UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

May 20, 2020

15108613 - (D) (P.T.A.B. May. 20, 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.
15/108,613 06/28/2016 Grant O. Cook III 67097-2830PUS1;
74590US02
7747
54549 7590 05/20/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
PETERS, BRIAN O
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
05/20/2020 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 GRANT O. COOK III and WENDELL V. TWELVES
Appeal 2019-006162
Application 15/108,613
Technology Center 3700
Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, 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 AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as United
Technologies Corporation. Appeal Br. 1.
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Application 15/108,613

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CLAIMED SUBJECT MATTER
The claims are directed to thermal expansion joints for a gas turbine
engine. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A component for a gas turbine engine comprising:
an underlying substrate;
a plurality of ceramic panels having intermediate thermal
expansion joints bonded by a bond layer to said underlying
substrate, with said thermal expansion joints formed of a material
having a greater coefficient of expansion than a material forming
said ceramic panels, and said ceramic panels and said thermal
expansion joints positioned to define an outer surface for the
component.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Arnold US 5,489,074 Feb. 6, 1996
Sherman US 6,489,036 B1 Dec. 3, 2002
Strangman US 7,150,926 B2 Dec. 19, 2006
Dierksmeier US 7,789,621 B2 Sept. 7, 2010
Vance US 7,871,716 B2 Jan. 18, 2011
REJECTIONS
Claims 1–5, 10, 11, 14–17, 19, and 20 are rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Vance.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over
Vance.
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Vance and Strangman.
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Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over
Vance and Arnold.
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over
Vance and Dierksmeier.
Claims 12, 13, and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Vance and Sherman.
OPINION
Claims 1–5, 10, 11, 14–17, 19, and 20
Appellant argues claims 1–5, 10, 11, 14–17, 19, and 20 as a group.
Appeal Br. 3–4. We select claim 1 as representative. Claims 2–5, 10, 11,
14–17, 19, and 20 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). Claim 1 requires “ceramic panels having intermediate
thermal expansion joints . . . with said thermal expansion joints formed of a
material having a greater coefficient of expansion than a material forming
said ceramic panels.” Appellant’s sole dispute is whether Vance’s thermal
expansion joint (grout 64) has a greater coefficient of thermal expansion
than its ceramic panels (tiles 56, 58). Appeal Br. 3–4.
The Examiner finds that Vance discloses this feature. Final Act. 5
(citing Vance 4:5–6). The Examiner explains that Vance discloses the
recited thermal expansion relationship, finding that “Vance discloses that the
outer layer of ceramic tiles may be alumina which has a thermal expansion
coefficient of 7.2x10-6,” and “that the grout may be LaPO4 which has a
thermal expansion coefficient of 7.9x10-6.” Final Act. 2 (citing Vance 3:57–
61, 4:7–12). Appellant responds that “the Examiner picks and chooses
between the materials mentioned for the grout and the materials mentioned
for the tile” and, in particular, “picks one of three distinct elements
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(alumina) for an outer layer of a tile” with “a single grout material among
the six distinct proposed grout materials found at column 4 between lines 10
and 12.” Appeal Br. 3; see also Reply Br. 2 (citing In re Arkley, 455 F.2d
586, 587–88 (CCPA 1972)). Appellant explains that some combinations of
the materials listed in Vance do not provide the recited thermal expansion
relationship. Id.; Reply Br. 2–3.
Appellant’s argument is not persuasive. We read Vance as disclosing
a number of embodiments. As Appellant acknowledges, Vance discloses
only three options for the outer tile layer material and six options for grout
material––eighteen total material combination embodiments. One of the
embodiments is the combination presented by the Examiner (ceramic tiles
made of alumina and grout made of monazite2 (LaPO4)). This is not picking
and choosing among different embodiments, as Appellant alleges. That
other embodiments may not have the same thermal expansion relationship is
not persuasive of error because the Examiner does not rely on those other
embodiments. See, e.g., Appeal Br. 3 (“Why not also pick alumina for the
grout?”).
Appellant additionally contends that “‘alumina’ is not a single fixed
material” and its coefficient of thermal expansion can “range above 8.0, and
thus can be higher than the ‘grout’ numbers the Examiner cites.” Appeal Br.
3 (citing Product Sheet included in Evidence Appendix). Referring to
Appellant’s Product Sheet, the Examiner finds that “[a]lumina has a
coefficient of thermal expansion of 7.2 X 10-6 C-1 between 40-400°C and 8.0
x 10-6 C-1 at 800°C.” Ans. 3. Citing the “Journal of the American Ceramic

2 The Examiner notes that Vance’s spelling, “monazite,” appears to be in
error. Ans. 3.
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Society,” the Examiner finds that “[t]he coefficient of thermal expansion of
monazite increases with temperature from 7.5 X 10-6 C-1 at 20°C to 10.5 x
10-6 C-1 at 1000°C, with an average over this temperature range of 9.6 X 10-6
C-1. These values ... are approximately 25% higher than for alumina.” Id.
(internal quotations omitted).
Appellant does not dispute these particular findings and, instead,
contends that “[t]here are other types of alumina” and “the article’s tests are
not on pure monazite.” Reply Br. 3. Appellant, however, provides no
persuasive explanation, supported by evidence, to its belief that one skilled
in the art would not appreciate Vance’s disclosed monazite would not have a
higher coefficient of thermal expansion than its disclosed alumina. The
Examiner’s evidence supports such an understanding by one of ordinary
skill. Appellant’s contention that “the Examiner’s own prior ‘evidence’
states that LaPO4 would have a CTE of 7.9” (Reply Br. 3) is also
unpersuasive, as that value is one of the values within the range provided in
the Examiner’s Answer, which explains that the coefficient of thermal
expansion varies by temperature (Ans. 3). We again note that the claim
merely recites that the thermal expansion joints be formed of a material
having a greater coefficient of expansion than the material forming the
ceramic panels. The Examiner has provided sufficient evidence that a
person of ordinary skill would understand that monazite/alumina
embodiment disclosed in Vance satisfies this recitation.
Appellant additionally contends that monazite has “poor bonding
properties with the other oxide such as alumina.” Reply Br. 3. This is
unpersuasive because the Examiner’s rejection is based on anticipation,
rather than obviousness, and, as explained above, the combination of
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monazite and alumina is disclosed in Vance as one of its embodiments.
Moreover, that is a new argument, raised for the first time in the Reply Brief,
and was not necessitated by anything presented in the Answer. Accordingly,
that argument is improper. See 37 C.F.R. § 41.41(b)(2) (“Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner’s answer . . . will not be
considered by the Board for purposes of the present appeal, unless good
cause is shown.”).
For the reasons above, the preponderance of the evidence supports the
Examiner’s decision to reject claims 1–5, 10, 11, 14–17, 19, and 20.
Claim 8
Claim 8 depends from claim 1, and further recites that “a cross-section
of said joint between said components includes smaller end portions and an
enlarged central portion.” The Examiner determines that “it would have
been an obvious matter of design choice . . . to modify the joint’s cross-
sectional shape as taught by Vance by utilizing a joint with smaller end
portions and an enlarged central portion as claimed for the purpose of
mechanically holding the panels to the substrate.” Final Act. 7–8 (citing
MPEP § 2144.04 (IV)(B)). The Examiner notes that this is “the shape of the
joint between the tiles found in Appellant’s Fig. 4D,” and “Appellant does
not attribute any new or unexpected result to this shaped joint, merely that it
is another way in which for [sic] form the joint.” Ans. 5. The Examiner
explains that “the entire disclosure concerning Fig. 4D is found in a single
sentence at [0056] which reads ‘Figure 4D shows panels 120 having a joint
124 formed of an enlarged central portion 128 and smaller fingers 122 and
126 at the edges.’” Id. at 5–6. The Examiner explains that because “this
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shape did not provide any new or unexpected result beyond what every other
shape provided, i.e. the fastening of the tiles to the substrate, the shape was
not critical and therefore was not given patentable weight.” Id. at 6.
Appellant contends that “an Examiner cannot merely recite ‘design
choice’ to fill a void in a factual record to support a finding of obviousness.”
Appeal Br. 4. Appellant contends that “claim 8 requires a shape and not
merely a size.” Id. at 5. In its Reply Brief, Appellant contends that “[c]laim
8 recites the shape of Figure 4D,” and “it is quite clear [that] the joint would
expand into the central portions and lock the tiles,” which “a worker of skill
in this art would immediately recognize the locking benefit.” Reply Br. 3–4.
Further, Appellant belatedly argues that the locking benefit is a “new or
unexpected result[].” Id. at 4; see generally Appeal Br. (not identifying this
or any other alleged new and unexpected result).
“[D]esign choice” is appropriate where the applicant fails to set forth
any reasons why the differences between the claimed invention and the prior
art would result in a different function. In re Chu, 66 F.3d 292, 298–99
(Fed. Cir. 1995)). Although Appellant’s Figure 4D is one embodiment that
would read on the claim 8, the claim is not limited to that embodiment. The
claim does not recite where the end portions of the joint are defined. Figure
4D depicts smaller vertical end portions of the joint in the section illustrated,
but the claim also covers other configurations, such as where lateral end
portions of the joint are smaller than the central portion (i.e., a cross-section
taken perpendicular to that shown in Figure 4D). Such an arrangement
would not have the locking benefit asserted by Appellant. Accordingly,
Appellant’s contention is not commensurate with the scope of claim 8.
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Appellant’s contention that design choice cannot be used on a shape is
also unpersuasive. Appeal Br. 5 (“claim 8 requires a shape and not merely a
size”). A change in shape has been held obvious as a matter of design
choice where an appellant did not show the shape was significant or beyond
what was obvious to perform the same function. See In re Dailey, 357 F.2d
669, 672–73 (CCPA 1966) (affirming design choice determination where
“Appellants have presented no argument which convinces us that the
particular configuration of their container is significant or is anything more
than one of numerous configurations a person of ordinary skill in the art
would find obvious for the purpose of providing mating surfaces in the
collapsed container”).
For the reasons set forth above, we are not persuaded of error in the
rejection of claim 8.
Claims 6, 7, and 9
Appellant includes separate headings for claims 6, 7, and 9, which
each depend from claim 1, but no meaningful separate argument for those
claims. We are not apprised of error based on Appellant’s conclusory
statements regarding those claims.
Claims 12, 13, and 18
Appellant does not address the rejection of claim 12, 13, or 18. Claim
12 depends from claim 1 and claim 18 depends from claim 14. Because we
are not apprised of error in the rejection of claims 1 and 14 for the reasons
explained above, we are also not apprised of error in the rejection of claims
12 and 18.
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Claim 13 is independent, and Appellant does not address that claim in
the Appeal Brief. Accordingly, we summarily affirm the Examiner’s
rejection of claim 13.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 10, 11,
14–17, 19,
20
102(a)(1) Vance 1–5, 10,
11, 14–17,
19, 20

8 103 Vance 8
6 103 Vance, Strangman 6
7 103 Vance, Arnold 7
9 103 Vance, Dierksmeier 9
12, 13, 18 103 Vance, Sherman 12, 13, 18
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED