GENERAL ELECTRIC COMPANY

Patent Trials and Appeals Board

Feb 28, 2020

14796498 - (D) (P.T.A.B. Feb. 28, 2020)

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.
14/796,498 07/10/2015 Bryan Joseph GERMANN 279119 9491
7788 7590 02/28/2020
General Electric Company
Attn: Jim Pemrick
1 Research Circle
K1-3A64
Niskayuna, NY 12309
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
02/28/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
charlotte.wilson@ge.com
gepower.mail@ge.com
shannon.cannizzaro@ge.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRYAN JOSEPH GERMANN and PAUL STEPHEN DIMASCIO

Appeal 2019-003378
Application 14/796,498
Technology Center 1700
____________

Before LINDA M. GAUDETTE, LILAN REN, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–3 and 5–19. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as General
Electric Company. Appeal Br. 3.
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CLAIMED SUBJECT MATTER

The present application generally relates to coating processes and
coated components. Specification filed July 10, 2015 (“Spec.”) ¶ 1. The
Specification teaches a coating process as follows:
a coating process includes applying a suspension to an
operationally used surface, the suspension having one or more
solvents, nano-materials, a plasticizer, a binder, and a dispersant
suspending nano-materials within the suspension, applying heat
to the suspension thereby removing liquids from the suspension,
wherein solids are maintained on the surface after the applying
of the heat, and sintering the solids on the surface to produce a
coating.
Id. ¶ 4.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
1. A coating process, comprising:
applying a suspension to an operationally-used surface,
the suspension having one or more solvents, nano-materials, a
plasticizer, a binder, and a dispersant suspending nano-materials
within the suspension; wherein the one or more solvents
includes a higher-flash solvent and a lower-flash solvent, at a
concentration, by weight of the entire suspension, of less than
10% being the higher-flash solvent and greater than 25%
being the lower-flash solvent;
applying heat to the suspension thereby removing liquids
from the suspension, wherein solids are maintained on the
operationally-used surface after the applying of the heat; and
sintering the solids on the operationally-used surface to
produce a coating.

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Appeal Brief dated Dec. 14, 2018 (“Appeal Br.”) 23 (Claims App.)
(emphasis added).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Fitzgibbons et al.
(“Fitzgibbons”)
US 5,626,923 May 6, 1997
Sangeeta US 6,395,406 B1 May 28, 2002
Hasz et al. (“Hasz”) US 6,497,758 B1 Dec. 24,2002
Spaldon-Stewart et al.
(“Spaldon”)
US 2003/0039755 A1 Feb. 27, 2003
Hazel et al. (“Hazel”) US 2007/0141369 A1 Jun. 21, 2007
Boutwell et al.
(“Boutwell”)
US 2009/0162674 A1 Jun. 25, 2009
Bhatia et al. (“Bhatia”) US 2009/0274850 A1 Nov. 5, 2009
Kirby et al. (“Kirby”) US 2011/0027558 A1 Feb. 3, 2011

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 3, 5–10, and 13–19 are rejected under 35 U.S.C. §
103 as being unpatentable over Kirby as informed by
Boutwell. Final Action dated May 16, 2018 (“Final Act.”) 3–
7.
2. Claim 2 is rejected under35 U.S.C. § 103 as being
unpatentable over Kirby in view of Bhatia. Id. at 7–8.
3. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kirby in view of Hazel. Id. at 8.
4. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
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unpatentable over Kirby in view of Fitzgibbons. Id. at 8–9.
5. Claims 1–3, 5–8, 11, 13, and 17–19 are rejected under 35
U.S.C. § 103 as being unpatentable over Bhatia in view of
Sangeeta and Hasz. Id. at 9–13.
6. Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bhatia in view of Sangeeta, Hasz, and
Spaldon. Id. at 13.
7. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bhatia in view of Sangeeta, Hasz, and
Hazel. Id. at 14.
8. Claims 11 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bhatia in view of Sangeeta, Hasz, and
Fitzgibbons. Id. at 14–15.
9. Claims 14–16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bhatia in view of Sangeeta, Hasz, and
Kirby. Id. at 15.
DISCUSSION
Rejection 1. The Examiner rejects claims 1, 3, 5–10, and 13–19 as
obvious over Kirby as informed by Boutwell. Final Act. 3–7. In support of
the rejection, the Examiner finds that Kirby teaches a coating process
including applying a suspension to an operationally used surface where the
suspension includes solvents, nanomaterials, a plasticizer, a binder, and a
dispersant. Id. at 3. With regard to the “solvent” limitation, the Examiner
finds that Kirby teaches “a mixture of solvents.” Id. at 4. The Examiner
further finds that, in a mixture of two solvents, the solvents would inherently
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possess different flash points, one higher and one lower. Id. The Examiner
additionally finds that Kirby teaches that “the flash point of the solvent
system is result effective as it may influence the drying conditions of the
coating.” Id. (citing Kirby ¶ 63). The Examiner further determines that it
would have been obvious “to have incorporated two solvents in amounts
within the claimed range[s] since mixing two such high and low flash point
solvents would allow for tailoring of the systems flash point for aiding and
optimizing drying.” Id. In the Answer, the Examiner cites In re Aller for
the proposition that “where the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.” Examiner’s Answer dated Jan. 25, 2019
(“Answer”) 4 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
Appellant argues that the rejection is in error because Kirby does not
teach or suggest the concentrations of the higher-flash and lower-flash
solvents as claimed. Appeal Br. 13. Appellant contends that the Examiner
has not provided adequate support for the proposed modification. Id. at 14.
The Examiner is correct that, “where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d at 456.
This rule does not control, however, where “the parameter was not
recognized as ‘result-effective.’” E.I. DuPont de Nemours & Co. v. Synvina
C.V., 904 F.3d 996, 1006 (Fed. Cir. 2018) (citing In re Applied Materials,
Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012)). Here, the parameters at issue
are the concentrations of the higher-flash and lower-flash solvents. Kirby
lacks any teaching bearing upon these parameters and how they relate to
drying conditions. The portion of Kirby relied upon by the Examiner
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provides as follows: “[t]emperature variation can be used to control the
drying rate, however, those skilled in the art will understand that that
temperatures can be kept below the flash point of the organic solvent.”
Kirby ¶ 63. This is inadequate to establish that the concentrations of the
higher-flash and lower-flash solvents are result-effective variables. Nor has
the Examiner established what “result” is sought nor how it would be
affected by a particular variable. Accordingly, the general conditions of the
claim have not been shown to be disclosed by Kirby. As a result, Appellant
has shown error in the Examiner’s rejection of claims 1, 3, 5–10, and 13–19
over Kirby as informed by Boutwell.

Rejections 2–4. The Examiner rejects claims 2, 11, and 12 as
obvious over Kirby in view of certain secondary references. Final Act. 7–9.
Claims 2, 11, and 12 each depend from claim 1. Appeal Br. 23–25 (Claims
App.). In support of each rejection, the Examiner relies upon “Kirby as
applied to claim 1.” As we have found error in the Examiner’s rejection of
claim 1, we determine that reliance on such rejection is erroneous.

Rejection 5. The Examiner rejects claims 1–3, 5–8, 11, 13, and 17–
19 as obvious over Bhatia in view of Sangeeta and Hasz. Final Act. 9–13.
In support of the rejection, the Examiner finds that Sangeeta teaches a
composition including a mixture of solvents. Id. at 10. The Examiner finds
that the solvents of such mixture would inherently possess different flash
points. Id.
The Examiner additionally finds that Hasz teaches that “two solvent
systems with one high flash solvent and one low flash solvent can aid drying
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and provide enhanced leveling properties.” Id. (citing Hasz). The portion of
Hasz cited by the Examiner provides that “[s]ometimes, a two-solvent
system is preferred, in which one solvent flash-evaporates, while the other
evaporates more slowly and provides leveling properties.” Hasz col. 4, ll.
15–17. The Examiner determines that one of skill in the art would have had
reason to use the claimed concentrations of solvents as follows:
Although Bhatia in view of Sangeeta and Hasz do not explicitly
teach an exemplary embodiment with relative amounts of higher
and lower flash solvents, it would have been obvious . . . to have
incorporated the two solvents in amounts within the claimed
range since mixing two such high and low flash point solvents
would allow for tailoring of the systems drying and leveling
properties.

