UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Sep 23, 2020

2020001764 (P.T.A.B. Sep. 23, 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.
15/110,856 07/11/2016 Richard K. Hayford 67097-2811PUS1;
73067US02
2698
54549 7590 09/23/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
HASAN, SABBIR
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD K. HAYFORD, MARK J. ROGERS,
CARL S. RICHARDSON, and JONATHAN J. EARL

Appeal 2020-001764
Application 15/110,856
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 2–7, 9–13, and 16–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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. Appeal Br. 1.
Appeal 2020-001764
Application 15/110,856

2

STATEMENT OF THE CASE
Claimed Subject Matter
Claims 4 and 13 are the independent claims on appeal. Claim 4,
reproduced below, is illustrative of the claimed subject matter.
4. A gas turbine engine comprising:
a circumferential array of vanes slidably supported in an
inner case shroud segment, wherein the inner case shroud
segment includes an arcuate slot, and the vanes include hooks
received in the arcuate slot, multiple inner case shroud
segments secured to one another and to an outer case by rings
to provide an annular engine static structure section, the inner
case shroud segment and the vanes having different material
properties than one another, wherein the inner case shroud
segment includes at least two rows of the circumferential array
of vanes axially spaced from one another.

References
The prior art relied upon by the Examiner is:
Name Reference Date
O’Reilly et al.
(“O’Reilly”)
US 7,278,821 B1 Oct. 9, 2007
Vance et al. (“Vance”) US 7,452,182 B2 Nov. 18, 2008
Lee et al. (“Lee”) US 7,819,626 B2 Oct. 26, 2010
Ress, Jr. (“Ress”) US 8,950,069 B2 Feb. 10, 2015

Rejections
Claims 2–4 and 10–12 are rejected under 35 U.S.C. § 103 as
unpatentable over O’Reilly, Lee, and Vance.
Claims 5–7 and 9 are rejected under 35 U.S.C. § 103 as unpatentable
over O’Reilly, Lee, Vance, and Ress.
Claims 13 and 16–20 are rejected under 35 U.S.C. § 103 as
unpatentable over O’Reilly, Vance, and Ress.
Appeal 2020-001764
Application 15/110,856

3

ANALYSIS
Independent Claim 4 and Dependent Claims 2, 3, and 10–12
The Examiner finds that O’Reilly teaches substantially all of the
subject matter of independent claim 4. See Final Act. 3–5. One the features
of independent claim 4 that the Examiner finds O’Reilly fails to teach is that
“the inner case shroud segment and the vanes hav[e] different material
properties than one another.” Id. at 5.
The Examiner finds that Vance “teaches . . . a turbine vane assembly
having segments being made of multiple materials including the outer
shroud and different vane segments.” Final Act. 6 (citing Vance, col. 5,
ll. 32–46). The Examiner explains that Vance’s outer shroud is part of the
vane assembly and does not correspond to the claimed “inner case shroud
segment.” See Ans. 5.
The Examiner determines that it would have been obvious to one of
ordinary skill in the art to modify O’Reilly’s vanes so that the vanes would
have been made of multiple materials, in view of Vance’s teaching, in order
to increase engine efficiency by providing different materials ideal for
specific portions of the vane assembly. See Final Act. 7 (citing Vance,
col. 1, ll. 15–18). The Examiner explains that as a result of the modification,
O’Reilly’s vanes would be made of different materials. See Ans. 6.
Consequently, the Examiner determines “regardless of what material
[O’Reilly’s] inner case shroud segment is made of, the modification would
result in at least one of materials in the vane assembly inherently having
different material properties compared to the inner case shroud, thus,
meeting the scope of the claims as recited.” Id. at 6–7 (italics added).
Appeal 2020-001764
Application 15/110,856

4

The Appellant argues that “there is no reason why a skilled worker
would modify the cited art to provide the claimed feature relating to the case
shroud––not a stator vane platform––and its supported vane.” Appeal Br. 5
(emphasis omitted); see Reply Br. 1. The Appellant supports this argument
by pointing out that “Vance only discloses different materials for the airfoil
and the shroud, but notably, the ‘shroud’ in Vance actually corresponds to
the inner and outer platforms and not a ‘case shroud.’” Appeal Br. 3
(emphasis omitted) (citing Vance, col. 5, ll. 32–46, Fig. 3). In other words,
“the different materials in Vance relate to the airfoil and platform of the
stator vane assembly.” Id. at 4. The Appellant’s argument is not persuasive
of Examiner error.
At the outset, we disagree with the Appellant that “[t]he issue is
whether Vance’s different materials for an airfoil and platform can be
applied to O’Reilly such that a skilled worker would understand that the case
and vanes should be made of different materials.” Reply Br. 1 (emphasis
omitted). Notably, the Examiner never relied on a finding that Vance
teaches “[an] inner case shroud segment and vanes having different material
properties than one another,” as recited by claim 4. Rather, the issue is
whether the Examiner properly relied on the theory of inherency to supply a
missing limitation in an obviousness analysis. See PAR Pharma., Inc. v.
TWI Pharma., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014) (citations
omitted) (“[I]nherency may supply a missing claim limitation in an
obviousness analysis”). “[T]o rely on inherency to establish the existence of
a claim limitation in the prior art in an obviousness analysis––the limitation
at issue necessarily must be present, or the natural result of the combination
of elements explicitly disclosed by the prior art.” Id. at 1195–96.
Appeal 2020-001764
Application 15/110,856

5

As discussed above, the Examiner’s rejection relies on Vance’s
teaching that portions of a vane, including the airfoil and the inner and outer
platforms, which have multiple materials, increase engine efficiency by
providing different materials ideal for specific portions of the vane
assembly. See Final Act. 7 (citing Vance, col. 1, ll. 15–18). The Appellant
does not dispute this finding. Based on this finding, the Examiner surmises
that as a result of the modification of O’Reilly’s vanes in view of Vance’s
teaching, O’Reilly’s inner case shroud segment and vanes necessarily would
have been made of different materials and therefore, have different material
properties than one another. In other words, the Examiner relied on
inherency to supply a missing limitation in an obviousness analysis. In this
case, we find that the Examiner adequately establishes a basis for the finding
of inherency. The Appellant does not challenge the Examiner’s finding of
inherency.
Thus, we sustain the Examiner’s rejection of independent claim 4 and
dependent claims 2, 3, and 10–12.

Dependent Claims 5–7 and 9
The Appellant argues that “[t]he addition of Ress does not cure the
deficiencies noted above with respect to the § 103 rejection of claim 4.”
Appeal Br. 6. For the reasons discussed above, we are not persuaded that
the Examiner’s rejection of claim 4 is improper. Therefore, the Appellant’s
argument that Ress does not cure the deficiencies of the rejection of
independent claim 4 is not persuasive. Thus, we sustain the Examiner’s
rejection of dependent claims 5–7 and 9.

Appeal 2020-001764
Application 15/110,856

6

Independent Claim 13 and Dependent Claims 16–20
The Appellant argues that the rejection of independent claim 13 and
dependent claims 16–20 is “improper for at least reasons discussed above
with respect to Vance as applied to claim 4.” Appeal Br. 6. For the reasons
discussed above, we are not persuaded that the Examiner’s rejection of
claim 4 is improper. For similar reasons, we are not persuaded that the
Examiner’s rejection of claims 13 and 16–20 is improper. Thus, we sustain
the Examiner’s rejection of independent claim 13 and dependent claims
16–20.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
2–4, 10–12 103 O’Reilly, Lee, Vance 2–4, 10–12

5–7, 9 103 O’Reilly, Lee, Vance,
Ress
5–7, 9
13, 16–20 103 O’Reilly, Vance, Ress 13, 16–20
Overall
Outcome
2–7, 9–13,
16–20

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