Ex Parte Taylor et al

Patent Trial and Appeal Board

Nov 13, 2017

12834068 (P.T.A.B. Nov. 13, 2017)

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.
093003-US-R2 7793
EXAMINER
BROWN, ADAM WAYNE
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
12/834,068 07/12/2010
27182 7590
PRAXAIR, INC.
LAW DEPARTMENT
10 RIVER VIEW DRIVE
DANBURY, CT 06810-5113
Thomas Alan Taylor
11/14/2017 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 THOMAS ALAN TAYLOR and JOHN FOSTER
Appeal 2016-003928
Application 12/834,068
Technology Center 3700
Before: CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—3, 5—9, 11, 12, 14, and 16—22. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Appeal 2016-003928
Application 12/834,068
CLAIMED SUBJECT MATTER
The claims are directed to an abrasive coating system. Claims 1, 7,
21, and 22 are independent. Claim 1, reproduced below with paragraphs
added, is illustrative of the claimed subject matter:
1. An abrasive coating on a substrate, said abrasive coating
comprising
a metallic alloy matrix having ceramic abrasive particles
at least partially embedded in said matrix and at least some of the
ceramic abrasive particles projecting from said matrix,
wherein said ceramic abrasive particles are selected from
alumina polycrystal, alumina single crystal (sapphire), chromia-
doped alumina single crystal (ruby), yttria-alumina garnet
(YAG), titania-doped alumina poly crystal or single crystal
(emerald), SiAlON, SiC, Si4N4 or diamond;
wherein a bond coating is deposited between the substrate
and the abrasive coating, said bond coating comprising
(i) an alloy containing chromium, aluminum,
yttrium with a metal selected from the group consisting of
nickel, cobalt and iron or
(ii) an alloy containing aluminum and nickel; and
wherein the ceramic abrasive particles comprise angular
ceramic abrasive particles of nominal size 4 to 15 mils;
wherein the ceramic abrasive particles have a product of
hardness (in Kg/mm2) and fracture toughness (in Mpa*m0.5)
that is greater than that for pure zirconia single crystals.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nenov
Ohara
Sung
US 6,194,086 B1 Feb. 27, 2001
US 2004/0096318 A1 May 20, 2004
US 2005/0241239 A1 Nov. 3, 2005
2
Appeal 2016-003928
Application 12/834,068
REJECTIONS
Claims 1—3, 5—9, 11, 12, 14, and 16—20 are rejected under 35 U.S.C.
§ 103(a) as being obvious over Nenov and Ohara.
Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as being
obvious over Nenov, Ohara, and Sung.
OPINION
Appellants’ Appeal Brief appears to repeat arguments previously
made in prosecution. Though this is perfectly acceptable, all of Appellants’
arguments are directly addressed by the Examiner in the Response to
Arguments section of the Final Action. Compare Br. 5—11, with Final Act.
2-4. Appellants do not contest or address the Examiner’s responses. See
generally, Br. 5—11. Thus, as is discussed below, Appellants provide no
evidence or argument that the Examiner’s findings and determinations as
expressed in the response are in error.
Claims 1—3, 5—9, 11, 12, 14, and 16—20
Appellants argue claims 1—3, 5—9, 11, 12, 14, and 16—20 together. We
select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)
(iv).
Appellants argue that “the combination of Nenov et al. and Ohara et
al. [does not] disclose or suggest an abrasive coating having ceramic
abrasive particles in which the ceramic abrasive particles have a unique
product of hardness (in Kg/mm2) and fracture toughness (in Mpa*m0.5) that
is greater than that for pure zirconia single crystals, as required by
Appellants’ claimed invention.” Br. 6. Appellants state that the references
3
Appeal 2016-003928
Application 12/834,068
are silent with regards to these features. Id. The Examiner previously found
that Ohara’s teaching of diamond abrasive particle satisfies this claim
limitation. Final Act. 2, 5; see also Ans. 9. Appellants provide no analysis
or response as to why diamond abrasive particles would not satisfy the claim
limitation. Thus, we are not informed of error in the Examiner’s rejection.
Appellants next argue that Ohara teaches away from the claimed
limitation of “angular ceramic abrasive particles of nominal size 4 to 15 mils
(i.e., about 101 pm to about 381 pm).” Br. 7. This is because Ohara teaches
that “[t]he average particle diameter of the protruding particles 19a is
preferably not smaller than 150 pm and not larger than 200 pm, and the
average particle diameter of the embedded particles 19b is preferably not
smaller than 80 pm and not larger than 150 pm.” Id. (citing Ohara 133).
Both of Ohara’s ranges, cited by Appellants, are within or overlap
with the claimed range. Final Act. 3. This is all that is required to find that
the prior art teaches or discloses the recited limitation. Titanium Metals
Corp.v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (citing In re Petering,
301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (“[W]hen, as by a
recitation of ranges or otherwise, a claim covers several compositions, the
claim is ‘anticipated’ if one of them is in the prior art.”) (emphasis in
original).
For these reasons we are not informed of error in the Examiner’s
rejection.
Claims 21 and 22
Appellants argue claims 21 and 22 together. We select independent
claim 21 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
4
Appeal 2016-003928
Application 12/834,068
Appellants argue that “Sung is non-analogous art. . . not even
remotely related to abrasive coatings and rotating members of gas turbine
engine seal systems as claimed by Appellants. It is beyond a stretch attempt
to use CMP pad dresser art to arrive at Appellants' claimed invention.” Br.
9.
As correctly identified by Appellants, the test for determining whether
art is analogous requires a determination that the art is “from the same field
of endeavor as the claimed invention; or (2) reasonably pertinent to the
particular problem faced by the inventor.” Id. (citing In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004).
Appellants argue that “Sung’s CMP pad dresser is not in the same
field of endeavor as abrasive coatings for rotating members of gas turbine
engine seal systems.” Id. at 10. Appellants then conclude that “the issue
here is whether Sung is reasonably pertinent to the problem addressed by the
Appellants.” Id. Appellants state that Sung is not, but provide no analysis.
Id.
The Examiner disagrees on both points. Final Act. 3^4; see also Ans.
10-11. Concerning the second test, of whether Sung is reasonably pertinent
to the problem faced by the inventor, which the Appellants state is the
deciding issue (Br. 9), the Examiner finds: “Applicant’s stated problem is
the search for wear resistant, abrasive coatings (para. 6, lines 2-3 and para. 7,
lines 1-2). Sung likewise addresses the need for wear resistant coating (para.
5, lines 1-3 and para. 6).” Final Act. 4; see also Ans. 11. These findings are
not addressed by Appellants. Thus, we are not informed of error in these
findings or in the Examiner’s rejection.
5
Appeal 2016-003928
Application 12/834,068
Appellants then argue that the cited references do not “disclose or
suggest an abrasive coating having ceramic abrasive particles in which the
ceramic abrasive particles are alumina single crystal (sapphire), as required
by Appellants’claimed invention.” Br. 10—11.
The Examiner previously identified paragraph 24 of Sung as
identifying sapphire as an abrasive particle. Final Act. 9; see also Ans. 11.
Appellants provide no analysis or response as to why this teaching would
not satisfy the claim limitation. Thus, we are not informed of error in the
Examiner’s rejection.
DECISION
The Examiner’s rejections of claims 1—3, 5—9, 11, 12, 14, and 16—22
are 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
6