Ex Parte Allen et al

Patent Trial and Appeal Board

Jun 26, 2013

11649574 (P.T.A.B. Jun. 26, 2013)

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.
11/649,574 01/04/2007 David B. Allen 2006P21942US 7218
7590 06/26/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
06/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID B. ALLEN, ALLISTER W. JAMES, and
DAVID W. HUNT
____________________

Appeal 2011-002304
Application 11/649,574
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002304
Application 11/649,574
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for joining to a nickel-based superalloy
substrate material having a composition outside of a zone of
weldability defined as a concentration of strengthening
elements wherein a sum of a concentration of aluminum plus
one-half a concentration of titanium in the material is less than
3 w/o, the method comprising:
applying to the superalloy substrate material a weld strip
of a material having a composition within the zone of
weldability using a spray deposition process; and
forming a fusion weld to the weld strip.

References
The Examiner relies upon the following prior art references:
White
Kelly
Feng
Peterson
US 5,732,467
US 6,489,584 B1
US 6,596,411 B2
US 6,673,169 B1
Mar. 31, 1998
Dec. 3, 2002
Jul. 22, 2003
Jan. 6, 2004
Hu US 2005/0220995 A1 Oct. 6, 2005

Rejections
I. Claims 1, 2, 4, and 9-15 are rejected under 35 U.S.C. § 102(b) as
anticipated by Peterson. Ans. 4.
II. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Peterson and Kelly. Ans. 7.
Appeal 2011-002304
Application 11/649,574
3
III. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Peterson and White. Ans. 7.
IV. Claims 8 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Peterson and Feng. Ans. 8.
V. Claim 7 is rejected under § 35 U.S.C. 103(a) as unpatentable over
Peterson and Hu. Ans. 9.

OPINION
Each of the Examiner’s rejections rely on a finding that Peterson
describes the “applying … a weld strip” and “forming a fusion weld to the
weld strip” steps of independent claim 1 (or the parallel structural limitations
in independent claim 11). In particular, the Examiner found that Peterson
describes applying a weld strip at figure 4, which purportedly shows a weld
strip applied to a substrate by spray deposition. Ans. 4-5. The Examiner
found that this is the only step in the process and that the fusion step occurs
when the deposited metal (weld strip) solidifies. Ans. 5.
Appellants correctly point out that the claim requires two separate
steps: applying a weld strip and then forming a fusion weld to the weld strip.
App. Br. 5; Reply Br. 2-3. Thus, even assuming that Peterson at figure 4
shows the application of the weld strip as required by claims 1 and 11,1 the
cooling of the weld strip cannot also be the forming of a fusion weld onto
the weld strip because the fusion weld must be to the weld strip.
Appellants have apprised us of error in the Examiner’s rejection of the
independent claims. The Examiner’s findings in the remaining rejections do
not cure this underlying deficiency.

1 Spray deposition processes are typically not considered welding processes
(which require melting). See, e.g., Spec. 3:17-23.
Appeal 2011-002304
Application 11/649,574
4
DECISION
We REVERSE the Examiner’s decision regarding claims 1-16.

REVERSED

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