Ex Parte Park et al

Patent Trial and Appeal Board

Sep 28, 2016

12941946 (P.T.A.B. Sep. 28, 2016)

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.
12/941,946 11/08/2010 Junyoung Park GETH:0331 (SWA/YEP) 1787
82438 7590 09/28/2016
GE Power & Water
Fletcher Yoder PC
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
D'ANIELLO, NICHOLAS P
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
09/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUNYOUNG PARK
and JASON ROBERT PAROLINI
____________

Appeal 2015-001352
Application 12/941,946
Technology Center 1700
____________

Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
February 28, 2014 decision finally rejecting claims 1–4, 6–9, 16–19, and 21–
23.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify the real party in interest as General Electric Company
(Appeal Br. 2).
2 Appellants further appeal the Examiner’s rejection of claims 16–20 under
new grounds (Ans. 8–9).
Appeal 2015-001352
Application 12/941,946

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CLAIMED SUBJECT MATTER
Appellants’ invention is directed to the repair of worn turbo machinery
components using a wide gap brazing system or repair kit (Spec. ¶¶ 1, 2, 4, and
6). Claims 1 and 16 are representative and are reproduced below from the
Claims Appendix of the Appeal Brief (key claim limitations shown in italics):
1. A system comprising:
a substrate;
a gap filling compound (GFC) comprising a brazing
alloy having a plurality of particles, wherein the GFC is
disposed inside a gap of the substrate; and
a GFC retention screen having a plurality of openings
sized smaller than a size of the particles and disposed over
the GFC and the substrate, the plurality of openings sized
to substantially retain the GFC within the gap during
brazing, and the GFC retention screen is configured to
enable gas to escape from the GFC during brazing and to
substantially block a flow of the GFC.
16. A repair kit comprising:
a gap filling compound (GFC) having a plurality of
particles;
a screen having a plurality of openings sized smaller
than the particles, wherein the screen is configured to be
disposed on top of the GFC to substantially block a flow
of the particles but to allow gas flow during brazing; and
steps for applying the kit, wherein the steps comprise:
disposing the GFC inside a gap included in a
substrate;
disposing the screen on top of the GFC and of the
substrate; and
brazing the gap.
Appeal Br. 12, 13 (Claims App.).
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Application 12/941,946

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REJECTIONS
I. Claims 1–4, 7–9, 16–19, 21, and 22 are rejected under
35 U.S.C. § 103(a) as unpatentable over Trucco.3
II. Claims 6 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Trucco in view of Holi.4
III. Claims 16–20 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
IV. Claims 16–20 are rejected under 35 U.S.C. § 112, ¶ 2 as
indefinite.
DISCUSSION
Rejections under § 103(a)
Rejection I and II
As grounds for Rejection I, the Examiner finds Trucco teaches each of
the features of independent claims 1, 16, and 21, except that it does not
disclose a retention screen having a plurality of openings sized smaller than
the size of solder particles in a GFC (Ans. 2, 5, 6). According to the
Examiner, however, Trucco “teaches a ‘fine’ mesh” (id. at 3; see also id. at
9, citing Trucco ¶ 95) and “that the size of the mesh openings is a result
effective variable that should be optimized depending [on the] particular
application . . . .” (Id. at 3, 5, and 6, citing Trucco ¶ 140). The Examiner
determines that it would have been obvious to the ordinary skilled artisan “to

3 Trucco, US 2004/0178251 A1, published Sept. 16, 2004.
4 Holi, WO 2009/051031 A1, published Apr. 23, 2009. Holi is in Japanese,
and the Examiner relies on an English-language counterpart Holi, US
2010/0187290 A1, published July 29, 2010. Citations to Holi will reference
the U.S. publication.
Appeal 2015-001352
Application 12/941,946

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determine the optimum size (such as [a size] smaller than the particles) for
the openings of [Trucco’s] GFC retention screen . . . by routine
experimentation as such is recognized as a result effecting variable of the
system” (id. at 3; see also id. at 5, 6).
With the exception of claim 4, Appellants’ arguments are directed to
limitations recited in independent claim 1 (and independent claims 16 and
21) (see generally Appeal Br. 7–10; Reply Br. 3–5). Accordingly, our
discussion will focus on claim 1 for these rejections.
Appellants argue that the Examiner erred by finding that the
combination of Trucco (with or without Holi) describes or suggests
modifying the size of retention screen openings to substantially retain GFC
within the gap during brazing (Appeal Br. 7–9, 10; Reply Br. 3–4). Rather,
Appellants contend that Trucco teaches using the screen as a wick to allow
excess molten solder to freely flow through the mesh (Appeal Br. 8; Reply
Br. 4).
On the other hand, the Examiner argues that:
[A]ny indication of particle size relative the screen opening is
taken from this section of [Trucco] - the person of ordinary skill
in the art at the time of the invention would appreciate that this
disclosure of the prior art indicates that the particle size is larger
than the screen openings as the powder does not enter the
openings of the screen until it is molten.
((emphasis in original) Ans. 10). As explained by Appellants (e.g., Appeal
Br. 7–9, 10; Reply Br. 3–4), the Examiner’s finding is not supported by a
preponderance of the evidence.
A variable must be art-recognized as result-effective before it can be
deemed to be subject to routine optimization. In re Antonie, 559 F.2d 618,
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Application 12/941,946

