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 Objections
Claims 4, 8, 10 and 13 are objected to because of the following informalities:
In claims 4, 8 and 13, “wherein the further coating is a coating selected from a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating” should be corrected to “wherein the further coating is a coating selected from a group consisting of a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating.”
In claim 10, “a) a central mould element b) a mould element coating on the central mould element c) a further coating on the mould element coating” should be corrected to “a) a central mould; element b) a mould element coating on the central mould element; c) a further coating on the mould element coating; and …” by adding proper punctuations.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4, 8, 13, 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites “wherein the further coating is a coating selected from a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating”. These coatings are functional claim term as they recite features “by what it does rather than by what it is”. The written disclosure fails to teach any specific materials that correspond to the claimed coatings. An invention described solely in terms of its function lacks written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function. The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, reduction to drawings, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see MPEP 2163). Because the specification teaches no corresponding material for the claimed bond coating, thermal barrier coating, anti-corrosion coating, friction-reducing coating, oleophobic coating, hydrogen-embrittlement protection coating, anti-oxidation coating, anti-erosion coating, and anti-fouling coating, they fail to comply with the written description requirement.
Claims 8, 13 and 17 also recite a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating without specifying the material.
Claims 4, 8, 13, 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 4 recites “wherein the further coating is a coating selected from a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating”. In view of the following Wands factors, claim 4 is not enabled:
The breadth of the claims
The scope of the claimed coatings includes all possible coatings that functions as a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating. These coatings are functional claim term as they recite features “by what it does rather than by what it is”. The claim fails to limit any particular material to the claimed coatings. Therefore, the breadth of the claims is unlimited (also see 35 U.S.C. 112(b) rejection below). Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167.
(B) The nature of the invention and (F) The amount of direction provided by the inventor
The nature of the invention deals with casting of a turbomachine requiring a very high temperature environment. Therefore, the coatings must be suitable for the very high temperature environment during casting. The specification fails to teach any particular material that correspond to the claimed coatings that are suitable for the high temperature application.
For these reasons, the claimed subject matter subject is not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 8, 13 and 17 also recite a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating without specifying the material.
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 4, 6, 8, 12, 13 and 17 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.
Claim 4 recites “wherein the further coating is a coating selected from a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating”. These coatings are functional claim term as they recite features “by what it does rather than by what it is”. The written disclosure fails to teach any specific materials that correspond to the claimed coatings. When claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope is unclear. Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167.
Furthermore, the scope of the functionality of the claimed material are also unclear. For example, it is unclear what degree of thermal protection is needed to be considered as the claimed thermal barrier coating.
Claims 8, 13 and 17 also recite a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating without specifying the material.
Claim 6 recites “optionally” and it is unclear whether the optional language is limiting the claim scope or not.
Claim 12 recites “preferably” and it is unclear whether the preferable language is limiting the claim scope or not. Claim 12 recites “the bulk of the intended casting material” which lacks a proper antecedent basis.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-10, 12-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Strangman (U.S. Pre-Grant Publication No. 2006/021731).
As per claim 1, Strangman (U.S. Pre-Grant Publication No. 2006/021731) discloses a process of forming a mould for casting metal, the process including: a) providing a coated mould element (applying temporary coating of Mo or MoC plasma onto the sand core; paragraphs [0035], [0036]); b) providing a further coating on the coated central mould element (plasma spraying yttria stabilized zirconia as a ceramic top coat onto the sand core; paragraph [0037]); and c) providing a bond coating on the further coating (followed by plasma spraying of NiCrAlY alloy which is capable of forming a highly adherent aluminum oxide scale which improves bonding to the ceramic coating; paragraphs [0012], [0037]).
As per claim 3, Strangman discloses the process according to claim 1, and further discloses wherein one or both of the further coating and the bond coating are provided via thermal spraying and/or dipping (the step of applying the ceramic coating is performed by a thermal spraying process; paragraph [0009]).
As per claim 4, Strangman discloses the process according to claim 1, and further discloses wherein the further coating is a coating selected from a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen-embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, and an anti-fouling coating (yttria stabilized zirconia; paragraph [0036]).
As per claim 5, Strangman discloses the process according to claim 1, and further discloses wherein the mould element is a central core (sand core of turbine housing unit; paragraph [0035]).
As per claim 6, Strangman discloses the process according to claim 1, and further discloses wherein the mould element is in the shape of an internal passage of a turbomachine, optionally in the shape of an internal volute of a turbine housing of a turbomachine (sand core of turbine housing unit; paragraph [0035]).
As per claim 7, Strangman discloses a method of casting a housing for a turbomachine having an internal coating, the method including: a) providing a multi-layered core having a central core (S2; figure 2), a core coating (S4-1), a further coating, and a bond coating in said order (step S6-1 having a ceramic top coat and a NiCrAlY coat (bond coat); paragraph [0037]); b) providing a casting mould including the multi-layered core (S8), said casting mould and multi-layered core defining a cavity (mold which is an approximate duplicate of the outside of the turbine housing unit, i.e., having a cavity; paragraph [0038]); c) introducing molten metal into the cavity (pouring stainless steel; paragraph [0039]); and d) allowing the molten metal to solidify in the cavity to form a housing casting intermediary (the stainless steel is solidified; paragraph [0039]).
As per claim 8, Strangman discloses the method according to claim 7, and further discloses wherein the further coating is selected from a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating an anti-oxidation coating, an anti-erosion coating, a hydrogen-embrittlement protection coating, or an anti-fouling coating (yttria stabilized zirconia; paragraph [0036]).
As per claim 9, Strangman discloses the method according to claim 7, and further discloses wherein the method further includes removing the central core and the core coating thereby leaving the bond coating and further coating on the surface of the housing casting intermediary (the turbine housing made from casting has ceramic coating 10 including a ceramic top coat of yttria stabilized zirconia and a NiCrAlY bond coat; paragraph [0033]).
As per claim 10, Strangman discloses a mould element for use in casting metal, the mould element including: a) a central mould element; b) a mould element coating on the central mould element (applying temporary coating of Mo or MoC plasma onto the sand core; paragraphs [0035], [0036]) c) a further coating on the mould element coating (plasma spraying yttria stabilized zirconia as a ceramic top coat onto the sand core; paragraph [0037]); and d) a bond coating on the further coating (followed by plasma spraying of NiCrAlY alloy which is capable of forming a highly adherent aluminum oxide scale which improves bonding to the ceramic coating; paragraphs [0012], [0037]).
As per claim 12, Strangman discloses the mould element according to claim 10, and further discloses wherein the bond coating includes a metal which forms the bulk of the intended casting material, preferably iron or aluminum (NiCrAlY alloy bond coating having Ni for FeCrNi Steel having 19-22% wt% Ni; paragraphs [0037], [0039]).
As per claim 13, Strangman discloses the mould element according to claim 10, and further discloses wherein the further coating is selected from a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, or an anti-fouling coating (yttria stabilized zirconia; paragraph [0036]).
As per claim 14, Strangman discloses the mould element according to claim 10, and further discloses wherein the mould element is a core (sand core; paragraph [0035]).
As per claim 15, Strangman discloses the mould for producing a housing of a turbomachine, the mould including a mould element according to claim 10 (sand core for making turbine housing unit; paragraph [0035]).
As per claim 16, Strangman discloses a housing for a turbomachine, the housing including an internal volute surface (6; figure 1), wherein the internal volute surface includes a barrier coating (10) bonded to the internal volute surface of the housing via a bond coating (via NiCrAlY bond coat; paragraph [0033]).
As per claim 17, Strangman discloses the housing for a turbomachine according to claim 16, wherein the barrier coating is selected from a thermal barrier coating, an anti-corrosion coating, a friction-reducing coating, an oleophobic coating, a hydrogen embrittlement protection coating, an anti-oxidation coating, an anti-erosion coating, or an anti-fouling coating (yttria stabilized zirconia; paragraph [0036]).
As per claim 18, Strangman discloses a turbine housing manufactured according to claim 1 (turbine housing unit produced by sand casting; paragraph [0034]).
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) 2 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Strangman in view of “Core Washes” by Hill and Griffith.
As per claims 2 and 11, Strangman discloses the process according to claim 1 and the mould element according to claim 10. Strangman does not explicitly teach wherein providing a coated mould element includes providing a sand-based mould element having a water-based core coating.
Hill and Griffith teaches core washes which are applied to the core having a water-based solution such as their EZ KOTE 1004 or EZ KOTE G PLASTIC PM used for both ferrous and non-ferrous applications (page 3). Hill and Griffith teaches that the water-based core wash such as the EZ KOTE 1004 can be applied by brushing, dipping or sparying, and improve workability, consistency and casting quality (page 3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Strangman’s core to incorporate Hill and Griffith’s water based wash coat because as Hill and Griffith teaches, the water based wash coat can improve workability, consistency and casting quality (page 3).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Giovannetti (U.S. Patent No. 10,012,237) teaches a method of making an impeller having a erosion resistant coating by covering the mold with the erosion resistant coating.
Britz (U.S. Patent No. 11,753,726) teaches a method of applying a multiple layers of coating for a turbine component.
Halil (U.S. Patent No. 2024/0066589) teaches a method of transplanting a thermal barrier coating by applying the TBC to a core and then casting in the mold.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANG K KIM whose telephone number is (571)272-1324. The examiner can normally be reached Monday - Friday 8:30 am - 5:00 pm EST.
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/SANG K KIM/Primary Examiner, Art Unit 3745
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