Ex Parte Caddell et al

Board of Patent Appeals and Interferences

Mar 31, 2004

09438969 (B.P.A.I. Mar. 31, 2004)

1Although the examiner stated in an advisory action (Paper
No. 11, mailed January 31, 2002) that the amendment after final
would be entered for purposes of appeal, no clerical entry of
this amendment has in fact been made.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES W. CADDELL JR.
and JAMES M. CALDWELL
____________
Appeal No. 2003-0455
Application No. 09/438,969
____________
ON BRIEF
____________
Before COHEN, STAAB, and MCQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-18. An amendment after final rejection
(Paper No. 10, filed January 31, 2002) canceling claims 19-21 has
been approved for entry.1 No other claims are currently pending.
Appeal No. 2003-0455
Application No. 09/438,969
2
Appellants’ Invention
Appellants’ invention is directed to a method of repairing
turbine nozzle segments used in gas turbine engines. A further
understanding of the invention can be derived from a reading of
exemplary claim 1, which reads as follows (with emphasis added):
1. A method of repairing a turbine nozzle segment having at
least two vanes disposed between outer and inner bands, said method
comprising the steps of:
separating said nozzle segment into a first singlet containing
one of said vanes and a second singlet containing another one of
said vanes; and
joining said first singlet to a newly manufactured singlet
having a configuration that is similar to said second singlet.
The Prior Art
The prior art relied upon by the examiner as evidence of
obvious is “Applicant’s Admitted Prior Art (AAPA) on page 2 second
paragraph [of the specification of the present application]”
(answer, page 2). The paragraph reads as follows (with emphasis
added):
One such technique [of repairing damaged turbine
nozzle segments] is described in U.S. Patent No.
4,176,433 issued December 4, 1979 to Jack W. Lee, et al.
This patent discloses a method of repairing nozzle
segments (referred to therein as turbine vane clusters)
in which the repairable vane from a damaged segment is
separated from the non-repairable portion of the segment.
The salvaged vane is then combined with a complementary
repairable vane that has been similarly salvaged from
another damaged segment. While this technique salvages
Appeal No. 2003-0455
Application No. 09/438,969
2In the body of the answer on page 4, the examiner also
referred to prior art reference 6,154,959 (presumably U.S. Patent
6,154,959), but that patent has been given no consideration since
it was not positively included in the rejection. Ex parte Raske,
28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993); In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
3
repairable vanes that would otherwise be scrapped, the
service life of the repaired nozzle segment is not
prolonged very long because it contains used vanes that
are limited in the number of future repairs that can be
made. Furthermore, this technique is viable only as long
as suitably complementary salvaged vanes are available to
combine.
The Rejection
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA.2
The examiner’s rationale is found on page 3 of the initial
office action (Paper No. 5, mailed January 4, 2001), wherein the
examiner states:
. . . [T]he only difference between this method [i.e.,
the repair method of AAPA] and applicants[’] method is
that applicant[s] use[] a new vane for the second vane
instead of using two salvageable vanes. However, it is
considered that it would have been obvious to one of
ordinary skill in the art a[t] the time the invention was
made to modify the method as taught by AAPA, by using a
new vane inplace [sic] of one of the used vanes since any
one would know that to achieve a longer service life it
would be desirable to use a new part rather than a used
part.
Appeal No. 2003-0455
Application No. 09/438,969
4
In responding to appellants’ argument, the examiner further
contends (answer, page 3) that “to use new parts rather that used
parts for achieving longer service life of articles is a matter of
common sense which anyone would do for that desired result, and is
not a matter of impermissible hindsight.”
Discussion
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In making such a rejection, the examiner has the initial
duty of supplying the requisite factual basis and may not, because
of doubts that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968). Moreover, while common knowledge and common sense may be
applied to the analysis of evidence relied upon in making a
rejection under 35 U.S.C. § 103, they are not a substitute for
evidence. In re Lee, 277 F.3d 1338, 1345, 61 USPQ2d 1430, 1435
(Fed. Cir. 2002).
In the present case, the examiner concedes that AAPA is
deficient in that it does not disclose a method of repairing
turbine nozzle segments that involves separating a first singlet
from a second singlet and then joining the first singlet to a
Appeal No. 2003-0455
Application No. 09/438,969
5
“newly manufactured” singlet. The examiner’s attempt to bridge the
evidentiary gap between AAPA and the claimed invention under the
cover of what “any one would know” and/or “common sense” is
unavailing in this particular situation as it rests on undue
speculation and unfounded assumptions as to how the artisan might
have gone about repairing a damaged turbine nozzle segment. In
this regard, it seems just as likely to us that the ordinarily
skilled artisan would have considered the marriage of a “newly
manufactured” singlet and a salvaged singlet to be an undesirable
and costly alternative for refurbishing a nozzle segment as
compared to the method of AAPA because the service life of a
refurbished nozzle segment utilizing new and salvaged singlets
would appear to be a function of the life of the salvaged singlet
rather than the new singlet. Moreover, a review of the Lee patent
referenced in the second paragraph on page 2 of appellants’
specification reveals no hint whatsoever of using anything other
than salvaged vane clusters for remanufacturing turbine vane
clusters. See, for example, column 1, lines 10-12 (“This invention
relates to . . . methods for remanufacturing turbine vane clusters
from salvageable vane components”); column 1, lines 46-50 (“To
reduce replacement costs of vanes, designers and manufacturers of
gas turbine engines have sought techniques for salvaging reusable
Appeal No. 2003-0455
Application No. 09/438,969
6
portions of vane clusters and combination of salvaged portions to
form remanufactured components”); and column 2, lines 9-12 (“A
principal advantage of the invention is the ability to produce low
cost vane clusters from undamaged components of damaged clusters”).
For these reasons, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claims 1-18 as being unpatentable over AAPA.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
LJS/lp
Appeal No. 2003-0455
Application No. 09/438,969
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PATRICK R. SCANLON
PIERCE ATWOOD
ONE MONUMENT SQUARE
PORTLAND, ME 04101