UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENERAL ELECTRIC COMPANY
`Petitioner
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`v.
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`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner
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`Case IPR2016-01289
`Patent 7,060,360
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`PATENT OWNER UNITED TECHNOLOGIES CORPORATION’S
`PRELIMINARY RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENERAL ELECTRIC COMPANY
`Petitioner
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`v.
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`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner
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`Case IPR2016-01289
`Patent 7,060,360
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`PATENT OWNER UNITED TECHNOLOGIES CORPORATION’S
`PRELIMINARY RESPONSE
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`TABLE OF CONTENTS
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`Page
`Introduction .......................................................................................................... 1
`I.
`II. Overview of the Patent and the Story of the Invention ....................................... 3
`III. Overview of the Technical Field of the Invention and Prior Art ........................ 7
`A. Field of the Invention and Prior Art .............................................................. 8
`B. Designing Coating Systems for Aviation or Space Applications ................. 9
`IV. Claim Construction ............................................................................................ 14
`A. “Bond Layer” .............................................................................................. 14
`V. Defects in the Proposed Grounds of Unpatentability ........................................ 16
`A. Grounds 1 and 2 are defective because none of the references describes or
`suggests a “bond layer” ............................................................................... 17
`B. Grounds 1 and 2 are defective because the Petition fails to cite sufficient
`evidence to establish a prima facie case of obviousness ............................ 20
`1. Redundant Functionality of Layers and Unaddressed Drawbacks
`Resulting from Proposed Combinations Negates Petitioner’s Proposed
`Motivation for the Combinations ............................................................... 22
`2. Insufficient Evidence Regarding Likelihood of Success of
`Combination Belies Existence of Prima Facie Proof of Obviousness ..... 25
`C. Grounds 1 and 2 fail specifically with regard to dependent claim 4 .......... 29
`D. Grounds 1 and 2 fail specifically with regard to dependent claims 6, 8, and
`10 ................................................................................................................. 31
`VI. Redundant Grounds of Unpatentability ............................................................. 33
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`TABLE OF AUTHORITIES
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`
`Cases
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`Affordable Drugs XI LLC v. Insys Pharma, Inc. (IPR2015-01797) ...................... 32
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`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed.
`Cir. 1985) ...................................................................................................... 3, 30, 32
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`Coalition For Affordable Drugs XI LLC v. Insys Pharma, Inc. (IPR2015-01797)27
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`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ...................................................... 2
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`In Re: Magnum Oil Tools International, Ltd., Appeal No. 2015-1300, slip op. at
`26 (Fed. Cir. July 25, 2016) ..................................................................................... 2
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`KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) .......................... 2
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`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM2013-00003 ....... 33
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`Rules
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`37 C.F.R. § 42.65(a) ....................................................................................... 3, 30, 32
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
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`EXHIBIT LIST
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`Declaration of Dr. David R. Clarke
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`M.G. Hocking et al., METALLIC & CERAMIC COATINGS:
`PRODUCTION, HIGH TEMPERATURE PROPERTIES & APPLICATIONS
`(1989)
`
`Alwyn Scott, Japanese airline ANA to replace 100 Rolls
`engines on 787s, Reuters (Aug. 31, 2016), available at
`http://www.reuters.com/article/us-ana-rolls-royce-hldg-engines-
`idUSKCN1162OD
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`Excerpt of MERRIAM WEBSTER’S COLLEGIATE DICTIONARY
`(10th ed. 2002)
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`Curriculum Vitae of Dr. David R. Clarke
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`J.W. Hutchinson and A.G. Evans, On the delamination of
`thermal barrier coatings in a thermal gradient, 149 Surface and
`Coatings Technology. 179-184 (2002).
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`D.R. Clarke and C.G. Levi, Materials Design for the Next
`Generation Thermal Barrier Coatings, 33 Annual Review of
`Materials Research. 383-417 (2003).
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`D. Zhu and R.A. Miller, Sintering and creep behavior of
`plasma-sprayed zirconia- and hafnia-based thermal barrier
`coatings, 108-109 Surface and Coatings Technology. 114-120
`(1998).
`
`J.W. Hutchinson and Z. Suo, Mixed Mode Cracking in Layered
`Materials, 29 Advances in Applied Mechanics. 63-191 (1991).
