Ex Parte Strock et al

Patent Trial and Appeal Board

Jun 20, 2013

11739823 (P.T.A.B. Jun. 20, 2013)

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.
11/739,823 04/25/2007 Christopher W. Strock 67097-821;
ID-0004380-US
1029
54549 7590 06/20/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
06/20/2013 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 CHRISTOPHER W. STROCK and SUSAN M. THOLON
____________

Appeal 2012-002701
Application 11/739,823
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and JAMES C. HOUSEL,
Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventors (hereinafter “Appellants”)1 appeal under
35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 5 through
14, and 17 through 20, all of the claims pending in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The subject matter on appeal is directed “to methods of manufacturing
ceramic coatings having pre-formed stress relief cracks.” (Spec. 1, ¶ [0002].)
Although conventional thermal spray processes were also known to produce

1 Appellants identify “[t]he real party in interest . . . [as] United
Technologies Corporation.” (See Appeal Brief filed July 18, 2011 (“App.
Br.”) at 1.)
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Application 11/739,823
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such stress relief cracks to improve spalling and delamination resistance,
such processes, unlike Appellants’ methods, were said to be not compatible
with producing a coating having desired mechanical properties for turbine
components. (Id. at 1, ¶¶ [0005]-[0006].) Details of the appealed subject
matter are recited in representative method claims 1, 12, and 172 reproduced
below:
1. A method of manufacturing an article having a
ceramic topcoat, comprising:
forming the ceramic topcoat free of any segmentation
cracking on the article;
subsequent to said step (a), heating the ceramic topcoat;
and
heating the ceramic topcoat at a predetermined
temperature and then cooling the article using air impingement
cooling to establish a desired thermal gradient through the
ceramic topcoat to induce segmentation cracking in at least a
portion of the ceramic topcoat.

2 We limit our discussion to those claims separately argued consistent with
37 C.F.R. § 41.37(c)(1)(vii) which states that“[w]hen multiple claims subject
to the same ground of rejection are argued as a group by appellant, the Board
may select a single claim from the group of claims that are argued together
to decide the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone.” Moreover, any
arguments not raised in the opening Appeal Brief are considered waived,
when included in the Reply Brief, absent a showing of good cause. Ex parte
Nakashima, 93 USPQ2d 1834 (BPAI 2010) (explaining that arguments and
evidence not timely presented in the principal Brief, will not be considered
when filed in a Reply Brief, absent a showing of good cause explaining why
the argument could not have been presented in the Principal Brief); see also,
In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first
raised in the brief to the Board is waived on appeal).
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Application 11/739,823
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12. A method of manufacturing an article having a
ceramic topcoat, comprising:
forming the ceramic topcoat free of any segmentation
cracking on the article; and
subsequent to said step (a), a conditioning step including
a controlled sintering and diffusional shrinking of at least a
portion of the ceramic topcoat to induce segmentation cracking
in the ceramic topcoat.
17. The method as recited in claim 1, wherein said step
(c) includes heating the ceramic topcoat at a temperature greater
than 2500°F (1370°C) and establishing the desired thermal
gradient to be greater than 1000°F (540°C).
(App. Br. 8-9 (Claims App’x) (emphasis added)).
Appellants seek review of the following grounds of rejection set forth
by the Examiner in the Examiner’s Answer mailed September 27, 2011
(“Ans.”) as follows3:
1. Claims 12, 14, and 20 under 35 U.S.C. § 103(a) as unpatentable
over published Great Britain Patent Application 2 100 621 A published to
Banas et al. on January 6, 1983 (“Banas”); and
2. Claims 1, 5 through 11, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Banas in view of U.S, Patent 6,142,734 issued to Lee on
November 7, 2000 (“Lee”); and
3. Claims 12 through 14, 17, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Banas in view of Lee and published U.S, Patent

3 We have deleted Appellants’ inadvertent reference to cancelled claims 4
and 15 which are no longer rejected in the Answer and no longer pending in
the above-identified application. (Compare App. Br. 2-3 and Reply Brief
filed December 1, 2011 (“Reply Br.”) at 1-4 with Ans. 4-9.)
Appeal 2012-002701
Application 11/739,823
4
Application 2005/0268615 A1 published to Bunker et al. on December 8,
2005 (“Bunker”).

