Ex Parte Trindade et alDownload PDFPatent Trial and Appeal BoardOct 24, 201311481110 (P.T.A.B. Oct. 24, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICARDO TRINDADE, EDWARD F. PIETRASZKIEWICZ and MATHEW C. GARTLAND ____________ Appeal 2011-011131 Application 11/481,110 Technology Center 3700 ____________ Before MICHAEL L. HOELTER, LYNNE H. BROWNE and CARL M. DeFRANCO, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011131 Application 11/481,110 2 STATEMENT OF THE CASE Ricardo Trindade et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 13-30. Claims 1-12 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER Claims 13 and 21 are independent; claim 13 is reproduced below: 13. A turbine engine structure comprising: a wall having an exterior surface and a defining a passage, a locating hole extending through the wall from the exterior surface to the passage and generally normal to the exterior surface, and a film hole recessed in the exterior surface adjoining the locating hole and in communication with the passage. PRIOR ART Scricca US 5,649,806 Jul. 22, 1997 Fehrenbach US 6,329,015 B1 Dec. 11, 2001 Tiemann US 6,530,416 B1 Mar. 11, 2003 Beck US 2006/0162893 A1 Jul. 27, 2006 GROUNDS OF REJECTION ON APPEAL 1. Claims 21-28 and 30 stand rejected under 35 U.S.C. § 112, second paragraph as indefinite. 2. Claim 21 stands rejected under 35 U.S.C. § 102(e) as anticipated by Beck. 3. Claim 21 stands rejected under 35 U.S.C. § 102(e) as anticipated by Fehrenbach. Appeal 2011-011131 Application 11/481,110 3 4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Beck and Tiemann. 5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fehrenbach and Tiemann. OPINION Indefiniteness Appellants argue claims 21-28 and 30 as a group. See App. Br. 4-5. We select independent claim 21 as the representative claim and claims 22-28 and 30 stand or fall with claim 21 with respect to this ground of rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Regarding claim 21, the Examiner finds that it would not have been “clear . . . whether or not the applicant is positively claiming a film hole adjoining the locating hole, and how a film cooling hole can adjoin a locating hole without consuming it.” Ans. 3-4. In support of the rejection the Examiner states that “there is an apparent contradiction in the claim. The contradiction is that the claim requires ‘a film hole recessed in the exterior surface adjoining the locating hole’, while positively reciting ‘the locating hole not consumed by the film hole.’” Ans. 10-11. We discern no apparent contradiction in these two limitations. As argued by Appellants, such a configuration is shown in Appellants’ figure 5B. See App. Br. 5; Reply Br. 1. We further note that Appellants’ Specification states that “the locating holes 60 may not necessarily all be consumed by film holes 62.” Spec., para. [0024]. The Examiner further alleges that the Specification does not provide support for the claimed subject matter and concludes that the claim language is indefinite. See Ans. 11. The Examiner applies the incorrect standard for Appeal 2011-011131 Application 11/481,110 4 determining whether or not claim 21 is indefinite. The test for definiteness under 35 U.S.C. § 112, second paragraph, is not whether there is support for the claimed subject matter, the test is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The Examiner has failed to explain why one of ordinary skill in the art would not understand what is claimed. For these reasons, we do not sustain the Examiner’s rejection of claim 21, and claims 22-28 and 30 which stand therewith, as indefinite. Anticipation Beck: The Examiner finds that Beck discloses each and every limitation of claim 21. In particular, the Examiner finds that Beck discloses a locating hole 13 that is not consumed by the film hole 10. See Ans. 4 (citing Beck, Fig. 1 and para. 0041). Appellants argue that Beck fails to disclose a locating hole that is not consumed by the film hole as required by claim 21. See App. Br. 5; Reply Br. 2. In support of this argument, Appellants contend that in paragraph [0041] Beck does not “infer or require that the locating hole not be consumed by the cooling hole.” App. Br. 6. Appellants’ argument is not persuasive. As shown in figure 1, Beck’s locating hole (13) is not consumed by its cooling (film) hole 10. For these reasons, we sustain the Examiner’s rejection of claim 21 as anticipated by Beck. Appeal 2011-011131 Application 11/481,110 5 Appellants have not appealed the rejection of claims 22, 24-27 and 30 as anticipated by Beck. Accordingly, we summarily sustain this rejection. Fehrenbach: The Examiner finds that Fehrenbach discloses each and every limitation of claim 21. In particular the Examiner finds that Fehrenbach discloses a locating hole 18 that is not consumed by the film hole 24. See Ans. 5. Appellants argue that Fehrenbach fails to disclose a locating hole that is not consumed by the film hole as required by claim 21. See App. Br. 5; Reply Br. 2. We agree. Fehrenbach does not directly address the final relationship between its “locating” hole 18 and its “film” hole 24; however, Fehrenbach states: Directing