Ex Parte Robertson et al

Board of Patent Appeals and Interferences

Sep 6, 2007

11118509 (B.P.A.I. Sep. 6, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN M. ROBERTSON, THOMAS DEMICHAEL,
and RAYMOND M. WALKER
____________

Appeal 2007-2257
Application 11/118,509
Technology Center 1700
____________

Decided: September 6, 2007
____________

Before EDWARD C. KIMLIN, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 8-24. We have jurisdiction under 35 U.S.C. § 6.1

1 In rendering this decision, we have considered the Appellants' arguments
presented in the Briefs filed February 8, 2006, June 5, 2006, and January 10,
2007.
Appeal 2007-2257
Application 11/118,509

Appellants’ invention relates to a method of repairing a part of a gas
turbine engine. Representative independent claims 8 and 24, as presented in
the Brief, appear below:
8. A method of making a rotating part of a gas turbine engine,
comprising the steps of:

providing a rotating part made from a wrought material and having
a contact area;

providing a piece of high strength wrought material having a
contact area;

resistance heating said contact area of said material and said
contact area of said part; and

pressing said contact area of said material against said contact area
of said part;

wherein said material bonds to said part.

24. A method of repairing a part of a gas turbine engine comprising
the steps of:

providing a part made from a wrought material and having a contact
area;

providing a fixture having a base and a replacement section formed
from a high strength wrought material, said replacement section having a
contact area;

heating said contact area of said replacement section and said contact
area of said part by applying an electrical current to said replacement section
and said part;

applying pressure to said fixture to move said fixture towards said part
until said contact area of said replacement section comes into contact with
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Appeal 2007-2257
Application 11/118,509

said contact area of said part and to allow said electrical current to travel
across a joint between said contact areas; and

maintaining application of said electrical current and said pressure
until the wrought material forming said replacement section has bonded to
the wrought material of said part.

The Examiner relies on the following references in rejecting the
appealed subject matter:
Bogard US 5,205,465 Apr. 27, 1993
Robertson US 5,272,809 Dec. 28, 1993

The following ground of rejection is the sole rejection on appeal to be
reviewed:
Claims 8-24 stand rejected under 35 U.S.C. §103(a) as unpatentable
over Bogard in view of Robertson.
We determine that the Examiner has established a prima facie case of
obviousness in view of the referenced evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Therefore, we
AFFIRM the § 103 rejection presented in this appeal essentially for the
reasons stated in the record, as well as those reasons set forth below.
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. Graham v.
John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). “[A]nalysis
[of whether the subject matter of a claim would have been obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
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Appeal 2007-2257
Application 11/118,509

steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.,
v. Teleflex, Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007)
(quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006)). See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)
(“The motivation need not be found in the references sought to be combined,
but may be found in any number of sources, including common knowledge,
the prior art as a whole, or the nature of the problem itself.”); In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969) (“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”);
In re Hoeschele, 406 F.2d 1403, 1406-407, 160 USPQ 809, 811-12 (CCPA
1969) (“[I]t is proper to take into account not only specific teachings of the
references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom . . . .”). The analysis supporting
obviousness, however, should be made explicit and should “identify a reason
that would have prompted a person of ordinary skill in the art to combine the
elements” in the manner claimed. KSR, 127 S. Ct. at 1739, 82 USPQ2d at
1396.
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness as to claims 8-24.
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Appeal 2007-2257
Application 11/118,509

The Examiner found that Bogard relates to the replacement of a
turbine disk air seal land ring. A replacement ring, composed of wrought
nickel-base alloys or titanium alloys, is bonded to the disk in place of a worn
or damaged land ring. The replacement ring and the disk material can be
composed of similar chemical composition as the disk material. Bogard
teaches both the disk and the replacement ring having contact areas for
bonding which are properly aligned, heated, and pressed under conditions
sufficient to ensure proper bonding by forge joining (Bogard, Col. 4, ll. 3-
53). Bogard does not expressly teach using resistance heating for the forge
joining process, and, therefore, also does not teach applying an electrical
current to either part. The Examiner cited Robertson for describing the
suitability of using the resistance heating bonding technique for wrought
alloy materials (Answer 4-5).
Appellants’ principal argument is that Robertson teaches away from
the claimed invention (Br. 8). Appellants also argue that there is no
suggestion or motivation to combine the teachings of Bogard and Robertson
(Br. 8-9).
We do not find Appellants’ arguments persuasive. The Examiner
properly determined that Bogard and Robertson utilize essentially the same
temperatures and pressures to join the wrought materials through the forge
joining process (Answer 7-8). As such, a person of ordinary skill in the art
would have reasonably expected that wrought materials would have been
bonded together utilizing a resistance heating bonding technique for the
forge joining process. Appellants are reminded that the test for obviousness
is what the combined teachings of the references would have suggested to
one of ordinary skill in the art, and that only a reasonable expectation of
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Appeal 2007-2257
Application 11/118,509

success, not absolute certainty, is required. In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981).
Regarding the subject matter of claim 24, we adopt the Examiner’s
responses to Appellants’ arguments.
CONCLUSION
For the foregoing reasons and those stated in the present record, we
affirm the Examiner’s rejections of claims 8-24 under § 103(a).
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

clj

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