DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/29/2026 has been entered.
Response to Amendment
Applicant’s amendments, filed 4/29/2026, have been fully entered and considered by the examiner. Examiner notes amendment to claims 13. Claims 13-21 are pending.
Response to Arguments
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive as they are directed towards newly added claim requirements specifically addressed hereinafter.
Applicant’s arguments with respect to the result effective natures of the pulsing frequency, arguing that the prior art does not illustrate a correlation of the thickness uniformity and the pulsing frequency and thus the Applicant’s maintain that the pulsing frequency is not established as a result effective variable. The examiner disagrees with this assertion and notes Ma explicitly discloses the pulse frequency directly affecting the residual stress and adhesion of the TiN coatings (see Figure 4) and thus is clearly a result effective variable. There is no requirement in the claims or otherwise that would require the uniformity to be linked to pulse frequency or that this alleged relationship offers an unexpected result for the breadth of the claim as drafted.
Applicant’s arguments Lipkin is noted; however, such is not persuasive. While Lipkin discloses external coating, both Giannozzi and Lipkin or WO 000 are dealing with erosion control layers and Lipkin illustrates that a hard erosion control material made of single layer of TiN is well known in the prior art. The mere placement of the erosion control layer in Lipkin is not dispositive of the teaching of the prior art and what is would suggest to one of ordinary skill in the art and their understanding, that is erosion control layers for airfoils can including a single layer of a single material. The location of the erosion control layer is taught by Giannozzi.
Therefore, taking the level of one of ordinary skill in the art at the time of the invention, using a single layer TiN, which would meet the claim requirement of the same material from inner surface through its thickness to exposed surface, as the erosion layer would have been obvious as predictable as EP 2226409 and WO 20151210000 each individually disclose the erosion layer can be a single layer or multiple layers and selection of single layer would be predictable as a known erosion control for turbine components. Applicant’s arguments are directed towards the deficiencies of the individual references when the rejection is based on the combination of references. Please note that the test of obviousness is not an express suggestion of the claimed invention in any or all references, but rather what the references taken collectively would suggest to those of ordinary skill in the art presumed to be familiar with them (In re Rosselet, 146 USPQ 183).
Applicant’s argue that Giannozzi teaches away from a single material hard corrosion layer; however, the examiner cannot locate any evidence of a teaching away. The totality of the prior art reference suggest that a single layer of a single material is a known erosion control material and thus using such would offer predictable results.
Applicant’s argue that the prior art discloses sublayers of TiN, stoichiometric composition and non-stoichiometric composition, and argues that these TiN layers are not the same material and therefore cannot read on the claimed requirement that indicates that the hard coating is made of a single material from the inner surface of the substrate to the exposed face of the hard surface. Here, this argument appears to infer that the scope of the claims limit the hard coating to a single material throughout its thickness; however, there is no disclosure that the hard coating is in fact a single material throughout its thickness and merely refers to the hard coating as TiN and no reference to the presence or absence of the same stoichiometry throughout the thickness.
While the examiner notes the requirement for the single material from substrate body to exposed face, the examiner notes the Giannozzi discloses a TiN material, and articulates it as multiple “sublayers” and while TiN whether stoichiometric or non-stoichiometric would be the same material as instantly claimed (i.e. both are TiN), the examiner provided additional references that would suggest a single TiN layer is known and suitable for erosion control layer for airfoils.
The claimed thickness ratio, specifically arguing that any first and second regions need to be in the range and thus the prior art does not disclose such. The examiner again notes that the scope of the regions is not defined nor is it limited to any number or location of the regions. Here, as noted above, the claims do not quantify the first and second regions and therefore the prior art will include a process that comprises depositing a hard coating that meets this claim requirement (i.e. a first and second region with thickness ratio as claimed). In other words, the claims require comprising language and a first region and second region that has the thickness ratio as claimed and the prior art will necessarily have a first and second region as claimed (at the very least a neighboring region will have the thickness ratio as claimed) and therefore encompasses a process that “comprises” any first and second region (undefined) that meets the claimed thickness ratio. Regardless, the uniformity of the coating is made obvious by Upadhyaya et al. as outlined hereinafter.
Applicant argues that the coating process, specifically PECVD and the deposition parameters in the Ma reference differ from those of the present disclosure. This argument is noted but not persuasive as the claims do not require any process parameters that would differentiate over the disclosure of Ma. Here, Giannozzi discloses CVD for TiN deposition and Ma discloses PECVD, which is a type of CVD, for TiN deposition. As such, the examiner maintains the prior art combination would make obvious the deposition of TiN via the process as described by Ma.
