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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 26, 2026 has been entered.
The amendment filed with the RCE submission of June 26, 2026 has been received and entered. With the entry of the amendment, claims 5, 8, 16 and 19 are canceled, claims 12-15, 17-18 and 20 are withdrawn, and claims 1-4, 6-7, 9-11 and 21-23 are pending for examination.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on July 21, 2025 is acknowledged.
Furthermore, as to the election of species requirement from the Restriction Requirement of May 20, 2025, the Examiner spoke to attorney Peter Heinonen on August 6, 2025, where the attorney elected species (A) of the method of applying the coating of (a) of thermal spray deposition, and species (B) of the specific arrangement of the coating provided of (1) of an EBC layer on the substate and an abradable coating layer on the EBC coating. Since applicant did not distinctly and specifically point out supposed errors in the restriction requirement, this election has been treated as an election without traverse.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-7, 9-11 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al (US 2022/0002857) in view of Garcia, et al “Phase and microstructure evolution in plasma sprayed Yb2Si2O7 coatings” (hereinafter Garcia article) and Hayase, et al “Residual Stress Change in Thermal Barrier Coating Due to Thermal Exposure Evaluated by Curvature Method” (hereinafter Hayase article).
Claims 1, 3, 4, 6, 9-11: Li teaches a method including depositing a coating on a substrate to form an as-deposited coating, where the substrate can be a silicon carebide ceramic matrix composite substrate (note figures 2B and 3, 0048-0049, 0061, 0070), where the coating is a multilayer coating system (note figure 2B) comprising a silicon bond coat 26 (note figure 2B, 0052-0053), an environmental barrier coating (EBC) layer 28 that can consist of ytterbium (Yb) disilicate or monosilicate (note figure 2B, 0038, 0059, where no material other than the Yb disilicate or monosilicate is required), and an abradable coating layer 30 over the EBC layer 28 (note figure 2B, 0061-0062, giving a structure as desired by claim 9). The as-deposited coating layer is heated treated at or above a first temperature for a first period of time following the deposition of the as-deposited coating on the substrate (note figure 3, 0064, 0067, 0081, 0089, 0090), where heat treating the as-deposited coating includes heating the as-deposited coating to at or above the first temperature at a controlled heating rate, such as where the rate is 15 degrees C/min (in the claimed range of claims 3, 4) (note 0081, 0089-0090, 0127, and example temperatures 0106-0107). Li does not specifically state that the controlled heating rate is selected such that the heat treated coating exhibits a compressive residual stress state upon cooling driven by volumetric expansion, where as desired by claim 11, this is an increased compressive residual stress compared to the as-deposited coating, however, Li describes deposition of the same coating materials as described by applicant (note Li, 0059, 0062, and heat treating under temperature conditions in the claimed range, note 0106-0107) and deposited by methods that can be thermal spraying (0070), so the same compressive residual stress state upon cooling that is an increased compressive residual stress compared to the as-deposited coating is expected to occur. Note 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). "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
(A) Additionally, further as to providing the compressive residual stress upon cooling driven by volumetric expansion (which is produced when there is a phase transformation from a metastable phase to a stable phase of the ytterbium disilicate or monosilicate), Li does not specifically state that the controlled heating rate is selected such that the heat treated coating exhibits a compressive residual stress state upon cooling driven by the volumetric expansion, where as desired by claim 11, this is an increased compressive residual stress compared to the as-deposited coating, however, Li does indicate that the heat treatments can be applied to heat treat the as deposited coating (note 0023-0024), where the heat treatment can be a rate under controlled conditions, including a selected heating rate, in order to stabilize the phases in the coating, including crystallization of amorphous phase and/or transformation from metastable to stable phase, where the heating rate can be selected to slow or speed up the coating transformation rate and the temperatures at which the transformations occur, and it is noted that crystallization may induce a size change (note figures 6-7, 0033-0034, 0084). Thus, it is noted by Li that there can be a heat treatment under controlled conditions that provides a phase transformation from a metastable phase to stable phase, which can also have a crystallization of an amorphous phase and give volume change.
Garcia article describes how Yb2Si2O7 EBC coatings can be applied by plasma spraying and heat treated with a controlled heating rate (note 10 degrees C/m, for example) (note the abstract, section 1, section 2, Table 1), where it is described that heating at a controlled heating rate and time, where initial sprayed coatings are amorphous and in tensile stress, and heat treating of the coatings can give a resulting compressive stress (understood to be residual stress, that after the heating with stress relaxation etc.), which can help close cracks in the coating (note page 1484, figure 9). It is indicated that there can be an initial amorphous state with metastable material that is crystallized during the heat treatment, which promotes a volume change as the metastable material transforms to a stable phase, giving an expansion of the coating, and the compressive stress (note section 4, page 1484 and figures 8, 9).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li to specifically provide controlling conditions of the heat treatment in Li, including the heating rate, to provide a resulting compressive residual stress in the coating that is driven by a volumetric expansion produced by a phase transformation from a metastable phase to a stable phase of the ytterbium disilicate or monosilicate as suggested by Garcia article, and optimize the conditions including heating rate to provide a desirable compressive residual stress state upon cooling so that an optimum crack reduction is provided with the stress state on cooling driven by volume expansion, since Li gives a range of conditions including heating rate to optimize from, and Garcia article indicates it would be desirable for the conditions to also provide compressive residual stress, which would including providing a target stress upon cooling and an increased compressive residual stress from application, which can help close cracks in the coating, which would provide the features for claims 10 and 11, and where it would be suggested from Li that the heating/heating rate can be controlled to provide desired phase transformation from a metastable to stable phase of the silicate material, and where there is also a crystallization from amorphous state and where the heat treatment would give a size change, and Garcia article would further indicate that the heat treatment giving crystallization from amorphous phase and phase transformation from a metastable phase to a stable phase would result in ytterbium disilicate or having a volumetric expansion, and compressive stress state on cooling would be driven by the volume expansion.
(B) As to determining the heating rate to use by providing first and second sample coatings that are substantially the same before heat treating, and heat treating using first and second heating rates for the first and second samples, respectively, determining a change in curvature for each heat treated sample, where the change in curvature corresponds to phase transformation from a metastable phase to a stable phase of the ytterbium disilicate or monosilicate which produces a volume expansion, and selecting the first heating rate based on the change in curvature of the first sample, and also based on the comparisons of the two curvatures (note claims 1, 6), Li describes how for testing different samples can be provided (note 0106-0107) and also notes a range of possible heating rates (note 0080-0081), and therefore, it would be suggested that for obvious testing of heating rates, different similar samples would be provided up to the point of heat treatment and then providing different heating rates to different samples, and comparing the results to determine the optimum, as performing routine testing, resulting in selecting, for example, the first heating rate as a controlled heating rate to use.
As to comparing the results based on a change in curvature, Hayase article describes evaluating residual stress for an as sprayed layer coating system using a curvature method by determining a change in curvature (note page 1301), and also measures curvature with heat treatment (note page 1306-1307). It is indicated that the curvature shows the resulting stress with the thermal exposure that changes the residual stress from tensile to compressive (note page 1306-1307, figure 7).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Li in view of Garcia article to use change in curvature to compare residual stress results, where the change in curvature corresponds to phase transformation from a metastable phase to a stable phase of the ytterbium disilicate or monosilicate which produces a volume expansion, as suggested by Hayase article, since the desire from Li in view of Garcia article is to provide the best compressive residual stress with testing samples at different heating rates, and Hayase article indicates how residual stress can be determined using curvature measurements, and thus when providing the process of Li in view of Garcia article with determining the heating rate to use (first heating rate) as a controlled heating rate to provide the selection based on change in curvature for the heat treated first sample, including with the selecting the first heating rate based on a comparison with the change in curvature resulting for the first heat treated sample and the heat treated second sample coating, and where the change in curvature corresponds to phase transformation from a metastable phase to a stable phase of the ytterbium disilicate or monosilicate which produces a volume expansion, since as discussed above, the heat treatment would give a phase transformation from a metastable phase to a stable phase of the ytterbium disilicate or monsilicate which produces a volume expansion, and this would be reflected in the residual stress and the curvature that follows the residual stress.
Claim 2: Li also describes depositing an EBC coating and heat treating (note figures 2A, 2B, 3) under conditions as claimed (note 0106-0107), and teaches that the as deposited coating can be at least 85 wt% amorphous (note 0082), where the heating rate is in the described temperature range of 0.5-30 degrees C/min to have heat treatment at 500 degrees C to about 1500 degrees C for 0.1-100 hours to crystallize amorphous phase material (note 0081, 0126). It is also indicated that the abradable layer can be amorphous to be crystallized with heating (note 0089) and be at a similar rate to the EBC (note 0090), and heating for crystallizing the EBC and abradable layer can be done after the abradable coating applied (note 0094). It would have been obvious to optimize conditions from the taught conditions, giving a volume % amorphous in the as-deposited coating, and a crystalline volume % in the heat treated coating in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 7: In Li, the as-deposited coating is applied by thermal spray deposition (plasma spray deposition) (0070).
