Ex Parte Parkin et alDownload PDFPatent Trial and Appeal BoardAug 29, 201813422541 (P.T.A.B. Aug. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/422,541 03/16/2012 Michael Parkin 54549 7590 08/31/2018 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. 67097-1724 PUS 1 ;60588US01 CONFIRMATION NO. 3511 EXAMINER CORDAY, CAMERON A ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 08/31/2018 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, JAMES 0. HANSEN, CHRISTOPHER J. HERTEL, and DAVID R. L YDERS Appeal2017-010661 Application 13/422,541 Technology Center 3700 Before DANIELS. SONG, MICHAEL L. HOELTER, and BRENT M. DOUGAL, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HOELTER. Opinion Dissenting-in-part filed by Administrative Patent Judge SONG. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-6, 8, 9, 12-15, and 17-20, which constitute all 1 According to Appellants, the real party in interest is United Technologies Corporation. App. Br. 1. Appeal2017-010661 Application 13/422,541 the claims pending in this application. App. Br. 1. Claims 10 and 11 were drawn to a non-elected species (see Election dated May 29, 2015) while claims 7 and 16 were canceled (see Amendment After Final dated March 11, 2016). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below, we REVERSE the Examiner's rejections. THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to an airfoil for a gas turbine engine." Spec. ,r 1. Apparatus claims 1 and 17, and method claim 12, are independent. Claim 1 is illustrative of the claimed subject matter and is reproduced below: 1. An airfoil for a gas turbine engine, comprising: a substrate; a sheath providing an edge; a cured adhesive securing the sheath to the substrate, the cured adhesive having a fillet extending adjacent to and beyond the edge from underneath the sheath, the fillet including a mechanically worked finished surface, the fillet leaving a portion of the edge exposed; and a coating arranged over the substrate and the mechanically worked finished surface, the coating abutting the portion of the edge. REFERENCES RELIED ON BY THE EXAMINER Carlson et al. El-Aini et al. Deal et al. Nies us 3,762,835 US 7,955,054 B2 US 2011/0211967 Al US 8,047,799 B2 2 Oct. 2, 1973 June 7, 2011 Sept. 1, 2011 Nov. 1, 2011 Appeal2017-010661 Application 13/422,541 REJECTIONS ON APPEAL Claims 1-6, 8, 9, 12-15, and 17-20 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 1-6, 8, 9, and 17-20 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. 2 Claims 1, 6, 8, and 9 are rejected under 35 U.S.C. § 102(b) as anticipated by Carlson. 3 Claims 2-5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Carlson and Deal. Claims 12-15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Carlson and Nies. Claims 17-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over El-Aini and Carlson. ANALYSIS The Examiner's rejection of claims 1-6, 8, 9, 12-15, and 17-20 as failing to comply with the written description requirement. The Examiner addresses the limitation, "the fillet leaving a portion of the edge exposed," stating ( with respect to all three independent claims 1, 12, and 17) "[t]he Examiner questions what is meant by 'exposed', how this is accomplished, and what the scope of 'a portion' might be." Final Act. 3. 2 "The rejection of claims 12-15 under 35 USC [§] 112, second paragraph is withdrawn." Ans. 9. 3 The Examiner also incorrectly listed claim 7, which has been canceled. See supra. 3 Appeal2017-010661 Application 13/422,541 Appellants identify several paragraphs in their Specification where this topic is discussed ( and also replicate Figures 4 and 5 of the submitted application where additional support for such language can be found). App. Br. 4--5. The Examiner thereafter contends, "in the relevant figures, it appears that the fillet is removed to expose the entirety of the edge 66. An edge portion is not disclosed .... "4 Ans. 9. However, as Appellants' figures and Specification disclose, not all of the fillet is removed. For example, only that part shown above the dotted line in Figure 4 is removed by tool 76. Further, as also depicted in Figure 4, prior to any working of the fillet by the tool, a portion of edge 66 is exposed ( with more of edge 66 exposed after being so worked (see Spec. ,r,r 38, 39, 43 and Figure 6)). 