Ex Parte Velez

Patent Trial and Appeal Board

Apr 14, 2014

11872170 (P.T.A.B. Apr. 14, 2014)

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.
11/872,170 10/15/2007 Ramon M. Velez 67097-921;
PA-0001160-US
8364
54549 7590 04/14/2014
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
WILENSKY, MOSHE K
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
04/14/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAMON M. VELEZ
____________

Appeal 2012-004865
Application 11/872,170
Technology Center 3700
____________

Before HUBERT C. LORIN, GAY ANN SPAHN, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE1
Ramon M. Velez (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejections of claims 1-13 and 20-25, the only claims
pending in the application on appeal. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Appellant’s claimed invention is an apparatus to remove cracks from
cooling holes in gas turbine engine components. Spec., Abstr. Claim 1,
which is reproduced below, with bracketed matter added, is exemplary.
1. A fixture assembly for a gas turbine engine component
comprising:
[(1)] a base;
[(2)] a first pivotable tool mounted to said base;
[(3)] a second pivotable tool mounted to said first
pivotable tool;
[(4)] a fixture mounted to said second pivotable tool,
said fixture including a holding interface to hold at
least one gas turbine engine component during a
machining operation; and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed October 18, 2011), Appellant’s Reply Brief (“Reply Br.,” filed
January 23, 2012) and the Examiner’s Answer (“Ans.,” mailed November
23, 2011.
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[(5)] a linear tool movable along a linear axis to
machine a surface on the at least one gas turbine
engine component.
App. Br., Clms. App’x.
REJECTIONS
The following Examiner’s rejections are before us for review:
I. claims 4 and 10-13 stand rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement;
II. claims 4 and 10-13 stand rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention;
III. claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Juengel (US 4,545,106, iss. Oct. 8, 1985);
IV. claims 1, 2, 4-6, 8, 10-12, 20, 21, 23, and 25 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Appellant’s Admitted
Prior Art (AAPA)2 and Hollingsworth (US 4,564,179, iss. Jan. 14,
1986); and
V. claims 7, 9, 13, 22, and 24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the AAPA, Hollingsworth, and Juengel.

2 The Examiner indicates that AAPA is paragraphs [0002]-[0004] of
Appellant’s Specification. Ans. 8.
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OPINION
Rejection I – Failure to Comply with the Enablement Requirement of
35 U.S.C. § 112, First Paragraph
The Examiner determined that claims 4 and 10-13 fail to comply with
the enablement requirement of 35 U.S.C. § 112, first paragraph. Ans. 5, 18-
20. Specifically, for claim 4, the Examiner determined that the specification
failed to enable one of skill in the art to make or use the claimed invention
because the claim recited that the first and second pivotable tools of claim 1
were socket wrenches, and the Examiner found that a socket wrench is
normally a stand-alone tool which is not incorporated into a larger
mechanism. Ans. 5. The Examiner also found that a typical socket wrench
shaft has no mechanisms for permanent attachment to another part and that
attaching a socket wrench to other components would require multiple
welding operations. Ans. 19. The Examiner made similar determinations
and findings for claims 10-13, which recite that the socket wrenches are
mounted to a base and to each other. Ans. 5.
Appellant contends that the Specification adequately enables the
claims by giving a detailed description of how the socket wrenches operate
to move the component as needed to perform the machining operations once
the socket wrench is attached to the base and by depicting an exemplary
attachment configuration in the figures. App. Br. 9.
The test for compliance with the enablement requirement in the first
paragraph of 35 U.S.C. § 112 is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
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use the claimed invention without undue experimentation. See In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988). “Enablement is not precluded by the
necessity for some experimentation . . . . However, experimentation needed
to practice the invention must not be undue experimentation. The key word
is “undue,’ not ‘experimentation.”’ Id. at 736-37.
To evaluate whether a disclosure would require undue
experimentation, the Federal Circuit has adopted the following factors to be
considered:
(1) the quantity of experimentation needed to make or use the
invention based on the content of the disclosure; (2) the amount
of direction or guidance presented; (3) the existence of working
examples; (4) the nature of the invention; 5) the state of the
prior art; (6) the relative skill of those in the art; (7) the level of
predictability in the art; and (8) the breadth of the claims.
See id. at 737. The examiner’s analysis must consider all the evidence
related to each of these factors, and any conclusion of nonenablement must
be based on the evidence as a whole. Id.
We are persuaded by Appellant’s contention. The Examiner’s
findings that “substantial modifications” and “potentially multiple welding
operations” of a common socket wrench would be required is not sufficient
to establish non-enablement because these findings do not show that the
Examiner’s analysis considered all of the evidence as to each of the pertinent
Wands factors. Thus, we do not sustain the Examiner’s rejection of claims 4
and 10-13 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the enablement requirement.

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Rejection II – Failure to Particularly Point Out and Distinctly Claim the
Subject Matter of the Invention under 35 U.S.C. § 112, Second Paragraph
Appellant argues that “the 35 U.S.C. 112, second paragraph, rejection
of claims 4 and 10-13 is improper for the same reasons set forth above” with
respect to the 35 U.S.C. § 112, first paragraph, lack of written description
rejection of the same claims. App. Br. 10.
We are not persuaded by Appellant’s argument. “The test for
definiteness under 35 U.S.C. § 112, second paragraph, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the [S]pecification.” Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Appellant’s
arguments explaining why claims 4 and 10-13 do not lack enablement fail to
explain why claims 4 and 10-13 are not indefinite (i.e., why one of ordinary
skill in the art would understand what is claimed in claims 4 and 10-13 when
the claims are read in light of the Specification). Accordingly, we sustain
the Examiner’s rejection of claims 4 and 10-13 as indefinite.
Rejection III – Anticipation Based on Juengel
Appellant argues that Juengel does not anticipate claim 1 because it
does not disclose claim limitation (4) as quoted supra. App. Br. 3-4; Reply
Br. 2-3. In contrast, the Examiner asserts that Juengel’s Figure 1 discloses
this claim limitation under the broadest reasonable interpretation of the
claims. Ans. 7. Under the Examiner’s construction, the “during a
machining operation” phrase in claim limitation (4) is met even if the
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machining operation is not being performed on the component held in the
fixture claimed in claim limitation (4). Id. at 14-15.
We are persuaded by Appellant’s argument because the Examiner’s
construction of claim 1 is unreasonable for several reasons. First, beginning
with the language of claim 1, we note that claim limitation (5), which claims
the linear tool that machines the surface of the component, refers back to the
same “at least one gas turbine engine component” that is being held in the
fixture “during a machining operation” in claim limitation (4). It would be
unnecessary to have claim limitation (5) refer to the same gas turbine engine
component if the Examiner’s construction were correct.
Second, the Specification is consistent with Appellant’s construction.
The Specification explains that the purpose of attaching the fixture to the
first and second pivotable tools is to orientate the cooling holes on the gas
turbine engine component in a vertical direction to allow the linear tool to
machine the surface cracks in the cooling holes. Spec., ¶ [0023]. The other
paragraphs repeatedly refer to the fixture holding the components while they
are machined, not while some other component is machined. See Spec., ¶¶
[0024]-[0026]. Thus, a person of ordinary skill in the art would understand
that the fixture in claim limitation (4) holds the component while it is being
machined, not merely while some other part is being machined as the
Examiner found. The Examiner’s finding of anticipation was premised on
this erroneous claim construction. Thus, we cannot sustain the Examiner’s
finding of anticipation of claim 1, and claims 2 and 3 which depend
therefrom, by Juengel.
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Rejection IV – Obviousness Based on AAPA and Hollingsworth
Independent Claim 1
Appellant argues that independent claim 1 is patentable because it
would not have been obvious to replace using the operator’s hands to hold
the components for machining as disclosed in the AAPA with the apparatus
of Hollingsworth because (1) Hollingsworth does not disclose a fixture for
holding a gas turbine engine component and (2) because the apparatus in
Hollingsworth does not have sufficient strength for a “machining operation”
as claimed. App. Br. 5; Reply Br. 3. In contrast, the Examiner found that
the claimed invention would have been obvious because Hollingsworth does
disclose a “fixture” and Hollingsworth does have sufficient strength for the
claimed machining operation. Ans. 8-9, 15-17.
We agree with the Examiner that it would have been obvious to one of
ordinary skill in the art to combine the AAPA with Hollingsworth to yield
the claimed invention for several reasons. First, we agree with the Examiner
that the clamp (22) disclosed in Figure 1 of Hollingsworth teaches a “fixture
including a holding interface to hold at least one gas turbine engine
component during a machining operation” as claimed in claim 1.
Second, we agree with the Examiner that Appellant’s arguments
against the combination of the AAPA and Hollingsworth are without merit.
Contrary to Appellant’s arguments, we agree with the Examiner that the
broadest reasonable interpretation of the “machining operation” recited in
claim limitation [4] includes a number of operations such as fine sanding
and buffing that would not require the substantial strength that Appellant
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seeks to read into the claim. Moreover, the Examiner has shown that
Hollingsworth discloses a number of features—pneumatic joint locks (col. 5,
l. 58-col. 6, l. 5), back-up mechanical locks (col. 7, ll. 57-60), steel tension
cables (col. 8, ll. 33-36), and steel arms (col. 5, ll. 30-31)—that indicate that
the device has sufficient strength for holding a component during machining
even under Appellant’s construction. Ans. 16-17. In light of the fact that we
agree with the Examiner for the reasons discussed supra, we are persuaded
that the Examiner is correct that the modification of the AAPA to include the
holding apparatus of Hollingsworth mounted to a base would have been an
obvious, predictable combination of known, familiar elements for the benefit
of freeing the operator’s hands during the machining of a metal part. For
these above reasons, the rejection of claim 1 is sustained.
Appellant made no separate arguments for claims 2, 8, and 20. Thus,
we sustain the rejection of claims 2, 8, and 20.
Dependent Claims 4 and 5
Appellant argues that claims 4 and 5 are patentable because
Hollingsworth does not disclose “socket wrenches” as claimed in claims 4
and 5. App. Br. 5-6; Reply Br. 3-4. In contrast, the Examiner found the
socket wrench limitations were met based on the broadest reasonable
construction of the term “socket wrench.” Ans. 6. Appellant disagrees with
this construction, but Appellant neither offers any alternative construction
nor directs us to any limiting definition in the Specification. App. Br. 6;
Reply Br. 4. We are not persuaded that the Examiner erred in his broad
claim construction or finding that the pivotable joints in Hollinger (Fig. 1,
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elements (27) and (26)) meet this limitation. Thus, we sustain the
Examiner’s rejection of claims 4 and 5.
Dependent Claim 6
Appellant argues that claim 6 is patentable because the combination of
the AAPA and Hollingsworth fails to disclose the limitation “wherein said
first and said second socket wrenches are pivotable about said first and said
second pivot axes such that each of said plurality of cooling holes can be
individually oriented in a generally vertical direction relative to said base.”
Reply Br. 4. More particularly, Appellant argues that “[t]here is nothing to
indicate that the structure in Hollingsworth moves within the multiple
degrees of freedom required such that each cooling hole can be individually
orientated in a vertical direction relative to the base as claimed.” Id. In
contrast, the Examiner has explained that the support arm 11 of
Hollingsworth is capable of pivoting along its four pivoting axes to position
a workpiece with any desired surface point oriented vertically relative to the
base. Ans. 10. Appellant has failed to cite to any evidence that the multiple
degrees of freedom that Hollingsworth’s dual axis joints (col. 2, ll. 57-64)
are capable of would be insufficient to meet this claim limitation as found by
the Examiner. Thus, we sustain the Examiner’s rejection of claim 6.
Independent Claim 10 and dependent claims 23 and 25
Appellant argues claims 10, 23, and 25 as a group and we select claim
10 as the representative claims. See App. Br. 6; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 23 and 25 fall with claim 10.
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Appellant argues that the Examiner erred in rejecting claim 10, 11, 12,
23, and 25 because the combination of the AAPA and Hollingsworth does
not disclose a blending tool supported for vertical movement along a vertical
axis relative to the horizontal base as recited in those claims. App. Br. 6. In
contrast, the Examiner disagrees and identifies paragraph [0004] of the
Appellant’s Specification as teaching that it was known in the prior art to use
such blending tools. Ans. 17. We agree with the Examiner that paragraph
[0004] of the Specification, which is part of the AAPA, discloses that this
limitation was known in the prior art. The only other arguments raised by
Appellant for claims 10, 23, and 25 are those already considered above,
which we were not persuaded by for the reasons discussed supra. Thus, we
sustain the Examiner’s rejection of claim 10, and claims 23 and 25 which
fall therewith.
Dependent claim 11
Appellant argues that claim 11 is allowable for the same reasons that
claims 6 and 10 are allowable. App. Br. 6. Since we sustained the
Examiner’s rejection of claims 6 and 10 for the reasons discussed supra, we
are not persuaded by Appellant’s arguments with respect to claim 11.
Accordingly, we sustain the Examiner’s rejection of claim 11.
Dependent claim 12
First, Appellant argues the claim 12 is allowable for the same reason
that claim 11 is allowable. App. Br. 6. Since we sustained the Examiner’s
rejection of claim 11 for the reasons discussed supra, we are not persuaded
by Appellant’s arguments with respect to claim 12.
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Second, Appellant argues that “Hollingsworth does not disclose or
teach the use of socket wrenches” and “Hollingsworth does not disclose or
teach socket wrenches with locking mechanisms.” Id. We are not
persuaded by Appellant’s argument because the Examiner found that
“Hollingsworth teaches that joints 26, 27, 28, and arm 18 can be locked.”
App. Br. 10 (citing Hollingsworth, col. 5, ll. 16-19 and col. 6, ll. 1-2).
Appellant has failed to explain why the Examiner’s finding is in error.
Accordingly, we sustain the Examiner’s rejection of claim 12.
Dependent Claims 21 and 23
Appellant argues that claims 21 and 23 are patentable because
Hollingsworth does not disclose the claim limitation that the “first pivot axis
extends generally in an x-direction and the other of said first and said second
pivotable tools faces a y-direction such that a second pivot axis extends
generally in a y-direction.” Reply Br. 5. More particularly, Appellant
argues that Hollingsworth discloses a configuration where the pivoting
occurs about various axes but all of the axes extend in a common direction.
Id. However, the Examiner does not rely on Hollingsworth for this element.
Ans. 11. Instead, the Examiner found that it would have been an obvious
matter of design choice to modify Hollingsworth to use a combination of x-
axis and y-axis joints. Id. at 11. Appellant does not address the Examiner’s
design choice arguments for this claim. Based on the Examiner’s
unchallenged reasoning, we find the Appellant’s arguments unpersuasive.
The only other arguments raised for claims 21 and 23 are the
arguments previously considered for claims 1 and 10 respectively. Reply
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Br. 5. Because we were not persuaded by those arguments for the reasons
discussed supra, we sustain the rejection of claims 21 and 23.
Rejection V – Obviousness Based on AAPA, Hollingsworth, and Juengel
Dependent Claim 7
Appellant argues that claim 7 is patentable because the combination of
the AAPA, Hollingsworth, and Juengel does not disclose a linear tool that
only moves in the vertical direction. App. Br. 7; see also App. Br. 9. In
contrast, the Examiner found this element would merely be a matter of
design choice. Appellant cites paragraph [0026] of the Specification as
explaining why having a vertically moving linear tool in combination with
the pivoting tools solves the problem of having to remove the gas turbine
engine component from the fixture and machining it by hand and therefore,
why such a modification would not have been obvious. Id. at 7. However,
contrary to Appellant’s argument, we find that paragraph [0026] explains
why the pivoting tools, in particular, solve the problem of having to hand
machine the component. Further, we agree with the Examiner’s finding that
selecting a linear tool that moves only in the vertical direction would be a
matter of design choice for the reasons the Examiner stated. See Ans. 12,
17-18. Thus, we sustain the Examiner’s rejection of claim 7.
Dependent claim 22
Appellant argues that claim 22 is allowable for the same reasons as
claims 7 and 21. App. Br. 9. Since we sustained the Examiner’s rejections
of claims 7 and 21 for the reasons discussed supra, we are not persuaded by
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Appellant’s arguments with respect to claim 22. Accordingly, we sustain the
Examiner’s rejection of claim 22.
Dependent claim 24
Appellant argues that claim 24 is allowable for the same reasons as
claims 7 and 23. App. Br. 9. Since we sustained the Examiner’s rejections
of claims 7 and 23 for the reasons discussed supra, we are not persuaded by
Appellant’s arguments with respect to claim 24. Accordingly, we sustain the
Examiner’s rejection of claim 24.
Dependent Claims 9 and 13
Appellant argues that claims 9 and 13 are patentable over the
combination of the AAPA, Hollingsworth, and Juengel because Juengel does
not teach a movable base with a first pivotable tool mounted to the movable
base as set forth in claims 9 and 13. In contrast, the Examiner identified that
Figure 1 of Juengel “teaches the concept of mounting a vice 14 for holding a
component that moves on its base along a railing 16.” Ans. 18. We agree
with the Examiner that Juengel’s Figure 1 teaches the concept of a movable
base.
Appellant further argues that claims 9 and 13 are patentable because
Juengel does not teach a base to which a first pivotable tool is mounted
which also includes a separate holding fixture to support a second
component. In contrast, the Examiner does not rely on Juengel to supply
this element, but rather found that it was “an obvious matter of design
choice” to modify the combination of the AAPA, Hollingsworth, and
Juengel to use a second fixture holder and that such a configuration is
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deemed to have been known by those skilled in the art. Ans. 13-14.
Appellant does not address the Examiner’s design choice reasoning or
contest his finding that such a configuration was known in the art. Thus, for
the reasons presented by the Examiner (Id. at 12-14), we are not persuaded
by Appellant’s arguments.
Thus, we sustain the Examiner’s rejection of claims 9 and 13.

DECISION
We REVERSE the Examiner’s rejections of: claims 4 and 10-13 under
35 U.S.C. § 112, first paragraph, for failure to comply with the enablement
requirement; and claims 1-3 under 35 U.S.C. § 102(b) as anticipated by
Juengel.
We AFFIRM the Examiner’s rejections of: claims 4 and 10-13 under 35
U.S.C. § 112, second paragraph, for indefiniteness; claims 1, 2, 4-6, 8, 10-
12, 20, 21, 23, and 25 under 35 U.S.C. § 103(a) as unpatentable over AAPA
and Hollingsworth; and claims 7, 9, 13, 22, and 24 under 35 U.S.C. § 103(a)
as unpatentable over AAPA, Hollingsworth, and Juengel.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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