Ex Parte Zajchowski et al

Board of Patent Appeals and Interferences

May 23, 2012

10976969 (B.P.A.I. May. 23, 2012)

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.
10/976,969 10/29/2004 Paul Zajchowski 085.11012-US 05-413 8269
52237 7590 05/23/2012
BACHMAN & LAPOINTE, P.C.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL ZAJCHOWSKI, DONN BLANKENSHIP, and
GARY SHUBERT
____________

Appeal 2009-014479
Application 10/976,969
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Paul Zajchowski et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-30, 32-43, and 45-54.
Claims 31 and 44 have been canceled. We have jurisdiction over this appeal
under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a microplasma spray device and
method for repairing thermal barrier coatings. Spec. 1, para. [0001].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A microplasma spray apparatus for repairing a thermal
barrier coating on components in a gas turbine engine,
comprising:
a microplasma gun including an anode, a cathode, and an
arc generator for generating an electric arc between the anode
and cathode;
a nozzle for emitting arc gas into the electric arc, the
electric arc operable for ionizing the gas to create a plasma gas
stream; and
a powder injector for injecting powdered thermal barrier
coating material into the plasma gas stream and patching a
defective area of the thermal barrier coating, the thermal barrier
coating being applied without masking any portion of the
component or stripping a remaining non-defective thermal
barrier coating on the component,
wherein said cathode includes an electrode extending
therefrom and disposed through an aperture of said nozzle, and
said anode is disposed opposite said cathode within an anode
holder mounted to an exterior surface of said microplasma gun.

Independent claims 30 and 43 are directed towards a method for repairing a
thermal barrier coating with a microplasma spray apparatus including an
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“anode disposed opposite said cathode with an anode holder mounted to an
exterior surface of said microplasma gun.” Br., Claims App.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
McComas US 4,236,059 Nov. 25, 1980
Wertz US 4,822,248 Apr. 18, 1989
Sugimoto US 4,851,636 Jul. 25, 1989
Weidman US 5,285,967 Feb. 15, 1994
Suzuki US 2003/0165382 A1 Sep. 4, 2003
Chandra US 6,620,645 B2 Sep. 16, 2003
Rice US 6,703,579 B1 Mar. 9, 2004
Subramanian US 2004/0202886 A1 Oct. 14, 2004
Kottilingam US 2005/0015980 A1 Jan. 27, 2005
Philip US 2005/0235493 A1 Oct. 27, 2005

Process Welding Systems, Inc., Restore and Protect Worn Parts with
Plasma Arc Welding Powder-Feed Solutions, 2-3 (Sep. 25, 2003)
(www.pwsweld.com) (hereafter “Product and Process”).

Process Welding Systems, Inc., Microplasma Welding Torches, 1-2
(Sep. 25, 2003) (www.pwsweld.com) (hereafter “Microplasma
Welding Torches”).

Appellants rely on the Declaration under 37 C.F.R. § 1.132 of
Wangen Lin, Ph.D., filed June 25, 2008 (hereafter “Lin Declaration”)
as evidence of non-obviousness.

The following rejections are before us for review:
1. The Examiner rejected claims 1-3, 7-9, 11-13, 15-17, 19, and 21-29
under 35 U.S.C. § 103(a) as unpatentable over Kottilingam and Rice.
2. The Examiner rejected claims 4 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, and Weidman.
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3. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, and Chandra.
4. The Examiner rejected claims 6 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, and Sugimoto.
5. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, and Subramanian.
6. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, Product and Process, and
Microplasma Welding Torches.
7. The Examiner rejected claims 30, 32, 33, 37-39, 42, 43, 46, 47, 51,
and 52 under 35 U.S.C. § 103(a) as unpatentable over Kottilingam,
Rice, and McComas.
8. The Examiner rejected claims 41 and 54 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, McComas, and Weidman.
9. The Examiner rejected claims 34 and 48 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, McComas, and Chandra.
10. The Examiner rejected claims 35, 36, 49, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Kottilingam, Rice, McComas, and
Sugimoto.
11. The Examiner rejected claims 40 and 53 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, McComas, Product and Process,
and Microplasma Welding Torches.
12. The Examiner rejected claim 45 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, McComas, and Philip.
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13. The Examiner rejected claims 30, 32, 33, 37-39, 42, 43, 46, 47, 51,
and 52 under 35 U.S.C. § 103(a) as unpatentable over Kottilingam,
Rice, and Wertz.
14. The Examiner rejected claims 41 and 54 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, Wertz, and Weidman.
15. The Examiner rejected claims 34 and 48 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, Wertz, and Chandra.
16. The Examiner rejected claims 35, 36, 49, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Kottilingam, Rice, Wertz, and
Sugimoto.
17. The Examiner rejected claims 40 and 53 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, Wertz, Product and Process, and
Microplasma Welding Torches.
18. The Examiner rejected claim 45 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Rice, Wertz, and Philip.
19. The Examiner rejected claims 1-3, 7-9, 11-13, 15-19, and 21-29 under
35 U.S.C. § 103(a) as unpatentable over Kottilingam, Suzuki, and
Rice.
20. The Examiner rejected claims 4 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, and Weidman.
21. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, and Chandra.
22. The Examiner rejected claims 6 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, and Sugimoto.
23. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, and Subramanian.
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24. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, Product and Process,
and Microplasma Welding Torches.
25. The Examiner rejected claims 30, 32, 33, 37-39, 42, 43, 46, 47, 51,
and 52 under 35 U.S.C. § 103(a) as unpatentable over Kottilingam,
Suzuki, Rice, and McComas.
26. The Examiner rejected claims 41 and 54 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, McComas, and
Weidman.
27. The Examiner rejected claims 34 and 48 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, McComas, and Chandra.
28. The Examiner rejected claims 35, 36, 49, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Kottilingam, Suzuki, Rice, McComas,
and Sugimoto.
29. The Examiner rejected claims 40 and 53 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, McComas, and Product
and Process, and Microplasma Welding Torches.
30. The Examiner rejected claim 45 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, McComas, and Philip.
31. The Examiner rejected claims 30, 32, 33, 37-39, 42, 43, 46, 47, 51,
and 52 under 35 U.S.C. § 103(a) as unpatentable over Kottilingam,
Suzuki, Rice, and Wertz.
32. The Examiner rejected claims 41 and 54 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, Wertz, and Weidman.
33. The Examiner rejected claims 34 and 48 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, Wertz, and Chandra.
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34. The Examiner rejected claims 35, 36, 49, and 50 under 35 U.S.C.
§ 103(a) as unpatentable over Kottilingam, Suzuki, Rice, Wertz, and
Sugimoto.
35. The Examiner rejected claims 40 and 53 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, Wertz, Product and
Process, and Microplasma Welding Torches.
36. The Examiner rejected claim 45 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, Wertz, and Philip.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Rejections (1)-(6)
The Examiner found that Kottilingam discloses all the limitations of
independent claim 1 with the exception of a cathode extending through an
aperture of a nozzle and an anode disposed opposite the cathode within an
anode holder mounted to an exterior surface of the microplasma gun. Ans.
5-7. See also, Br., Claims App. The Examiner further found that Rice
discloses a thermal spraying apparatus having an anode 138 disposed
opposite a cathode 132 and mounted within an anode holder mounted to an
exterior of a plasma gun 106. Ans. 7 and 51. See also, Rice, fig. 3. The
Examiner further noted that Rice discloses “a combination of a powder
hopper and a feeder positioned through the anode to provide powdered
material into the plasma gas stream.” Ans. 7 and 51. Thus, the Examiner
concluded that:
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It would have been obvious to one of
ordinary skill in the art at the time of the invention
was made [sic] to modify the anode and powder
feeding arrangement of the microplasma torch of
Kottilingam et al. with the anode being positioned
on the exterior of the spray gun opposite the
cathode configuration of Rice in order to provide
the ability to either position a feed wire or powder
through the anode in order to offer a more versatile
and material friendly thermal spray gun/apparatus,
thereby increasing its inherent uses.
Ans. 7-8.
In other words, as far as we understand, the Examiner is proposing to
modify the microplasma torch of Kottilingam to include the external anode
and anode holder 138 of Rice.
Appellants argue that in view of the technical difference between
plasma welding and plasma spraying, the Examiner’s proposed modification
of the plasma welding device of Kottilingam, to include an anode disposed
opposite the cathode within an anode holder mounted to an exterior surface
of the microplasma gun, would be inoperable. Br. 29-30. According to
Appellants, in contrast to the claimed invention, in plasma welding the
workpiece constitutes the anode. Br. 29.
In response, pointing to Figure 1 of Product and Process, the
Examiner notes that although in plasma welding the workpiece is grounded,
nonetheless, a pilot arc is formed between a cathode and a nozzle/anode.
Ans. 49. Moreover, the Examiner opines that because the microplasma
torch of Kottilingam is used to spray a filler material, and like a
microplasma thermal spray apparatus, uses a gas to pass a powdered
material though an electric arc, “Kottilingam et al. fully meets [sic] the
structure of a microplasma spray apparatus except for an electrode of the
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cathode opposite an anode mounted to the exterior surface of the
microplasma gun.” Ans. 50.
At the outset, although we appreciate that the microplasma torch of
Kottilingam is described as, “spraying a filler material” (see Kottilingam,
Abstract and para. [0009]), and similar to a spraying device uses an electric
arc to generate a plasma to spray a filler material, nonetheless, we note that
Kottilingam specifically describes the plasma torch as part of a “micro-
plasma weld and welding system.” Kottilingam, para. [0023] and fig. 3.
As both Appellants and the Examiner note, in a plasma welding
system, the arc is formed between a cathode and a workpiece anode (i.e.,
transferred arc). See Br. 29 and Ans. 49. Thus, in a plasma welding system,
the workpiece is part of the electrical circuit and as such, is necessary for
generating the plasma gas. In contrast, in a plasma spraying system, the
workpiece does not constitute the anode. See Lin Declaration, para. 7.
Rather, as Appellants point out in the Specification, in a typical plasma
spraying system, the arc is formed between a cathode and a nozzle anode.
See Spec. 1, para. [0002]. Therefore, in a plasma spraying system, the
workpiece is not part of the electrical circuit and is not necessary for
generating the plasma gas. See e.g., McComas, col. 1, ll. 10-42 and Rice,
fig. 2. See also, Ans. 14. Furthermore, although we agree with Appellants
that in a plasma welding system, the pilot arc1 (generated between a nozzle
anode and a cathode) is used to generate the main arc, which is then
transferred to the workpiece, nonetheless, we agree with the Examiner that
in a plasma welding system a working arc can be generated between the
cathode and the nozzle anode (i.e., a non-transferred arc), such that the

1 See e.g., Sugimoto, col. 3, ll. 44-57 and fig. 2.
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workpiece is not part of the electric circuit. See Ans. 49. See also, Lin
Declaration, para. 7 and Product and Process, fig. 1. Hence, we agree with
the Examiner that although Kottilingam’s microplasma torch is described as
a “welding system,” nonetheless, the anode in Kottilingam’s microplasma
welding system can be a nozzle anode. See anode 1 in Figure 1 of Product
and Process.
As such, in contrast to Appellants’ position, the Examiner is not
proposing to replace a workpiece anode, but rather to replace an internal
nozzle anode. See, e.g., Br. 29-30. In other words, the Examiner’s proposed
modification of the microplasma torch of Kottilingam would replace the
internal nozzle anode with Rice’s external anode 138 such as to initiate an
arc between Kottilingam’ cathode (see, e.g., cathode 2 of Figure 1 in Product
and Process) and Rice’s external anode 138.
However, replacing an internal anode with an external anode, as the
Examiner proposes, would require further modifications to Kottilingam’s
plasma welding torch so as to permit safe initiation of the arc. For example,
the shield gas cup would have to be modified so that the shielding gas would
not interfere with the carrier gas used by the plasma welding torch to form
the plasma gas and also, to accommodate the external anode holder (see,
e.g., shield gas cup 5 of Figure 1 in Product and Process and Figure 3 of
Rice). Furthermore, since Rice’s anode 138 is external to Kottilingam spray
gun 106 in the device of Kottilingam and Rice, the nozzle of Kottilingam
would have to be further modified to avoid double arcing, that is, the
initiation of an additional arc between the nozzle and Rice’s external anode
138. Thus, Kottilingam’s microplasma torch would require further
modifications and the Examiner did not make any findings regarding how to
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modify Kottilingam’s microplasma welding torch so as to incorporate the
external anode and anode holder of Rice. Lastly, we note that the Examiner
has not provided any findings that replacing the internal nozzle anode of
Kottilingam’s microplasma torch with Rice’s external anode 138 would
result in a microplasma torch that provides a “stable constricted or
concentrated arc” as required by Kottilingam’s microplasma torch to
function appropriately. See Kottilingam, para. [0030].
Furthermore, like Rice’s thermal spray device, we note that
Kottilingam’s microplasma torch uses both powder and wire filler material.
Kottilingam, para. [0024]. See also, Rice, col. 5, ll. 33-34 and col. 12, ll. 36-
40. Thus, the reason proffered by the Examiner to modify the teachings of
Kottilingam, i.e., “in order to provide the ability to either position a feed
wire or powder through the anode” (Ans. 7-8), appears to already be
performed by the Kottilingam’s plasma welding torch. See, e.g., powder
passing through nozzle anode 1 of Figure 1 in Product and Process. The
Examiner has not provided any findings that Kottilingam recognized a
problem with the conventional plasma welding torch. Without a persuasive
articulated rationale based on rational underpinning for modifying the
reference as proposed, the Examiner's rejection appears to be the result of
hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007)) (“rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). Therefore, absent hindsight, we fail to see why one having
ordinary skill in the art would have been led to replace the internal nozzle
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anode of Kottilingam’s microplasma torch with the external anode and
anode holder of Rice, as the Examiner proposes.
In conclusion, for the foregoing reasons, the rejection of claims 1-3, 7-
9, 11-13, 15-17, 19, and 21-29 under 35 U.S.C. § 103(a) as unpatentable
over Kottilingam and Rice, i.e., Rejection (1), cannot be sustained.
The addition of Weidman, Chandra, Sugimoto, Subramanian, and
Product and Process and Microplasma Welding Torches, respectively, do not
remedy the deficiencies of Kottilingam and Rice as described above.
Accordingly, Rejections (2) through (6) likewise cannot be sustained.

Rejections (7)-(18)
Rejections (7) and (13) are premised on the same combination of
teachings of Kottilingam and Rice as described above. Ans. 14-15 and 20-
21. The addition of either McComas or Wertz does not remedy the
deficiencies of Kottilingam and Rice as described above. Thus, for the
reasons set forth supra, we cannot sustain the rejection of claims 30, 32, 33,
37-39, 42, 43, 46, 47, 51, and 52 under 35 U.S.C. § 103(a) as unpatentable
over Kottilingam, Rice, and McComas or Wertz, i.e., Rejections (7) and
(13), respectively.
The addition of Weidman, Chandra, Sugimoto, Product and Process
and Microplasma Welding Torches, and Philip, respectively, do not remedy
the deficiencies of Kottilingam, Rice, and McComas or Wertz as described
above. Thus, we shall not sustain Rejections (8) through (12) and (14)
through (18).

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Rejections (19)-(24)
Rejection (19) is premised on the combination of teachings of
Kottilingam and Rice as described above. Ans. 26-27. The Examiner
further noted that if it can be argued that Kottilingam, as evidenced by
Product and Process and Microplasma Welding Torches, “does not teach a
plasma spraying apparatus, the additional reference [Suzuki] is applied to the
combination [Kottilingam and Rice].” Ans. 26. Thus, the Examiner found
that:
Suzuki et al. teach plasma spraying as being an
equivalent method known in the art for
coating/overlay welding turbine components (page
6; paragraph 70; pages 10-11; claims 6, 11).
Therefore, because these coating methods for
coating/overlay welding turbine components were
art recognized equivalents at the time the invention
was made, one of ordinary skill in the art would
have found it obvious to substitute a plasma
spraying configuration for a plasma welding
configuration.

Ans. 28. Emphasis added.
Although we appreciate that plasma powder welding and plasma
spraying may be equivalent processes to coat the inner surface 38a of
Suzuki’s overhang 38, we do not agree with the Examiner’s generalization
that equivalence of processes equates to an equivalence of structure of a
plasma welding apparatus and a plasma spray apparatus. Furthermore, the
Examiner has not provided any evidence to show that substituting the
plasma spraying configuration of Suzuki for the plasma welding
configuration of Kottilingam would result in an equivalent process for
repairing the turbine components of Kottilingam. Moreover, even assuming
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arguendo that the plasma torch of Kottilingam and Suzuki constitutes a
plasma spraying device (the workpiece is not part of the electric circuit), for
the reasons set forth supra, absent hindsight, we fail to see why one having
ordinary skill in the art would have been led to modify the microplasma
apparatus of Kottilingam and Suzuki to include the external anode and anode
holder of Rice such that the “anode is disposed opposite said cathode within
an anode holder mounted to an exterior surface of said microplasma gun.”
In conclusion, for the foregoing reasons, the rejection of claims 1-3, 7-
9, 11-13, 15-19, and 21-29 under 35 U.S.C. § 103(a) as unpatentable over
Kottilingam, Suzuki, and Rice, i.e., Rejection (19), cannot be sustained.
The addition of Weidman, Chandra, Sugimoto, Subramanian, and
Product and Process and Microplasma Welding Torches, respectively, do not
remedy the deficiencies of Kottilingam, Suzuki, and Rice as described
above. Accordingly, Rejections (20) through (24) likewise cannot be
sustained.
Rejections (25)-(36)
Rejections (25) and (31) are premised on the same combination of
teachings of Kottilingam, Suzuki, and Rice as described above. Ans. 35-37
and 42-43. The addition of either McComas or Wertz does not remedy the
deficiencies of Kottilingam, Suzuki, and Rice as described above. Thus, for
the reasons set forth supra, we cannot sustain the rejection of claims 30, 32,
33, 37-39, 42, 43, 46, 47, 51, and 52 under 35 U.S.C. § 103(a) as
unpatentable over Kottilingam, Suzuki, Rice, and McComas or Wertz, i.e.,
Rejections (25) and (31), respectively.
The addition of Weidman, Chandra, Sugimoto, Product and Process
and Microplasma Welding Torches, and Philip, respectively, do not remedy
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the deficiencies of Kottilingam, Rice, and McComas or Wertz as described
above. Thus, we shall not sustain Rejections (26) through (30) and (32)
through (36).

SUMMARY
The decision of the Examiner to reject claims 1-30, 32-43, and 45-54
is reversed.

REVERSED

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