5 Regarding only independent claims 1 and 17, the Examiner states that these claims "disclose an apparatus in two distinct states," i.e., "an intermediate state where the fillet has been removed" and a "final product where the coating has been applied." Ans. 9. The Examiner thus questions "[ t ]he existence of these two states at the same time" contending that such concurrent existence "was not disclosed" "and constitutes new matter." Ans. 9. Appellants reply that Figure 6 "illustrates both of these features in one embodiment." Reply Br. 1. Appellants also state that, as "[ r ]egarding the fillet, Figure 4 illustrates the 'before' and Figure 5 ( and the dashed line in Figure 4) shows the 'after."' Reply Br. 2. 4 Appellants' Paragraph 3 8 indicates that a "fillet" is that part of the adhesive that, when cured, extends "beyond the sheath edge." 5 We further note that the Specification teaches that the "fillet 68 bridg[ es] an edge 66 of the sheath 47 and a surface 58 of the substrate 53" and that only a portion of fillet is removed. Spec. ,r,r 38, 39, 43. The portion removed in Figure 5 is but one nonexclusive example. 4 Appeal2017-010661 Application 13/422,541 In view of the above exchange, we are not persuaded Appellants' original application fails to provide support for the limitation "the fillet leaving a portion of the edge exposed." We do not sustain the Examiner's rejection of claims 1---6, 8, 9, 12-15, and 17-20 as failing to comply with the written description requirement. The rejection of claims 1-6, 8, 9, and 17-20 as being indefinite Here, the Examiner addresses the limitation regarding a portion of the edge being "exposed" and also the limitation where a coating abuts the edge stating, "[i]t is unclear how the portion of the edge can be both exposed and covered by a coating." Final Act. 3; see also Ans. 9-10. Appellants clarify that the edge being "exposed" is claimed "as it relates to the fillet (i.e., 'the fillet leaving a portion of the edge exposed"') whereas the edge being covered is claimed "as it relates to the coating." Reply Br. 3. Appellants' explanation has merit. We do not sustain the Examiner's rejection of claims 1---6, 8, 9, and 17-20 as being indefinite. The rejection of claims 1, 6, 8, and 9 as anticipated by Carlson Independent claim 1 includes the limitation, "the fillet including a mechanically worked finished surface." The Examiner notes "that the claimed phrase 'mechanically worked' is being treated as a product-by- process" and that "the finished surface can be made by mechanical work." Final Act. 4. Appellants disagree with the Examiner's analysis of this limitation under the "product-by-process" rubric. App. Br. 8. Appellants reference MPEP § 2113 which states, "structure implied by the process steps should be 5 Appeal2017-010661 Application 13/422,541 considered when assessing the patentability of product-by-process claims over the prior art" and that this is especially the case "where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product." See App. Br. 8; Reply Br. 4. In view of such instructions, Appellants address Paragraph 39 of their Specification which contrasts adhesive that is "cured" (which has "visible attributes such as a relatively smooth texture and/or a glossy or matte surface finish") to adhesive that has been "mechanically worked." App. Br. 8. Appellants' Paragraph 39 states, "[t]he mechanically worked surface finish 88, by way of contrast, will have, for example, striations and/or machining marks left by a tool." This Paragraph further explains that "[t]he structural characteristics and difference between the cured exterior surface and the mechanically worked surface finish 8 8 may be appreciated based upon a visual inspection of the part." Hence, Appellants urge the Examiner to "give patentable weight to the 'mechanically worked finished surface' as structural features in the claims," as contrasted with a cured surface. App. Br. 8. The Examiner acknowledges that Carlson's "epoxy/substrate composite blade structure is produced by molding" yet asserts that the resultant product "would have striations and/or machining marks on its surface from the molding process." 6 Ans. 11. Consequently, the Examiner states, "the product of Carlson would be the same or similar as the finished surface claimed." Final Act. 4; Ans. 11. 6 Regarding any finishing of this surface (if any), the Examiner states, "Carlson is silent as to the process used to form the finished surface." Final Act. 4. 