`
`A. Bagchi and A.G. Evans, The Mechanics and Physics of Thin
`Film Decohesion and its Measurement, 3 Interface Science.
`169-193 (1996).
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`iii
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`UTC-2001
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`UTC-2002
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`UTC-2003
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`UTC-2004
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`UTC-2005
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`UTC-2006
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`UTC-2007
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`UTC-2008
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`UTC-2009
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`UTC-2010
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`D. Zhu and R.A. Miller, Investigation of thermal fatigue
`behavior of thermal barrier coating systems, 94-95 Surface and
`Coatings Technology. 94-101 (1997).
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`A.G. Evans, D.R. Mumm, J.W. Hutchinson, G.H. Meier, and
`F.S. Pettit, Mechanisms controlling the durability of thermal
`barrier coatings, 46 Progress in Materials Science. 505-553
`(2001).
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`UTC-2011
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`UTC-2012
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
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`I.
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`Introduction
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`Petitioner challenges the claims of U.S. Patent No. 7,060,360 (“the ’360
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`Patent”) on two obviousness grounds which are effectively indistinguishable, and
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`similarly flawed. Both grounds are based on U.S. Patent No. 5,677,060
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`(Terentieva), a reference that was applied and overcome by Patent Owner through
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`amendments to the claims during original prosecution. Petitioner fails to
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`demonstrate disclosure by the applied prior art of precisely the features used to
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`distinguish Terentieva during prosecution.
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`Specifically, neither of the Petition’s proposed grounds demonstrates
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`disclosure of the required “bond layer” recited in independent claim 1. Claim 1
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`requires a multi-layer coating structure that includes “a bond layer between [a]
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`substrate and [an] environmental barrier layer, the bond layer comprises an alloy
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`comprising a refractory metal disilicide/silicon eutectic.” Yet, none of the prior art
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`relied upon in the Petition describes the use of an alloy comprising a refractory
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`metal disilicide/silicon eutectic as a bond layer. The Petition exclusively relies
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`upon uncorroborated expert testimony in contending that a POSITA would
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`somehow know to employ Terentieva’s alloy in this way. But as Patent Owner’s
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`expert cautions, this field involves “intense heat flows” and “gas flows at very high
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`speeds,” where the behavior of coatings is known as volatile and unpredictable,
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`and where expensive, complex, and non-standardized testing is therefore routinely
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`performed. UTC-2001, ¶¶ 45, 53-57; see also GE-1005, 2:48-56. Petitioner’s
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`showing is dubious and insufficient.
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`In addition, the Petition fails to establish a basis for combining Terentieva
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`with either of Eaton ’456 (Ground 1) or the background section of the ’360 Patent
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`(Ground 2). Petitioner instead relies on attorney argument and conjecture by its
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`expert. This is inconsistent with the foundations of the law on obviousness.
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`Indeed, it is well-settled that “rejections on obviousness cannot be sustained by
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`mere conclusory statements; instead, there must be some articulated reasoning with
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`some rational underpinning to support the legal conclusion of obviousness.” KSR
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`International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
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`441 F.3d 977, 988 (Fed. Cir. 2006)). The Federal Circuit has instructed that such
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`decisions are to be based on the arguments and evidence that were actually
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`advanced in the petition. In Re: Magnum Oil Tools International, Ltd., Appeal No.
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`2015-1300, slip op. at 26 (Fed. Cir. July 25, 2016). Petitioner’s failure to articulate
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`a rational underpinning for the proposed combinations based on Terentieva leave
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`unaddressed a number of the factors known to render such combinations untenable.
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`Petitioner also fails to demonstrate various features of the dependent claims.
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`In particular, Petitioner fails to explain how copied quotations from Terentieva
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`actually teach the features of claim 4, which they do not. Moreover, Petitioner
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`admits that the prior art does not teach the features of claims 6, 8, and 10, and
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`relies solely upon the bare assertion by its expert that a POSITA would have
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`understood the proposed combination to demonstrate these features. Such
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`conclusory statements are entitled no evidentiary weight. See 37 C.F.R. §
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`42.65(a); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294
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`(Fed. Cir. 1985).
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`For at least these reasons, Petitioner’s petition should be denied institution.
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`II. Overview of the Patent and the Story of the Invention
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`The ’360 Patent discloses “a bond layer for use on a silicon based substrate.”
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`GE-1001, abstract. Figures 1a and 1b, along with the background section in which
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`they are described, illustrate the structure for which this bond layer was developed.
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`In particular, the relevant barrier coating structure “form[s] a composite 10
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`comprising a silicon based substrate 12, a bond coat or layer 14 such as a dense
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`continuous layer of silicon metal, a barrier layer 16 such as either an alkaline earth
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`aluminosilicate based on barium and strontium, or yttrium silicate, and an optional
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`top layer.” GE-1001, 1:20-24. Below is a diagram of this multi-layer structure
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`with appropriate annotations to its description in the ’360 Patent. See UTC-2001, ¶
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`63.
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`Notably, this structure that the ’360 Patent targeted for improvement reflects
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`the coating system disclosed in Eaton ’456 (GE-1006), which was also conceived
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`of by one of the ’360 Patent’s inventors—Dr. Harry Eaton. As in the background
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`structure of the ’360 Patent, Eaton ’456 includes a structure with “a silicon
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`containing substrate” (GE-1006, 1:59), a “suitable bond layer [that] includes
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`silicon metal in a thickness of 3 to 6 mils” (GE-1006, 4:15-16, 4:55-60), and a
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`barrier layer of “barium aluminosilicate and, preferably, a barium-alkaline earth
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`aluminosilicate” (GE-1006, 2:5-8). See UTC-2001, ¶¶ 81-82. As in the
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`background structure of the ’360 Patent, Eaton ’456 describes optional
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`“intermediate layers” that may be included in the structure. Compare GE-1001,
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`1:26-31 to GE-1006, 5:1-7.
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`After helping to develop the structure shown by Eaton ’456 (and described
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`in the background of the ’360 Patent) under a joint NASA contract with Petitioner,
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`the inventors of the ’360 Patent determined that this prior art system resulted in
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`“significant loss of mechanical properties,” such as “a reduction in bond strength.”
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`GE-1001, 1:35-43. Accordingly, the inventors sought to improve this system by
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`modifying the bond coat in the system, as shown below. See GE-1001, 1:1-3;
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`UTC-2001, ¶¶ 64-66.
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`Story of Invention
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`Environmental Barrier Layer
`& Oxidation Protection
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`Bond Coat
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`Development
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`Environmental Barrier Layer
`& Oxidation Protection
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`Improved
`Bond Coat
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`Eaton ’456 and
`Structure From
`Background of ’360
`Patent
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`Inventive Structure
`of ’360 Patent
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`As described in the ’360 Patent specification, this inventive modification to
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`the bond coat led to “an increase in room temperature fracture toughness,” while
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`retaining the coating’s bonding functionality within the system. See GE-1001,
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`1:51-64.
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`The originally-filed claims of the ’360 Patent only recited the improved
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`bond layer and the substrate. See GE-1002, p. 66. The Examiner relied upon
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`Terentieva (the primary reference relied upon by Petitioner) to reject these claims.
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`See GE-1002, p. 47. In doing so, the Examiner construed the term “bond coat”
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`with the same unreasonable breadth that now improperly forms the foundation of
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`Petitioner’s grounds—that any intermediate layer, regardless of purpose or
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`function, is a bond layer. See GE-1002, p. 32. As will be described in greater
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`detail in Section V(A), infra, Terentieva discloses a protective coating, but it does
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`not disclose the configuration or use of that protective coating as a bond layer.
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`Without assenting to configuration or use of Terentieva’s protective coating
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`as a “bond layer,” the Applicant amended the claims to detail the orientation of the
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`improved bond layer as a layer used to bond a “barrier layer” to a substrate, and
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`again to more specifically identify the structural context of the improved bond
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`layer (i.e., bonding a specific type of “environmental barrier layer” to a substrate).
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`See GE-1002, pp. 21, 24-25, 37, 40-42. Through consideration of these
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`amendments and the explanations presented by the Applicant (both in the written
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`responses and an interview), the Examiner ultimately agreed with what had been
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`true throughout but what was indisputable in view of the record arguments and
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`amendments—that Terentieva fails to describe a bond layer that bonds an
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`“environmental barrier layer selected from the group consisting essentially of an
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`alkaline earth aluminosilicate based on barium and strontium, and yttrium silicate”
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`to a silicon based substrate. Petitioner’s reliance upon the Examiner’s admittedly
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`improper reading of Terentieva is therefore misplaced.
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`In fact, as will be described in greater detail below, Terentieva fails to even
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`suggest that its protective coating would or could serve as a bond layer, and the
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`other prior art and evidence cited by Petitioner fail to cure this deficiency. Instead
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`of addressing this deficiency, or explaining why the Examiner was wrong to
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`recognize it, the Petition latches onto the Examiner’s initial assumption of
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`Terentieva’s barrier layer as having bonding properties—an assumption made
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`before the Examiner fully understood the invention of the ’360 Patent. As Dr.
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`Clarke explains, in the end, the Examiner got it right: a POSITA could not have
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`divined teaching of a bond layer from Terentieva’s disclosure of a barrier coating
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`the only stated purpose of which is to protect, much less divined the positioning of
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`that layer, as claimed, between an environmental barrier layer and a substrate.
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`UTC-2001, ¶¶ 87-114. Dr. Clarke’s testimony is uncontested by objective
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`evidence of record, and is supported by the conclusion reached by the Examiner.
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`III. Overview of the Technical Field of the Invention and Prior Art
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`Each of the primary prior art references and the ’360 Patent describe coating
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`systems for use in protecting components within aviation and space applications.
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`As will be described in greater detail below, this field is technically complex,
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`costly, and subject to unexpected results.
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`A. Field of the Invention and Prior Art
`Terentieva discloses a protective coating for a refractory metal substrate.
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`GE-1005, 1:6-18. From the outset, Terentieva describes that such refractory metal
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`substrates are “used, in particular, in the aviation or space industries to make parts
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`that are subjected in operation to high temperatures, such as parts of aero-engines
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`or elements of aerodynamic fairings (space vehicles).” Id. at 1:14-18. These
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`conditions and their implication are further evident from Terentieva’s stated
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`objects of its invention – to “further improve the performance of anti-oxidation
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`protection to make it possible to use refractory materials at very high temperatures,
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`typically with the material having a surface temperature of up to at least 1850° C.,
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`and also to guarantee that the healing function is continuous, even in surface zones
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`which, because of their configuration or their location, are exposed to intense heat
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`flows or to gas flows at very high speed.” GE-1005, 2:48-56.
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`Similarly, Eaton ’456 describes the protection of ceramic material “for use
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`in gas turbine engines which operate at high temperatures in aqueous
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`environments,” and the Webster reference cited by Petitioner relates to the “use of
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`carbon fibre reinforced silicon carbide (C|SiC) in high temperature structural
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`applications such as gas turbine engines.” GE-1006, 1:25-27; GE-1025, p. 2345.
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`Each of these operating environments is consistent with that described in the
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`subject ’360 Patent, which focuses on protecting substrates exposed to “high
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`temperature, aqueous environments such as for example, the combustor and
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`turbine sections of gas turbine engines.” GE-1001, 1:10-13.
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`As a result, a POSITA would consider these references and any proposed
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`combinations thereof based on the principles governing how coatings function in
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`high-temperature operating conditions, as well as cyclic temperature and high gas
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`flow operating conditions, such as in gas turbine engines. UTC-2001, ¶ 109.
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`Indeed, the Petition acknowledges the necessity of these considerations by
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`addressing the nature of “engine materials” in its “Technology Overview.” See
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`Petition, pp. 4-9.
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`B. Designing Coating Systems for Aviation or Space Applications
`“Coatings enable the attributes of two or more materials [the substrate and
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`the coating(s)] to be combined to form a composite having characteristics not
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`readily available in a monolithic material.” UTC-2002, p. xii. “The primary
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`requirement of a protective surface is to have qualities superior to that of the
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`substrate in order to shield the component from an aggressive environment.”
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`UTC-2002, p. 1. “The system is invariably hybrid, whether it has been achieved
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`by means of a surface modification of the component substrate itself or one or
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`more other materials have been applied as a coating to the component surface.”
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`UTC-2002, p. 1.
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`In other words, coating systems designed to protect a component (i.e., a
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`substrate) may have one or multiple layers. Id.; see UTC-2001, ¶¶ 37-40. Hybrid
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`materials, such as multi-layer coatings, “bring their own problems, especially in
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`property matching at the interface, and coatings technology has thus emerged as a
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`challenging field both for the fundamental and applied research worker.” UTC-
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`2002, p. xiv (emphasis added). As early as 1980, the emergence of “higher
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`performance alloys [was] narrow[ing] down the choice of acceptable coatings.”
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`UTC-2002, p. 15.
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`Some types of coatings adhere well to some types of substrates but do not
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`adhere well to other types of substrates. UTC-2001, ¶ 41. Where poor adhesion
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`exists between a coating (e.g., a barrier coating) and a substrate, a bond coat layer
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`has been used to adhere the barrier coating to the substrate. UCT-2001, ¶ 42. For
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`example, it was known that the “adhesion of plasma sprayed ceramic coatings to
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`metals is generally poor but can be considerably improved” with an appropriate
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`bond coat. UTC-2002, p. 28. Another example of the use of bond coats is
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`described in Eaton ’456 (GE-1006). See GE-1006, 4:14-19.
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`As will be described in greater detail in subsequent sections, Petitioner
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`proposes a combination of coatings not previously contemplated in the prior art
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`and without any suggestion of a bonding layer, and proposes this combination
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`within the field of coatings exposed to high-temperature operating conditions,
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`repeated heating and cooling cycles, and high velocity gas flows, such as in gas
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`turbine engines. In essence, Petitioner baldly asserts that a POSITA would have
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`known how and would have been motivated to excise a barrier layer from the
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`Eaton ’456 composite structure—without the bond coat described in Eaton ’456—
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`and form it on top of the protective coating taught by Terentieva. See generally
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`Petition, pp. 23-30. Petitioner also proposes a similar combination based on
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`excising the barrier layer from the structure described in the background section of
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`the ’360 Patent. See generally Petition, pp. 39-43. However, the Petition fails to
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`account for the well-known complexities of creating such a new composite
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`structure and fails to adequately explain or support its proposal.
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`In gas turbine engine applications, “component failure is often due to the
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`synergistic action of several features in operation at high temperature conditions -
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`the temperature and time scale of actual operation, local high temperature changes,
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`the material used, . . . mechanical and thermal stress cycles in the course of
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`operation as well as shut down and rest periods.” UTC-2002, p. 6. Furthermore, a
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`high heat-flux environment, such as in gas turbine engine applications, activates an
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`additional failure mode in coatings used therein. UTC-2001, ¶ 54.
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`In developing a coating system for such environments, a designer must
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`consider a large number of variables, including “the coating composition, structure,
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`porosity and adhesion together with operating and coating temperatures, [and]
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`substrate/coating compatibility . . . .” UTC-2002, p. 11. In other words,
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`“compatibility” is only one of many factors that must be addressed in determining
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`whether one or more coatings will be viable. UTC-2001, ¶¶ 50-52, 55-57 .
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`Also, it is very well-known that coatings must be developed for specific
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`substrates as integrated systems, and cannot be adequately developed in isolation.
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`UTC-2002, p. 563. For example, the industry has shown that “[d]uplex and
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`multilayer coatings must be studied in a graded programme to enable assessment
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`of the influence of each of the coating layers.” UTC-2002, p. 563 (emphasis
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`added). In other words, it is effectively impossible to predict how coatings will
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`work in an integrated, multi-layer structure, even if you are aware of the behavior
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`of each constituent layer in isolation. UTC-2001, ¶¶ 44, 50-52. For example, a
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`developer of a multi-layer system would need to consider a number of factors,
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`including, but not limited to, (1) the thermal interaction between the layers (e.g.,
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`the thermal expansion coefficient of each layer), (2) how the elements in these
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`layers diffuse between layers during operation in the high heat of a turbine engine
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`environment, and (3) changes in the coating layers with service at high temperature
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`associated with sintering or densification of the material. UTC-2001, ¶¶ 45-49, 55-
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`56
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`A recent problem that Rolls Royce experienced with certain of its aerospace
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`engines further highlights the complexities of multi-layer coatings in turbine
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`engine environments. Specifically, Rolls Royce recently experienced problems
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`with unanticipated early wear on the turbine blades of certain of its engines which
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`led to a major airline replacing the turbine blades in all 100 of its engines, a costly
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`and time-consuming effort. See UTC-2003, pp. 1-3. Such problems further
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`reinforce the impact and continued presence of these issues in the relevant
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`industry. See id. The Petition fails to address this complexity—instead assuming
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`that compatibility shown between materials of the same general chemical class of
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`composition as those described in the prior art would impart to a POSITA the
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`necessary knowledge to rely upon that prior art to build a specific multi-layer
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`coating structure.
