Scott D. Lewis et al.

Patent Trials and Appeals Board

Aug 23, 2019

14639507 - (D) (P.T.A.B. Aug. 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.
14/639,507 03/05/2015 Scott D. Lewis 76835US02;
67097-2924US1
2363
54549 7590 08/23/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
WONG, ELTON K
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
08/23/2019 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 SCOTT D. LEWIS, GAURAV M. PATEL,
JEFFERY SCOTT HEMBREE, SAN QUACH, MARK F. ZELESKY,
DAVID J. CANDELORI, and DOMINIC J. MONGILLO
__________

Appeal 2019-000143
Application 14/639,507
Technology Center 3700
__________

Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and
BRANDON J. WARNER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 5–13, and 16–25. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 United Technologies Corporation (“Appellant”) is the Applicant, as
provided for under 37 C.F.R. § 1.46, and is also identified as the sole real
party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification “relates to the design of cooling holes for use in gas
turbine engine components.” Spec. ¶2.
The Rejected Claims
Claims 1, 5–13, and 16–25 are rejected. Final Act. 1. No other
claims are pending. Id. at 1–2. Claim 1, the sole independent claim, is
representative and reproduced below.
1. A method of forming a component for use in a gas
turbine engine comprising the steps of:
(a) determining a desired shape for a cooling hole on a
gas turbine engine component;
(b) determining the likely deposition of a coating to be
provided on the component into the cooling hole; and
(c) forming an intermediate cooling hole that has an
enlarged area from the desired shape to account for deposition
of the coating;
(d) then coating the component;
the desired cooling hole includes a meter section
communicating with a cooling air cavity and delivering
air into a diffuser section, and said enlarged area is in
said diffuser section; and
the diffusor section includes a ridge and opposed
side portions with the ridge extending closer to an outer
surface of the component than do said side portions such
that said ridge guides air into said side portions.
Supp. Appeal Br. 2.2

2 The Appeal Brief was filed June 8, 2018 (cited herein as “Appeal Br.”),
and the Supplemental Appeal Brief was filed July 10, 2018 (cited herein as
“Supp. Appeal Br.”).
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The Examiner’s Rejections
The following rejections are before us for review:
1. claims 12 and 21, under 35 U.S.C. § 112(a), as lacking written
description in the Specification as filed (Final Act. 2);
2. claims 1, 5, 6, 9, 10, 12, 16, 19, 21, 24, and 25, under 35 U.S.C.
§ 103, as unpatentable over Weigand3 and Brassfield4 (id. at 3);
3. claims 7 and 17, under 35 U.S.C. § 103, as being unpatentable
over Weigand, Brassfield, and Liang 5 (id. at 6);
4. claims 8 and 18, under 35 U.S.C. § 103, as being unpatentable
over Weigand, Brassfield, Liang, and Lee6 (id. at 7);
5. claims 11, 13, and 20, under 35 U.S.C. § 103, as being
unpatentable over Weigand, Brassfield, and Gupta7 (id. at 7); and
6. claims 22 and 23, under 35 U.S.C. § 103, as being unpatentable
over Weigand, Brassfield, and Blöchlinger8 (id. at 9).
DISCUSSION
Rejection 1 – Written Description
Dependent claims 12 and 21 depend, respectively, from claims 5
and 1, and additionally recite “wherein the amount of unwanted deposition
of the coating into the cooling hole is determined theoretically.” Supp.
Appeal Br. 3.