the abrasive water jet as shown in FIG. 3 serves on initial impact to generate the desired triangular shape for the opening 24, while the energy dissipated as the abrasive water jet continues down through the hole 18 to remove material from the substrate 12 serves to enlarge the hole 18. The result is the cooling hole 22 and opening 24 and 15 noncircular shape 25 of the dashed line shown in FIG. 4. Fehrenbach, col. 5, ll. 11-17. Fehrenbach’s figure 4 appears to show the non-circular shape 25 of “locating” hole 18 inside (i.e. consumed by) “film” hole 24. For these reasons, we do not sustain the Examiner’s rejection of claim 21. Appellants have not appealed the rejection of claims 23-27 and 30 as anticipated by Fehrenbach. Accordingly, we summarily sustain this rejection. Appeal 2011-011131 Application 11/481,110 6 Obviousness Beck and Tiemann: The Examiner finds that Beck discloses every limitation of claim 13 except for “a locating hole [extending] generally normal to the exterior surface.” See Ans. 7. The Examiner finds that “Tiemann discloses locating holes (formed by 53) that are perpendicular to the exterior surface.” Id. The Examiner further finds that the locating holes are cast generally normal to the exterior surface “for the purpose of securing the cores to the exterior wall and simplifying the construction of the connecting device to a cylinder which can be more cheaply produced th[a]n more complicated geometries.” Id. Appellants first argue that “providing [] ‘normal’ locating hole does not simplify construction.” App. Br. 7. In response to this argument, the Examiner finds that “[t]he connecting devices (53) of Tiemann have a simple construction and would be cheaper to produce than the more complicated angled pin structure of Beck.” Ans. 15. The Examiner further finds that “Tiemann discloses that this particular pin construction has the advantage of forming a more consistent wall thickness.” Id. (citing Tiemann, col. 2, ll. 16-31). In response to the Examiner’s further finding regarding more consistent wall thickness, Appellants argue that the text cited “does not attribute a consistent wall thickness to the specific orientation of locating pins.” App. Br. 7; Reply. Br. 2. We agree that this text does not attribute consistent wall thickness to the normal orientation of Tiemann’s locating pins (holes) 53; however, we do not find Appellants’ first argument persuasive as Appellants have not provided any evidence or persuasive Appeal 2011-011131 Application 11/481,110 7 argument in support of their contention that normal locating holes do not simplify construction. For these reasons, we sustain the Examiner’s rejection of claim 13 as unpatentable over Beck and Tiemann. The Appeal Brief omits the rejection of claims 14, 16-19 and 29 as unpatentable over Beck and Tiemann. Accordingly, we summarily sustain this rejection. Fehrenbach and Tiemann: The Examiner finds that Fehrenbach discloses every limitation of claim 13 except for “a locating hole [extending] generally normal to the exterior surface.” See Ans. 8. The Examiner finds that “Tiemann discloses locating holes (formed by 53) that are perpendicular to the exterior surface.” Id. The Examiner further finds that the locating holes are cast generally normal to the exterior surface “for the purpose of securing the cores to the exterior wall and simplifying the construction of the connecting device to a cylinder which can be more cheaply produced then more complicated geometries.” Id. Appellants present the same arguments for this rejection as discussed supra with respect to the rejection based on Beck and Tiemann. See App. Br. 7; Reply Br. 2. Appellants’ arguments are not persuasive for the same reasons. Accordingly, we sustain the Examiner’s rejection of claim 13 as unpatentable over Fehrenbach and Tiemann. The Appeal Brief omits the rejection of claims 15-19 and 29 as unpatentable over Fehrenbah and Tiemann. Accordingly, we summarily sustain this rejection. Appeal 2011-011131 Application 11/481,110 8 Beck, Tiemann and Scricca: The Appeal Brief omits the rejection of claim 20 as unpatentable over Beck Tiemann and Scricca. Accordingly, we summarily sustain this rejection. Beck and Scricca: The Appeal Brief omits the rejection of claim 28 as unpatentable over Beck and Scricca. Accordingly, we summarily sustain this rejection. DECISION The rejection of claims 21-28 and 30 as indefinite is REVERSED. The rejection of claims 21, 22, 24-27 and 30 as anticipated by Beck is AFFIRMED. The rejection of claims 21 as anticipated by Fehrenbach is REVERSED. The rejection of claims 23-27 and 30 as anticipated by Fehrenbach is AFFIRMED. The rejection of claims 13, 14, 16-19 and 29 as unpatentable over Beck and Tiemann is AFFIRMED. The rejection of claims 13, 15-19 and 29 as unpatentable over Fehrenbach and Tiemann is AFFIRMED. The rejection of claim 20 as unpatentable over Beck, Tiemann and Scricca is AFFIRMED. The rejection of claim 28 as unpatentable over Beck and Scricca is AFFIRMED. Appeal 2011-011131 Application 11/481,110 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. §1.136(a). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation