Ex Parte Huang et al

Patent Trial and Appeal Board

Jun 27, 2013

10910867 (P.T.A.B. Jun. 27, 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.
10/910,867 08/04/2004 Kai Huang 2003P12386US01 9057
7590 06/28/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
BIBBEE, JARED M
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
06/28/2013 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 KAI HUANG and RAMESH SUBRAMANIAN

Appeal 2011-001310
Application 10/910,8671
Technology Center 2100
____________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20, which are all of the claims remaining in the present
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Application filed Aug. 4, 2004, claiming benefit of U.S. Provisional
Application No. 60/495,502 filed August 15, 2003. The real party in interest
is Siemens Energy, Inc. (App. Br. 2.)
Appeal 2011-001310
Application 10/910,867

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Invention
The invention relates to system and method for processing inspection
data for evaluating degradation of coatings on a component. (Spec. 1, ll. 8-
9.)2
Representative Claim
Independent claim 1, reproduced below with the key disputed
limitations emphasized, further illustrates the invention:
1. A system for processing inspection data for evaluating a
coating on a component exposed to a combustion environment, the
system comprising:
a database for storing data comprising a representation of
a component, the representation comprising a mapping of the
component based on a selected operational performance criteria
of the component, wherein said mapping of data representation
of the component includes a plurality of mapped zones
identified over a surface of the representation of the component,
each zone indicative at a distinct quantification of the selected
performance criteria; and
a processor configured to process inspection data of the
component relative to the mapped data representation of the
component, wherein processed inspection data is indicative of
coating deterioration from exposure to the combustion
environment, wherein a respective degree of coating
deterioration is indicated corresponding to at least one selected
mapped zone of the mapped zones identified over the surface of
the representation of the component.

2 We refer to Appellants’ Specification (“Spec.”); Reply Brief (“Reply Br.”)
filed October 1, 2010; and Appeal Brief (“App. Br.”) filed June 15, 2010.
We also refer to the Examiner’s Answer (“Ans.”) mailed Aug. 31, 2010.
Appeal 2011-001310
Application 10/910,867

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Rejections on Appeal
1. The Examiner rejects claims 1-19 under 35 U.S.C. § 103(a) as
being unpatentable over Kilburn (U.S. Patent No. 6,759,627 B2, issued Jul.
6, 2004 (filed by Oct. 17, 2002)), Zhao (U.S. Pat. Pub. No. 2003/0118440
A1 published June 26, 2003), and Eppler (U.S. Pat. Pub. No. 2003/0081717
A1, published May 1, 2003).
2. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Kilburn, Zhao, and Tomita (U.S. Pat. Pub. No.
2004/0073400 A1, published Apr. 15, 2004 (filed Oct. 11, 2002)).

Grouping of Claims
Based on Appellants’ arguments in the Briefs, we will decide the
appeal on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

ISSUES
1. Under § 103, did the Examiner err in finding that the cited
combination of references, collectively, would have taught or suggested a
“system for processing inspection data for evaluating a coating on a
component exposed to a combustion environment,” within the meaning of
independent claim 1 and the commensurate language of claims 10 and 18?
2. Under § 103, did the Examiner err in modifying Kilburn with
the teachings of Zhao?
3. Under § 103, did the Examiner err in combining Kilburn, Zhao
and Eppler?

Appeal 2011-001310
Application 10/910,867

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ANALYSIS
System for Processing Inspection Data
Appellants contend inter alia, “[o]ne skilled in the art would not
reasonably construe that the cleaning system of Kilburn processes inspection
data for evaluating a coating on a component.” (App. Br. 5.)
We observe that claim 1 is an apparatus claim that comprises a
database and a processor. Kilburn describes a database, (Kilburn, col. 6, ll.
2-8), and Zhao describes a processor (analyzer 12). (Zhao, ¶ [0048].)
We find that the phrase at issue, processing inspection data, is a
statement of intended use. “An[ ]intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003). Although “[s]uch statements often . . . appear in the claim’s
preamble,” In re Stencel, 828 F.2d 751, 754 (Fed.Cir. 1987), a statement of
intended use or purpose can appear elsewhere in a claim. Id. Additionally,
the “processed inspection data” (claim 1) does not further limit the claim
either functionally or structurally. Although the processed inspection data
“is indicative of coating deterioration from exposure to the combustion
environment” (claim 1), the “processed inspection data” is not positively
recited as being utilized in any way.
We conclude that Appellants have not shown the Examiner
erred in finding that the cited combination of references collectively
would have taught or suggested a “system for processing inspection
data for evaluating a coating on a component exposed to a combustion
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Application 10/910,867

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environment,” within the meaning of representative independent claim
1.
Combinability
Lack of Motivation
Appellants contend that the Examiner failed to reasonably explain
why one skilled in the art would be motivated to modify Kilburn’s cleaning
system to incorporate the taggants of Zhao in a coating of a workpiece.
(App. Br. 7.) Appellants also contend that one skilled in the art would
appreciate that an operating turbine (Zhao) is essentially incompatible with
the cleansing system of Kilburn. (Id.) We disagree.
We agree with Appellants that in order to present a prima facie case of
obviousness, the Examiner must articulate reasoning with some rational
underpinning to support the legal conclusion of obviousness. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). In the present case, the Examiner articulates a reason
for combining Kilburn and Zhao with a rational underpinning – to determine
the level of deterioration indicative of the state of wear and/or damage on a
gas turbine part while the machine is in full operation. (Ans. 5.) Appellants
also assert that the references are incompatible because they are directed to
different objectives. (App. Br. 7.) We find Appellants’ argument
unavailing.
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The operative question is
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Application 10/910,867

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“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” (Id.) This reasoning is
applicable in the present case.
Based on this record, we conclude that Appellants have not shown
that the Examiner erred in combining Kilburn and Zhao.
Principle of Operation
Appellants contend that “[o]ne skilled in the art would appreciate that
a laser-based system, optical system (or any of the other techniques
mentioned by Eppler) for surface topology mapping would fundamentally
change the principle of operation of Zhao (chemical element analysis
regarding taggants in the exhaust of an operating turbine).” (App. Br. 8.)
We disagree.
“What appellants overlook is that it is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983)
(citations omitted) (emphasis added); see also In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”). The test for obviousness is
not whether the features of a reference may be bodily incorporated into the
structure of another reference but what the combined teachings of those
references would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). This reasoning
is applicable in the present case. The Examiner found that Zhao taught or
suggested determining a respective degree of coating deterioration in a
mapped zone of a component. (Ans. 5.) The Examiner relied on Eppler to
establish that identifying a plurality of mapped zones over the surface of the
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representation of the component, was well-known at the time of Appellants’
invention. (Ans. 6.) Therefore, the Examiner’s prima facie case does not
involve the bodily incorporation of Kilburn, Zhao and Eppler, and would not
change the principle of operation of Zhao. Based on this record, we
conclude that the Examiner did not err in combining Kilburn, Zhao, and
Eppler.
Reply Brief
Appellants argue for the first time: 1) that the Examiner does not
expressly point out which component of Zhao is being construed by the
Examiner as the claimed processor, and 2) the Examiner errs that Zhao
teaches “processing the groups of inspection data separately to assess a
condition of the thermal barrier coating.” (Reply Br. 2.) We note that the
Reply Brief is properly used to respond to points of argument raised by the
Examiner in the Answer and not as a means for presenting new arguments.
See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“informative”)
(absent a showing of good cause, the Board is not required to address
arguments in the Reply Brief that could have been presented in the principal
Brief). While we have fully considered Appellants’ responses in the Reply
Brief, we decline to address any new arguments not originally presented in
the principal Brief. With respect to all claims before us on appeal,
arguments which Appellants could have made but chose not to make have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). See also In re Watts, 354 F.3d 1362, 1368 (Fed. Cir.
2004). This reasoning is applicable in the present case.
Based on Issues 1-3 discussed supra, we affirm the Examiner’s
rejection of representative claim 1 and independent claims 10 and 18. We
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also affirm the Examiner’s rejection of dependent claims 2-9, 11-17, and 19,
which were not argued with particularity. (See App. Br. 9.)
Claim 20
As noted above, dependent claim 20 stands rejected under a separate
set of references. Appellants did not argue for the patentability of claim 20
with particularity. (App. Br. 9.) Accordingly, we affirm the Examiner’s
rejection of claim 20 for the same reasons discussed supra.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1-20 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejections of claims 1-20 under 35 U.S.C.
§ 103(a).
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

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