Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
Applicant's election with traverse of Group I, claims 1-6, and 23-24 in the reply filed on 12/26/2025 is acknowledged. The traversal is on the ground(s) that it is a burden to examine all the claims. This is not found persuasive the Examiner respectfully submits that the newly amended claims are grouped as the following:
Group I, claims 1-6, and 23-24, drawn to a Si-based composite bond coat comprising a thermally grown oxide (TGO) modifier and at least one oxide.
Group II, clam 9, 17-19, drawn to a Si-based composite bond coat comprising at least one rare earth aluminate; and at least one oxide.
Group III, claims 10, 14-16 and 21, a method of preparing a Si-based composite bond coat.
Group IV, claim 20, a method of applying a bond coat on a Si-based CMC, comprising: depositing the Si-based composite bond coat of claim 1 on the Si-based CMC.
Group V, claim 22, Use of a TGO modifier to suppress cristobalite TGO during thermal cycling in a gas turbine engine.
The restriction is made based on PCT practice rule and Applicant presents no clear arguments as to why a restriction under the PCT rule is improper. As for about the “not a burden" aspect, the examiner is burdened to search both relevant patent and patent applications as well as non-patent literature in the examination of the claims. Burden consists not only of specific searching of classes and subclasses, but also of searching multiple databases for foreign references and literature searches (for example, searching different classes/subclasses or electronic resources, or employing different search queries). Burden also resides in the examination of independent claim sets for clarity, enablement and double patenting issues.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20140072816.
Regarding claim 1 and 3, US20140072816 discloses an article that includes a substrate comprising a ceramic, a CMC, or a metal alloy including Si, and a bond layer formed on the substrate. In accordance with this aspect of the disclosure, the bond layer includes a substantially homogeneous mixture of Si and at least one of SiO2, Al2O3, ZrO2, a rare earth oxide, ZrSiO4, TiO2, Ta2O5, B2O3, an alkali metal oxide, or an alkali earth metal oxide(BeO, MgO, CaO, SrO, BaO, or RaO).. The article also may include at least one of a thermal barrier coating (TBC), an environmental barrier coating (EBC), or a calcia-magnesia-alumina-silicate (CMAS)-resistant layer formed on the bond layer, wherein the bond layer is configured to increase adhesion between the substrate and the at least one of the TBC, the EBC, or the CMAS-resistant layer. See [0005-0006].
The instant application discloses in [0006] that TGO modifier is defined as a rare earth aluminate, an oxide, including a rare earth oxide, Al2O3, mullite, an alkali metal oxide, an alkaline earth oxide, an alkaline earth silicate, a spinel phase AB2O4, and mixtures thereof, Thus the prior art teaches the claimed TGO modifier. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claims 4-8 and 23-24, the bond layer consists essentially of up to 99 weight percent (wt. %) Si and a balance of the at least one of SiO2, Al2O3, ZrO2, a rare earth oxide, an alkali earth metal oxide, with a total of 100 wt. %. See [0032].
Si can be in a concentration range 96 mol %, Al2O3 can be in 2 mol% and CaO or BaO or SrO can be in 2 mole%. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-6 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20140072816.
Regarding claims 1-6 and 23-24, US20140072816 discloses an article that includes a substrate comprising a ceramic, a CMC, or a metal alloy including Si, and a bond layer formed on the substrate. In accordance with this aspect of the disclosure, the bond layer includes a substantially homogeneous mixture of Si and at least one of SiO2, Al2O3, ZrO2, a rare earth oxide, ZrSiO4, TiO2, Ta2O5, B2O3, an alkali metal oxide, or an alkali earth metal oxide(BeO, MgO, CaO, SrO, BaO, or RaO).. The article also may include at least one of a thermal barrier coating (TBC), an environmental barrier coating (EBC), or a calcia-magnesia-alumina-silicate (CMAS)-resistant layer formed on the bond layer, wherein the bond layer is configured to increase adhesion between the substrate and the at least one of the TBC, the EBC, or the CMAS-resistant layer. See [0005-0006].
The instant application discloses in [0006] that TGO modifier is defined as a rare earth aluminate, an oxide, including a rare earth oxide, Al2O3, mullite, an alkali metal oxide, an alkaline earth oxide, an alkaline earth silicate, a spinel phase AB2O4, and mixtures thereof, Thus the prior art teaches the claimed TGO modifier. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The bond layer consists essentially of up to 99 weight percent (wt. %) Si and a balance of the at least one of SiO2, Al2O3, ZrO2, a rare earth oxide, an alkali earth metal oxide, with a total of 100 wt. %. See [0032].
Si can be in a concentration range 96 mol %, Al2O3 can be in 2 mol% and CaO or BaO or SrO can be in 2 mole%. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Conclusion
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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