3 CA 2,282,010 A1, published Mar. 10, 2000 (“Weigand”).
4 US 2005/0286998 A1, published Dec. 29, 2005 (“Brassfield”).
5 US 8,245,519 B1, issued Aug. 21, 2012 (“Liang”).
6 US 2008/0031738 A1, published Feb. 7, 2008 (“Lee”).
7 US 5,771,577, issued June 30, 1998 (“Gupta”).
8 US 6,307,175 B1, issued Oct. 23, 2001 (“Blöchlinger”).
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In rejecting these claims ostensibly for lack of written description, the
Examiner first states that they “contain[] subject matter which was not
described in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor or a joint inventor . . . at the time
the application was filed, had possession of the claimed invention.” Final
Act. 2. The Examiner then explains the rejection as follows:
[I]t is unclear how the coating will be theoretically determined.
The disclosure does not contain sufficient description, figures,
diagrams, or formulas as to how a theoretical determination of
coating amount can be made. As such, there is no indication in
the specification that the inventors had possession of a method
wherein the coating amount is determined theoretically.
Id. at 2–3 (emphasis added). This explanation appears to question whether
the claims are enabled. See 35 U.S.C. § 112(a); see also Ariad Pharm., Inc.
v. Eli Lilly and Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010) (holding that the
written description of the invention and enablement of the invention are
separate requirements of the identically-worded predecessor statute, 35
U.S.C. § 112 ¶1.).
Nonetheless, the Examiner repeatedly states that the rejection, in fact,
is based on the written description requirement, not the enablement
requirement, of the statute. See Final Act. 2 (“To clarify, the rejection [is]
made under written description, not enablement.”); Ans. 2 (“The rejections
made were for failing to comply with the written description requirement of
35 U.S.C. § 112(a). . . . [T]he enablement requirement . . . was not what the
rejection was under.”). Accordingly, in reviewing the rejection, we consider
only whether the Specification provides a written description of claims 12
and 21, not whether it enables them. We determine that it does.
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The Specification states that “an amount of expected, unwanted
deposition of the coating is determined experimentally, and/or theoretically.”
Spec. ¶64. Also, originally filed claims 12 and 21 recited “wherein the
amount of unwanted deposition of the coating into the cooling hole is
determined theoretically.” These disclosures sufficiently demonstrate
possession of a method wherein the coating amount is determined
theoretically.
Accordingly, we reverse the Examiner’s rejection of claims 12 and 21,
under 35 U.S.C. § 112(a), as lacking a written description.
Rejection 2 — Obviousness In View of Weigand and Brassfield
The Examiner rejected claims 1, 5, 6, 9, 10, 12, 16, 19, 21, 24, and 25,
under 35 U.S.C. § 103, as unpatentable over Weigand and Brassfield.
Appellant argues these claims together. Appeal Br. 3. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Weigand discloses all of the subject matter
of claim 1 except for the following limitation:
the diffusor section [of the cooling hole] includes a
ridge and opposed side portions with the ridge extending
closer to an outer surface of the component than do said
side portions such that said ridge guides air into said side
portions.
Final Act. 3–4 (citing Weigand Abstract, 3:19–21, and Fig. 1). Appellant
does not dispute this finding.
The Examiner found that Brassfield teaches this limitation in the form
of a cooling hole’s diffusor section having “a raised ridge that guides air into
the side portion[s] of its chevron diffuser.” Id. at 4 (citing Brassfield Fig. 3
(ref. 50)); see also Brassfield ¶40 (“The two troughs 48 . . . have a common
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apex or ridge 50 which is preferably centered on the bore exit.”). Appellant
does not dispute this finding.
The Examiner determined that it would have been obvious to one of
ordinary skill in the art before the effective filing date of the claimed
invention to modify Weigand with the ridge as taught in Brassfield for the
same purpose Brassfield teaches, namely, to “maximize diffusion of the
discharged cooling air with minimal separation.” Final Act. 4 (quoting
Brassfield ¶46).
Appellant’s arguments against the rejection are reproduced in their
entirety:
Appellant’s claimed method requires determining an
expected area of deposition of a coating for a very complex hole
shape. Weigand proposes to make a hole a bit deeper with a
“setback.” The set-back is determined to be simply equal to the
thickness of the coating. That is, while Weigand understands
coating will take up some thickness, Weigand does not in any
manner understand that that thickness might undesirably vary.
Weigand does not suggest any reaction to such a concern.
This becomes particularly acute when a complex hole
shape, such as claimed, is utilized. While the hole shape itself is
not unique (see Brassfield), and while Weigand’s concept of
“setback” is known, the combination is not known, nor
suggested. Nowhere in this art is there a teaching as to how one
would decide how much to move back an intermediate hole
shape for a complex hole, given that the coating into such a
complex hole would vary from simply assuming the thickness to
be put down for coating would exactly equal that set-back.
That is, the addition of Brassfield does not overcome this
deficiency at all.
Appeal Br. 3. Appellant’s arguments are not persuasive.
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Appellant does not dispute that the references teach what the
Examiner finds they teach. See id. Nor does Appellant challenge the
Examiner’s rationale for why a person of ordinary skill in the art would have
combined the teachings. See id.
Appellant’s arguments — at best and even then only implicitly —
challenge either (1) whether a person of ordinary skill in the art would have
had a reasonable expectation of success in combining the teachings and/or
(2) whether the resulting combination would be within the scope of claim 1.
See id. Both such arguments are not persuasive because they are not
commensurate with the broad scope of claim 1, which does not require that
the “coating the component” step result in a uniform deposition of coating.
For the foregoing reasons, we affirm the rejection of claim 1 as
unpatentable over Weigand and Brassfield, as well as that of claims 5, 6, 9,
10, 12, 16, 19, 21, 24, and 25, which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Rejections 3–6 — Obviousness in Further View of Additional Prior Art
The Examiner rejected claims 7, 8, 11, 13, 17, 18, 20, 22, and 23 as
being unpatentable over Weigand, Brassfield, and one or more additional
prior art references. Final Act. 6–9. Appellant does not present any
arguments against these rejections other than those already reproduced and
considered above. Accordingly, for reasons similar to that above, we affirm
Rejections 3–6.

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SUMMARY
The Examiner’s rejection of claims 12 and 21, under 35 U.S.C.
§ 112(a), as lacking a written description is reversed.
The Examiner’s rejections collectively of claims 1, 5–13, and 16–25,
under 35 U.S.C. § 103, are affirmed.

TIME PERIOD
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