Ex Parte El-Wardany et al

Patent Trial and Appeal Board

Nov 26, 2013

11782666 (P.T.A.B. Nov. 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.
11/782,666 07/25/2007 Tahany Ibrahim El-Wardany 67097-831;
PA-0001315-US
7993
54549 7590 11/26/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
JONES, HUGH M
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
11/26/2013 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 TAHANY IBRAHIM EL-WARDANY, CHANGSHENG GUO,
DANIEL V. VIENS, ERIC FROMERTH, and LIENJING CHEN
____________________

Appeal 2011-006659
Application 11/782,666
Technology Center 2100
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/782,666

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-4, and 12-15. Claims 5-11 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellants, the invention relates to a tool for forming a
rotor blade including an airfoil portion, and more particularly to designing a
tool and a tool path for forming a rotor blade including an airfoil portion
(Spec. 1, ¶[0001]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method of designing a tool for forming a rotor blade
including an airfoil portion, comprising:
generating a computer model of a rotor blade including
an airfoil portion;
determining a curvature and a radius of curvature at
sections of the rotor blade;
calculating an inner diameter and an outer diameter of a
circumferential forming portion of a tool operable to form the
rotor blade, wherein the forming portion is formed on both an
inner peripheral surface and an outer peripheral surface of a
cylindrical body portion of the tool;
verifying that an outer radius of the forming portion is
less than a minimum curvature radius of an airfoil portion
corresponding to a pressure side of the rotor blade; and
verifying that an inner radius of the forming portion is
greater than a maximum curvature radius of an airfoil portion
corresponding to a suction side of the rotor blade.

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C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kuhne US 6,682,301 B2 Jan. 27, 2004
Sasu US 6,935,817 B2 Aug. 30, 2005

Claims 1, 2, and 12-15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sasu.
1

Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sasu and Kuhne.

II. ISSUE
The main issue before us is whether Appellants have shown that the
Examiner erred in determining that Sasu would have suggested “calculating
an inner diameter and an outer diameter of a circumferential forming portion
of a tool,” “verifying that an outer radius of the forming portion is less than a
minimum curvature radius of an airfoil portion,” and “verifying that an inner
radius of the forming portion is greater than a maximum curvature radius of
an airfoil portion” (claim 1).

1
We note that claim 1 could read on a human performing the method of
designing the tool, thus, requiring no computer. See Ex parte Gutta, 93
USPQ2d at 1032-1034. In the event of further prosecution, we leave it to
the Examiner to consider rejecting claims 13-19 under 35 U.S.C. § 101, and
determining whether such method could be performed by a human as a
series of mental steps (requiring no computer) and thus is directed to non-
statutory subject matter. See also Cybersource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) (If a method can be performed
by human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101).
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IV. ANALYSIS
As for claim 1, the Examiner finds that Sasu discloses a “method of
designing a tool for forming a rotor blade including an airfoil portion” (Ans.
3) wherein “[t]he inner and outer diameters would have to be calculated in
order to design the cutting ring shown in fig. 1 [of Sasu], which has milling
surfaces on both the inner and outer portions of the cylinder” (Ans. 5,
emphasis added). As to the recited “verifying” step of claim 1, the Examiner
explains that “[t]he tool could not be used to mill the suction (pressure) side
of the blade having a larger (smaller) curvature, if the recited conditions
were not met” (Ans. 9). That is, the Examiner finds that “if the radius of the
outer surface of the cylindrical tool is greater [than] the desired radius to be
machined – the desired radius simply will not be machined” and “[t]he same
reasoning applies for the inner tool surface” (Ans. 9-10). Thus, the
Examiner is making an inherency finding that “[s]uch [recited] calculations
are required for the tool in fig. 1 (Sasu) to work” and thus “[t]he calculation
is implicit in and determined by the problem to be solved” (Ans. 10,
emphasis added).
In response, Appellants merely contend that Sasu’s outer peripheral
surfaces of the cutting inserts “appear to be extreme surfaces, and on
circumferentially spaced portions of teeth, rather than any cylindrical body
portion” (Reply Br. 1), and that Sasu’s tool “operates in such a distinct
manner that there is no showing that it would require this verification step”
(Reply Br. 2).
We find the weight of the evidence supports the Examiner’s findings.
We give the claims their broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
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1997). However, we will not read limitations from the Specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Although Appellants argue that Sasu’s peripheral surfaces are “on
circumferentially spaced portions of teeth, rather than any cylindrical body
portion” (Reply Br. 1), as the Examiner points out, “Claim 1 only requires a
‘forming portion’ on said surfaces” of a cylindrical body (Ans. 8). We find
no error with the Examiner’s finding that Sasu discloses forming surfaces
comprising “cutting teeth for milling and abrasive material for grinding” of
the cylindrical body portion of the tool, as required by claim 1.
Although Appellants also argue that Sasu’s tool “operates in such a
distinct manner that there is no showing that it would require [a] verification
step” (Reply Br. 2), as the Examiner pointed out, “[a] prima facie case was
made” but “Appellants provide no evidence to the contrary” (Ans. 10). That
is, in response to the Examiner’s finding of inherency, in which such
“verification” step is “required” for the tool to work (id.), Appellants do not
provide any evidence to the contrary but merely argues that Sasu’s tool
operates in a “distinct manner” (Reply Br. 2).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001)
(citations omitted). “The inherent teaching of a prior art reference, a
question of fact, arises both in the context of anticipation and obviousness.”
In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103
rejection based in part on inherent disclosure in one of the references). The
question of obviousness is "based on underlying factual determinations
including . . . what th[e] prior art teaches explicitly and inherently . . . ." In
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re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citing Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966); In re Dembiczak, 175 F.3d 994, 998
(Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)).
“In relying upon the theory of inherency, the Examiner must provide
a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (Bd. Pat. App. & Inter. 1990) [emphasis in original]. “[A]fter the
PTO establishes a prima facie case . . . based on inherency, the burden shifts
to appellant to ‘prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.’” In re King, 801 F.2d 1324, 1327,
231 USPQ 136, 138 (Fed. Cir. 1986) (quoting In re Swinehart, 439 F.2d
210, 212-13, 169 USPQ 226, 229 (CCPA 1971)). See also MPEP §§ 2112
(IV.), (V.).
Here, the Examiner provides technical reasoning to reasonably
support the determination that such “verification” step is necessary for the
tool to work (Ans. 10), and thus, the burden shifts to Appellants to prove that
such otherwise. However, we find that Appellants have failed to provide
any such proof.
Thus, we find that Appellants have not shown that the Examiner erred
in rejecting claim 1 over Sasu. Appellants do not provide arguments for
claims 2-4, and 13 separate from claim 1 (App. Br. 3-4), and thus,
Appellants also have not shown error with the rejection of claims 2 and 13
over Sasu, and of claims 3 and 4 over Sasu and Kuhne.
As to claim 12, Appellants merely argue that Sasu “does not have a
cylindrical body, and does not have grinding portions on inner and outer
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peripheral surfaces” (App. Br. 4). However, we find no error in the
Examiner’s finding that Sasu discloses a “cylinder” with “milling teeth or
grinding material… placed on the forming portion on the inner and out
peripheral surfaces” (Ans. 12). That is, we find no error with the
Examiner’s finding that “[t]he claimed peripheral forming surfaces actually
can be ‘inserts’ or ‘attachments’” and “are not required to be the same
material as the cylinder” (id., emphasis omitted).
Claim 14 merely recites that the tool is “used to form” an integrally
bladed rotor while the inner peripheral surface is “utilized to form” the
pressure side. Claim 15 merely recites that the design is “utilized for form”
a tool. Although Appellants argue that the claims recite method steps “that
have to do with further actions” (App. Br. 4), we agree with the Examiner
that “to form” features are merely intended uses of the tool, surface and
design. We find such intended use “to form” does not limit the scope of the
claims because it merely defines a context in which the invention operates.
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003).
Accordingly, we find that Appellants also have not shown that the
Examiner erred in rejecting claims 12 and 14-15 over Sasu. .

V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 1-4, and 12-15 under 35 U.S.C.
§ 103(a) 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)(1)(iv).

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AFFIRMED

ELD