United Technologies Corporation

Patent Trials and Appeals Board

Aug 26, 2020

14720300 - (D) (P.T.A.B. Aug. 26, 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.
14/720,300 05/22/2015 Wendell V. Twelves PA-0031707-US-AA 1392
11943 7590 08/26/2020
Getz Balich LLC
10 Waterside Drive, Suite 205
Farmington, CT 06032
EXAMINER
TAYLOR, JON S
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
shenry@getzbalich.com
uspto@getzbalich.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WENDELL V. TWELVES, LYUTSIA DAUTOVA,
EVAN BUTCHER, JOE OTT, and MATTHEW E. LYNCH
____________

Appeal 2020-000992
Application 14/720,300
Technology Center 3700
____________

Before ANTON W. FETTING, AMEE A. SHAH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–15, 17, 21, and 23, which are all
of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 Corp. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “relates generally to surface conditioning
and, more particularly, to conditioning an internal surface of an object, for
example, to reduce surface roughness of and/or polish the surface.”
Spec. ¶ 1.
Claims 1, 15, and 23 are the independent claims. Claims 1 and 15 are
illustrative of the subject matter on appeal and are reproduced below:
1. A process comprising:
disposing an object with an agitator configured as a multi-
axis shaking device, the object including an aperture therein;
fluidly coupling a fluid conduit to the object;
directing abrasive material into the aperture through the
fluid conduit; and
agitating the abrasive material within the aperture by
moving the object using the agitator, wherein the abrasive
material within the aperture is dry during the agitating.

15. A process comprising:
disposing an object with an agitator configured as a
device, the object including an aperture therein;
fluidly coupling a fluid conduit to the object;
directing abrasive material into the aperture through the
fluid conduit, wherein the abrasive material comprises dry
powder media; and
agitating the dry powder media within the aperture by
moving the object using the agitator.
Appeal Br. 20, 22 (Claims App.) (emphases added).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hewins US 3,523,834 Aug. 11, 1970
Hulet et al. (“Hulet”) US 3,584,419 June 15, 1971
Sternstein US 4,096,741 June 27, 1978
Marcus US 4,581,853 Apr. 15, 1986
Joen et al. (“Joen”) US 5,276,998 Jan. 11, 1994

REJECTIONS2
Claim 15 stands rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Joen.
Claims 1–14 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Joen, Hewins, and Marcus.
Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Joen, Hewins, Marcus, and Hulet.
Claim 23 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Joen, Sternstein, and Marcus.

OPINION
Anticipation3
The Appellant contends that the Examiner’s rejection of independent
claim 15 is in error because “Joen does not disclose or suggest and, in fact,

2 The rejection of the claims under 35 U.S.C. § 112(b) has been withdrawn
by the Examiner. Ans. 9.
3 The rejections are addressed in the order presented by the Examiner in the
Final Action.
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teaches away from a step of ‘agitating the dry powder media within the
aperture by moving the object using the agitator’ as recited in claim 15.”
Appeal Br. 10. Conversely, the Examiner finds that Joen’s particles 46 meet
the claimed dry powder and its high frequency vibration meets the claims
agitation. Final Act. 4.
A determination that a claim is anticipated under [pre- AIA]
35 U.S.C. § 102(b) involves two analytical steps. First, the
Board must interpret the claim language, where necessary.
Because the PTO is entitled to give claims their broadest
reasonable interpretation, our review of the Board's claim
construction is limited to determining whether it was reasonable.
In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly,
the Board must compare the construed claim to a prior art
reference and make factual findings that “each and every
limitation is found either expressly or inherently in [that] single
prior art reference.” Celeritas Techs. Ltd. v. Rockwell Int’l
Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998). We review those
factual findings for substantial evidence.
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
The Examiner and the Appellant disagree on the interpretation of
claim 15’s limitations of “wherein the abrasive material comprises dry
powder media; and agitating the dry powder media within the aperture by
moving the object using the agitator.” Compare Final Act. 4; Ans. 9–10
with Appeal Br. 10–11; Reply Br. 2–3. The Examiner notes claim 15’s use
of the term “comprises” and determines
A mixture of dry powder media and a liquid to make a slurry is,
therefore, not outside the scope of the claims, especially when
read in light of the Specification. The Examiner points to ¶¶
[0049-50] in the instant Specification which states “(t)he
abrasive material may be or include substantially dry powder
media ... (and) may be configured as a slurry of the powder media
mixed within a liquid”. The Examiner's interpretation of “dry
powder media” as a label of a component of the abrasive material
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is, therefore, consistent with the Specification, and is reasonable
to one of ordinary skill in the art.
Ans. 9.
The Appellant contends that the term “dry powder” cannot include a
slurry because the Specification describes them as different. See Reply
Br. 3. Specifically, the Appellant directs attention to paragraph 50 of the
Specification that recites “[t]he process of FIG. 10, however, is not limited
to any particular abrasive material materials or forms thereof before
discussing a slurry.” Id. (emphasis and internal quotation marks omitted).
The Appellant contends
Then, to give an example of such an alternative form, paragraph
50 of the present application discloses “the abrasive material
may be configured as a slurry of the powder media mixed within
a liquid.” Appellant respectfully submits therefore a person of
skill in the art would understand, based on the disclosure of at
least paragraphs 49 and 50 of the present application, that
(a) abrasive material in the form a dry powder media and
(b) abrasive material in the form of powder media mixed in
liquid are different. It is also worth noting there is no disclosure
or suggestion in paragraph 50 or elsewhere in the present
application that the powder media within the slurry is considered
to be “dry” as alleged in the Examiner’s Answer.
Id.
“During examination, ‘claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. Of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed.Cir.1990)). “Though understanding the claim language may
be aided by the explanations contained in the written description, it is
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important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.” SuperGuide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004).
Here, claim 15 recites “wherein the abrasive material comprises dry
powder media.” Appeal Br. 22 (Claims App.) (emphasis added). “It is well-
established that “ ‘[c]omprising’ is a term of art used in claim language
which means that the named elements are essential, but other elements may
be added and still form a construct within the scope of the claim.” Crish,
393 F.3d at 1257 (quoting Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
501 (Fed.Cir.1997)). The Specification provides that “[t]he abrasive
material may be or include substantially dry powder media” (Spec. ¶¶ 17,
49), indicating that other types of media may be included with the dry
powder. In fact, the Specification indicates that the process “is not limited to
any particular . . . form” of the abrasive material, noting in particular that “in
some embodiments, the abrasive material may be configured as a slurry of
the powder media mixed within a liquid.” Id. ¶ 50; see also id. ¶ 17.
Consequently, although the Specification distinguishes dry powder from a
slurry, the Specification supports the determination that abrasive material is
not limited to dry powder only unless so specified. Claim 15’s recitation of
“the abrasive material comprise” does not so specify. The claim language is
broader than any embodiment(s) described in the Appellant’s Specification
requiring only or all dry powder. Thus, we agree with the Examiner’s claim
interpretation that the abrasive material comprises dry powder, but may
include other elements such as a liquid.
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Next, we compare the Examiner’s findings regarding Joen with the
claimed limitations. Joen discloses a method for washing and cleaning
workpieces comprising, in relevant part, filling a fixture chamber with an
aperture therein with cleaning media 46 through an outlet. See Joen col. 6,
ll. 29–32, Figs. 2, 4. “The cleaning media can take several forms of abrasive
particles of either a ceramic based material or metal. The particular material
used and the size or geometric configuration of the particles are chosen for
the particular workpiece and the amount of deburring necessary in the
overall cleaning process.” Id. at col. 4, ll. 29–33. At the same time the
cleaning media is filling the chamber, working fluid4 is admitted to the
chamber, flows through the chamber, and exits out the chamber out of holes
to the bottom media dump door. Id. at col. 6, ll. 33–35, Figs. 2, 4. When
the chamber is filled with the cleaning media, the flow of the cleaning media
is stopped and the chamber is vibrated by vibrator 20. Id. at col. 6, ll. 35–39,
Fig. 2.
The Specification provides that “[t]he term ‘powder’ may describe a
quantity (e.g., an agglomeration) of discrete particles with substantially
uniform or varying sizes; e.g., average diameters,” such as “between about
001 inches (~24.5μm) and about 0.110 inches (~2800μm); e.g., between
about 0.004 inches (~ 106μm) and about 0.55 inches (~ 1400μm).” Spec.
¶ 49. However, “[t]he process of FIG. 10 . . . is not limited to any particular
abrasive material particle sizes.” Id.

