Ex Parte Parkin et al

Patent Trial and Appeal Board

Aug 31, 2016

13408158 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/408, 158 02/29/2012 Michael Parkin
54549 7590 09/02/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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
ATTORNEY DOCKET NO.
PA19119U; 67097-1688
PUSl
CONFIRMATION NO.
4423
EXAMINER
HOOVER, MATTHEW
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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 MICHAEL PARKIN and CHRISTOPHER J. HERTEL
Appeal2015-001336
Application 13/408,158
Technology Center 1700
Before JACQUELINE WRIGHT BONILLA, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-22 of Application 13/408,158
under 35 U.S.C. § 103(a) as obvious. Final Act. (Jan. 29, 2014).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 United Technologies Corporation is identified as the real party in interest.
Appeal Br. 1.
Appeal2015-001336
Application 13/408,158
BACKGROUND
The application at issue concerns fan blades of the type used in gas
turbine engines and other applications. The specification indicates that the
subject fan blade includes a blade body having a number of cavities. A
piece of low density filler (such as aluminum foam) is sized to fit in each of
the several cavities. The fan blade also includes a cover and a leading edge
sheath attached to the blade body. The fan blade cover is secured to the fan
blade body with an adhesive. Spec. i-fi-145--47; Fig. 2.
The claims at issue concern a method of using liquid adhesive to
secure the fan blade cover to the surface of the fan blade body.
Claim 1 is representative of the claims at issue and is reproduced
below:
1. A method of forming a fan blade, the method comprising
the steps of:
applying an adhesive to an inner surface of a cover;
then moving a toothed instrument along the inner surface of the
cover to spread the adhesive over the inner surface of the cover
after the step of applying the adhesive to the inner surface of the
cover to form a plurality of rows of adhesive on the inner
surface of the cover;
applying the inner surface of the cover to a fan blade body; and
curing the adhesive to secure the cover to the fan blade body.
Appeal Br. 5 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
Claims 1-11 and 13-19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Deal (US 2011/0211965 Al, pub. Sep. 1, 2011)
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Appeal2015-001336
Application 13/408,158
("Deal") in view of Jafarmadar (US 6, 178,586 B 1, iss. Jan 30, 2001)
("Jafarmadar"). Final Act. 2.
Claims 12 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Deal in view of Jafarmadar and further in view of Ashley
(US 2008/0236739 Al, pub. Oct. 2, 2008) ("Ashley"). Final Act. 9.
Claims 21-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Deal in view of Jafarmadar and further in view of Lampl
(US 2005/0230036 Al, pub. Oct. 20, 2005) ("Lampl"). Final Act. 10.
DISCUSSION
Appellants seek reversal on a single basis. They contend that
Jafarmadar teaches to apply an adhesive "while the rows or spaces" are
being formed. Appeal Br. 3. That is, Appellants contend that Jafarmadar
teaches to apply an adhesive "at the same time that the rows are
formed." Reply Br. 1. In Appellants' view, the "claims recite the step of
applying an adhesive and then the step of moving a toothed instrument." Id.
(italics added). Appellants argue that the simultaneous application and
distribution of Jafarmadar differs from the sequential steps of the claims at
issue. Id.
As a general rule, "[ u ]nless the steps of a method actually recite an
order, the steps are not ordinarily construed to require one." Interactive
Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001)
(citation omitted). However, a claim "requires an ordering of steps when the
claim language, as a matter of logic or grammar, requires that the steps be
performed in the order written .... " TALtech Ltd. v. Esque! Apparel, Inc.,
279 F. App'x 974, 978 (Fed. Cir. 2008). Here, the claim language at issue
requires "applying an adhesive to an inner surface of a cover; then moving a
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Appeal2015-001336
Application 13/408,158
toothed instrument along the inner surface of the cover to spread the
adhesive .... " Both the logic of the claim and the inclusion of the
conjunctive adverb "then" indicate the applicants' intent that the steps be
performed in sequence as argued by Appellants.
In the "Background of the Invention," Jafarmadar indicates that it is
known in the art to use a toothed hand trowel to apply and distribute
adhesive material. Specifically, Jafarmadar provides:
The use of hand trowels for applying and distributing
cementious material that allows ceramic tile to be attached to a
floor or wall surface is well known. Typically, such a trowel is
a thin rigid metal blade having a plurality of notches about one
or two edges which are used to provide grooves or spacing in
the cementious material before the adhesive material hardens or
sets up which allows for better attachment.
Jafarmadar, col. 1 :21 - 28 (italics added). Jafarmadar teaches "applying"
and "distributing" an adhesive separately. Jafarmadar further describes an
inventive trowel having notches on the blade "used to apply to a surface
(floor or wall) and to manipulate the cementious adhesive material to
provide rows or spaces in the material for attaching ceramic tiles to a
surface." Jafarmadar, col. 3:64- 67 (italics added). Again, Jafarmadar
describes use of a trowel "to apply" and "to manipulate" separately.
J afarmadar does not teach that the two steps are performed
contemporaneously. Further, logic requires that application of the adhesive
precede distribution. "A single prior art reference may anticipate without
disclosing a feature of the claimed invention if such feature is necessarily
present, or inherent, in that reference." Allergan, Inc. v. Apotex Inc., 7 54
F.3d 952, 958 (Fed. Cir. 2014). The adhesive of Jafarmadar is necessarily
applied prior to being distributed. Accordingly, the Board cannot accept
Appellants' assertion that Jafarmadar teaches to apply an adhesive "at the
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Appeal2015-001336
Application 13/408,158
same time that the rows are formed." Further, we adopt the Examiner's
finding that "[h ]aving the process of applying the adhesive and passing over
it with a trowel being continuous and with little time between application
and contact does not mean that the application of the adhesive does not
occur first." Answer 11.
CONCLUSION
We affirm the Examiner's decision to reject claims 1-22.
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
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