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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 10-12 recite the limitations of “one irregular zone…that forms a rounded corner”, and “wherein the rounded corner forms a local angle greater than or equal to 15o / 20o”. Nowhere in in Applicant’s originally filed specification is a “rounded corner form(ing) a local angle greater than or equal to 15o / 20o” explicitly recited, the written disclosure doesn’t even use the term “corner”. As such the above recited limitations directed to features associated with a corner are not adequately supported by the original disclosure.
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 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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kirby et al (US 2011/0027470; hereafter Kirby).
Claims 1, and 13-14: Kirby teaches a method for coating a ceramic matrix composite (CMC) part with an environmental barrier (such as any of 16-20 individually or collectively) (see, for example, abstract, Fig 1, [0004-5]), the method comprising the following steps:
a) applying, to a surface of the part, a coating composition comprising a first powder of a rare earth silicate (primary material as rare earth mono or disilicate) and a second powder (sintering aid) comprising a boron powder (such as boron) (see, for example, [0023], [0025], [0043], [0045], [0048], [0054], and examples),
the coating composition further comprising up to 20 wt% of the sintering aid and from 3.9 wt% to about 93.2 wt % primary material (further in an exemplary embodiments 56.11% ytterbium disilicate to 0.54% sintering aid (R~0.96%), 61.19 ytterbium monosilicate to 0.29% sintering aid (R~0.47%), and 56.35% ytterbium disilicate to 0.64% sintering aid (R~1.14%) (See, for example, [0043], [0083-0085], [0089]). Although no specific exemplary embodiments particularly recite the second powder as comprising boron satisfying the ratio R = [mass of the second powder]/[mass of the first powder] of between 0.1% and 5%, further 0.1% to 2%, further still substantially equal to 1%, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a concentration of boron sintering aid within the claimed range since the exemplary embodiments range in a an R ratio of from 0.47%-1.14% and since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
b) sintering the first and second powders to obtain the environmental barrier on the part (See, for example, [0066]).
With respect to the added limitation of the second powder being a fluxing agent and making the coating composition viscous to accommodate stresses and preventing cracking of the EB during sintering, the examiner asserts that such initial material properties and resulting material properties are inherent within the teachings of Kirby, as Kirby has explicitly taught the same “second powder” material as Applicant has, such as boron / boron oxide (see rejection of claim 2 below) if such explicitly claimed material as boron oxide is capable of being a fluxing agent, and making the coating composition viscous to accommodate stresses / prevent cracking for applicant, so too would the boron /boron oxide taught in Kirby be capable of achieving the same resulting material properties. Additionally, per the rejection above, as well as the rejections of claims 2-4 Kirby has taught the same reacting species of the composition (sintering aid :such as boron oxide) and the same rare earth silicate as corresponding R values), as well as sintering conditions, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 2: Kirby further teaches wherein more than one sintering aid can be present, and wherein the sintering aid / the second powder further comprises a boron oxide powder (see, for example, [0043], [0048]). Additionally / alternatively although no exemplary embodiment is explicitly recited with both boron and boron oxide, each has been designated as a suitable sintering aid, therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated amounts of both boron and boron oxide as the sintering aid since “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claim 3: Kirby further teaches the rare earth silicate is Ln2Si2O7 or Ln2SiO5 further wherein Ln is inclusive of mixtures of Yb and Y (See, for example, [0023], [0045]).
Claim 4: Kirby further teaches sintering at a temperature of 1100oC to 1700oC, further 1300oC to 1375oC (See, for example, [0066]). Although such a range is not explicitly a temperature greater than or equal to 1350°C, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a sintering temperature within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 5: Kirby further teaches wherein the slurry comprising the first and second powders are of a size suitable to pass through a 325 mesh screen (~less than 44 micron). Although such a range is not explicitly wherein the second powder as possessing an average particle size of between 0.1 and 5 micron. it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the second powder at such a size since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 6: Kirby further teaches wherein the coating composition is applied to a bonding layer (14) comprising silicon (such as silicon metal) and present on the surface of the part (see, for example, Fig 1, [0020-21]).