4 We note that neither the Examiner nor the Appellant defines what
comprises a fluid, i.e., whether a liquid or gas. The Appellant’s
Specification indicates it can be either. See Spec. ¶¶ 39, 54. However, both
parties appear to interpret Joen’s working fluid as a liquid. See Final Act. 7,
Reply Br. 2.
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As such, we find supported the Examiner’s findings that Joen
discloses directing abrasive material comprising dry powder media, i.e.,
Joen’s cleaning media, into the aperture and agitating the dry powder media
(with the fluid) within the aperture by moving the chamber using the
agitator, i.e., by vibrating using vibrator 20.
The Appellant’s argument that Joen’s cleaning media is not dry in the
aperture because it is mixed with the fluid, i.e., “Joen clearly teaches the
cleaning media within the alleged aperture is wet by the working fluid
during the alleged agitation” (Appeal Br. 11), is not persuasive of error. As
discussed above, claim 15 does not require that only dry powder is directed
into the aperture, and as the Examiner notes (Ans. 9–10), the claim does not
require the dry powder of the abrasive material to remain dry. Rather,
claim 15 only requires that the dry powder media that is part of the abrasive
material be agitated within the aperture. As also discussed above, we find
supported Examiner’s finding that Joen discloses the limitation as claimed of
agitating the dry powder media using the agitator.
The Appellant’s argument that “Joen teaches away from using ‘dry
powder media’ as recited in claim 15” (Appeal Br. 11; see also id. at 12) is
unpersuasive for two reasons. First, as discussed above, we agree with the
Examiner that Joen teaches using dry powder and the claim does not require
only dry powder. Second, “[t]eaching away is irrelevant to anticipation.”
Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005);
see also Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361
(Fed. Cir. 1998) (“A reference is no less anticipatory if, after disclosing the
invention, the reference then disparages it. Thus, the question whether a
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reference “teaches away” from the invention is inapplicable to an
anticipation analysis.”);
For the above reasons, we are not persuaded of Examiner error and we
sustain the Examiner’s rejection under 35 U.S.C. § 102(a)(1) of independent
claim 15.
Obviousness
Independent claim 1 recites a process comprising, in relevant part,
“agitating the abrasive material within the aperture by moving the object
using the agitator, wherein the abrasive material within the aperture is dry
during the agitating.” Independent claim 23 recites a process comprising, in
relevant part, a similar limitation of “agitating the abrasive material within
the component using the agitation device to condition an interior surface of
the component, wherein the abrasive material within the component is dry
during the agitating.” The Examiner acknowledges that “Joen is silent as to”
wherein the abrasive material within the aperture/component is dry during
the agitating. Final Act. 6, 9. The Examiner relies on Marcus as teaching
“that it is well known in the art to provide vibratory abrasive
processes/devices of this type wherein the abrasive media may be dry or
contain a liquid to produce a slurry.” Id. at 7, 9 (citing Marcus, col. 3,
ll. 4–11). The Examiner determines that it would have been obvious to one
of ordinary skill in the art “to have modified the process of Joen to
incorporate the teachings of Marcus and provide the abrasive material be dry
during the agitation,” the rationale being that “[d]oing so would create a
process where less product (i.e. liquid) is used, thereby decreasing the cost
of materials used during the process” and “would also allow for the process
to be optimized for the material/configuration of the workpiece being
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processed as it may not be ideal to introduce liquids to all materials due to
their physical/mechanical properties.” Id.
The Appellant contends that the Examiner’s rejections of independent
claims 1 and 23 are in error because “a person of skill in the art would have
no motivation to modify the teachings of Joen with the teachings of Marcus
as alleged in the Office Action to not use the working fluid5 of Joen as such
a modification would obviate a required element in the method and
equipment of Joen.” Appeal Br. 15, 18. The basis of the Appellant’s
argument stems from Joen’s teaching of “its ‘new method and equipment for
washing cleaning workpieces in a batch-type operation’ [that] utilizes both a
working fluid and a cleaning media, not just the cleaning media” to solve
prior art problems related to batch-type operations requiring multi-stage
cleaning. Id. at 14–15, 17–18. The Appellant points out that Joen’s
discussion of another type of cleaning process used in the prior art, such as
shot blasting and sand blasting using a dry abradant (see Joen, col. 1,
ll. 24–26), “is not merely teaching an alternative way of doing something.
Rather, Joen teaches the working fluid is what enables the removal of
contaminants.” Reply Br. 3 (citing Ans. 10). In this case, the Appellant
points to an issue that we cannot resolve in favor of the Examiner’s
rejection.
First, we note that the Examiner states reasons for modifying the
process of Joen to have abrasive material be dry during the agitation; namely

5 We note that neither the Examiner nor the Appellant defines what
comprises a fluid, i.e., whether a liquid or gas. The Appellant’s
Specification indicates it can be either. See Spec. ¶¶ 39, 54. However, both
parties appear to interpret Joen’s working fluid as a liquid. See Final Act. 7,
Reply Br. 2.
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that “modif[ying] the process of Joen to incorporate the teachings of Marcus
and provide the abrasive material be dry during the agitation . . . would
create a process” that uses less product, decreases cost, and enables the use
of the process for workpieces not suitable for liquids. Final Act. 7; supra.
However, the Examiner fails to provide a clear reason or explanation as to
how Marcus’s teaching of well-known vibration abrasion processes/devices
using only dry media would necessarily result in Joen’s abrasive material,
comprising dry cleaning media and working fluid of a liquid, remaining dry
during agitation. To the extent the Examiner determines that Marcus’s
teachings would result in Joen’s abrasive material remaining dry during
agitation by removing the step of admitting working fluid that is required in
Joen’s process, the Examiner does not explain how or why one of ordinary
skill in the art would be led by the teachings of Marcus to do so.
Second, if Joen’s step of admitting working fluid into the chamber
were removed, then that process would diminish the ability of Joen’s
invention to reduce the quantity of abrasive media to remove contaminants
in a single stage process. See Appeal Br. 14–15, 17–18 (citing Joen, col. 2,
ll. 3–18, 27–35, 38–42, col. 4, ll. 39–42; Reply Br. 3–4). In response to the
Appellant’s arguments in this regard, the Examiner focuses on the notion
that Joen states “there are multiple ways to process a workpiece including
how the art prior to Joen has accomplished this task, as well as the process
which Joen employs, which Joen states is an improvement,” and repeats the
benefits of modifying Joen with Marcus’s teaching of using only dry media,
the benefits including less material, less costs, and optimization of the
process for liquid-unfriendly workpieces. Ans. 10. Insofar as the Examiner
is suggesting that one of ordinary skill in the art would infer that the
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drawbacks associated with removing Joen’s step of admitting the working
fluid with the cleaning media, i.e., increasing the quantity of media and
requiring a two-stage process to remove contaminants, could be acceptable
in view of other advantages, i.e., using less product, decreasing cost, and
having more utility with non-liquid friendly workpieces, there is no
discussion on the record as to why this is so. Consequently, we determine
that the Examiner fails to adequately establish on this record why one of
ordinary skill in the art would have modified Joen’s process to remove the
working fluid so that the abrasive material is dry during agitation after
weighing all of the facts pertinent to the proposed modification.
Lastly, we note that the Examiner fails to rely on the teachings of
Hewins, Hulet, or Sternstein in any manner that would remedy the
deficiencies in the Examiner’s rejection as discussed above. Thus, we do
not sustain the Examiner’s rejections of independent claims 1 and 23 and
dependent claims 2–14, 17, and 21 under 35 U.S.C. § 103.
CONCLUSION
The Examiner’s decision to reject claim 15 under 35 U.S.C.
§ 102(a)(1) is sustained.
The Examiner’s decision to reject claims 1–14, 17, 21, and 23 under
35 U.S.C. § 103(a) is not sustained.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
15 102(a)(1) Joen 15
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–14, 17 103(a) Joen, Hewins,
Marcus
1–14, 17
21 103(a) Joen, Hewins,
Marcus, Hulet
21
23 103(a) Joen, Sternstein,
Marcus
23
Overall
Outcome
15 1–14, 17,
21, 23

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 IN PART