Ex Parte Sheedy et al

Patent Trial and Appeal Board

Nov 26, 2018

14917961 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/917,961 03/10/2016 Paul Sheedy
54549 7590 11/28/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
62749US02;
67097-2644PUS1
1040
EXAMINER
EFTA,ALEXB
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAUL SHEEDY, WAYDE R. SCHMIDT,
ERICA L. PREVOST, and ALEX J. SEMBER
Appeal 2018-002115
Application 14/917 ,961
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-27. 3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision refers to the Specification filed March 10, 2016 ("Spec.");
Appellant's Appeal Brief filed June 23, 2017 ("Appeal Br."), the Examiner's
Answer dated October 20, 2017 ("Ans."), and the Appellant's Reply Brief
filed December 20, 2017 ("Reply Br.").
2 Appellant is the Applicant, United Technologies Corporation, which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
3 For reasons discussed below, claim 25 is included in the rejections on
appeal.
Appeal 2018-002115
Application 14/917 ,961
The subject matter on appeal relates to methods of preparing a
composite preform, methods of making a composite component, and
ceramic matrix composite components (see, e.g., claims 1, 12, 16). The
Inventors disclose an exemplary method of preparing a ceramic preform by
applying a tacky preceramic polymer-based adhesive to a first fiber array,
arranging a second fiber array on the first fiber array so the adhesive holds
the first and second fiber arrays together, debulking the arrays, infiltrating
the arrays with a matrix material that can be converted to a ceramic material,
and converting the adhesive to a ceramic phase. Spec. ,r,r 28-29, 33-34.
Independent claim 16 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
16. A ceramic matrix composite component, comprising:
a ceramic matrix material;
a first discrete fiber array and a second discrete fiber
array within the matrix material; and
a discrete ceramic phase in a localized region of an
interface between the first and second discrete fiber arrays, the
discrete ceramic phase being indistinguishable from the matrix
material.
REJECTIONS ON APPEAL
I. Claims 16-27 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement;
II. Claims 16-27 under 35 U.S.C. § 112(b) as being
indefinite;
III. Claims 16-21, 24, 26, and 27 under 35 U.S.C.
§ 102( a )(1) as being anticipated by Barton; 4
4 Barton et al., US 5,858,144, issued January 12, 1999 ("Barton").
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Application 14/917 ,961
IV. Claim 25 under 35 U.S.C. § 103 as being unpatentable
over Barton;
V. Claims 22 and 23 under 35 U.S.C. § 103 as being
unpatentable over Barton in view of Gadkaree; 5
VI. Claims 1, 3, 6, 7, 10, and 12-14 under 35 U.S.C. § 103 as
being unpatentable over Brun6 in view of Singh; 7
VII. Claim 2 under 35 U.S.C. § 103 as being unpatentable
over Brun in view of Singh and further in view of
Steibel· 8
'
VIII. Claims 4, 5, 8, and 9 under 35 U.S.C. § 103 as being
unpatentable over Brun in view of Singh and further in
view of Gadkaree;
IX. Claim 11 under 35 U.S.C. § 103 as being unpatentable
over Brun in view of Singh and further in view of
Gardner; 9 and
X. Claim 15 under 35 U.S.C. § 103 as being unpatentable
over Brun in view of Singh and further in view of
Kirby. 10
5 Gadkaree, US 4,992,318, issued February 12, 1991 ("Gadkaree").
6 Brun et al., US 2016/0009602 Al, published January 14, 2016 ("Brun").
7 Singh et al., US 4,886,682, issued December 12, 1989 ("Singh").
8 Steibel et al., US 6,024,898, issued February 15, 2000 ("Steibel").
9 Gardner et al., US 5,154,787, issued October 13, 1992 ("Gardner").
1° Kirby et al., US 2013/0167374 Al, published July 4, 2013 ("Kirby").