Claim 7: Kirby further teaches wherein steps a) and b) are repeated to obtain the environmental barrier (see, for example, [0083] or [0085] wherein repetition aids in building up of EBC thickness).
Claim 8: Kirby further teaches wherein the surface of the part to which the coating composition is applied during step a) locally forms an angle greater than or equal to 15° (see, for example, [0019] wherein the part includes components for high temperature environments such as combustor components, turbine blades, vanes which surfaces inherently comprise angles larger than 15o (such as transition from leading edge to trailing side, or transition about trailing edge)).
Claim 9: Kirby further teaches wherein the part a turbomachine part (see, for example, [0003-0004], [0019]).
Claim 10-12: Kirby further teaches wherein the coating composition is applied during step a) on at least one irregular zone of the surface of the part that forms a rounded corner (see, for example, [0003-0004] [0019], figure 2 (demonstrating such an irregularity of the surface), wherein the part includes components for high temperature environments such as combustor components, turbine blades, vanes which surfaces inherently comprises irregular zones that form rounded corners, further comprising angles greater than or equal to 15o, further greater than or equal to 20o (such as depicted portion of figure 3, or portions of transitions from leading edge to trailing side, or transition about trailing edge or leading edge)).
Claim(s) 3 and 5 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Kirby as applied to claim 1 above, and further in view of Kirby et al (US 2016/0108510; hereafter Kirby510).
Claim 3: Kirby teaches the rare earth silicate is Ln2Si2O7 or Ln2SiO5 further wherein Ln is inclusive of mixtures of Yb and Y (See, for example, [0023], [0045]), but does not teach an exemplary embodiment with a Yb-Y mono/di silicate. Kirby510 teaches a method of coating a CMC with an environmental barrier coating comprising rare-earth silicate and sintering aid (See, for example, abstract, [0001]). Kirby510 further teaches wherein the rare earth silicate similarly comprises a mixture of rare-earth elements, and exemplifies the mixed rare-earth silicate as a Yb-Y monosilicate or Yb-Y disilicate, further at Yb0.6 and Y0.4 (see, for example, [0029]). And further wherein such a mixed rare earth predictably protects CMCs from the high temperature steam environments present in gas turbine engines (See, for example, [0006-10]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a mixed Yb-Y SiO5 or Yb-Y Si2O7 as such mixtures were generally disclosed by Kirby and as Kirby510 demonstrates that these particular mixtures achieve the predictable result of EBC coatings on CMCs with improved high temperature steam protection.
Claim 5: Kirby510 further teaches wherein sintering aids act predictably when provided in the order of 5 nm to 3 micrometers (see, for example, [0047]). Although such a range is not explicitly 0.1 to 5 micrometers, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated the second powder sintering aid at a particle size within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claims 8, and 10-12 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Kirby as applied to claim 1 above, and further in view of Cybulsky et al (US 2010/0129636; hereafter Cybulsky).
Claim 8: Kirby teaches the method of claim 9, but does not explicitly recite the part to which the coating composition is applied during step a) locally forms an angle greater than or equal to 15°. Cybulsky teaches method of providing EBCs on CMCs including rare earth silicates (See, for example, abstract, [0009-011]). Cybulsky further teaches wherein the substrate surface is patterned, such as with an array of parallel rectangular ridges (~90o angles), to improve adhesion between the EBC and the substrate surface (see, for example, Fig 4, [0050]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have applied the coating composition during step a) to a part that locally forms 90o angles as such a surface pattern would predictably improve adhesion between the surface and the EBC.
Claim 10-12: Cybulsky further teaches wherein the patterned surface can include patterns of a variety of shapes and structures including grooves, ridges, array of lines, in two or more directions, array of rectangles (on the order of ~90o), triangles, diamonds, or other shapes, wherein such surfaces would inherently comprise irregular zones that form rounded corners, further comprising angles greater than or equal to 15o, further greater than or equal to 20o (such as portions of transitions from leading edge to trailing side, or transition about trailing edge or leading edge)).
Response to Arguments
Applicant’s amendments to claim 1, filed 9/2/25, have been fully considered and are persuasive with respect to the previously applied 35 USC 112 b rejection to claim 1; therefore it has been withdrawn. The examiner notes that Applicant’s additional amendments / newly added claims have resulted in new grounds of 35 USC 112 (a) rejections as described above.
The terminal disclaimer filed on 9/2/25 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 11,814,325 has been reviewed and is accepted. The terminal disclaimer has been recorded. As such the previously applied double patenting rejections have been withdrawn
Applicant's remaining arguments filed 9/2/25 have been fully considered but they are not persuasive.
Applicant argues (pg 5-7) that Kirby has only taught boron / boron oxide from within a “laundry-list style disclosure” of sintering aids with only “general guidance”, and thus the Examiner’s reliance thereon is not apt. The examiner maintains that a reasonable expectation of success exists from choosing the specific taught species from explicitly taught lists. And further per MPEP 2131.02 II. “when the species is clearly named, the species claim is anticipated (rendered obvious) no matter how many other species are additionally named. Ex parte A 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). Thus the examiner maintains reliance upon Boron / Boron oxide from Kirby is apt.
In response to applicant's argument (pg 5) that “there is no mention in Kirby of using boron to address crack formation or stress accommodation”, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As outlined in the rejection above, Kirby has taught the same sintering aid (boron / boron oxide) in combination with the same EBC composition and sintering under the same conditions as applicant, thus the material properties of the boron / boron oxide and the resulting materials properties of the sintered system would be inherently the same.
Applicant argues that Kirby’s cautioning of residual borosilicate glass teaches away from using boron. The examiner maintains that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Kirby has explicitly stated boron and boron oxide as the sintering aid (such as at [0048], claim 7); thus teaching towards, not away from them.
Applicant argues (pg 7) that the concentration of sintering aid (or in other words the ratio of sintering aid to silicate) is not recognized as a result effective variable. The examiner disagrees and notes that per MPEP 2144.05 II A: generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Further, by name, the argued species is a “sintering aid” thus it “aids” sintering and further inherently there exists an economy of how much to use; too much and you’re wasting materials / money, too little and you’re not getting the desired benefits. Kirby has further explicitly taught ranges and exemplary concentrations of suitable amounts of sintering aid, therefore the examiner maintains the relative amount has been established as result effective.
Applicant argues (pg7-10) that the particular addition of boron results in unexpected results with respect to crack suppression further citing pg 8 lines 23-32 and Fig 3-4 as support. The examiner notes the argued evidence appears to compare only two samples one defined as being “formed by a method outside the invention without boron” and the other “obtained by implementing the invention”. The description of these two trials provide no detail as to the chemistry of the part, no detail as to coating composition / first powder / second powder and teach sintering at 1300C and 1350C respectively, the R value of the second trial was at 1%. Assuming all conditions with the exception of the presence of boron were kept constant; these two samples would thus have been performed on a particular ceramic matrix composite part / surface (possibly with an intervening layer) of a unique chemistry, with a singular particular chemistry of rare earth silicate powder, and wherein the second powder appears to be boron. The claimed scope however is open to any ceramic matrix composite part, with or without intervening coatings, with a composition open to any number of powders, a first powder of any rare earth silicate, and a second powder comprising boron, being sintered at any temperature, and possessing an R ratio of from 0.1% to 5%. In light of the above, there is no adequate basis for reasonably concluding that the great number and variety of compositions / materials / conditions included in the claims would behave in the same manner as the one unique combination tested (MPEP 716.02(d)). In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
As to the remaining dependent claims they remain rejected as no additional separate arguments are provided.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/ Primary Examiner, Art Unit 1712