Ex Parte Marra et al

Patent Trial and Appeal Board

Feb 28, 2017

13171699 (P.T.A.B. Feb. 28, 2017)

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.
13/171,699 06/29/2011 John J. Marra 2011P00310US 5960
28524 7590 03/02/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
SEABE, JUSTIN D
Orlando, EL 32817 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. MARRA, BRIAN J. WESSELL, ALLISTER W. JAMES,
JAN H. MARSH, and PAUL J. GEAR
Appeal 2015-002584
Application 13/171,699
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John J. Marra et al. (Appellants)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—13. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
INVENTION
The disclosure “relates to a seal for a vane assembly used in a turbine
engine.” Spec. 1:9-10. Claim 1, reproduced below, is representative of the
claimed subject matter.
1 Siemens Energy is identified as the real party in interest. Appeal Br. 1.
Appeal 2015-002584
Application 13/171,699
1. A vane assembly comprising:
an airfoil and a shroud held together without metallurgical
bonding there between;
a channel disposed circumferentially about the airfoil,
between the airfoil and the shroud; and
a seal disposed in the channel, wherein during operation
of a turbine engine comprising the vane assembly the seal
comprises a sufficient ductility such that a force generated on the
seal resulting from relative movement of the airfoil and the
shroud is sufficient to plastically deform the seal.
Appeal Br. 12 (Claims App.).
REJECTIONS
Appellants seek review of the following rejections:2
Claims 1—5 and 7—13 under 35 U.S.C. § 102(b) as anticipated by
Rhodes (US 5,797,725, issued Aug. 25, 1998);
Claims 1—3 and 9-13 under 35 U.S.C. § 103(a) as unpatentable over
Ewing (US 7,993,104 Bl, issued Aug. 9, 2011) and Rhodes; and
Claim 6 under 35 U.S.C. § 102(b) as anticipated by, or, alternatively,
under 35 U.S.C. § 103(a) as unpatentable over, Rhodes.
ANALYSIS
Claims 1—5 and 7—13 as anticipated by Rhodes
Appellants present argument for patentability for claim 1, and
state dependent claims 2—5 and 7—13 stand or fall with claim 1.
Appeal Br. 2—10. We select claim 1 to decide the appeal as to the
2 The rejection of claims 1^4 and 13 under 35 U.S.C. § 102(b) as
anticipated by “Roseman” has been withdrawn. Ans. 5; Final Act. 4. We
understand “Roseman” should be “Rosman” (US 4,519,745, issued May 28,
1985).
2
Appeal 2015-002584
Application 13/171,699
rejection, with claims 2—5 and 7—13 standing or falling with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 is directed to a vane assembly and recites the limitation
“the seal comprises a sufficient ductility such that a force generated on
the seal resulting from relative movement of the airfoil and the shroud
is sufficient to plastically deform the seal.” Appeal Br. 12 (Claims
App., emphasis added). The Examiner finds that Rhodes discloses a
vane assembly comprising airfoil 30; shroud 25, 26; channel 33, 38,
40, 51; and seal 41,41a disposed in the channel and “capable of
plastically deforming.” Final Act. 2 (citing Rhodes, Fig. 6).
Figures 6a—6c of Rhodes depict vane 22 including retainer 41, and
Figure 6d depicts vane 22 including retainer 41 and seal 41a. Rhodes, col. 5,
11. 52—col. 6,1. 3. Rhodes discloses forming a retainer from a metal alloy
material by casting or forging. Id. at col. 6,11. 23—25. “The metal alloy is
preferably a nickel or cobalt super alloy; the materials include, but are not
intended to be limited herein to, Mar-M247 or X40 for cast retainers, and a
material such as WASPALLOY for a forged retainer.” Id. at col. 6,11. 25—28
(emphasis added).
Regarding the claimed plastic deformation of the seal, the Examiner
explains that Appellants have argued that a modulus of elasticity (Young’s
modulus) of less than 220 GPa at 800°C allows plastic deformation of a
material to occur, and provide “pure nickel” as an exemplary material. Final
Act. 2. The Examiner states that Waspaloy and nickel have such a modulus
of elasticity. Id. Accordingly, the Examiner’s position is that, in Rhodes, a
seal made from Waspaloy has sufficient ductility to be plastically deformed
by the forces of the vane assembly. Id.; see also id. at 5 (“The material
3
Appeal 2015-002584
Application 13/171,699
utilized [for seal 41, 41a in Rhodes] is Waspaloy which is capable of plastic
deformation.”).
