MTU Aero Engines AG

Patent Trials and Appeals Board

Jun 1, 2020

2019004488 (P.T.A.B. Jun. 1, 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.
14/948,526 11/23/2015 Karl-Hermann RICHTER 6570-P50260 3685
13897 7590 06/01/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
PATEL, DEVANG R
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARL-HERMANN RICHTER and HERBERT HANRIEDER
__________

Appeal 2019-004488
Application 14/948,526
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of
claims 1–20. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM.
Appellant’s invention is directed to a method for arranging a
reinforcement on a TiAl turbomachine engine component, such as a rotor
blade of a low-pressure turbine (Spec. 1:11–14). Turbine rotor blades may

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 MTU Aero
Engines AG (Appeal Br. 3).
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comprise cover shrouds, which lie adjacently against one another in an
engine (id. at 1:16–17; Fig. 1). The Specification describes that the adjacent
side faces of cover shrouds may have contact areas, which butt directly
against each other to dampen vibration (id. at 1:17–20; Fig. 1). According to
the Specification, a reinforcement arranged on these contact areas reduces
the amount of mechanical abrasion between the cover shrouds (id. at 1:20–
22; Figs. 1–4).
Claims 1 and 2 are illustrative (emphasis added):
1. A method for arranging a reinforcement on a TiAl
component of a turbomachine, wherein the method comprises
applying to the TiAl component a reinforcement in the form of
reinforcing molding by brazing, using as brazing filler metal a
nickel-base alloy which consist[s] of, based on a total weight of
the alloy, from 7.5 % to 22.5 % by weight Cr and from 0.5 % to
7 % by weight B, remainder Ni and unavoidable impurities.
2. The method of claim 1, wherein the nickel-base alloy
comprises from 10 % to 20 % by weight Cr and from 2 % to 5
% by weight B.
Appellant appeals the following rejections:
1. Claims 2–7 are rejected under 35 U.S.C. § 112(b) as indefinite for
failing to particularly point out and distinctly claim the subject matter
which the inventor or a joint inventor regards as the invention.
2. Claims 1–13 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Richter et al. (US 8,393,528 B2, issued Mar. 12,
2013) (“Richter”) in view of Daniels et al. (WO 2013/071909 A1,
published May 23, 2013, referencing the English language equivalent
US 2014/0308117 A1, published Oct. 16, 2014) (“Daniels”), and
further in view of Wall Colmonoy Corp. (USA), “NICROBRAZ®
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Special Purpose Filler Metals, Brazing Filler Metal Selector Chart”
(2013) (“Wall Colmonoy”).
3. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over
Richter in view of Daniels and Wall Colmonoy, and further in view of
Qu et al. (US 2010/0252146 A1, published Oct. 7, 2010) (“Qu”).
4. Claims 15–18 are rejected under 35 U.S.C. § 103 as unpatentable over
Richter in view of Daniels and Wall Colmonoy, and further in view of
Frost et al. (US 6,164,916, issued Dec. 26, 2000) (“Frost”).
5. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over
Richter in view of Daniels and Wall Colmonoy, and further in view of
Martin (US 2013/0119048 A1, published May 16, 2013).
With respect to the obviousness rejections, Appellant offers separate
arguments in support of independent claim 1 and dependent claim 15 (see
generally Appeal Br. 7–12, 14–15; Reply Br. 2–5). Appellant argues claims
1–20 as a group (Appeal Br. 7–15). Dependent claims 2–14 and 16–20 will
stand or fall with our analysis of independent claim 1. Claim 15 will be
discussed separately.
FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we affirm the Examiner’s rejections for the reasons presented by
the Examiner and add the following for emphasis.
A. Rejection of claims 2–7 as indefinite.
The Examiner finally rejected claims 2–7 under 35 U.S.C. § 112(b) as
indefinite because the open-ended language “‘the nickel-base alloy
comprises’” conflicts with the language “‘a nickel-base alloy which
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consist[s] of,’” as recited in claim 1 (Final Act. 3). Claims 2–7 ultimately
depend from claim 1. According to the Examiner, the dependent claims
each recite an “open-ended transitional term,” which “does not exclude
additional elements,” whereas claim 1 recites a “closed-end transitional
phrase (i.e.[,] excludes other elements in the nickel-base alloy)” (Ans. 4).
The Examiner concludes that claims 2–7 fail to “clearly set forth the metes
and bounds of the patent protection desired” because each claim recites
broad and narrow ranges (Final Act. 2; see also Ans. 4).
Appellant contests the Examiner’s rejection of claims 2–7 under 35
U.S.C. § 112(b) as indefinite as a group (Appeal Br. 6; Reply Br. 2).
Accordingly, we select dependent claim 2 as representative of the subject
matter rejected under 35 U.S.C. § 112(b) before us on appeal. 37 C.F.R.
§ 41.37(c)(1)(iv).
Appellant argues that dependent claim 2 incorporates all of the
limitations recited in independent claim 1 (Appeal Br. 6). Appellant argues
that the range recited in claim 2 is “narrower than [and inside] the
corresponding ranges recited in claim 1” (id.). Appellant contends that
claim 2 cannot “be broader in scope than claim 1,” pursuant to 35 U.S.C.
§ 112(d) (Reply Br. 2).
In the examination context, the relevant inquiry under 35 U.S.C.
§ 112(b) is “to determine whether the claims do, in fact, set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (emphasis
added) (pre-AIA statute); see also In re Packard, 751 F.3d 1307, 1310 (Fed.
Cir. 2014) (“[a] claim is indefinite when it contains words or phrases whose
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meaning is unclear”) (alteration in original); Ex parte McAward, 2017 WL
3669566, at *2–6 (PTAB Aug. 25, 2017) (precedential).
In this case, Appellant admits that due to the recitation of the term
“comprises,” claim 2 “would theoretically allow the additional presence of
elements which are different from those recited in claim 1” (Reply Br. 2,
compare with Ans. 4). In our view, the Examiner correctly determined that
claim 2 “does not clarify whether the nickel-base alloy is open-ended or
closed-ended” (Ans. 4). We, thus, conclude that claim 2 does not meet the
necessary thresholds of clarity and precision in describing and defining the
claimed invention. See McAward, 2017 WL 3669566 at *4 (explaining that
a “lower threshold [for ambiguity] makes good sense during patent
examination because the patent record is in development and not fixed, the
Office construes claims broadly during that period, and an applicant may
freely amend claims”).
We, therefore, affirm the indefiniteness rejection of claims 2–7. 37
C.F.R. § 41.37(c)(1)(iv).
As set forth above, Appellant argues for reversal of the obviousness
rejections based on limitations recited in claims 1 and 15 (Appeal Br. 7–15).
The Examiner has not rejected these claims under 35 U.S.C. § 112(b) as
indefinite. We exercise our discretion to review the obviousness rejections
due to the particular facts of and issues presented by this case. See Ex parte
Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991) (exercising discretion to
reach art rejections despite indefiniteness where nature of the case
permitted). We address the § 103 rejections below.
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B. Rejection of Claims 1–13 and 20 as unpatentable over the
combination of Richter, Daniels, and Wall Colmonoy.
With respect to claim 1, the Examiner’s findings and conclusions
regarding Richter, Daniels, and Wall Colmonoy are located on pages 3–5 of
the Final Office Action and pages 5–9 of the Answer.
The Examiner finds that Richter teaches or suggests applying a
reinforcement to a TiAl turbine blade component by brazing a nickel-base
alloy, such as AMS 4777, at about 1050°C (Ans. 6).
The Examiner finds that Daniels teaches or suggests armoring TiAl
turbomachine and aircraft engine components by brazing a nickel-base alloy,
such as AMS 4777, at about 1000–1080°C (id.).
The Examiner finds that Wall Colmonoy discloses commercially
known nickel-base alloys brazing materials, which confer good strength to
jet engine parts and highly stressed components (id.). The Examiner finds
that Wall Colmonoy discloses Nicrobraz® 150 alloy brazing material, which
is made of 15% Cr, 3% B, 0.06% max C, and balance Ni, and brazed at
1065–1205°C (id.).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time of the invention to have selected a
suitable nickel-base alloy brazing material, such as Nicrobraz® 150, for use
in Richter’s method because nickel-base alloys are commonly known for
brazing TiAl turbomachine parts and would have conferred good strength at
a lower brazing temperature (Final Act. 5).
Appellant argues that claim 1 requires that “the nickel-base alloy used
as brazing filler metal consists of, based on the total weight of the alloy,
from 7.5 % to 22.5 % by weight Cr and from 0.5 % to 7 % by weight B,
remainder Ni and unavoidable impurities” (Appeal Br. 8). Appellant
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contends that the nickel-base alloys disclosed in Richter and Daniels contain
iron and silicon, which cannot qualify as the claimed “unavoidable
impurities” (id. at 8–9). Appellant concludes that neither Richter nor
Daniels teach the claimed nickel-base alloy used as a brazing filler metal (id.
at 8).
Appellant’s argument is not persuasive because the Examiner does not
rely on Richter or Daniels to teach the claimed nickel-base alloy (Ans. 11).
Rather, the Examiner finds that Wall Colmonoy’s Nicrobraz® 150 “meets
the claimed nickel-base alloy” (Final Act. 4 (citing Wall Colmonoy 2)
(emphasis omitted)).2 Appellant’s argument attacks Richter and Daniels
individually instead of addressing what the combined teachings of Richter,
Daniels, and Wall Colmonoy would have suggested to the ordinarily skilled
artisan. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
Appellant argues that the rejection of claim 1 should be reversed
because Richter teaches away from the Examiner’s proposed combination
with either Wall Colmonoy or Daniels (see generally Appeal Br. 9–11).
Appellant specifically argues Richter teaches that a brazing
temperature no higher than about 900°C is advantageous because TiAl
cannot tolerate higher brazing temperatures (id. at 9). Appellant contends
that brazing at Richter’s recommended temperature range is facilitated by

2 Appellant does not dispute the Examiner’s finding regarding Wall
Colmonoy (Appeal Br. 10 (“Nicrobraz® 150 for brazing TiAl materials . . .
are [sic, is] recited in the instant claims”)).
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the inclusion of a high content of noble metals in the nickel-base alloy (id.).
In view of Richter’s disclosure, Appellant argues that one of ordinary skill in
the art would have been led away from using Daniels’ nickel-base alloys,
which are free of noble metals (id.)
Appellant also contrasts Richter’s recommended brazing temperature
range with Wall Colmonoy’s temperature range for Nicrobraz® 150, namely
1065–1205oC (id. at 10). In other words, Appellant argues that the
ordinarily skilled artisan would have been led away from using Nicrobraz®
150 because it requires brazing temperatures that exceed Richter’s
recommended brazing temperatures (id.).
Teaching away requires that a reference “criticize, discredit, or
otherwise discourage the solution claimed” by Appellant. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). In this case, the Examiner explains that
Richter discloses, inter alia, two alternative brazing options: (i) one using an
intermediate foil or plate layer and (ii) another which does not use an
intermediate layer (id. at 5 (citing Richter 2:1–31; Figs. 2, 3)).
Appellant’s arguments focus on Richter’s intermediate layer option,
which employs a nickel-base alloy with a high content of noble metal brazed
at a temperature equal to or less than 900°C (Richter 2:11–17; Fig. 3). The
Examiner, however, does not rely on this option (Ans. 6). Rather, the
Examiner relies on Richter’s method in which no intermediate layer is
present and, consequently, noble metals are not required in the nickel-base
alloy material (id. (citing Richter 3:26–33; Fig. 2)). Thus, we are not
persuaded that Richter would have led the ordinarily skilled artisan away
from using nickel-base alloys, which are free of noble metals, such as
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Richter’s and Daniels’ AMS 4777 (Daniels ¶ 14) and Wall Colmonoy’s
Nicrobraz® 150 (Wall Colmonoy 2).
We, furthermore, agree with the Examiner that Richter’s non-
intermediate layer option, with a brazing temperature of about 1050°C, does
not discourage one of ordinary skill in the art from brazing at a temperature
greater than 900°C (Ans. 6).
