Ex Parte Zelesky et al

Patent Trial and Appeal Board

Feb 16, 2017

13454245 (P.T.A.B. Feb. 16, 2017)

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.
13/454,245 04/24/2012 Mark F. Zelesky 60834US01;
67097-1793PUS1
9878
54549 7590 02/21/2017
TART SON OASKFY fr OT DS/PR ATT fr WHTTNFY
EXAMINER
400 West Maple Road
Suite 350
YOON, KEVIN E
Birmingham, MI 48009 ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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 MARK F. ZELESKY, TRACY A. PROPHETER-
HINCKLEY, DOMINIC J. JR. MONGILLO,
STEVEN BRUCE GAUTSCHL, MATTEW A. DEVORE, and
BENJAMIN T. FISK
Appeal 2015-007355
Application 13/454,245
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 4—7, 9, and 19—22. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
1 In this decision, we refer to Appellants’ Specification filed April 24, 2012
(“Spec.”), Final Office Action mailed September 30, 2014 (“Final Act.”), the
Appeal Brief filed March 4, 2015 (“App. Br.”), the Examiner’s Answer
mailed June 1, 2015 (“Ans.”), and the Reply Brief filed August 3, 2015
(“Reply Br.”).
2 Appellants identify the real party in interest as United Technologies
Corporation. App. Br. 1.
Appeal 2015-007355
Application 13/454,245
The subject matter on appeal relates to a core for manufacturing an
airfoil used in a gas turbine engine. Spec. 11. Claim 1, reproduced below
with emphasis added to highlight key disputed limitations, is illustrative of
the claims on appeal.
1. A core body for use with airfoil structure including an exterior
airfoil wall, the core body comprising:
a cooling passage portion;
a film cooling passage portion extending from the cooling
passage portion;
a cooling hole portion extending from the cooling passage
portion; and
an exterior airfoil portion connected to the cooling hole portion
and spaced apart from the cooling passage portion providing a
space surrounding the film cooling hole portion configured to
correspond to the exterior airfoil wall,
wherein the cooling hole portion is configured to be disposed
near a trailing edge of the exterior airfoil wall, and a portion of
the exterior airfoil portion and an additional structure other than
the exterior airfoil portion is configured to at least partially
define an exterior airfoil surface of the exterior wall, and
wherein the cooling passage portion, the film cooling passage
portion, the cooling hole portion and the exterior airfoil portion
are integrally formed as a unitary body with a refractory metal
and uniform material properties.
App. Br. 6 (Appendix of Claims, emphasis added).
DISCUSSION
The Examiner rejected claims 1, 4—7, 9, and 19—22 under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicant regards as the
invention. Final Act. 2. According to the Examiner, it is “unclear what is an
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Application 13/454,245
additional structure other than the exterior airfoil portion in the claimed core
body.” Ans. 9.
During prosecution, claims are examined for compliance with
35U.S.C. § 112, second paragraph by determining whether they meet
threshold requirements of clarity and precision. In re Skvorecz, 580 F.3d
1262, 1268 (Fed. Cir. 2009). In order to determine if the claims set out and
circumscribe a particular area with a reasonable degree of clarity and
precision, we analyze the claim language “in light of the teachings of the
prior art and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the pertinent art.”
In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
We agree with the Examiner here that claims 1, 4—7, 9, and 19—22 do
not reasonably apprise one of ordinary skill in the art of their scope due to
the inconsistencies between their preambles and bodies. See Ans. 9
The preamble of independent claims 1 and 5 recite “[a] core body.”3
The body of claims 1 and 5 comprise “an additional structure other than the
exterior airfoil portion,” which along with a portion of the exterior airfoil
portion “is configured to at least partially define an exterior airfoil surface of
the exterior wall.” Appellants’ Specification does not specifically define “an
additional structure other than the exterior airfoil portion” in the claimed
