2019004851 (P.T.A.B. May. 14, 2020)

UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals BoardMay 14, 2020

2019004851 (P.T.A.B. May. 14, 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. 15/036,109 05/12/2016 Mark T. Ucasz 62748US02; 67097-2750PUS1 1055 54549 7590 05/14/2020 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER BOGUE, JESSE SAMUEL ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 05/14/2020 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK T. UCASZ Appeal 2019-004851 Application 15/036,109 Technology Center 3700 Before MICHAEL L. HOELTER, LISA M. GUIJT, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, 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 1, 2, 4, 6–9, 12–17, 20, 22, 23, 25, and 26.2 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 United Technologies Corporation. Appeal Br. 1. 2 Claims 3, 5, 10, 11, 18, 19, 21, and 24 have been cancelled. See Appeal Br. 7–10 (Claims App.). Appeal 2019-004851 Application 15/036,109 2 CLAIMED SUBJECT MATTER The claims are directed to a coated article including a substrate and a continuous ceramic-based coating supported on the substrate. Spec. ¶ 3. Claim 1, reproduced below, is the sole independent claim on appeal. 1. A coated article comprising: a substrate; and a continuous ceramic-based coating supported on the substrate, the ceramic-based coating varying in composition by location on the substrate and with respect to localized property requirements, wherein the continuous ceramic-based coating has a functionally graded region wherein a composition of the continuous ceramic-based coating changes along a distance from a first composition at a first location L1 to a second composition at a second location L2. Appeal Br. 7 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Pietraszkiewicz US 2007/0048534 A1 Mar. 1, 2007 Freling US 2007/0172703 A1 July 26, 2007 Spitsberg US 2008/0305264 A1 Dec. 11, 2008 Peterson US 2012/0034471 A1 Feb. 9, 2012 REJECTIONS I. Claim 6 is rejected under 35 U.S.C. § 112(b) as indefinite. II. Claims 1, 2, 8, 12–17, 22, and 25 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Pietraszkiewicz.3 3 The heading for this rejection does not list claim 15, but the body of the rejection addresses this claim. See Final Act. 3. Appeal 2019-004851 Application 15/036,109 3 III. Claims 4, 13, 20, 23, and 26 are rejected under 35 U.S.C. § 103 as unpatentable over Pietraszkiewicz and Freling. IV. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as unpatentable over Pietraszkiewicz. V. Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Pietraszkiewicz and Spitsberg. VI. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Pietraszkiewicz and Peterson. OPINION Rejection I–Indefiniteness The Examiner determines that, because claim 1 uses the term “functionally graded,” and claim 6, which depends from claim 1, appears to redefine the term “functionally graded,” the scope of this claim is unclear. Ans. 3. Appellant points out that claim 1 uses the term “functionally graded” to modify the noun “region,” and, in contrast, claim 6 uses this term to modify the noun “composition.” Reply Br. 1. Therefore, according to Appellant, claim 6 does not use the term in a manner inconsistent with how it is used in claim 1. Id. Rather, according to Appellant, this term is used to modify different nouns in claims 1 and 6. Id. Thus, Appellant asserts, claim 6 does not redefine the term “functionally graded.” Id. We agree with Appellant that claim 6 uses the term “functionally graded” to modify something other than what this term modifies in claim 1. See Appeal Br. 7 (Claims App.). In other words, claims 1 and 6 use the same adjective to modify different things. The Examiner’s articulation of Appeal 2019-004851 Application 15/036,109 4 the rejection on page 3 of the Answer and on page 2 of the Final Office Action does not address this difference between claims 1 and 6. Accordingly, the rejection of claim 6 as indefinite does not adequately explain why the use of the term “functionally graded” in claim 6 makes claim 6 unclear. Consequently, we do not sustain the rejection of claim 6 as indefinite. Rejection I–Anticipation by Pietraszkiewicz The Examiner finds that Pietraszkiewicz discloses all the elements required by claim 1, and, specifically, that Pietraszkiewicz’s discussion of a first and second coating material that overlap and taper together qualifies as a disclosure of the functionally graded region. Final Act. 3 (citing Pietraszkiewicz ¶¶ 6–9, 17, 33, 38). Appellant argues in Pietraskiewicz, the taper region is formed during plasma spraying, whereby different materials “overlap and/or taper together” during sequential deposition of the materials. See Pietraskiewicz at [0034]. Neither of these overlapping layers include “a composition... that changes along a distance.” Instead, the multiple layers in Pietraskiewicz have the same composition throughout and only change in thickness. Appeal Br. 4. Thus, Appellant asserts that Pietraszkiewicz discloses two layers that have the same composition throughout and only change in thickness. The Examiner responds that Pietraszkiewicz discloses one material with a low thermal conductivity and a second material with a high thermal conductivity. Ans. 4 (citing Pietraszkiewicz ¶17). The Examiner finds Pietraszkiewicz discloses that these compositions overlap with a taper in an intervening region. Id. (citing Pietraszkiewicz ¶ 33). The Examiner Appeal 2019-004851 Application 15/036,109 5 concludes that this meets the requirement in claim 1 for a composition that changes along a distance form a first position to a second position. In reply, Appellant argues “the taper region is only an overlap of different materials rather than ‘a composition ... that changes along a distance,’ as claimed . . . The fact that the thermal conductivity of the taper region changes is irrelevant because it does not indicate or teach a change in composition along a distance, as claimed.” Reply Br. 2. We do not agree with Appellant’s argument. Claim 1 recites that, in the functionally graded region, “a composition of the continuous ceramic- based coating changes along a distance from a first composition at a first location L1 to a second composition at a second location L2.” We agree with the Examiner’s finding that an overlapping region of two materials that “taper together” as disclosed in paragraph Pietraszkiewicz meets this requirement. Pietraszkiewicz states, “[t]he area containing both coating materials may be recognized as an overspray area or a coating transition zone where the first coating material and second coating material overlap and/or taper together.” Pietraszkiewicz ¶ 33. From this disclosure, a person of ordinary skill in the art would understand that at one end of such a tapered structure, the coating is comprised entirely of the first coating material. At a second end, the coating is comprised entirely of the second coating material. At a position a short distance from the first end, the coating comprises mostly first material, but also comprises some of the second material. Positions taken progressively closer to the second end progressively include more of the second material. In other words, the ratio of the second material to the first material increases, depending on position, meaning that that composition of the coating changes. The fact that the first and second materials are located in overlapping layers does not negate the fact that, at a Appeal 2019-004851 Application 15/036,109 6 given point within the tapered area, the composition of the “coating” includes both materials. Appellant next argues, “Pietraskiewicz’s taper region includes multiple discrete layers of material that are separately deposited. See Pietraskiewicz at [0034]. Therefore, the taper region in Pietraskiewicz is not continuous, as claimed.” Appeal Br. 4. Appellant expounds on this argument, stating, “Pietraskiewicz’s layer is applied in multiple layers, and therefore cannot be continuous and cannot read on the claimed continuous layer.” Id. at 5. In response, the Examiner notes that Appellant’s claim 7, which depends from claim 1, recites “the first location L1 is multilayered with distinct layers of differing compositions.” Ans. 5 (quoting Appeal Br. 8 (Claims App.)). The Examiner takes the position that claim 7 contradicts Appellant’s argument that multiple layers of a coating cannot meet the requirements of claim 1. Id. The Examiner explains, “Pietraskiewicz is understood to have a continuous ceramic based coating as interpreted since at no point between the low thermal conductivity composition, high thermal conductivity composition and taper region is there a region without a coating.” Id. In reply, Appellant does not address the Examiner’s discussion of claim 7, but reiterates, “Pietraskiewicz’s description of the taper layer is clear, and teaches an overlap of individual layers that are individually deposited rather than a changing composition.” Reply Br. 2. The Examiner has the better position. Under the broadest reasonable interpretation of claim 1 in light of Appellant’s disclosure, a “continuous ceramic-based coating” may include multiple layers. We agree with the Examiner that dependent claim 7 supports this claim interpretation by Appeal 2019-004851 Application 15/036,109 7 explicitly reciting this structure. Appeal Br. 8 (Claims App.). Additionally, dependent claims 8 and 9 recite that the first “location” L1 and the second “location” L2 overlap, implying these are separate layers. See id.; Fig. 4. We have considered all of Appellant’s arguments in support of the patentability of claim 1, but find them unavailing. Accordingly, we sustain the rejection of claim 1 as anticipated by Pietraszkiewicz. Appellant does not make arguments for the patentability of claims 2, 8, 12–17, 22, and 25 aside from those discussed above regarding claim 1. See Appeal Br. 3–5. Accordingly, for the same reasons, we sustain the rejection of claims 2, 8, 12–17, 22, and 25 as anticipated by Pietraszkiewicz. Rejections III–VI–Pietraszkiewicz, Freling, Spitsberg, and Peterson Appellant relies only upon the arguments discussed above regarding Rejection II to address Rejections III–VI. See Appeal Br. 3–5. For the same reasons discussed regarding Rejection II, we sustain Rejections III–VI. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 6 112(b) Indefiniteness 6 1, 2, 8, 12– 17, 22, 25 102(a)(1) Pietraszkiewicz 1, 2, 8, 12– 17, 22, 25 4, 13, 20, 23, 26 103 Pietraszkiewicz, Freling 4, 13, 20, 23, 26 Appeal 2019-004851 Application 15/036,109 8 Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 6, 7 103 Pietraszkiewicz 6, 7 9 103 Pietraszkiewicz, Spitsberg 9 6 103 Pietraszkiewicz, Peterson 6 Overall Outcome 1, 2, 4, 6– 9, 12–17, 20, 22, 23, 25, 26 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