Ex Parte Boeke et al

Patent Trial and Appeal Board

May 25, 2018

13598988 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/598,988 08/30/2012 Mark A. Boeke
54549 7590 05/30/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67097- l 985PUS 1 ;59959US2 8745
EXAMINER
FOUNTAIN, JASON A
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. BOEKE, EDWIN OTERO,
JEFFREY J. DEGRAY, TRACY A. PROPHETER-HINCKLEY,
GUILLERMO J. FERNANDEZ, and SARAH RILEY
Appeal2016-002873
Application 13/598,988 1
Technology Center 3700
Before JENNIFER D. BAHR, ERIC C. JESCHKE, and
FREDERICK C. LANEY, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark A. Boeke et al. ("Appellants") seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated May 13, 2015 ("Final Act."), and as further explained in the Advisory
Action dated July 17, 2015, rejecting claims 1-22. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify United Technologies Corporation as the real
party in interest. Appeal Br. 1.
Appeal2016-002873
Application 13/598,988
BACKGROUND
The disclosed subject matter relates "to a gas turbine engine
component having at least one discharge slot." Spec. ,r 2. Claims 1, 12, and
22 are independent. Claim 1 is reproduced below, with emphasis added:
1. A component for a gas turbine engine,
compnsmg:
a body portion that extends between a leading
edge and a trailing edge, wherein at least one of said
leading edge and said trailing edge includes at least
one discharge slot having a first portion that
includes an oval geometry and a second portion
having a different geometry than said first portion.
EVIDENCE RELIED ON BY THE EXAMINER
Tomita US 2001/0016163 Al Aug. 23, 2001
Tibbott
Liang
Bergholz
US 2009/0317258 Al
US 8,047,787 Bl
US 2013/0302177 Al
REJECTIONS
Dec. 24, 2009
Nov. 1, 2011
Nov. 14, 2013
1. Claims 1-3, 5, 7, 8, 11-15, 19, and 21 stand rejected under
35 U.S.C. § I02(e) as anticipated by Bergholz.
2. Claim 4 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Bergholz and Tibbott.
3. Claims 6, 9, 10, 16, and 17 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Bergholz.
4. Claims 18 and 20 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bergholz and Tomita.
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Appeal2016-002873
Application 13/598,988
5. Claim 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bergholz and Liang.
DISCUSSION
Rejection 1- Claims 1-3, 5, 7, 8, 11-15, 19, and 21
Both independent claims 1 and 12 require, among other features, "at
least one discharge slot having a first portion that includes an oval
geometry." Appeal Br. 11, 12 (Claims App.). The Examiner cited element
30 in Bergholz as the "at least one discharge slot." Final Act. 3, 5. To
address the rest of the limitations at issue, the Examiner cited paragraph 51
and Figure 10 of Bergholz, stating, "[t]he oval portion of Fig. [10] is
retained and has radius RB." Id. at 3, 5. In the Answer, the Examiner
provides the following annotated version of Figure 10 in Bergholz:
1 ()
Ans. 15. Without the annotation provided by the Examiner, Figure 10
depicts "a cross sectional schematical view illustration of an alternative flow
cross section with unequal top and bottom comer radii." Bergholz ,r 32.
The Examiner added a horizontal line across the approximate middle of the
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Appeal2016-002873
Application 13/598,988
depicted flow cross section. Ans. 15. Regarding annotated Figure 10, the
Examiner states:
that Fig 10 of Bergholz shows two portions (as shown in the
annotated figure [above]), with the first portion being on the
lower half of Fig 10, having curved comers with radius RB, and
the second portion being the top half of Fig 10 having curved
comers with radius RT; the radius RT being different than the
radius RB.
Ans. 14. Thus, the Examiner identifies the "lower half' below the added
horizontal line in annotated Figure 10 as the recited "first portion that
includes an oval geometry." Id.
Appellants argue that Bergholz fails to teach the limitations at issue
because, according to Appellants, "the shape shown by Figure 10 is a
racetrack shaped hole with unequal top and bottom comer radii RB, RT and
lacks any 'oval geometry."' Appeal Br. 5.
