Ex Parte Fisk

Patent Trial and Appeal Board

Feb 3, 2014

11769750 (P.T.A.B. Feb. 3, 2014)

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.
11/769,750 06/28/2007 Benjamin T. Fisk 67097-839PUS1;4452 5358
54549 7590 02/03/2014
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
WILSON, LEE D
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
02/03/2014 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 BENJAMIN T. FISK
____________________

Appeal 2012-002649
Application 11/769,750
Technology Center 3700
____________________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-002649
Application 11/769,750
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STATEMENT OF THE CASE1
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-12 and 19-22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appellant’s invention, as described in the Specification, is a fixture
for aligning a tool for pressure tapping a gas turbine engine component, so
that the tool may measure a pressure of a gas that is flowing through a
cooling hole in the component (Spec., paras. [0002] and [0004]-[0005]).
Claims 1, 9, and 19 are the only independent claims.
EXEMPLARY CLAIM
Claim 1, reproduced below, is representative of the claims on appeal.
1. An apparatus for aligning a pressure
tapping tool, the apparatus comprising:
a base;
an engagement portion of said base, said
engagement portion for engaging a component to
limit relative movement between said base and the
component; and
at least one guide mounted adjacent said
base, wherein positioning a pressure tapping tool
against said at least one guide aligns the pressure
tapping tool for pressure tapping the component.

1 Our decision will refer to Appellant’s Specification (“Spec.,” filed June 28,
2007), Appeal Brief (“App. Br.,” filed April 11, 2011), and Reply Brief
(“Reply Br.,” filed September 7, 2011), as well as the Examiner’s Answer
(“Ans.,” mailed July 8, 2011).

Appeal 2012-002649
Application 11/769,750
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REJECTIONS
The following rejections made by the Examiner are under appeal:
Claim 20 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter Appellant regards as the invention;
claims 1-12 and 19-22 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hung (US 6,375,160 B1, iss. Apr. 23, 2002); and
claims 1-3, 5-12, and 19-22 are rejected under 35 U.S.C. § 102(b) as
anticipated by Ota (US 6,308,944 B1, iss. Oct. 30, 2001).
ANALYSIS
Indefiniteness rejection
The Examiner rejects dependent claim 20 as indefinite, stating claim
20 does not further limit independent claim 19 from which claim 20
depends. Claim 19 requires “said engagement portion [is] adapted to engage
a component to limit relative movement between said base and the
component,” while claim 20 requires that “said component is a gas turbine
engine blade.” We agree with Appellant that claim 20 further limits claim
19 (App. Br. 15). Specifically, claim 20 requires that the engagement
portion be used to engage a gas turbine engine blade, which is not required
by claim 19. Thus, we reverse the indefiniteness rejection.
Anticipation rejection based on Hung
With respect to the rejection of claim 1, Appellant argues Hung does
not teach “at least one guide mounted adjacent said base, wherein
positioning a pressure tapping tool against said at least one guide aligns the
pressure tapping tool for pressure tapping the component” (App. Br. 9).
Specifically, Appellant does not argue that Hung does not teach a “guide
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Application 11/769,750
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mounted adjacent said base,” but rather that Hung does not teach that
“positioning a pressure tapping tool against said at least one guide aligns the
pressure tapping tool for pressure tapping the component” (id. at 9-10).
Initially, we note that claim 1 is an apparatus claim. It is well established
that regardless of the limitations recited in an apparatus claim, such a claim
must be structurally distinguishable from the prior art. Thus, it is irrelevant
that the claim states, in addition to the structural limitation that the “guide
[is] mounted adjacent said base,” that the method of using the guide involves
“positioning a pressure tapping tool against said at least one guide [to] align
[ ] the pressure tapping tool for pressure tapping the component.” The
method of using the guide is not a structurally distinguishable limitation for
the apparatus claimed in claim 1. Inasmuch as the Examiner’s rejection
establishes a prima facie case for anticipation of the structural elements of
claim 1 (Ans. 5, 6), and Appellant has not presented an argument
specifically identifying any structural “features that are not shown in Hung”
(App. Br. 9), we sustain the rejection of claim 1. We also sustain the
rejection of claim 2, which depends from claim 1 and which Appellant
argues with claim 1 (App. Br. 9-10).
Notwithstanding the above, we note that even if we agreed with
Appellant that Hung must be capable of performing the claimed positioning,
Appellant’s argument is not persuasive. In particular, we note that Appellant
submits only attorney argument that Hung cannot perform the claimed
function of “positioning a pressure tapping tool against said at least one
guide [to] align[ ] the pressure tapping tool for pressure tapping the
component.” Appellant has not submitted any evidence, however, such as
Declaration evidence, rebutting the Examiner’s prima facie case that Hung
may be used to position the pressure tapping tool as required by claim 1.
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Thus, the foregoing provides an independent basis for affirming the rejection
of claims 1 and 2.
With respect to claim 3, Appellant argues Hung does not teach “said
guide includes a recessed area for receiving said pressure tapping tool”
(App. Br. 10). The Examiner states, however, “Hung has a hole which [sic]
is a recess area as shown in fig. 6” (Ans. 6). Appellant does not submit
arguments as to why the hole in Figure 6 does not teach the claimed recessed
area. To the extent Appellant is arguing that the hole in Hung is not “for
receiving said pressure tapping tool,” we note that claim 3 is an apparatus
claim, and thus it is irrelevant that the claim states the method of using the
hole (i.e., for receiving the pressure tapping tool). The method of using the
hole is not a structurally distinguishable limitation for the claimed apparatus.
Inasmuch as the Examiner’s rejection establishes a prima facie case for
anticipation of the structural elements of claim 3 (Ans. 6), and Appellant has
not identified any structure not disclosed by Hung, we sustain the rejection
of claim 3.
With respect to claim 4, Appellant only argues, but does not submit
any evidence such as Declaration evidence, that “the convex pad 2 [in Hung]
is not a compressible material” as required by the claim (App. Br. 11). For
this reason, Appellant has not rebutted the Examiner’s prima facie case, and
we therefore sustain the rejection of claim 4.
With respect to claim 5, the Examiner does not identify where Hung
teaches the limitation of “said engagement portion includes an edge portion
defining an aperture.” Thus, we agree with Appellant that the rejection is in
error (Reply Br. 1-2), and we therefore reverse the rejection of claim 5. We
also reverse the rejection of claim 6 that depends from claim 5.
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With respect to claims 7 and 8, Appellant argues that Hung does not
teach specifics of the positioning of a pressure tapping tool (App. Br. 11-12).
However, we sustain the rejection for reasons similar to those discussed
above with respect to claim 1 from which claims 7 and 8 depend.
With respect to independent claim 9, Appellant argues that Hung does
not teach specifics of the positioning of a tool (App. Br. 12). Nevertheless,
we sustain the rejection for reasons similar to those discussed above with
respect to claim 1.
With respect to claims 10 and 11, Appellant argues that Hung does
not teach the claimed positioning (App. Br. 12-13). However, we sustain the
rejection for reasons similar to those discussed above with respect to
independent claim 9 from which they depend.
With respect to claim 12, Appellant argues Hung does not disclose
that “said base has a general ‘V’ shape cross-section” (App. Br. 13). On
page 8 of the Examiner’s Answer, however, the Examiner identifies in Hung
a V shape base member, which would have a V shape cross-section.
Appellant does not submit any evidence, such as Declaration evidence,
establishing that Hung does not disclose the claimed base. Thus, we sustain
the rejection of claim 12.
With respect to independent claim 19, Appellant argues that Hung
does not teach “at least one guide [ ] configured to receive a pressure tapping
tool, wherein the pressure tapping tool is in a pressure tapping position when
received within the guide” (App. Br. 13-14). We note Appellant only
submits attorney argument that Hung is not configured to receive a pressure
tapping tool as claimed. Appellant has not submitted any evidence, such as
Declaration evidence, rebutting the Examiner’s prima facie case that Hung is
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configured as required by claim 19. Further, we note that claim 19 is an
apparatus claim. It is well established that an apparatus claim must be
structurally distinguishable from the prior art. Thus, it is irrelevant that the
claim states that the method of using the guide involves receiving the
pressure tapping tool in a pressure tapping position. The method of using
the guide is not a structurally distinguishable limitation for the apparatus
claimed in claim 19. Inasmuch as the Examiner’s rejection establishes a
prima facie case for anticipation of the structural elements of claim 19 (Ans.
5, 8), and Appellant has not presented any argument specifically identifying
claimed structure not taught by Hung, we sustain the rejection of claim 19.
With respect to claim 20, which depends from claim 19, Appellant
argues that Hung does not teach that the component is a gas turbine engine
blade. We note, however, that while claim 20 requires that “said component
is a gas turbine engine blade,” claim 19 requires “said engagement portion
[is] adapted to engage a component to limit relative movement between said
base and the component.” Thus, the Examiner may establish that Hung
anticipates the claim if Hung is adapted (e.g., capable) of engaging a gas
turbine engine blade, and Hung is not required to teach engagement of a
turbine blade. Appellant only submits attorney argument that Hung’s
engagement portion is not adapted to engage such a blade. Appellant has
not submitted any evidence, such as Declaration evidence, rebutting the
Examiner’s prima facie case that Hung is adapted as required by the claim.
Further, claim 20 is an apparatus claim, and therefore the method of using
the engagement portion (i.e., to engage a turbine blade) is not relevant to
whether Hung teaches the structure required by claim 20. Thus, we sustain
the rejection of claim 20.
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With respect to claim 21, the claim depends from claim 1 and includes
similar limitations as claim 3 that also depends from claim 1. Thus, we
sustain the rejection of claim 21 for similar reasons as claim 3.
With respect to claim 22, which depends from claim 9, Appellant
argues Hung does not teach “said at least one alignment feature is
configured to receive the tool such that the tool is in a pressure tapping
location” (App. Br. 14). The Examiner may establish that Hung anticipates
the claim if Hung is configured (e.g., capable) of receiving a tool in a
pressure tapping location, and Hung is not required to show a tool in such a
location. Appellant only submits attorney argument that Hung’s alignment
feature is not configured as required by the claim. Nevertheless, Appellant
has not submitted any evidence, such as Declaration evidence, rebutting the
Examiner’s prima facie case that Hung is configured as required by claim
22. Further, claim 22 is an apparatus claim, and therefore the method of
using the alignment feature (i.e., to receive a tool in a pressure tapping
location) is not relevant to whether Hung teaches the structure required by
claim 22. Thus, we sustain the rejection of claim 22.
Anticipation rejection based on Ota
The Examiner rejects claims 1-3, 7-12, and 19-22 as anticipated by
Ota. Above we sustain the rejection of each of these claims based on Hung.
Nonetheless, we also sustain the rejection of these claims based on Ota,
inasmuch as the Examiner applies Ota in a manner similar to Hung (Ans. 5-
9), and Appellant submits arguments against Ota which are similar to the
arguments submitted against Hung (App. Br. 3-9).
With respect to claim 5, the Examiner does not identify where Ota
teaches the limitation of “said engagement portion includes an edge portion
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Application 11/769,750
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defining an aperture.” Thus, we agree with Appellant that the rejection is in
error (Reply Br. 1-2), and we therefore reverse the rejection of claim 5. We
also reverse the rejection of claim 6 that depends from claim 5.
DECISION
The Examiner’s rejection of claim 20 under 35 U.S.C. § 112, second
paragraph, is REVERSED.
The Examiner’s rejection of claims 5 and 6 under 35 U.S.C.
§ 102(b) is REVERSED.
The Examiner’s rejection of claims 1-4, 7-12, and 19-22 under 35
U.S.C. § 102(b) is 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).
AFFIRMED-IN-PART

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