Michael Espinoza

Patent Trials and Appeals Board

Jul 23, 2019

14613404 - (D) (P.T.A.B. Jul. 23, 2019)

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.
14/613,404 02/04/2015 Michael Espinoza 79234US01;
67097-3144PUS1
1919
54549 7590 07/23/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
VENKATESAN, UMASHANKAR
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL ESPINOZA1
____________

Appeal 2019-001310
Application 14/613,404
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael Espinoza (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–6 and 8. Appeal Br. 3; see also
Final Act. 1 (rejecting only claims 1–6 and 8).
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 According to Appellant, the real party in interest is United Technologies
Corporation. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to balancing a rotor disk, such as a rotor
disk for a gas turbine engine. Spec. ¶ 1. Claim 1 is the sole independent
claim on appeal before us. Appeal Br. 1. Claim 1 is illustrative and
reproduced below, with emphasis added to a limitation discussed in this
Decision.
1. A gas turbine engine rotor disk comprising:
a web that extends inward in a radial direction from a rim
to a bore that circumscribes an axis;
an annular ridge extends axially from side of the web;
and
a balancing cut in the annular ridge that includes a fillet
extending in the radial direction, wherein the annular ridge
circumscribes the axis substantially 360°, wherein the annular
ridge is proud of a generally planar surface of the web.
Id. at 5 (Claims App.) (emphasis added).

THE REJECTIONS
The Examiner rejected:
(a) Claims 1–3, 5, and 8 under 35 U.S.C. § 103(a) as unpatentable
over Pronovost (US 2013/0086805 A1, published Apr. 11, 2013)
and Stone (US2013/0209260 A1, published Aug. 15, 2013). Final
Act. 2.
(b) Claims 4 and 6 under 35 U.SC. § 103(a) as unpatentable over
Pronovost, Stone, and Bifulco (US 8,287,242 B2, issued Oct. 16,
2012). Final Act. 3.

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ANALYSIS
I. Claims 1–3, 5, and 8 Rejected Under Pronovost and Stone
Appellant contests the rejection of claims 1–3, 5, and 8 collectively.
Appeal Br. 3–4. We select claim 1 as representative, treating claims 2, 3, 5,
and 8 as standing or falling with representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

A. Examiner’s Rejection
In rejecting claim 1, the Examiner relies on Pronovost for disclosing a
gas turbine engine rotor, citing to its Figure 1. Final Act. 2. We reproduce
Pronovost’s Figure 1, below:

According to the Examiner, and as shown above in Pronovost’s
Figure 1, Pronovost discloses a gas turbine engine rotor disk comprising,
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inter alia, web 20 that extends inward in a radial direction from rim 26 to
bore 18, which circumscribes an axis, and annular ridge 40 that extends
axially from either side of web 20. Final Act. 2 (referencing also Figure 2 of
Pronovost).
The Examiner also finds that Pronovost discloses “that the rotor can
be balanced by removing material from the ridge to reduce stress,” but does
not disclose “the location or the shape of the material remov[ed].” Id. at 3;
see also Ans. 4 (“Pronovost . . . disclose[s] that the material removal is by a
suitable technique”). Notably, although the Examiner finds that Pronovost
discloses a “balancing cut,” the Examiner finds that Pronovost does not
disclose a balancing cut “that includes a fillet,” as required by claim 1. See
Final Act. 3.
To satisfy the claimed “fillet,” the Examiner relies on Stone for
disclosing fillet-shaped cuts, referencing Stone’s Figures 3 and 5. Id. We
reproduce Stone’s Figure 5, below:

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According to the Examiner, and as shown above in Stone’s Figure 5,
Stone discloses fillet-shaped balancing cuts, namely, stress shielding
scallops 50, which are between tabs 52 (or 52’) on annular rim 24. See id.;
see also Ans. 5 (“Stone teaches a method of balancing a rotor by removing
material from an annular rim [24] thereby creating circumferentially spaced
tabs [52] with a fillet between the tabs”).
In combining Pronovost with Stone, the Examiner reasons that a
skilled artisan would have “adapt[ed] the Stone teaching of removing
material by machining spaced apart filets [sic] in the annular ridge to the
rotor disclosed by Pronovost . . . in order to provide a location and shape of
material removal and reduce stress on the rotor during balancing.” Final
Act. 3.

B. Analysis
In contesting the rejection of claim 1, Appellant presents several
arguments, which we address separately, below. See Appeal Br. 3–4; see
also Reply Br. 1–2.
First, Appellant asserts that “Pronovost already includes slots 48
designed to relieve stress.” Appeal Br. 3 (citing Pronovost ¶ 22). Appellant
argues, “Nothing in Pronovost or Stone suggest that Stone’s scallops 50
relieve stress better than Pronovost’s slots [48].” Id. Appellant contends
that a skilled artisan “beginning from Pronovost’s design would be more
likely to rely on the geometry of Pronovost’s slots 48 for reducing stress
than to look elsewhere.” Id.
Appellant’s first argument is not persuasive, as it presumes incorrectly
that Pronovost’s stress-reducing slots 48 are used to eliminate stress in lieu
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of its balancing cuts. Although Appellant is correct in that Pronovost
discloses that its “slots 48 are configured to act as stress relieving slots,”
these stress reducing slots are used “to prevent the internal stresses due to
the material removal in the sacrificial provisions 46.” Pronovost ¶ 22
(italicized emphasis added). Stated differently, Pronovost does not disclose
that its stress-reducing slots 48 exist to eliminate the need for stress reducing
cuts. To the contrary, Pronovost explains that its slots 48 exist to remove
stress created from the balancing cuts, that is, the cuts within sacrificial
provisions 46. See id.
As explained by the Examiner in its Answer, Pronovost discloses that
the material removed from its sacrificial protrusions 46—the claimed
“balancing cuts”—is “permanently removed from one or more of the
sacrificial protrusions 46 during a balancing operation using a suitable
technique.” Ans. 4 (quoting Pronovost ¶ 23). Pronovost further discloses,
For instance, one can chose to drill an axially-extending bore
through one of the sacrificial protrusions 46 and/or remove
surface material entirely or partially from the end face 44a
thereof. Material removal may involve mechanical machining
or non-mechanical techniques, as desired, as will be
appreciated by a person skilled in the art, and therefore the
material removal step needs not be discussed in further detail.
Material removal may be confined to the zone axially delimited
by the end face 44a of the appendage 40 and by a radially-
extending plane coincident with the bottom ends 48a of the
slots 48 (i.e. the deepest point of each slot 48), and further may
be confined to a suitable distance away from said plane,
indicated in FIG 3 by the imaginary line 50 that is closer to the
free end 44a than from the plane defined by the bottom ends
48a of the slots 48, to provide for a desired safety margin or
safety zone.
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Pronovost ¶ 23 (italicized emphases added). To further illustrate that which
Pronovost itself teaches, we reproduce its Figure 3, below:

Pronovost Figure 3, shown above, depicts an enlarged view showing
sacrificial protrusions 46 on scalloped appendage 40. Pronovost ¶ 21.
Pronovost explains that the “size and shape of the sacrificial protrusions 46
are chosen so as to provide the possibility of balancing the rotor disc
assembly 10 in the worst possible imbalance scenario” and can “also be
designed to provide the possibility of carrying out one or more additional
balancing operations where one or more protrusions 46 will have some of
their material removed even if some of it was already removed during a
previous balancing.” Id. (italicized emphasis added).
In other words, and as explained correctly by the Examiner, Pronovost
itself discloses “that the material removal is by a suitable technique and the
removal is confined to the protrusions (46, Fig. 3) between the end face 44a
and the plane indicated by reference 50 in figure 3.” Ans. 4. We agree with
the Examiner and adopt the Examiner’s findings and reasoning as our own
that a skilled artisan would have turned to Stone’s fillet-shaped balancing
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cuts “as a suitable technique for balancing the rotor disclosed by Pronovost.”
Id. at 5.
Second, Appellant asserts that “neither Pronovost nor Stone discloses
‘an annular ridge extends axially . . . wherein the annular ridge is proud of a
generally planar surface of the web’ as claimed.” Appeal Br. 3. Appellant
contends that the Examiner “did not identify a ‘generally planar surface.’”
Id. at 4.
We disagree.
In the Answer, the Examiner submitted an annotated version of
Pronovost’s Figure 1 to illustrate the claimed “generally planar surface.”
Ans. 5–6. We reproduce the Examiner’s annotated version of Pronovost’s
Figure 1, below:

According to the Examiner, and as shown above in the annotated
version of Pronovost’s Figure 1, Pronovost discloses a “generally planar
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surface” with an “annular ridge” 40 that is proud of the planar surface. Id. at
5–6. The Examiner reasonably construes the claimed “proud of” to mean
“protruding” and finds correctly that Pronovost’s annular ridge 40 protrudes
from its “generally planar surface” and that “the annular ridge (40, Fig. 1) is
farther than the . . . generally planar surface web surface.” Id. at 5.
Third, in its Reply Brief, Appellant argues that Pronovost teaches
away from the proposed combination, as “Pronovost teaches the benefits of
its slots, while nothing in the record provides a reason to modify Pronovost
with Stone’s scallops.” Reply Br. 2 (quoting Ricoh, Co., Ltd. v. Quanta
Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)).
Appellant’s third argument also fails to persuade us of Examiner
error.
Even if Pronovost discloses that its slots 48 relieve stress caused by
material removed from sacrificial protrusions 46 (see Pronovost ¶ 23),
Appellant cites nothing—and we find nothing—in Pronovost that criticizes,
discredits, or otherwise discourages the use of scalloped or fillet-shaped
cuts, as taught by Stone. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed”). As explained above, Appellant’s argument is premised on a
misunderstanding that Pronovost’s slots 48 eliminate stress in lieu of its
balancing cuts, when in fact they co-exist to “prevent the internal stresses
due to the material removal in the sacrificial protrusions 46.” Pronovost
¶ 22. To reiterate, Pronovost itself discloses that its protrusions 46 may
“have some of their material removed even if some of it was already
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removed during a previous balancing,” (id. ¶ 21), and we agree with the
Examiner’s reasoning that a skilled artisan would have turned to Stone’s
fillet-shaped balancing cuts in rebalancing Pronovost’s rotor.
For the foregoing reasons, we affirm the rejection of claim 1, and
claims 2, 3, 5, and 8, which fall with claim 1, as unpatentable over Pronovost
and Stone. We also adopt as our own the Examiner’s findings and reasoning
as set forth in the Final Office Action and Answer.

II. Claims 4 and 6 Rejected Under Pronovost, Stone, and Bifulco
Claims 4 and 6 depend directly from claim 1 and the Examiner relies
on Bifulco for satisfying these claims’ additional limitations. See Final Act.
3 (citations omitted).
In contesting this rejection, Appellant relies on the same arguments
discussed supra pertaining to independent claim 1. Appeal Br. 3–4.
For the same reasons Appellant’s arguments contesting the rejection
based on Pronovost and Stone are unpersuasive, Appellant’s arguments
contesting the rejection of claims 4 and 6 based on Pronovost, Stone, and
Bifulco are also unpersuasive. Accordingly, we affirm the rejection of
claims 4 and 6 as unpatentable over Pronovost, Stone, and Bifulco.

SUMMARY
We affirm the rejection of claims 1–3, 5, and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Pronovost and Stone.
We also affirm the rejection of claims 4 and 6 under 35 U.SC.
§ 103(a) as unpatentable over Pronovost, Stone, and Bifulco.

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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