Applicant’s argue that the prior art discloses sublayers of TiN, stoichiometric composition and non-stoichiometric composition, and argues that these TiN layers are not the same material and therefore cannot read on the claimed requirement that indicates that the hard coating is made of a single material from the inner surface of the substrate to the exposed face of the hard surface. Here, this argument appears to infer that the scope of the claims limit the hard coating to a single material throughout its thickness; however, there is no disclosure that the hard coating is in fact a single material throughout its thickness and merely refers to the hard coating as TiN and no reference to the presence or absence of the same stoichiometry throughout the thickness.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Giannozzi discloses TiN deposition by any known technique and exemplifies using CVD and Ma discloses PECVD for TiN deposition and PECVD is a CVD method as specifically articulated by Giannozzi and also a known technique for depositing TiN.
Applicant’s arguments with respect to Upadhyaya are noted, but argues that this reference amounts to four references in the rejection and “the use of so many references to reconstruct the claimed invention is indicative of hindsight reasoning”. In response to applicant’s argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
As specifically outlined in the prior art rejection of record, erosion layers in the interior of hollow fluid passage by CVD (and PECVD, which is a CVD method) is known by the prior art, including TiN single layers, and depositing TiN as uniformly in the hollow passage is known and predictable, the examiner has set forth a prima facie case of obvious over the broadly drafted claim and Applicant’s mere arguments to the contrary are unsupported by factual evidence for the reasons set forth above. As such, examiner maintains the Applicant has not provided any factual evidence that would reasonably rebut the examiner’s prima facie case of obviousness.
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.
Claim(s) 13-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application 20170051616 by Giannozzi et al. taken with Ma et al. (Parametric effects of residual stress in pulsed d.c. plasma enhanced CVD TiN coatings.) with US Patent 8715789 by Upadhyaya et al. alone or with EP 2226409 and WO 20151210000.
Examiner incorporates herein by reference the Response to Arguments section above in its entirety.
Claim 13: Giannozzi et al. discloses a method of mitigating solid particle erosion in a gas turbine engine, comprising: obtaining a component of the gas turbine engine, the component having a body made of a substrate material, the body being hollow and defining a fluid passage inside the body, the fluid passage bounded by an inner surface (0051); and applying a hard coating on the inner surface of the body with a vapour deposition (0042-0044) method until a thickness of the hard coating reaches at least 0.5 μm (0040-0043) and until a ratio of a coating thickness at a first region of the hard coating to that at a second region of the hard coating from 0.75 to 1.33 (Figure 5 and accompanying text, herein the scope of the first region and second region as such that they encompass any regions, including adjacent regions and therefore it would be expected the thickness to have a ratio as claimed in some first region relative to some second region. )
The claim requirement “ratio of first to second coating thickness of any two first and second regions” is met by the prior art and the comprising language of the claims. Here, as noted above, the claims do not quantify the first and second regions and therefore the prior art will include a process that comprises depositing a hard coating that meets this claim requirement (i.e. a first and second region with thickness ratio as claimed). In other words, the claims require comprising language and a first region and second region that has the thickness ratio as claimed and the prior art will necessarily have a first and second region as claimed (at the very least a neighboring region will have the thickness ratio as claimed) and therefore encompasses a process that “comprises” any first and second region (undefined) that meets the claimed thickness ratio.
Giannozzi discloses the hard coating covering the inner surface and defining an exposed surface bound by the fluid passage is a single material from the inner surface of the substrate to the exposed surface of the hard coating (see e.g. 0039 as it relates to all sublayers being TiN). Additionally, as specifically articulated previously, the claims are broadly drafted to include various other claim requirements and there is no requirement that the claims foreclose additional layers nor that the claimed hard coating remains the exposed surface during utilization and therefore the sublayers as individually deposited are deposited on the inner surface and define an exposed surface bounding the fluid passage and configured to be exposed to a fluid flowing in the fluid passage and made of a single material from the inner surface to the exposed surface as claimed. The mere fact that the prior art disclose additional sublayers before or after the single material coating is not dispositive as the claims as drafted do not foreclose such additional sublayers.
In other words, the fluid flowing in the passage is not defined nor limiting nor is the substrate material defined and therefore, even if we take the applicant’s position that the full thickness and entirety of the layer are exactly the same material, with no deviations, each sublayer of Giannozzi, including the first layer of TiN, would be configured to extend from the inner face of a substrate to an exposed face, where the exposed face is configured to be exposed to a fluid, i.e. gas, flowing in the fluid passage (i.e. exposed to the gases of the next sublayer).