Appellants contend that Rhodes does not disclose the claimed plastic
deformation of the seal. Appeal Br. 4. Appellants submit that plastic
deformation of retainer 41 is not inherent in Rhodes, because Rhodes relies
on the mechanical strength of retainer 41 to hold the vane assembly together.
Id. at 4—5 (citing Rhodes, col. 5,11. 52—57). Appellants submit that it is
inherent in Rhodes that the retainer does not plastically deform. Id. at 5.
Appellants’ Specification discloses the temperature and modulus of
elasticity values cited by the Examiner in describing “an embodiment” of a
material for the seal, indicating that pure nickel is an “example of such a
material.” Spec. 6:13—18 (hereinafter “example embodiment”). Appellants
contend that the Examiner incorrectly assumes Rhodes discloses a gas
turbine arrangement that would create operating temperatures similar to
those disclosed in the example embodiment. Appeal Br. 6. Appellants
contend that, for anticipation, Rhodes must teach “the right material in the
same location and in the correct environment (e.g. temperature),” but
Rhodes does not disclose the operating temperature of the engine or the seal.
Id. at 8.
The Examiner answers that Rhodes’ seal has the same material
properties as Appellants’ seal, and, therefore, at the same operating
conditions, Rhodes’ seal would operate the same way. Ans. 8. Appellants
reply that because different operating conditions could exist in Rhodes,
Rhodes does not inherently disclose the same operating conditions as
Appellants’ conditions. Reply Br. 6.
4
Appeal 2015-002584
Application 13/171,699
Additionally, Appellants contend that the Examiner’s comparison
ignores other material characteristics that are required to fully assess
whether a material will plastically deform. Appeal Br. 7. Appellants assert
that “for a given gas turbine engine and operating environment, which is
characterized by particular temperatures and known forces, it is entirely
possible that nickel would plastically deform while Waspalloy would not.”
Id. at 8. Appellants contend that the Examiner appears to rely solely on the
similar modulus of elasticity between nickel and Waspaloy in concluding
that the seal would deform in Rhodes’ arrangement. Id. at 9. Appellants
submit that Waspaloy has a much greater yield strength than pure nickel, and
“with similar stiffness [i.e., a similar modulus of elasticity] but with much
greater strength it can be concluded that it is entirely possible that there is
sufficient force to deform pure nickel in a given vane segment, but that same
force might not be sufficient to deform Waspaloy in the same vane
segment.” Id. at 10. “Therefore, it is not inherent that Waspaloy would
deform in the same circumstances, it is only a possibility.” Id.
Appellants’ contentions are not persuasive. First, we are not
persuaded by Appellants’ contention that Rhodes must teach “the right
material in the same location and in the correct environment (e.g.
temperature).” Appeal Br. 8. Appellants do not contest the Examiner’s
finding that Rhodes discloses a vane assembly comprising an airfoil, a
shroud, a channel, and a seal disposed in the channel, as claimed. Claim 1
does not recite the operating temperature of the vane assembly or seal.
Hence, to the extent Appellants are contending that Rhodes must describe a
specific operating temperature for its vane assembly and seal, this contention
is not commensurate with the scope of the claim 1. Limitations that do not
5
Appeal 2015-002584
Application 13/171,699
appear in the claims cannot be relied upon for patentability. In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
Further, Rhodes discloses that “[although the present invention was
developed for use in a gas turbine engine, certain applications may be
outside this field.” Rhodes, col. 1,11. 9-11. Regarding gas turbine engines,
Rhodes describes that the invention is suited for use in gas turbine engines
for aircrafts, as well as for industrial applications. Id. at col. 3,11. 8—21.
Accordingly, Rhodes’ invention is not limited to a specific environment or
operating environment.
Second, the Specification describes the example embodiment, as
follows:
In an embodiment a material with a Young’s modulus of not
more than approximately 220 GPa (20 million psi) at 800°C
would possess the requisite ductility at the seal operating
temperature of 500°C ±100°C such that the relative movement
of the airfoil and shroud would produce elastic and plastic
deformation of the seal material.
Spec. 6:13—17 (emphasis added). This description indicates that a seal
material having such approximate Young’s modulus (modulus of elasticity)
properties would produce such plastic deformation. This material can be,
but is not limited to, pure nickel. Id. at 6:18—19. Appellants do not contend
that claim 1 excludes the seal comprising pure nickel, and appear to
acknowledge that Waspaloy has such approximate Young’s modulus
properties. See Appeal Br. 10 (stating “Waspaloy has a MOE [modulus of
elasticity] of about 211 Gpa,” and these materials have “similar stiffness”).
Where the Patent Office has reason to believe that a claimed
functional limitation is an inherent characteristic of the prior art, it has the
authority to require Appellants to show that the prior art does not possess
6
Appeal 2015-002584
Application 13/171,699
that characteristic relied on. See In re Best, 562 F.2d 1252, 1254—55 (CCPA
1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (when the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not). Here, the Examiner articulates a reasonable basis for finding that
Rhodes’ seal meets the claimed plastic deformation limitation, which is
consistent with Appellants’ own disclosure.
The Examiner notes correctly that Appellants’ Specification does not
describe the yield strength of the seal. Ans. 9. Despite this lack of written
description, Appellants contend that by disclosing nickel as an example
material, yield strength is inherently disclosed as a criteria. Reply Br. 4.
But even if we were to accept this contention, the Specification does not
describe that the seal requires both certain Young’s modulus properties and
certain yield strength properties to plastically deform in the vane assembly,
as claimed. In any event, claim 1 does not specify the seal material, much
less its yield strength properties. Hence, to the extent Appellants are
contending that Rhodes must describe specific yield strength properties for
the seal to meet the claimed plastic deformation limitation, this contention is
not commensurate with the scope of the claim 1. Self, 671 F.2d at 1348.
Furthermore, claim 1 is not limited to the seal comprising pure nickel.
As discussed above, in the example embodiment, the seal material can be
pure nickel, but is not limited to any particular composition. The
Specification further describes that suitable materials for monolithic and
non-monolithic seals used in a nickel-based or cobalt-based superalloy
assembly may include not only pure nickel, but also aluminum, aluminum
alloys, tin, tin alloys, brass, and bronze. Spec. 7:19-23. Claim 13 depends
7
Appeal 2015-002584
Application 13/171,699
from claim 1 and recites these same seal materials. Appeal Br. 13 (Claims
App.). We construe claim 1 as being sufficiently broad in scope to
encompass all of the materials in claim 13.3 One skilled in the art would
know that the different materials recited in claim 13 have different properties
from each other. Appellants have not shown by persuasive argument or
objective evidence that the seal recited in claim 1, which is not limited to
having the ductility properties of pure nickel only, has different ductility
properties than Waspaloy. Thus, Appellants do not apprise us of any error in
the Examiner’s rejection of claim 1.
For the above reasons, we sustain the rejection of claim 1 as
anticipated by Rhodes. Claims 2—5 and 7—13 fall with claim 1.
Claims 1—3 and 9—13 as unpatentable over Ewing and Rhodes
The Examiner finds that Ewing discloses a vane assembly comprising
air foil 14, shroud 11, channel 12, and seal 21 disposed in channel 12. Final
Act. 5. The Examiner determines, however, that Ewing does not teach the
material of seal 21, and, therefore, it is not clear if seal 21 is capable of
plastic deformation. Id. The Examiner relies on Rhodes for teaching seal
41, 41a made from Waspaloy. Id. The Examiner concludes that it would
have been obvious to substitute Ewing’s seal with Rhodes’ seal “as none but
the expected result of sealing the channel is achieved.” Id.
Appellants contend that Ewing does not disclose a vane assembly, as
claimed. Appeal Br. 3^4. Rather, Appellants assert, Ewing only discloses
3 Construing claim 1 not to encompass all the materials recited in claim 13
would result in claim 13 not further limiting claim 1, and also being
indefinite. That is, claim 13 would fail to meet the requirements of either 35
U.S.C. § 112 14 or 12.
8
Appeal 2015-002584
Application 13/171,699
blades and one of ordinary skill in the art would not consider Ewing’s blades
to be a vane assembly. Id. at 4. Appellants submit that blades are mounted
to rotating motor shafts, whereas stationary vanes are not, making the
structures of blades and vanes different. Id. Appellants contend that
Ewing’s blades cannot be modified to render obvious the claimed vane
assembly. Id.
The Examiner responds that the broadest reasonable interpretation of
a “vane assembly” encompasses rotating vanes/blades and stator
vanes/blades. Ans. 5. The Examiner adds that Rosman’s disclosure applies
to both stators and rotors. Id. at 6.
Appellants’ contentions are persuasive. “Prior art references may be
‘indicative of what all those skilled in the art generally believe a certain term
means . . . [and] can often help to demonstrate how a disputed term is used
by those skilled in the art.’” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir.
1999) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 1584
(Fed. Cir. 1996)). “Accordingly, the PTO’s interpretation of claim terms
should not be so broad that it conflicts with the meaning given to identical
terms in other patents from analogous art.” Id. Ewing discloses a turbine
blade. See, e.g., Ewing, Abst., col. 1,11. 16—18, col. 2,11. 27—30. Figure 1 of
Ewing shows turbine blade assembly 10 including root section 11, shell 14,
and root seals 21. Id. at col. 2,11. 18—19, 33—35, 53—55. Ewing also
describes the term “vane,” stating “[r]otor blades and stator vanes can be
made from a spar and shell construction in order to allow for exposure to
higher gas flow temperatures because of the use of exotic high temperature
metals.” Id. at col. 1,11. 32—35 (emphasis added). However, Ewing
provides no additional disclosure regarding a “vane,” and does not mention a
9
Appeal 2015-002584
Application 13/171,699
“vane assembly.” Ewing does not indicate that a stator vane is a rotor blade,
but appears to distinguish these components from each other. Id.
Rhodes clearly distinguishes a vane from a rotor blade. Particularly,
Rhodes states that “/v]anes are generally utilized to direct the hot gaseous
flow exiting from the combustor to the rotor blades within the high pressure
turbine in order to extract energy therefrom.” Id. at col. 1,11. 33—35
(emphasis added). Rhodes also describes that “[a] turbine nozzle 20
positioned within the gas turbine engine 10 includes a plurality of vane
segments 21 that are circumferentially spaced. Each of the vane segments
21 has at least one vane coupled thereto for directing the working fluid to the
rotor blades 23 of the rotor in order to extract energy therefrom.” Id. at col.
3,11. 22—28 (emphasis added), Fig. 1. Rhodes’ disclosure supports
Appellants’ position, not the Examiner’s.
Rosman refers to both rotor blades and stator vanes. See Rosman,
Title, col. 1,11. 11—14, col. 2,11. 26—29. Rosman does not, however, indicate
that a vane is the same as a blade. As for Ewing, we agree with Appellants
that Rosman’s use of both terms implies they are different structures from
each other. Reply Br. 7.
In view of the teachings of Ewing, Rhodes, and Rosman, the
Examiner’s interpretation of a “vane assembly” is overly broad, and thus,
unreasonable. Therefore, we do not sustain the rejection of claim 1, and
claims 2, 3, and 9—13 depending therefrom, as unpatentable over Ewing and
Rhodes.
Claim 6 as anticipated by, or unpatentable over, Rhodes
Claim 6 depends from claim 1 and recites that “the shroud is
monolithic, the vane assembly further comprising interlocking features of
10
Appeal 2015-002584
Application 13/171,699
the airfoil and the shroud that hold the airfoil and the shroud together.'1'’
Appeal Br. 12 (Claims App., emphasis added). The Examiner finds that
Rhodes discloses interlocking features, through the retainer and grooves,
hold the airfoil and shroud together. Final Act. 6.
Appellants contend that the Examiner improperly relies on the retainer
and groove in Rhodes to teach the seal and channel recited in claim 1 and
also the interlocking features of claim 6. Ans. 11.
We agree with Appellants. Claim 6 requires that the vane assembly
further comprises the interlocking features. The Examiner’s reliance on the
same elements of Rhodes for disclosing the interlocking features of claim 6
is inadequate. The Examiner fails to indicate where the claimed interlocking
features are found in Rhodes’ retainer and groove. Accordingly, we do not
sustain the rejection of claim 6 as anticipated by Rhodes.
Regarding the alternative obviousness rejection of claim 6, the
Examiner determines that it would have been obvious to modify the “entire
shroud band” of Rhodes to be a monolithic unit. Final Act. 6—7 (citing
Rhodes, Fig. 2). However, the Examiner fails to provide a rationale with a
rational underpinning for modifying Rhodes to include the claimed
interlocking features. Accordingly, we also do not sustain the rejection of
claim 6 as unpatentable over Rhodes.
DECISION
We affirm the rejection of claims 1—5 and 7—13 as anticipated by
Rhodes.
We reverse the rejection of claims 1—3 and 9-13 as unpatentable over
Ewing and Rhodes.
11
Appeal 2015-002584
Application 13/171,699
We reverse the rejection of claim 6 as anticipated by, or, alternatively,
as unpatentable over, Rhodes.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
12