Ex Parte Staroselsky et al

Patent Trial and Appeal Board

Sep 8, 2016

12910926 (P.T.A.B. Sep. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/910,926 10/25/2010 Alexander Staroselsky
54549 7590 09/12/2016
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. CONFIRMATION NO.
PA13285U;
67097-1364PUS1
9165
EXAMINER
HANN,JAYB
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
09/12/2016 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 ALEXANDER STAROSELSKY, JUSTIN D. PIGGUSH, and
DOMINIC J. MONGILLO
Appeal2015-003541
Application 12/910,926
Technology Center 2100
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1--4, 6-15, and 21-24, which
constitute all of the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify United Technologies Corporation as the real party in
interest. App. Br. 2.
Appeal2015-003541
Application 12/910,926
STATEMENT OF THE CASE
Introduction
Appellants' described and claimed invention is generally directed to
developing a component formed from single crystal materials with
controlled secondary crystallographic orientation. See Spec. Title, i-f 1. 2
Claim 1 is representative and reads as follows:
1. A method for developing a component, the method
compnsmg:
establishing a performance requirement for a component
having orthogonal x, y, and z axes, wherein the component is to
be formed from a single crystal material having a primary
crystallographic orientation along the z-axis and a secondary
crystallographic orientation substantially in the x-y plane,
wherein the performance requirement is a damage criterion that
is determined as a function of accumulated inelastic strain and
dissipated energy rate;
computer simulating a property of the component as a
function of an angle of the secondary crystallographic
orientation relative to the x-axis; and
based on the computer simulation, selecting the angle for
the component which will substantially satisfy the performance
requirement.
References
Gemma us 4,605,452 Aug. 12, 1986
Schaeffer us 5,843,586 Dec. 1, 1998
2 Our Decision refers to the Final Office Action mailed June 30, 2014
("Final Act."), Appellants' Appeal Brief filed Oct. 14, 2014 ("App. Br.")
and Reply Brief filed Jan. 14, 2015 ("Reply Br."), the Examiner's Answer
mailed Dec. 8, 2014 ("Ans."), and the original Specification filed Oct. 25,
2010 ("Spec.").
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Application 12/910,926
Lee US 2007/0128034 Al June 7, 2007
Sharat C. Prasad, et al., A continuum model for the anisotropic creep
of single crystal nickel-based superalloys, Acta Materialia, vol. 54,
. 1487-1500 2006 "Prasad"
Rejections on Appeal
Claims 1--4, 7-14, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gemma and Prasad.
Claims 6, 15, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gemma and Prasad as applied to claims 1 and 12,
and further over Lee.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gemma and Prasad as applied to claim 9, and further in
view of Schaeffer.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Briefs (see App. Br. 3-7; Reply Br. 2---6) and are not
persuaded by Appellants' arguments that the Examiner has erred. Unless
otherwise noted, we adopt as our own the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 4--21) and in the Examiner's Answer (Ans. 2-8), and we concur with
the conclusions reached by the Examiner. For emphasis, we consider and
highlight specific arguments as presented in the Briefs.
Rejection of Claims 1--4, 6, 7-15, 19, and 21-23 under§ 103(a)
Appellants argue the Examiner does not explain how the cited
references are being combined to arrive at the claimed invention and there is
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Application 12/910,926
no conclusion that the results of the combination would have been
predictable. App. Br. 3--4; Reply Br. 2. In particular, Appellants argue the
Examiner relies on Prasad as teaching the claimed "damage criterion that is
determined as a function of accumulated inelastic strain and dissipated
energy rate," but the Examiner does not explain how this teaching would be
used in Gemma's fatigue-based model. App. Br. 6. Appellants' also argue
the motivation from Prasad relied on by the Examiner could not reasonably
prompt a combination with Gemma "because the motivation is directed to
creep principles, not adding creep principles into a model that is based on
fatigue principles." Id. at 4; Reply Br. 2. Appellants further argue the
proposed combination would change the principle of operation of Gemma's
invention because Gemma is based on improvement of thermal mechanical
fatigue, whereas Prasad is directed to uniaxial creep, which is a different
property than fatigue. App. Br. 4---6; Reply Br. 3--4.
We do not find Appellants' arguments persuasive. First, we disagree
with Appellants' argument the Examiner does not explain how the cited
references are being combined to arrive at the claimed invention. 3 As set
forth in the Final Action, the Examiner made specific findings regarding
how the references teach or suggest all the limitations of claim 1. Final Act.
4---6. In particular, the Examiner finds Prasad teaches the performance
requirement is a "damage criterion that is determined as a function of
accumulated inelastic strain and dissipated energy rate," as recited in claim
3 Appellants present arguments with respect to claims 1--4, 6, 7-15, 19, and
21-23 as a group. App. Br. 3. Accordingly, we select independent claim 1
as representative of this group of claims, and as necessary, we will address
claim 1 in our analysis infra. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 12/910,926
1. Final Act. 5 (citing Prasad pages 1489 (left column, second paragraph)
and 1491 (section 4.3 titled Rate of dissipation)). The Examiner also finds it
would have been obvious to a person of ordinary skill in the art to combine
the teachings of Prasad and Gemma to analyze a full range of secondary
crystallographic orientations considering thermal fatigue resistance, as
taught in Gemma, and uniaxial creep resistance, as taught in Prasad, as
discussed further infra. See Final Act. 6; Ans. 3--4, 6.
Regarding Appellants' argument on the lack of a finding of
predictable results, the Examiner finds there is no requirement for such a
finding, but "while not required, [the] [E]xaminer finds that the combination
of Prasad and Gemma as outlined in the office action would yield
predictable results." Ans. 3. We agree the Examiner is not required to make
such a finding. We also agree the results of the combination of Prasad and
Gemma would yield predictable results because the proposed combination is
to use the analysis of creep resistance of Prasad as a separate analysis from
the thermal fatigue resistance analysis of Gemma, which would remain
unaltered (see Ans. 5---6), and Appellants have not argued or provided any
evidence that Prasad and Gemma will not provide the results described in
those references. See KSR Int'l Co. v. Teleflex Co., 550 U.S. 398, 416
(2007) ("The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.").
Second, we do not agree with Appellants' argument the Examiner
has not provided a motivation or reason for a person of skill in the art to
make the proposed combination of Gemma and Prasad. See App. Br. 4--5;
Reply Br. 2. Although Appellants emphasize that Gemma relates to thermal
mechanical fatigue, while Prasad relates to uniaxial creep, Appellants'
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Application 12/910,926
arguments concerning the combination of these references overlook the
statement in paragraph 17 of the Specification that "the angle 24 of the
secondary crystallographic orientation is selected based upon creep and/or
fatigue performance requirements at the critical locations of the part."
Appellants' arguments also overlook the Examiner's Answer, in which the
Examiner provides a detailed explanation of the reasons it would have been
obvious for a skilled artisan to combine Prasad and Gemma. See Ans. 3--4.
In particular, the Examiner finds a person of ordinary skill in the art would
have been motivated to combine Prasad and Gemma to obtain a complete
analysis of crystallographic orientation to single crystal articles, such as
turbine blades, based on thermal fatigue properties, as taught by Gemma,
and creep resistance, as taught by Prasad. Id. at 3---6. For the reasons stated
by the Examiner, we agree with this finding and find it constitutes
persuasive articulated reasoning with rational underpinning for a person of
ordinary skill in the art to have combined Prasad and Gemma in the manner
required by the claims. See KSR, 550 U.S. at 418.
Third, we are not persuaded by Appellants' argument that the
proposed combination would change the principle of operation of Gemma's
invention because, as Appellants assert, Gemma is based on improvement of
thermal mechanical fatigue, whereas Prasad is directed to uniaxial creep,
which is a different property than fatigue. App. Br. 4---6; Reply Br. 3--4.
