Ex Parte Perron et al

Patent Trial and Appeal Board

Sep 11, 2014

11737949 (P.T.A.B. Sep. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES S. PERRON,
WILLIAM C. BAKER, and DEREK A. RICE
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Appeal 2012-008118
Application 11/737,949
Technology Center 3700
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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.
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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.
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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.”
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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.
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“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,
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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‒
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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
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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.
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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.

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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

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