Ex Parte Lee et al

Patent Trial and Appeal Board

Sep 26, 2016

13801483 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/801,483 03/13/2013
6147 7590 09/28/2016
GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH
ONE RESEARCH CIRCLE
BLDG. Kl-3A59
NISKAYUNA, NY 12309
FIRST NAMED INVENTOR
Ching-Pang Lee
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
190492-9 4264
EXAMINER
KERNS, KEVIN P
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
09/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte CHING-PANG LEE, HSIN-PANG WANG,
RAM KUMAR UP ADHY A Y, PAUL RICHARD MYERS,
MARC THOMAS EDGAR, THOMAS DONALD MARTYN, and
ERIC ALAN ESTILL,
Appeal2015-003704
Application 13/801,483
Technology Center 1700
Before BRADLEY R. GARRIS, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner to reject claims 1-10 of Application 13/801,483
1 Appellants identify the real party in interest as General Electric Company.
App. Br. 2.
Appeal2015-003704
Application 13/801,483
under 35 U.S.C. § 102(b) as anticipated by Wilkinson.2 We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
BACKGROUND
The subject matter on appeal relates to a method of casting a metal
component having complex geometry, such as a turbine airfoil with hollow
parts. Specification ("Spec.") i-f 3. The method involves forming a ceramic
core, corresponding to the hollow parts, by pouring a ceramic slurry into a
multi-part core die designed to prevent leakage of the slurry and thus more
accurately produce an integral ceramic core. Id. i-fi-1 4, 7-9.
Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. A method, comprising:
bringing a disposable core die into physical
communication with a reusable core die to form a composite
core die; wherein surfaces of communication between the
disposable core die and the reusable core die seP1e as barriers to
prevent the leakage of a slurry that is disposed in the composite
core die;
disposing a slurry comprising ceramic particles into the
composite core die;
curing the slurry to form a cured ceramic core;
removing the disposable core die and the reusable core
die from the cured ceramic core;
and
firing the cured ceramic core to form a solidified ceramic
core.
2 Wilkinson et al., 4,421,153, issued December 20, 1983 (hereinafter
"Wilkinson").
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Appeal2015-003704
Application 13/801,483
DISCUSSION
The Examiner finds that Wilkinson discloses the steps recited in claim
1 as follows: Wilkinson's Figures 4--8 disclose "bringing a disposable core
die into physical communication with a reusable core die to form a
composite core die;" Wilkinson 4:22-31 discloses the steps of "disposing
slurry of ceramic into the composite core die" and "curing the slurry to form
a cured ceramic core;" and Wilkinson's Figure 9, no. 59 discloses "firing the
cured ceramic core to form a solidified ceramic core." Final Act. 2-3;
Answer 2-3. The Examiner also finds that Wilkinson generally discloses a
method of making a turbine blade at 3:30-6:18 and Figs. 4--12. Id.
Appellants argue that Wilkinson does not anticipate because it does not
disclose the steps of "removing the disposable core die and the reusable core
die from the cured ceramic core" or "firing the cured ceramic core to form a
solidified ceramic core" as recited in claim 1. App. Br. 6.
In response to Appellants' argument that Wilkinson does not disclose
"removing the disposable core die and the reusable core die from the cured
ceramic core," the Examiner points to Wilkinson's "separable core dies (30,
31, 32)" that are "formed to make a composite core die." Final Act. 4, citing
Wilkinson 3:38--43; see also Ans. 4, 6. The core dies described in
Wilkinson 3:38--43 and shown in Figs. 4 and 5, however, are not the same as
the core die described in Wilkinson 4:22-31 and shown in Fig. 7, which is
the portion of Wilkinson upon which the Examiner relies for disclosure of
the claimed steps of disposing and curing the slurry. Ans. 2-3. As
Wilkinson describes, the pieces made in the dies of Figs. 4 and 5 are not
ceramic, but rather "a hard wax, a thermoplastic material or other material
which may be destroyed by heating or by dissolution or by chemical means."
Wilkinson 3:59---61. Further, the core die shown in Wilkinson Fig. 7 is not
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Appeal2015-003704
Application 13/801,483
the same as the three piece die shown in Fig. 8, which is "a third die for a
second stage of ceramic injection" (i.e., after the stage in Fig. 7). Wilkinson
4:4 7--48. Thus, the Examiner relies upon at least three different processes
described in Wilkinson for performing the method recited in claim 1.
We reverse the rejection because the Examiner harmfully erred in
combining parts of the separate processes described in Wilkinson in finding
claim 1 anticipated. "Anticipation requires the presence in a single prior art
disclosure of all elements of a claimed invention arranged as in the claim."
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
2008)( citations omitted); see also In re Arkley, 455 F.2d 586, 587 (CCP A
1972) ("[R]ejections under 35 U.S.C. § 102 are proper only when the
claimed subject matter is identically disclosed or described in the prior art."
(emphasis and internal quotation marks omitted)). Without resort to
improperly choosing and combining various parts of Wilkinson that are not
related to the method of claim 1, as discussed above, Wilkinson does not
anticipate.
Because we find reversible error in the Examiner's finding of
anticipation as to independent claim 1, we need not reach Appellants'
separate arguments with respect to the dependent claims.
SUMMARY
We reverse the rejection of claims 1-10 as anticipated by Wilkinson
under 35 U.S.C. § 102(b).
REVERSED
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