6 Appeal2017-010661 Application 13/422,541 Appellants contend, "[t]he Examiner has no basis for this argument" and has not explained "why the claimed surface finish would necessarily be found on [Carlson's] structure 15." App. Br. 8-9; see also Reply Br. 4--5. Appellants reference various cases providing guidance to the effect that "[t]he fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic" ( citations omitted). App. Br. 9. There is merit to Appellants' arguments. The Examiner only states that "the finished surface can be made by mechanical work" (Final Act. 4); that Carlson's surface "would be the same or similar as the finished surface claimed" (Final Act. 4; Ans. 11); and, Carlson's molded product "would have striations and/or machining marks on its surface" (Ans. 11 ). These are conjectures or speculations on the part of the Examiner, each lacking support that this condition would actually arise. Such statements are also in direct contravention to Appellants discussion above regarding Paragraph 39 which contrasts "a cured exterior surface having visible attributes such as a relatively smooth texture and/or a glossy or matte surface finish" to the "mechanically worked surface finish" which "will have, for example, striations and/or machining marks left by a tool." In short, the Examiner has not established by a preponderance of the evidence that Carlson discloses a "mechanically worked finished surface" as claimed. Accordingly, and based on the record presented, we do not sustain the Examiner's rejection of claims 1, 6, 8, and 9 as anticipated by Carlson. 7 Appeal2017-010661 Application 13/422,541 The rejection of claims 2-5 as unpatentable over Carlson and Deal The Examiner relies on the additional reference to Deal as teaching an airfoil "wherein the substrate is a first metal and the sheath is a second metal different from the first metal." Final Act. 6. Appellants contend, "Deal does not cure [Carlson's] deficiency" discussed above. App. Br. 9. We concur. We likewise do not sustain the Examiner's rejection of claims 2-5 as unpatentable over Carlson and Deal. The rejection of claims 12-15 as unpatentable over Carlson and Nies Here, the Examiner states, "Carlson fails to teach mechanically removing a portion of the adhesive that flowed beyond the edge to leave a fillet extending beyond and from beneath the sheath." Final Act. 7. The Examiner further states, "Carlson presents a finished blade, but fails to teach a finishing step where excess adhesive is mechanically removed." Ans. 11. Continuing, the Examiner relies on Nies for teaching "an airfoil component bonding process wherein a step includes mechanically removing a portion of the adhesive extending beyond the sheath." Final Act. 7 (referencing Nies 6:5-9). The Examiner states that Nies discloses removing adhesive to "prevent[] excess adhesive from breaking off and damaging the airfoil structure (Col. 1 lines 30-34)." 7 Final Act. 7. Consequently, the Examiner 7 Nies also addresses a concern of the "excess bond paste [ adding] considerable weight to the blade" (Nies 1 :28-29), but, according to the Examiner, "Carlson's adhesive does not provide unnecessary weight, because unnecessary adhesive would have already been removed in finishing the blade." Ans. 11. 8 Appeal2017-010661 Application 13/422,541 concludes that it would have been obvious to combine the two to prevent such breaking off and damage. Final Act. 7. Appellants contend, "[t]his reasoning is not supported given the disclosure and intent of Nies." App. Br. 9; see also Reply Br. 5. The portion of Nies relied on by the Examiner (i.e., "Col. 1 lines 30-34") is directed to preventing internal damage to an airfoil ("excess bond paste can . . . cause damage to interior structure and components during operation"). Final Act. 7. The Examiner does not explain how a reason to combine based on internal blade damage justifies a rejection of claims addressing external surface conditions. 8 Directly on point are instructions that Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Further, the referenced section of Nies (i.e., "Col. 6 lines 5-9") teaches "[a]fter sufficient curing time, any excess bond paste 35 (FIG. 4) that was squeezed out of the sleeve 44 is trimmed along the trailing edge 26 to present a finished bond between the shell members 20, 22." In view of such teachings, in combination, Nies appears to suggest removal of all adhesive 8 This is not to say that Nies does not disclose a step that "includes mechanically removing a portion of the adhesive extending beyond the sheath (Col. 6 lines 5-9)" as stated by the Examiner. Final Act. 7. 