Ex Parte Zhang et alDownload PDFPatent Trial and Appeal BoardApr 19, 201813711241 (P.T.A.B. Apr. 19, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131711,241 12/11/2012 80944 7590 04/23/2018 Hoffman Warnick LLC 540 Broadway 4th Floor Albany, NY 12207 FIRST NAMED INVENTOR Xiuzhang James Zhang 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. 260361-1 4705 EXAMINER CHRISTENSEN, DANIELLE M ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 04/23/2018 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): ptocommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIUZHANG JAMES ZHANG, ADEBUKOLA OLUWASEUN BENSON, RICHARD RYAN PILSON, and STEPHEN WILLIAM TESH Appeal2017-006928 Application 13/711,241 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and SEAN P. O'HANLON, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Xiuzhang James Zhang et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action (dated June 28, 2016, hereinafter "Final Act.") rejecting claims 1--4, 7-13, 15-18, and 20. 1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). 1 Claims 5, 6, 14, and 19 are canceled. See Response After Final Action 2- 4, 6 (dated Aug. 25, 2016). Appeal2017-006928 Application 13/711,241 We AFFIRM. SUMMARY OF DECISION INVENTION Appellants' invention relates to "cooling passages in turbine components." Spec. para. 1. Claims 1, 10, and 17 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A turbine component comprising: a base portion shaped as an airfoil; and at least one elongated cylindrical drilled cooling passage extending through the base portion to a tip of the base portion, wherein the elongated cylindrical drilled cooling passage has a variable diameter along a length of the base portion, the variable diameter converging incrementally from a first diameter at a root to a second diameter at the tip, the first diameter being greater than the second diameter. REJECTIONS I. The Examiner rejects claims 1--4, 9, 12, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Dahmer et al. (US 2009/0297361 Al, pub. Dec. 3, 2009, hereinafter "Dahmer"), Marra (US 2011/0058949 Al, pub. Mar. 10, 2011), and Holden (EP 0 207 799 A2, pub. Jan. 7, 1987). II. The Examiner rejects claims 7, 8, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Dahmer, Marra, Holden, and Tomberg (US 2005/0047914 Al, pub. Mar. 3, 2005). III. The Examiner rejects claims 10, 11, and 13 under 35 U.S.C. § 103(a) as being unpatentable over Dahmer and Marra. 2 Appeal2017-006928 Application 13/711,241 IV. The Examiner rejects claims 15 and 16 under 35 U.S.C. § 103(a) as being unpatentable over Dahmer, Marra, and Tomberg. ANALYSIS Rejection I Claim 1 The Examiner finds that although Dahmer discloses a turbine component 10 including, inter alia, "at least one elongated cylindrical drilled cooling passage (40, 75, 45) ... ha[ving] a variable diameter" that varies from a larger diameter at root portion 30 to a smaller diameter at tip portion 37, "Dahmer fails to disclose that the elongated cylindrical cooling passage has a variable diameter along a length of the base portion." Final Act. 4 (citing Dahmer, Figs. 1-9). Nonetheless, the Examiner finds that Marra discloses "a blade with [tapered] cooling channels (26) which taper from the base of the airfoil to the tip, with the largest cross sectional area of the channels being at the base of the airfoil." Id. at 4--5 (citing Marra, Figs. 4, 7). The Examiner further finds that "Holden ... teaches that cooling channels throughout an airfoil can also be tapered in incremental steps." Id. at 5 (citing Holden, Fig. 4 ). The Examiner concludes that it would have been obvious for a person of ordinary skill in the art "to modify Dahmer's turbine component by tapering the cooling channels through the base of the airfoil to its tip, as taught by Marra, in order to produce the predictable result of maximizing the cooling to the blade while maintaining the integrity of the walls of the blade." Id. The Examiner also determines that it would have been obvious for the same skilled artisan to "further modify Dahmer's turbine 3 Appeal2017-006928 Application 13/711,241 component[, as modified by Marra,] by tapering the cooling channels using incremental steps, as taught by Holden, in order to produce the predictable result of more abruptly changing the fluid flow characteristics of the coolant." Id. Appellants argue that because Dahmer discloses drilling of its cooling passages 40, 45, and 75 by drilling from the root and tip ends, respectively, using drills having different diameters for forming a large diameter portion in the root end, a small diameter portion in the tip end, and a transition region at the junction of the large and small diameter portions, Dahmer's process "makes it impossible to provide an elongated passage," as called for by independent claim 1, "as drilling a passage from the tip of the airfoil would have a constant diameter, or a decreasing diameter." Appeal Br. 5 (citing Dahmer, para. 9). Thus, according to Appellants, "Dahmer not only teaches away from a taper over the entire length of the passage but Dahmer fails to provide ... a variable taper along the length of the passage." Id. at 6. Appellants further assert that because claim 1 recites "elongated cylindrical drilled cooling passage," whereas Marra discloses extruded tubes bonded along surfaces 34, "Marra teaches away from drilled cylindrical passages," and, thus, "the combination of Marra and Dahmer is improper." Id. (citing Marra, paras. 16, 22); see also Reply Brief 3 (dated Mar. 2, 2017, hereinafter "Reply Br."); Marra, Fig. 7. According to Appellants, "one could not use the teaching of Marra [of extruded and bonded tubes] to make the cooling passages in Dahmer, as Dahmer drills into a cast airfoil." Appeal Br. 6-7, 9. We are not persuaded by Appellants' arguments that Dahmer and Marra teach away from a tapered passage over the entire length of a turbine 4 Appeal2017-006928 Application 13/711,241 component because prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, Appellants do not point to any portion of Dahmer, and we could not find any, where Dahmer criticizes, discredits or otherwise discourages drilling at least one cooling passage having a varying diameter along turbine component 10. As to Marra's disclosure, the Examiner is correct in that "Marra does not teach that tapered cooling passages cannot be created by drilling." Examiner's Answer 3 (dated Jan. 4, 2017, hereinafter "Ans."). Although Dahmer and Marra employ different processes to manufacture cooling passages in a turbine component, obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Marra's disclosure is employed by the Examiner to show "that the entire length of a cooling passage can be tapered." Ans. 3; see also Final Act. 5. Moreover, we note that "[t]he patentability of a product does not depend on its method of production." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006). Nonetheless, we appreciate that independent claim 1 recites a "drilled cooling passage" and Marra's process for making tapered channels 26 does not include drilling. See Reply Br. 2-3; see also Marra, para. 15, Figs. 3, 9. However, we agree with the Examiner that because Dahmer discloses drilling cooling passages in a turbine airfoil using "any known manufacturing technique," "it would be reasonable for one having ordinary skill in the art to recognize that ... different manufacturing processes can be 5 Appeal2017-006928 Application 13/711,241 applied over the entire length of the cooling passage." Ans. 2-3. For example, Dahmer discloses the use of "electrochemical drilling," which is a process similar to Appellants' "shaped tube electrochemical machin[ ing]." Compare Dahmer, para. 262 with, Spec. para. 53. Appellants do not persuasively explain why electrochemical drilling would not be capable of forming a cooling passage having a varying diameter, as taught by Marra, converging from the root portion to the tip portion of Dahmer' s turbine component 10. Furthermore, we note Appellants are correct that the drills of Dahmer shown in Figures 8 and 9 would not form a tapered hole. See Appeal Br. 5- 6. However, Dahmer discloses that the shape of transition regions 75, 80 is formed by using drills 85, 90. See Dahmer, para. 26, Figs. 6-9. As an artisan must be presumed to know something about the art apart from what the references disclose, the skilled artisan in the art of electrochemical drilling would have known to choose an appropriately shaped electrode and electrochemical drilling process parameters to form a tapered hole, as taught by Marra, along the length of Dahmer's turbine component 10. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Hence, we do not agree with Appellants that "the combination of Marra and Dahmer would not result in 2 "[R ]adial cooling passages are formed by flowing an electrolyte around an electrode and selectively electrolytically dissolving ... material at the desired locations to form the cooling passages." 3 The "process removes ... [material] by electrolytic dissolution, utilizing a flow of electric current between an electrode and the workpiece through an electrolyte flowing in the intervening space to form the radial cooling flow passages." 6 Appeal2017-006928 Application 13/711,241 an elongated cylindrical drilled cooling passage," as called for by claim 1. Appeal Br. 7. Lastly, we are not persuaded by Appellants' argument that "Holden teaches away from a passage that decreases in diameter from the root to the tip" of an airfoil because "Holden shows an increased diameter at the tip of the airfoil." Id. (citing Holden Figs. 3, 4). The skilled artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, (Fed. Cir. 1984). Here, the Examiner employs Holden's disclosure to show that "the transition between a larger portion of the cooling passage to a smaller portion can either be gradual or stepped." Ans. 4 (citing Holden, Figs. 3, 4). Moreover, we note that Holden's Figure 1 shows a diameter at tip portion 21 that is smaller than at hub portion 20. In conclusion, for the foregoing reasons we sustain the rejection under 35 U.S.C. § 103(a) of independent claim 1 as unpatentable over Dahmer, Marra, and Holden. Claim 17 In addition to the arguments discussed supra that we have not found persuasive, Appellants further argue that "[t]he root of the airfoil of Marra would not have a larger diameter than at the base portion." Appeal Br. 7 (citing Marra, para. 23, Fig. 8). We are not persuaded by Appellants' argument because it is limited to the embodiment of Figure 8, which the Examiner does not rely upon. See Final Act. 4--5 (citing Marra, Figs. 4, 7). Figure 4 of Marra, upon which the 7 Appeal2017-006928 Application 13/711,241 Examiner relies, specifically discloses a tip end at Tl having a diameter that is smaller than the diameter at base end T2. See Marra, para. 18. As such, we likewise sustain the rejection of independent claim 17 under 35 U.S.C. § 103(a) as unpatentable over Dahmer, Marra, and Holden. Claims 2-4, 9, 12, and 18 Appellants rely on the arguments discussed supra. Appeal Br. 8 ("The dependent claims ... are believed allowable for the same reasons."). Accordingly, for the reasons discussed above, we also sustain the rejection of claims 2--4, 9, 12, and 18 as unpatentable over the combined teachings of Dahmer, Marra, and Holden. Re} ections II-IV Appellants rely on the arguments discussed supra. Appeal Br. 8-9. Therefore, for the same reasons discussed above, we likewise sustain the rejections under 35 U.S.C. § 103(a) of claims 7, 8, and 20 as unpatentable over Dahmer, Marra, Holden, and Tomberg; of claims 10, 11, and 13 as unpatentable over Dahmer and Marra; and of claims 15 and 16 as unpatentable over Dahmer, Marra, and Tomberg. SUMMARY The Examiner's decision to reject claims 1--4, 7-13, 15-18, and 20 under 35U.S.C.§103 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation