GENERAL ELECTRIC COMPANY

Patent Trials and Appeals Board

May 26, 2021

2020005417 (P.T.A.B. May. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/489,686 09/18/2014 Surinder Singh PABLA 275029/22113-0213 1458
13152 7590 05/26/2021
McNees Wallace & Nurick LLC
100 Pine Street
P.O. Box 1166
Harrisburg, PA 17108-1166
EXAMINER
LEGENDRE, CHRISTOPHER RYAN
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
05/26/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@mcneeslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURINDER SINGH PABLA, LUC STEPHANE LEBLANC, and
DONALD EARL FLOYD
Appeal 2020-005417
Application 14/489,686
Technology Center 3700
Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 8–13, 15–17, and 19–22. See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Surinder Singh Pabla,
Luc Stephane LeBlanc, Donald Earl Floyd, and the General Electric
Company. Appeal Br. 1.
Appeal 2020-005417
Application 14/489,686
2
CLAIMED SUBJECT MATTER
The claims are directed to an abradable seal and method for forming
an abradable seal. See Spec. ¶ 1. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. An abradable seal arrangement comprising:
a metallic substrate having an inner circumferential
surface; and
a multi-layered ceramic coating on the inner
circumferential surface, said multi-layered ceramic coating
comprising:
a base layer deposited on the inner circumferential surface,
an abradable layer of an abradable material of a first yttria
stabilized zirconia (YSZ) comprising 18 to 20 wt% yttria
overlaying the base layer, and
an abrading layer of an abrading material of a second YSZ
comprising 7 to 8 wt% yttria overlaying the abradable layer,
wherein said abradable material is abraded by a rotating
component when contacted by the rotating component, wherein
said abrading material abrades the rotating component when
contacted by the rotating component, wherein said abrading layer
is configured and arranged to wear down the rotating component
positioned in proximity to and impinging on said abrading layer
such that a non-uniform length of said rotating component is
altered, and wherein the base layer comprises a base layer
microstructure having dense vertical microcracks.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nissley US 5,705,231 Jan. 6, 1998
Rohrer Boutwell US 7,476,453 B2 Jan. 13, 2009
Nelson US 7,614,847 B2 Nov. 10, 2009
Bagnall US 9,752,593 B2 Sept. 5, 2017

Appeal 2020-005417
Application 14/489,686
3
REJECTIONS2, 3
Claims 1–5, 8, 15–17, 19, 21, and 22 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Bagnall and Nissley. Final Act. 4.
Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bagnall, Nissley and Rohrer Boutwell. Final Act. 14.
Claims 11–13 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bagnall, Nissley, and Nelson. Final Act. 15.
OPINION

Rejection of claims 1–5, 8–13, 15–17, and 19–22
Appellant argues claims 1–5, 8, 15–17, 19, 21, and 22 as a group.
App. Br. 5–10. We select claim 1 as the representative claim, and claims 2–
5, 8, 15–17, 19, 21, and 22 will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii). Arguments for claims 9–13 and 20 are premised entirely
on dependency. Appeal Br. 10–12.
Appellant’s invention includes an outer stationary component 101 and
an inner rotating component 107. Spec. Fig. 1. The stationary component
101 comprises, from the stationary component 101 towards the rotating
component 107: a metallic substrate 203, a bond coating 205, a base layer

2 The Final Office Action dated 08/29/2019 rejected claim 8 under
35 U.S.C. § 112(b) as being dependent upon a cancelled claim. Final Act. 3.
Appellant submitted amended claims, with claim 8 depending from
independent claim 1 on 10/25/2019. This amendment was accepted by the
Examiner in the Advisory Action dated 11/26/2019.
3 References to the Answer (“Ans.”) made herein are to the 2nd or
Subsequent Examiner’s Answer entered June 23, 2020, which according to
the Examiner does not substantively differ from the Answer entered May 15,
2020. Ans. 2.
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Application 14/489,686
4
207, an abradable layer 209, and an abrading layer 211. Spec. Fig. 2. The
Specification expressly defines “abradable” as a material having “the
property of abrading or eroding to form a rub path when contacted with
rotating components 107, with little or no damage to the rotating
components.” Spec. Para. 23. “[A]brading” is expressly defined as a
material having “the property of eroding or wearing rotating components
107 when contacted with the rotating components 107.” Spec. Para. 25.
Appellant argues, “Bagnall does not disclose, teach, or suggest an
abradable layer of an abradable material of a first [yttria stabilized zirconia
(YSZ)] comprising 18 to 20 wt% yttria overlaying a base layer and an
abrading layer of an abrading material of a second YSZ comprising 7 to 8
wt% yttria,” as required by claim 1. App. Br. 8. Appellant also argues,
“Nissley does not disclose, teach, or suggest an abradable layer overlaying a
base layer and an abrading layer overlaying the abradable layer,” as required
by claim 1. App. Br. 8.
Although Appellant correctly asserts that Bagnall does not specifically
teach the claimed material compositions of the abradable layers, and also
that Nissley does not teach the claimed structural relationships between the
abradable and base layers, Appellant’s arguments do not address the
Examiner’s findings by merely pointing out that each reference lacks the
subject matter for which the other reference was cited.
Bagnall is relied upon by the Examiner for an arrangement having
layers situated as follows, from the fan case 350 towards the fan blades 40:
an intermediate layer 360, an abradable layer 358 and an abrasive layer 370.
Final Act. 4–5 (citing Bagnall col. 3, ll. 33–41 and Figs. 3–4). The
Examiner has reasonably and undisputedly correlated Bagnall’s abrasive
layer 370 to the abrading layer 211 of Appellant’s invention. Ans. 4.
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Application 14/489,686
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Appellant argues that Bagnall is silent regarding the specific materials of the
intermediate layer 360, abradable layer 358 and the abrasive layer 370. App.
Br. 8. However, the Examiner relies on Nissley and not Bagnall for this
subject matter.
The Examiner found Nissley teaches blades 2 located within a static
housing and the static housing having coating layers arranged as follows,
from the static housing towards the blades 2: a substrate 12, a bond coat 14,
base coat foundation layer 18, a graded interlayer 20 and an abradable top
layer 22, where the base coat foundation layer 18 /graded interlayer 20
corresponds to abrading layer. Nissley. Fig. 2. and Col. 9, ll. 4–18 (cited at
Final Act. 6). Nissley teaches the base coat foundation layer 18/graded
interlayer 20 being closer to the substrate 12 than the abradable top layer 22
which Appellant argues is contrary to Appellant’s invention. Nissley Fig. 2;
App. Br. 9. However, the Examiner states that it is obvious to combine
Bagnall and Nissley in a manner that results in Bagnall’s abrasive or
“abrading” layer 370 comprising 7 wt% YSZ and Bagnall’s abradable layer
358 comprising 20 wt% YSZ. Final Act. 5–6. In other words, the Examiner
relies on Bagnall to teach “an abradable layer . . . overlaying the base layer”
and “an abrading layer . . . overlaying the abradable layer.” Ans. 6; Final. 5.
And, the Examiner relies on Nissley to teach “an abradable layer of an
abradable material of a first yttria stabilized zirconia (YSZ) comprising 18 to
20 wt% yttria” and “an abrading layer of an abrading material of a second
YSZ comprising 7 to 8 wt% yttria.” Ans. 6–7; Final. 4.
Appellant’s arguments ultimately amount to attacks on Bagnall and
Nissley individually without considering the combined teachings of Bagnall
and Nissley. “Non-obviousness cannot be shown by attacking references
individually when the rejection is predicated upon the teachings of a
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Application 14/489,686
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combination of references.” See In re Merck & Co. Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986)(citation omitted).
The Examiner states that Nissley teaches 20 wt% YSZ as an
acceptable material for abradability and as such is a known material suitable
for use with Bagnall’s abradable layer 358. Final Act. 6. This does not
appear to be a point of contention. The Examiner states that because Nissley
teaches 7 wt% YSZ has an abrading capability 7 wt% YSZ is a suitable
material for Bagnall’s abrading layer 370. Final Act. 5–6. Appellant argues
that “Nissley does not disclose, teach or suggest a YSZ of 7 to 8 wt% yttria
as an abrading material,” as relied on by the Examiner and as required by
claim 1. Appeal Br. 9 (emphasis added).
As relied on by the Examiner, Nissley discloses “if increased erosion
resistance is desired, then an increase in the amount of 7 weight percent
yttria stabilized zirconia should be employed.” Nissley col. 6 ll. 28–30. The
cited paragraph of Nissley seems to directly correlate hardness with abrading
capability. Appellant does not make of record any evidence or technical
reasoning to explain why the Examiner’s finding that “7 YSZ[4] is known to
provide increased erosion resistance,” wherein “increased erosion resistance
inherently results in an increase in abrading capability” is incorrect. Final
Act. 5; see also Nissley col. 8, ll. 58–59 (“superior abradability of the
present invention results, in part, because 7 YSZ contains . . . , [t]hus 7 YSZ
is strong, effective erosion resistance material.”). Where, as here, the
Examiner has established, by presenting sufficient evidence and technical
reasoning, a sound basis for the belief that a structure disclosed in the prior
art must inherently possesses a characteristic relied on by the Examiner, the

4 Which we understand to mean YSZ with 7% yttria
Appeal 2020-005417
Application 14/489,686
7
burden shifts to Appellant to overcome, with argument or evidence, why that
is not necessarily the case. See In re Schreiber, 128 F. 3d 1473, 1478 (Fed.
Cir. 1997) (citing In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)).
Appellant, making only a naked assertion, has not done so.
For the aforementioned reasons, the Examiner reasonably concludes
that it would have been obvious to combine Bagnall and Nissley resulting in
Bagnall’s abrasive layer 370 comprising 7 wt% YSZ overlying Bagnall’s
abradable layer 358 comprising 20 wt% YSZ which overlies Bagnall’s base
layer to thereby arrive at the subject matter claimed. Final Act. 5–6.
Appellant does not address why the Examiner’s reason to modify
Bagnall with Nissley “to modify the seal arrangement of Bagnall to include
the materials of the substrate and layers of Nissley for the purpose of
adapting it for use (and, thus, ensuring successful operation by using known
materials that are suitable for this use and environment) as an abradable seal
arrangement between a turbine casing and turbine blades in order to reduce
non-uniformity of length of the turbine blades” is not valid. Final Act. 6.
Finally, Appellant additionally argues that Nissley teaches away from
the Examiner’s modification of Bagnall because Bagnall’s invention teaches
“an abradable layer overlaying a base layer and an abrading layer overlaying
the abradable layer,” whereas, Appellant asserts that Nissley teaches an
arrangement with the abradable layer 22 adjacent to the blades 11 and base
coat foundation layer 18 /graded interlayer 20, which corresponds to the
abrading layer, located between the abradable layer 22 and the static
housing. App. Br. 9–10. Appellant argues that Nissley’s layer arrangement
is the opposite of Bagnall’s invention which has the abrasive layer 370
adjacent the fan blades 40 and the abradable layer 358 between the abrasive
layer 370 and the fan case 350. App. Br. 9–10. However, “the prior art’s
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Application 14/489,686
8
mere disclosure of more than one alternatives does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed . . . ” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, although Nissley does
teach layers located as described by Appellant, Nissley also teaches reasons
as to why an increase or decrease of the weight percent of YSZ is desirable.
Nissley, Col. 6, ll. 28–32l. Final Act. 5. The teaching of Nissley of having
an abradable layer 22 adjacent to the blades 11 and base coat foundation
layer 18 /graded interlayer 20, which corresponds to the abrading layer,
located between the abradable layer 22 and the static housing, is just one of
the alternatives one skilled in the art might consider when choosing the
weight percent of YSZ. Final. 6–7. Therefore, Nissley does not teach away
from the Examiner’s proposed modification of Bagnall.
For the foregoing reasons, we sustain the Examiner’s § 103 rejection
of claim 1, and the rejections of those claims argued therewith, or based on
dependency therefrom.

CONCLUSION
For the foregoing reasons the Examiner’s rejections of claims 1–5, 8–
13, 15–17, and 19–22 are AFFIRMED.
Appeal 2020-005417
Application 14/489,686
9
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 8, 15–
17, 19, 21,
22
103 Bagnall, Nissley 1–5, 8, 15–
17, 19, 21,
22

9, 10 103 Bagnall, Nissley,
Rohrer, Boutwell
9, 10
11–13, 20 103 Bagnall, Nissley,
Nelson
11–13, 20
Overall
Outcome
1–5, 8–13,
15–17, 19–
22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED