Ex Parte Stone et al

Board of Patent Appeals and Interferences

Mar 6, 2007

08327744 (B.P.A.I. Mar. 6, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte M. ANTHONY STONE, DARCY J. HARBAUGH, and
CLIFFORD V. MITCHELL
___________

Appeal No. 2006-1471
Application No. 08/327,744
Technology Center 3700
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ON BRIEF
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Decided: March 6, 2007
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Before WILLIAM F. PATE, MURRIEL E. CRAWFORD, and JENNIFER D.
BAHR Administrative Patent Judges.
WILLIAM F. PATE, Administrative Patent Judge.

DECISION ON APPEAL

This is a second appeal from the final rejection of claims 1-8. Rejections of
these claims were reversed in Appeal No. 2002-1033 heard on January 14, 2003. A
different Panel of this Board, in addition to reversing all rejections, remanded the
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Appeal Number: 2006-1471
Application Number: 08/327,744

application to the Examiner for additional factual findings including consideration
of U.S. 4,731,125 to Carr.
The claimed subject matter is a process for the removal of metal honeycomb
and braze from a substrate. The process includes the steps of directing a
pressurized liquid at an angle of less than 90° at the base of the honeycomb thereby
removing the honeycomb and braze from the substrate.
Claim 1 reproduced below is further illustrative of the claim subject matter
1. A method for removing metal honeycomb and braze from a substrate,
said honeycomb having a base and a ribbon direction, comprising: directing a
pressurized liquid at an angle of less than about 90° between the liquid and the
substrate, through at least one orifice of a nozzle such that the liquid forms a liquid
stream upon exiting the nozzle, the liquid stream striking the substrate at the base
of the honeycomb, thereby removing the honeycomb and braze from the substrate,
whereby the substrate may be reused.

The references of record relied upon by the Examiner as evidence of
obviousness are:
Ackermann 4,218,066 Aug. 19, 1980
Ryan 4,409,054 Oct. 11, 1983
Shiembob 4,433,845 Feb. 28, 1984
Carr 4,731,125 Mar. 15, 1988
McComas 5,167,721 Dec. 1, 1992
As further evidence of obviousness, the Examiner relies on the admitted prior art
discussed in the Specification at 1: 8-28.
A declaration by Clifford V. Mitchell is also of record in the case. See Exh.
A.
Claims 1-8 stand rejected under 35 U.S.C. § 103 as unpatentable over the
Appellant’s admitted prior art in view of McComas and Carr.
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Appeal Number: 2006-1471
Application Number: 08/327,744

Claims 1-8 stand rejected under 35 U.S.C. § 103 as unpatentable over
Shiembob, Ryan or Ackermann in view of McComas and Carr.
ISSUE
The sole issue before us on appeal is whether the Examiner has, by a
preponderance of the evidence, established the prima facie obviousness of claims
1-8.
FINDINGS OF FACT
The Appellants’ admitted prior art discloses a metal honeycomb and braze seal
structure on a substrate wherein the metal honeycomb and braze are to be removed
so that the substrate may be reconditioned and put into use. The admitted prior art
lacks a specific teaching of removing the honeycomb and braze via pressurized
liquid at a specific angle and striking location.
McComas teaches that it is common practice in the turbine art to perform
routine engine maintenance which requires removal of substances from the
substrates. McComas does not teach removing a honeycomb and braze from a
substrate, nor does it teach the specific striking location for the liquid jets.
Carr discloses a method for removing paint from the fuselage of an aircraft
wherein the fuselage is made of carbon fiber composite material. Carr specifically
mentions honeycomb as a reinforcement for the carbon fiber. However, the
process of Carr is a relatively low pressure process (approximately 40 psi) that uses
impacts from air-entrained, relatively soft plastic pellets to abrade paint and
remove it from the composite material. While Carr states that other types of media
propelling means may be used, Col. 5, l. 50, Carr is silent as to the use of liquids.
Furthermore, the materials removed (two layers of paint 30, 32) in the process of
Carr are quite dissimilar to the Hastelloy®-X metals removed by Appellants.
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Appeal Number: 2006-1471
Application Number: 08/327,744

Other cited prior art references to Shiembob, Ryan and Ackermann disclose
various forms of abradable seals comprising metal honeycomb, braze and a
substrate structure. The seals are used in turbine engines, the environment
Appellants are concerned with.
PRINCIPLES OF LAW
“A claimed invention is unpatentable if the differences between it and the
prior art are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the pertinent art.”
In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334-35 (Fed. Cir. 2006) citing
35 U.S.C. § 103(a) (2000); Graham v. John Deere Co., 383 U.S. 1, 13-14, 148
USPQ 459, 467 (1966). “The ultimate determination of whether an invention
would have been obvious is a legal conclusion based on underlying findings of
fact.” Id. (citing In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616
(Fed. Cir. 1999)).
In assessing whether subject matter would have been non-obvious under §
103, the Board follows the guidance of the Supreme Court in Graham v. John
Deere Co. 383 U.S. at 17, 148 USPQ at 467. The Board determines “‘the scope
and content of the prior art,’” ascertains “‘the differences between the prior art and
the claims at issue,’” and resolves “‘the level of ordinary skill in the pertinent art.’”
Id. (citing Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257, 261 (1976))
(quoting Graham, 383 U.S. at 17, 148 USPQ at 467). “Against this background,
the Board determines whether the subject matter would have been obvious to a
person of ordinary skill in the art at the time of the asserted invention.” Id. (citing
Graham, 383 U.S. at 17, 148 USPQ 467). In making this determination, the Board
can assess evidence related to secondary indicia of non-obviousness like
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Application Number: 08/327,744

“commercial success, long felt but unsolved needs, failure of others, etc.” Id., 383
at 17-18, 148 USPQ at 1335; accord In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1455-56 (Fed. Cir. 1998). “We have explained that to reject claims
in an application under section 103, an examiner must show an unrebutted prima
facie case of obviousness. ‘On appeal to the Board, an applicant can overcome a
rejection by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.’” Id. (citing Rouffet, 149 F.3d at 1355, 47 USPQ2d at 1455).
Precedent requires that to find a combination obvious there must be some
teaching, suggestion, or motivation in the prior art to select the teachings of
separate references and combine them to produce the claimed combination. In re
Johnston, 435 F.3d 1381, 1384, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006) (citing
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385, 58 USPQ2d 1286,
1293 (Fed. Cir. 2001) ("In holding an invention obvious in view of a combination
of references, there must be some suggestion, motivation, or teaching in the prior
art that would have led a person of ordinary skill in the art to select the references
and combine them in the way that would produce the claimed invention.")); In re
Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998) ("When the
references are in the same field as that of the applicant's invention, knowledge
thereof is presumed. However, the test of whether it would have been obvious to
select specific teachings and combine them as did the applicant must still be met
by identification of some suggestion, teaching, or motivation in the prior art,
arising from what the prior art would have taught a person of ordinary skill in the
field of the invention."); In re Fine, 837 F.2d 1071, 1075, 5USPQ2d 1596, 1598
(Fed. Cir. 1988) (there must be "some objective teaching in the prior art or that
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Appeal Number: 2006-1471
Application Number: 08/327,744

knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references").
However, this is not to imply that the teaching, suggestion, or motivation
must be found explicitly in the prior art, since “the teaching, motivation, or
suggestion may be implicit from the prior art as a whole, rather than expressly
stated in the references….” In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329,
1336 (Fed. Cir. 2006)(citing In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d
1313, 1317 (Fed. Cir. 2000)).
When the examiner does not include a teaching, suggestion, or motivation
in the examiner’s statement of the rejection, we infer that the examiner has used
hindsight to conclude the invention was obvious. See Kahn, 441 F.3d at 986, 78
USPQ2d at 1335.

ANALYSIS
As noted above in our factual findings, we agree that Shiembob, Ryan and
Ackermann along with the admitted prior art teach the abradable honeycomb
coating used on a substrate to form seals in turbine engines. On the other hand,
McComas is directed to a sprayed or sintered coating. McComas teaches that such
a coating may be removed by resort to a high pressure liquid water jet applied to
the top or outer surface of the coating. In agreement with the prior Panel, we do
not find in McComas any motivation or suggesting for directing the high pressure
liquid stream at the substrate at the base of the honeycomb.
With this being the case, we do not find it to be obvious from the admitted
prior art and McComas or Shiembob, Ryan and Ackermann taken with McComas
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Appeal Number: 2006-1471
Application Number: 08/327,744

to use liquid jets at high pressure for honeycomb removal by striking the base of
the honeycomb at the braze.
Turning to the disclosure of Carr, as our findings indicate, Carr teaches the
removal of paint or the like from a composite surface such as an aircraft fuselage.
Carr uses relatively soft plastic pellets and an air stream of relatively low pressure
to abrade the paint away. It is our conclusion that the teachings of Carr with
respect to the hardness of the substrate, the hardness of the removed material, that
is, paint rather than an abradable honeycomb composite, the use of solid plastic
pellets entrained in the air, and the use of relatively low pressure air as the
fluidizing medium instead of a high pressure liquid are so divergent from the
teachings of McComas that Carr would not have informed one of ordinary skill to
modify the disclosure of McComas in the manner outlined by the Examiner. In our
view, the disclosure of Carr is far afield of the process disclosed in McComas.
Accordingly, we find no teaching, motivation, or suggestion in the Carr patent
taken with the other prior art that would have provided one of ordinary skill an
incentive to combine the teachings of the references.
CONCLUSION OF LAW
For the foregoing reasons, it is our conclusion of law that the Examiner has
failed to provide, by a preponderance of evidence, a prima facie case of
obviousness of claims 1-8 on appeal.
ORDER
The rejections of claims 1-8 under 35 U.S.C. § 103 are reversed.
REVERSED

Jrg
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Appeal Number: 2006-1471
Application Number: 08/327,744

J. KEVIN GROGAN
MCCORMICK, PAULDING & HUBER, LLP
CITY PLACE II
158 ASYLUM STREET
HARTFORD, CT 06103-4102

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