Ex Parte Panaite et al

Patent Trial and Appeal Board

Jan 31, 2017

13012317 (P.T.A.B. Jan. 31, 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.
13/012,317 01/24/2011 Georgeta-Ileana Panaite 1033275-000825 6520
117185 7590
ALSTOM
C/O Buchanan Ingersoll & Rooney PC
1737 King Street, Suite 500
Alexandria, VA 22314
EXAMINER
CHRISTENSEN, DANIELLE M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGETA-ILEANA PANAITE, IGOR TSYPKAYKIN,
BEAT VON ARX, and ANDRE SAXER
Appeal 2015-003148
Application 13/012,3171
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Georgeta-Ileana Panaite et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection2 of claims 1—9 under 35 U.S.C. §
103(a) as unpatentable over Benedetti (US 7,458,772 B2, iss. Dec. 2, 2008)
and Audeon (US 2009/0123278 Al, pub. May 14, 2009).3 We have
jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is ALSTROM
Technology Ltd. Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated December 4, 2013
“Final Act.”
3 The Examiner withdrew the rejection in the Final Action and advanced a
New Ground of Rejection under 35 U.S.C. § 103(a) of claims 1—9 still over
Appeal 2015-003148
Application 13/012,317
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. A guide vane of a gas turbine, the gas turbine including
guide vane carrier seats, the guide vane comprising:
a platform; and
at least one guide vane blade extending from the platform;
wherein said platform has a front rail and a rear rail
configured and arranged to be housed in the guide vane carrier
seats, said front and rear rails having projecting pads configured
and arranged to rest against the guide vane carrier seats, said
front and rear rails having at least two first pads extending from
one side of the front and rear rails and at least two second pads
extending from an opposite side of the front and rear rails, said
first pads extending from opposite circumferential portions of the
front and rear rails, and at least one of each of said first and
second pads extend from the same circumferential portion of the
front and rear rails and are at least partly staggered with respect
to one another.
ANALYSIS
Obviousness of Claims 1—9 over Benedetti and Audeon
The dispositive issue in this case is whether it would be obvious to
one of ordinary skill in the art to partly stagger the pads of Benedetti, as
Benedetti and Audeon. See Ans. 2. We offer no opinion as to whether the
Examiner’s position in the Answer constitutes a new ground of rejection as
it is not properly before us. We deem Appellants, by their presentation of
arguments in the Reply Brief in rebuttal to the Answer, to have waived any
argument that the rejection must be designated a new ground. See Reply Br,
1-8.
2
Appeal 2015-003148
Application 13/012,317
disclosed in Audeon. All of Appellants’ arguments are premised on the
patentability of claim 1. Regarding claim 1, the Examiner found that
Benedetti discloses a guide vane having, inter alia, a platform with
projecting pads on front and rear rails as recited by claim 1, but fails to
disclose that the pads “are partly staggered with respect to one another,”
Final Act. 4. The Examiner’s findings in this regard are not disputed. See
Reply Br. 5—6.4
However, the Examiner also finds that
Audeon (paragraph 32 and Figures 1 and 7) teaches that by
minimizing and staggering the contact areas between the rail and
the part holding the rail, the amount of stress the part holding the
rail is subjected to can be reduced and ... the stress the rail is
subjected to would also decrease.
Ans. 3. Based on the foregoing factual analysis, the Examiner reasons that it
would have been obvious
to modify Benedetti's (Figure 8) rails (12, 13) so that the pads
extending from the same circumferential portion of the front and
rear rails (12,13) are partly staggered with respect to one another
as taught by Audeon in order to reduce the stress [that] the rails
(12, 13) are subjected to when they deform.
Id. at 3^4.
Appellants contend that Audeon “Does Not Disclose At Least Two
Pads Extending From One Side Of The Rails And At Least Two Pads
Extending From An Opposite Side Of The Rails And At Least One Of Each
Of The First And Second Pads Extend From The Same Circumferential
Portion.” Appeal Br. 5. However, Appellants are simply attacking Audeon
in isolation for lacking support for findings not relied upon by the Examiner,
4 Appellants filed a Reply Brief, as set forth in 37 CFR § 41.41, in response
to the Examiner’s New Ground of Rejection in the Answer.
3
Appeal 2015-003148
Application 13/012,317
rather than addressing the Examiner’s combination of Benedetti and
Audeon. Nonobviousness cannot be established by attacking references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
As the Examiner again explains, Figure 8 of Benedetti shows the claimed
