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