Ex Parte Mannava et al

Board of Patent Appeals and Interferences

Jan 31, 2001

08686630 (B.P.A.I. Jan. 31, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte SEETHARAMAIAH MANNAVA and WILLIAM D. COWIE
__________
Appeal No. 2000-0178
Application 08/686,630
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, which are all of the claims
pending in this application.
Appeal No. 2000-0178
Application 08/686,630
2
Appellants’ invention is directed to an article comprising
an intermetallic body, at least one laser shock peened surface on
at least a portion of the intermetallic body, and a region having
compressive residual stresses imparted by the laser shock peening
extending into the intermetallic body from said laser shock
peened surface (claims 1 through 10) and to a method for shock
peening an intermetallic article like that in claims 1 through 10
(claims 11 through 20). Independent claims 1 and 11 are
representative of the subject matter on appeal and a copy of
those claims may be found in the Appendix to appellants’ brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Neal et al. (Neal) 4,426,867 Jan. 24, 1984
Nazmy et al. (Nazmy) 5,299,353 Apr. 5, 1994
Baumann et al. (Baumann) 5,415,831 May 16, 1995
Mannava et al. (Mannava (‘329)) 5,674,329 Oct. 7, 1997
(filed Apr. 26, 1996)
Mannava (Mannava (‘965)) 5,756,965 May 26, 1998
(effectively filed Dec. 22, 1994)
Vaccari, John A., “Laser Shocking Extends Fatigue Life”,
American Machninist, July 1992, pp. 62-64. (American Machinist
article)
Appeal No. 2000-0178
Application 08/686,630
1 This Epstein patent was cited by appellants in their
Information Disclosure Statement filed July 24, 1996.
3
In addition to the foregoing, this merits panel of the Board
has relied upon the following prior art reference in a new ground
of rejection entered under 37 CFR § 1.196(b):
Epstein et al. (Epstein ‘957)1 5,131,957 Jul. 21, 1992
Claims 1, 2 and 11 through 13 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Nazmy in view of the American
Machinist article.

Claims 3 and 5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nazmy in view of the American Machinist article
as applied to claim 2 above, and further in view of Neal.
Claim 14 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nazmy in view of the American Machinist article
as applied to claim 11 above, and further in view of Mannava
(‘329).
Appeal No. 2000-0178
Application 08/686,630
4
Claims 3 through 10, 15, 16, 18 and 19 stand rejected under
35 U.S.C. § 103 as being unpatentable over Nazmy in view of the
American Machinist article as applied to claims 1, 2 and 11
through 13 above, and further in view of Mannava (‘965).
Claim 17 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nazmy in view of the American Machinist article
and Mannava (‘965) as applied to claim 15 above, and further in
view of Mannava (‘329).
Claim 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nazmy in view of the American Machinist article
and Mannava (‘965) as applied to claim 18 above, and further in
view of Baumann.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellants
regarding the rejections, we make reference to the examiner's
answer (Paper No. 9, mailed May 11, 1999) for the reasoning in
Appeal No. 2000-0178
Application 08/686,630
5
support of the rejections, and to appellants’ brief (Paper No. 8,
filed March 1, 1999) and reply brief (Paper No. 10, filed July
12, 1999) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
our review, we have made the determinations which follow.
Looking first at the examiner’s rejection of claims 1, 2 and
11 through 13 under 35 U.S.C. § 103 as being unpatentable over
Nazmy in view of the American Machinist article, we note that on
page 3 of the answer the examiner has urged that Nazmy discloses
a turbine blade made of gamma titanium aluminide (an
intermetallic material), which material has properties that make
it suitable and beneficial for use in the manufacture of turbine
blades that may be subjected to high operating temperatures. We,
however, observe that Nazmy does not mention laser shock peening
of the blades therein as required in each of the claims on appeal
Appeal No. 2000-0178
Application 08/686,630
6
and further that this reference instead describes “an annealed,
hot-isostatically pressed, hot-formed and heat-treated casting,
from which the turbine blade according to the invention is
produced by material-removing machining” (col. 1, line 67-col. 2,
line 2).
To account for the above difference between appellants’
claimed subject matter and Nazmy, the examiner has urged that the
American Machinist article teaches using a laser shock peening
method of hardening a metal by imparting residual compressive
stresses in order to provide superior fatigue life to a metal
part and specifically suggests the application of that method to
parts formed of titanium or titanium alloys. From these
teachings, the examiner concludes that it would have been obvious
to one of ordinary skill in the art of metal material surface
finishing at the time of appellants’ invention
to use the laser shock peening method of hardening the
turbine blade of the Nazmy patent for the purpose of
hardening the blade and thus increasing its fatigue life.
In treating the blade with the laser shock peening, it is
assumed that the entire blade surface is treated. Thus, the
treated surface would include the leading edge and extending
chordwise therefrom. The laser shock peening treatment
inherently produces the region of compressive residual
stresses on the treated surface (answer, page 4).
Appeal No. 2000-0178
Application 08/686,630
7
Appellants assert in both their brief and reply brief that
because Nazmy (col. 1, lines 26-30) and their own specification
(pages 2-4) warn about the low ductility and thus brittleness of
intermetallic materials, one skilled in the art at the time of
their invention would not have processed an intermetallic
material with a peening process (e.g., either shot peening or
laser shock peening), because the brittle intermetallic material
would have been viewed as being subject to breaking, shattering
or other damage as a result of such processing. Accordingly,
appellants argue that, absent hindsight provided by their own
disclosure, one skilled in the art would not have combined the
applied references as done by the examiner because the prior art
clearly teaches away from any such combination.
Appellants further contend that none of the applied
references even hint at laser shock peened articles made of
intermetallic materials and that the examiner has implied and
inferred results which are directly opposed to what is taught by
the prior art when taken as a whole. In this regard, appellants
(reply brief, page 3) attack the examiner’s position that it
would have been obvious to one of ordinary skill in the art to
Appeal No. 2000-0178
Application 08/686,630
8
laser shock peen the entire blade surface of the blade in Nazmy
following the teachings of the American Machinist article, by
urging that the teachings at page 64 of the American Machinist
article make it clear that the process disclosed in that
reference is limited and “not yet practical for treating large
surface areas.” Therefore, appellants assert (brief, page 15)
that the examiner has utilized appellants’ own disclosure in the
present application as a blueprint for piecing together unrelated
references without citing any legitimate suggestion or motivation
for their combination and thereby engaged in an improper
hindsight reconstruction to obtain the result claimed by
appellants.
Having carefully reviewed the collective teachings of Nazmy
and the American Machinist article, we find ourselves in
agreement with appellants’ view that there is no motivation,
teaching or suggestion in the applied references for the
examiner’s proposed combination thereof in such a manner as to
result in appellants’ claimed subject matter. Without any
teaching or suggestion in the applied references at all relating
to laser shock peening, or even shot peening, of intermetallic
materials, it is our opinion that the examiner has used
Appeal No. 2000-0178
Application 08/686,630
9
impermissible hindsight derived from appellants’ own teachings to
combine Nazmy and the American Machinist article. Like
appellants, we consider that the teachings of the references
relied upon by the examiner when considered as a whole would have
led one of ordinary skill in the art away from attempting any
modification of the coarse-grained, low ductility blade portion
(1) in Nazmy by a laser shock peening process like that disclosed
in the American Machinist article, particularly since the
American Machinist article itself indicates that the laser shock
peening process therein is “not yet practical for treating large
surface areas” (page 64).
As for the examiner’s attempt to justify combination of the
applied references on the basis that one skilled in the art would
have considered the intermetallic material of Nazmy (i.e., gamma
titanium aluminide) to be a titanium alloy like that treated by
the laser peening process of the American Machinist article, our
review of the record of this application indicates that those
skilled in this art would have in fact recognized several
significant property differences between a titanium metal alloy
and an intermetallic material based on titanium. More
specifically, while an intermetallic material may technically be
Appeal No. 2000-0178
Application 08/686,630
10
a metalic compound it would have been recognized by those
skilled in the art as a unique class of metallic materials that
form long-range ordered crystal structures distinct from the
structure of other metals and metal alloys and which thus have
characteristics (particularly at room temperature) that make the
intermetallic materials more akin to being classified as ceramics
than as metals. Thus, it is our opinion that the mere disclosure
in the American Machinist article of metal parts formed of
titanium and titanium alloys is not alone sufficient to justify
the examiner’s proposed combination of Nazmy and the American
Machinist article.
Since we have determined that the teachings and suggestions
found in Nazmy and the American Machinist article would not have
made the subject matter of claims 1, 2 and 11 through 13 on
appeal obvious to one of ordinary skill in the art at the time of
appellants’ invention, we must refuse to sustain the examiner’s
rejection of those claims under 35 U.S.C. § 103.
As for the examiner’s additional rejections of claims 3
through 10 and 14 through 20 under 35 U.S.C. § 103, we have
reviewed the patents to Neal and Baumann, and Mannava (‘329) and
Appeal No. 2000-0178
Application 08/686,630
11
Mannava (‘965), but find nothing therein that provides for that
which we have indicated above to be lacking in the examiner’s
basic combination of Nazmy and the American Machinist article,
the combination that forms the foundation upon which all of the
examiner’s additional rejections are based. Accordingly, the
examiner’s further rejections of claims 3 through 10 and 14
through 20 under 35 U.S.C. § 103 will likewise not be sustained.
In light of the foregoing, the decision of the examiner to
reject claims 1 through 20 of the present application under
35 U.S.C. § 103 is reversed.
Pursuant to our authority under 37 CFR § 1.196(b), we enter
the following new ground of rejection.
Claims 1, 11 through 13, 15 and 16 are rejected under
35 U.S.C. § 102(b) as being anticipated by Epstein (‘957).
Epstein (‘957) discloses a method and apparatus for improving
properties (e.g., fatigue life) of a solid material target (11)
by subjecting a surface portion of the target to laser shock
processing which produces an area of residual compressive
stresses extending into the target body from the laser shock
Appeal No. 2000-0178
Application 08/686,630
12
processed surface thereof (col. 4, lines 3-10). While the
patentee mentions in column 15, lines 13-15, that such processing
can be useful with non-metals such as ceramics and polymers as
well as with metals, we observe that in column 13, lines 45-50,
it is specifically indicated that the target (11) “typically
comprises at least one metal, alloy, intermetallic compound, or
other metallic material” (emphasis added). The laser processing
disclosed in Epstein (‘957) appears to be identical to that
broadly set forth in appellants’ claims 11 through 13, 15 and 16
on appeal. See particularly, columns 16 and 17 of Epstein (‘957),
wherein the target surface to be processed (e.g., an
intermetallic target) is coated with an ablative layer (26) of,
for example, paint and then provided with a confining medium in
the form of flowing water forming a flowing fluid curtain over
the coated surface, and then subjected to the firing of a laser
beam on the coated surface with sufficient power to vaporize the
ablative layer and form a region in the intermetallic body having
compressive residual stresses imparted by the laser beam pulsing
such that the region extends into the intermetallic body from the
laser shock processed surface. The use of multiple laser pulses
to achieve a given level of residual stresses and the use of
overlapping pulses to permit treatment of larger surface areas is
Appeal No. 2000-0178
Application 08/686,630
13
discussed in Epstein (‘957), columns 18 and 19. In our view, an
article resulting from applying the teachings of Epstein (‘957)
to an intermetallic material target as suggested therein would be
identical to that set forth in appellants’ claim 1 on appeal.
In addition, we REMAND this application to the examiner to
consider the collective teachings of Baumann (5,415,831) and
Singheiser (5,393,356) which disclose higher ductility
intermetallic materials that are suitable for use as gas turbine
blades, along with the teachings of Epstein (5,131,957) and the
other prior art relied upon by the examiner in the final
rejection and any other prior art developed by the examiner, with
an eye toward evaluating the patentability of claims 2 through
10, 14 and 17 through 20 of this application under 35 U.S.C.
§ 103.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b). 37 CFR § 1.196(b) provides that, “A new
ground of rejection shall not be considered final for purposes of
judicial review.”

Appeal No. 2000-0178
Application 08/686,630
14
37 CFR § 1.196(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 2000-0178
Application 08/686,630
15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 37 CFR § 1.196(b) and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
CEF:pgg
Appeal No. 2000-0178
Application 08/686,630
16
Andrew C. Hess
General Electric Company
One Neumann Way H 17
Cincinnati, OH 45215-6301