Ex Parte Hu

Board of Patent Appeals and Interferences

Apr 16, 2009

10746388 (B.P.A.I. Apr. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YIPING HU
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Appeal 2008-4679
Application 10/746,388
Technology Center 3700
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Decided: 1April 16, 2009
____________________

Before WILLIAM F. PATE III, JENNIFER D. BAHR
and STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304 (2008), begins to run from the Decided
Date shown on this page of the decision. The time period does not run from
the Mail Date (paper delivery) or the Notification Date (electronic delivery).

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Application 10/746,388

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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final 2
rejection of claims 1-4, 8, 10-12, 14, 17, 19-22 and 25 under 35 U.S.C. 3
§ 103(a) as being unpatentable over Mukira (US 6,302,649 B1, issued Oct. 4
16, 2001), Peterson (US 6,364,971 B1, issued Apr. 2, 2002) and Cross (US 5
4,096,615, issued Jun. 27, 1978). We have jurisdiction under 35 U.S.C. 6
§ 6(b) (2002). 7
We AFFIRM. 8
The claims on appeal relate to repairing high-strength superalloy 9
turbine blades. (Spec. 3, ¶ 0009). Independent claim 1 is typical of the 10
claims on appeal: 11
12
1. A method of repairing a damaged 13
region on a gas turbine engine turbine blade that is 14
constructed at least partially of a superalloy, 15
comprising the steps of: 16
welding the damaged region of the turbine 17
blade without preheating the damaged region using 18
either an electron beam welding process or a laser 19
welding process, whereby a weld seam having a 20
surface is formed; and 21
subjecting the welded turbine blade to a hot 22
isostatic pressing process, the hot isostatic process 23
carried out at about 2200°F and about 15 ksi, for 24
about 2 - 4 hours. 25
26
ISSUES 27
The Examiner finds that Mukira discloses repairing a superalloy 28
turbine engine blade using electron beam welding or laser welding processes 29
conducted at room temperature. (Ans. 3.) The Examiner finds that Peterson 30
describes repairing a superalloy turbine engine component by means of a 31
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laser welding process followed by a hot isostatic pressing [“HIP”] process. 1
(Id.) The Examiner further finds that Cross teaches performing an HIP 2
process on a brazed turbine engine component at 2225°F and 15 ksi for 3
about 3-4 hours. (Ans. 3-4.) The Examiner concludes that it would have 4
been obvious to have repaired a turbine engine component using an electron 5
beam welding process or a laser welding process followed by an HIP 6
process conducted according to the parameters recited in claim 1 “because 7
the HIP process eliminates microcracking in the weld heat affected 8
zone . . . .” (Ans. 4.) 9
The Appellant presents only one argument directed against the 10
rejections of all of the claims on appeal, namely, that Mukira teaches away 11
from the claimed method because Mukira discloses the use of a solid 12
solution strengthened alloy composition which does not require a post-weld 13
HIP process to produce a good room temperature weld. (App. Br. 10; Reply 14
Br. 2.)2 Since all of the claims on appeal are subject to the same ground of 15
rejection and since the Appellant presents no arguments directed against the 16
rejection of claims 2-4, 8, 10-12, 14, 17, 19-22 and 25 separate from the 17
arguments directed against the rejection of claim 1, we select claim 1 as 18
representative of the claims on appeal. See 37 C.F.R. § 41.37(c)(1)(vii) 19
(2008). 20
This appeal turns on one issue: 21
Has the Appellant shown that the Examiner failed to 22
articulate reasoning with some rational underpinning sufficient 23

2 Although the Appeal Brief states that “the prior art does not
objectively teach or suggest all of the claim elements” (App. Br. 9-10), the
Appellant does not identify any claim element not disclosed by either
Mukira, Peterson or Cross.
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to support the conclusion that the teachings of Mukira, in 1
combination with the teachings of Peterson and Cross, would 2
have suggested performing an HIP process after welding a 3
damaged region of a turbine without preheating the damaged 4
region rather than teaching away from performing a post-weld 5
HIP process? 6
7
FINDINGS OF FACT 8
The record supports the following findings of fact (“FF”) by a 9
preponderance of the evidence. 10
1. Mukira discloses repairing a turbine engine blade or bucket 11
using an electron beam welding process or a laser welding process 12
performed at room temperature to affix a solid solution strengthened 13
superalloy weld composition in a damaged portion of the blade. (Mukira, 14
col. 2, ll. 52-58 and col. 4, ll. 50-54.) 15
2. Mukira further discloses performing machining and coating 16
processes for further protection of the blade to complete the repair process 17
after the blade is welded. (Mukira, col. 2, ll. 64-67.) 18
3. Peterson discloses that one of ordinary skill in the art would 19
have known of the use of solid solution strengthened alloy weld 20
compositions to repair cracks in superalloy blades. (Peterson, col. 1, ll. 39-21
42.) 22
4. Peterson discloses that the weldability of blade superalloys is 23
limited by the tendency of the welds to form cracks. Peterson identifies two 24
distinct types of cracking to which such welds are susceptible. One type of 25
cracking identified by Peterson is hot cracking, which occurs typically 26
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during welding in the form of microcracks beneath the surface of the 1
weldment. (Peterson, col. 1, ll. 27-34; see also id., col. 4, ll. 5-8.) 2
Peterson’s disclosure suggests that such cracking was known to occur in 3
repairs made using solid solution strengthened alloy weld compositions. 4
5. Peterson discloses that the use of low energy welding processes 5
such as electron beam welding processes and laser welding processes 6
reduces cracking. (Peterson, col. 2, ll. 6-9.) Peterson’s disclosure suggests 7
that the use of low energy welding processes does not eliminate the 8
susceptibility of turbine blade repair welds using solid solution strengthened 9
alloy weld compositions to cracking, however. 10
6. Peterson discloses performing HIP processes before and after a 11
low energy welding process to pre-condition a damaged blade for welding 12
and to seal the blade after welding. (Peterson, col. 2, ll. 28-34.) 13
7. Peterson teaches that the post-weld HIP process seals 14
microcracks below the surface of the weldment. (Peterson, col. 4, ll. 8-10.) 15
8. Mukira does not mention the possibility that cracks may form 16
while welding turbine engine blades using Mukira’s solid solution 17
strengthened superalloy weld composition. Neither does Mukira state that 18
cracking does not occur while welding turbine engine blades using Mukira’s 19
weld composition. 20
9. Mukira does not mention, much less criticize, performing an 21
HIP process after performing a low energy welding process to repair a 22
turbine engine blade using Mukira’s weld composition. 23
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PRINCIPLES OF LAW 1
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if 2
“the differences between the subject matter sought to be patented and the 3
prior art are such that the subject matter as a whole would have been obvious 4
at the time the invention was made to a person having ordinary skill in the 5
art to which said subject matter pertains.” In Graham v. John Deere Co., 6
383 U.S. 1 (1966), the Supreme Court set out factors to be considered in 7
determining whether claimed subject matter would have been obvious: 8
9
Under § 103, the scope and content of the prior art 10
are to be determined; differences between the prior 11
art and the claims at issue are to be ascertained; 12
and the level of ordinary skill in the pertinent art 13
resolved. Against this background the obviousness 14
or nonobviousness of the subject matter is 15
determined. 16
17
Id., 383 U.S. at 17. 18
The Appellant does not rely on any objective evidence of patentability 19
in this appeal. (See App. Br. 20). Therefore, the Appellant’s burden in this 20
appeal is to show that the Examiner has identified insufficient evidence to 21
support a conclusion of prima facie obviousness. In re Kahn, 441 F.3d 977, 22
985-86 (Fed. Cir. 2006) (citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 23
1998)). “[R]ejections on obviousness grounds cannot be sustained by mere 24
conclusory statements; instead, there must be some articulated reasoning 25
with some rational underpinning to support the legal conclusion of 26
obviousness.” Kahn, 441 F.3d at 988. 27
As a general rule, a reference which “teaches away” from the subject 28
matter of a claim does not support a prima facie case that the subject matter 29
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would have been obvious. A reference teaches away from the subject matter 1
of a claim only if “a person of ordinary skill, upon reading the reference, 2
would be discouraged from following the path set out in the reference, or 3
would be led in a direction divergent from the path that was taken by the 4
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). 5
6
ANALYSIS 7
The Appellant does not appear to contest that Mukira discloses 8
welding a damaged region of superalloy turbine blade without preheating3 9
the damaged region using a low energy welding process such as electron 10
beam welding or a laser welding. (See App Br. 9-10; Reply 2.) Peterson 11
would have suggested that repairing a superalloy turbine blade by 12
performing a low energy welding process using a solid solution strengthened 13
superalloy weld composition such as Mukira’s likely would produce 14
microcracks below the surface of the weldment. (FF 4 and 5.) The 15
Appellant points to nothing in Mukira which would have contradicted this 16
suggestion. (See FF 8.) Given the likelihood that a low energy welding 17
process using a solid solution strengthened superalloy weld composition 18
such as Mukira’s would leave microcracks below the surface of the 19
weldment, Peterson would have suggested performing a post-weld HIP 20

3 Mukira indicates that welding “without preheating” implies welding
performed at room temperature. (Mukira, col. 1, ll. 37-42). The Appellant
does not define the term “welding . . . without preheating” in the
Specification or use the term in the Specification in a manner inconsistent
with this interpretation. In any event, the Appellant does not appear to
contest that Mukira discloses welding without preheating. (See App. Br. 8).
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process to seal any such microcracks and thereby improve the material 1
properties of the repair. (See FF 6 and 7.) 2
Mukira is merely silent concerning the performance of a post-weld 3
HIP process to seal any microcracks left by the low energy welding process. 4
(FF 9.) Mukira does mention performing certain post-weld process, such as 5
additional machining as well as coating processes. (see FF 2.) Even if, as 6
the Appellant argues (see Reply Br. 2), Mukira’s silence indicates that the 7
author of Mukira did not believe that a post-weld HIP process is needed, 8
Mukira’s silence concerning the use of post-weld HIP processes while 9
describing the use of other post-weld processes does not imply any criticism 10
of the use of a post-weld HIP process. Likewise, Mukira’s silence does not 11
imply that a repair to a superalloy turbine blade made by applying a post-12
weld HIP process to a blade welded using Mukira’s weld composition would 13
be inoperative for its intended purpose. Mukira’s silence, even when 14
considered in the context of Mukira’s disclosure as a whole, is not a teaching 15
away from the use of a post-weld HIP process to seal any microcracks left 16
by the welding process disclosed by Mukira. Cf. DyStar Textilfarben GmbH 17
v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006)(“We will not read 18
into a reference a teaching away from a process where no such language 19
exists.”). 20
21
CONCLUSIONS 22
The Appellant has not shown that the Examiner failed to articulate 23
reasoning with some rational underpinning sufficient to support the 24
conclusion that the teachings of Mukira, in combination with the teachings 25
of Peterson and Cross, would have suggested performing an HIP process 26
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after welding a damaged region of a turbine without preheating the damaged 1
region rather than teaching away from performing a post-weld HIP process. 2
Therefore, the Appellant has not shown that the Examiner erred in rejecting 3
claims 1-4, 8, 10-12, 14, 17, 19-22 and 25 under 35 U.S.C. § 103(a) as being 4
unpatentable over Mukira, Peterson and Cross. 5
6
DECISION 7
The Examiner’s rejection of claims 1-4, 8, 10-12, 14, 17, 19-22 and 8
25 is AFFIRMED. 9
No time period for taking any subsequent action in connection with 10
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 11
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AFFIRMED 14
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LV: 22
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