Ex Parte Perron et alDownload PDFPatent Trial and Appeal BoardSep 11, 201411737949 (P.T.A.B. Sep. 11, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JAMES S. PERRON, WILLIAM C. BAKER, and DEREK A. RICE ________________ Appeal 2012-008118 Application 11/737,949 Technology Center 3700 ________________ Before EDWARD A. BROWN, CHARLES N. GREENHUT, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1‒15 and 21‒25. App. Br. 1.1 Claims 16‒20 have been cancelled. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants acknowledge that a “typographical error” occurs at App. Br. 1 and that “[t]he Status of the Claim Section should read that the rejections of Claims 1‒15 and 21‒25 are appealed.” Reply Br. 2. Appeal 2012-008118 Application 11/737,949 2 THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to gas turbine engines and, more particularly, to improved gas turbine engine components.” Spec. para. 1. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A turbine engine component for a gas turbine engine, the turbine engine component comprising: an inner disk; an outer shroud; and a plurality of blades, each blade comprising: a blade root coupled to the inner disk, the blade root comprising: a side portion plated via a noble metal and metallurgically bonded to a second metal; and a bottom portion in contact with the inner disk; and an airfoil body extending at least partially between the blade root and the outer shroud. REFERENCES RELIED ON BY THE EXAMINER Walker US 4,051,585 Oct. 4, 1977 Tubbs US 5,332,357 July 26, 1994 Strangman US 6,969,240 B2 Nov. 29, 2005 THE REJECTIONS ON APPEAL Claims 2, 9, and 22 are rejected under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. Ans. 4. Claims 1, 4‒7, 21, 24, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Strangman and Walker. Ans. 5. Appeal 2012-008118 Application 11/737,949 3 Claims 3 and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Strangman, Walker, and in further view of engineering expedient. Ans. 8. Claims 8 and 11‒15 are rejected under 35 U.S.C. §103(a) as being unpatentable over Strangman, Walker, and Tubbs. Ans. 10. Claim 10 is rejected under 35 U.S.C. §103(a) as being unpatentable over Strangman, Walker, Tubbs and in further view of engineering expedient. Ans. 13. ANALYSIS The rejection of claims 2, 9, and 22 for failing to comply with the written description requirement The Examiner determines that each of claims 2, 9, and 22 “contain[s] new matter” because “[t]he amended claims include the new limitations the blade root ‘comprises a bottom surface against the inner side that is not plated with the noble metal.’” Ans. 4. The Examiner finds that “there was no description of these limitations in the specification, drawings or claims as originally filed.” Ans. 4. Paragraph 36 of Appellants’ Specification states that “an inner ring is bi-cast encapsulating the blade root 208” and further that “[t]he inner ring is configured to hold the blade root 208 in place for diffusion bonding to an internal disk.” Appellants’ Specification identifies inner ring via reference numeral 400 (Spec. ¶40 and Fig. 4D) and the internal disk (“inner disk”) via reference numeral 202 (Spec. ¶¶ 40, 41). Paragraph 35 discusses a “plating region 402” that “preferably includes a thin layer of platinum or other noble metal” and that this “plating region 402 may cover the entire blade root 208.” Paragraph 41 discloses that “an internal diameter of the bi-cast inner disk 202 is machined, in step 326.” Appeal 2012-008118 Application 11/737,949 4 Appellants rely on Paragraph 41 of the Specification, and also Figures 4B‒4D, for disclosing that “the plating region 402 is no longer on the bottom portion of the blade root following the machining of step 326,” and further that “[i]t will be appreciated by one of skill in the art that the machining of the bottom portion would remove the plating region 402 from the bottom portion of the blade root that is in contact with the inner disk.” App. Br. 5, see also Reply Br. 3, 4. Appellants conclude that “even if the plating region were previously applied to the bottom portion of the blade root, the plating region is no longer present on the bottom portion following step 326 (as depicted in FIG. 4D).” App. Br. 5; see also Reply Br. 3. In addressing Paragraph 41, the Examiner finds that the “specification is even less helpful and only points to a generic machining step 326.” Ans. 14. Paragraph 41 addresses machining the internal diameter of inner disk 202 and Appellants do not indicate where this Paragraph 41 discloses machining either the ring (400) or the bottom of the blade root (208) that is bonded to the inner disk (see Spec. para. 36).2 As such, the Examiner finds that “all that the step teaches is that something is done to the apparatus” and the Examiner fails to see how one would know that this step 326 “explicitly means only removing plating from a specific spot on a specific piece of the apparatus.” Ans. 15. Appellants further contend that “FIG. 4D shows that the plating region has been removed from the bottom portion of the plate root.” App. Br. 5; see also Reply