Ex Parte Zhang et al

Board of Patent Appeals and Interferences

Sep 20, 2011

10813131 (B.P.A.I. Sep. 20, 2011)

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.
10/813,131 03/31/2004 Xiuzhang James Zhang 839-1546 3717
30024 7590 09/20/2011
NIXON & VANDERHYE P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
VERDIER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
09/20/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte XIUZHANG JAMES ZHANG, MARK GERARD DUER
and DOYLE CLYDE LEWIS
____________________

Appeal 2009-011615
Application 10/813,131
Technology Center 3700
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Xiuzhang James Zhang et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-13. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ claimed invention is directed to the film-cooling hole
configuration in an airfoil portion of a turbine blade or bucket (Spec. 1: para.
[0001]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A turbine component having a plurality of film-cooling
holes each formed in a region of the component to be cooled,
said cooling holes each having a specified uniform diameter,
each hole at an exit thereof formed with a concentric counter-
bore of a predetermined depth, each said hole and respective
counterbore being parallel and connected by a 90° shoulder;
said component having a coating applied thereto at least in said
region, wherein the counter-bore provides an area for excess
coating material to accumulate without reducing the specified
diameter.
THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1, 2, 4-7 and 9-13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gupta (US 5,771,577, issued Jun. 30, 1998)
in view of Kercher (US 3,542,486, issued Nov. 24, 1970).
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2. Claims 3 and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gupta in view of Kercher, and further in view of
Fric (US 6,383,602 B1, issued May 7, 2002).

ISSUE
The issue before us is whether the Examiner erred in concluding that
the combined teachings of Gupta and Kercher would have led a person
having ordinary skill in the art to a concentric and parallel counterbore
connected to the main passage by a 90° shoulder, as called for in
independent claims 1, 10 and 13 (App. Br. 8).

ANALYSIS
Rejection of claims 1, 2, 4-7 and 9-13 under over Gupta and Kercher
Appellants argue claims 1, 2, 4-7 and 9 as a group (App. Br. 6). As
such, we select independent claim 1 as representative of the group, and
claims 2, 4-7 and 9 will stand or fall with claim 1. Appellants argue claims
10-12 as a group (id.). As such, we select independent claim 10 as
representative of the group, and claims 11 and 12 will stand or fall with
claim 10. 37 C.F.R. § 41.37(c)(1)(vii). Appellants argue independent claim
13 separately (App. Br. 6).
Independent claims 1, 10 and 13 similarly call for, inter alia, a hole
and respective counterbore being parallel and connected by a 90° shoulder.
Appellants contend that while Gupta describes “that passage opening
shapes other than the tapered configurations of Figures 1 and 2 may be
utilized, so long as the relative opening sizes noted above are maintained”
(App. Br. 7), “in every case the outlet end is tapered or concavely-curved in
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an outward direction to increase the outlet opening cross-sectional area”
(id.).
Appellants contend that (1) “the disclosure [of Gupta] does not
embrace or suggest a concentric and parallel counterbore connected to the
main passage by a 90° shoulder,” as called for in independent claims 1, 10
and 13 (App. Br. 8); (2) while Kercher describes “a similar hole
configuration,” the hole configuration is “in a context other than surfaces
coated with thermal barrier coatings,” that is, “the claimed hole
configuration was known in other contexts” (id.); and (3) since Gupta does
not describe the very simple claimed configuration, the combination of
Gupta and Kercher is only feasible by impermissible hindsight and would
likely be considered a teaching away from the present invention (id.).
We agree with the Examiner’s findings regarding Gupta and Kercher
and adopt them as own (Final Rej. 4-6).
In particular, we agree with the Examiner that Gupta describes (1)
“the general idea of a turbine component/airfoil [10] having film cooling
holes [12] with a counterbore [18] and a coating [22] applied to the turbine
component/airfoil [10]” (Ans. 8).
Gupta describes that that the invention can include passage and
opening (counter bore 18) shapes other than tapered configurations so long
as the relative opening sizes described are maintained, and that some
examples of other shapes are shown in the views of Figure 3 and in Figure 4
(col. 5, l. 66-col. 6, ll. 16).
We agree with the Examiner that “Kercher teaches that film cooling
holes may have the conventional configuration of a concentric counter-bore
at the exit, with each hole and counter-bore being parallel and connected by
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a substantially 90 degree shoulder” (Ans. 8, see also fig. 5), which, as set
forth supra, Appellants admit describes the claimed hole configuration.
We conclude that while Gupta does not describe the specific shape
called for in the claimed invention, Gupta describes that only some examples
of other shapes are described.
Thus, we conclude that Gupta’s description of shapes is open-ended,
even shapes other than a taper, so long as the relative opening sizes
described are maintained, which a person having ordinary skill in the art
would conclude includes conventional configurations, such as described by
Figure 5 of Kercher.
Accordingly, we disagree with Appellants’ contention that since
Gupta did not describe the claimed configuration, the combination of Gupta
and Kercher is only feasible by impermissible hindsight and would likely be
considered a teaching away from the present invention.
Thus, we agree with the Examiner that it would have been obvious to
a person having ordinary skill in the art to form Gupta’s cooling holes 12 in
the shape of a concentric counter-bore, as taught by Kercher in Figure 5
(Final Rej. 5-6).
We affirm the rejection of independent claims 1, 10 and 13, and
dependent claims 2, 4-7 and 9, 11 and 12, which fall with independent
claims 1 and 10, respectively.

Rejection of claims 3 and 8 over Gupta, Kercher and Fric
Appellants contend that (1) “[i]n Fric, however, the main passage of
the cooling hole and the outlet end thereof are not parallel, the resultant
offset or misalignment is apparently intended to provide the desired type of
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disruption for the coolant flow” (App. Br. 9), and (2) “it is readily apparent
that Fric fails to remedy the deficiencies in the base combination of Gupta
and Kercher” (id.).
We find that Appellants argue the cited reference to Fric individually,
while the Examiner’s conclusion of obviousness is based on a combination
of Gupta, Kercher and Fric. The test for obviousness is whether the
references, taken as a whole, would have suggested Appellants’ invention to
a person having ordinary skill in the art at the time the invention was made.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller,
642 F.2d 413, 426 (CCPA 1981) (One cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references.).
Other than the arguments addressed above, Appellants do not present
any separate arguments for the patentability of dependent claims 3 and 8
apart from independent claim 1 (App. Br. 9).
For the reasons provided supra in our analysis of independent claim 1,
we find these arguments equally unpersuasive of Examiner error for
dependent claims 3 and 8. As such, we affirm the Examiner’s rejection of
dependent claims 3 and 8.

CONCLUSION
The Examiner has not erred in concluding that the combined teachings
of Gupta and Kercher would have led a person having ordinary skill in the
art to a concentric and parallel counterbore connected to the main passage by
a 90° shoulder, as called for in independent claims 1, 10 and 13.

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DECISION
The decision of the Examiner to reject claims 1-13 is 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)(1)(iv).

AFFIRMED

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