Appellant, however, particularly argues that Richter “clearly teaches
away from using Nicrobraz® 150 for brazing TiAl materials” because
Richter discloses that, “even for only a short period of time[,] the brazing
temperature of a [TiAl] material should not be higher than 1050 °C” to avoid
base material damage (Appeal Br. 10). According to Appellant, one of
ordinary skill in the art would have concluded that satisfactory results are
usually achieved at Wall Colmonoy’s suggested Nicrobraz® 150 brazing
temperature of 1175°C (id.; Reply Br. 4). Appellant argues that 1175°C is
“a significantly higher temperature” than the lower end of Nicrobraz® 150’s
brazing temperature range, i.e., 1065°C, and not within Richter’s
recommend brazing temperature of about 1050°C for only a short time
period (Reply Br. 4; see also Appeal Br. 11).
We are not persuaded by these arguments.
Wall Colmonoy’s suggested brazing temperature of 1175°C does not
detract from Wall Colmonoy’s broader teaching to braze Nicrobraz® 150 at
a temperature range of 1065–1205°C. In re Fritch, 972 F.2d 1260, 1264
(Fed. Cir. 1992) (explaining that “[i]t is well settled that a prior art reference
is relevant for all that it teaches to those of ordinary skill in the art”)). All
disclosures of a reference including non-preferred embodiments must be
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considered in the obviousness analysis. In re Lamberti, 545 F.2d 747, 750
(CCPA 1976).
Richter, furthermore, does not criticize or discourage brazing at
temperatures higher than about 1050°C for a short time period (see also
Adv. Act. 3 (explaining that the ordinarily skilled artisan would have
appreciated that a “brazing temperature of 1065 °C is very close to ‘about
1050 °C’ permitted by Richter”)). Richter does not indicate that “the line of
development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). Therefore, we do not find that Richter teaches away
from applying a reinforcement to a TiAl turbine blade component by brazing
Wall Colmonoy’s Nicrobraz® 150 at 1065–1205oC for a short time period.
Appellant argues that Richter, Daniels, and Wall Colmonoy disclose
other braze materials, which use a much lower brazing temperature and are
readily available (Appeal Br. 12). Appellant argues that selecting any of
these other braze materials would have avoided the risk that brazing with
Nicrobraz® 150 at 1065°C for a short period of time results in: (i) damaging
the TiAl base material and (ii) incompletely and insufficiently brazing
Richter’s reinforcement to the TiAl material (id.).
A person of ordinary skill in the art, however, would have understood
and weighed the tradeoff of base material damage and insufficient brazing
with the benefits. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the
expense of another benefit, . . . should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”). As
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set forth above, the Examiner finds that brazing Nicrobraz® 150 confers the
benefit of good strength to jet engine parts and highly stressed components
(Final Act. 6).
We, thus, agree with the Examiner that one of ordinary skill in the art
at the time of the invention would have understood that Richter’s
reinforcement can be sufficiently brazed onto a TiAl turbine blade
component, at a temperature range from about 1000–1200°C, depending on
the specific nickel-base alloy used as braze material (Ans. 7). Therefore,
Appellant’s arguments fail to show reversible error in the Examiner’s
conclusion that it would have been obvious to carry out such brazing using
the claimed nickel-base alloy as a braze material (id. at 8).
Thus, based on a preponderance of evidence in this record, we affirm
this rejection of claims 1–13 and 20. 37 C.F.R. § 41.37(c)(1)(iv).
C. Rejection of claim 14 as unpatentable over the combination of
Richter, Daniels, Wall Colmonoy, and Qu.
Appellant argues that the rejection of claim 14 as unpatentable over
the combination of Richter, Daniels, Wall Colmonoy, and Qu should be
reversed because the Examiner has not established a prima facie case of
obviousness with respect to independent claim 1 (Appeal Br. 13). As
discussed above, we have affirmed the rejection of claim 1. We, therefore,
also affirm the rejection of claim 14.
D. Rejection of claims 15–18 as unpatentable over the combination of
Richter, Daniels, Wall Colmonoy, and Frost.
Appellant argues that the rejection of claims 15–18 as unpatentable
over the combination of Richter, Daniels, Wall Colmonoy, and Frost should
be reversed because the Examiner has not established a prima facie case of
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obviousness with respect to independent claim 1 (id. at 14). As discussed
above, we have affirmed the rejection of claim 1. We, therefore, also affirm
the rejection of claims 16–18. We address the § 103 rejection of claim 15
below.
1. Claim 15
With respect to claim 15, the Examiner’s findings and conclusions
regarding Richter, Daniels, Wall Colmonoy, and Frost are located on page 7
of the Final Office Action and page 9 of the Answer.
Claim 15 is illustrative (emphasis added):
15. The method of claim 1, wherein the TiAl component is
provided with a pocket which is at least partially
complementary to the reinforcing molding.
The Examiner finds that Frost is “directed to brazing [a] wear-
resistant hardfacing material to [a] shrouded turbine blade” (Final Act. 7).
The Examiner finds that Frost teaches or suggests a pre-braze cleaning of an
intended mating face of shroud 10 to which an alleged reinforcing molding,
i.e., hardfacing preform 28, is subsequently brazed (id.) The Examiner finds
that Frost’s intended mating face “is machined by milling or grinding and
nickel-blasted to roughen the surface to assist with bonding” (id.).
The Examiner determines that it would have been obvious to a person
of ordinary skill in the art at the time of the invention “to perform [a] pre-
braze cleaning treatment similar to Frost in the method of Richter in order to
assist with subsequent bonding” (id.). The Examiner construes the instant
claim as not limiting the recited “pocket” to any specific structure or size
(Ans. 9). The Examiner finds that Frost’s machining and blasting treatment
creates at least one pocket or cavity on the component’s surface that is at
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least “partially complementary” to the reinforcing body’s surface, as
required by claim 15 (id.)
Appellant argues that Frost neither teaches nor suggests “a pocket
which is at least partially complementary to the reinforcing molding”
(Appeal Br. 14). Appellant contends that the Examiner has not shown that
the disputed limitation is necessarily present in Frost’s disclosure or
naturally results from the Examiner’s proposed combination of Richter,
Daniels, Wall Colmonoy, and Frost (Reply Br. 5).
Appellant’s arguments are misplaced because they fail to address the
Examiner’s broadest reasonable interpretation of the claim term “pocket.”
“During examination ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted). The best
source for understanding a technical term is the specification from which it
arose, informed, as needed, by the prosecution history. Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). Dictionary definitions may be
used in tandem with the specification and prosecution to enlighten the
broadest reasonable interpretation of a claim term. In re Trans Tex.
Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007).
Our review of the Specification reveals that the claimed pockets are
not limited to any particular structure or size (Spec. 8:18–20 (“[t]he pockets
16 may have a form that is at least partially complementary to the form of
the reinforcing moldings 10, in particular a concave curvature 17”)
(emphasis added)). Otherwise, the Specification does not provide any
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special meaning for the claim term “pocket.” Furthermore, the Webster’s
New World College Dictionary defines “pocket” as “a cavity that holds or
can hold something.”3 Accordingly, “pocket,” construed in the absence of a
special meaning from the Specification and understood by the plain meaning
of that word, encompasses any cavity capable of holding something.
Therefore, in the context of a TiAl component, the dictionary definition
further supports the Examiner’s position that a “pocket” encompasses a
cavity created by Frost’s machining and blasting treatment on the
component’s surface that is at least partially complementary to the
reinforcing body’s surface. Thus, we agree with the Examiner that Frost’s
pre-braze treatment necessarily results in the formation of at least one pocket
within the meaning of claim 15.
E. Rejection of claim 19 as unpatentable over the combination of
Richter, Daniels, Wall Colmonoy, and Martin.
Appellant argues that the rejection of claim 19 as unpatentable over
the combination of Richter, Daniels, Wall Colmonoy, and Martin should be
reversed because the Examiner has not established a prima facie case of
obviousness with respect to independent claim 1 (Appeal Br. 15). As
discussed above, we have affirmed the rejection of claim 1. We, therefore,
also affirm the rejection of claim 19.

3 Webster’s New World College Dictionary (2014) available at
https://www.yourdictionary.com/pocket.
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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–7 112(b) Indefiniteness 2–7
1–13, 20 103 Richter, Daniels, Wall Colmonoy 1–13, 20
14 103
Richter, Daniels,
Wall Colmonoy,
Qu
14
15–18 103
Richter, Daniels,
Wall Colmonoy,
Frost
15–18
19 103
Richter, Daniels,
Wall Colmonoy,
Martin
19
Overall
Outcome 1–20
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