pads while “Audeon was merely used to teach that staggering of the pads
can allow for the platform to deform more freely.” Ans. 8.
Appellants next “disagree with the Examiner’s assertion that the
ordinarily skilled artisan would have been motivated to combine the
teaching of the Audeon publication with the features of the Benedetti
publication,” because Audeon “does not relate to a platform of a guide
vane.” Appeal Br. 6—7. However, to the extent that Appellants are arguing
that there is no explicit teaching, suggestion, or motivation to combine the
references, this argument is foreclosed by KSR Int 7 Co. v. Teleflex Inc., 550
U.S. 398, 402 (2007), in which the Court rejected the rigid requirement of a
teaching, suggestion, or motivation to combine known elements in order to
show obviousness. Id. at 415. Thus, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.
Based on the foregoing, we agree with the Examiner that
[sjince both Benedetti and Audeon are related to extending the
life of suspended, annular turbine stage components of a gas
turbine that deform due to thermal gradients generated by the
operating conditions of the gas turbine, it would have been
obvious for one having ordinary skill in the art to combine
Benedetti with Audeon.
Ans. 9—10.
4
Appeal 2015-003148
Application 13/012,317
Appellants continue by arguing that “closer evaluation of the Audeon
publication by a person of ordinary skill in the art would further guide that
person away from the claimed combinations [of Audeon and Benedetti],”
because by introducing the stagger of Audeon’s pads, Benedetti’s “contact
zones become closer together,” thereby causing “flange 12 to become
thicker and the flexibility of the vane root 11 [to] be reduced.” Appeal Br.
7—8. Appellants further contend that “[u]sing an arrangement as shown in
Fig. 7 of the Audeon publication would also increase stresses because the
lock would not be contacted and wouldn’t be able to freely displace leading
to vibration.” Reply Br. 7.
However, Appellants offer no explanation or evidence supporting the
argument that staggering the pad location would reduce the flexibility of
Benedetti’s vane root and/or lead to vibration. We are instructed that
“[ajttorney’s arguments in a brief cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation omitted); see also In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that lawyer
arguments and conclusory statements which are unsupported by factual
evidence are entitled to little probative value).
Furthermore, a reference does not teach away if it does not “criticize,
discredit, or otherwise discourage” investigation into the claimed subject
matter. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find that a
differing placement of the pads, i.e., “partly staggered,” does not amount to a
disclosure that criticizes, discredits, or discourages investigation into the
claimed subject matter. We also agree with the Examiner that because, in
the embodiment of Figure 7 of Audeon, “the pads are staggered, so that not
only the median portion can deform more freely, but the end portions as
5
Appeal 2015-003148
Application 13/012,317
well,” that it would have been obvious “to recognize that by modifying
Benedetti with the embodiment of Fig. 7 of Audeon by staggering the pads,
the guide vane rails would have more freedom to move.” Ans. 10—11; see
also id. at 11—12.
Appellants also contend, inter alia, that
[a]s shown in Fig. 4 of the Audeon publication relied upon by the
Examiner. . . the bearing surfaces 148 and 150 are not arranged
to extend from one side and an opposite side [of the same rail] as
in Appellants’ independent claim 1 and instead are arranged to
face each other.
Reply Br. 5. However, Appellants’ contention is not responsive to the
Examiner’s New Ground of Rejection which is based on Audeon’s Figure 7,
not Figure 4. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
Appellants conclude by contending that “as described in paragraph
[0047] of Applicants as-filed specification, when the guide vanes 18, 20 are
assembled within the guide vane carrier seats 19,21, deformations can freely
occur to a large extent because space and support are always available,”
while “[n]either of the cited art references recognize these advantages.”
Reply Br. 8. However, Appellants’ contention is unavailing as it is not
commensurate with the scope of claim 1, which is not limited to any
particular guide vane deformation. See Appeal Br., Claims App 1. As we
are instructed by our reviewing court, “limitations are not to be read into the
claims from the [Specification.” In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Based on the foregoing, we sustain the Examiner’s rejection of claims
1—9 over Benedetti and Audeon.
6
Appeal 2015-003148
Application 13/012,317
DECISION
We AFFIRM the Examiner’s rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
7