MTU Aero Engines AG

Patent Trials and Appeals Board

Jul 2, 2021

2020006108 (P.T.A.B. Jul. 2, 2021)

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.
15/016,033 02/04/2016 Steffen Schlothauer 5038.1233 7738
23280 7590 07/02/2021
Davidson, Davidson & Kappel, LLC
589 8th Avenue
22nd Floor
New York, NY 10018
EXAMINER
DELRUE, BRIAN CHRISTOPHER
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFFEN SCHLOTHAUER, THOMAS HESS, CHRISTIAN
LIEBL, RICHARD SCHARL, DANIEL KIRCHNER, and
ALEXANDER BUCK
Appeal 2020-006108
Application 15/016,033
Technology Center 3700
Before STEFAN STAICOVICI, BRETT C. MARTIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “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 Brief (“Appeal Br.”) 2, filed May 8, 2020.
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Application 15/016,033
2
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a gas turbine component for a
gas turbine . . . in particular an aircraft gas turbine, including the casing part,
and to methods for manufacturing and repairing the gas turbine component.”
Spec. ¶ 2. Claim 1, reproduced below (with indentations added), is
illustrative of the claimed subject matter:
1. A gas turbine component for a gas turbine, the gas turbine
component comprising:
a shell portion, the shell portion having an abradable
portion to allow rotor blade ends of a rotor blade array of the gas
turbine to rub into the abradable portion, the abradable portion
having two axial sides spaced axially, the abradable portion
adjoining a neighboring portion of the shell portion axially at
both axial sides, the abradable portion and the neighboring
portion being additively manufactured together by locally
solidifying both the abradable portion and the neighboring
portion material together in each layer of a layer-by-layer
structure,
the abradable portion having at least one of the following:
a lower surface hardness than the neighboring
portion;
a lower density than the neighboring portion;
the abradable portion being porous, the abradable
portion having a larger maximum, minimum or average
pore size than the neighboring portion; and
the abradable portion and the neighboring portion
containing different materials.
REJECTIONS
I. Claims 1, 3–6, 8–10, and 12–15 stand rejected under 35 U.S.C. § 103
as unpatentable over Lee (US 2014/0199163 A1, published July 17, 2014)
and Dietrich (US 2015/0048553 A1, published Feb. 19, 2015).
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Application 15/016,033
3
II. Claim 2 stands rejected under 35 U.S.C. § 103 as unpatentable over
Lee, Dietrich, and Adaickalasamy (US 2013/0236293 A1, published Sept.
12, 2013).
III. Claims 7 and 11 stand rejected under 35 U.S.C. § 103 as unpatentable
over Lee, Dietrich, and Schuster (US 2016/0146034 A1, published May 26,
2016).
IV. Claims 16–20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Lee, Dietrich, Lilly (US 2010/0030365 A1, published Feb. 4, 2010),
and Langenbrunner (US 5,662,757, issued Sept. 2, 1997).
ANALYSIS
Obviousness over Lee and Dietrich
Claims 1, 3–6, 8–10, and 12–15
The Examiner relies on the teachings of Lee for all the limitations of
claim 1 except “the abradable portion and the neighboring portion being
additively manufactured together by locally solidifying both the abradable
portion and the neighboring portion material together in each layer of a
layer-by-layer structure”. Final Act. 6–9; see also Appeal Br. 9 (Claims
App.).2 The Examiner relies on the teachings of Dietrich for this limitation.
In particular, the Examiner finds that “Dietrich teaches a method and device
for additively manufacturing two different surfaces (see Paragraph [0035])
with different materials (see Paragraph [0033]), by forming a plurality of
layers contemporaneously (see Paragraph [0042]) with the expected result of
increasing manufacturing efficiency and cost efficiency (see Paragraph
[0006]).” Final Act. 9.

2 Final Office Action (“Final Act.”), dated Oct. 28, 2019.
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Appellant contends that “[t]here is no teaching [in Dietrich] of ‘the
abradable portion and the neighboring portion being additively
manufactured together by locally solidifying both the abrada[b]le portion
and the neighboring portion material together in each layer of a layer-by-
layer structure.’” Appeal Br. 6; see also id. at 4–5; Reply Br. 6–7.3 In
particular, Appellant contends that “Dietrich at most teaches additive
manufacturing of generic aerospace-parts” and that “Dietrich does not make
the additive manufacture of any and all aerospace parts with different shapes
or materials obvious.” Reply Br. 6; Appeal Br. 5; see also id. at 4. As such,
Appellant contends that “[t]he present invention simply would not have been
obvious in view of Dietrich’s teachings, which truly are generic to the
aerospace industry and its parts of different shapes and materials.” Appeal
Br. 6.
We agree with Appellant that Dietrich does not disclose the limitation
for which it is relied upon. Although Dietrich discloses a system capable of
additively manufacturing a product using a variety of materials (Dietrich
¶ 33), contrary to the Examiner’s assertion, Dietrich does not teach or
suggest additively manufacturing portions of the product using different
materials contemporaneously, that is, “portion[s] being additively
manufactured together.” See Final Act. 8–9; see also Appeal Br. 4; id. at 9
(Claims App.); Dietrich, passim. Rather, Dietrich discloses the use of only a
single material source (292) for supplying the additive-manufacturing head
(208). Dietrich ¶51. There is no suggestion in Dietrich of a second material
source or that the additive-manufacturing head could manufacture portions
of the product using the same material, but with different properties such as

3 Reply Brief (“Reply Br.”), filed Aug. 25, 2020.
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the hardness, density, or porosity, as recited in claim 1. See id., passim. The
Examiner’s citation to “two different surfaces” and “forming a plurality of
layers contemporaneously” in Dietrich are related to a discussion of surface
processing occurring after the additive-manufacturing head has formed the
layers. See Final Act. 8–9; see also Dietrich ¶¶ 35, 42. Therefore, the
Examiner’s position as to what Dietrich teaches is unsupported by the
applied art.
In the Answer, the Examiner appears to take a different position
regarding how the claim limitation should be interpreted. Ans. 6.4 In
particular, citing to Appellant’s Specification, the Examiner takes the
position that the limitation should be construed as additively manufacturing
the abradable portion to an already existing neighboring portion of the gas
turbine. See id. at 6–7 (citing Spec. ¶¶ 5, 9, 14, 34)
As correctly pointed out by Appellant, the Examiner’s construction
clearly ignores both limitations in the claim and the intent of the invention
disclosed in the Specification. Reply Br. 6.5 First, we agree with Appellant
that none the passages cited by the Examiner “support the Examiner’s
position.” Id. For example, there is nothing in the cited passages of the
Specification “that indicate[s] that the ‘neighboring portion 3’ of the shell
segment is formed at the same time as the rest of the shell segment, as
opposed to being additively manufactured later either over an existing part
of the shell segment or bonded thereto.” Id.; see also Spec. ¶¶ 5, 9, 14, 34.
Nor is there anything in the cited passages of the Specification that “would

4 Examiner’s Answer (“Ans.”), dated June 25, 2020.
5 Reply Brief (“Reply Br.”), filed Aug. 25, 2020.
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suggest that the remainder of the shell segment could not itself be additively
manufactured.” Id.; see also Spec. ¶¶ 5, 9, 14, 34.
Second, we agree with Appellant that the Examiner’s construction
ignores the use of the term “together” in the limitation, i.e., “the abradable
portion and the neighboring portion being additively manufactured together
by locally solidifying both the abradable portion and the neighboring portion
material together in each layer of a layer-by-layer structure” Id.; see also
Appeal Br. 9 (Claims App.) (emphasis added). Claims are construed with an
eye toward giving effect to all terms in the claim. See Stumbo v. Eastman
Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim
constructions which render phrases in claims superfluous). One skilled in
the art cannot rationally arrive at a reasonable construction that the
neighboring portion is manufactured before the abradable portion when the
limitation clearly sets forth that they are manufactured together by
solidifying both portions together. See Appeal Br. 9 (Claims App.).
Therefore, the claim construction presented by the Examiner in the Answer
is unreasonable in light of Appellant’s Specification and the plain language
of the claim.
For the forgoing reasons, we do not sustain the Examiner’s rejection
of claims 1, 3–6, 8–10, and 12–15 as unpatentable over Lee and Dietrich.

Obviousness over Lee, Dietrich, and any of Adaickalasamy, Schuster,
Lilly, or Langenbrunner
Claims 2, 7, 11, and 16–20
Claim 16 is directed to a method “for repairing the gas turbine
component as recited in claim 1.” Appeal Br. 11 (Claims App.). The
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Examiner does not rely on the teachings of Adaickalasamy, Schuster, Lilly,
or Langenbrunner to remedy the deficiencies discussed above in the
rejection of claim 1. See Final Act. 12–16. Accordingly, for reasons similar
to those addressed above in the rejection of claim 1, we do not sustain the
Examiner’s rejections of claims 2, 7, 11, and 16–20 as unpatentable over the
various combinations of cited prior art.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 8–
10, 12–15
103 Lee, Dietrich 1, 3–6, 8–
10, 12–15
2 103 Lee, Dietrich,
Adaickalasamy
2
7, 11 103 Lee, Dietrich,
Schuster
7, 11
16–20 103 Lee, Dietrich,
Lilly,
Langenbrunner
16–20
Overall
Outcome
1–20
REVERSED