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Application 14/917 ,961
DISCUSSION
Status of Claim 25
Appellant does not list claim 25 as a presently pending claim or as a
claim on appeal, but states claim 25 was canceled via an amendment filed
February 7, 2017. Appeal Br. 1 n.1, 8 (Claims App'x). The Amendment of
February 7, 2017 was an After-Final Amendment to cancel claim 25 and
amend claims 16-18, 21, and 24. However, as indicated in the Advisory
Action dated March 13, 2017 and the Pre-Appeal Brief Conference Decision
dated May 23, 2017, this amendment was not entered and claims 1-27 stand
rejected. Therefore, notwithstanding the Examiner's inaccurate statement
that claim 25 has been canceled (Ans. 14), claim 25 and its rejections are
before us on appeal.
Rejection I
Claims 16-27 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
The Examiner finds Appellant's disclosure does not provide support
for the recitations of claim 16 that a ceramic phase is both discrete and
indistinguishable from a matrix material. Ans. 2-3.
Appellant contends the Examiner has not met his burden of making a
prima facie case because the Examiner has only identified the claim
limitations at issue and has not provided any reason why the claim
limitations are not supported. Appeal Br. 3. Appellant asserts Figure 2 and
paragraph 34 of the Specification provide support for a ceramic phase being
discrete from a surrounding matrix material and paragraph 34 of the
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Application 14/917 ,961
Specification states that the ceramic phase can be indistinguishable from the
matrix material. Id. In view of this, Appellant argues:
Id.
There is nothing in the present application suggesting that the
ceramic phase (18) is not discrete from and indistinguishable
from the matrix material. That is, the ceramic material is
localized to a particular region (in between the fiber arrays 12a,
12b) and does not blend with any surrounding materials. This
does not preclude the ceramic material from being
indistinguishable from the matrix material.
Appellant's arguments are unpersuasive. Appellant's argument that
their disclosure does not preclude a ceramic phase from being both discrete
and indistinguishable does not demonstrate possession of the claimed
invention. Nor do the arguments identify a reversible error in the
Examiner's rejection.
For instance, the Examiner explains paragraphs 19--21 and 24 of the
Specification disclose the ceramic phase can be discrete and paragraph 34
discloses the ceramic phase may be indistinguishable, but the latter appears
to be a separate embodiment from an embodiment in which the ceramic
phase is discrete. Ans. 16-18. The Examiner finds Figure 2 shows a matrix
phase 16 and a ceramic phase 18 that are distinct from one another, implying
they are not indistinguishable. Id. at 18-19. The Examiner further notes the
ceramic phase may include fillers in some embodiments, which would make
the ceramic phase distinguishable from a matrix phase that did not include
fillers. Id. at 18.
Appellant responds to the Examiner's explanation by reiterating the
arguments set forth in the Appeal Brief, including the argument that the cited
drawing and Specification passages provide support for the recitation at
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Application 14/917 ,961
issue. Reply Br. 1-2. As noted above, these arguments are insufficient to
identify a reversible error in the Examiner's findings that there is a lack of
support in Appellant's disclosure for a ceramic phase that is both discrete
and indistinguishable from a matrix material, as recited in claim 16. Claims
17-27 depend from claim 16.
Claim 25, which depends from claim 16, is further rejected under
35 U.S.C. § 112(a) for failing to comply with the written description
requirement for additional reasons. Specifically, the Examiner finds claim
25 requires a discrete ceramic phase to include 60% or less of a filler phase
by weight but the Specification only provides support for the adhesive
comprising 60% or less of a filler phase, not necessarily the discrete ceramic
phase. Ans. 3. Because Appellant has not set forth arguments for claim 25,
we also sustain this rejection.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 112(a) rejection of claims 16-27.
Rejection II
Claims 16-27 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
The Examiner concludes claim 16 is indefinite because "it is unclear
how the discrete ceramic phase in the ceramic matrix composite component
can be both discrete and indistinguishable," noting "indistinguishable" is
defined as "not able to be identified as different or distinct" while "'discrete'
is defined as individually separate and distinct." Ans. 3--4. In other words,
the Examiner has explained that the terms "discrete" and "indistinguishable"
are mutually exclusive. Thus, the meaning and scope of claim 16 is unclear.
