Ex Parte Strock

Patent Trial and Appeal Board

Nov 7, 2016

12749750 (P.T.A.B. Nov. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121749,750 03/30/2010 Christopher W. Strock
54549 7590 11/09/2016
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.
PA-12079U;
67097-1318PUS1
7596
EXAMINER
NGUYEN, NINH H
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
11/09/2016 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 CHRISTOPHER W. STROCK
Appeal2015-002076
Application 12/749,750
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Christopher W. Strock (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 103(a) (1): claims
1, 2, and 4--7 as unpatentable over Eaton (US 4,759,957; iss. July 26, 1988),
Salyer (US 3,897,221; iss. July 29, 1975), and Hermanek (US 6,410,159 Bl;
1 Appellant submitted an Amendment to the claims in the Response After
Final Action. See Response After Final Act. 2--4 (filed Apr. 8, 2014). In the
Advisory Action, the Examiner indicated that the proposed amendment
"[would not] be entered." Adv. Act. 1 (mailed Apr. 14, 2014). The claim set
before us for review is the one submitted with the Appeal Brief. See Appeal
Br. 5-8, Claims App.
Appeal2015-002076
Application 12/749,750
iss. June 25, 2002); (2) claims 8, 12-18, and 21-24 as unpatentable over
Sanders (US 6,899,339 B2; iss. May 31, 2005), Eaton, Salyer, and
Hermanek2,3; (3) claim 19 as unpatentable over Sanders, Eaton, Salyer,
Hermanek, and Hopkins (US 7,955,049 B2; iss. June 7, 2011); and (4) claim
20 as unpatentable over Sanders, Eaton, Salyer, Hermanek, and Elbert (US
3,831,258; iss. Aug. 27, 1974). Claims 3 and 9-11 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "an abradable seal for use in a
gas turbine engine to protect tips of compressor blades." Spec. para. 1, Fig.
1. Claims 1, 8, and 14 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. An abradable seal for a gas turbine engine comprising:
a metal alloy, wherein the metal alloy is MCrAlY,
and M is a metal, Cr is chromium, Al is aluminum and Y
is yttrium; and
a plurality of pores in the metal alloy, wherein the
plurality of pores have a diameter of approximately 1 to
10 microns.
2 The heading of rejection does not include claims 23 and 24, which are
discussed in the body of the rejection. See Final Act. 5, 7. We consider this
a typographical error. The Examiner includes claim 10 in the heading of the
rejection. See id. at 5. Claim 10 has been canceled. See Amendment filed
Dec. 20, 2013. We consider this a typographical error.
3 The Examiner states that"[ c ]laim 24 is objected to because claim 1 is not a
method claim. Appropriate correction is required. Note that claim 24 will be
treated as depending on claim 16 in this Office action." Final Act. 3.
2
Appeal2015-002076
Application 12/749,750
ANALYSIS
Obviousness over Eaton, Salyer, and Hermanek
Claims 1, 2, and 4-7
Independent claim 1 recites an abradable seal for a gas turbine engine
including a plurality of pores "hav[ing] a diameter of approximately 1 to 10
microns." Appeal Br. 5, Claims App. 4 The Examiner relies on Salyer for
this limitation. Final Act. 4. In particular, the Examiner finds that "Salyer
teaches an abradable metal formed also by sintering powder metal mixed
with a polymer fugitive filler; wherein the desired strength, pore size and
bulk density of the abradable metal can be obtained by varying the
concentration and amount of the initial filler powder." Id. (citing Salyer,
6:64---67). The Examiner concludes that it would have been obvious to
modify Eaton and Hermanek "with pore diameter of approximately 1 to 10
microns by varying the concentration and amount of the initial filler powder
as taught by Salyer for the purpose of providing an abradable seal ... to
satisfy a design requirement." Id.
Appellant contends that Salyer "does not disclose pores having a
diameter of approximately 1 to 10 microns." Reply Br. 1; see also Appeal
Br. 3. According to Appellant, Salyer "discloses a powder metal that has a
diameter of 3 microns .... However, [Salyer] does not disclose any
numerical specifics or information regarding the correlation between the
4 Under the broadest reasonable interpretation, the phrase "a plurality of pores
hav[ing] a diameter of approximately 1 to 10 microns" of claim 1 is
interpreted as more than one pore has a diameter of approximately 1 to 10
microns. Upon review of the Specification, it is unclear whether the phrase
"a plurality of pores" refers to all the pores or a subset of pores having a
diameter of approximately 1 to 10 microns. See e.g., Spec. paras. 5-7, 18.
3
Appeal2015-002076
Application 12/749,750
diameter of the powder metal and the pore size." Appeal Br. 3. Appellant
contends that Salyer "only generally discloses that the size of a powder
affects the resulting pore size .... Nothing in [Salyer] discloses that a 3
[micron] diameter powder metal would result in a pore size of 1 to 10
microns as claimed." Id.
Having considered the respective contentions of Appellant and the
Examiner, we determine that Appellant has the better position.
Salyer discloses that (1) "[p ]orous metal structures with varying
degree of bulk densities and pore sizes were produced and evaluated ....
Pore size, as would be expected, was affected by the size and shape of the
initial powder" (Salyer, 6:8-14; see also Final Act. 2; Ans. 8; Appeal Br. 3);
and (2) "[b ]y varying the concentration and the amounts of the initial filler
powder it is possible to change the physical characteristics such as strength,
pore size, and bulk density" (id. at 6:65---68; see also Final Act. 2--4; Ans. 8).
We acknowledge the Examiner's position that Salyer "disclose[s] at
least a relationship between the diameter of the metal powder [particle] and
the resulting pore diameter" and a skilled artisan "can vary the pore size of
an abradable seal." Ans. 8; see also Final Act. 2-3. However, the Examiner