9 Appeal2017-010661 Application 13/422,541 15 to the right of the edge of Carlson's sleeve 22 (i.e., adhesive "squeezed out of the sleeve ... is trimmed"). See Carlson Fig. 5. Perhaps it was this reliance on Nies by the Examiner that caused Appellants to ask, "what portion of Carlson's 'adhesive' would be removed to 'leave a fillet."' Reply Br. 5. Appellants' question is also relevant due to Nies teaching of, preferably, avoiding squeeze out altogether ("[t]he amount of excess bond paste 35 may be measured and recorded, with this value being used to reduce the amount of bond paste 34 added to subsequent sleeves 44 in the formation of additional blades 16"). Nies 6:8-11. Accordingly, and based on the record presented, we are not persuaded the Examiner has established by a preponderance of the evidence that the combination of Carlson and Nies renders claims 12-15 obvious. We do not sustain their rejection. The rejection of claims 17-20 as unpatentable over El-Aini and Carlson Regarding independent claim 17, the Examiner relies on the teachings of El-Aini for disclosing a flan blade "comprising[] a substrate." Final Act. 8. The Examiner relies on the teachings of Carlson for the remaining limitations of this claim, including noting "that the claimed phrase 'mechanically worked' is being treated as a product-by-process limitation." Final Act. 9. The Examiner also repeats the contention that Carlson's surface "would be the same or similar as the finished surface claimed" as discussed above. Final Act. 9. Appellants assert, "[t]his rejection is improper for the same reasons discussed above." App. Br. 10. We do not repeat our discussion above, but suffice it to say, the Examiner has not established by a preponderance of the evidence that the combination of El- 10 Appeal2017-010661 Application 13/422,541 Aini and Carlson disclose a "mechanically worked finished surface" as recited in claim 17. See supra. Accordingly, and based on the record presented, we do not sustain the Examiner's rejection of claims 17-20 as being obvious over El-Aini and Carlson. DECISION We reverse the Examiner's rejections of claims 8, 9, 12-15, and 17- 20. REVERSED 11 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL PARKIN, JAMES 0. HANSEN, CHRISTOPHER J. HERTEL, and DAVID R. L YDERS Appeal2017-010661 Application 13/422,541 Technology Center 3700 Before DANIELS. SONG, MICHAEL L. HOELTER, and BRENT M. DOUGAL, Administrative Patent Judges. SONG, Administrative Patent Judge, dissenting-in-part. I concur with the majority's decision in all respects except with respect to the disposition of the Examiner's rejection based on the written description requirement, which in my opinion, should be affirmed. The Specification disclose providing a fillet, and removing a portion thereof so as to provide a worked surface (see Fig. 4). The limitation at issue recites "the fillet including a mechanically worked finished surface, the fillet leaving a portion of the edge exposed." This limitation requires the fillet to have a mechanically worked finished surface, because it follows the limitation regarding "mechanically worked" and the term "leaving a portion." As such, the limitation at issue is in reference to after mechanical working. Hence, according to the claim language, the mechanical work leaves "a portion of the edge [is] exposed." Appeal2017-010661 Application 13/422,541 The Examiner is correct that upon mechanically working the surface so as to provide the finished surface, the Specification discloses that the entirety of the edge 66 is exposed, not just a portion thereof (see Fig. 5). The majority opinion is correct that after working, "more of edge 66" is exposed, and that not all of the fillet as initially provided is removed. However, the claim is worded in a manner that the mechanical working results in a specific degree of edge exposure being attained, that is, partial exposure. In contrast, the portion of the edge that becomes exposed upon mechanical working is disclosed as being the entirety of the edge, so that the mechanical working does not "leav[ e] a portion of the edge exposed" as claimed, but instead, leaves the entirety of the edge exposed. The Appellant's assertion that the entirely exposed edge supports a limitation that "a portion" of the edge being exposed (Reply Br. 3) is not persuasive. A disclosure of 100% exposure does not support claiming of, for example, 50% exposure. The Appellants' further argument that "[ t ]he mechanically worked finished surface 88 leaves a portion of the edge 66 exposed, which was previously covered by the fillet 68, as shown in Figure 5" (App. Br. 4, emphasis added), is also unpersuasive. The Appellants essentially seek to interpret the claim as reciting "the fillet leaving a previously covered portion of the edge exposed upon mechanically working." While this language is clearly supported by the Specification, that is not what the claims say. Accordingly, I respectfully dissent-in-part. 2 Copy with citationCopy as parenthetical citation