Ex Parte Zhang et alDownload PDFBoard of Patent Appeals and InterferencesSep 20, 201110813131 (B.P.A.I. Sep. 20, 2011) Copy Citation 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 Appeal 2009-011615 Application 10/813,131 2 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). Appeal 2009-011615 Application 10/813,131 3 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 Appeal 2009-011615 Application 10/813,131 4 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 Appeal 2009-011615 Application 10/813,131 5 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 Appeal 2009-011615 Application 10/813,131 6 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. Appeal 2009-011615 Application 10/813,131 7 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 mls Copy with citationCopy as parenthetical citation