fails to provide sufficient evidence or technical reasoning as to how the
diameter of the metal powder [particle] and the resulting pore diameter of
Salyer are related. Although Salyer discloses that pore size is "affected by
the size and shape of the initial powder [particle]" and the pore size can be
changed due to "varying the concentration and the amounts of the initial
filler powder [particle]," the cited portions of Salyer are silent as to
particular pore diameters or the specific relationship between the size of the
metal powder (particle) and the resulting pore size. See Salyer, 6:8-14, 65-
4
Appeal2015-002076
Application 12/749,750
68; see also Final Act. 2--4; Appeal Br. 3. Given that Salyer is silent as to
particular pore diameters or the specific relationship between the size of the
metal powder (particle) and the resulting pore size, the Examiner fails to
provide sufficient findings to show that "varying the concentration and
amount of the initial filler powder [particle] as taught by Salyer" necessarily
results in "pore diameter of approximately 1 to 10 microns" (see Final Act.
2--4; see also Ans. 8-9; Appeal Br. 3). 5
Moreover, the Examiner's position that "an initial metal powder
[particle] of 3 microns in diameter could possibly yield a pore diameter
between 1 and 10 microns depend[ing] on the concentration of the initial
metal powder [particle] according to Salyer' s teaching" is speculative. Ans.
9 (emphasis added). "Inherency ... may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient." Cont 'l Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). Given that Salyer is
silent as to particular pore diameters or the specific relationship between the
size of the metal powder (particle) and the resulting pore size, the
Examiner's conclusion that "varying the concentration and amount of the
initial filler powder [particle] as taught by Salyer" necessarily results in
"pore diameter of approximately 1 to 10 microns" is not supported in the
record by underlying factual evidence. See Final Act. 4; see also Appeal Br.
3. Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
5 We note that, although Salyer elsewhere teaches percent porosity resulting
from various combinations of filler and metal powders (see, e.g., Salyer
Tables 2--4), the Examiner does not rely on these teachings to show Salyer's
materials necessarily include one with pores having a diameter of
approximately 1 to 10 microns.
5
Appeal2015-002076
Application 12/749,750
making such a rejection, the Examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. In re Warner, 379
F.2d 1011, 1017(CCPA1967).
The Examiner also finds that selecting the pore size from 1 to 10
microns is a mere design choice. Final Act. 3; Ans. 8-9. In the Answer, the
Examiner further takes the position that "a person in the art would be able to
estimate the average diameter of the pore based on the diameter of the
powder metal [particle]. Based on this, one can estimate the pore diameter
when the powder metal [particle] is not tightly packed through trial and
error." Ans. 7; see also id. at 8 (the Examiner's illustration of "the situation
when the powder metal is tightly packed"); Reply Br. 1. However, as
correctly pointed out by Appellant, Salyer "does not disclose how tightly
packed the powder metal [particle] is." Reply Br. 1. Even assuming
arguendo that "one can estimate the pore diameter when the powder metal
[particle] is not tightly packed through trial and error" as the Examiner
posits (see Ans. 7; see also Reply Br. 1 ), the Examiner fails to provide
sufficient evidence or technical reasoning for why the particular pore
diameter of approximately 1 to 10 microns would have been selected. See
Ans. 7-8; see also Reply Br. 1-2.
Based on the foregoing reasons, the Examiner fails to establish by a
preponderance of the evidence that the combined teachings of Eaton, Salyer,
and Hermanek disclose the device of claim 1. Accordingly, we do not
sustain the Examiner's rejection of independent claim 1 and its dependent
claims 2 and 4--7 as unpatentable over Eaton, Salyer, and Hermanek.
6
Appeal2015-002076
Application 12/749,750
Obviousness over Sanders, Eaton, Salyer, and Hermanek
Claims 8, 12-18, and 21-24
Independent claims 8 and 14 call for a device and a method,
respectively, each of which includes a limitation directed to a plurality of
pores "hav[ing] a diameter of approximately 1 to 10 microns." Appeal Br.
6, Claims App. The Examiner relies on the same unsupported findings and
conclusions for claims 8 and 14 as discussed above for claim 1. See Final
Act. 5---6. Thus, the Examiner's findings and conclusions with respect to
Salyer are deficient for claims 8 and 14 as well.
Accordingly, for reasons similar to those discussed above for claim 1,
we do not sustain the Examiner's rejection of independent claims 8 and 14
and their respective dependent claims 12, 13, 15-18, and 21-24 as
unpatentable over Sanders, Eaton, Salyer, and Hermanek.
Obviousness over Sanders, Eaton, Salyer, Hermanek and either
Hopkins or Elbert
Claims 19 and 20
Each of claims 19 and 20 depends from claim 14. Appeal Br. 7,
Claims App. The Examiner relies on the same unsupported findings and
conclusions for claims 19 and 20 as discussed above for claims 1 and 14.
See Final Act. 7-8. Thus, the Examiner's findings and conclusions with
respect to Salyer are deficient for claims 19 and 20 as well.
Accordingly, for reasons similar to those discussed above for claims 1
and 14, we do not sustain the Examiner's rejections of dependent claim 19
as unpatentable over Sanders, Eaton, Salyer, Hermanek, and Hopkins and
dependent claim 20 as unpatentable over Sanders, Eaton, Salyer, Hermanek,
7
Appeal2015-002076
Application 12/749,750
and Elbert.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 2, 4--8,
and 12-24.
REVERSED
8