Ex Parte Walter

Patent Trial and Appeal Board

Nov 29, 2016

12602427 (P.T.A.B. Nov. 29, 2016)

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.
12/602,427 11/30/2009 Heinrich Walter 011235.61889US 4829
23911 7590 12/01/2016
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
TSCHEN, FRANCISCO W
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINRICH WALTER
Appeal 2015-006731
Application 12/602,427
Technology Center 1700
Before PETER F. KRATZ, BRIAN D. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 8—10 and 12—15. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is MTU Aero Engines
GmbH. Appeal Br. 2.
Appeal 2015-006731
Application 12/602,427
STATEMENT OF THE CASE
Appellant describes the invention as relating to a method for adjusting
the number of phases of a platinum aluminum (PtAl) gas turbine component.
Spec. 1. The component could be used as part of an aircraft engine. Id.
Claim 8, reproduced below with emphases added to certain key recitations,
is the only independent claim on appeal and is illustrative of the claimed
subject matter:
8. A method for adjusting phase numbers of PtAl layers
when producing the PtAl layers during gas turbine component
production or reconditioning, comprising:
applying a Pt layer with a thickness of no more than 2 pm
to the gas turbine component, homogenizing such that Pt in a
base material of a gas turbine component is diffused, and
aluminizing and controlling after the homogenizing such that an
A1 content is less than or equal to 23% by weight to produce a
single-phase PtAl layer when desired; and
applying a Pt layer with a thickness in a range of 5 pm to
8 pm to the gas turbine component, homogenizing such that Pt
in a base material of the gas turbine component is diffused, and
aluminizing after the homogenization in order to produce a two-
phase PtAl layer when desired.
Appeal Br.2 7 (Claims Appendix).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Rigney et al. US 6,372,321 B1 Apr. 16,2002
(hereinafter “Rigney”)
Costanzo US 7,481,070 B2 Jan. 27,2009
2 In this decision, we refer to the Final Office Action mailed October 9, 2014
(“Final Act.”), the Appeal Brief filed March 3, 2015 (“Appeal Br.”), the
Examiner’s Answer mailed May 19, 2015 (“Ans.”), and the Reply Brief
filed July 7, 2015 (“Reply Br.”).
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Appeal 2015-006731
Application 12/602,427
Allen etal. US 2001/0004474 A1 June 21, 2001
(hereinafter “Allen”)
Worthing,Jr. et al. US 2003/0116237 A1 June 26, 2003
(hereinafter “Worthing”)
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 8—10 and 12—15 under 35 U.S.C. § 112,12 as
indefinite. Ans. 3—4.
Rejection 2. Claims 8—10 and 12—15 under 35 U.S.C. § 102(b) as
anticipated by Allen. Id. at 4.
Rejection 3. Claims 8—10 and 12—13 under 35 U.S.C. § 103 as
unpatentable over the combination of Rigney and Worthing. Id. at 5.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner’s rejections for the reasons expressed in the
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Application 12/602,427
Final Office Action and the Answer. We add the following primarily for
emphasis.
The Appellant does not separately argue any claims other than claim
8. Appeal Br. 4—6. We therefore limit our discussion to claim 8. All other
claims stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Rejection 1. The Examiner rejects independent claim 8 and claims
depending from claim 8 under 35U.S.C. § 112, ]f 2 as indefinite. Ans. 3^4.
Section 112,12, requires “that a patent’s claims, viewed in light of the
specification . . . inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2129 (2014); see also In re Warmerdam, 33 F.3d 1354,
1361 (Fed. Cir. 1994) (“The legal standard for definiteness is whether a
claim reasonably apprises those of skill in the art of its scope.”). In addition,
our reviewing court stated that “[i]t is the applicants’ burden to precisely
define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056
(Fed. Cir. 1997).
The Examiner explains that both recited steps of claim 8 are optional
by reciting that the step is performed “when desired.” Ans. 3. Thus, the
claimed process “does not recite any active positive steps delimiting how the
method is actually practiced” particularly for the case when neither of the
optional recited steps is desired. Id.
As a threshold matter, we agree with the Examiner’s claim
interpretation. During prosecution, the PTO gives the language of the
proposed claims “the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
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Appeal 2015-006731
Application 12/602,427
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d at 1054—55.
Here, the Specification explains that steps “assigned to a first group”
of possible steps includes applying a Pt (platinum) layer, homogenization so
that “the base material of the gas turbine component is diffused,” and
aluminizing and controlling. Spec. 14. The second group of steps that may
be desired includes applying the platinum layer, homogenization, and
aluminization. Id. ^ 5. Given this context, we conclude that the first
recitation of “when desired” makes optional the recitation “applying a Pt
layer with a thickness of no more than 2 pm to the gas turbine component,
homogenizing such that Pt in a base material of a gas turbine component is
diffused, and aluminizing and controlling after the homogenizing such that
an A1 content is less than or equal to 23% by weight to produce a single­
phase PtAl layer” as opposed to, for example, only modifying “aluminizing
and controlling after the homogenizing ... to produce a single-phase PtAl
layer.” The second recitation of “when desired” makes optional the
recitation “applying a Pt layer with a thickness in a range of 5 pm to 8 pm to
the gas turbine component, homogenizing such that Pt in a base material of
the gas turbine component is diffused, and aluminizing after the
homogenization in order to produce a two-phase PtAl layer.” See also Reply
Br. 2 (indicating that each “applying” act or operation of claim 8 is a
“positive step[]” that need only be performed “when desired”).
Each of the longer recitations above (“applying ... single-phase PtAl
layer” and “applying . . . two-phase PtAl layer”) need only be performed if
the condition precedent of “when desired” is met. If, for example, a two-
phase PtAl layer / related recitations are not desired, the corresponding
recited step need not be performed. Cf. In re. Schulhauser, Appeal 2013-
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Appeal 2015-006731
Application 12/602,427
007847, 2016 WL 6277792 (PTAB April 28, 2016) (precedential) (holding
that, given claim language at issue requiring condition precedent, certain
recitations need not be performed if condition precedent is not met).
Because claim 8 recites a method “comprising” the recited steps, it could
include other unrecited steps. In the event that neither of the recited steps is
“desired,” it is unclear what those other steps might be or how claim 8 is
bounded by any particular PtAl layer production limits at all. Because claim
8 does not apprise one of skilled in the art about the scope of the invention
with reasonable certainty, we thus agree with the Examiner that claim 8 is
indefinite.
Appellant argues that claim 8 is not indefinite because past issued
patents recite “when desired” in claims. Appeal Br. 4. Our ruling, however,
is based on the record before us as a whole. Each of those cited patents was
assessed based on its own record, and their claim language, in a vacuum, is
inapposite to the issue in the application for a patent before us. Moreover,
the Examiner cogently explains how the recitation of “when desired” in the
cited patents’ claims is distinguishable. Ans. 3^4.
The Examiner also states that claim 8 is unclear because it is not clear
what the recitation “phase numbers” refers to. Ans. 4. Given the context of
the claims and the Specification, however, we agree with Appellant that
“phase numbers” refers to the number of phases in the PtAl layer. Appeal
Br. 4. We therefore sustain the Examiner’s indefmiteness rejection based
solely upon claim 8’s use of recitations that are all only limiting “when
desired.”
Rejections 2 and 3. The Examiner rejects claims 8—10 and 12—15 as
anticipated by Allen (Ans. 4) and rejects claims 8—10 and 12—13 as obvious
over Rigney and Worthing. Id. at 5. A preponderance of the evidence
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Application 12/602,427
supports the Examiner’s fact finding and conclusions regarding these
references. Ans. 4—5; Final Act. (3—6) (providing citations to Allen, Rigney,
and Worthing).
In some instances it may be impossible to resolve the opposing
contentions raised on appeal as to whether claimed subject matter is
anticipated by or would have been obvious over applied references because
the claims are so indefinite that considerable speculation and assumptions
would be required regarding the meaning of contested limitations employed
in the claims with respect to the scope of the claims. See In re Steele, 305
F.2d 859, 862 (CCPA 1962).
Here, however, Appellant’s only argument with respect to each of
these rejections is that the prior art does not teach or suggest the recited two-
phase PtAl layer step. Appeal Br. 5—7. The two-phase step, however, is
optional. Ans. 4—5. Appellant’s sole argument therefore fails to identity
error in the Examiner’s prior art rejections. We thus sustain the Examiner’s
anticipation and obviousness rejections.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
8-10 and 12-15.
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
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