Ex Parte Cheng et al

Patent Trial and Appeal Board

Jul 12, 2013

11388084 (P.T.A.B. Jul. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/388,084 03/23/2006 Kenny Cheng 67097-506; EH-11629 7623
54549 7590 07/15/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
EASTMAN, AARON ROBERT
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
07/15/2013 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 KENNY CHENG, KIN KEONG THOMAS JEK and
YOKE MIN CHEONG
____________

Appeal 2011-004902
Application 11/388,084
Technology Center 3700
____________

Before MICHAEL L HOELTER, LYNNE H. BROWNE and
ANNETTE R. REIMERS, Administrative Patent Judges.

BROWNE, Administrative Patent Judge

DECISION ON APPEAL

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Application 11/388,084

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STATEMENT OF THE CASE

Kenny Cheng et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-9, 11-18, 20 and 21.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is reproduced below:
1. A method of restoring a gas turbine engine
component, including the step of:
(a) repairing a turbine airfoil along a
chordwidth dimension to refurbish an eroded
chordwidth dimension to a restored chordwidth
dimension.

PRIOR ART
Mazumder US 2002/0142107 A1 Oct. 3, 2002
Shah US 6,742,698 B2 Jun. 1, 2004
Guo US 2004/0191064 A1 Sep. 30, 2004

GROUNDS OF REJECTION
1. Claims 1 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Guo.
2. Claims 2-8, 11 and 14-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Guo and Shah.
3. Claims 12, 13, 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Guo, Shah and Mazumder.

1 The rejection of claims 22 and 23 under 35 U.S.C. § 112, 1st paragraph as
failing to comply with the written description requirement is withdrawn.
Ans. 3. A prior art rejection has not been applied to claims 22 and 23. Final
Rej. 8. Claims 22 and 23 are not subject to this appeal. Ans. 2; App. Br. 1.
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OPINION

Rejections based on Guo
Appellants argue claim 1 and 9 as a group. See App. Br. 3-5. We
select independent claim 1 as the illustrative claim and claim 9 stands or
falls with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Guo “does not specifically disclose repairing
a turbine airfoil along a chordwidth dimension with a laser cladding to
refurbish an eroded chordwidth dimension to a restored chordwidth
dimension.” Ans. 4. The Examiner reasons that “[t]he fact that Guo
discloses the repair of a turbine airfoil along a surface would make it
obvious . . . that any surface, including the trailing edge along a chordwidth
dimension can be repaired in the manner disclosed by Guo without undue
experimentation.” Id. The Examiner concludes that it would have been
obvious “to modify the apparatus disclosed by Guo by repairing a turbine
airfoil along a chordwidth dimension with a laser cladding to refurbish an
eroded chordwidth dimension to a restored chordwidth dimension.” Id.
Appellants argue “[t]he Examiner applies the incorrect standard to
come to a conclusion of obviousness. The argument of ‘undue
experimentation’ relates to enablement, and is not proper for concluding
obviousness” and therefore “the given reasoning is legally insufficient
because it applies the standard for enablement, not obviousness.” App. Br.
4. We disagree. While the Examiner may have in artfully stated his reasons
for the proposed modifications, the Examiner has articulated reasoning for
the proposed modification as required by the Supreme Court in KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We understand
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the Examiner’s position to be that because Guo teaches a method of
repairing one portion of a turbine airfoil, it would be obvious to use Guo’s
method to repair a different portion of the turbine airfoil and we note that “a
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421. Appellants have not persuaded us of error in this
reasoning. Accordingly, Appellant’s argument is unconvincing.
Appellants further argue that “the results flowing from the
modification are not predictable” because “Guo describes repairing the
shroud portion, not an airfoil portion, which is geometrically different than
the shroud and may exhibit different repair requirements.” App. Br. 4;
Reply Br. 1. Appellants’ argument is not convincing. Appellants have not
explained why the shroud is not part of the airfoil portion, Appellants have
not explained why the alleged differences in geometry would lead to
unpredictable results nor have Appellants shown that the proposed
modification is beyond the skill of a person of ordinary skill in the art.
Accordingly, Appellants have not apprised us of error in the Examiner’s
reasoning.
For these reasons, we sustain the Examiner’s rejection of independent
claim 1, and claim 9 which depends therefrom and was not argued
separately.

Rejections based on Guo and Shah
Claims 2, 6-8 and 14-18:
Appellant argues claims 2, 6-8 and 14-18 as a subgroup. See App. Br.
5-6. We select claim 2 as the illustrative claim such that claims 6-8 and 14-
18 stand or fall with claim 2.
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The Examiner finds that Guo discloses all of the limitations of claim 2
“except for wherein step (a) includes applying the laser cladding to a trailing
edge of the turbine airfoil along the chordwidth dimension with a filler
material.” Ans. 4. The Examiner further finds that Shah teaches “repair of a
trailing edge by inserting a barrier member into a slot in a trailing edge of
the turbine airfoil to prevent filler material from entering the slot and
depositing the filler material adjacent the barrier member to extend a length
of the slot (col. 3 lines 1-29).” Ans. 4-5.
Appellants argue that “Guo teaches against the proposed
combination” because “[t]he method of Shah requires, ‘... a filler metal
material... subjected to a welding treatment to reestablish the blade trailing
edge . . .’ (See Shah, col. 3, ll. 10-15).” and “[u]sing such welding
treatments, as taught in Shah, is inconsistent with Guo, which states,
‘traditional repair methods have proven unsatisfactory ... for example, some
know[n] welding techniques.’ (See Guo, par. 8).” App. Br. 6; see also Reply
Br. 2.
Appellants’ argument is not responsive to the rejection as articulated
by the Examiner. With respect to claim 2, the Examiner relied upon Shah
for the specific disclosure of the repair of the trailing edge of the turbine
airfoil. Ans. 4. The Examiner relied upon Guo’s disclosure of repair via
laser cladding. See Ans. 4. The Examiner did not rely upon Shah to teach
repair via welding. Accordingly, Appellants’ argument that Guo teaches
against the combination is inapposite.
Appellants do not dispute Shah’s teaching of repair of the trailing
edge of the turbine airfoil nor do Appellants dispute Guo’s disclosure of
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repair via laser cladding. Thus, Appellants have not apprised us of error in
the Examiner’s rejection.
For these reasons, we sustain the Examiner’s rejection of claim 2 and
claims 6-8 and 14-18 that fall therewith.
Claims 3-5 and 11:
Appellants argue claims 3-5 and 11 as a subgroup. See App. Br. 6-7.
We select claim 3 as the illustrative claim and claims 4, 5 and 11 stand or
fall with claim 3. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants argue “Shah does not teach inserting a barrier member into
a slot as the Examiner alleges. Shah teaches that, ‘a piece of refractory
metal backing material, in foil form, is placed over the area to be repaired,’
(See Shah, col. 2, 11. 9-15).” App Br. 6-7 (emphasis omitted). Appellants’
argument is not persuasive as it is not responsive to the rejection as
articulated by the Examiner. The Examiner did not rely upon Shah’s
teaching in col. 2, ll. 9-15. The Examiner relied upon Shah’s teaching in col.
3, lines 1-29 (Ans. 5) which describes “In this method, a piece 32 of
refractory metal backing material is first cut to conform to the shape of the
blade trailing edge and any internal cooling cavity therein.” Shah, col. 3, ll.
2-5. As shown in Shah’s Figure 2, piece 32 can take the form of a barrier
member inserted into a slot in the trailing edge, thus meeting the claim
language at issue.
Appellants argue that Guo “explicitly teaches away from the use of
any welding treatments”. Reply Br. 2. This argument is not convincing as
discussed supra. Appellants further argue that “the Examiner improperly
speculates that it would be necessary to insert the refractory metal material
to reestablish internal cooling geometry.” Id. This argument is also not
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convincing as Shah explicitly disclose inserting the refractory metal material
as discussed supra.
For these reasons, we sustain the Examiner’s rejection of claim 3 and
claims 4, 5 and 11 which fall therewith and were not argued separately.

Guo, Shah and Mazumder
Appellants argue claims 12, 13, 20 and 21 as a group. See App. Br. 7.
We select claim 12 as the illustrative claim and claims 13, 20 and 21 stand
or fall with claim 12. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that “the Guo modification in re[gard to] claim 2
discloses all of the limitations except for wherein the barrier member is
made of copper.” Ans. 7. The Examiner further finds that “Mazumder et al.
teaches using copper to remove heat from a laser clad area (paragraphs
[0012] and [0044]).” Id. Based on these findings the Examiner concludes
that it would have been obvious “to further modify the Guo modification in
re[gard to] claim 3 by using copper for the barrier member as taught in
Mazumder et al. for the purposes of removing heat f[rom] the work area and
to save time (paragraph [0045]).” Ans. 7.
Appellants argue that “Shah requires, ‘the refractory metal material
may be any refractory material having a melting point in excess of 1455°C
(2651º F),’ (See Shah, col. 1, ll. 41-44). Copper has a melting point of
approximately 1083°C (1981.4°F). Therefore, the use of copper would
destroy the function of the Shah reference.” App. Br. 7; See also Reply Br.
2-3.
Appellants argument is not persuasive as it is not responsive to the
rejection as articulated by the Examiner. With respect to claim 11, from
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which claim 12 depends, the Examiner relied upon Shah for the very specific
teaching of inserting a barrier member into an opening. Ans.6. The
Examiner did not rely upon Shah to teach the material from which the
barrier is made. Accordingly, Appellants’ argument that Shah teaches
against the combination is inapposite.
Appellants do not dispute Shah’s teaching of a barrier member nor do
Appellants dispute Mazumders teaching of the use of copper to remove heat
from a laser clad area. Ans. 7. Thus, Appellants have not apprised us of
error in the Examiner’s rejection.
For these reasons, we sustain the Examiner’s rejection of claim 12 and
claims 13, 20 and 21 that fall therewith.

DECISION

The Examiner’s rejections of claims 1-9, 11-18, 20 and 21 are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

rvb