Claim 21: as to heat treating the as-deposited coating at or above a second temperature for a second period of time following heat treating the as-deposited coating at or above a first temperature for a first period of time, Li teaches that after a first heat treatment to as deposited EBC 28 which would be at or above a first temperature for a first period of time (note 0064, 0081), there can be a second heat treatment to layer 30 applied over layer 28 after the heat treatment to layer 28, which would be at or above a second temperature for a second period of time (note 0067, 0090, figure 2B), and since the second heat treatment would be in a furnace, the heat treatment is also understood to heat the as deposited underlying EBC 28 (note furnace 14 0090).
Claim 22: as to the second temperature being at a second selected controlled heating rate so that the heat treated coating exhibits a compressive residual stress state upon cooling, this would be suggested by the combination of Li with Garcia article and Hayase article as discussed in the rejection of claim 1 above, where the desire with the post treatment heating, including for layer 30, would be to provide a compressive residual stress state upon cooling.
Claim 23: Li would further suggest that the cooling after heat treating the as-deposited coating would be at a controlled cooling rate, because Li indicates the cooling rate (after post heat treating layer 28, for example) can be with a controlled cooling rate (note 0079, 0086), and also similarly after post heat treating layer 30, for example, a controlled cooling rate can be provided (note 0090).
Double Patenting
The rejection of claims 1-4, 6-7, 9-11 and 21-23 on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,512,379 (hereinafter ‘379) in view of Garcia, et al “Phase and microstructure evolution in plasma sprayed Yb2Si2O7 coatings” (hereinafter Garcia article) and Hayase, et al “Residual Stress Change in Thermal Barrier Coating Due to Thermal Exposure Evaluated by Curvature Method” (hereinafter Hayase article) is withdrawn due to the further requirements of the conditions in claim 1 that are not fully described in the claims of ‘379.
Response to Arguments
Applicant's arguments filed June 26, 2026 have been fully considered.
Note the adjustment to the rejections due to the amendments.
As to the arguments as to the 35 USC 103 rejection, it is argued that the references do not suggest the claimed features, including identifying the change in curvature as now claimed with the phase transformation from a metastable phase to stable phase which produces the volumetric expansion. However, it is the Examiner’s position that the combined references suggest these features as discussed in the rejection above. As to Li article being silent as to using a feedback loop, Li article, as discussed in the rejection above, provides that heating rate affects to the heat treatment results, where the heat treating can be to provide transformation from a metastable phase to a stable phase, and also to provide crystalline features from amorphous coating originally provided, where the shifting to crystalline can also provide a size change, and also shows that testing can be done, which would indicate providing testing to determine the best heating rate. When possible ranges of temperatures/times can be selected from, it is well known to be obvious to experiment or test to determine optimum ranges for use. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, before the heat treating step, it would have been obvious to perform testing on samples to determine the best heat treatment. Garcia article would further suggest that when performing heating, testing to provide conditions to provide a desirable compressive residual stress state upon cooling for the benefits of optimum crack reduction, for example. As to Garcia article not indicting to test multiple different samples at different heating rate, Garcia article would further suggest that when performing heating, testing to provide conditions to provide a desirable compressive residual stress state upon cooling for the benefits of optimum crack reduction, for example. While Garcia article is testing effects of heating on an applied EBC coating, since Li would want to determine the optimum heating rate/temperature for heating after coating, looking at studies that show what happens when providing heating after coating is pertinent and relevant. As well, while Garcia article does not change the heating rate, it shows effects on features such as metastable phase to stable phase, volume expansion, etc. resulting from heat treatment, and how samples can be reviewed, where Hayase article indicates how testing can be done using curvature as well. As to the argument that Hayase article would not suggest a testing before treatment how use of the multilayer silicate systems, it is the Examiner’s position that Hayase article it indicates how residual stress can be tested for applied coatings, including with heat treatment using curvature. This is pertinent and relevant to how to test the effects of heating on residual stress on an applied EBC/abradble coating system that has been heat treated, where Li would want to determine the optimum heating rate/temperature for heating after coating and Garcia article would indicate to provide the conditions to provide a desirable compressive residual stress, where by following the process of Hayase the stress can be tested for. As to the argument that the reliance on In re Aller is improper, arguing that the Table 1 of the present specification indicates the increase of the heating rate in the taught range does not produce a predictable or proportionate variance, and the results would be unexpected, the Examiner disagrees with this position. Li gives defined ranges of heating rates that are of a reasonable size and thus can be effectively tested for the best results. As to Table 1, two points of data would not indicate that an unexpected range is given, or that the range given is so large that unreasonable amounts of testing are needed. Li article at figure 7 notes how there can be adjustment using phase results (note 0034).
As to the obviousness type double patenting rejection, this has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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