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Initially, Appellant does not address the indefiniteness rejection
separately from the rejection for failure to comply with the written
description requirement (Appeal Br. 3) but responds to the Examiner's
explanation in the Examiner's Answer by arguing the following:
The ceramic phase is localized to a particular region without
blending with surrounding materials, so it is discrete, but this
does not preclude the ceramic phase from also being
indistinguishable from the surrounding matrix. See Appeal
Brief at p. 3. The fact that claims 18 and 19 recite a filler phase
within the ceramic phase does not change this fact. Similarly,
the fact that matrix material may also be between the fiber
arrays does not change this fact. Even if matrix material is also
present between the fiber arrays, the ceramic phase that is also
present between the fiber arrays is still a discrete localized
structure. This is not merely attorney argument, as the
Examiner alleges, but rather is a fact clearly supported by at
least Figure 2 of the present application. Accordingly, there is
nothing contradictory about a discrete and indistinguishable
ceramic phase (as the Examiner alleges in the rejection), and
the rejection should be reversed.
Reply Br. 2.
These arguments are unpersuasive. "A claim is indefinite when it
contains words or phrases whose meaning is unclear." In re Packard, 751
F.3d 1307, 1310, 1315 (Fed. Cir. 2014). Put differently, "claims are
required to be cast in clear-as opposed to ambiguous, vague, indefinite-
terms." Id. at 1313. Here, Appellant does not direct us to a definition of
"indistinguishable" that permits a ceramic phase to also be "discrete," as
recited in claim 16. Appellant argues the ceramic phase and matrix phase
may both be present between fiber arrays but this does not mean the ceramic
phase is not discrete. Reply Br. 2. This, however, does not define
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"indistinguishable" in a way that permits the ceramic phase to also be
"discrete."
Nor do we discern guidance in the Specification to resolve this
conflict. For example, paragraph 34 of the Specification states "[i]n one
example, the ceramic phase 18 may be indistinguishable from the matrix
material 16" but does not say in what manner the ceramic phase is
indistinguishable from a matrix material. In the absence of any definition
limiting the term, "indistinguishable" would require the ceramic phase to be
indistinguishable from a matrix material in all ways. Therefore, as indicated
by the Examiner, it is unclear how a discrete ceramic phase can be
indistinguishable from a matrix material, as recited in claim 16, given that
the very characteristic of being discrete would render the ceramic phase
distinguishable.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 112(b) rejection of claims 16-27.
Rejections 111-V
Claims 16-21, 24, 26, and 27 are rejected under 35 U.S.C. § 102(a)(l)
as being anticipated by Barton.
Claim 25 is rejected under 35 U.S.C. § 103 as being unpatentable over
Barton.
Claims 22 and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Barton in view of Gadkaree.
In view of the above discussion for the rejection under 35 U.S.C.
§ 112(b ), speculative assumptions would be required to determine the scope
of the claim and to evaluate the§ 102(a)(l) rejection and the§ 103
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rejections of claims 22, 23, and 25. In such a situation, it is not appropriate
to sustain a prior art rejection. See In re Steele, 305 F.2d 859, 862 (CCPA
1962) (reversed because § 103 rejection was based on considerable
speculation as to meaning of terms of claims and assumptions as to their
scope).
Rejection VI
Claims 1, 3, 6, 7, 10, and 12-14 are rejected under 35 U.S.C. § 103 as
being unpatentable over Brun in view of Singh.
Appellant presents arguments for claims 1 and 14. Appeal Br. 4--5.
Appellant does not argue claims 3, 6, 7, 10, 12, and 13 separately from claim
I. Id. at 3-5. Therefore we discuss claims 1, 3, 6, 7, 10, 12, and 13 as a first
group and claim 14 as a second group.
Claims 1, 3, 6, 7, 10, 12, and 13
The Examiner finds Brun discloses forming a composite preform by
stacking unreinforced matrix tapes and matrix tapes reinforced with fiber
arrays but does not disclose a tacky adhesive to hold fiber arrays together.
Ans. 7-8. The Examiner finds Singh discloses spraying an organic binder to
enhance adhesion between such layers. Id. at 8. The Examiner concludes it
would have been obvious to modify Bron's process in view of Singh to
enhance adhesion between stacked tapes. Id.
Appellant contends Singh's binder is not preceramic, Bron's matrix
tapes are not tacky, and there is no support in Brun for polyvinyl butyral
binder being a preceramic polymer. Appeal Br. 4--5; Reply Br. 3--4.
Brun discloses making ceramic matrix composites by embedding a
reinforcement (e.g., arrays of fibers, such as SiC fibers) in a matrix (e.g.,
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SiC). Brun ,r,r 20-22. For instance, fibers and matrix precursors are
assembled into preforms, which are in tum stacked and debulked to form a
laminate structure that is subsequently heated to decompose organic binders,
at least one of which pyrolyzes to form a carbon char before melt infiltration
to form the matrix. Id. ,r,r 24--27.
Singh is also directed to the production of filament-reinforced ceramic
matrix composites and discloses spraying an organic binder onto the
surfaces of tapes before they are layered with layers of filaments to enhance
adhesion when making a preform. Singh 1: 16-17, 5: 10-39.
In response to Appellant's arguments, the Examiner explains Singh
discloses that the organic binder may include polyvinyl butyral, which Brun
suggests is a preceramic material because it thermally decomposes to form a
ceramic char that in tum reacts with silicon to form part of a silicon carbide
matrix. Ans. 26.
We agree that Singh discloses its organic binder can include polyvinyl
butyral. Singh 4: 1-14. Further, Brun discloses the thermal decomposition
and pyrolysis of organic binders, an example of which is polyvinyl butyral
(Brun ,r 55) and that the decomposition of such organic binders results in at
least one of the binders pyrolyzing to form a carbon char, which reacts with
silicon to form SiC (id. ,r,r 27, 48). In other words, Brun suggests Singh's
organic binder is preceramic because it can pyrolyze to form a carbon char
that reacts with silicon infiltrate to form a SiC matrix (i.e., a ceramic
material). Thus, the disclosures of Brun and Singh support the Examiner's
findings and conclusion, with the modification resulting in an organic binder
being sprayed between the layers of Bron's stack to promote adhesion. As a
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result, a preponderance of the evidence in the record supports the
Examiner's rejection of claim 1.
For independent claim 12, Appellant cites the arguments discussed
above. Appeal Br. 5. For the reasons discussed above, these arguments do
not identify a reversible error.
Claim 14
Claim 14 depends from claim 13, which depends from 12, and further
recites that a filler phase of the tacky preceramic polymer-based adhesive
"participates in a reaction with at least one of the resin phase and the matrix
material during the converting step."
Appellant asserts the Examiner has not identified what is considered
to be a filler in Bron's disclosure and the paragraphs cited by the Examiner
only disclose a slurry and a resin phase being pyrolyzed to form a carbon
char that holds together fibers and particulates but not any reactions. Appeal
Br. 5.
The Examiner explains paragraph 63 of Brun suggests carbon black
powder is a filler. Ans. 28. Paragraph 63 of Brun discloses making a matrix
slurry by mixing silicon carbon powder, carbon black powder, polyvinyl
butyral resin, and other components. Brun then discloses drawing tows of
fibers through a bath of the slurry to form a tape and then drying and cutting
the tape to form sheets of prepreg that are then stacked with non-reinforced
plies to form a laminate that is pyrolyzed and melt infiltrated. Brun ,r,r 64--
67. As noted above, Brun discloses butyral resin is a binder. Id. ,r 55. Thus,
Brun demonstrates it was known to mix a binder with carbon black powder.
The Examiner further explains Brun discloses that the silicon melt
reacts with carbon particulate to form SiC, which means a carbon black filler
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reacts with silicon to form SiC. Ans. 29. Paragraph 48 of Brun discloses
"[ t ]he silicon reacts with carbon particulate and carbon char within the
preform to form additional SiC."
Appellant does not respond to the Examiner's explanation. Nor do the
arguments set forth in the Appeal Brief identify a reversible error in the
Examiner's rejection of claim 14.
Therefore, for these reasons and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103 rejection of claims 1, 3, 6, 7, 10,
and 12-14.
Rejections VII-X
Appellant does not present separate arguments for the § 103 rejections
of claims 2, 4, 5, 8, 9, 11, and 15. Appeal Br. 3-5. As discussed above,
Appellant has not identified a reversible error in the rejections of
independent claims 1 and 12, from which claims 2, 4, 5, 8, 9, 11, and 15
depend. Therefore, we sustain the Examiner's§ 103 rejections of claims 2,
4, 5, 8, 9, 11, and 15.
DECISION
The decision of the Examiner is affirmed.
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
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