This argument is based on a faulty premise because, as stated, the proposed
combination is to use the analysis of both properties to study a full range of
secondary crystallographic orientations in which the operation of Gemma is
unaltered. See Ans. 5---6. As the Examiner finds:
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Application 12/910,926
even if the principle of operation [of Gemma] is narrowly
interpreted as "thermal fatigue resistance" the combination of
Gemma and Prasad of conducting a separate analysis of creep
resistance does not preclude also conducting an analysis of
thermal fatigue resistance and looking at both sets of results ...
Because the analysis of creep resistance can be considered as a
separate analysis from the analysis on thermal fatigue, the
teachings of Gemma regarding thermal fatigue resistance remain
unaltered. Therefore, the combination of Prasad and Gemma
does not change the principle of operation of Gemma.
Id. 5---6.
In addition, Appellants' argument is not persuasive because "[t]he
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference ...
Rather, the test is what the combined teachings of those references would
have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Thus, \'l.;e are not persuaded the Examiner erred in concluding that the
combination of Gemma and Prasad renders claim 1 obvious under 35 U.S.C.
§ 103(a). Accordingly, we sustain the Examiner's rejection of claim 1, as
well as claims 2--4, 6-15, and 21-23, which are not argued separately.
Rejection of Claim 24 under§ 103(a)
Regarding claim 24, Appellants argue the Examiner errs in finding the
45Q angle in Schaeffer converts to a 45Q angle in Gemma because there is no
support for the Examiner's assumption that the critical crack prone location
in the single crystal microstructure of Gemma is the same as the life-limiting
location of the coating in Schaeffer and, therefore, the frames of reference of
Gemma and Schaeffer cannot be reconciled. App. Br. 6-7. Appellants also
argue, since the principle of Gemma is based on improvement of thermal
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Application 12/910,926
mechanical fatigue, altering the angular orientation of Gemma to that of
Schaeffer, which teaches improving coating spallation, would not be a
predictable combination and would change the principle of operation of
Gemma's invention. Id. at 7.
We do not find Appellants' arguments persuasive. The Examiner
finds, and we agree, the coordinate systems of Gemma and Schaefer provide
the same frame of reference because (1) both use the common conventional
notation of Miller indices, (2) Appellants' arguments regarding surface
locations are irrelevant given that a single crystal article has a uniform
crystallographic orientation, and (3) a comparison of Figure 5 of Gemma
and Figure 1 of Schaefer reflects "sufficient commonality for a person of
ordinary skill in the art to reconcile the similar coordinate systems." See
Ans. 7-8. The Examiner also finds, and we agree, Schaeffer does not
change the principle of operation of Gemma, but instead complements the
consideration of thermal resistance of Gemma. Id. at 6 (citing Schaeffer
5: 15-21 ("this invention proposes that the overall durability of a single-
crystal cast article and its coating can be influenced by controlling the
primary and secondary crystallographic orientations of the casting to provide
a balance between optimization of the spallation resistance of the ceramic
coating and the mechanical properties required of the article")). In this
regard, we agree with the following findings of the Examiner:
First, this demonstrates that the purpose of Schaeffer is not
limited to consideration of coating spallation but explicitly
considers balancing coating spallation resistance with the
mechanical properties.
Second, the explicit teaching of balancing coating
spallation resistance with the mechanical properties
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Application 12/910,926
Id.
demonstrates that Schaeffer does not effect a change of a
fundamental principle of operation because Schaeffer explicitly
considers the mechanical properties required of the article.
Therefore, even if thermal fatigue cracking is assumed arguendo
to be core to the principle of operation in Gemma, the teachings
of Schaeffer do not alter the consideration of mechanical
properties (i.e. thermal fatigue resistance).
Thus, the Examiner did not err in finding Schaeffer's teaching of
orienting the secondary crystallographic direction to be "ideally about forty-
five degrees" teaches the angle of the secondary crystallographic orientation
"is 37Q-47Q relative to the x-axis," as recited in claim 24. See Final Act. 21
(citing Schaeffer 5:9-14). Accordingly, we sustain the Examiner's rejection
of claim 24.
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 6-15, and
21-24 under 35 U.S.C. § 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)(l )(iv).
AFFIRMED
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