Ex Parte Palmisano et al

Patent Trial and Appeal Board

Jul 27, 2017

13220046 (P.T.A.B. Jul. 27, 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.
13/220,046 08/29/2011 Leonard Paul Palmisano 59164US01; 1077
67097-1545PUS1
54549 7590 07/31/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
SEABE, JUSTIN D
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARD PAUL PALMISANO,
WILLIAM BOGUE, and RON I. PRIHAR
Appeal 2016-000527
Application 13/220,0461
Technology Center 3700
Before JILL D. HILL, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 6—9, 11—14, and 18—20. Claims 1—5, 10 and 15—17 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify United Technologies Corporation as the real party in
interest. App. Br. 1.
Appeal 2016-000527
Application 13/220,046
ILLUSTRATIVE CLAIM
Claim 6, reproduced below, is the sole independent claim subject to
this Appeal and is illustrative of the claimed subject matter:
6. A bushing and circumferential flanged ring assembly of a
gas turbine engine, the bushing and circumferential flanged ring
assembly comprising:
a circumferential flanged ring including a flange having an
original profile, wherein a portion is removed to define the flange
having a new profile, wherein the flange with the new profile
includes a recess formed on an outer circumferential surface of
the flange; and
a bushing having a bushing profile that matches the new
profile of the flange, the bushing including a tab received in the
recess of the flange to secure the flange and the bushing by an
interference fit.
THE REJECTIONS
Claims 6, 11, 13, 18, and 20 stand rejected 35 U.S.C. § 103(a) as
being unpatentable in view of the combination of Reynolds et al. (US
2009/0064500 Al; Mar. 12, 2009) and Ryznic (US 7,841,834 Bl; Nov. 30,
2010).
Claims 6, 8, 13, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combination of Reghezza et al. (US
8,734,103 B2; May 27, 2014) and Ryznic.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Reynolds, Ryznic, and Van
Duyn (US 6,082,959; July 4, 2000).
Claim 7 additionally stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Reghezza, Ryznic, and Van
Duyn.
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Application 13/220,046
Claim 8 additionally stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Reynolds, Ryznic, and
Anantharaman et al. (US 8,230,569 B2; July 31, 2012).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Reynolds, Ryznic,
Anantharaman, and Lemon (US 6,260,854 Bl; July 17, 2001).
Claim 9 additionally stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Reghezza, Ryznic, and Lemon.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Reynolds, Ryznic, Dorris, Jr.
(US 5,222,295; June 2, 1993), and Zagar et al. (US 6,273,683 Bl; Aug. 14,
2001).
Claim 12 additionally stands rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combination of Reghezza, Ryznic, Dorris,
Jr., and Zagar.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Reynolds, Ryznic, and Lubell et
al. (US 7,112,036 B2; Sept. 26, 2006).
Claim 14 additionally stands rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combination of Reghezza, Ryznic, and
Lubell.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Reynolds, Ryznic, and Yip et al.
(US 7,367,122 B2; May 6, 2008).
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Appeal 2016-000527
Application 13/220,046
Claim 19 additionally stands rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combination of Reghezza, Ryznic, and
Yip.
ANALYSIS
The Supreme Court has explained that “when 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 US 398, 417 (2007) (quoting Sakraida v. AgPro, Inc., 425 U.S. 273,
282 (1976)). Further, “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference; . . . the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner finds each limitation of claim 6 was known at the
time of Appellants’ invention, as evidenced by the combination of Reynolds
and Ryznic (Final Act. 8; Ans. 2—3) and the combination of Reghezza and
Ryznic (Final Act. 11—13; Ans. 4—5). Except to the extent addressed below,
Appellants do not rebut the Examiner’s findings that each limitation of
independent claim 6 was known in the prior art. Having considered the
Examiner’s rejections in light of each of Appellants’ arguments and the
evidence of record, we disagree with Appellants and agree with the
Examiner’s findings, conclusions, and reasons, which we adopt as our own
to the extent consistent with this Decision. We highlight the following
primarily for emphasis.
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Appeal 2016-000527
Application 13/220,046
Addressing the Examiner’s rejection of independent claim 6 as being
unpatentable in view of Reynolds and Ryznic, Appellants argue Reynolds
teaches an overlay 40 glued or welded to an inner surface of a flange
component 24, not to “the outer circumferential diameter of the component
24.” Appeal Br. 2. The Examiner responds that Appellants’ arguments are
not commensurate with the scope of claim 6, which recites an “outer
circumferential surface,” not an “outer circumferential diameter” as argued.
As noted by the Examiner, claim 6 recites an “outer circumferential
surface.” Consistent with the Examiner’s interpretation and contrary to