The Examiner responds that the identified "first portion" "has an oval
geometry ( defining oval as 'An elliptical track, as for racing or athletic
events', from www.thefreedictionary.com/oval)." Ans. 14.
We agree with Appellants that the Examiner has not demonstrated that
the identified "first portion"-i.e., the lower portion of annotated Figure
10--"includes an oval geometry." Paragraph 51 in Bergholz, cited by the
Examiner (Final Act. 3, 5), describes the overall shape of flow cross section
7 4 in Figure 10 as "race track shaped" and as "similar to the [ race track
shaped flow cross section 74] illustrated in FIG. 8 but [with] unequal top and
bottom comer radii RB, RT." Bergholz ,r 51.
The Examiner's reliance on a dictionary definition of "oval" does not
demonstrate that Figure 10 satisfies the limitations at issue. As an initial
matter, the Examiner does not address how the identified "first portion"-
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Application 13/598,988
rather than the entire flow cross section 7 4 shown in Figure 10--"includes
an oval geometry." As noted above, Bergholz describes the overall shape of
flow cross section 74 (not the lower portion identified by the Examiner) as
"race track shaped." Bergholz ,r 51.
Moreover, the dictionary definition provided by the Examiner
conflicts with the Specification before us on appeal, which distinguishes
oval shaped and racetrack shaped, disclosing that an "oval shape" has "no
straight portions" ( citing Spec., Fig. 5) whereas a "racetrack shape" has "flat
sides" ( citing discharge slots 80B in Figures 3 and 4 ). Spec. ,r 41; see also
In re Smith Int 'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (stating that
the "broadest reasonable interpretation in light of the specification ... is an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is 'consistent with
the specification'" (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) ). Because the Examiner has not shown that the identified "first
portion" "includes an oval geometry" as recited in the limitations at issue,
we do not sustain the rejection of independent claims 1 and 12. We also do
not sustain the rejection of claims 2, 3, 5, 7, 8, and 11 (which depend from
claim 1) and claims 13-15, 19, and 21 (which depend from claim 12).
Rejections 2 through 4 - Claims 4, 6, 9, 10, 16--18, and 20
Claims 4, 6, 9, and 10 depend from claim 1, and claims 16-18 and 20
depend from claim 12. Appeal Br. 11-13 (Claims App.). The Examiner's
added reliance on Tibbott (regarding Rejection 2) and Tomita (regarding
Rejection 4) does not remedy the deficiencies in the rejection based on
Bergholz discussed above (see supra Rejection 1 ). As to Rejection 3, the
Examiner does not articulate any additional findings or reasoning and does
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Appeal2016-002873
Application 13/598,988
not propose any modification of Bergholz to remedy the deficiencies
discussed above. Thus, for the same reasons discussed above, we do not
sustain the rejection of claims 4, 6, 9, 10, 16-18, and 20.
Rejection 5 - The rejection of claim 22
under 35 U.S. C. § 103 (a)
Independent claim 22 recites, among other features, a "first discharge
slot including a first portion that includes an oval geometry." Appeal Br. 13
(Claims App.). For this limitation, the Examiner cited Figures 8-11 of
Bergholz. See Final Act. 13.
Appellants rely on the same arguments provided regarding Rejection
1. See Appeal Br. 9 (highlighting the limitation at issue in claim 22 and
stating "[a]s detailed in Section A [addressing Rejection 1], the trailing edge
cooling slot 66 of Bergholz lacks an 'oval geometry'").
The Examiner responds: "As set forth above [regarding Rejection 1],
Bergholz teaches in Fig 10, a first portion that has an oval geometry that is
joined with a second portion, of different geometry, to form the cross-section
(74) for cooling holes (30)." Ans. 17.
For the same reasons discussed above regarding Rejection 1, we agree
with Appellants that the Examiner has not demonstrated that the identified
"first portion" "includes an oval geometry." Thus, we do not sustain the
rejection of claim 22.
DECISION
We reverse the decision to reject claims 1-22.
REVERSED
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