Br. 3, 4. On this point, the Examiner finds that with respect to Figure 4D, “[t]he bottom looks the same as the sides” and that 2 Appellants contend that Paragraph 41 “makes clear that the ‘internal diameter’ of the disk is machine[d] (thus implicitly referring to the bottom portion of the blade root but not the side portion).” Reply Br. 3. Appeal 2012-008118 Application 11/737,949 5 “Figure 4D fails to clearly show that the plating is removed only from the bottom surface.” Ans. 14. The Examiner thus concludes that “[i]t would be improper to deduce that only the bottom of the root has the plating removed in view of the Figures.” Ans. 14. We are instructed by our reviewing court that “the test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). We have received additional guidance that while the written description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, “a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352. See also In re Barker, 559 F.2d 588, 593 (CCPA 1977) (“That a person skilled in the art might realize from reading the disclosure that such a step is possible is not a sufficient indication to that person that the step is part of appellants’ invention.”). New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). In view of the above, Appellants’ contentions (which rely on both the Specification and the Figures) asserted in response to the Examiner’s written description rejection, are not persuasive in showing that the Examiner erred in making the rejection. In other words, we are not persuaded Appellants’ disclosure reasonably conveys to those skilled in the art that Appellants had possession of the claimed subject matter as of the filing date. Accordingly, Appeal 2012-008118 Application 11/737,949 6 we sustain the rejection of claims 2, 9, and 22 under 35 U.S.C. § 112, first paragraph. The rejection of claims 1, 4‒7, 21, 24, and 25 as being unpatentable over Strangman and Walker Appellants separately argue independent claims 1 and 21 (App. Br. 6, 7 and 12, 13) but the arguments made for each of these claims are duplicative in that Appellants’ assertions are based on the material of Walker’s blade and blade root being ceramic and not metallic. App. Br. 6, 13. We select claim 1 for review with claims 4‒7, 21, 24, and 25 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants contend that because Walker’s blade material is ceramic, Walker’s “blade root cannot be metallurgically bonded to a second metal, as in Appellant’s independent Claim 1.” App. Br. 6; see also Reply Br. 4, 5. The Examiner relies on Strangman for teaching a blade root (Ans. 5) and the Examiner explains that Strangman teaches its attachment to an inner ring “by diffusion bonding (col. 4, ll. 15‒18)” and that “[t]he bond is metallurgical because as taught in Strangman it is between two metals.” Ans. 15. Appellants do not dispute this. However, the Examiner acknowledges that Strangman does not teach plating via a noble metal prior to bonding (Ans. 5) and states that “Walker is used to teach adding a compliant layer, platinum, to the blade root to aid in the bonding process (col. 2, ll. 25‒40).” Ans. 15; see also Ans. 6 and Walker 3:19. The Examiner finds that “[m]any of the advantages of using the platinum would benefit a metal to metal connection” such as “[r]educed point loading (col. 2, ll. 25‒27)” to limit wear by spreading the forces across the blade and also that platinum is “capable of withstanding high temperatures (col. 2, ll. 27‒ Appeal 2012-008118 Application 11/737,949 7 32) which are present in a turbine engine regardless of blade material.” Ans. 15, 16. The Examiner also identifies plating’s advantage discussed in Walker pertaining to the “transfer of heat between the blade and the ring (col. 2, ll. 35‒39).” Ans. 16. In short, the Examiner explains that “Strongman teaches a blade root that is diffusion bonded to a ring and Walker is used to teach placing a platinum layer between the pieces to increase the bond.” Ans. 16; see also Ans. 6. Hence, contrary to Appellants’ assertion, the Examiner is not relying on Walker for teaching a metal-to-metal bond but instead for teaching the use of platinum as a plating material to improve the bond. Ans. 6, 15. Accordingly, Appellants’ contention is not persuasive to show that the Examiner erred in making this rejection and, as such, we sustain the Examiner’s rejection of claims 1, 4‒7, 21, 24 and 25 as being unpatentable over Strangman and Walker. The rejection of claims 3 and 23 as being unpatentable over Strangman, Walker, and in further view of engineering expedient Claims 3 and 23 depend, respectively, from independent claims 1 and 21; and each of these dependent claims includes an additional limitation directed to the “blade tip” being plated and coupled to an outer shroud. In other words, the focus of theses dependent claims is the blade tip and not the opposite blade root as discussed supra with respect to independent claims 1 and 21. Appellants present similar arguments for dependent claims 3 and 23 (App. Br. 7‒9 and 14‒16, respectively) and as such, we select claim 3 for review with claim 23 standing or falling with claim 3. In rejecting claim 3, the Examiner finds that An engineer in the diffusion bonding art would have considered to plate the tip of the blade at the interface between the tip and the shroud with a noble metal as a routine engineering Appeal 2012-008118 Application 11/737,949 8 expedient for the purpose of increasing the connection strength of the blade tip to the outer shroud by having the noble metal aid in the bonding process, as taught by Walker. Ans. 9. In other words, the Examiner finds that “[t]he bond on the inner and outer roots are the same and therefore the benefits would translate to the outer bond in the same manner as the inner bond.” Ans. 16. Appellants contend that the Examiner’s reliance on “engineering expedient” is “unsupported” in that “the Examiner [] failed to provide any art that taught the additional features of dependent claims 3, 10, and 23.”3 Reply Br. 5, 6. In short, Appellants contend that the Examiner “fails to provide art that teaches or suggests each and every claim feature of Applicant's Claims, as is required under well-settled case law.” Reply Br. 6; see also App. Br. 7, 8. We agree with Appellants that the Examiner did not identify any art specifically disclosing the plating of a blade tip to aid in bonding. However, the Examiner did clearly identify art that taught a bonding benefit to the blade root (see the Examiner’s combination of Strangman and Walker discussed supra). We understand the Examiner to conclude that this bonding benefit, shown to be applicable to the blade root, would be equally applicable to the blade tip in order to achieve the same benefit. Ans. 9, 16. The Examiner calls this rationale “engineering expedient” and Appellants do not indicate how this rationale employed by the Examiner (by whatever name used) is incorrect. Appellants acknowledge that it is “well-settled law that obviousness requires at least a suggestion of all of the features in a claim” (App. Br. 8) yet Appellants do not indicate how the use of the 3 Note that claim 10 is rejected under Strangman, Walker, Tubbs and also the same “engineering expedient” as discussed here. Ans. 13. Appeal 2012-008118 Application 11/737,949 9 combination of Strangman and Walker, and the benefits thereof, are not suggested for use at the blade tip when the benefits achieved thereby are pertinent at this location as well. To support their contention, Appellants rely on that portion of the Manual of Patent Examining Procedure (MPEP) directed to official notice (App. Br. 9), but “the [E]xaminer did not take official notice as claimed by Appellant[s]” and instead relied on “a line of reasoning based on routine considerations and procedures performed by an engineer in the art.” Ans. 16, 17. As stated supra, Appellants do not indicate how this “line of reasoning” is incorrect. Accordingly, we sustain the Examiner’s rejection of claims 3 and 23. The rejection of claims 8 and 11‒15 as being unpatentable over Strangman, Walker, and Tubbs Appellants present similar arguments for independent claim 8 as well as dependent claims 11‒15. App. Br. 9, 10. We select claim 8 for review. The Examiner relies on Tubbs for teaching a gas turbine engine and the components thereof. Ans. 11. Appellants do not dispute these teachings of Tubbs but instead, Appellants repeat the contention that “in Walker, the blade and the blade root are ceramic, rather than metallic” and as such, “in Walker, the blade root cannot be metallurgically bonded to a second metal, as in Appellant’s independent Claim 8.” App. Br. 10; see also Reply Br. 4, 5. Appellants’ contentions are not persuasive for the reasons discussed supra and accordingly, we sustain the Examiner’s rejection of claims 8 and 11‒15. Appeal 2012-008118 Application 11/737,949 10 The rejection of claim 10 as being unpatentable over Strangman, Walker, Tubbs and in further view of engineering expedient Appellants repeat the contentions expressed earlier regarding the Examiner’s reliance on “engineering expedient.” App. Br. 10‒12, Reply Br. 5, 6. For similar reasons, we sustain the Examiner’s rejection of claim 10. Additional contentions regarding claims 2, 9, and 22 Appellants further object to the Examiner’s assertion that “the [E]xaminer explicitly reserved the right to determine patentability pending the resolution of the 112 first paragraph issues.” Reply Br. 6, 7; Ans. 17, 18. Appellants contend that “[t]he examiner should still consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant.” Reply Br. 7. The matter of the Examiner only rejecting claims 2, 9, and 22 under Section 112, first paragraph, and not also under any cited art is a matter of examining procedure and the Board does not have jurisdiction over procedural matters. In other words, matters of Examination practice are left to the discretion of the Examiner (and subject to petition to the Director, see 37 C.F.R. § 1.181) and are not within the scope of review by the Board. DECISION The Examiner’s rejections of claims 1‒15 and 21‒25 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh Copy with citationCopy as parenthetical citation