Ex Parte Xu

Patent Trials and Appeals Board

May 8, 2019

15228543 - (D) (P.T.A.B. May. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
15/228,543
11943 7590
O""Shea Getz P.C.
FILING DATE FIRST NAMED INVENTOR
08/04/2016 JinQuanXu
05/10/2019
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.
1213-26846AC 4254
EXAMINER
10 Waterside Drive, Suite 205 YOON, KEVIN E
Farmington, CT 06032
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
05/10/2019 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):
uspto@osheagetz.com
shenry@osheagetz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINQUAN XU 1
Appeal2018-006201
Application 15,228,543
Technology Center 1700
Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and JANEE.
INGLESE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-5, 7-10, and 16-20. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM-IN-PART.
1 Appellant is the Applicant, United Technologies Corporation, which is
identified as the real party in interest (Br. 3).
Appeal2018-006201
Application 15,228,543
Appellant claims a method of manufacturing a component comprising
the steps of additively manufacturing a crucible for casting of the
component, adding metal material in powder form to the crucible,
solidifying the metal material within the crucible, and removing the crucible
to reveal the component (independent claims 1 and 20). The claimed
method further comprises: the steps of additively manufacturing internal
cooling passages of the component and additively manufacturing locations
for microcircuits of the component, wherein the microcircuits are smaller
than and located outboard of the internal cooling passages ( dependent claim
17); as well as the step of filling the internal cooling passages with a ceramic
slurry to form a core ( dependent claim 18).
Further details regarding the claimed method are set forth in claims 1
and 16-18, a copy of which taken from the Claims Appendix of the Appeal
Brief appears below.
1. A method of manufacturing a component, comprising:
additively manufacturing a crucible for casting of the component;
adding metal material in powder form to the crucible;
solidifying the metal material within the crucible to form a metal
directionally solidified microstructure within the component; and
removing the crucible to reveal the component.
16. The method as recited in claim 1, wherein the metal material is a
superalloy, and wherein the crucible includes a core and a shell, the method
farther comprising:
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Application 15,228,543
manufacturing the core and the shell of a material that is different
from the metal material.
17. The method as recited in claim 16, further comprising:
additively manufacturing internal cooling passages of the component
using a ceramic material; and
additively manufacturing locations for microcircuits of the component
using a refractory metal material,
wherein the microcircuits are smaller than and located outboard of the
internal cooling passages.
18. The method as recited in claim 17, further comprising:
filling the internal cooling passages with a ceramic slurry to form the
core; and
curing the core.
The Rejections under 35 U.S.C. § 103
Under 35 U.S.C. § 103, the Examiner rejects all appealed claims
except claims 18 and 19 as follows:
claims 1, 2, 4, 5, 7-10, 16, and 20 as unpatentable over Kush (US
8,327,911 B2, iss. Dec. 11, 2012) in view ofMironets (US 2013/0294901
Al, pub. Nov. 7, 2013);
claim 3 as unpatentable over Kush and Mironets in combination with
Horwood (US 5,868,194, iss. Feb. 9, 1999); and
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Appeal2018-006201
Application 15,228,543
claim 1 7 as unpatentable over Kush and Mironets in combination with
Beals (US 6,929,054 B2, iss. Aug. 16, 2005) and Castle (US 2013/0026338
Al, pub. Jan 31, 2013).
In contesting these rejections, Appellant presents arguments
specifically directed to claims 1 and 17 only (Br. 9--11). Therefore, the other
so-rejected claims will stand or fall in accordance with the success or failure
of these arguments.
Regarding claim 1, there is no dispute that Kush teaches adding metal
to a mold (i.e., crucible) as molten liquid ( col. 4, 1. 57---col. 5, 1. 7) rather than
powder and that Mironets teaches adding metal to a mold as powder (i1i145-
46) rather than liquid because "completely filling the mold cavity with a
liquid is difficult, especially when casting components having relatively
complex geometries" (i-f 3). The Examiner concludes that it would have
been obvious to replace Kush's liquid metal addition with metal powder
addition in order to enhance complete filling of the mold cavity as taught by
Mironets (Ans. 5).
Appellant argues that, because Kush is directed to manufacturing an
airfoil having pores, "[ o ]ne skilled in the art would appreciate that if the
metal material was added to Kush in powder form, that the powder would
not necessarily infiltrate the porous areas" (Br. 9).
Appellant's argument is unpersuasive for a number of reasons. First,
Appellant does not support this argument with evidence, which is a
particularly significant deficiency because the argument is contrary to
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Application 15,228,543
Mironets' teaching that metal powder avoids the difficulty of completely
filling a mold cavity with liquid metal. In addition, Appellant's statement
that metal powder would not "necessarily" infiltrate porous areas appears to
conflict with the established legal principle that "the expectation of success
need only be reasonable, not absolute." Pfizer, Inc. v. Apotex, Inc. 480 F.3d
1348, 1364 (Fed. Cir. 2007). Finally, even assuming the infiltration of
porous areas requires metal in liquid form, Appellant fails to explain why
such infiltration would not occur when the metal powder in the mold cavity
is melted in accordance with the teachings of Mironets (Fig. 3, ,r 46).
As for claim 1 7, the Examiner finds that the combination of Kush and
Mironets fails to teach manufacturing locations for microcircuits, wherein
the microcircuits are smaller than and located outboard of the internal
cooling passages, as claimed (Ans. 7). The Examiner finds Beals teaches
refractory metal cores 80A and 80B (i.e., analogous to the claimed
microcircuits) that are smaller than and located outboard of ceramic feed
core 42 (i.e., the passageways inside ceramic feed core 42 (Beals col. 5, 11.
17-19) that are analogous to the claimed internal cooling passages) whereby
the refractory metal cores provide serpentine passageways (Ans. 7 (citing
Beals Fig. 2, col 6, 11. 6-36)). The Examiner concludes that it would have
been obvious to modify the combination of Kush and Mironets by
manufacturing locations for microcircuits so as to provide serpentine
passageways as taught by Beals (id. at 8).
Appellant challenges the rejection of claim 17 by arguing that "in
Beals the RMCs [i.e., refractory metal cores] 80A and 80B (the alleged
microcircuits) are not located outboard of the ceramic feed core 42 (the
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Appeal2018-006201
Application 15,228,543
alleged internal cooling passages) because the RM Cs 80A and 80B are a part
of the ceramic feed core 42 (by way of the feed core portions 42A and 42B)"
(Br. 11).
Appellant does not embellish what is meant by the statement "RMCs
80A and 80B are a part of the ceramic feed core 42 (by way of the feed core
portions 42A and 42B)" (id.). Moreover, Appellant does not explain why
the unembellished characterization of RM Cs 80A and 80B as being a part of
ceramic feed core 42 prevents these RMCs from being "located outboard of
the internal cooling passages" as recited in claim 1 7. On the other hand,
Figure 2 of Beals shows RMCs 80A and 80B as being located outboard of
the passageways inside ceramic feed core 42.
For the above-stated reasons, Appellant does not show error in the
Examiner's rejections of argued claims 1 and 17. Accordingly, we sustain
the§ 103 rejections of claims 1-5, 7-10, 16, 17, and 20.
The Rejections under 35 U.S.C. § 112
The Examiner rejects claims 18 and 19 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. According to the
Examiner, the Specification contains no written description support for the
combination of the claim 18 ( and claim 19 by virtue of its dependency
therefrom) feature "filling the internal cooling passages with a ceramic
slurry to form the core" with the parent claim 17 feature "additively
manufacturing internal cooling passages of the component using a ceramic
material" (Ans. 3).
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Appeal2018-006201
Application 15,228,543
Based on analogous reasoning, the Examiner also rejects claims 18
and 19 under 35 U.S.C. § 112(b) as being indefinite stating "[i]t is unclear
how one can fill the internal cooling passage with a ceramic slurry [ as
required by claim 18], when it is already formed with a ceramic material by
additive manufacturing [as required by claim 17]" (id. at 4).
Concerning the written description rejection, Appellant argues one
skilled in the art would appreciate based on a review of the filed application
the combination of manufacturing internal cooling passages as recited in
claim 1 7 and then filling those passages with a ceramic slurry as recited in
claim 18 (Br. 7). In support of this argument, Appellant points out that the
Specification does not describe the features of claims 1 7 and 18 as being
exclusive of one another and that paragraph [0087] of the Specification
expressly teaches steps may be combined (id.).
Appellant argues that the indefiniteness rejection is improper for
reasons similar to those discussed with respect to the written description
rejection, stating "the alleged lack of clarity is based on an incomplete
reading of the filed application" and "rests on little more than a conclusory
statement that the claims are indefinite" (id. at 8).
"The test for [ written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date." ARIAD Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane).
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Appeal2018-006201
Application 15,228,543
For the reasons given by Appellant, we determine that the application
disclosure reasonably conveys to those skilled in the art that the inventor had
possession of the above-discussed combination of features recited in claims
17 and 18. The Examiner's contrary view is conclusory in nature and not
supported by the record of this appeal. Accordingly, we determine the
rejection of claims 18 and 19 as failing to comply with the written
description requirement is erroneous.
We also agree with Appellant that the indefiniteness rejection is
conclusory and based on an incomplete reading of the application. For this
reason, we determine the rejection of claims 18 and 19 as being indefinite
also is erroneous.
The Examiner's conclusory statements regarding written description
and indefiniteness may be premised on an incorrect interpretation of the
features recited in claims 17 and 18. For example, in responding to
Appellant's arguments, the Examiner states "one would not be able to fill the
internal cooling passages with a ceramic slurry [as recited in claim 18], if
there is no additively manufactured component [ as recited in claim 17] to
hold the slurry in shape of the internal cooling passages" (Ans. 9 (bolding
removed)). However, contrary to the implication of this statement, claim 17
requires a component having internal cooling passages by expressly reciting
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Appeal2018-006201
Application 15,228,543
"additively manufacturing internal cooling passages of the component using
a ceramic material."2
For these reasons, we do not sustain the Examiner's § 112 rejections
of claims 18 and 19 as failing to comply with the written description
requirement and as being indefinite.
Conclusion
The decision of the Examiner is affirmed-in-part.
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)(l )(iv).
AFFIRMED-IN-PART
2 We observe that the Examiner reiterates this claim 1 7 recitation but offers
no specific interpretation of it. The recitation is reasonably interpreted
consistent with the Specification (see, e.g., ,r,r 60-62) to require "additively
manufacturing internal cooling passages of the component using a [ crucible
made of] ceramic material."
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