Ex Parte Tulyani et al

Patent Trial and Appeal Board

Sep 22, 2015

11366901 (P.T.A.B. Sep. 22, 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.
11/366,901 03/01/2006 Sonia Tulyani PA-085.11710-US (05-392) 4224
52237 7590 09/22/2015
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
09/22/2015 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 SONIA TULYANI, TANIA BHATIA,
and JOHN G. SMEGGIL
____________

Appeal 2013–008372
Application 11/366,901
Technology Center 1700
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and N. WHITNEY
WILSON, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1–5, 7, 8, 10–17, and 37–40. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).

Appeal 2013-008372
Application 11/366,901

2
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal (with
text in bold for emphasis):
1. A method for depositing a protective coating on a complex
shaped substrate, comprising the steps of:
(1) forming a base coat on a complex shaped substrate
comprising a gas turbine engine component by dipping said
complex shaped substrate into a slurry consisting of an aqueous
solution, at least one refractory metal addition of at least 25
mol. % of a first refractory metal oxide selected from the group
consisting of hafnium oxide and monoclinic hafnium oxide and up
to about 25 mol. % of at least one second refractory metal
oxide, a dispersing agent in an amount no more than 50 percent
weight of the slurry, and at least one transient fluid additive
being a source of silica or titania, said transient fluid
additive being present in an amount of about 0.1 percent to 10
percent by weight of said slurry and being used to promote grain
growth and eliminate the formation of pores between grains;
(2) curing said dipped substrate, wherein curing comprises
heating said substrate to a temperature of between about 1250°C
to 1450°C for about 30 minutes to 500 minutes;
(3) dipping said substrate into a precursor solution to
form a top barrier coat thereon; and
(4) heat treating said dipped, cured substrate to form a
protective coating.

The Examiner relies on the following prior art references as evidence
of unpatentability:

Novich US 4,904,411 Feb. 27, 1990
Pratt et al. US 5,484,980 Jan. 16, 1996
(hereafter “Pratt)
Albrecht et al US 2004/0244910 A1 Dec. 9, 2004
(hereafter “Albrecht”)
Appeal 2013-008372
Application 11/366,901

3
Skoog US 2006/0086077 A1 Apr. 27, 2006
Raybould US 2006/0099358 A1 May 11, 2006

Li et al., "Effect of Densification Processes on the Properties of Plasma
Sprayed YSZ Electrolyte Coatings for Solid Oxide Fuel Cells", Surface &
Coating Technology, 2004, pp. 1–5 (hereafter “Li”).

THE REJECTIONS

1. Claims 1–3, 7, 8, 10, 11, 13, 15–17, 39, and 40 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Raybould in view of Novich.
2. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Raybould in view of Novich as applied to claim 1 above and further in
view of Applicants’ Admitted prior art (AAPA).
3. Claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Raybould in view of Novich alone, or further in view of
Pratt and Li.
4. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Raybould in view of Novich, Pratt, and Li.
5. Claim 37 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Raybould in view of Novich as applied to claim 1 above, and further in
view of Albrecht.
Appeal 2013-008372
Application 11/366,901

4
6. Claim 38 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Raybould in view of Novich as applied to claim 1 above, and further in
view of Skoog.
We reverse each of the rejections for the reasons of record provided
by Appellants, and add the following for emphasis.
ANALYSIS
Rejection 1
Claim 1 is the sole independent claim and is directed to a method for
depositing a protective coating on a substrate, comprising certain
enumerated steps, including the step of: forming a base coat by dipping the
substrate into a slurry consisting of (1) an aqueous solution, (2)(a) at least
one refractory metal addition of at least 25 mol. % of a first refractory metal
oxide selected from the group consisting of hafnium oxide and monoclinic
hafnium oxide, (2)(b) up to about 25 mol. % of at least one second refractory
metal oxide, (3) a dispersing agent in an amount no more than 50 percent
weight of the slurry, and (4) at least one transient fluid additive being a
source of silica or titania, present in an amount of about 0.1 percent to 10
percent by weight of the slurry.
It is the Examiner’s position that Raybould suggests use of the
claimed slurry for use in a method of coating a substrate. Final Act. 2–7.
The Examiner finds that Raybould teaches component (1) of an aqueous
solution (Raybould, para. [0060]). Final Act. 4. With regard to the other
claimed components of the slurry, it appears the Examiner takes the position
that since Raybould teaches use of a tantalate of at least 50 mol. %, with the
Appeal 2013-008372
Application 11/366,901

5
balance to be at least one oxide (Raybould, para. [0049]), then Raybould
suggests the claimed amounts for (2)(a) and (2)(b)1. Final Act. 4–5.
However, Appellants point out that Raybould does not indicate what
amount of the at least one oxide should be present in the tantalate containing
material when combined with the additives outlined in paragraph [0042] of
Raybould (i.e., in the remaining amount of less than 50 mol. %).2 Appeal
Br. 7. Reply Br. 2. Appellants also point out that Raybould does not even
teach use of their claimed component (3) of a dispersing agent. Reply Br. 2.
Appellants submit that it is thus unclear why one would have added a
dispersing agent to the slurry of Raybould according to Novich, in the
amount claimed, for the reasons stated on pages 7–8 of the Appeal Brief.
In view of the above, including footnote 2, it appears the motivation
of modifying Raybould as proposed by the Examiner is more of hindsight

1 The amount of component 2(b) can be zero.
2 On pages 5–6 of the Answer, the Examiner makes an effort to address this
point made. Therein, it appears the Examiner takes the position that the
remainder amount (which would be less than 50 mol. %) would allow for an
amount that overlaps the claimed amount for each of components (2)(a) and
(2)(b), as well as for component (4). However, as Appellants reiterate on
page 2 of the Reply Brief, there is no guidance regarding how much of the
less than 50 mol. % amount would be the amount for component (2)(a)
while taking into consideration the amount of the other claimed components.
We add that the amount of dispersing agent it likewise unaccounted for
when combined with the other ingredients. While we appreciate that the
Examiner relies upon Novich for this aspect of the claimed subject matter
(the dispersing agent), there appears to be no accountability for the amount
of the other components when combined together to meet this aspect of the
claimed subject matter. Thus, we agree that the Examiner has failed to
adequately address this point raised by Appellants.
Appeal 2013-008372
Application 11/366,901

6
than suggestion based upon the disclosures of the applied art. Hence, we are
thus convinced of error in the Examiner’s position in this regard.
In view of the above, we reverse Rejection 1 (the Examiner does not
rely upon Novich to cure the stated deficiencies of Raybould).

Rejections 2–6
Because the Examiner does not rely upon the other applied prior art to
cure the stated deficiencies of Raybould in view of Novich, we reverse
Rejections 2–6 also.

DECISION
The rejections are reversed.

ORDER
REVERSED