GENERAL ELECTRIC COMPANY

Patent Trials and Appeals Board

Dec 10, 2020

2020000707 (P.T.A.B. Dec. 10, 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.
15/304,682 10/17/2016 Qiang LI 268930-9 5113
69742 7590 12/10/2020
GENERAL ELECTRIC COMPANY
c/o Trego, Hines & Ladenheim, PLLC
10224 Hickorywood Hill Avenue
Suite 202
Huntersville, NC 28078
EXAMINER
RUFO, LOUIS J
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
USPTO@DOCKETTRAK.COM
oc.prosecution@ge.com
patents@thlip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte QIANG LI, NICHOLAS JOSEPH KRAY,
MICHAEL W. PERETTI and TOD WINTON DAVIS
____________________

Appeal 2020-000707
Application 15/304,6821
Technology Center 1700
____________________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1–10, which constitute all the
claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).2
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as General Electric
Company. Appeal Brief (“Appeal Br.”) filed May 6, 2019, 3.
2 Our Decision additionally refers to the Specification (“Spec.”) filed
October 17, 2016, the Examiner’s Answer (“Ans.”) dated September 6,
2019, and the Reply Brief (“Reply Br.”) filed November 6, 2019.
Appeal 2020-000707
Application 15,304,682

2
The subject matter on appeal relates to a method for making a metallic
leading edge guard of the type having a nose with first and second wings
extending therefrom (see, e.g., claim 1). The Specification discloses that fan
blades for jet engines are susceptible to damage from the impact of foreign
objects, especially blades made of graphite fiber reinforced composite
material. Spec. ¶ 2. According to the Specification, it is known to provide
impact damage protection by bonding metallic guards to the leading edges of
composite fan blades. Id. ¶ 3. However, newer designs require such guards
to be thin and to be made of high-density alloys. Id. These requirements
make manufacture of leading edge guards via conventional machining or hot
creep forming difficult. Id. Problems also occur when electroforming
leading edge guards because proposed methods require excess material to
remain or require using a complex process. Id. ¶ 4. To address these issues,
the Specification discloses a method of manufacturing a metallic leading
edge guard via a combination of electroforming and conventional
machining. Id. ¶ 6.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix to the Appeal Brief.
1. A method for making a metallic leading edge guard of the
type having a nose with first and second wings extending
therefrom, the method comprising:
using a machining device to remove material from a
metallic blank to create a first half of the metallic leading edge
guard, the first half including a first portion of the nose and the
first wing, wherein the first portion of the nose includes an
interface surface; and
electroforming a second half of the leading edge guard
comprising a second portion of the nose and the second wing,
Appeal 2020-000707
Application 15,304,682

3
wherein the second half is joined to the first half at the interface
surface.

REJECTION ON APPEAL
The Examiner maintains, and Appellant requests our review of, the
rejection of claims 1–10 under 35 U.S.C. § 103 as unpatentable over
DuPree3 in view of Porter4 and Deal.5

B. DISCUSSION
The Examiner finds DuPree discloses a method for making a metallic
leading edge guard that includes forming a first half and electroforming a
second half. Ans. 3. However, the Examiner finds DuPree does not disclose
a machining operation to form the first half. Id.
The Examiner finds Porter discloses a method of making hollow
blades by milling a first half from a blank. Id. The Examiner finds Deal
teaches milling as an appropriate method for forming leading edge guards.
Id. The Examiner concludes it would have been obvious to machine the first
half of DuPree’s guard in view of Porter’s and Deal’s teachings because
machining is a recognized manufacturing process in forming hollow blades
and leading edge guards, and thus would have provided the predictable
result of forming a first half of a guard. Id. at 4. The Examiner also
concludes that machining would have provided the advantage of a
predictable and consistent formed product. Id.

3 DuPree, US 5,674,370, issued Oct. 7, 1997.
4 Porter et al., US 5,063,662, issued Nov. 12, 1991 (“Porter”).
5 Deal et al., US 2012/0301292 A1, published Nov. 29, 2012 (“Deal”).
Appeal 2020-000707
Application 15,304,682

4
Appellant argues that claim 1 recites machining a first half of a
leading edge guard and electroforming a second half of the leading edge
guard but none of the applied references disclose machining a first half and
electroforming a second half. Appeal Br. 7–9. Appellant asserts that the
references instead teach making first and second halves using a single
process and the Examiner has engaged in improper hindsight. Id. at 9.
Appellant’s arguments are persuasive. DuPree discloses a method of
protecting the edges of rotor blades by electroforming a first part of a
leading edge shield and electroforming a second part of the leading edge
shield on the first part. DuPree 1:7–10, 3:10–24. Thus, DuPree teaches
making an entire leading edge shield by electroforming each half of the
shield.
Porter discloses making hollow compressor blades by constructing a
blank for each half of a blade and diffusion bonding the two halves together.
Porter 1:63–2:8. Porter teaches its process provides “a smooth, accurate
final blade form with predictable and consistent metal flow during forming.”
Id. at 1:46–48. Therefore, Porter’s teachings, including advantages for
machining, regard a process that machines both halves of an entire
compressor blade.
Deal discloses a fan blade that includes an airfoil portion made from
an aluminum alloy and a sheath portion made from a high strength metallic
material. Deal ¶ 4. In the Answer, the Examiner finds “Deal explicitly
discloses that machining, i.e., milling, is an appropriate process by which to
produce a sheath, and that machining may be used in combination with other
Appeal 2020-000707
Application 15,304,682

5
processes of forming the sheath, including electroforming ([0081]).”6
Ans. 8. Deal’s paragraph 81 discloses that a sheath may be “fabricated using
one or more conventional metal processing techniques, such as casting,
forging, rolling, or machining.” Paragraph 81 further states that “[a]dditive
manufacturing methods such as direct metal laser sintering and electron
beam deposition can also be used to produce net or near net sheaths” and
“[c]ertain embodiments of sheath 34, such as those formed from nickel or
nickel-cobalt alloys, can be electroformed or diffusion bonded separately
from airfoil section 32.”7 Therefore, Deal’s paragraph 81 only suggests
alternative processes for making a sheath, not that machining can be used in
combination with other processes, including electroforming, to make a
sheath, as the Examiner finds in the Answer.
In addition, Deal’s paragraph 84, which the Examiner cites in the
rejection, teaches bonding a sheath to an airfoil and that “[p]reparation of

6 The Examiner also finds that Deal discloses electroforming as “a method to
reduce weight and the physical constraints with large thicknesses, and thus
actually allows for more design in the size of the sheath and weight savings
(rest of [0079]).” Ans. 7–8. Deal’s paragraph 79, however, discusses
repairing blades and that using a lower density metallic material in Deal’s
airfoil provides weight savings without sacrificing overall strength. This
provides some leeway for increasing Deal’s sheath in size and thickness,
which facilitates repair. Deal ¶ 79. Conversely, most titanium blades or
sheaths provide a limited amount of excess material for repairs due to the
inherent motivation to reduce weight and the physical restraints of making
sheaths with large thicknesses via processes like electroforming. Id.
Therefore, Deal’s paragraph 79 teaches that Deal’s process allows weight
savings and flexibility with the size of a sheath, not electroforming.
7 Throughout this Decision, for clarity, we present labels to elements in
figures in unbolded font, regardless of their presentation in the original
document.
Appeal 2020-000707
Application 15,304,682

6
sheath 34 as well as attachment surface 58 of airfoil body 32 can be done by
a combination of milling, chemical processing or other suitable means.”
This disclosure regards what processes may be used to prepare a sheath for
joining the sheath to Deal’s airfoil, not what processes are used to make the
sheath.
The Examiner concludes it would have been obvious to exchange
DuPree’s electroforming method for making one half of its leading edge
shield for another process because this would have been a predictable result,
there would have been an advantage of forming a predictable and consistent
product, and both processes had been recognized for its use in making
leading edge guards. Ans. 4, 8. However, as discussed above, the applied
references disclose making each half of a leading edge guard, shield, or
blade, via a single process. Therefore, the Examiner has not shown that the
proposed modification would have been a known or predictable result or that
it had been recognized in the art to make the halves for a leading edge guard
via different processes. Further, Porter teaches the advantages the Examiner
cites for machining in a process that machines both halves of a blade or
airfoil, not a leading edge guard.
As a result, the Examiner has not articulated sufficient reasoning with
some rational underpinning why it would have been obvious to modify
DuPree to machine a first half of a leading edge guard and electroform a
second half of the leading edge guard, as claim 1 recites. KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). When one considers the disclosures
of the applied references and these deficiencies, the Examiner’s conclusion
that the proposed combination would have resulted in the claimed invention
can only be viewed as being based on impermissible hindsight. Id. at 421
Appeal 2020-000707
Application 15,304,682

7
(citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
“temptation to read into the prior art the teachings of the invention in
issue”)); In re McLaughlin, 443 F.2d 1392, 1395, (CCPA 1971) (“Any
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure, such a reconstruction is proper.”).
For the reasons discussed above, we do not sustain the Examiner’s
§ 103 rejection of claims 1–10 as unpatentable over DuPree, Porter, and
Deal.

CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 1–10 under 35 U.S.C. § 103 is reversed.
In summary:

Claims
Rejected
35
U.S.C. § References/Basis Affirmed Reversed
1–10 103 DuPree, Porter, Deal 1–10

REVERSED