Ex Parte Zhao et alDownload PDFBoard of Patent Appeals and InterferencesApr 28, 200910253750 (B.P.A.I. Apr. 28, 2009) Copy Citation 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 ____________ Decided:1 April 28, 2009 ____________ 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. 2 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 3 Appeal 2009-2320 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: 4 Appeal 2009-2320 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 5 Appeal 2009-2320 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 6 Appeal 2009-2320 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. 7 Appeal 2009-2320 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 8 Appeal 2009-2320 Application 10/253,750 GENERAL ELECTRIC COMPANY (PCPI) C/O FLETCHER YODER P.O. BOX 692289 HOUSTON, TX 77269-2289 9 Copy with citationCopy as parenthetical citation