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`IV. Claim Construction
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`The Petition fails to construe the term “bond layer” in a manner consistent
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`with the broadest reasonable interpretation standard.1
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`A. “Bond Layer”
`Independent claim 1 recites “a bond layer between the substrate and the
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`environmental barrier layer, the bond layer comprises an alloy comprising a
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`refractory metal disilicide/silicon eutectic.” GE-1001, 2:59-62. Petitioner
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`construes the term “bond layer” in this context as “any layer located between at
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`least two other layers or between the substrate and another layer.” Petition, pp. 17-
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`18. In effect, this construction displaces the claim term “bond” with the word
`
`“intermediate.” This construction is not only without justification, but it
`
`contradicts the ’360 Patent, the prior art, and common usage.
`
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`1 The Petition also asserts a construction of the term “refractory metal
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`disilicide/silicon eutectic.” See Petition, pp. 16-17. Patent Owner disputes
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`Petitioner’s proposed construction for this term, but does not advance this dispute
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`as part of this preliminary response. Nonetheless, Patent Owner reserves the right
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`to challenge Petitioner’s proposed construction of the term “refractory metal
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`disilicide/silicon eutectic” at a later stage of this proceeding or in other proceedings
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`involving the ’882 Patent.
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`14
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`In justifying its unreasonably broad construction, Petitioner cites only to: (1)
`
`a section of the ’360 Patent that describes the location of a bond layer, but which
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`does not disavow the bond layer’s function in adhering another layer to the
`
`substrate; (2) the Examiner’s initial misunderstanding of the ‘360 Patent’s
`
`invention; and (3) a conclusory statement by Petitioner’s expert, Dr. Glaeser, based
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`on (2). See Petition, pp. 17-18; GE-1003, ¶ 43.
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`Contrary to Petitioner’s averments, the ’360 patent expressly acknowledges
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`a distinction between an “intermediate layer” and a “bond layer.” In fact, it uses
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`both terms to identify and to ascribe functional traits to different structural layers.
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`GE-1001, 2:14-16 (“a silicon oxide intermediate layer or other intermediate layer
`
`may be provided between the bond layer and the silicon base substrate”).
`
`Similarly, Eaton ’456—the prior art that Petitioner relies upon—uses the term
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`“bond layer” separately and distinctly from “intermediate layer.” See GE-1006,
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`3:58 to 4:18.
`
`This stands to reason, as a POSITA knows that a bond layer is not just any
`
`type of intermediate layer, but one with a specific property implied by its name.
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`UTC-2001, ¶¶ 71-75. That is, a “bond layer” is specifically designed to adhere a
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`coating (e.g., a barrier coating) to a substrate. Petitioner’s own patent, which
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`Petitioner cites in the Petition, explicitly acknowledges this functionality. See GE-
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`1013, abstract (“As a bond coat, the BSAS layer serves to adhere the top coat to a
`
`15
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`SiC-containing substrate.” (emphasis added)). Moreover, well-known texts
`
`focused on the relevant field describe “bond coats” as serving to adhere a coating
`
`to a substrate. See UTC-2002, p. 311 (“Whatever the coating method may be, one
`
`of the vital aspects is the surface state of substrate and the bond coat to ensure
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`sound adhesion.”).
`
`This known meaning within the field of invention is also consistent with the
`
`ordinary meaning of the term “bond.” For example, Merriam Webster’s
`
`Dictionary defines “bond” as “an adhesive, cementing material, or fusible
`
`ingredient that combines, unites, or strengthens.” UTC-2004, p. 130. Thus, both
`
`the special and ordinary definitions of “bond layer” denote adherence.
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`Accordingly, for purposes of this proceeding in which the broadest
`
`reasonable construction standard applies, the term “bond layer” should be
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`construed as “a layer designed to adhere another layer to a substrate.”
`
`V. Defects in the Proposed Grounds of Unpatentability
`
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`Each of the proposed grounds of unpatentability is defective because each is
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`based upon an improper claim construction and fails to meet Petitioner’s burden of
`
`establishing a prima facie case of obviousness.
