GENERAL ELECTRIC COMPANY

Patent Trials and Appeals Board

Nov 13, 2020

14671593 - (D) (P.T.A.B. Nov. 13, 2020)

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.
14/671,593 03/27/2015 David Edward SCHICK 276788/22113-0224 7490
13152 7590 11/13/2020
McNees Wallace & Nurick LLC
100 Pine Street
P.O. Box 1166
Harrisburg, PA 17108-1166
EXAMINER
WANG, NICHOLAS A
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
11/13/2020 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):
patents@mcneeslaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID EDWARD SCHICK, BENJAMIN PAUL LACY,
GREGORY SCOTT MEANS, KASSY MOY LUM, and
STEVEN JOHN BARNELL

Appeal 2020-000198
Application 14/671,593
Technology Center 1700
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–3, 5–14, 16, 17, and 21–23.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—i.e., “GENERAL ELECTRIC COMPANY” (Application
Data Sheet filed March 27, 2015). The Appellant identifies itself and the
Inventors as the real parties in interest (Appeal Brief filed June 6, 2019
(“Appeal Br.”) at 1).
2 See Appeal Br. 5–16; Final Office Action entered January 11, 2019 (“Final
Act.”) at 3–15; Examiner’s Answer entered August 9, 2019 (“Ans.”) at 3–
17.
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I. BACKGROUND
The subject matter on appeal relates to a method for fabricating a
component that may be used, e.g., as a turbine component (Specification
filed March 27, 2015 (“Spec.”) ¶¶ 1, 24). Representative claim 1 is
reproduced from the Claims Appendix to the Appeal Brief, as follows:
1. A method for fabricating a component, comprising the
steps of:
providing an initial distributed layer of a metallic
powder to a high temperature base material, wherein the
high temperature base material is non-weldable;
heating the metallic powder to a temperature
sufficient to join at least a portion of the metallic powder
to the high temperature base material to form an initial
layer;
sequentially forming an additional layer over the
initial layer by heating an additional distributed layer of
the metallic powder to a temperature sufficient to join at
least a portion of the additional distributed layer of the
metallic powder and join the formed additional layer to
underlying layers;
repeating the step of sequentially forming the
additional layer over underlying layers to form a formed
portion of the component, thereby additively
manufacturing the formed portion of the component; and
removing both the formed portion of the component
and a first portion of the high temperature base material
from a second portion of the high temperature base
material;
wherein the component is formed of the formed
portion and the first portion of the high temperature base
material.
(Appeal Br. 18 (emphases added)).

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II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103 as follows:
A. Claims 1–3, 5–10, 13, 14, 17, and 21 as unpatentable over
Shuck3 in view of Hoebel et al.4 (“Hoebel”), as evidenced by
Pollock et al.5 (“Pollock”), Fernihough et al.6 (“Fernihough”),
and Donachie et al.7 (“ASM–Joining”);
B. Claims 7–9 as unpatentable over Shuck in view of Hoebel, as
evidenced by Pollock, Fernihough, and ASM–Joining, and
further in view of Burd;8
C. Claim 11 as unpatentable over Shuck in view of Hoebel, as
evidenced by Pollock, Fernihough, and ASM–Joining, and
further in view of ASM–Laser Cutting;9
D. Claims 12 and 22 as unpatentable over Shuck in view of
Hoebel, as evidenced by Pollock, Fernihough, and ASM–

3 US 2012/0160443 A1, published June 28, 2012.
4 US 2014/0242400 A1, published August 28, 2014.
5 Pollock et al., Nickel-Based Superalloys for Advanced Turbine Engines:
Chemistry, Microstructure, and Properties, 22 J. PROPULSION & POWER
361–74 (2006).
6 US 6,588,103 B2, issued July 8, 2003.
7 Donachie et al., A Guide to Superalloy Shape Processing: Joining, Online
Update of ASM Handbook Supplement (approved for addition in 2011),
http://products.asminternational.org/hbk/do/highlight/content/VSA/D01/A04
/s0504854.htm (retrieved Oct. 6, 2017).
8 WO 2015/009444 A1, published January 22, 2015.
9 “Laser Cutting: Competing Cutting Methods,” Metalworking: Sheet
Forming, 14B ASM HANDBOOK, no pagination (2006),
https://matdata.asminternational.org/hbk/do/highlight/content/V14B/D03/
A03/s0100839.htm (retrieved April 26, 2018).
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Joining, and further in view of Godfrey et al.10 (“Godfrey”);
E. Claim 16 as unpatentable over Shuck in view of Hoebel, as
evidenced by Pollock, Fernihough, and ASM–Joining, and
further in view of Godfrey and Rickenbacher et al.11
(“Rickenbacher”); and
F. Claim 23 as unpatentable over Shuck in view of Hoebel, as
evidenced by Pollock, Fernihough, and ASM–Joining, and
further in view of Tamaki et al.12 (“Tamaki”).
III. DISCUSSION
1. Grouping of Claims
Unless separately argued within the meaning of 37 C.F.R.
§ 41.37(c)(1)(iv), the rejected claims stand or fall with claim 1, which we
select as representative pursuant to the rule. In this regard, merely pointing
out what a claim recites or providing a skeletal argument asserting that the
prior art does not disclose or suggest the claimed subject matter is not an
argument for separate patentability that requires our separate consideration.
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
2. The Examiner’s Position
The Examiner finds that Shuck describes a material addition process
for gas turbine engine components including steps that meet most of the
limitations recited in claim 1, but acknowledges that Shuck’s backer plate
(corresponding to the “high temperature base material” as recited in claim 1)

10 US 2013/0195673 A1, published August 1, 2013.
11 US 2013/0263977 A1, published October 10, 2013.
12 US 7,169,241 B2, issued January 30, 2007.
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is not disclosed as a high temperature base material that is non-weldable, as
required by the claim (Ans. 3–4; Final Act. 3–4). The Examiner finds
further, however, that Hoebel discloses a method of manufacturing a hybrid
component for gas turbines comprising a preform, which may be made of a
Ni-based superalloy such as MK4, and additively manufactured layers of
metal powder upon said preform such that optimized properties can be
achieved (Ans. 4; Final Act. 4). Based on these findings, the Examiner
concludes that “it would have been obvious to one of ordinary skill to
modify the method of Shuck by utilizing [a] Ni-based superalloy MK4 as the
backer plate, as disclosed by Hoebel . . . in order to obtain a hybrid gas
turbine engine component having improved properties, as taught by Hoebel”
(Ans. 4–5; Final Act. 4).
The Examiner cites Pollock, Fernihough, and ASM–Joining to
establish that an MK4 Ni-based superalloy would inherently withstand high
temperatures and would inherently be non-weldable (Ans. 5–6; Final Act. 4–
5).
3. The Appellant’s Contentions
The Appellant contends that the Examiner’s construction of claim 1’s
recitation “formed portion” as reading on any number of deposited layers
that have been deposited over the high temperature base material is
erroneous (Appeal Br. 10). According to the Appellant, “the number of
deposited layers must be sufficient in number to additively manufacture the
formed portion, not the any number of deposited layers characterized by the
Examiner” (id.). Regarding Shuck, the Appellant argues that Shuck only
states that the backer plate can be made from a variety of materials but does
not disclose or suggest a high temperature, non-weldable material (id.). In
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addition, the Appellant argues that Shuck teaches repairing a component but
does not disclose or suggest fabricating a component (id.).
Regarding Hoebel, the Appellant acknowledges that Hoebel teaches
forming a hybrid component by additive manufacturing of a metallic powder
on a preform, which does not have to be the same material as the metallic
powder, wherein the metallic powder may be a high temperature Ni-based
alloy (id. at 10–11). The Appellant argues, however, that Hoebel does not
disclose or suggest removing the hybrid component with the deposited metal
and only a portion of the preform forming the hybrid component and that it
does not disclose or suggest removing both a formed portion of a component
and a first portion of a high temperature base material, wherein the
component is formed of the formed portion and the first portion of the high
temperature base material (id. at 11).
Furthermore, the Appellant argues that the Examiner fails to provide a
valid reason for combining Shuck and Hoebel because Shuck teaches a
repair process whereas the claimed method and Hoebel’s method are
directed to forming a component (id.). According to the Appellant, “one of
ordinary skill in the art would have [had] no reason to believe that the
material of the backer plate would affect the properties of the repaired
component and would [have found] no reason or advantage to use the
nickel-based superalloy MK4 material of Hoebel as the backer plate in the
process of Shuck” and that “[o]ne of ordinary skill in the art would [have
been] dissuaded from using a material like MK4 in Shuck, because it would
be relatively difficult to be separated into two portions with no taught
advantage” (id. at 11–12).

