Ex Parte Schmidt

Patent Trial and Appeal Board

Dec 12, 2017

12998250 (P.T.A.B. Dec. 12, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/998,250 03/30/2011 Robert Schmidt 5038.1092 6277
23280 7590 12/14/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
SIMS III, JAMES F
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SCHMIDT
Appeal 2016-007480
Application 12/998,2501
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and BRENT M. DOUGAL,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Schmidt (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 17-19, 22-24, and 26-
32. Final Office Action (May 18, 2015) [hereinafter “Final Act.”]. Claims
1-16, 20, 21, 25, and 33-36 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies MTU Aero Engines GmbH as the real party in interest.
Appeal Brief 2 (December 1, 2015) [hereinafter “Appeal Br.”].
Appeal 2016-007480
Application 12/998,250
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a method for the
production of a rotor, especially a turbine disk or a turbine ring for a turbine
stage of a continuous-flow machine.” Substitute Specification — Clean
Version 11 (filed March 30, 2011) [hereinafter “Spec.”]. Claim 17 is the
sole independent claim and is reproduced below.
17. A method for the production of a rotor comprising
the following steps:
producing a blade ring comprising a plurality of rotor
blades;
welding together adapters arranged in an area of roots of
the rotor blades to create at least essentially radial weld seams
having predefined welding depths;
positioning a rotor disk or a rotor ring on the blade ring;
and
welding the rotor disk or the rotor ring to the adapters of
the rotor blades to create at least one additional weld seam,
wherein the rotor disk or the rotor ring is welded to the adapters
in such a way that the at least one additional weld seam runs
axially and/or circularly relative to the axis of rotation of the
rotor and/or along a contact area between the adapters and the
rotor disk or the rotor ring, wherein the welding depths of the
radial weld seams are selected in such a way that they amount to
at least 50% of a top surface width of the at least one additional
weld seam and wherein the radial weld seams are over-welded
with the at least one additional weld seam.
Appeal Br. 8 (Claims Appendix).
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Application 12/998,250
REJECTIONS
The Final Office Action includes the following rejections2:
1. Claims 17, 18, 22-24, and 26-32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Barcella (US 4,812,107; issued
March 14, 1989).
2. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Barcella and Collot (US 5,551,623; issued September 3,
1996).
ANALYSIS
First Ground of Rejection: Obviousness over Barcella
The Examiner finds that Barcella discloses the method of independent
claim 17 including welding the rotor disk (16) to the adapters (3) of the rotor
blades (1) such that an additional weld seam (18) runs essentially axially and
wherein the welding depths of the radial weld seams (5) are selected such
that they “appear to amount to at least 50% of a top surface width of the at
least one additional weld seam (18).” Final Act. 2—3 (citing Barcella, Figs. 3
and 4); Ans. 6.3 Appellant argues that “[t]he welding depths of the asserted
radial weld seams in Barcella clearly are not ‘selected in such a way that
they amount to at least 50% of a top surface width of the at least one
2 The Final Office Action also included a rejection of claim 27 under
35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 2. The
Examiner subsequently withdrew this rejection. Advisory Action 2 (August
10, 2015) hereinafter “Adv. Act.”).
3 The Examiner also refers to a different weld seam of Barcella, i.e., welding
layer 19, as the claimed “at least one additional weld seam” to meet the
limitation of “the radial weld seams are over-welded with the at least one
additional weld seam.” Final Act. 3 (citing Barcella, Figs. 6 and 7).
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Application 12/998,250
additional weld seam’ and in fact are clearly selected to be much less.”
Appeal Br. 5 (citing Barcella, Fig. 5).
We cannot discern the depths of the radial weld seams as compared to
the top surface width of the additional weld seam based on the depictions
shown in Figures 3 and 4 of Barcella. Barcella does not describe these
Figures as being drawn to scale or otherwise discuss the dimensions of the
weld seams in the detailed description. Figure 3 shows the formation of the
transverse weld seams 5 using welding rings 15, but does not show the
additional weld seam (i.e., large bell seam 18). Figure 4 shows the large bell
seam 18 used to attach rotor disk 16 and rotor 17 to adapters 3 and rotor
blades 1, but does not show transverse weld seams 5. Thus, neither of the
cited Figures shows both weld seams in a single drawing. We decline to rely
on measurements taken from the drawings or otherwise speculate as to the
relative dimensions of these weld seams. See Hockerson-Halberstadt, Inc.
v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (“patent
drawings do not define the precise proportions of the elements and may not
be relied on to show particular sizes if the specification is completely silent
on the issue”); In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent
any written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value.”).
The Examiner further states that “it would have only required routine
skill in the art at the time of invention to adjust the dimensions of the weld
seams based on the material of the components to be weld[ed] and the
desired durability of the finished rotor assembly.” Final Act. 3. Appellant
contends that no factual basis exists to modify Barcella to show this claimed
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Application 12/998,250
feature, “especially where Barcella specifically appears to desire a welding
depth that is much smaller than the top surface width of bell seam 18.”
Appeal Br. 5. We are persuaded by Appellant that the Examiner has not
provided an adequate explanation of why one having ordinary skill in the art
would have been led by the teaching of Barcella to the claimed relative
dimensions of the weld seams.
Appellant’s Specification describes a functional purpose to the
claimed relative dimensions of the radial weld seam and additional weld
seam that amounts to more than mere “window dressing.” But see Gardner
v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984) (affirming a
district court determination of obviousness based on a finding that
dimensional limitations relied upon to distinguish the claims from the prior
art were mere “window dressing” because they did not particularly point out
a feature that performed any differently from the prior art feature). In this
case, the Specification states:
[I]t is provided that the welding depths of the radial weld seams
are selected in such a way that they amount to at least 50% and
preferably at least 60% of the top surface width of the at least one
additional weld seam. This results in a very high level of
mechanical stability for the rotor.
Spec. H10, 19. In particular, the Specification describes, with reference to
Figure 4, radial weld seams 30a have an area without impurities (designated
as IVa) and an area with impurities (designated as IVb). Id. 127. The
Specification describes that when the axial weld seam 30b is formed by
over-welding the radial weld seams 30a “in the area marked by the arrow
IVd, the axial weld seam 30b . . . does not come into contact with impurities
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that might be present, as a result of which the formation of pores or flawed
sites is ruled out and a suitably high-quality join is achieved.” Id. 128.
By contrast, Barcella seems to suggest that an advantage when “the
transverse welds connecting the shrouds and root platforms are kept small.”
Barcella, col. 4,11. 24-26 (describing the embodiment shown in Figure 6).
Further, we have no evidence before us that those in the prior art recognized
that the relative dimensions of the transverse weld seams and the large bell
seam were result-effective variables. See In re Antonie, 559 F.2d 618, 620
(CCPA 1977) (finding an exception to the rule that discovery of an optimum
value of a variable in a known process is normally obvious when the
parameter optimized was not recognized to be a result-effective variable).
As such, the Examiner’s reasoning based on routine optimization is
inadequate in this case to explain how one would have arrived at the claimed
relative dimensions of the weld seams in light of the disclosure in Barcella.
The Examiner further explains that “[t]he limitation ‘radial weld
seams are selected in such a way’ . . . appears to be a mental process
wherein the operator makes decisions on dimensions of the weld seams.”
Adv. Act. 2. We disagree with the Examiner’s claim interpretation in light
of the method steps recited in claim 17 when the claim is read as a whole.
Claim 17 does not recite only selecting the dimensions of the weld seams,
i.e., a mental process, it also recites the physical steps of welding to create
the radial weld seams and the additional weld seam. As such, the language
“are selected” does not connote purely a mental process.
For these reasons, we do not sustain the rejection of independent
claim 17, and its dependent claims 18, 22-24, and 26-32, as unpatentable
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over Barcella. The Examiner relies on Collot to disclose a holding device,
as recited in dependent claim 19, and relies on Barcella for the same
deficient findings discussed above. Final Act. 5. As such, for the same
reasons discussed above, we do not sustain the rejection of claim 19 as
unpatentable over Barcella and Collot.
DECISION
The decision of the Examiner rejecting claims 17-19, 22-24, and 26-
32 is reversed.
REVERSED
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