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 .
The amendment of December 23, 2025 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 With the entry of the amendment, claims 5, 8, 16 and 19 are canceled, claims 12-15, 17-18 and 20 are withdrawn, and claims 1-4, 6-7, 9-11 and new claims 21-23 are pending for examination.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 § 102
The rejection of claims 1, 3, 4, 7 and 11 under 35 U.S.C. 102(a)(1) as being anticipated by Khan, et al “Heat treatment of thermal barrier coatings” (hereinafter Khan article) is withdrawn due to the amendments filed December 23, 2025 changing the scope of the claims.
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 coating includes an environmental barrier coating (EBC) layer on the substrate and an abradable layer on the EBC (as desired by claim 9) or also can be simply an EBC layer (also allowed by claim 1)(note figures 2B and 3, 0061, 0070). Li provides that the coating can include at least one of rare earth monosilicate or disilicate (note 0059 for the EBC layer, 0062 for the abradable layer). 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, 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, 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, where as desired by claim 11, this is an increased compressive residual stress compared to the as-deposited coating, however
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).
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 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, 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.
(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, 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).
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 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.
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 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, (a) firstly, 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). (b) alternatively, Li teaches that the 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), but also notes that for this treatment, furnace 18 can hold to a substantially constant heat treatment temperature or the heat treatment temperature can vary within a prescribed range over a selected period of time, and thus would allow for heating to at or above a first temperature for a first period of time, and then cooling below the first temperature and further heating back up at or above a second temperature (which is not prevented from being the same temperature as the first temperature) for a second period of time, and be suggested to provide this due to the change in exposure temperatures.
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, for option (a) as discussed for claim 21 above, 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. And for option (b) as discussed for claim 21 above, 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 28, 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 nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-7, 9-11 and 21-23 are rejected 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).
For claims 1, 3, 4, 6, 9-11: The claims of ‘379 provide a method including depositing a coating on a substrate to form an as-deposited coating, where the coating includes an environmental barrier coating (EBC) layer on the substrate and an abradable layer on the EBC (as desired by claim 9) (note claims 1-2). ‘379 provides that the coating can include at least one of rare earth monosilicate or disilicate (note claim 11). 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 claim 4), 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 about 0.5 to about 30 degrees C/min (overlapping the claimed range of claims 3, 4) (note claim 4). ‘379 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, where as desired by claim 11, this is an increased compressive residual stress compared to the as-deposited coating, or the coating exhibits a target compressive residual stress state upon cooling as desired by claim 10, however
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).
Therefore, it would have been obvious to one of ordinary skill in the art to modify ‘379 to specifically provide controlling conditions of the heat treatment in ‘379, including the heating rate, to provide a resulting compressive residual stress in the coating 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, since ‘379 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.
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 same, 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, Garcia article describes how for testing different samples can be provided (note section 2, Table 1) and also ‘379 notes a range of possible heating rates (note claim 4), 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.
As to comparing the results based on a change in curvature, Hayase describes how 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).
Therefore, it would have been obvious to one of ordinary skill in the art to modify ‘379 in view of Garcia article to use change in curvature to compare residual stress results 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, which would give the features of claims 1 and 6 as discussed above.
Claim 2: ‘379 also describes heat treating under conditions as claimed to deposit amorphous material and turn to crystalline (note claim 3). 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: ‘379 provides that the as-deposited coating is applied by thermal spray deposition (plasma spray deposition) (claim 12). Claim 21: Claim 1 of ‘379 indicates heat treating the as-deposited EBC layer, and claim 7 indicates providing a further second heat treatment after depositing the abradable layer, which would be understood to be inclusive further heat treating the as deposited EBC layer under the abradable layer to a second temperature for a second time. For claim 22: when providing the second heating as in claim 21, it would be suggested to also have this heating result in a coating that exhibits a compressive residual stress state upon cooling for the same reasons discussed for claim 1 above. For claim 23: As to providing a controlled cooling rate, Garcia article also suggests that with the controlled heating, there is also a controlled cooling rate (note page 1484).
Garcia article is used as provided with the IDS of June 4, 2024.
Response to Arguments
Applicant's arguments filed December 23, 2025 have been fully considered.
Note the adjustment to the rejections due to the amendments.
As to the use of the Kahn article reference, these rejections have been withdrawn due to the amendments to the claims.
As to the rejections using Li, they now use Li in view of Garcia article and Hayase article due to the amendments to the claims. It is argued that Hayase article uses curvature to evaluate existing stress in a TBC, and is not using curvature as a proactive election tool to dictate the specific manufacturing parameter. It is argued that because the final stress state is highly sensitive to the heating rate, selecting the rate based on a sample’s change in curvature represents a specific, non-obvious procedural feedback loop not taught or suggested by the references.
The Examiner has reviewed these arguments, however, the rejections above are maintained. Li describes how for testing different samples/examples can be provided, suggesting to perform testing on the samples to determine the best conditions, including for the heat treating process described by Li. Garcia article further suggests optimizing conditions (which would be including heating rate) to provide a desirable residual stress to close cracks, for example. Hayase article indicates how residual stress can be evaluated on an as sprayed layer with heat treatment using the curvature, thus suggesting that, with the desire to provide a desirable residual stress with heat treatment, to perform testing on the heat treated samples to determine which has the best residual stress using the testing method with the curvature, which determination would determine the heat treatment to use as that is the result effective variable. The suggestion to use the curvature testing as a proactive selection tool comes from the combination of references, with Hayase article showing how the testing works, and Li article indicating the obviousness of testing with the use of samples. It is the Examiner’s position that using curvature for testing would be obvious based on the teaching of this being known by Hayase article.
As to the obviousness type double patenting rejections, applicant argues that the amended claim 1 is patentably distinct from the applied references.
It is the Examiner’s position that claim 1 remains obvious (with the adjusted rejections) as discussed in the rejection above. Note also the arguments and response as to the 35 USC 103 rejections above.
Therefore, the rejections above are maintained.
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.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718