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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, it is unclear whether “includes silicon (Si)” refers to any Si containing material or to elemental (metal) Si. The Specification appears to refer to phrase “silicon-containing” to refer to any Si containing material, but it is unclear what is required by this phrase (“includes silicon (Si)”). Analogous rejection applies to Claim 11.
Regarding Claim 1, it is unclear at what temperature the claimed CTE is to be achieved. It is well-known that CTE is temperature dependent, but it is unclear at what temperature the claimed relationship is to be obtained. Analogous rejection applies to Claim 11.
Regarding Claim 9, at line 2, it is unclear what is the antecedent basis of “intermediate layer”. Should this be “intermediate coating”? What is the relationship between the first and second intermediate layers of this claim and the intermediate coating of previous Claim 1? Must the “first intermediate layer” satisfy any or all compositional requirements of intermediate coating of previous Claim 1? Must the second intermediate layer be between the first intermediate layer and the barrier coating?
Regarding Claim 13, previous Claim 12 allows for full conversion to HfO2 and/or SiO2, in which case there could be none of HfSi2 and/or Si upon conversion. Thus, it is unclear how the barrier coating can be provided on a layer meeting the terms of previous Claim 11 in this circumstance. It is also possible that the CTE requirements could no longer apply if significant amounts of HfO2 forms.
Regarding Claim 17, at line 4, it is unclear what is meant by “mol”. Does this mean “mole” or “vol.” or something else?
Regarding Claim 20, at line 2, it is unclear what is the relationship between the first coating of this claim and the intermediate coating of previous Claim 11? Must the “first intermediate coating” satisfy any or all compositional requirements of intermediate coating of previous Claim 11? Must the second intermediate coating be between the first intermediate coating and the barrier coating?
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Previous Claim 12 allows for full conversion to HfO2 and/or SiO2, in which case there could be none of HfSi2 and/or Si upon conversion in what had been the intermediate coating. The provision of Claim 13 that forms a barrier coating on what is a coating meeting requirements of intermediate coating is broader than and fails to further limit what Claim 12 permits since full conversion implies there is none left. It is also possible that the CTE requirements could no longer apply upon less than full conversion if significant amounts of HfO2 forms. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 7, 8, 11, 14, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eaton USPN 7,060,360. Eaton teaches silicon containing ceramic (col. 2, lines 17-24) coated with intermediate layer containing silicon (Si) and refractory metal disilicide (col. 2, lines 25-46), including Hf (col. 2, line 39), further coated with barrier layer (col. 1, line 25; and Claim 1). Eaton teaches varying relative amounts of Si and HfSi2 and that the amounts of Si can be 80 atomic percent or greater (Claim 14). It would have been obvious to one of ordinary skill in the art before the time of filing to prepare article with these features since Eaton suggests they would be effective. It would have been obvious to one of ordinary skill in the art before the time of filing to prepare the intermediate layer with any of the suggested amounts of Si (80 atomic percent or more) and Hf (balance) in Eaton, which would be expected to lead to claimed CTE requirement since Si has CTE of 3. See, also, Specification (paragraph 43). Thus, as more Si is included, the layer CTE would necessarily lead to CTE in claimed range of maximum CTE 7 (using claimed units). Regarding Claim 3, for the reasons that applicant’s intermediate layer achieves this incorporation, it would be expected that the claimed feature is inherently achieved in Eaton. Regarding Claim 8, Eaton teaches yttrium silicate (Claim 1) (a RE monosilicate and/or disilicate) and, where yttrium is considered rare earth. Rejected method claims are rejected for reasons already addressed with respect to corresponding articles.
Claim(s) 4, 5, 10, 15, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eaton USPN 7,060,360 in view of Shi USPA 2021/0276925. Eaton is relied upon as set forth above in the section 103 rejection over Eaton. While Eaton teaches using silicon ceramic substrate in gas turbine environment, Eaton does not specify using silicon containing CMC. Shi teaches that silicon ceramic and silicon containing CMC are both effective substrate in gas turbine environment (paragraphs 43 and 44). It would have been obvious to one of ordinary skill in the art before the time of filing to use any effective silicon ceramic substrate, such as silicon containing CMC, in need of protection that is effective in gas turbine environment in Eaton since Eaton characterizes any silicon ceramic substrate as applicable for Eaton’s coating system protection and since Shi specifies the specific silicon containing CMC as needing protection, thus leading to claimed arrangement. It would be expected that the Shi substrates would be effectively protected by Eaton’s coating system. Eaton teaches using SiO2 layer (col. 2, line 15), which renders obvious claimed silicon containing bond coat. Rejected method claims are rejected for reasons already addressed with corresponding articles. Regarding Claim 10, Eaton does not teach provision of abradable coating. Shi teaches that silicon containing ceramic and CMC substrate having EBC thereon may be favorably further coated with abradable coating to confer closer tolerances (paragraphs 11, 12, and 41). It would have been obvious to one of ordinary skill in the art before the time of filing to articles in Eaton with abradable coating on the EBC in order to provide articles able to be used in closer tolerance configurations.
Allowable Subject Matter
Claims 2, 6, 9, 12, 17, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding Claims 2, 6, 9, 12, 13, 17, and 20, the reviewed prior art does not teach or suggest the subject matter of these claims. Particularly, the reviewed prior art does not teach or suggest articles having the claimed arrangements of layers and respective compositions in the claimed context. For example, Eaton USPN 7,060,360 teaches and suggests many claimed features for the reasons set forth above in the prior art rejections based on Eaton, but Eaton fails to expressly teach or suggest the features of these claims or provide basis for establishing the inherency of these claimed features. See Eaton (entire document).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
22 June 2026
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