Ex Parte Zhao et al

Board of Patent Appeals and Interferences

Apr 28, 2009

10253750 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JI-CHENG ZHAO,
BERNARD PATRICK BEWLAY,
and MELVIN ROBERT JACKSON
____________

Appeal 2009-2320
Application 10/253,750
Technology Center 1700
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Decided:1 April 28, 2009
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Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-2320
Application 10/253,750

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 60, 62-64, and 66-68. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
I. STATEMENT OF THE CASE
The invention relates to components for a turbine system and
environmentally resistant coatings for such components. (Spec. 1, ll. 4-9;
Br. 2). Claim 60 is illustrative of the subject matter on appeal:
60. A method of making a turbine component comprising a
molybdenum silicide-based composite and having an environmentally
resistant coating disposed on a surface of the molybdenum silicide-based
composite, the environmentally resistant coating comprising silicon,
titanium, chromium, niobium, and molybdenum, the method comprising the
steps of:

a) providing a molybdenum silicide-based composite substrate
formed into the turbine component;

b) depositing silicon, chromium, titanium, and niobium on the
surface of the molybdenum silicide-based composite using a deposition
method selected from the group consisting of ion plasma deposition, vacuum
plasma spraying, high velocity oxy-fuel spraying, physical vapor deposition,
chemical vapor deposition and dipping the molybdenum silicide-based
composite into a slurry comprising silicon, chromium, titanium, and
niobium; and

c) heat treating the molybdenum silicide-based composite
substrate for at least about one hour at a temperature of at least about
1200°C to form the environmentally resistant coating on the surface of the
turbine component, wherein the step of heat treating follows the step of
depositing silicon, chromium, titanium, and niobium on the surface of the
molybdenum silicide-based composite.

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Appeal 2009-2320
Application 10/253,750

The Examiner relies on the following prior art references to show
unpatentability:
Piearcey US 3,536,121 Oct. 27, 1970
Stecura et al. (“Stecura”) US 4,055,705 Oct. 25, 1977
Shigeru et al. (“Shigeru”) US 4,447,501 May 8, 1984
Sova US 4,894,130 Jan. 16, 1990
Berczik US 5,693,156 Dec. 2, 1997
Morinaga et al. (“Morinaga”) US 5,888,318 Mar. 30, 1999
The Examiner maintains the following rejections:
1. Claims 60, 64, 67, and 68 rejected under 35 U.S.C. § 103(a) as
obvious over Berczik in view of Shigeru and in further view of Piearcey;
2. Claims 63 and 66 rejected under 35 U.S.C. § 103(a) as obvious
over Berczik, Shigeru and Piearcey, as applied above, and further in view of
Morinaga;
3. Claim 62 rejected under 35 U.S.C. § 103(a) as obvious over
Berczik, Shigeru and Piearcey, as applied above, and further in view of
Stecura;
4. Claims 60, 64, 67, and 68 rejected under 35 U.S.C. § 103(a) as
obvious over Berczik in view of Shigeru and in further view of Sova;
5. Claims 63 and 66 rejected under 35 U.S.C. § 103(a) as obvious
over Berczik, Shigeru and Sova, as applied above, and further in view of
Morinaga; and
6. Claim 62 rejected under 35 U.S.C. § 103(a) as obvious over
Berczik, Shigeru and Sova, as applied above, and further in view of Stecura.
II. ISSUE ON APPEAL
Each of the Examiner’s rejections is based on an assertion that it
would have been obvious to one of ordinary skill in the art to deposit the
coating taught by Shigeru onto the molybdenum alloy substrate taught by
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Application 10/253,750

Berczik to “reap the benefit of providing corrosion resistance to the turbine
blades.” (Office Action mailed August 22, 2005, 3-7; Ans. 3-7). However,
Appellants contend that one of ordinary skill in the art would not have made
such a combination: (a) because Berczik teaches a molybdenum alloy that is
resistant to oxidation and that using coatings for oxidation resistance has
certain drawbacks including, among others, poor adhesion, and (b) because
Shigeru teaches applying the coating to a Ni superalloy substrate which is
not comparable to Berczik’s molybdenum alloy substrate. (Br. 5-8; Reply
Br. 2-3).
The Examiner responds: (a) that Berczik explicitly teaches that
coating a molybdenum alloy was known in the art, (b) that any undesirability
of a coating due to poor adhesion is addressed by the inclusion of the
claimed heating step as taught by the prior art, (c) that a coating that is “even
more resistant than the turbine would act to further increase the integrity of
the turbine blade” and would be obvious to use, and (d) that the burden shifts
to the Appellants to show that the blade of Berczik is more resistant without
a coating than with Shigeru’s coating. (Ans. 8-9).
The dispositive issue on appeal arising from the contentions of
Appellants and the Examiner is: did the Examiner reversibly err in failing to
provide a proper reason as to why one of ordinary skill in the art would have
deposited the resistant coating of Shigeru onto the molybdenum alloy
turbine blade of Berczik?
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:
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Application 10/253,750

1. Berczik teaches the use of a molybdenum-silicon-boron alloy,
having a certain crystal structure and phase diagram, which has improved
oxidation resistance over the conventional “TZM” molybdenum alloy.
(Berczik, col. 1, ll. 53-60; col. 2, ll. 16-26; col. 5, ll. 7-14)
2. Berczik teaches that conventional molybdenum alloys were
coated to provide oxidation resistance and suffered from: (a) poor adhesion
of the coating, (b) extra manufacturing steps and costs, and (c) rapid
oxidation of the underlying alloy in the event that the coating is damaged.
(Berczik, col. 1, ll. 24-32).
3. Berczik does not teach a coating applied to the improved
molybdenum alloy turbine. (See generally Berczik).
4. Shigeru teaches a flame spray coating composition which
includes ceramic core particles onto which a metal, metallic compound or a
combination thereof is firmly bonded by a chemical bond. (Shigeru, col. 3,
ll. 16-22).
5. Shigeru teaches applying the coating to “a heat resistant
substrate made of nickel.” (Shigeru, col. 6, ll. 37-40).
6. Piearcey teaches heat treating a nickel-based alloy substrate to
improve mechanical and physical properties. (Piearcey, col. 2, ll. 14-37).
7. Sova teaches that it is conventional to anneal coatings of
chromium on nickel- or cobalt-based superalloys at high temperatures, such
that some of the nickel or cobalt diffuses into the chromium coating. (Sova,
col. 2, l. 57-col. 3, l. 1).
IV. PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
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Application 10/253,750

prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), the
Supreme Court cautioned that, since “a patent composed of several elements
is not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art[,] . . . it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id. at 418; see also Kahn, 441 F.3d at 988 (“[R]ejections 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.”).
As such, the Examiner bears the initial burden, on review of prior art
or on any other ground, of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
V. ANALYSIS
Berczik clearly teaches that it was known in the art to coat
molybdenum alloy substrates. (FF 2). However, Berczik is silent as to the
chemical composition of any particular coating. (FF 2-3). The Examiner
has provided no evidence that the known coatings mentioned in Berczik are
equivalent to Shigeru’s coating so as to provide a reason to combine
Shigeru’s particular coating with Berczik’s molybdenum alloy substrate. In
other words, the generic teaching of coating by Berczik alone does not
support a reason to deposit the specific coating recited in claim 1.
Further, the Examiner has not provided any reason to address why one
of ordinary skill in the art would have used or would have expected success
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Application 10/253,750

in using a coating designed for a nickel substrate, as taught by Shigeru (FF4-
5), as a coating for Berczik’s molybdenum alloy substrate. (FF 1).
Likewise, the Examiner has not shown that the problem of coatings adhering
poorly to a molybdenum alloy, as taught by Berczik (FF 2), would be
sufficiently addressed by the prior art evidence relied upon by the Examiner
directed to heat treatments that provide good adhesion to nickel or cobalt
alloys. (FF 6-7).
Appellants go too far in suggesting that Berczik teaches away from
one of ordinary skill in the art adding any coating to Berczik’s molybdenum
alloy under any circumstance, because the Examiner is correct that one of
ordinary skill in the art would have added a coating if the coating clearly
demonstrates further improved resistance over Berczik’s molybdenum alloy.
However, the Examiner has merely concluded, without factually supporting
the conclusion, that Shigeru’s coating would have been understood to have
improved resistance over Berczik’s molybdenum alloy alone. Without
sound reasoning or specific evidence to support the Examiner’s conclusion,
the Examiner has not yet established a prima facie case that the combination
would have been obvious to the ordinary artisan. Thus, it is not appropriate
to shift the burden to Appellants to prove superiority of Berczik’s
molybdenum alloy over Shigeru’s coating.
Accordingly, the Examiner reversibly erred in failing to provide a
proper reason as to why one of ordinary skill in the art would have deposited
Shigeru’s resistant coating onto Berczik’s molybdenum alloy turbine blade.
All of the Examiner’s rejections suffer from the above identified
defect in supporting reasoning.
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Application 10/253,750

VI. CONCLUSION
For the reasons discussed above, we cannot sustain the following
Examiner’s rejections:
1. Claims 60, 64, 67, and 68 rejected under 35 U.S.C. § 103(a) as
obvious over Berczik in view of Shigeru and in further view of Piearcey;
2. Claims 63 and 66 rejected under 35 U.S.C. § 103(a) as obvious
over Berczik, Shigeru and Piearcey, as applied above, and further in view of
Morinaga;
3. Claim 62 rejected under 35 U.S.C. § 103(a) as obvious over
Berczik, Shigeru and Piearcey, as applied above, and further in view of
Stecura;
4. Claims 60, 64, 67, and 68 rejected under 35 U.S.C. § 103(a) as
obvious over Berczik in view of Shigeru and in further view of Sova;
5. Claims 63 and 66 rejected under 35 U.S.C. § 103(a) as obvious
over Berczik, Shigeru and Sova, as applied above, and further in view of
Morinaga; and
6. Claim 62 rejected under 35 U.S.C. § 103(a) as obvious over
Berczik, Shigeru and Sova, as applied above, and further in view of Stecura.
VII. DECISION
We reverse the Examiner’s decision.

REVERSED

cam

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Appeal 2009-2320
Application 10/253,750

GENERAL ELECTRIC COMPANY (PCPI)
C/O FLETCHER YODER
P.O. BOX 692289
HOUSTON, TX 77269-2289

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