GENERAL ELECTRIC COMPANYDownload PDFPatent Trials and Appeals BoardOct 25, 20212020005935 (P.T.A.B. Oct. 25, 2021) Copy Citation 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. 14/776,993 09/15/2015 Roger Lee Ken MATSUMOTO 250348-US-11/ GECV-843-PCT 6692 122218 7590 10/25/2021 Dority & Manning, P.A. and GEC-Aviation Post Office Box 1449 Greenville, SC 29602-1449 EXAMINER STANLEY, JANE L ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 10/25/2021 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): oc.prosecution@ge.com usdocketing@dority-manning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER LEE KEN MATSUMOTO Appeal 2020-005935 Application 14/776,993 Technology Center 1700 Before MASHID D. SAADAT, JOHN A. EVANS, and BRIAN D. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 12–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as General Electric Company. Appeal Br. 1. Appeal 2020-005935 Application 14/776,993 2 CLAIMED SUBJECT MATTER2 Appellant describes the invention as relating to slurry and tape compositions for the production of ceramic matric composite (CMC) articles that are safer to produce, use, and transport. Spec. ¶ 1. In particular, such CMC materials can be used for gas turbines. Id. Claim 12 is the only independent claim on appeal and is illustrative. We reproduce Claim 12 below while emphasizing certain key recitations: 12. A process of using a slurry composition to produce a pliable nonflammable tape, the process comprising: forming the slurry composition to contain 30 to 60 weight percent of a powder comprising particles of at least one precursor; 5 to 10 weight percent of at least one binder; 5 to 10 weight percent of at least one liquid plasticizer; and a solvent in which the binder is dissolved, wherein the solvent is about 45 weight percent or more of the slurry composition, and wherein the at least one precursor comprising SiC, carbon, and/or one or more other carbon-containing particulate materials; impregnating a fiber reinforcement material with the slurry composition to produce a slurry-impregnated reinforcement material; and evaporating at least a portion of the solvent from the slurry- impregnated reinforcement material to form the tape in which the particles of the precursor are adhered together by a matrix material; wherein a sufficient amount of the solvent evaporates to result in the tape being nonflammable and containing less than about 10 weight percent of the solvent, yet the tape is also pliable as a result of containing a sufficient amount of the liquid plasticizer. 2 In this Decision, we refer to the Final Office Action dated April 2, 2019 (“Final Act.”), the Appeal Brief filed March 2, 2020 (“Appeal Br.”), and the Examiner’s Answer dated June 15, 2020 (“Ans.”). Appeal 2020-005935 Application 14/776,993 3 Appeal Br. 10 (Claims App.). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Name Reference Date Harley et al. (“Harley”) US 4,710,227 Dec. 1, 1987 Manicke et al. (“Manicke”) US 2011/0150663 A1 June 23, 2011 REJECTIONS The Examiner maintains the following rejections on appeal: A. Claims 19 and 20 under 35 U.S.C. § 112 as indefinite. Ans. 3. B. Claims 12–20 under 35 U.S.C. § 103 as obvious over Harley in view of Manicke. Id. at 4. OPINION Rejection 1. The Examiner rejects claims 19 and 20 under 35 U.S.C. § 112 as indefinite. Ans. 3. “[A] claim is indefinite when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claim 19 recites, among other things, “further heating the preform to convert the precursor to a ceramic material.” Appeal Br. 11 (Claims App.). Claim 20 depends from claim 19. The Examiner determines that claim 19 is unclear because, according to claim 1, the precursor could be only carbon and that “carbon is not a ceramic forming material.” Ans. 3. Appellant Appeal 2020-005935 Application 14/776,993 4 argues that carbon materials can be ceramic forming materials. Appeal Br. 4. The weight of the evidence before us better supports Appellant’s position. Claim 12 permits the recited “at least one precursor” to be “SiC, carbon, and/or one or more carbon-containing particulate materials.” Appeal Br. 10 (Claims App.). The Examiner does not dispute that silicon carbide can form ceramic. Ans. 9–10. Rather, the Examiner contends that the claim 12 also allows selection of “carbon” or “other carbon-containing particulate materials” to be the precursor, and it is unclear how such materials can result in formation of a ceramic via heating as claim 19 requires. Id. The Examiner’s position errs because claim 19 is narrower than claim 12. While claim 12 permits the “at least one precursor” to be anything within the genus of “SiC, carbon, and/or one or more carbon-containing particulate materials,” claim 19 further requires conversion of the precursor to a ceramic material. If a selection within claim 12’s genus cannot result in a ceramic material, then claim 19 could not be satisfied. Claim 19, thus, uses functional language to limit claim 12’s precursor to a subgenus. The Examiner does not establish that this recitation is unclear. We, thus, do not sustain this rejection. Rejection 2. The Examiner rejects claims 12–20 under 35 U.S.C. § 103 as obvious over Harley in view of Manicke. Ans. 4. The Examiner has the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or Appeal 2020-005935 Application 14/776,993 5 would have been obvious based on the knowledge of those of ordinary skill in the art or the inferences and creative steps a person of ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). To resolve the issues before us on appeal, we focus on the Examiner’s findings and determinations that relate to the error Appellant identifies. Because we decide this appeal based on a recitation recited by independent claim 12, we focus our analysis that claim. Our analysis is equally applicable to each of the independent claims and, therefore, all of the dependent claims as well. Claim 12 recites, among other things, a slurry composition and solvent “wherein the solvent is about 45 weight percent or more of the slurry composition.” Appeal Br. 10 (Claims App.). The Examiner finds that Harley teaches a dispersion comprising 80 to 99% alcohol by weight where the alcohol aids in dissolving the chosen binder in amounts of about 1 to about 6%. Ans. 4–5 (citing Harley). The Examiner determines that this range reads on claim 1’s recited “45 weight percent or more.” Id. The Examiner also finds that the amount of binder is a result effective variable that a person of skill in the art would adjust to achieve “strength and integrity of the final product and formation of a uniform slip.” Id. (citing Harley). The Examiner does not rely on the second reference, Manicke, as teaching solvent or solvent amounts. Id. at 11–12. Appellant argues that Harley concentrates its dispersion prior to forming its tape and that the Examiner, thus, does not teach or suggest “impregnating any porous substrate with a slurry composition containing a solvent that is about 45 weight percent or more of the slurry composition.” Appeal 2020-005935 Application 14/776,993 6 Appeal Br. 4–6. For the reasons explained below, we agree with Appellant that the Examiner has not adequately established that Harley suggests impregnating a fiber reinforcement material with a slurry composition where the slurry composition is 45 weight percent or more solvent. The Examiner correctly finds that Harley teaches a hydrolysable solution that may be 80 to 99 % alcohol. Appeal Br. 4–5; Harley 2:53–3:6. The Examiner does not establish, however, that this solution ever impregnates a porous substrate. Rather, that solution is a “starting component[]” of the Harley process. Harley 2:53–58. Harley’s starting components undergo numerous steps prior to ever touching a porous substrate. See, e.g., id. at 3:35–58 (explaining hydrolysis process); 3:59–4:8 (explaining addition of water); 4:35–47 (explaining optional removal of water); 4:67–5:14 (explaining “concentration of the disperse” after the hydrolysis); 5:26–38 (adding binder before or after concentration); 6:14–31 (explaining use of plasticizer). The Harley dispersion is converted into a green body (for example, by “tape-casting”) as a “last step” that occurs only after the rest of the Harley process is complete. Id. at 7:3–13. The Examiner admits that Harley teaches “some concentrating . . . prior to drying to form the film/tape.” Ans. 10–11. However, the Examiner has not established how much concentrating occurs or whether or not the “last step” composition meets claim 12’s requirements. We, thus, decline to sustain the Examiner’s rejection based on the Examiner’s explanation of Harley’s teachings and suggestions. The Examiner also finds that the amount of binder is a result effective variable and cites evidence from Harley to support this finding. Ans. 11. The Examiner does not, however, adequately establish that solvent percent is a Appeal 2020-005935 Application 14/776,993 7 result effective variable. Solvent percent and amount of binder are related; claim 12 requires that the binder is dissolved in the solvent. Appeal Br. 10. But binder could be dissolved in more solvent or less solvent. For Harley, as explained above, the amount of solvent may change during the course of the process. As such, we also decline to sustain the Examiner’s rejection based on the Examiner’s stated result effective variable rationale. The Examiner’s treatment of dependent claims does not cure the error we address above. We reverse this rejection. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 19, 20 112 Indefiniteness 19, 20 12–20 103 Harley, Manicke 12–20 Overall Outcome 12–20 REVERSED Copy with citationCopy as parenthetical citation