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4. Opinion
We have fully considered the Appellant’s arguments but find them
insufficient to identify reversible error in the Examiner’s rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
“During . . . original examination, the PTO must give claims their
broadest reasonable construction consistent with the specification.” In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Thus,
“we look to the specification to see if it provides a definition for claim terms,
but otherwise apply a broad interpretation.” Id. “As [our reviewing] court
has discussed, this methodology produces claims with only justifiable
breadth.” Id. See also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
2143, 2144–45 (2016) (explaining that the broadest reasonable interpretation
standard “helps ensure precision while avoiding overly broad claims, and . . .
help[s] members of the public draw useful information from the disclosed
invention and better understand the lawful limits of the claim”).
Although the Appellant argues that “the number of deposited layers
must be sufficient in number to additively manufacture the formed portion,
not the any number of deposited layers characterized by the Examiner”
(Appeal Br. 10), we find nothing in the claim language itself to support the
argument, as the Examiner explains (Ans. 13–14). See In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998) (The “name of the game is the claim”
and unclaimed features cannot impart patentability to claims); In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[The A]ppellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”).
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Nor does the Appellant direct us to any scope-limiting definition in
the Specification that a “formed portion” requires any particular number of
deposited layers (id.). Indeed, the portions of the Specification description
on which the Appellant relies do not place any limitations on the number of
layers but instead merely states that “[t]he structure formed by the additive
manufacturing method includes any suitable geometry” (Spec. ¶ 15).
Therefore, we discern no reversible error in the Examiner’s construction that
a “formed portion,” as recited in claim 1, is reasonably construed to be met
by any number of desired layers that are deposited over a high temperature
base material” (Ans. 3–4).
Next, we turn to Shuck. Shuck describes a material addition process
including coupling a plate to a gas turbine engine component and adding
material to the plate by direct laser deposition (Shuck, Abstract, Figs. 3a–5).
In one embodiment, the process involves removing a damaged portion (e.g.,
a cracked portion) from a component 58 and depositing material on a backer
plate 62 by building up a number of layers 64 to replace the removed portion
(id. at Abstract, ¶ 20). According to Shuck, the plate can be removed in
whole or part after the material has been added (id. at Abstract, ¶ 26).
Although Shuck does not explicitly teach that the backer plate 62 is a
high temperature, non-weldable base material, Shuck teaches that “[i]n one
form[,] the backer plate 62 is a weld backing plate, but many other forms are
contemplated” and that the backer plate 62 may be made from any variety of
materials (id. ¶¶ 17, 19). Thus, a person having ordinary skill in the art
would have drawn a reasonable inference that although a welded backer
plate may be used, a non-welded backer plate 62 is also contemplated. In re
Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of
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a reference, it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
Moreover, Hoebel teaches a process for forming a hybrid component
for gas turbines having optimized properties with increased productivity and
reduced cost per component compared to other known methods (Hoebel
¶¶ 2, 18). According to Hoebel, the powder used for the additive
manufacturing process, which does not necessarily have to be the same as
the material of a base material upon which the powder is deposited, may be a
Ni-based superalloy such as MK4, which the Examiner, inter alia, finds is
indistinct from a base material composition disclosed for the current
invention (Ans. 6 (compare Fernihough, col. 3, ll. 29–39, with Spec. ¶ 29)).
Therefore, Hoebel’s teachings would have reasonably indicated to a person
having ordinary skill in the art that the base material or preform may
alternatively be made from MK4 Ni-based superalloy. Preda, 401 F.2d at
826.
Thus, contrary to the Appellant’s allegation, we discern no reversible
error in the Examiner’s determination that a person having ordinary skill in
the art would have been prompted to combine Shuck and Hoebel in the
manner claimed by the Inventors. That is, the collective teachings in the
prior art would have prompted a person having ordinary skill in the art to
make Shuck’s backing plate 62 with Hoebel’s MK4 Ni-based superalloy—
i.e., a material that reasonably appears to be non-weldable and high
temperature resistant—with a reasonable expectation that a manufactured or
repaired component having optimized properties would be produced with
increased productivity and reduced component cost. KSR Int’l Co. v.
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Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.”); id. at 417 (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Accordingly, we find no basis to conclude that a person having
ordinary skill in the art would have been dissuaded from combining the
references in the manner claimed. In re Urbanski, 809 F.3d 1237, 1244
(Fed. Cir. 2016) (“Nothing in the prior art teaches that the proposed
modification would have resulted in an ‘inoperable’ process or a dietary
fiber product with undesirable properties.”).
We find no merit in the Appellant’s argument based on the notion that
Shuck is directed to a repair process rather than a manufacturing process.
First, Shuck discloses a repair method merely as an embodiment (Shuck,
Abstract (broadly disclosing “[a] material addition process . . . that includes
coupling a plate to a gas turbine engine component and adding material to
the plate”). Second, neither claim 1 nor Hoebel places any limitation on the
base material—i.e., neither claim 1 nor Hoebel excludes starting with a
damaged component that is repaired by additively adding material and then
removing some material to result in a manufactured component.
For these reasons, and those well-stated by the Examiner, we uphold
the Examiner’s rejections.

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IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–10, 13,
14, 17, 21
103 Shuck, Hoebel,
Pollock,
Fernihough, ASM–
Joining
1–3, 5–10,
13, 14, 17,
21

7–9 103 Shuck, Hoebel,
Pollock,
Fernihough, ASM–
Joining, Burd
7–9
11 103 Shuck, Hoebel,
Pollock,
Fernihough, ASM–
Joining, ASM–
Laser Cutting
11
12, 22 103 Shuck, Hoebel,
Pollock,
Fernihough, ASM–
Joining, Godfrey
12, 22
16 103 Shuck, Hoebel,
Pollock,
Fernihough, ASM–
Joining, Godfrey,
Rickenbacher
16
23 103 Shuck, Hoebel,
Pollock,
Fernihough, ASM–
Joining, Tamaki
23
Overall
Outcome
1–3, 5–14,
16, 17, 21–
23

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