Wayde R. Schmidt et al.

Patent Trials and Appeals Board

Nov 26, 2019

14522746 - (D) (P.T.A.B. Nov. 26, 2019)

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.
14/522,746 10/24/2014 Wayde R. Schmidt 59240US02;
67097-1583PUS2
8157
54549 7590 11/26/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
EMRICH, LARISSA ROWE
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
11/26/2019 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 WAYDE R. SCHMIDT, DAVID C. JARMON, and
WILLIAM K. TREDWAY

Appeal 2018-005168
Application 14/522,746
Technology Center 1700
____________

Before MARK NAGUMO, DONNA M. PRAISS, and JANE E. INGLESE,
Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed Oct. 24, 2014
(“Spec.”), the Final Office Action dated June 14, 2017 (“Final Act.”), the
Appeal Brief filed Jan. 16, 2018 (“Appeal Br.”), the Advisory Action (“Adv.
Act.”) dated Feb. 6, 2018, the Examiner’s Answer dated Feb. 23, 2018
(“Ans.”), and the Reply Brief filed Apr. 23, 2018 (“Reply Br.”).
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Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–10 and 13–19.2, 3 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to ceramic materials. Spec. ¶ 2. The
Specification describes a ceramic component as a porous structure having
fibers and a coating on the fibers, ceramic material located within pores of
the porous structure, and a glass or glass/ceramic material also located
within pores of the porous structure. Id. ¶ 3. The components are said to
enhanced densification, thermal conductivity or other target properties for
uses such as cooled turbine engine components. Id. ¶ 26.
Claims 1 and 7, reproduced below, are illustrative of the subject
matter on appeal (emphasis added).
1. A ceramic component comprising:
a porous structure including fibers and a coating on the
fibers;
a ceramic material within pores of the porous structure;
and
a glass or glass/ceramic material within pores of the
porous structure, wherein one of the ceramic material or the
glass or glass/ceramic material is within internal residual

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. United Technologies Corporation is identified as the real
party in interest. Appeal Br. 2.
3 Claims 11 and 12 are not in this Appeal because they have been cancelled.
Adv. Act.
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porosity of the other of the ceramic material or the glass or
glass/ceramic material.
7. The ceramic component as recited in claim 6, wherein
the glass material further includes a silicon-containing filler[.]
Appeal Br. 8 (Claims Appendix).

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded of reversible error in the
Examiner’s rejections.
The Examiner rejects claims 1–10 and 13–19 under 35 U.S.C.
§ 103(a) over the combination of Domergue4 and Sakai5 alone and together
with secondary references6 for the reasons provided in the Final Office
Action. Final Act. 6–19.
Appellant separately argues the rejections of independent claim 1 and
dependent claim 7. Appeal Br. 3–9. Therefore, in view of the lack of
arguments directed to the remaining claims, claims 2–6 and 8–10 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). We consider the

4 US 6,221,475 B1, issued Apr. 24, 2001.
5 US 2001/0037659 A1, published Nov. 8, 2001.
6 US 4,314,852, issued Feb. 9, 1982 (“Brennan”); US 5,573,985, issued
Nov. 12, 1996 (“Weaver”); US 5,837,364, issued Nov. 17, 1998 (“Zank”).
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arguments advanced by Appellant in support of patentability of claim 7 to
the extent applicable to the separate rejections of claims 13–19. We
separately address claims 1 and 7 below.
Claim 1
Appellant contends that the Examiner erred in combining the
teachings of Domergue and Sakai because the proposed combination would
render Domergue unsuitable for its intended purpose. Appeal Br. 3.
According to Appellant, Sakai’s glass matrix surrounds an interior ceramic
matrix and fibers to smooth the outer and inner surfaces of the ceramic
matrix. Id. at 3 (citing Sakai ¶ 34, Fig. 1). Appellant argues that applying
Sakai’s glass matrix to Domergue’s friction element would cover
Domergue’s friction face making it unsuitable as a friction element because
the glass matrix would be exposed rather than Domergue’s
carbon/carbon/silicon carbide composite. Id. at 4. According to Appellant,
Sakai does not explicitly teach only filling the voids or using only part of the
glass matrix because the reference lacks any example without a coated
surface and it teaches improving oxidation by sealing the composite and the
outside surfaces with the glass matrix. Id. at 4–5 (citing Sakai ¶¶ 33, 43,
Figs. 1, 3).
The Examiner responds that the rejection is not based on the entire
glass matrix of Sakai, but, rather, its benefits with respect to filling in the
voids of fiber-reinforced ceramics. Ans. 12. The Examiner finds
impregnating the voids with glass is beneficial because it eliminates the
reduced strength due to the notches in the matrix, which cannot be achieved
by coating the surface. Id. at 13 (citing Sakai ¶ 17). The Examiner also finds
filling the voids with glass increases the room temperature strength of the
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ceramic matrix. Id. The Examiner further finds that Sakai states that the
coating alone is insufficient, teaches that at least the voids must be filled to
achieve the beneficial results, and does not state that the coating is
necessary. Id. at 13–14 (citing Sakai ¶¶ 12, 17). The Examiner determines
that a person having ordinary skill in the art would have recognized filling
the voids without coating the surface is a predictable variation because Sakai
explicitly discloses the benefits of filling the voids in a ceramic matrix. Id. at
13.
In the Reply Brief, Appellant contends that Sakai does not state that
the glass on the surface is not necessary or present. Reply Br. 2. According
to Appellant, the fact that glass on the surface “does provide some level of
oxidation resistance demonstrates that the glass also serves to block oxygen
when on the surfaces.” Id. at 3. Appellant maintains that Sakai requires glass
on the surface as well as in the voids because otherwise oxygen would be
permitted to infiltrate through the surfaces and diminish oxidation resistance.
Id. Appellant asserts that the notch effect cited by the Examiner “actually
requires that the surface be coated with glass for smoothing.” Id. at 4 (citing
Sakai ¶¶ 34, 35). Appellant also asserts that Sakai’s glass is applied by
immersion which would inherently coat the outer surfaces of Domergue
rendering it unsuitable for its intended purpose. Id. (citing Sakai ¶¶ 20, 24).
According to Appellant, the method of getting to the alleged structure must
be rational for a skilled artisan to expect to achieve the alleged structure. Id.
at 6.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting the claims as obvious over the teachings of
Domergue and Sakai. Specifically, we are not persuaded that the Examiner
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erred in finding that Sakai discloses the benefit of glass being present in the
pores of a porous structure, as claim 1 requires. Appellant has not adequately
shown Domergue would have been rendered inoperable for its intended
purpose by the combination with Sakai. The preponderance of the evidence
in this appeal record supports the Examiner’s conclusion that the claimed
subject matter would have been obvious in view of Domergue and Sakai.
Accordingly, we sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C.
§ 103 leads to three basic factual inquiries: (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue;
and (3) the level of ordinary skill in the art). If the Examiner’s burden is met,
the burden then shifts to the Appellant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the arguments.
See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant does not dispute the Examiner’s findings (Ans. 12–13, 15)
that Sakai teaches filling the voids of fiber-reinforced ceramics provides
benefits and that the benefits are oxidation resistance and strength (reduction
of the notch effect). Instead, Appellant argues that a person having ordinary
skill in the art would not understand from Sakai’s disclosure that these
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benefits are attributable to filling the voids alone without glass also coating
the surface. According to Appellant, it can be inferred from Sakai that glass
on the surfaces is necessary because Sakai indicates some level of oxidation
protection can be attributed to the glass on the surface. Reply Br. 2. The
problem with Appellant’s argument is that even if a ceramic with both the
voids filled and the surface coated provides more oxidation resistance and
strength than a ceramic in which only the voids are filled, the record
supports the Examiner’s finding that there are benefits associated with filling
the voids as compared to the conventional technique of only coating the
surface. Sakai ¶¶ 11–14, 17.
Appellant also directs us to Sakai’s disclosure of smoothing the inner
and outer surfaces as evidence that glass coated surfaces are necessary to
achieve the noted benefits. Reply Br. 4 (citing Sakai ¶¶ 34, 35). The problem
with Appellant’s argument is that Appellant does not adequately explain
why filling the voids up to the surface without also coating the surface
would not smooth the outer surface as described by Sakai.
Appellant’s assertion (Reply Br. 4) that Sakai’s disclosure of filling
the voids by immersion would inherently result in the outer surfaces being
coated is not persuasive of error for two reasons. First, this is a new
argument that was not presented in the Appeal Brief. Appellant has not
proffered a showing of good cause explaining why the argument could not
have been presented in the Appeal Brief. Therefore, we will not consider this
new and untimely argument in our assessment of the Examiner's § 103
rejections. 37 C.F.R. §§ 41.37, 41.41. Second, even if we were to consider
Appellant’s untimely argument, Appellant’s assertion is merely attorney
argument that is not supported by evidence. It is well settled that arguments
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of counsel cannot take the place of factually supported objective evidence.
See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
In sum, Appellant’s position (Reply Br. 6) that the Examiner’s
findings are insufficient to establish obviousness by the combination of
Domergue and Sakai is not persuasive of error because Appellant does not
adequately show that a person having ordinary skill in the art would
understand Sakai requires both the pores and the surface of the matrix to be
covered with glass. Nor has Appellant adequately shown that the
combination with Sakai would have rendered Domergue unfit for its
intended purpose. Accordingly, we affirm the Examiner’s rejection of claim
1 as well as claims 2–6 and 8–10 under 35 U.S.C. § 103 over Domergue and
Sakai.

Claim 7
In addition to the arguments presented with respect to claim 1
distinguishing the disclosures of Sakai (Appeal Br. 6), which we do not find
persuasive of error as discussed above, Appellant contends that the
Examiner erred in rejecting claim 7 because the modification of
Domergue/Sakai to include the silicon carbide fibers of Brennan are not
explicitly addressed. Id. According to Appellant, Brennan impregnates glass
powder into a silicon carbide tow (fiber) and is then hot pressed. Id. (citing
Brennan 2:53–3:33). Because glass is added to the fiber in the cited
references, Appellant argues that it is unclear how the fibers of Brennan
would come to be added with the glass into the pores of Domergue. Id.
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The Examiner responds that claims 1 and 7 are directed to products,
not processes, and that a silicon-containing filler being present in the glass
material increases toughness and flexural strength at high temperature. Ans.
21–22.
In the Reply Brief, Appellant asserts “if the methods to get to the
alleged structure are not rational, one of ordinary skill in the art would not
expect to achieve the alleged structure.” Reply Br. 6.
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 7 over the cited prior art references. As
discussed above in connection with claim 1, we are not persuaded of error in
the Examiner’s finding that Domergue and Sakai disclose the ceramic
component of claim 1 in which glass is within internal pores. The record
supports the Examiner’s finding that Brennan discloses “exceptional flexural
strength of a borosilicate glass-silicon carbide fiber reinforced composite
ultilizing silicon carbide yarn.” Brennan 3:34–40; Final Act. 11. Appellant
does not adequately explain why a person having ordinary skill in the art
would not have understood how to modify the glass used in the ceramic
component of Domergue as modified by Sakai in view of Brennan’s
teaching that silicon carbide fiber reinforced glass has the benefit of high
flexural strength and toughness at high temperature.
Appellant’s focus on Brennan’s hot pressing example does not
persuade us that one of ordinary skill in the art would not have expected to
achieve the structure of claim 7. Reply Br. 6. While Brennan refers to hot
pressing a mixture of silicon fibers and powdered glass as its preferred
method, Brennan also discloses “a variety of methods can be used to
produce the articles of the present invention, e.g. methods conventionally
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used to produce glassware articles.” Brennan 2:53–55. In a determination of
obviousness, a reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art. Merck & Co.
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the
[prior art] patent discloses a multitude of effective combinations does not
render any particular formulation less obvious.”). Moreover, “a reference is
not limited to the disclosure of specific working examples.” In re Mills, 470
F.2d 649, 651 (CCPA 1972) (citation omitted).
Accordingly, we affirm the Examiner’s rejection of claim 7 as well as
claims 13–19 under 35 U.S.C. § 103(a).

For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 1–10 and 13–19 under 35 U.S.C. § 103(a) as
obvious over the cited prior art references.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Basis  Affirmed Reversed
1–6, 8–12 103(a) Domergue, Sakai 1–6, 8–12
7 103(a) Domergue, Sakai, Brennan 7
13–17 103(a) Domergue, Sakai, Brennan, Weaver 13–17
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Claims
Rejected 35 U.S.C. § Basis  Affirmed Reversed
18, 19 103(a)
Domergue, Sakai,
Brennan, Weaver,
Zank
18, 19
Overall
Outcome
1–10, 13–19

AFFIRMED