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Patent Trials and Appeals Board

Nov 6, 2019

14610001 - (D) (P.T.A.B. Nov. 6, 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.
14/610,001 01/30/2015 James M Koonankeil 80148US01 (15-100) 7788
52237 7590 11/06/2019
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
KENNEDY, TIMOTHY J
ART UNIT PAPER NUMBER
1743
MAIL DATE DELIVERY MODE
11/06/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES M. KOONANKEIL
____________

Appeal 2019-003272
Application 14/610,001
Technology Center 1700
____________
Before JEFFREY B. ROBERTSON, CHRISTOPHER C. KENNEDY, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4, 6–12, 14, and 15.3 We have jurisdiction
under 35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed Jan. 30, 2015 (“Spec.”);
Final Office Action dated Jan. 23, 2018 (“Final Act.”); Advisory Action
dated May 30, 2018 (“Adv. Act.”); Appeal Brief filed Sept. 19, 2018
(“Appeal Br.”); Examiner’s Answer dated Jan. 23, 1019 (“Ans.”); and Reply
Brief filed Mar. 22, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies United Technologies Corporation
as the real party in interest. Appeal Br. 2.
3 Claims 3, 5, and 13 are canceled and claims 16–20 are withdrawn. Appeal
Br. 4.
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Application 14/610,001
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For the reasons set forth below, we REVERSE and enter a NEW
GROUND OF REJECTION.
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a method for disposing blocking
material into a component having internal passages, and more particularly to
a method for disposing laser blocking material within an interior of an
airfoil. Spec. ¶¶ 1, 6; Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for disposing a blocking material within
an interior of a component, the method comprising:
forming at least one aperture of a multiple of
apertures in communication with a cavity within a
component via a first process; and
filling the cavity with a blocking material
subsequent to forming the at least one aperture formed
via the first process and prior to forming the remainder
of the multiple of apertures via a second process different
than the first process, wherein the second process is a
laser drilling process and the at least one aperture allows
a route for entrapped gasses from the blocking material to
escape the cavity.
Appeal Br. 11 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Flis et al. (“Flis) US 5,928,534 July 27, 1999
Lee US 7,186,085 B2 Mar. 6, 2007
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 2, 4, 6–12, and 14 are rejected under
35 U.S.C. § 102(a)(1) as being anticipated by Flis (“Rejection 1”). Ans. 3.
2. Claim 15 is rejected under 35 U.S.C. § 103 as being
unpatentable over Flis in view of Lee (“Rejection 2”). Id. at 5.
OPINION
Rejection 1
The Examiner rejects claims 1, 2, 4, 6–12, and 14 under § 102(a)(1) as
anticipated by Flis (Ans. 3–5), which we refer to as Rejection 1. In response
to the Examiner’s rejection, Appellant presents argument for the
patentability of the claims based primarily on two claim elements, each of
which we address in turn below.
1. “a second process different than the first process”
First, Appellant argues the Examiner’s rejection should be reversed
because Flis does not disclose “forming the remainder of the multiple of
apertures via a second process different than the first process,” as recited in
claim 1. Appeal Br. 8; Reply Br. 1–2. Appellant contends that because the
claimed method requires the “second process” to be “different than the first
process,” and Flis discloses only a single, laser drilling process, the
reference does not anticipate the claim. Appeal Br. 8.
Appellant’s argument is persuasive because the Examiner has not
established by a preponderance of the evidence that Flis discloses “a second
process different than the first process,” as required by claim 1. To serve as
an anticipatory reference, “the reference must disclose each and every
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element of the claimed invention.” In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009).
None of the portions of Flis the Examiner cites and relies upon in the
rejection discloses the “second process different than the first process”
element of the claim. See Ans. 3–4. Although Flis teaches forming cooling
air holes 42 via laser drilling (Flis 5:22–26) and forming impingement holes
56 (Flis 4:41–43, 4:59–62, 5:58–62), Flis does not disclose forming the
holes via a process other than laser drilling. As the Examiner acknowledges
(Ans. 6), Flis does not disclose how the impingement holes 56 are formed
and, as Appellant correctly points out (Appeal Br. 8), laser drilling is the
only process explicitly disclosed or discussed in the reference for forming
holes of any kind.
The Examiner also does not identify sufficient evidence or provide an
adequate factual basis to establish that the laser drilling process Flis
discloses for forming the cooling holes 42 is inherently different than the
process for forming the impingement holes 56. For a claim limitation to be
found inherently present in the cited prior art reference, the limitation must
be either (a) necessarily present, or (b) the natural result of the combination
of elements explicitly disclosed by the prior art. Par Pharmaceutical, Inc. v.
TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014).
“Inherency . . . may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.” In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
Contrary to what the Examiner’s comments at pages 4–5 of the
Answer seem to imply, the fact that Flis discusses laser drilling with respect
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to how the cooling holes 42 are formed, without more, does not teach or
suggest that the process used to form cooling holes 42 is necessarily
different than the process used to form impingement holes 56 or the natural
result of the combination of elements explicitly disclosed by the reference.
The mere possibility that the laser drilling process Flis discloses for forming
cooling holes 42 might be different than the process used to form
impingement holes 56, without more, is insufficient to support a finding that
Flis inherently discloses the “second process different than the first process”
element of the claim.
The Examiner’s assertion that “laser drilling is not how the hole 56
could be made internally in the blade . . . anyone having ordinary skill in the
art would see that” (Ans. 4) is equally unpersuasive because it is conclusory
and, without more, insufficient to sustain the Examiner’s rejection. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding “rejections . . . cannot be
sustained by mere conclusory statements”).
We, therefore, cannot sustain the Examiner’s rejection of claim 1
because the Examiner has not established by a preponderance of the
evidence that Flis discloses the “second process different than the first
process” recitation of the claim. Because claims 2, 4, and 6–8 depend from
claim 1, we also cannot sustain the Examiner’s rejection of these claims.
2. “filling the cavity with a blocking material subsequent to
forming the at least one aperture formed”
Second, Appellant argues the Examiner’s rejection should be reversed
because the Examiner has not adequately established that Flis discloses the
“order of steps as recited and claimed.” Appeal Br. 8–9. Appellant
contends that, in making the rejection, although the Examiner blanketly
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asserts that the order of steps is disclosed throughout the disclosure of Flis
(Ans. 3), “the Examiner does not specifically substantiate this assertion.”
Appeal Br. 8–9. In essence, Appellant argues the Examiner has failed to
establish by a preponderance of the evidence Flis discloses that the filling
the cavity with a blocking material step occurs “subsequent to” the forming
at least one aperture step, as recited in the claim.
We agree with Appellant’s argument in this regard. That is, on the
record before us, we are not persuaded the Examiner has established by a
preponderance of the evidence that Flis discloses “filling the cavity with a
blocking material subsequent to forming the at least one aperture formed via
the first process,” as claimed.
The Examiner has not provided a sufficient evidentiary basis to
support the finding that Flis discloses the recitation “filling the cavity with a
blocking material subsequent to forming the at least one aperture formed via
the first process” in the order and manner claimed. Although the Examiner
finds Flis discloses forming impingement hole 56, which is in
communication with passage 38 that has a region 46 and that a blocking
material 64 is filled in the region 46, as the Examiner acknowledges
(Ans. 6), Flis does not disclose how the impingement holes 56 are actually
formed or specify exactly when during the manufacturing process the holes
are made.
Additionally, although the Examiner asserts the “blocking material 64
is filled in the region 46 after hole 56 is made and before holes 42 are made”
(Ans. 3) and the “order of steps is disclosed throughout the disclosure of
Flis” (id.), the Examiner does not direct us to any teaching or specific
disclosure in Flis to support such finding or evidence sufficient to establish
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Flis discloses, either explicitly or inherently, the “filling the cavity with a
blocking material subsequent to forming the at least one aperture formed via
the first process” element of the claim. Kahn, 441 F.3d at 988.
We, therefore, cannot sustain the Examiner rejection of claim 1 for the
additional reason that the Examiner has not established by a preponderance
of the evidence that Flis discloses the “filling the cavity with a blocking
material subsequent to forming the at least one aperture formed” recitation
of the claim.
Because claims 1, 2, 4, 6–8 depend from claim 1 and claims 9–12 and
14 include a “filling the . . . cavity with a blocking material subsequent to
forming the at least one aperture formed” recitation similar to claim 1, we
also cannot sustain the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 2, 4,
6–12, and 14 under 35 U.S.C. § 102(a)(1) as being anticipated by Flis.
Rejection 2
The Examiner rejects claim 15 under § 103 as obvious over the
combination of Flis and Lee (Ans. 5–6), which we refer to as Rejection 2.
Claim 15 depends from claim 9 and further recites “wherein forming one of
the multiple of apertures is formed via the first process via an EDM
process.” Appeal Br. 13 (Claims Appendix).
The foregoing deficiencies in the Examiner’s findings and analysis
regarding the Flis reference discussed above in reversing the Examiner’s
Rejection 1, including the absence of evidence that the recited steps would
have been suggested to one of ordinary skill in the art in the order claimed,
are not remedied by the Examiner’s findings regarding the additional Lee
