Ex Parte Watson et al

Patent Trials and Appeals Board

Jun 12, 2019

14960491 - (D) (P.T.A.B. Jun. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/960,491 12/07/2015 Thomas J. Watson
54549 7590 06/14/2019
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.
58924US02;
67097- l 652PUS2
CONFIRMATION NO.
2099
EXAMINER
ADJAGBE, MAXIME M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/14/2019 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 THOMAS J. WATSON and DANIEL A. BALES
Appeal2018-007866
Application 14/960,491
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas J. Watson and Daniel A. Bales ("Appellants") 1 appeal under
35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-30.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 United Technologies Corporation is the Applicant and is identified as the
real party in interest. Appeal Br. 2.
Appeal2018-007866
Application 14/960,491
BACKGROUND
Appellants' invention relates to an aluminum alloy airfoil. Spec. ,r 2.
Claims 1 and 16 are independent. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. An airfoil comprising:
a first airfoil piece; and
a second airfoil piece bonded to the first airfoil piece at a
joint;
the first airfoil piece and the second airfoil piece being
formed of aluminum alloys, and at least one of the aluminum
alloys is an aluminum alloy composition comprising greater than
0.8% by weight of zinc.
REJECTIONS
I. Claims 1-30 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 2.
II. Claims 1, 4--8, 16, 20, 21, and 24--28 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Nicolas (US 5,242,102, iss. Sept. 7,
1993) and Cross (US 3,758,233, iss. Sept. 11, 1973). Final Act. 3.
III. Claims 2--4 and 7-19 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Nicolas, Cross, and Grylls (US 6,468,040 B 1, iss. Oct.
22, 2002). Final Act. 8.
IV. Claims 9-13, 22, 23, 29, and 30 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Nicolas, Cross, and Helder (US 2005/0254955
Al, pub. Nov. 17, 2005). Final Act. 9.
V. Claims 14 and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Nicolas, Cross, and Huth (US 2011/0033308 Al, pub.
Feb. 10, 2011). Final Act. 13.
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Application 14/960,491
VI. Claims 3, 4, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Nicolas, Cross, Grylls, and Benedictus (US 7,226,669
B2, iss. June 5, 2007). Final Act. 14.
ANALYSIS
Rejection I - Indefiniteness
In rejecting the claims as indefinite, the Examiner finds that because
the claims have no upper limit on the amount of zinc, the claims are unclear.
Final Act. 3.
Appellants assert that the lack of an upper limit makes the claims
broad, not indefinite. Appeal Br. 3. According to Appellants, not reciting
an upper limit does not in itself make the claims indefinite. Id. ( citing In re
Fisher, 427 F.2d 833 (CCPA 1970) and Ex parte Feulner et al., Appeal
2013-010469 (PTAB Oct. 23, 2015)). Appellants contend that, in Fisher,
the court held that an open-ended numerical ratio is definite, and in Feulner,
the Board stated, "'[a] claim ... is not made unclear simply because an
upper boundary is not specified.'" Id. ( quoting Feulner, slip op. at 4).
Appellants further contend that "there are inherent upper limits to the
claimed compositions." Id. at 4. Appellants explain that one of ordinary
skill in the art would readily understand that "the amount of zinc could not
be so high as to be greater than the amount of the predominant amount of
aluminum," i.e., an amount in which the alloy would no longer be aluminum
alloy. Reply Br. 2.
The Examiner responds that the open-ended range is unclear as to "the
maximum amount of zinc which may be present and still meet the
requirement of being an 'aluminum alloy."' Ans. 3.
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Application 14/960,491
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 specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In this case, we
agree with Appellants that "the Examiner seems to have a very clear
understanding that the amount of zinc cannot exceed an amount in which the
aluminum alloy would no longer be an aluminum alloy." Reply Br. 2. Here,
the claims expressly reach any amount of zinc having values greater than
0.8% by weight, no matter how large the value may be, so long as the
composition is still an aluminum alloy. The Examiner has not established
that one skilled in art would not understand the amount of zinc is limited so
that the resulting composition is aluminum alloy. Hence, the scope of the
claims, although broad, is not indefinite.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 112, second paragraph, of claims 1-30 as being
indefinite.
Rejection II - Nicolas and Cross
The Examiner finds that Nicolas discloses an airfoil having first airfoil
piece 60 bonded to second airfoil piece 62 that are both "formed of
aluminum alloys." Final Act. 3 (citing Nicolas 4:52-54). The Examiner
finds that Nicolas fails to disclose an aluminum alloy composition with
greater than 0.8% weight of zinc, but that Cross teaches such an aluminum
alloy. Id. at 4 ( citing Cross 2:40-48). The Examiner considers that it would
have been obvious to substitute Cross's aluminum alloy airfoils for those of
Nicolas as an obvious substitution of one known airfoil structure for another
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Application 14/960,491
"to achieve predictable results, in this case obtaining an airfoil with higher
creep resistance." Id.
Appellants argue that the Examiner does not provide evidence that the
substitution would result in higher creep resistance, because both Cross and
Nicolas are silent with regard to creep resistance. Appeal Br. 6; see also
Reply Br. 4. Appellants, thus, contend that the Examiner's "conclusion of
predictable results is not justified." Id.; see also Reply Br. 4.
The Examiner responds that "it is widely known that aluminum alloy
containing zinc provides high creep resistance and therefore would be
expected to do so in turbine engine blades." Ans. 5.
We agree with Appellants. Although we appreciate the Examiner's
position that a motivation to combine references can be based on the
knowledge generally available to one skilled in the art, the Examiner has not
provided evidence that adding zinc to an aluminum alloy provides higher
creep resistance. The Examiner's finding that that a person of ordinary skill
in the art would have been motivated to substitute Cross's airfoils for those
of Nicolas to obtain an airfoil with higher creep resistance, is therefore not
supported by a preponderance of the evidence. For these reasons, we do not
sustain the rejection of claims 1 and 16, and claims 4--8, 20, 21, and 24--26,
which depend from claim 1, and claims 27 and 28, which depend from claim
16.
Rejections III-VI
Rejections III-VI rely on the same proposed combination of Nicolas
and Cross, with additional disclosure of Grylls, Helder, Huth, or Benedictus.
The Examiner does not rely on the additional disclosure of Grylls, Helder,
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Application 14/960,491
Huth, or Benedictus in any manner that would remedy the conclusion set
forth in the rejection based on Nicolas and Cross. We do not sustain
Rejections III-VI for the same reasons set forth above.
DECISION
We REVERSE the Examiner's rejection of claims 1-30 as being
indefinite.
We REVERSE the Examiner's rejections of claims 1-30 as obvious.
REVERSED
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