core body, but Appellants contend that the “additional structure” refers to
first and second mold portions 56 and 58, which are discussed at
paragraph 44 of the Specification and shown in Figure 3B of the application.
3 The preambles of claims 4, 9, 19, and 20, which depend from claim 1, and
the preambles of claims 6, 7, 21, and 22, which depend from claim 5 recite
“[t]he core.”
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Application 13/454,245
App. Br. 4. Figure 3B, referenced by Appellants, depicts “a cross-sectional
view of the core shown in Figure 3 A arranged in a wax mold.” Spec. 127.
Paragraph 44 of Appellants’ Specification discloses that the first and second
cores, 40, 42 are placed into a wax mold having first and second mold
portions 56, 58. Thus, according to the disclosure in Appellants’
Specification, it is clear that the mold halves are not part of the core body.
Given the inconsistencies between the preambles and bodies of the claims,
as well as the Specification’s lack of a clear description of “an additional
structure other than the exterior airfoil portion” in the claimed body, we are
not persuaded of reversible error in the Examiner’s determination that the
claims fail to reasonably apprise one of ordinary skill in the art about the
precise scope of the claimed invention. Consequently, we sustain the
Examiner’s indefmiteness rejection of claims 1, 4—7, 9, and 19—22.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a): claims 1, 4, 9, 19, 20, and 22 as unpatentable over Ortiz et al.
(US 2006/0065383 Al, published March 30, 2006) (hereinafter “Ortiz”) in
view of Merrill et al. (US 2011/0132564 Al, published June 9, 2011)
(hereinafter “Merrill”), and Skelly Jr. et al. (US 2009/0229780 Al,
published Sept. 17, 2009) (hereinafter “Skelly”) (Final Act. 3—5); claims 5
and 21 as unpatentable over Ortiz, Merrill, Skelly, and Parkos Jr. et al.
(US 2007/0017654 Al, published Jan. 25, 2007) (hereinafter “Parkos Jr.”);
claim 6 as unpatentable over Ortiz in view of Merrill, Skelly, and Parkos,
and further in view of Devore et al. (US 2009/0208325 Al, published
Aug. 20, 2009) (hereinafter “Devore” ); and claim 7 as unpatentable over
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Application 13/454,245
Ortiz, Merrill, Skelly, and Parkos, and further in view of Lee et al.
(US 2005/0286998 Al, published Dec. 29, 2005).
Appellants argue all of the rejections under 35 U.S.C. § 103(a)
together as a group. We choose claim 1 as representative, and the remaining
claims will stand or fall with claim 1.
Notwithstanding our determination that independent claim 1 is
indefinite, we will review the issues presented in the rejections under
35 U.S.C. § 103(a) utilizing Appellants’ interpretation of claim 1 consistent
with the arguments in Appellants’ Appeal Brief, as being directed to a body
containing “an additional structure other than the exterior airfoil portion,”
such as a mold portion in addition to the core and exterior airfoil portion.
See App. Br. 4.
Appellants argue that Ortiz insists on a “one-piece mold” and
modifying Ortiz to include an additional structure, such as a ceramic insert,
as in Merrill, “changes the principle operation in Ortiz and would render
Ortiz unsatisfactory for its intended purpose, namely eliminating multi-piece
cores in favor of one-piece cores.” App. Br. 5.
Appellants’ argument is not persuasive of reversible error in the
Examiner’s rejections. Ortiz teaches a mold having a one-piece integral
shell and core. Ortiz 122. Ortiz, however, does not teach away from a mold
having an additional structure other than the one-piece shell and core
structure. Moreover, as the Examiner points out, Ortiz’s mold, when
modified by Merrill to include a ceramic insert, as proposed by the
Examiner, would still have a one-piece integral shell and core. Ans. 10.
Accordingly, we sustain the Examiner’s rejections under 35 U.S.C. § 103(a).
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Application 13/454,245
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 4—7, 9,
and 19—22 are affirmed.
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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