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`A. Grounds 1 and 2 are defective because none of the references
`describes or suggests a “bond layer”
`Petitioner presents no evidence that the prior art discloses or suggests a
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`“bond layer.” Nor does the evidence suggest that a POSITA would have
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`understood that the prior art disclosure could have been used as a “bond layer,”
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`under that term’s proper construction. Rather, in both of its proposed grounds,
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`Petitioner assumes, without further analysis, that Terentieva’s protective coating is
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`a “bond layer” based on the Examiner’s initial misunderstanding of the ’360
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`Patent’s invention. See Petition, p. 22 (“As is clear from the prosecution history of
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`the 360 Patent, Terentieva discloses limitations (i) and (ii), but does not disclose
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`(iii).” (emphasis added)); p. 39 (“As previously explained, Terentieva discloses
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`limitations (i) and (ii), but does not disclose the specific composition required by
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`the layer in limitation (iii)” (citing prosecution history)). Such an assumption is
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`improper.
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`As established in Section IV(A), supra, the term “bond layer” is properly
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`construed as “a layer designed to adhere another layer to a substrate.” The element
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`of Terentieva with which the Petition equates the recited “bond layer” is
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`Terentieva’s “protective coating.” See Petition, pp. 20, 22. However, Terentieva
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`describes that this “[protective] coating [is] for providing anti-oxidation
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`protection” that “improve[s] the performance of anti-oxidation protection to make
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`it possible to use refractory materials at very high temperatures.” GE-1005, 2:48-
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`17
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`58. Terentieva does not describe or suggest that its protective coating acts as, or
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`possesses, the characteristics of a bond layer—that of adhering another layer to a
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`substrate.
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`In particular, Terentieva’s protective coating is made up of three parts: (1) an
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`armature-forming refractory phase, (2) a healing phase distributed in the armature
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`of the refractory phase, and (3) a surface oxide film formed by oxidizing the two
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`phases after they’ve been formed. See GE-1005, 2:56 to 3:7, 5:60-62. The
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`“armature-forming refractory phase is mainly formed of the mixed refractory
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`disilicide Ti(0.4-0.95)Mo(0.6-0.05)Si2.” GE-1005, 2:62-64. “[T]he healing phase is
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`constituted by a eutectic which is formed mainly of unbound silicon, of the mixed
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`disilicide Ti(0.4-0.95)Mo(0.6-0.05)Si2 and of at least the disilicide TiSi2.” GE-1005,
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`2:65-67. The oxide film is formed after the refractory phase and healing phase
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`have been formed by exposing the two phases to air. See GE-1005, 5:60-62, 6:55-
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`57.
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`Terentieva also briefly mentions an optional outer refractory layer. See GE-
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`1005, 3:7-12, 4:45-50. However, none of the seven detailed implementation
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`examples include this outer layer, and Terentieva never mentions the interaction
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`18
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`Case IPR2016-01289
`Attorney Docket No: 43498-0002IP1
`between the protective coating and the refractory layer.2 In other words,
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`Terentieva fails to disclose or suggest that Terentieva’s protective coating was
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`designed to adhere the refractory layer to the substrate, a characteristic that is
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`required in order to qualify as a bond layer. UTC-2001, ¶¶ 87-93.
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`For reference, the following is a diagram of Terentieva’s structure next to a
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`diagram of the structure of Eaton ’456 and the background section of the ’360
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`Patent.
`
`Terentieva (GE‐1005)
`
`Eaton ’456 and
`Structure From
`Background of ’360
`Patent
`
`Optional “outer layer . . . formed
`by at least one refractory oxide . .
`. or by a non‐oxide ceramic . . . .”
`GE‐1005, 4:45‐50.
`
`“Protective coating” including refractory
`disilicide Ti(0.4‐0.95)Mo(0.6‐0.05)Si2 and the
`disilicide TiSi2. See GE‐1005, 2:57‐67.
`
`“[A]n optional top layer such
`as a refractory oxide and/or
`silicate layer 18 or other
`metal oxide such as for
`example zirconium oxide.”
`GE‐1001, 1:24‐26.
`
`“barrier layer 16 such as
`either an alkaline earth
`alumino silicate based on
`barium and strontinm, or
`yttrium silicate.” GE‐1001,
`1:22‐24.
`
`“a bond coat or layer 14 s
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