Ex Parte Lewis

Patent Trials and Appeals Board

Jun 20, 2019

14707118 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/707,118 05/08/2015 Scott D. Lewis
54549 7590 06/24/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
80716US02;
67097-3203PUS2
5521
EXAMINER
KANG, EDWIN G
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SCOTT D. LEWIS
Appeal2018-007727
Application 14/707,118
Technology Center 3700
Before: DANIELS. SONG, WILLIAMA. CAPP, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-4, 6-18, and 22-25.2 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies United Technologies Corporation as the applicant and
real-party-in-interest. Appeal Br. 1.
2 Appellant has cancelled claim 21, thereby obviating rejections of that claim
under 35 U.S.C. §§ 103 and l 12(a). Final Action 2-3, 23; Appeal Br.,
Claims App.
Appeal2018-007727
Application 14/707,118
THE INVENTION
Appellant's invention relates to cooling a turbine engine blade. Spec.
,i 1. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A turbine engine component comprising:
a fore edge connected to an aft edge via a first surface and a
second surface;
a plurality of cooling passages defined within the turbine
engine component;
a skin core passage defined within an exterior wall of the
turbine engine component and immediately adjacent said first
surface; and
at least one pedestal interrupting a flow path through said
skin core passage.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
French
Butts
Lee
Tibbott
Liang
us 2,956,773
us 5,232,343
us 5,704,763
US 2008/0063524 Al
US 8,596,963 Bl
Oct. 18, 1960
Aug. 3, 1993
Jan. 6, 1998
Mar. 13, 2008
Dec. 3, 2013
The following rejections are before us for review:
1. Claims 1-3, 7, 10-12, and 14-17 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Lee and Liang.
2. Claims 1, 14, 16, 18, and 23-25 are rejected under 35 U.S.C. § 103
as being unpatentable over French and Liang.
3. Claims 4, 6, and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lee, Liang, and Tibbott.
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Application 14/707,118
4. Claims 8, 9, and 22 are rejected under 35 U.S.C. § 103 as being
unpatentable over French, Liang, and Butts.
Claim 1
OPINION
Unpatentability of Claims 1-3, 7, 10---12, and 14-17
over Lee and Liang
The Examiner finds that Lee discloses the invention substantially as
claimed except the pedestal limitation, for which the Examiner relies on
Liang. Final Action 4-5. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to modify Lee with a pedestal as taught by Liang. Id. at 5. According
to the Examiner, a person of ordinary skill in the art would have done this to
improve cooling. Id.
Appellant argues that Lee's subpassage 78 is not defined "within" an
exterior wall as claimed. Appeal Br. 4. In response, the Examiner maintains
that subpassage 78 is defined "within" an exterior wall in accordance with a
broad, but reasonable, construction of the claim limitation. Ans. 3.
Determining patentability is a two-step process. The first step is to
construe the claims, and the second step involves comparing the claims with
the prior art. Oakley, Inc. v. Sunglass Hut Int'!, 316 F.3d 1331, 1339 (Fed.
Cir. 2003). Here, the dispute between the Examiner and Appellant is a
matter of claim construction. During examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation, claim
terms are given their ordinary and customary meaning as would be
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Application 14/707,118
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). However, although the broadest reasonable interpretation
standard is broad, it does not give the Examiner an unfettered license to
interpret the words in a claim without regard for the full claim language and
the written description. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
(Fed. Cir. 2010); see In re Abbott Diabetes Care, Inc., 696 F.3d 1142, 1148-
50 (Fed. Cir. 2012) (finding the construction "unreasonable and inconsistent
with the language of the claims and the specification").
In construing claims, we cannot look at the ordinary meaning of a
term in a vacuum. E.I. Du Pont De Nemours & Co. v. Unifrax I LLC, 921
F.3d 1060, 1068 (Fed. Cir. 2019). Construing the terms of a claim without
considering the context in which those terms appear is not reasonable.
Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
Appellant's invention cools turbine blades in a jet engine. Spec. ,i 4.
In that regard, blade portion 110 is not a solid piece of material, but rather is
somewhat hollow, containing a plurality of cooling passages 240. Spec.
,i 47, Figs. 3, 4. The blade has an exterior wall or skin that surrounds the
cooling passages. Fig. 4. The blade features a plurality of cooling holes 260
that allow cooling air to pass from an upstream cooling passage 240 within
the blade and out cooling holes 260 to generate a film cooling layer along
the exterior surface of the blade. Spec. ,i 48, Figs. 3, 4.
The exterior wall or skin portion of the blade surrounds the plurality
of cooling passages 240. Id. Notably, in addition to cooling passages 240,
Appellant's blade also features skin core passage 250. Id. Skin core
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Application 14/707,118
passage 250 is disposed within the exterior wall or skin. 3 Id. Skin core
passage 250 is thus distinct from cooling passages 240, the difference being
that the cooling passages 240 are "within" the blade or, in other words, are
surrounded by and enclosed within the exterior wall or skin whereas skin
core passage 250 is disposed "within" the exterior wall itself. Id. Skin core
passage 250 is interrupted in its lateral extent by film cooling holes 260
which, in tum, are defined by pedestals 262. Id.
Turning to the language of claim 1, the claim recites two different
limitations that use the word "within," namely:
( 1) within the [blade]; and
(2) within an exterior wall of the [blade].
Claims App., claim 1 ( emphasis added). It is the plurality of cooling
passages 240 that are defined "within" the blade. Id. It is skin core
passage 250 that is defined "within the exterior wall" of the blade. Id.
A person of ordinary skill in the art, having read the Specification and
reviewed Appellant's Figures, would understand that the two "within"
phrases of claim 1 represent two distinct structural features of the claimed
turbine blade. The problem with the Examiner's construction is that the
Examiner assigns the same meaning to two differently worded phrases in the
same claim. Essentially, the Examiner treats "within the blade" and "within
an exterior wall of the blade" as having the same meaning. This effectively
reads the words "an exterior wall of' out of the claim. One of the cardinal
principles of claim construction is that meaning should be given to all of a
3 In certain cross-sectional views, the external wall or skin appears to be
layered, with skin core passage 250 appearing as a void between an inner
and an outer layer of the external wall or skin. See Fig. 4.
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Application 14/707,118
claim's terms. See Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1300 (Fed.
Cir. 2016). Here, the Examiner failed to give proper consideration to the
differently worded "within" phrases in claim 1, which differences provide
important context that is needed to construe the terms.
Appellants argue that "within an exterior wall" refers to features
contained within the wall "itself." Appeal Br. 4. In response, the Examiner
emphasizes that the claim fails to explicitly recite the word "itself' in
conjunction with "exterior wall." Ans. 3. In our opinion, there is no need
for Appellant to add the word "itself' to "within an exterior wall" in order
for a person of ordinary skill in the art to derive Appellant's intended
meaning. The context in which the words are used in the claim is sufficient
to convey the intended meaning.
Thus, in our opinion, the Examiner's construction is overly broad.
Under the correct construction, Lee's subpassage 78 is merely "within the
blade" much in the same way as Appellant's cooling passages 240.
However, it is not "within an exterior wall of the blade" and, therefore, does
not satisfy the limitation of claim 1 directed to "a skin core passage defined
within an exterior wall of the [blade]." The Examiner's finding that Lee
satisfies the skin core passage limitation is in error.
In summary, the Examiner's findings of fact are predicated on an
overly broad and erroneous claim construction, resulting in an erroneous
finding that Lee's subpassage is defined within an exterior wall. The
Examiner's findings of fact are not supported by a preponderance of the
evidence and, accordingly, we not sustain the rejection of claim 1.
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Application 14/707,118
Claims 2, 3, 7, and 10---12
These claims depend, either directly or indirectly, from claim 1.
Claims App. The Examiner's rejection of these claims suffers from the
same infirmity that we have discussed above with respect to claim 1.
Consequently, we do not sustain the rejection of claims 2, 3, 7, and 10-12.
Claims 14-17
Claim 14 is an independent claim and claims 15-17 depend, either
directly or indirectly, therefrom. Claims App. As with claim 1, claim 14
contains a limitation directed to a skin core passage defined within an
exterior wall of the turbine engine component. Id. The Examiner's rejection
of these claims suffers from the same infirmity that we have discussed above
with respect to claim 1. Consequently, we do not sustain the rejection of
claims 14-1 7.
Claim 1
Unpatentability of Claims 1, 14, 16, 18, and 23-25
over French and Liang
The Examiner finds that French discloses the invention substantially
as claimed except the pedestal limitation, for which the Examiner relies on
Liang. Final Action 15-16. In particular, the Examiner finds that French's
passage 23 depicted in Figure 2 satisfies the limitation directed to a skin core
passage defined within an exterior wall. Id. at 15. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to modify French with a pedestal as taught by
Liang. Id. at 16. According to the Examiner, a person of ordinary skill in
the art would have done this to improve cooling. Id.
We have reviewed French, including Figure 2 and element 23
depicted therein. We find that element 23 is not disposed "within" an
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Application 14/707,118
exterior wall in much the same manner that Lee's element 78 is not "within"
an exterior wall in accordance with the claim construction that we previously
discussed in connection with the rejection of claim 1 over Lee and Liang.
The Examiner's findings of fact, which are based on an erroneous
claim construction for reasons previously discussed, are in error and,
accordingly, we do not sustain the Examiner's unpatentability rejection of
claim 1 over French and Liang.
Claims 23-25
Claims 23-25 depend, either directly or indirectly, from claim 1.
Claims App. The Examiner's rejection of these claims suffers from the
same infirmity that we have discussed above with respect to claim 1.
Consequently, we do not sustain the Examiner's unpatentability rejection of
claims 23-25 over French and Liang.
Claims 14, 16, and 18
Claims 16 and 18 depend from independent claim 14. Claims App.
Claim 14 contains a limitation directed to a skin core passage defined
"within" an exterior wall of the turbine engine component. Id. The
Examiner's rejection of these claims suffers from the same infirmity that we
have discussed above with respect to claim 1. Consequently, we do not
sustain the rejection of claims 14, 16, and 18 over French and Liang.
Unpatentability of Claims 4, 6, and 13
Lee, Liang, and Tibbott
Claims 4, 6, and 13 depend, directly or indirectly, from claim 1.
Claims App. The Examiner's rejection of these claims relies on the same
erroneous finding regarding "within" an exterior wall that we previously
discussed in connection with the rejection of claim 1 over Lee and Liang.
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Final Action 21-22. The Examiner's findings regarding the Tibbott
reference do not cure this infirmity. Id. Consequently, we do not sustain the
Examiner's unpatentability rejection of claims 4, 6, and 13 over Lee, Liang,
and Tibbott.
Unpatentability of Claims 8, 9, and 22
French, Liang, and Butts.
Claims 8, 9, and 22 depend, directly or indirectly, from claim 1.
Claims App. The Examiner's rejection of these claims relies on the same
erroneous finding regarding "within" an exterior wall that we previously
discussed in connection with the rejection of claim 1 over French and Liang.
Final Action 23-25. The Examiner's findings regarding the Tibbott
reference do not cure this infirmity. Id. Consequently, we do not sustain the
Examiner's unpatentability rejection of claims 8, 9, and 22 over French,
Liang, and Butts.
DECISION
The decision of the Examiner to reject claims 1-4, 6-18, and 22-25 is
reversed.
REVERSED
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