Ex Parte D et al

Patent Trial and Appeal Board

Feb 28, 2013

11155193 (P.T.A.B. Feb. 28, 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.
11/155,193 06/17/2005 Brian E. D'Amour EH-11579 3827
30188 7590 03/01/2013
PRATT & WHITNEY
400 MAIN STREET
MAIL STOP: 132-13
EAST HARTFORD, CT 06108
EXAMINER
SPISICH, MARK
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
03/01/2013 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 BRIAN E. D’AMOUR and RAYMOND D. THURSTON
____________________

Appeal 2010-005823
Application 11/155,193
Technology Center 3700
____________________

Before: JAMES P. CALVE, HYUN J. JUNG, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005823
Application 11/155,193

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STATEMENT OF THE CASE

Brian E. D’Amour and Raymond D. Thurston (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1-19. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, and we enter a new ground of rejection of claim 1.

The Claimed Subject Matter
Independent claim 1, reproduced below, is representative of the
claimed subject matter.
1. A tool for introducing a paste into voids in an article,
the voids being accessible from a surface of the article and
residing in a target region of the surface, the tool comprising:
at least one pad having a working surface shaped
similarly to the shape of the target region and;
at least a portion of the tool is configured to engage the
article at the target region, where the article is associated with a
gas turbine engine.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Schaaf US 2004/0226577 A1 Nov. 18, 2004
Logan US 2005/0172434 A1 Aug. 11, 2005
Warner US 3,445,880 May 27, 1969
Laird US 3,205,527 Sept. 14, 1965
Claims 1, 8-10, 15, and 16 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Schaaf.
Claims 1, 8-10, 15, and 16 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Logan.
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Claims 1-5, 8-12, and 15-18 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Warner.
Claims 1-12 and 15-19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Laird.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as obvious
over Warner and Schaaf.

ANALYSIS
Anticipation Rejection Based on Schaaf
The Examiner finds that Schaaf anticipates claim 1 because it
“discloses a tool comprising a pad (12) having a working surface (16)
shaped similarly to that of a target region (10).” Ans. 3. Because claim 1 is
an apparatus claim instead of a method claim, the Examiner takes the
position that “the repeated references to the article worked on (even broader,
simply a surface ‘associated with’ art article) do not materially limit the
structure of the tool and pertain to the use thereof.” Id.
Appellants argue that the Examiner ignores language in the claim tied
to the recited “article,” and that “[t]he rejection, in this case, is not supported
by reasoned argument.” App. Br. 3. Appellants argue that the Examiner has
not addressed all of the structural limitations of claim 1. Id. Appellants
assert that the recited “article” serves as a reference by which the claim
defines some structure of the claimed tool. Id. For example, Appellants
argue that the shape of the working surface of the claimed tool is defined by
reference to the target region of the surface of the recited article. Id. In
concert with this, Appellants suggest that the Examiner’s citation of Schaaf’s
disclosure of a tool having a working surface shaped similarly to a target
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region of a contoured cooking surface does not establish anticipation of
claim 1, which Appellants argue requires a tool having a working surface
shaped similarly to a target region of a surface of an article “associated with
a gas turbine engine.” Id.
The Examiner responds the claims do not require a specific shape of
the pad and merely recite that the pad surface conforms to an article
“associated with a gas turbine.” Ans. 5. The Examiner also states that:
In a claim to an apparatus, the structure positively
recited in the claim (and not the intended use
thereof) must differentiate the claimed apparatus
from that of the prior art. Appellant is (in the
examiner’s opinion) giving way too much weight
to the intended use of the tool.

Ans. 5-6. In concert with this, the Examiner maintains that Schaaf meets all
the positively claimed structural limitations of claim 1. Id. at 6.
“All words in a claim must be considered when judging the
patentability of that claim against the prior art.” In re Wilson, 424 F.2d
1382, 1385 (CCPA 1970). We agree with Appellants that the record fails to
indicate clearly that the Examiner has fully addressed all words of claim 1 in
a well-reasoned manner. The Examiner has made findings that Schaaf
discloses a tool with a pad shaped similarly to the shape of the target region
of a surface of an article and at least a portion of the tool is configured to
engage the article at the target region, but the Examiner has not established
that the article is associated with a gas turbine engine. Thus, the Examiner’s
identification of certain language in the claim as reciting only an intended
use does not fully address that the language of claim 1 that “at least a portion
of the tool is configured to engage the article at the target region, where the
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article is associated with a gas turbine engine.” App. Br., Cl. App.
(emphasis added). The Examiner has not established by a preponderance of
evidence that Schaaf discloses a tool with structure that is configured to
engage the target region of an article that is “associated with a gas turbine
engine” as recited in claim 1.
Apparently, as an alternative to the position that Schaaf need not
disclose an article “associated with a gas turbine engine” to anticipate claim
1, the Examiner asserts that “[e]ven if one were to concede (which the
examiner is not) that the claimed tool (or pad) needed to have some
association with a gas turbine engine, it could even be for cleaning a cooking
surface . . . which [is] part of the aircraft (and thus ‘associated’ with the
turbine engine).” Ans. 5. Appellants respond that this is an unreasonable
position. Reply Br. 3. Schaaf by itself does not disclose that the cooking
surface cleaned by its cleaning apparatus is an “article” that “is associated
with a gas turbine engine,” and the Examiner does not cite any evidence that
indicates a person of ordinary skill in the art would have thought that a
cooking surface is associated with a gas turbine engine. Therefore, we agree
with Appellants.
For the foregoing reasons, we cannot sustain the anticipation rejection
based on Schaaf.

Anticipation Rejection Based on Logan
The Examiner finds that Logan anticipates claim 1 because it
“discloses a pad (20) having a working surface shaped to conform to the
shape of a target region.” Ans. 4. Appellants suggest that Logan does not
anticipate claim 1 because it relates to toilets and therefore does not meet the
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language of claim 1 tied to the recited article “associated with a gas turbine
engine.” See App. Br. 4. The Examiner states that “[t]he recitation of the
intended use fails to define over the structure of the prior art.” Ans. 4. The
Examiner also takes the position that a toilet is “associated with a gas turbine
engine” because a toilet is part of an aircraft having a gas turbine engine. Id.
at 5.
Appellants argue that the rejection of claim 1 based on Logan suffers
from the same substantive problems as the rejection of claim 1 based on
Schaaf. App. Br. 4. We agree. Specifically, the record does not indicate
that the Examiner has established by a preponderance of evidence that
Logan discloses a tool with structure that is configured to engage the target
region of an article that is “associated with a gas turbine engine” as recited
in claim 1. Accordingly, we cannot sustain the anticipation rejection based
on Logan.

Anticipation Rejection Based on Warner
The Examiner finds that Warner anticipates claim 1 because it
“discloses a tool comprising first and second opposed pads (13, 14) each
having a shape corresponding to a respective upper and lower surface of a
‘target surface’ and which are interconnected by a hinge (10).” Ans. 4.
Appellants suggest that Warner does not anticipate claim 1 because it relates
to Venetian blinds and therefore does not meet the language of claim 1 tied
to the recited article “associated with a gas turbine engine.” See App. Br. 5.
The Examiner states that “[a]s mentioned above, the repeated references to
. . . the particular use of the ‘tool’, although pertinent to a claim drawn to a
method of use, do not structurally define the structure of the tool over that of
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the prior art.” Ans. 4. The Examiner also takes the position that blinds are
“associated with a gas turbine engine” because blinds are part of an aircraft
having a gas turbine engine. Ans. 5.
Appellants argue that the rejection of claim 1 based on Warner suffers
from the same substantive problems as the rejection of claim 1 based on
Schaaf. See App. Br. 5. We agree. Specifically, the record does not
indicate that the Examiner has established by a preponderance of evidence
that Warner discloses a tool with structure that is configured to engage the
target region of an article that is “associated with a gas turbine engine” as
recited in claim 1. Accordingly, we cannot sustain the anticipation rejection
based on Warner.

Anticipation Rejection Based on Laird
The Examiner finds that Laird anticipates claim 1 because it
“discloses a tool comprising a pair of pads (20, 22) interconnected by a
hinge [(]the integral portion of the pad material at the upper portion
thereof).” Ans. 4. Appellants suggest that Laird does not anticipate claim 1
because it relates to a device for cleaning drinking glasses and utensils, and
therefore does not meet the language of claim 1 tied to the recited article
“associated with a gas turbine engine.” See App. Br. 8. The Examiner states
that “[a]s mentioned above, the structure of the tool itself must be defined in
the claims in a manner which defines over the prior art and not by repeatedly
mentioning the intended use of the tool or the article worked on.” Ans. 4.
The Examiner also takes the position that a drinking glass is “associated
with a gas turbine engine” because a drinking glass is part of an aircraft
having a gas turbine engine. Ans. 5.
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Appellants argue that the rejection of claim 1 based on Laird suffers
from the same substantive problems as the rejection of claim 1 based on
Schaaf. See App. Br. 8. We agree. Specifically, the record does not
indicate that the Examiner has established by a preponderance of evidence
that Laird discloses a tool with structure that is configured to engage the
target region of an article that is “associated with a gas turbine engine” as
recited in claim 1. Accordingly, we cannot sustain the anticipation rejection
based on Laird.

Obviousness Rejection
The obviousness rejection of claims 13 and 14 states that “Warner
discloses the invention substantially as claimed with the exception of the
particular pad material.” Ans. 5. The rejection then concludes that it would
have been obvious based on Schaaf to modify the pad material of Warner.
Id. The rejection does not include findings or reasoning that cures the
deficiencies of the anticipation rejections of claim 1 based on Warner and
Schaaf. Accordingly, we cannot sustain the obviousness rejection of claims
13 and 14.

New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
1 under 35 U.S.C. § 112, second paragraph as being indefinite. We are
unable to ascertain what the claim language “associated with a gas turbine
engine” means in light of the Specification. The Specification discusses at
length using a tool to plug holes in a vane of a turbine engine (Spec. paras.
[0022]-[0039]). However, the Specification does not provide any guidance
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regarding what it means for an article to be “associated with” a gas turbine
engine. Given this, the claim language “associated with a gas turbine
engine” is amenable to two or more plausible claim constructions. For
example, “associated with a gas turbine engine” could be limited to only
components that are part of a gas turbine engine (as with the disclosed
turbine vane), or it could extend to components connected to the gas turbine
engine, or even to tools for working on a gas turbine engine. Because of the
multiple plausible constructions of the claim language “associated with a gas
turbine engine,” we reject claim 1 as indefinite. See Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential).

DECISION
We reverse the Examiner’s decision regarding claims 1-19.
We enter a new ground of rejection of claim 1.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded to
the examiner . . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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