Final Act. 10–11. The Examiner reasons that “where the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” Id. at 11 (quoting
In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
Appellant argues that the claims are not properly rejected over Bhatia
in view of Sangeeta and Hasz. Appeal Br. 19–21. Appellant asserts that the
cited references do not teach the claimed concentrations of higher-flash
solvent and lower flash solvent and that the “Office Action merely provides
a conclusory statement.” Id. at 20. Appellant, however, does little more
than assert that the references do not teach the subject matter of the claims.
Id. at 19–20. Further, Appellant does not provide any detailed argument
regarding the Examiner’s application of In re Aller as to this rejection.
These assertions, without more, are insufficient to show error in the
rejection. See 37 CFR § 41.37(c)(1)(iv) (“[T]he brief shall contain . . . [t]he
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arguments of appellant with respect to each ground of rejection, and the
basis therefor, with citations of the statutes, regulations, authorities, and
parts of the Record relied on. The arguments shall explain why the examiner
erred as to each ground of rejection contested by appellant.”).
Appellant further asserts that the Office Action lacks “documentary
evidence” but does not specify which of the Examiner’s findings is
unsupported by adequate documentary evidence. Appeal Br. 20.
Appellant additionally contends that the Examiner has not adequately
identified a reason why one of skill in the art would have combined the
teachings of the prior art so as to arrive at the claimed process. Id. at 21.
The Examiner sets forth a reason to combine the teachings of Bhatia,
Sangeeta, and Hasz. Final Act. 10–11. More specifically, the Examiner
determines that one of skill in the art would have combined the teachings of
the cited references because “such a mixture would aid control over drying
and provide enhanced leveling properties.” Id. at 10. Appellant does not
show error in (or even discuss) the Examiner’s basis for combination.
In view of the foregoing, Appellant has not shown error in the
rejection of claims 1–3, 5–8, 11, 13, and 17–19 as obvious over Bhatia in
view of Sangeeta and Hasz.

Rejections 6–9. Claims 9–12 and 14–16 are rejected over Bhatia in
view of Sangeeta and Hasz as well as certain additional references. Final
Act. 13–15. These rejections appear not to be appealed. Appeal Br. 10.
Accordingly, they are summarily sustained. See MPEP § 1205.02 (9th ed.,
Rev. Nov. 2013) (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, appellant has waived any challenge to that
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ground of rejection and the Board may summarily sustain it.”). To the
extent that Appellant seeks to rely upon the arguments it presents with
regard to Rejection 5, such arguments have not been found persuasive and
are not indicative of reversible error.

CONCLUSION

The Examiner’s rejection of claims 1, 3, 5–10, and 13–19 as obvious
over Kirby as informed by Boutwell is reversed. The Examiner’s rejection
of claim 2 as obvious over Kirby in view of Bhatia is reversed. The
Examiner’s rejection of claims 11 and 12 as obvious over Kirby in view of
Hazel is reversed. The Examiner’s rejection of claims 11 and 12 as obvious
over Kirby in view of Fitzgibbons is reversed.
The Examiner’s rejection of claims 1–3, 5–8, 11, 13, and 17–19 as
obvious over Bhatia in view of Sangeeta and Hasz is affirmed. The
Examiner’s rejection of claims 9 and 10 as obvious over Bhatia in view of
Sangeeta, Hasz, and Spaldon is affirmed. The Examiner’s rejection of
claims 11 and 12 as obvious over Bhatia in view of Sangeeta, Hasz, and
Hazel is affirmed. The Examiner’s rejection of claims 11 and 12 as obvious
over Bhatia in view of Sangeeta, Hasz, and Fitzgibbons is affirmed. The
Examiner’s rejection of claims 14–16 as obvious over Bhatia in view of
Sangeeta, Hasz, and Kirby is affirmed.

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–10,
13–19
103 Kirby, Boutwell 1, 3, 5–10,
13–19
2 103 Kirby, Bhatia 2
11, 12 103 Kirby, Hazel 11, 12
11, 12 103 Kirby, Fitzgibbons 11, 12
1–3, 5–8,
11, 13, 17–
19
103 Bhatia, Sangeeta,
Hasz
1–3, 5–8,
11, 13, 17–
19

9, 10 103 Bhatia, Sangeeta,
Hasz, Spaldon
9, 10
11, 12 103 Bhatia, Sangeeta,
Hasz, Hazel
11, 12
11, 12 103 Bhatia, Sangeeta,
Hasz, Fitzgibbons
11, 12
14–16 103 Bhatia, Sangeeta,
Hasz, Kirby
14–16
Overall
Outcome
1–3, 5–19

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED