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 Objections
Claim 1 is objected to because of the following informalities: “lay” in line 13 should be changed to “layers”. Appropriate correction is required.
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.
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Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-16 of U.S. Patent No. 12145893. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘893 teach all of the limitations in the pending claims.
Claims 1-2 and 4-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 13-14, and 21 of U.S. Patent No. 12145893 in view of Li (US 20140272249) and Sun (US 20150075714). The patent claims do not explicitly teach heating the repair material with a plasma torch after applying; however, Li teaches a slurry repair material which is subsequently heated with a torch ([0030]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the repair method of the patent claims to further include heating with a torch, as suggested by Li, because it is known post-treatment of slurry repair coatings and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the coating of the patents with a torch treatment as in Li. Sun teaches plasma spray coating device including a plasma torch for heat treatment without plasma spraying of coated surfaces is known in the art ([0044]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the plasma spray and torch treatment of the patent claims to include a plasma spray coating device including a plasma torch, as disclosed by Sun, because plasma spray coating devices including a plasma torch for heat treatment of coated surfaces are known in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the repaired coating of the combined references with a plasma torch as in Sun.
Claim 3 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 13-14, and 21 of U.S. Patent No. 12145893 in view of Li (US 20140272249), Sun (US 20150075714), and Boutwell (US 20090162539). Li in view of Sun teaches a plasma torch as discussed above. The patent claims do not explicitly each the damaged layer being hafnia; however, Boutwell teaches a damaged barrier layer for repair including hafnia (Claims 10 and 15). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the damaged layer of the patent to include hafnia, as suggested by Boutwell, because it is a known barrier layer material in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the repair of the patent with a barrier layer as in Boutwell.
Claims 10-11 and 15-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-10, 13 of U.S. Patent No. 12145893 in view of Boutwell (US 20090162539). The patent claims do not explicitly each the damaged layer being hafnia; however, Boutwell teaches a damaged barrier layer for repair including hafnia (Claims 10 and 15). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the damaged layer of the patent to include hafnia, as suggested by Boutwell, because it is a known barrier layer material in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the repair of the patent with a barrier layer as in Boutwell.
Claim 13 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-10, 13 of U.S. Patent No. 12145893 in view of Boutwell (US 20090162539) and Hisamatsu (US 20050249977). Boutwell suggest a hafnia layer as discussed above. Hisamatsu teaches the thickness for the environmental barrier coating materials is 1 μm to 600 μm ([0030]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the thickness of the hafnia layer of the patent claims to be any thickness suggested by Hisamatsu, including those within the claimed range, because Hisamatsu teaches they are suitable thicknesses and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the layer of the claims with a thickness as suggested by Hisamatsu.
Claim 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-10, 13 of U.S. Patent No. 12145893 in view of Boutwell (US 20090162539) and Zhu (Zhu, Development and Performance Evaluations of HfO2-Si and Rare Earth-Si Based Environmental Barrier Bond Coat Systems for SiC/SiC Ceramic Matrix Composites, 41st International Conference on Metallurgical Coatings and Thin Films, NASA, 2014). Boutwell suggest a hafnia layer as discussed above. Zhu teaches hafnia-silica composites as desirable bond coat systems in environmental barrier coatings for improved strength (pg. 14). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the layers of the patent claims to include a hafnia-silicon layer, as suggested by Zhu, for the benefit of improved strength.
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 1-9 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. The dependent claims do not cure the deficiencies.
Claim 1 recites the limitation "a first of the penetrated layers" in line 10. There is insufficient antecedent basis for this limitation in the claim. The claim previously recites "at least partially penetrating at least one of the layers", which includes an embodiment of a single layer; however, line 10 require multiple layers. Claim 1 also recites the limitation "another of the penetrated layers" in line 13. There is insufficient antecedent basis for this limitation in the claim for the same reasons as discussed above. For the purposes of examination, the limitation will be treated as "a damage site at least partially penetrating more than one of the layers", "repairing a first layer of the penetrated layers", and “another layer of the penetrated layers”.
Claim 3 recites the limitation "said another of the penetrated layers" in line 2. There is unclear antecedent basis for this limitation in the claim. Both Claims 1 and 2 recite “another of the penetrated layers”, it is unclear if the claim is referring to the layer of Claim 1, Claim 2, or both because these are the same layer.
Allowable Subject Matter
Claims 1-9, 11-12, and 15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and the double patenting rejection(s) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is discussed below.
Regarding Claims 1-9, The prior art does not teach or suggest a method as claimed wherein within a span of a penetrated layer, the repair layer is formed by respective sublayers of hafnium silicate, silica and hafnium oxide.
Regarding Claims 11-12, The prior art does not teach or suggest a method as claimed including forming a repair layer by plasma spray of a filler into the damage site, the repair layer having a depthwise gradation of calcium magnesium alumino-silicate.
Regarding Claim 15, The prior art does not teach spraying alternating layers including first layers comprising hafnium oxide and second layers comprising silicon.