As for the requirement of the thickness ratio of the first and second regions and the hard coating is uniformly distributed along the entirety of the inner surface, the examiner cites here Upadhyaya, also in the art of pulsed DC plasma high aspect ratio hollow articles, and forming a uniform thickness in the interior region of the high aspect coating, a uniform coating reads on or makes obvious a ratio of first thickness to second coating thickness of any two first and second regions of 1 (column 4, lines 32-55). Therefore, it would have been obvious to have modified Giannozzi et al. taken with Ma et al. to deposit the coating with a uniformity as suggested by Upadhyaya who explicitly discloses the desired and ability “to provide a uniform thickness coating down the length” (column 14, lines 17-18).
While the examiner notes the requirement for the single material from substrate body to exposed face, the examiner notes the Giannozzi discloses a TiN material, and articulates it as multiple “sublayers” and therefore for the sake of compact prosecution, the examiner cites here EP 2226409, which discloses an erosion layers for turbine and discloses “Of the erosion-resistant ceramic and cermet materials, single layers TiN or WCCoCr, or a multilayer structure that includes a plurality of layers of Ti and TiN, have been tested and are particularly suitable for use as erosion-resistant coating.” In addition, WO 20151210000 discloses “the hard coating (4) consists of TiN, TiAlN, AlTiN, CrN as single or multilayer ceramics or TiN, TiAlN, AlTiN, CrN contains as single or multi-layer ceramics” (see e.g. claim 2). Therefore, taking the level of one of ordinary skill in the art at the time of the invention, using a single layer TiN, which would meet the claim requirement of the same material from inner surface through its thickness to exposed surface, as the erosion layer would have been obvious as predictable as EP 2226409 and WO 20151210000 each individually disclose the erosion layer can be a single layer or multiple layers and selection of single layer would be predictable as a known erosion control for turbine components.
Giannozzi discloses various coating methods including CVD and PVD to coat the interior surface with the hard coating, including TiN, however, fails to disclose the claimed plasma CVD. However, Ma, also in the art of depositing TiN hard coatings, including those in hollow areas of the substrate (grooves/holes) and discloses the hard coatings, such as TiN, are known to be deposited by pulsed DC plasma CVD (title, abstract, introduction) and discloses the adhesion of the TiN can be developed and enhanced by using the claimed deposition process and adjusting the parameters to achieve the TiN hard coating.
Therefore, taking the references collectively, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Giannozzi, who discloses using various vapor deposition processes to deposit TiN hard coatings, and utilized the known vapor deposition process to deposit TiN hard coatings includes pulsed DC plasma CVD and one would find predictable results in utilizing such a process.
Claim 14: Ma discloses pulsed direct current plasma coating method (title).
Claim 15: Ma discloses pulsed direct current plasma coating method includes pulsing the plasma at a frequency of about 5 KHz (Experimental) At the very least, Ma discloses the pulsing frequency is a result effective variable, directly affecting the coating properties (see Figure 4) and determination of the appropriate frequency would have been obvious through routine experimentation.
Claim 16-18: Giannozzi discloses erosion improvement factor that would appear to read on the claims as drafted (see e.g. Figure 1, sold particle erosion with and without the hard coating). Additionally, Giannozzi with Ma discloses the hard coating is applied to provide erosion protection, at a thickness within the claimed range, and using a material that provided hard coating properties (i.e. erosion improvement) and while there reference fails to disclose the claimed “erosion improvement factor”, initially, the prior art discloses and/or makes obvious the totality of the instant claim requirements and that disclosed by the applicant as being necessary to achieve the claimed “erosion improvement factor” and therefore the prior art would necessarily have the same results, unless the applicant is using undisclosed or unclaimed process steps or conditions. Additionally, the TiN coating applied by Giannozzi is deposited to provide erosion improvement and therefore it would have been obvious to have determined the optimum deposition to provide the optimized “erosion improvement factor” to reap the benefits as outlined by Giannozzi, that is providing a hard coating that protects against solid erosion for a period of time.
Claim 19: Giannozzi discloses applying the hard coating on the substrate material being metallic (0051)
Claim 20: Giannozzi discloses applying of the hard coating includes applying a titanium based hard coating (0037-0039).
Claim 21: Giannozzi et al. taken with Ma et al. discloses all that is taught above and discloses pulsed direct current plasma coating method (see discussion above); however, fails to explicitly disclose the hollow cathode to confine the plasma as claimed. However, Upadhyaya also in the art of pulsed DC plasma high aspect ratio hollow articles discloses using hollow cathode arrangement to achieve confinement of the plasma (see abstract, column 1-column 2) and therefore taking the references collectively it would have been obvious to have used the hollow cathode arrangement as taught by Upadhyaya to achieve the desired plasma confinement as such is taught by Upadhyaya as a method for achieving pulsed plasma deposition onto interior of high aspect ratio hollow substrate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/ Primary Examiner, Art Unit 1718
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