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reference or combination of Lee and Flis cited in support of the second
ground of rejection.
Accordingly, for principally the same reasons stated above for
reversing Rejection 1, we reverse the Examiner’s rejection of claim 15 under
§ 103 as obvious over the combination of Flis and Lee.
NEW GROUND OF REJECTION
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection: claims 1, 2, 4, 9, 11, and 15 are rejected under
35 U.S.C. § 103 as being unpatentable over Flis in view of Lee.
We find that the combination of Flis and Lee suggests a method
satisfying of all of the limitations of independent claims 1 and 9. Flis is
directed to a method for disposing a blocking material in a cavity for
blocking a laser beam (“method for disposing a blocking material within an
interior of a component”). Flis, Abstract, 1:5–12. Flis teaches forming at
least one impingement hole 56 which is in communication with passage 38
that has a region 46 via a first process for forming holes (“forming at least
one aperture of a multiple of apertures in communication with a cavity
within a component via a first process”). Id. at 4:26-36, 4:37–43, 4:59–62.
Flis further teaches forming cooling air holes 42 in communication
with region 46, wherein the cooling holes 42 are formed via a laser drilling
process (“forming the remainder of the multiple of apertures via a second
process . . . wherein the second process is a laser drilling process”). Id. at
4:26–36, 5:23–29, 5:44–47. Flis also teaches filling the region 46 with
blocking material 64 and that the purpose of the blocking material is to
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mitigate damage to the blade during formation of cooling holes 42 formed
via the laser drilling process. Id. at 1:5–8, 2:62–65, 5:28–33.
Flis teaches that filling the region 46 with blocking material 64 occurs
after impingement hole 56 is formed and prior to forming cooling holes 42
via the laser drilling process because the reference teaches that the purpose
of the blocking material is to mitigate damage to the blade during formation
of the cooling holes (“filling the cavity with a blocking material subsequent
to forming the at least one aperture formed via the first process and prior to
forming the remainder of the multiple of apertures via a second process”).
Flis 1:5–8, 2:62–65, 5:28–33. Flis also teaches that impingement hole 56
assists gas to escape from passage 38 (“at least one aperture allows a route
for entrapped gasses from the blocking material to escape the cavity”). Id. at
5:58–62.
Flis does not teach that the laser drilling process for forming cooling
holes 42 is different than the process for forming impingement hole 56
(“forming the remainder of the multiple of apertures via a second process
different than the first process”).
Lee, however, is in the same field of endeavor as Flis and teaches
forming different-shaped cooling holes within an airfoil component via both
laser drilling and EDM drilling processes. Lee, Abstract, 1:5–6, 6:7–30.
Lee further teaches that the two types of holes formed may be
conventionally manufactured using less expensive laser-drilling for the
cylindrical holes and more expensive EDM machining for shaped diffusion
holes, and that the diffusion holes may be alternated with the less expensive
laser drilled holes for reducing cost of the airfoil, as well as enhancing
performance if the pressurized cooling air discharged. Id. at 6:7–18.
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Based on the above findings, we conclude that, at the time of the
invention, it would have been obvious to one of ordinary skill in the art to
have used Lee’s EDM drilling process as a first process in combination with
Flis’ laser drilling method as a second process for forming cooling holes in
Flis’ airfoil in order to reduce the cost of the airfoil, as well as for enhancing
performance if the pressurized cooling air discharged. See Lee 6:7–18.
Regarding the order of the steps, we conclude it would have been
obvious to one of ordinary skill in the art at the time of the invention to have
performed the steps of (1) forming at least one aperture of a multiple of
apertures in communication with a cavity within a component via a first
process (EDM drilling), (2) filling the cavity with a blocking material
subsequent to forming the at least one aperture formed via the first process
and prior to forming the remainder of the multiple of apertures via a second
process (laser drilling) in the order and manner claimed because Lee teaches
using both EDM and laser drilling process for forming holes and that
alternating the EDM-formed holes with the laser-drilled holes was known in
the art, and would have been advantageous for reducing cost of the airfoil
(Lee 6:7–30); and selection of any order of performing process steps is
prima facie obvious in the absence of new or unexpected results.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground
1, 2, 4,
6–12, 14
§ 102(a)(1) Flis 1, 2, 4,
6–12, 14

15 § 103

Flis, Lee 15
1, 2, 4,
6–12, 14
§ 103

Flis, Lee 1, 2, 4, 9, 11,
15
Overall
Outcome
1, 2, 4,
6–12, 14,
15
1, 2, 4, 9, 11,
15

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new evidence not
previously of record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
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the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
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).
REVERSED AND NEW GROUND OF REJECTION ENTERED
PURSUANT TO 37 C.F.R. § 41.50(b)