Jon Conrad. Schaeffer

Patent Trials and Appeals Board

May 1, 2020

14013194 - (D) (P.T.A.B. May. 1, 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.
14/013,194 08/29/2013 Jon Conrad SCHAEFFER 263742/22113-0156 6025
13152 7590 05/01/2020
McNees Wallace & Nurick LLC
100 Pine Street
P.O. Box 1166
Harrisburg, PA 17108-1166
EXAMINER
LAW, NGA LEUNG V
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
patents@mcneeslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JON CONRAD SCHAEFFER
____________________

Appeal 2018-005302
Application 14/013,194
Technology Center 1700
____________________

Before DONNA M. PRAISS, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
July 12, 2017 decision finally rejecting claims 1–3 and 5–21 (“Final Act.”).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Jon Conrad Schaeffer and General
Electric Company as the real parties in interest (Appeal Br. 1).
Appeal 2018-005302
Application 14/013,194

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a thermal spray coating method and
thermal spray coated articles (Abstract). According to the Specification,
components such as airfoils, cooling fins, and fingers in different equipment
can be subject to high temperatures, and therefore must include cooling
mechanisms, such as cooling channels, to reduce component temperatures
(Spec. ¶¶ 2, 3). Many of these components are also thermally spray coated
with a coating designed to handle high temperatures, so that clogging of the
cooling channels during the spray coating process can be a problem
(Spec. ¶ 4). The claimed method includes (1) providing a component with
cooling channels on its surface, positioning a covering on the cooling
channel, where the covering is a mesh or similar article having holes therein,
and (2) thermal spraying a feedstock onto the component, where the
covering prevents the feedstock from entering the cooling channels
(Spec. ¶ 7). Details of the claimed invention are shown in representative
claim 1, which is reproduced below from the Claims Appendix to the Appeal
Brief:
1. A thermal spray coating method, comprising:
positioning a covering, having a plurality of openings
through the covering, on a cooling channel of a component;
and then
thermal spraying a feedstock onto the covering;
wherein the covering prohibits the feedstock from
entering the cooling channel in the component and is not
removed from the component; and
wherein the plurality of openings have dimensions less
than 50 μm.

Appeal 2018-005302
Application 14/013,194

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REJECTIONS
1. Claims 1–3, 5, 7, 8, 11–19, and 21 are rejected under
35 U.S.C. § 103 as unpatentable over James2 in view of Bauer3 and Ligon.4
2. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
James in view of Bauer and Ligon, and further in view of Brantley.5
3. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over
James in view of Bauer and Ligon, and further in view of Mendham.6
4. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable
over James in view of Bauer and Ligon, and further in view of Durocher.7
5. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable
over James in view of Bauer.

DISCUSSION
We decide this appeal based on a dispositive limitation common to
each of independent claims 1, 17, and 20. Accordingly, we focus our
analysis on the rejection of claim 1 over James in view of Bauer and Ligon.
The Examiner’s findings underlying the rejection are set forth at pages
3–4 of the Final Action. The Examiner finds that James discloses each of the
limitations of claim 1, except that James does not disclose that the covering
for the cooling channel has a plurality of openings, or the size of such
openings (Final Act. 3–4). The Examiner finds that Bauer teaches a method

2 James et al., US 2008/0298975 A1, published December 4, 2008.
3 Bauer, US 2005/0147764 A1, published July 7, 2005.
4 Ligon, US 2014/0199517 A1, published July 17, 2014.
5 Brantley et al., US 4,006,999, issued February 8, 1977.
6 Mendham, US 5,269,057, issued December 14, 1993.
7 Durocher et al., US 2013/0051979 A1, published February 28, 2013.
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Application 14/013,194

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of forming a coating by thermal spraying onto a substrate, where the
substrate is a mesh substrate (Final Act. 3, citing Bauer Abstract, ¶ 33). The
Examiner determines that it would have been obvious to use a mesh as the
cover used by James for a cooling channel because Bauer teaches that
thermal spraying a mesh rather than a solid surface enables easing bonding of
the coating material to the mesh because of the ability of the sprayed material
to locally encapsulate portions of the mesh and bond to itself (Final Act. 3–4,
citing Bauer ¶ 33). The Examiner relies on Ligon for teaching that the size of
the openings in the mesh is a result effective variable and that, therefore, the
claimed size of the openings in the mesh would have been obvious (Final
Act. 4, citing Ligon ¶¶ 7, 20).
Appellant’s principal argument is that a person of skill in the art would
not have been motivated to combine the teachings of James and Bauer
because Bauer’s mesh has holes, and there is no teaching or disclosure in
Bauer that feedstock does not pass through the holes during the thermal
spraying process (Appeal Br. 9). Appellant’s argument is persuasive.
The Examiner correctly finds that Bauer discloses that thermally spray
coating a mesh allows the coating material to locally encapsulate portions of
the mesh and to bond for itself. However, as argued by Appellant, Bauer
makes no disclosure about whether Bauer’s mesh allows some of the
feedstock to pass through the mesh. Given that the function of the cover over
the cooling channels in James’s component is to keep the cooling channels
clear, we agree with Appellant that a person of skill in the art would not have
looked to replace the non-perforated skin employed by James with a mesh.
The Examiner also argues that a person of skill in the art would still
have been motivated to use a mesh in place of the non-perforated cover of
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Application 14/013,194

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James because Bauer discloses that the mesh is encapsulated by the coating,
providing good bonding to the coating, and that Ligon’s disclosure that the
size of the mesh opening is a result effective variable, such that a person of
skill in the art would have been motivated to adjust the size of Bauer’s mesh
to prevent the feedstock from leaking into the channel (Ans. 14). However,
as noted by Appellant, Ligon specifically discloses adjusting the size of its
mesh to keep solid particles from passing through (Ligon ¶ 20), and makes no
mention of keeping the liquid feedstock, which is part of the thermal spray
coat, from passing through the mesh.
Thus, we conclude that the preponderance of the evidence of record
supports Appellant’s position that absent knowledge of Appellant’s
invention, a person of skill in the art would not have been motivated to use
Bauer’s mesh in James’s system, because nothing in the art of record
suggests that a mesh would have been capable of preventing the liquid
feedstock from entering the cooling channels during the thermal spray
coating process.
Accordingly, we reverse the rejection of claim 1. Because
independent claims 17 and 20 contain similar limitations regarding the
exclusion of the feedstock from the cooling channels, we also reverse the
rejections of those claims, as well as the rejections of the dependent claims.

Appeal 2018-005302
Application 14/013,194

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CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§ References(s)/Basis Affirmed Reversed
1–3, 5, 7, 8,
11–19, 21 103 James, Bauer, Ligon
1–3, 5, 7, 8,
11–19, 21
6 103 James, Bauer, Ligon, Brantley 6
9 103 James, Bauer, Ligon, Mendham 9
10 103 James, Bauer, Ligon, Durocher 10
20 103 James, Bauer 20
Overall
Outcome 1–3, 5–21

REVERSED