DISCUSSION
I. REJECTION (1)
Appellants do not dispute the Examiner’s finding that Banas teaches
initially depositing a high density ceramic topcoat free of any segmentation
cracking on the surfaces of components of gas turbine engines. (Compare
Ans. 4 with App. Br. 3-4 and Reply Br. 1-3; compare also Banas 1, l. 71 to
2, l. 32 with Spec. 4, ¶ [0020].) Rather, Appellants contend that Banas does
not teach or suggest “a conditioning step including controlled sintering and
diffusional shrinking of at least a portion of the ceramic topcoat to induce
segmentation cracking in the ceramic topcoat” as recited in claim 12. (App.
Br. 3-4 and Reply Br. 1-3.)
Thus, the dispositive question is: Has the Examiner reversibly erred
in determining that Banas teaches or would have suggested “a conditioning
step including controlled sintering and diffusional shrinking of at least a
portion of the ceramic topcoat to induce segmentation cracking in the
ceramic topcoat,” as recited in claim 12, within the meaning of 35 U.S.C.
§ 103(a) ? On this record, we answer this question in the negative.
During examination, claims must be given their broadest reasonable
interpretation consistent with the Specification. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). The broadest reasonable interpretation rule
recognizes that before a patent is granted, the claims are readily amended as
a part of the examination process and that an applicant has the opportunity
and responsibility to remove any ambiguity in claim meaning by making an
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Application 11/739,823
5
amendment to clarify the scope of the claims. In re Bigio, 381 F.3d 1320,
1324 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(“It is the applicants’ burden to precisely define the invention, not the
PTO’s.”)
As indicated by page 5, paragraph [0021], of the Specification, the
conditioning of the ceramic topcoat with selected control parameters induces
the formation of cracks in the ceramic top coat. As an example, the
Specification states that “the flame temperature must be carefully controlled
to provide conditions that induce the cracking” in the ceramic topcoat,
without specifying the conditions involved in the cracking. (Id.) The
transitional term “including” recited in claim 12 is also open-ended and does
not exclude any other additional conditions in the conditioning step, which
induce or cause4 the formation of cracks in the ceramic topcoat. In re
Bertsch, 132 F.2d 1014, 1019 (CCPA 1942) (“it is true that the word
‘comprising’ is usually in patent law held to be synonymous with the word
‘including’”); cf. Ex parte Davis, 80 USPQ 448, 449 (Bd. App. 1948) (“the
word ‘comprising’ alone being synonymous with ‘including’”). This is
especially true in this case because sintering, according to the Specification,
causes partial melting and diffusional shrinkage of the ceramic topcoat.
(Spec. 1, ¶ [0004] and 4, ¶ [0019].) Thus, the conditions created by
controlled sintering to form cracks in the ceramic topcoat referred to in the
Specification and recited in claim 12, as correctly interpreted by the
Examiner at page 10 of the Answer, do not exclude, inter alia, partial

4 Merriam-Webster dictionary of record relied upon by Appellants defines
the term “induce” means “to cause the formation of” or “to produce.” This
dictionary has an unknown publication date and is said to be available from
the website: http:/www.merriam-webster.com/dictionary/induce.
Appeal 2012-002701
Application 11/739,823
6
melting, diffusional shrinkage, and any solidification of the partially melted
ceramic top coat that occurs naturally or necessarily in ambient conditions
subsequent to the partial melting.
Having given the conditioning step recited in claim 12 its broadest
reasonable meaning consistent with the Specification as indicated supra, we
now turn to the content of Banas. We find that Banas teaches forming
segmented cracks in the ceramic topcoat by using a selected high intensity
heat source5 (corresponding to the controlled sintering recited in claim 12).
(See Ans. 4 and 10 and Banas 1, ll. 59-60.) We find that such high intensity
heat source is used in such a manner or is controlled to “partially melt” the
ceramic topcoat, preferably to partially melt the thickness of the ceramic
topcoat to a desired depth of 10 to 90 percent. (See App. Br. 4, Reply Br. 2,
and Banas 2, ll. 33-80.) We find that the resulting partially melted ceramic
top coat, according to Banas, is permitted to naturally solidify under ambient
atmosphere. (See App. Br. 4, Reply Br. 2, and Banas 2, ll. 33-80.) We find
that Banas states that during the solidification, the contraction (shrinkage) of
the ceramic top coat also necessarily occurs, causing the formation of
segmented cracks in the ceramic top coat. (See Reply Br. 2, and Banas 2, ll.
33-80.) The Specification, like Banas, also states that such sintering causes
partial melting and diffusional shrinkage as indicated supra.
Accordingly, we find no reversible error in the Examiner’s
determination that Banas would have suggested “a conditioning step

5 By employing only such high intensive heating (controlled sintering),
Banas, like Appellants’ claim 12, produces conditions or a chain of naturally
occurring events, i.e., partial melting, solidification, and contraction
(shrinkage), to cause or induce the formation of segmented cracks in the
ceramic topcoat.
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Application 11/739,823
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including controlled sintering and diffusional shrinking of at least a portion
of the ceramic topcoat to induce segmentation cracking in the ceramic
topcoat,” as recited in claim 12, within the meaning of 35 U.S.C. § 103(a).
II. REJECTION (2)
Appellants do not dispute that Banas, like Appellants, teaches or
would have suggested applying a high density ceramic top coat free of
segmented cracks on the surface of components of gas turbine engines via
thermal or plasma spraying of ceramic topcoat materials under controlled
plasmas or thermal spraying parameters as indicated supra. (Compare also
Banas 1, l. 71 to 2, l. 32 with Spec. 4, ¶ [0020].) Nor do Appellants dispute
that Banas teaches preheating the ceramic top coat on the surface of
components of gas turbine engines before forming segmented cracks in the
ceramic topcoat using the high intensive heat discussed supra and subjecting
the ceramic top coat to thermal cycling during gas turbine engine usages,
such as those taught in Lee, to cause the growth of cracks to obtain the
finalized segmented cracks after forming partially segmented cracks in the
ceramic top coat using the high intensive heat discussed supra. (Compare
Ans. 6 with App. Br. 5 and Reply Br. 3-4; see also Banas 2, ll. 72-97.)
Rather, Appellants contend that the collective teachings of Banas and Lee
would not have suggested “heating the ceramic topcoat at a predetermined
temperature and then cooling the article using air impingement cooling to
establish a desired thermal gradient through the ceramic topcoat to induce
segmentation cracking in at least a portion of the ceramic topcoat” as recited
in claim 1. (App. Br. 5 and Reply Br. 3-4.)
Thus, the dispositive question is: Has the Examiner reversibly erred
in finding that the collective teachings of Banas and Lee would have
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Application 11/739,823
8
suggested “heating the ceramic top coat at a predetermined temperature and
then cooling the article using air impingement cooling to establish a desired
thermal gradient through the ceramic topcoat to induce segmentation
cracking in at least a portion of the ceramic topcoat” as recited in claim 1
within the meaning of 35 U.S.C. § 103(a)? On this record, we answer this
question in the negative.
As correctly found by the Examiner and not disputed by Appellants,
Lee teaches:
[T]ypically during . . . use of turbine engines, the outer surfaces
of the engine components (such as engine blades) are heated to
usage temperatures by the combustion gases utilized in the
engine while the inside surfaces of those components (such as
the engine blades) are being simultaneously cooled by air
impingement cooling [which according to pages 5 and 6,
¶¶ [0024] to [0027], of the Specification, cause the formation of
a thermal gradient through the ceramic top coat] (col[.] 4, lines
15-25 and col[.] 3, lines 20-62). [(Compare Ans. 6 with App.
Br. 5 and Reply Br. 3-4.)]

Appellants do not dispute the Examiner’s determination that such heating
and cooling taught by Lee, according to Banas, can be used for the growth of
cracks to form finalized segmented cracks in the ceramic topcoat. Although
Appellants contend that neither Banas nor Lee teaches employing such
heating and cooling to induce or cause the formation of segmented cracks,
there is no dispute that such heating and cooling, together with the partial
melting, solidification, and contraction taught by Banas, cause the formation
of or produce finalized segmented cracks in the ceramic topcoat. As
correctly explained by the Examiner, claim 1 and its dependent claims, as
written, do not require applying only the claimed heating and cooling to
induce or produce desired or finalized segmented cracks in the ceramic
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Application 11/739,823
9
topcoat. Claim 1, by virtue of using the transitional term “comprising,” does
not exclude the partial melting, solidification, and contraction of the ceramic
topcoat taught by Banas, which are to be used together with the heating and
cooling taught by Lee, for the purpose of forming desired segmented cracks.
Even were we to interpret claim 1 as requiring only the use of the
heating and cooling recited therein for the initiation of any formation of
segmented cracks in the ceramic topcoat, the outcome would not be altered.
Such initiation of additional segmented cracks in the ceramic topcoat of
Banas would have naturally flowed from following the suggestion of
employing the heating and cooling taught by Lee for growing the cracks per
the teachings of Banas because Lee discloses using conventional turbine
engine heating and cooling conditions during the service use of such engine,
which is very close to the specific conditions disclosed by Appellants for
forming or producing their segmented cracks in the ceramic topcoat. 6 Ex
parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.”); Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005) (“If Pereira discloses the very
same methods, then the particular benefits must naturally flow from those

6 According to pages 4 and 5,¶¶ [0019] and 5, ¶ [0024] of the Specification,
the conventional heating and cooling conditions during the service use of
turbine engines taught by Lee is very close to, but do not overlap with the
conditions for initiating the formation of segmented cracks disclosed by
Appellants. However, Bunker, relied upon by the Examiner, contrary to the
statement in the Specification, states that the conventional heating and
cooling conditions during the service use of turbine engines taught by Lee
actually overlap with the conditions for initiating the formation of
segmented cracks disclosed by Appellants as indicated infra.
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Application 11/739,823
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methods even if not recognized as benefits at the time of Pereira’s
disclosure.”); see also In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992)
(“As long as some [reason,] motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor.”)
Accordingly, we find no reversible error in the Examiner’s finding
that the collective teachings of Banas and Lee would have suggested
“heating the ceramic topcoat at a predetermined temperature and then
cooling the article using air impingement cooling to establish a thermal
gradient through the ceramic topcoat to induce segmentation cracking in at
least a portion of the ceramic topcoat,” as recited in claim 1 within the
meaning of 35 U.S.C. § 103(a).
III. REJECTION (3)
The disclosures of Banas and Lee are discussed supra. Bunker, like
Lee, is relied upon to show conventional service usage conditions of turbine
engines, which are said to be corresponding to the heating, cooling and
thermal gradient conditions recited in claim 17. (Ans. 8-9.) In other words,
Bunker defines the claimed heating and cooling temperatures as
conventional service usage conditions of turbine engines. (See Ans. 8 and
Bunker 1 and 3, ¶¶ [0003], [0037], and [0038].)
As to claims 12 through 14 and 20, Appellants reiterate the same
arguments advanced in connection with Rejections (1) and (2) in the context
of Banas and Lee. (App. Br. 6.) Accordingly, based on the reasons
explained above, we find no reversible error in the Examiner’s determination
that the collective teachings of Banas, Lee and Bunker would have
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Application 11/739,823
11
suggested the subject matter recited in claims 12 through 14 and 20 within
the meaning of 35 U.S.C. § 103(a).
As to claim 17, Appellants also contend that Bunker, like Lee, does
not teach or suggest its conventional service usage conditions of turbine
engines, namely the heating, cooling and thermal gradient conditions recited
in claim 17, for Appellants’ purpose, i.e., initiating or forming segmented
cracks. (Id. at 6-7.) .
However, similar to Rejection (2), Appellants also do not question
that one of ordinary skill in the art would have been led to employ the
conventional service usage conditions of turbine engines taught by Lee and
Bunker, namely the heating, cooling and thermal gradient conditions recited
in claim 17, to further grow the segmented cracks in the ceramic topcoat.
(Compare Ans. 8 with App. Br. 6-7.) As indicated supra, notwithstanding
Appellants’ arguments to the contrary, such conditions contribute to the
formation of desired segmented cracks (enlarged segmented cracks) in the
ceramic topcoat as required by claim 17. In other words, claim 17 does not
exclude using such conditions, together with other conditions not explicitly
recited therein, such as the partial melting, solidification, and contraction
taught by Banas, to induce or produce finalized segmented cracks (not
intermediate cracks) in the ceramic topcoat.
In any event, as indicated supra, Appellants do not dispute that the
conditions for initiating cracks as allegedly required by the claims and for
general service usages of a turbine engine as taught by Bunker are identical.
(Compare Ans. 8 with App. Br. 6-7.) Thus, Appellants’ purpose also would
have naturally flowed from following the suggestion of employing such
conditions taught by Lee and Bunker to further grow the segmented cracks
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in the ceramic topcoat per the teachings of Banas. Obiaya, 227 USPQ at 60;
Perricone, 432 F.3d at 1378; see also Beattie, 974 F.2d at1312.
Accordingly, based on the reasons explained in Rejection (2) and
above, we find no reversible error in the Examiner’s determination that the
collective teachings of Banas, Lee, and Bunker would have suggested the
subject matter recited in claim 17 within the meaning of 35 U.S.C. § 103(a).

ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner rejecting claims 12, 14,
and 20 under 35 U.S.C. § 103(a) as unpatentable over Banas is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 1, 5 through 11, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable
over Banas in view of Lee is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 12 through 14, 17, and 20 under 35 U.S.C. § 103(a) as unpatentable
over Banas in view of Lee and Bunker is AFFIRMED; and

FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a) (2010).
AFFIRMED
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