San Quach et al.

Patent Trials and Appeals Board

Dec 19, 2019

14749000 - (D) (P.T.A.B. Dec. 19, 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.
14/749,000 06/24/2015 San Quach 67097-3245PUS1;81257US01 9315
54549 7590 12/19/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
KERNS, KEVIN P
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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 SAN QUACH and TRACY A. PROPHETER-HINCKLEY1
____________

Appeal 2018-007728
Application 14/749,000
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 5–14, and 23–26. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we also enter a
NEW GROUND OF REJECTION, set forth below.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
United Technologies Corporation. See App. Br. 1.
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BACKGROUND
The subject matter on appeal relates to a core assembly for use in,
e.g., a gas turbine engine. E.g., Spec. p.1; Claim 1. Claim 1 is reproduced
below from page 6 (Appendix of Claims) of the Appeal Brief:
1. A core assembly comprising:
a first core including:
an exterior surface having a pressure side and a suction side
extending between an upstream end and a downstream end;
and
a first recessed area extending along the pressure side; and
a first insert including a first end, a second end, a first side, and
a second side, wherein the first side includes a contact surface
corresponding to and attached to the first recessed area.
ANALYSIS2
Claims 1, 3, 5–14, and 23–26 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Propheter-Hinckley (US 2014/0072447 A1,
published March 13, 2014) (“Propheter”).
The Examiner finds that Propheter anticipates claim 1. Ans. 4, 6
(annotated Fig. 2A). The Examiner relies principally on Figure 2A of
Propheter, reproduced below with annotations added by the Board to
identify specific elements of the Figure.

2 The Examiner’s “Claim Objections,” see Ans. 3, concern procedural issues
that are “not directly connected with the merits of issues involving rejections
of claims,” and they are appropriately addressed by petition rather than
appeal. See App. Br. 2 (requesting that the Board “reverse[]” the
objections); see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002)
(quoting In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971)); 37 C.F.R.
§ 1.181.
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Of particular relevance to the issues raised by the Appellant, and with
reference to Figure 2A above, the Examiner finds that Propheter’s pressure
side surface 28 corresponds to the “pressure side” of the exterior surface of
the first core 12, as claimed, and that Propheter’s slot 32 corresponds to the
“first recessed area extending along the pressure side,” as claimed. Id. at 4.
For the first time in the Response to Argument section of the Answer, the
Examiner explains that the Examiner is interpreting the term “pressure side”
to encompass any portion of the walls of core 12 that are subject to pressure,
including vertical portions of the walls that are identified by Propheter as
downstream surface 26 and upstream surface 24. Id. at 8–9. According to
the Examiner, refractory metal core (“RMC”) 18 and slot 32 “divide[] the
pressure side from the suction side,” and, therefore, approximately half of
slot 32 extends along a “pressure side” of first core 12. Id. at 8.
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We reverse the Examiner’s rejection. As an initial matter, we observe
that the Examiner cites only paragraph 26 of Propheter to support the
Examiner’s finding that RMC 18 divides the pressure side from the suction
side. Ans. 8. We discern no disclosure in paragraph 26 that persuasively
supports that finding.
In any event, even if paragraph 26 did support that finding, the
Examiner’s interpretation of “pressure side” as encompassing portions of
Propheter’s vertical surfaces 24 and 26, so long as they are subject to some
pressure, is overly broad and is inconsistent with the Specification. See In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he
PTO must give claims their broadest reasonable construction consistent with
the specification.”). The claim itself defines the “pressure side” as
“extending between an upstream end and a downstream end” and does not
indicate that the “pressure side” includes parts of the upstream and
downstream ends. See claim 1. As the Appellant explains in the Reply
Brief, the Specification repeatedly indicates that upstream ends (or surfaces)
and downstream ends (or surfaces) are separate and distinct from the
pressure side and the suction side. See Reply Br. 3; Spec. Figs. 4–14 &
¶¶ 57, 66, 69, 72, 75, 78, 84, 88. Additionally, in several instances the
Specification refers to “the entire pressure side,” indicating that the term
“pressure side” does not encompass any portion of the vertical surfaces of
the upstream and downstream surfaces. E.g., Spec. ¶¶ 66, 69, 88. To give
one example, the Specification explains that, in Figure 7, “a recessed area
228 is formed along the entire pressure side 224,” indicating that the bottom
horizontal surface 224 is the “entire” pressure side, and that the “pressure
side” does not extend any vertical distance up the downstream and upstream
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surfaces 220 and 222. See Spec. ¶ 66 (emphasis added). The Examiner does
not identify any portion of the claims or the Specification that indicates that
the term “pressure side” may encompass portions of the upstream and
downstream surfaces.
The nomenclature of the Specification described above is consistent
with that of Propheter, which, with reference to Figure 2A, describes vertical
surfaces 24 and 26 as “upstream surface 24” and “downstream surface 26,”
and separately describes horizontal surfaces 28 and 30 as “pressure side
surface 28” and “suction side surface 30.” See Propheter Fig. 2A & ¶¶ 19,
26–28. The Examiner identifies no portion of Propheter that would indicate
that any portion of either the upstream surface 24 or the downstream surface
26 should be considered to be part of Propheter’s pressure side surface 28.
On the contrary, and as explained in the new ground of rejection, Propheter
discloses an embodiment, distinct from Figure 2A (relied on by the
Examiner), that expressly describes and depicts “slots” that are “located
along the pressure or suction side of a ceramic core.” Propheter ¶ 31; Fig. 3.
That embodiments stands in direct contrast to the embodiment relied on by
the Examiner, Figure 2A, in which the slot is recessed into downstream
surface 26. See Fig. 2A.
On this record, the Examiner has not adequately established that
slot 32 of Figure 2A falls within the scope of the term “a first recessed area
extending along the pressure side.” Accordingly, we reverse the Examiner’s
rejection of claim 1. Because the Examiner’s rejection of claims 3, 5–14,
and 23–26 does not remedy the error identified above, we likewise reverse
the Examiner’s rejection of those claims.
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New Ground of Rejection
Claim 1 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by
Propheter, or, alternatively, under 35 U.S.C. § 103 as unpatentable over
Propheter.
As set forth above, in addition to the embodiment relied on by the
Examiner in which Propheter’s slot is recessed into downstream surface 26
rather than into pressure side 28, Propheter expressly discloses that “[t]he
slots that receive an RMC can also be located along the pressure or suction
side of a ceramic core.” Propheter ¶ 31. Consistent with that disclosure,
Figure 3 of Propheter is reproduced below.

Figure 3 depicts a core assembly comprising first core 12A that has an
exterior surface with pressure side 28A, a suction side at the top of the figure
(unlabeled), downstream end 26A, an upstream end at the right of the figure
(unlabeled), a first recessed area 32A extending along the pressure side, and
a first insert 57A/54A that includes first and second ends, first and seconds
sides, and the first side includes a contact surface corresponding to and
attached to the first recessed area 32A. See Propheter Fig. 3 & ¶¶ 31–32.
Even if Propheter does not anticipate claim 1, the subject matter of
claim 1 would have been obvious in view of Propheter. Paragraph 30
describes, inter alia, Figure 2A, which is the figure relied on by the
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Examiner. As stated above, paragraph 31 expressly teaches that “[t]he slots
that receive an RMC,” e.g., slot 32 of Figure 2A, “can also be located along
the pressure . . . side of a ceramic core.” Propheter ¶ 31. As described
above and as set forth by the Examiner, Figure 2A discloses subject matter
that falls within the scope of claim 1 except that Figure 2A’s slot 32 is not
located “along the pressure side,” as required by claim 1. In view of the
express teaching in Propheter ¶ 31 that the slot “can also be located along
the pressure . . . side,” it would have been obvious to locate slot 32 along
pressure side surface 28. See Fig. 2A. Thus, the subject matter of claim 1
would have been obvious in view of Propheter, even if not anticipated by the
embodiment of Figure 3.
We leave consideration of the dependent claims to the Examiner.
CONCLUSION
In Summary:
Claims
Rejected
35 U.S.C.
§
Reference/
Basis Affirmed Reversed
New
Ground
1, 3, 5–
14, 23–26 102(a)(1) Propheter
1, 3, 5–14,
23–26
102(a)(1) Propheter 1
103 Propheter 1
Overall
Outcome
1, 3, 5–14,
23–26 1
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 that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 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
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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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
REVERSED
37 C.F.R. § 41.50(b)