Appellants’ arguments, Appellants’ Specification describes the “outer
surface” of the circumferential flange 48 with reference to Figure 3, copied
below along with Figure 4, stating “[a]n outer surface of the flange 48
defines an original profile 70.”
Appellants’ Figures 3 & 4 (depicting, respectively,
cross-sectional views of a portion of “a circumferential flange [48] of the
circumferential flange ring including a damaged portion [74]” and “the
flange [48] of the circumferential flange ring after machining to remove the
damaged portion” (Spec. Tfl[ 12—13; see also Spec. H 31—32))
Although Appellants’ Specification states “[i]n one example, at least one
recess 80 is formed on a top surface 82 of the flange 48” (Spec. 133),
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Appeal 2016-000527
Application 13/220,046
nothing in claim 6 limits the location of the claimed recess to a specific
location on the outer circumferential surface. Accordingly, we disagree with
Appellants that claim 6 requires a recess on an “outer circumferential
diameter,” and we agree with the Examiner’s finding that Reynolds discloses
a recess on an “outer circumferential surface,” as claimed (see Ans. 15—16).
Addressing each of (i) the combination of Reynolds and Ryznic
(Appeal Br. 2) and (ii) the combination of Reghezza and Ryznic (Appeal Br.
3), Appellants argue that neither Reynolds nor Reghezza discloses use of an
interference fit. As Appellants acknowledge (Appeal Br. 2, 3), though, the
Examiner cites Ryznic for its disclosures of the claimed interference fit
(Final Act. 8—9).
Appellants additionally argue the cited component of Reynolds and
Reghezza are thin and not strong enough for the Examiner’s proposed
combinations, and Appellants further argue there would have been no reason
to modify the references as proposed by the Examiner. Appeal Br. 2—3;
Reply Br. 1—2. Such arguments assume bodily incorporation of individual
features of the prior art devices and fail to substantively rebut the
Examiner’s findings regarding the combined teachings of the prior art. See
Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference; . . . the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Moreover, Appellants do not rebut the Examiner’s rationales underpinning
the prior art combinations, nor do Appellants establish that the cited
combinations would have been more than a predictable use of known
elements of the prior art. See KSR, 550USat417.
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Accordingly, we sustain the Examiner’s rejections of claim 6 as
obvious in view of (i) the combination of Reynolds and Ryznic, and (ii) the
combination of Reghezza and Ryznic. Appellants rely on the arguments
advanced for claim 6 for the each of the rejections of claims 7, 11—14, and
18—20, and we sustain the Examiner’s rejection of claims 7, 11—14, and 18—
20 for the same reasons.
Regarding the rejection of claim 8 as obvious in view of the
combination of Reynolds, Ryznic, and Anantharaman, the Examiner cites
Anantharaman as evidence of a flange “having a plurality of flange holes.”
Final Act. 17—18. Appellants argue the cited bolt holes of Anantharaman
“are not used to . . . repair the flange 26, but are used to connect the flange
26 to an engine” and “[tjhere is no reason to make the modification proposed
by the Examiner for the purpose of the repair.” Appeal Br. 4. Similar to the
arguments advanced for claim 6, however, Appellants’ arguments attack the
references individually without substantively addressing what a person of
ordinary skill would have understood from the combined teachings of the
prior art. See Keller, 642 F.2d at 425. Further, Appellants again rely on
unsupported attorney argument and fail to substantively rebut the
Examiner’s stated rationales underpinning the proposed combinations or
otherwise establish that the cited combination would have been more than a
predictable use of known elements of the prior art. See KSR, 550 US at 417.
Accordingly, we sustain the Examiner’s rejection of claim 8 as obvious in
view of the combination of Reynolds, Ryznic, and Anantharaman. We also
sustain the Examiner’s rejection of claim 8 as obvious in view of the
combination of Reghezza and Ryznic, which Appellants do not address
beyond the arguments addressed above regarding claim 6.
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Regarding the rejections of claim 9 based on (i) Reynolds, Ryznic,
Anantharaman, and Lemon, and (ii) Reghezza, Ryznic, and Lemon,
Appellants similarly offer only unsupported attorney argument that there
would have been no reason to modify the prior art as proposed by the
Examiner. Again, though, Appellants’ arguments fail to substantively rebut
the Examiner’s stated rationales underpinning the proposed combinations or
otherwise establish that the cited combination would have been more than a
predictable use of known elements of the prior art. See KSR, 550 US at 417.
Accordingly, we sustain the Examiner’s rejections of claim 9 as obvious in
view of (i) the combination of Reynolds, Ryznic, Anantharaman, and
Lemon, and (ii) the combination of Reghezza, Ryznic, and Lemon.
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
6-9, 11-14, and 18-20.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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