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.
Claim(s) 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Boutwell (US 20090162539).
Regarding Claim 17, Boutwell discloses a method for repairing a coated article (abstract), the article comprising: a ceramic matrix composite (CMC) substrate ([0003]); and a coating system comprising: a plurality of layers ([0028]); and a damage site at least partially penetrating at least one of the layers ([0033]), the method comprising: applying a repair material to the damage site for repairing a first of the penetrated layers ([0033]). Boutwell teaches embodiments of barrier layers of silicon for environmental barrier coatings (claim 6) and embodiments including hafnia for thermal barrier coatings (claim 7, [0004]). Boutwell teaches layering barrier layers and teaches a TBC may be deposited on top of an EBC ([0028], [0004]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to select the materials of Boutwell to be any of the taught materials, including silicon and hafnia, because Boutwell teaches they are suitable barrier layer materials and one of ordinary skill in the art would have had a reasonable expectation of success with any of the materials taught by Boutwell.
Regarding Claim 19, Boutwell teaches barrier layers of silicon for environmental barrier coatings (claim 6).
Claim(s) 18 is rejected under 35 U.S.C. 103 as being unpatentable over Boutwell (US 20090162539) as applied to claims 17 and 19 above, and further in view of Hisamatsu (US 20050249977).
Regarding Claim 18, Boutwell teaches hafnon ([0006]), i.e. hafnium silicate. Boutwell does not explicitly teach silica; however, Hisamatsu teaches barrier coatings including silica ([0011]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the material of Boutwell to include silica, as taught in Hisamatsu, because it is a known barrier coating material in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the component of Boutwell with a silica material as taught in Hisamatsu.
Claim(s) 10, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Boutwell (US 20090162539) as applied to claims 17 and 19 above, and further in view of UCASZ (US 20160281204).
Regarding Claims 10, Boutwell discloses a method for repairing a coated article (abstract), the article comprising: a ceramic matrix composite (CMC) substrate ([0003]); and a coating system comprising: a plurality of layers ([0028]); and a damage site at least partially penetrating at least one of the layers ([0033]), the method comprising: applying a repair material to the damage site for repairing a first of the penetrated layers ([0033]). Boutwell teaches barrier layers including hafnia for thermal barrier coatings (claim 7, [0004]).
Boutwell does not explicitly teach a plasma spray repair; however, UCASZ teaches barrier layer repair including plasma spray repair of the penetrated layers using a spray apparatus (Abstract, [0015], [0040-0042]). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the method of Boutwell to include plasma spray repair of a penetrated layer, as suggested in UCASZ, because UCASZ teaches it is a known repair method in the art and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the repair of Boutwell with plasma spray as in UCASZ.
Regarding Claims 16, Boutwell teaches barrier layers of silicon for environmental barrier coatings (claim 6) and including hafnia for thermal barrier coatings (claim 7, [0004]). Boutwell teaches layering barrier layers and teaches a TBC may be deposited on top of an EBC ([0028], [0004]).
Regarding Claim 20, UCASZ teaches plasma spray repair using a spray apparatus (Abstract, [0015], [0040-0042]).
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Boutwell (US 20090162539) and UCASZ (US 20160281204) as applied to claims 10, 16, and 20 above, and further in view of Hisamatsu (US 20050249977).
Regarding Claim 13, The combined references are silent as to the thickness of the hafnia layer; therefore, one of ordinary skill in the art would have been motivated to look to related art to determine a suitable thickness. Hisamatsu teaches the thickness for the environmental barrier coating materials is 1 μm to 600 μm ([0030]). “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, 191 USPQ 90 (CCPA 1976).” MPEP 2144.05. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the thickness of the hafnia layer of the combined references to be any thickness suggested by Hisamatsu, including those within the claimed range, because Hisamatsu teaches they are suitable thicknesses and one of ordinary skill in the art would have had a reasonable expectation of predictably achieving the barrier coating of the combined references with a thickness as suggested by Hisamatsu.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Boutwell (US 20090162539) and UCASZ (US 20160281204) as applied to claims 10, 16, and 20 above, and further in view of Zhu (Zhu, Development and Performance Evaluations of HfO2-Si and Rare Earth-Si Based Environmental Barrier Bond Coat Systems for SiC/SiC Ceramic Matrix Composites, 41st International Conference on Metallurgical Coatings and Thin Films, NASA, 2014).
Regarding Claim 14, The combined references do not explicitly teach hafnia with silicon; however, Zhu teaches hafnia-silica composites as desirable bond coat systems in environmental barrier coatings for improved strength (pg. 14). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to modify the layers of the combined references to include a hafnia-silicon layer, as suggested by Zhu, for the benefit of improved strength.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TABATHA L PENNY whose telephone number is (571)270-5512. The examiner can normally be reached M-F 8:00-5:00.
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/TABATHA L PENNY/Primary Examiner, Art Unit 1712
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