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620 (CCPA 1977).5 On the record before us, we do not see where, or how,
the prior art establishes that sizing of openings in a mesh used for wicking
molten solder is a property which one skilled in the art would have
recognized as a result-effective variable in the context of the claimed
invention. The Examiner has not provided a finding in Trucco (or Holi) that
teaches or suggests that “fine mesh” (Trucco ¶ 95) has openings smaller than
the size of the solder particles.6 Accordingly, we cannot sustain the rejection
of claim 1.
Appellants present separate arguments urging the reversal of the
rejection of claim 4 (Appeal Br. 9–10; Reply Br. 4). For the reasons set
forth above, the Examiner has not shown that mesh opening size is a
response-effective variable. Accordingly, we also reverse the rejection of
claim 4.
Accordingly, we reverse Rejection I of independent claims 1, 16, and
21 under 35 U.S.C. § 103(a), as well as this rejection of the claims which
depend from them (i.e., claims 2–4, 7–9, 17–19, and 22). Likewise, we
reverse Rejection II to claims 6 and 23 under 35 U.S.C. § 103(a).

5 The continuing viability of Antonie’s reasoning has been called
questionable in view of the Supreme Court’s decision in KSR Int’l Inc. v.
Teleflex Inc., 550 U.S. 398, 421 (2007). Ex parte Tatebe, 2012 WL 253455
at *6 (BPAI January 23, 2012). We, however, remain bound by Antonie
until it is overruled.
6 We are likewise not persuaded that the evidence supports the Examiner’s
finding the ordinary skilled artisan would glean from Trucco’s teaching that
a solder particle cannot enter mesh screen openings until the solder is
molten. A convex surface or similar protrusion of a solder particle in non-
molten form would partially enter the openings of a planar mesh.
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Application 12/941,946

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Rejection III under § 101
The Examiner has rejected independent claim 16, which is drawn to
“a repair kit” product, because it includes recitations using the word “steps”
(Ans. 8). Therefore, according to the Examiner, claims 16 and dependent
claims 17–19 claim both a product and a method, in contravention to
35 U.S.C. § 101 (id.).
On the other hand, Appellants argue that “one of ordinary skill in the
art can understand[] such steps may be incorporated in a kit printed manual,
a kit CD, a kit DVD, a recording, other instruction formats, and so forth”
(Reply Br. 6). According to Appellants, the Examiner reversibly erred
because claims 16–19, which are drawn to a “repair kit,” do not include
recitations of a “method comprising” or a “method” (see id. 6–7).
We give the claim term “steps for” the broadest reasonable
construction consistent with the specification. It is well established that:
“[T]he PTO must give claims their broadest reasonable
construction consistent with the specification . . . . Therefore, we
look to the specification to see if it provides a definition for claim
terms, but otherwise apply a broad interpretation.”
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” Id.
In this instance, the Specification is silent as to any instruction formats
that may be incorporated in a kit (see, e.g., Spec. ¶ 25 (“[T]he field repair
technician may carry a repair kit that includes the GFC 74 as well as a mesh,
perforated metal sheet, and/or ceramic filter . . . .”); see also id. at ¶¶ 6, 40,
43). Appellants, furthermore, have not identified any disclosure in the
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Specification which provides a definition for the recited limitation “steps
for.” Although Appellants assert that discussions of the recited features of
claim 16 can be found in the Specification (Appeal Br. 3–4, citing Spec. ¶¶
37–42; Figure 7), the relied upon disclosure does not mention including
instructions in the claimed repair kit. Rather, the cited passage and figure
merely disclose active steps in a method for brazing a wide gap. Thus, we
determine that the limitation “steps for,” as recited in claim 16, refers to
method steps for applying the claimed kit. On the present record, we find a
preponderance of the evidence supports the Examiner’s determination that
claim 16 is impermissibly drawn to two different subject matter categories.
Accordingly, we affirm the Examiner’s § 101 rejection of claims 16–
20 under Rejection III.
Rejection IV under § 112, ¶ 2 as indefinite
Section 112 ¶ 2, requires “that a patent’s claims, viewed in light of the
specification . . . inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2129 (2014). The Examiner has rejected claims 16–20
under 35 U.S.C. § 112, ¶ 2 on the grounds that “[i]t is unclear whether these
claims intend to claim a product or a method and[,] therefore[,] the scope of
the claims is indefinite” (Ans. 9).
“[R]eciting both an apparatus and a method of using that apparatus
renders a claim indefinite under section 112, paragraph 2.” Rembrandt Data
Technologies, LP, v. AOL, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (quoting
IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir.
2005) (citing Ex parte Lyell, 17 U.S.P.Q.2d 1548 (B.P.A.I. 1990))). On the
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Application 12/941,946

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record before us, the preponderance of evidence weighs in favor of a
conclusion that the claims fail to comply with the requirement to particularly
point out and distinctly claim the subject matter.
Accordingly, we affirm the Examiner’s § 112, ¶ 2 rejection of claims
16–20 under Rejection IV.
CONCLUSION
We REVERSE the rejection of claims 1–4, 7–9, 16–19, 21, and 22
under 35 U.S.C. § 103(a) over Trucco.
We REVERSE the rejection of claims 6 and 23 under 35 U.S.C.
§ 103(a) over Trucco in view of Holi.
We AFFIRM the rejection of claims 16–20 under 35 U.S.C. § 101.
We AFFIRM the rejection of claims 16–20 under 35 U.S.C. § 112,
second paragraph, as indefinite.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART