Dagobert Goepfert et al.

Patent Trials and Appeals Board

Dec 20, 2019

15047424 - (D) (P.T.A.B. Dec. 20, 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.
15/047,424 02/18/2016 Dagobert GOEPFERT 6570-P50279 6515
13897 7590 12/20/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
YOO, JUN S
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
12/20/2019 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):
hmuensterer@abel-ip.com
mail@Abel-IP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAGOBERT GEOPFERT,
ALEXANDER GINDORF, and MARCUS KLEMM
__________________

Appeal 2019-001098
Application 15/047,424
Technology Center 3700
____________________

Before DANIEL S. SONG, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the decision
of the Examiner to reject claims 20–39.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies MTU Aero Engines AG as the real party in interest.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claim 20, the sole independent claim, is reproduced below with
disputed limitations italicized for emphasis.
20 A method for producing a component, wherein the
component is a housing of a gas turbine and the method
comprises:
(a) providing a rotationally symmetrical forged blank,
(b) applying additional material of at least one
substance to a surface of the blank by laser
deposition welding and/or by kinetic cold gas
compaction at at least one location, and
(c) removing material until a final contour of a
finished component is attained.

REJECTIONS2
Claims 20, 21, 23–32, 34, 35, 38, and 39 are rejected under 35 U.S.C.
§ 103 as unpatentable over Xu (US 2012/0224960 A1, pub. Sept. 6, 2012)
and Cleveland (US 2002/0020164 A1, pub. Feb. 21, 2002).
Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over Xu,
Cleveland, and Jakimov (US 2012/0171041 A1, pub. July 5, 2012).
Claim 33 is rejected under 35 U.S.C. § 103 as unpatentable over Xu,
Cleveland, and Stoltenhoff (US 2009/0148622 A1, pub. June 11, 2009).
Claim 36 is rejected under 35 U.S.C. § 103 as unpatentable over Xu,
Cleveland, and Ravenhall (US 5,511,604, iss. Apr. 30, 1996).
Claim 37 is rejected under 35 U.S.C. § 103 as unpatentable over Xu,
Cleveland, and Durocher (US 2013/0051989 A1, pub. Feb. 28, 2013).

2 The Examiner withdrew the rejection of claims 21 and 22 under 35 U.S.C.
§ 112(d). See Ans. 7.
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ANALYSIS
Claims 20, 21, 23–32, 34, 35, 38, and 39
Rejected over Xu and Cleveland
Appellant argues claims 20, 21, 23–32, 38, and 39 as a group. Appeal
Br. 7–12. We select claim 20 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
We separately address Appellant’s arguments for claims 34 and 35.
Claims 20, 21, 23–32, 38, and 39
Regarding claim 20, the Examiner finds that Xu teaches the claimed
method by providing a rotationally symmetrical forged blank (annular case
64) and applying additional material for rings 80, 82, 84, 86, 88 to a surface
of the blank and removing material until a final contour is attained, but Xu
does not apply additional material by laser deposition welding and/or kinetic
cold gas compaction as claimed. Final Act. 3. The Examiner finds that
Cleveland applies additional material as deposited features of a substance to
a surface of a blank by laser deposition welding as claimed. Id. at 4.
The Examiner determines that it would have been obvious to a skilled
artisan to form the rings of Xu by a laser deposition welding which “allows
for a simple and inexpensive means for changing and incorporating complex
design of the rings” as Cleveland teaches. Id. (citing Cleveland ¶ 3).
Appellant argues that Xu expresses a preference to forge rings on the
casings, but Cleveland uses laser deposition to make free formed features
that are relatively small and bear no resemblance to forged net shape rings of
Xu. Appeal Br. 9. As a result, Appellant argues that a skilled artisan would
not produce Xu’s rings by laser deposition absent hindsight, and the benefits
cited by Cleveland for laser deposition welding would not be used on Xu
when Xu’s preferred method for making rings is forging. Id. at 10–11.
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The Examiner has the better position. Xu attaches “near net shape
rings” 72, 74, 76, 78, 80, 82, 84, 86 to a unitary annular case structure 68 by
electron beam welding. Xu ¶ 17. The rings are formed by forging, casting,
extrusion, or machining bar-stock/tube-stock depending on the application.
Id. ¶ 20. Thus, Xu forms the rings in many different ways besides forging
depending on a desired size and other needs of an application. See id.
The Examiner proposes to improve Xu with Cleveland’s teachings to
form surface features on engine casings by laser deposition welding, which
produces detailed shapes and features without complex molds or expensive
machining to finish a product as other methods require. See Cleveland ¶ 3;
see also Ans. 8 (citing id.); Final Act. 4. These teachings provide a rational
underpinning for the modification to Xu. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”). Furthermore,
we have repeatedly held that an implicit motivation to combine
exists not only when a suggestion may be gleaned from the
prior art as a whole, but when the “improvement” is
technology-independent and the combination of references
results in a product or process that is more desirable, for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or
process is universal—and even common-sensical—we have
held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the
references themselves. In such situations, the proper question is
whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references.

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DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
Appellant’s attempt to distinguish Xu’s rings from surface features of
Cleveland are not persuasive either. See Appeal Br. 9–10. Xu attaches rings
to a unitary annular case structure 68. Xu ¶ 17. The “rings” vary with needs
of a particular application and may be flanges for attaching engine case 60 to
other structures, external stiffening rings that add stiffness to engine case 60,
internal retaining flanges that support engine components positioned inside
engine case 60, accessory attachment rings that attach accessories external to
engine case 60, or scallops that reduce the ring’s weight. Id. ¶ 18.
Cleveland forms features on metal engine casings by laser deposition
welding. See Cleveland ¶¶ 4, 16. The free-formed features can be brackets,
mounting structures, surface recesses, surface contours, surface projections,
flanges, and the like. Id. ¶ 15. These features provide mounting or interface
projections, contours, or surface features with similar structure and functions
as Xu’s rings. Id. Appellant admits that Cleveland free forms such features
without explaining how the features differ from Xu’s “rings.” Appeal Br. 9–
10; Reply Br. 3. Claim 20 recites “applying additional material of at least
one substance” to a surface of a blank without specifying any other features.
Appellant’s effort to cabin Xu’s process to forging is not persuasive
because Xu also forms the rings by extrusion, casting, and machining of bar-
stock/tube-stock depending on the application. See Appeal Br. 11; Xu ¶ 20.
Xu then attaches the rings to the casing by electron beam welding. Xu ¶ 20.
The Examiner proposes to improve Xu’s process by free-forming the
rings directly on the casing by laser deposition welding to produce structures
of a desired height and shape as Cleveland teaches. See Cleveland ¶¶ 16, 17.
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Rather than forming rings by forging, extrusion, casting, or machining
processes and then attaching the rings to a case by electron welding as Xu
does, Cleveland free forms such features directly onto a casing to improve
efficiency. Cleveland ¶ 3. Cleveland free-forms the surface features to any
desired size and shape without having to use or make new molds/forms that
are required in Xu’s forging, extrusion, or casting, and Cleveland’s process
can reduce the amount of machining required to finish features compared to
Xu’s pre-forged or pre-molded rings. See id. ¶¶ 3, 18, 25; Xu ¶ 20; Ans. 8.
Appellant is correct that Cleveland discusses the expense of molds for
making engine casings with extra material for interfaces and projections that
must be machined out of the molded casing. Appeal Br. 11. However, Xu
makes similar “near net shape” rings by processes that use molds/forms, and
the forged/cast/extruded rings must be machined to yield a final shape. See
Xu ¶¶ 17–20, Figs. 2, 4, 5 (dashed lines show material to be removed).
Cleveland’s use of laser deposition welding to obviate the need for
expensive molds, moldings steps, and machining applies similarly to Xu’s
process of making rings using molds/forms that must be changed to make
rings of different sizes and shapes, and also must be machined. See Ans. 8;
In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003) (“As persons of scientific
competence in the fields in which they work, [E]xaminers and administrative
patent judges are responsible for making findings, informed by their
scientific knowledge, as to the meaning of prior art references to persons of
ordinary skill in the art and the motivation those references would provide to
such persons. Absent legal error or contrary factual evidence, those findings
can establish a prima facie case of obviousness.”); KSR, 550 U.S. at 417 (use
of known technique to improve similar devices similarly); Reply Br. 2–4.
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These express teachings of Cleveland, particularly as they interrelate
to those of Xu, provide sufficient facts to support the motivation to combine
their teachings as the Examiner proposes to do. See KSR, 550 U.S. at 518
(“Often, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.”); see also Nike Inc. v. Adidas AG, 812 F.3d
1326, 1337 (Fed. Cir. 2016) (“We thus agree with the Board that the prior art
references ‘serve the same purpose’ of efficiently creating knitted articles
. . . . a skilled artisan interested in Nishida’s preference to minimize waste
in the production process would have logically consulted the well-known
practice of flat-knitting, which eliminates the cutting process altogether.”).
Supported by such factual underpinnings, the Examiner’s motivation
to combine teachings of Xu and Cleveland addresses Appellant’s hindsight
argument. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016)
(holding that the appellant’s hindsight argument was addressed by showing
that a proper motivation to combine the references in fact existed).
Accordingly, and for the foregoing reasons, we sustain the rejection of
claim 20 and of claims 21, 23–32, 38, and 39, which fall therewith.
Claims 34 and 35
Claim 34 recites “a contact surface is worked into the forged blank.”
Appeal Br. 22 (Claims App.). Claim 35 recites that “a contact surface is
turned into an interior of the region of the forged blank.” Id. The Examiner
relies on Xu to teach these features. Final Act. 5.
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In particular, the Examiner finds that Xu teaches to machine a contact
surface (a faying surface) into a near net shape ring and on the annular case
of forged case 68 to provide contact surfaces where the rings are welded to
the casing along the exterior and the interior of a flange region of the forged
case. Final Act. 5; Ans. 9 (citing Xu ¶¶ 19–21); see also Xu, Figs. 2, 5.
Appellant acknowledges the Examiner’s finding that Xu/Cleveland
teaches contact surfaces at weld joints 98, 100, 102, 104, 106 in Figure 2 of
Xu ’s but argues that the Examiner provided no explanation in this regard.
Appeal Br. 12. This argument is not persuasive because it does not explain
why Xu’s faying surfaces do not correspond to the claimed contact surfaces.
See 37 C.F.R. § 41.37(c)(1)(iv); see also In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (noting the Board’s long-standing practice under its rules to
require an applicant to identify the alleged error in an examiner’s rejections);
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding “the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
The Specification describes the contact surfaces as being turned or machined
into a forged blank to allow further machining of the blank. Spec. 7:15–20.
Thus we sustain the rejection of claims 34 and 35.
Claim 22
Rejected over Xu, Cleveland, and Jakimov
The Examiner relies on Jakimov to teach the application of additional
material via kinetic cold gas compaction as recited in claim 22. Final Act. 6.
The Examiner determines it would have been obvious to use this method to
make Xu’s rings as a known effective additive manufacturing process. Id.
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Appellant argues that Jakimov does not provide additional material on
a substrate or forged blank as claimed but instead manufactures thin-walled
structural components on a substrate and then detaches the component from
the substrate after it has been formed so the material does not become part of
the substrate. Appeal Br. 13–14.
In response, the Examiner clarifies that Jakimov is relied on solely to
modify Cleveland’s laser deposition welding process, which already deposits
material on a substrate as claimed, to a kinetic cold gas compaction process
to overcome the long manufacturing time associated with a laser deposition
welding process as Jakimov teaches. Ans. 9 (citing Jakimov ¶¶ 3–5).
Appellant does not respond further. See Reply Br. 2–6.
Jakimov teaches that a kinetic cold gas compacting process provides a
simple and effective method to implement in making structural components
and has shorter manufacturing times than laser powder deposition welding.
Jakimov ¶ 3. A “kinetic cold gas compacting method makes it possible to
produce a homogeneous microstructure without great variations in chemical
composition over the entire extent of the component, so that a very compact
and dense structure without porosity can be obtained.” Id. ¶ 5.
Jakimov’s teachings provide a rational underpinning to replace the
laser deposition welding process of Cleveland as applied to Xu as a more
effective process for making Xu’s rings. Final Act. 6. Such a predictable
use of prior art techniques according to their established functions would
have been obvious to a skilled artisan to provide similar improvements
absent evidence that its application is beyond the level of ordinary skill in
the art. See KSR, 550 U.S. at 417. Appellant’s arguments do not address the
level of difficulty in doing so. See Appeal Br. 13–14; see also Reply Br. 5.
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Contrary to Appellant’s arguments, Jakimov teaches that the thin-
walled structural components can remain attached to the substrate after
formation by kinetic cold gas compacting. See Appeal Br. 13–14; Reply Br.
5–6; Jakimov ¶ 9. These structural components are made for gas turbines
and aircraft engines. Id. ¶¶ 4, 19. Jakimov’s teachings provide a rational
underpinning for the Examiner’s determination that it would have been
obvious to a skilled artisan to use a kinetic cold gas compacting process in
lieu of the laser deposition welding method of Cleveland to make Xu’s rings
to achieve the advantages taught in Jakimov for kinetic cold gas compacting
over laser deposition welding. Final Act. 6.
Jakimov uses a kinetic cold gas compacting process to form structural
features of a gas turbine engine as Xu does for rings. Claim 20 only requires
“additional material” to be applied to a forged blank. In this regard, Jakimov
teaches that “the deposition can take place directly on the already existing
semifinished product.” Jakimov ¶ 6. Jakimov’s kinetic cold gas compacting
process thus would form features such as “rings” on Xu’s engine case 60 by
applying additional material to the case/blank as claimed.
Thus, we sustain the rejection of claim 22.
Claim 33
Rejected over Xu, Cleveland, and Stoltenhoff
Appellant argues that the Examiner’s reliance on Stoltenhoff to teach
the electrochemical removal of material as recited in claim 33 does not cure
the deficiencies of Xu and Cleveland as to claim 20 from which claim 33
depends. Appeal Br. 14–15. Because we sustain the rejection of claim 20 as
unpatentable over Xu and Cleveland, this argument is not persuasive and we
also sustain the rejection of claim 33.
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Claim 36
Rejected over Xu, Cleveland, and Ravenhall
The Examiner relies on Ravenhall to teach aircraft engine structural
components made of a titanium alloy as recited in claim 36. Final Act. 7.
The Examiner determines it would have been obvious to a skilled artisan to
make the blank and applied material of the modified Xu method of titanium
alloy such as Ti-63 and Ti-6242 taught by Ravenhall because these materials
are known to have material characteristics that are ideal for aircraft engine
structural components. Id. The Examiner reasons that because Ravenhall
teaches that these materials are used in gas turbine engines similar to the gas
turbine engine case of Xu, these materials satisfy the requirements for the
working environment of gas turbine engines such as high temperature and
stress and therefore a skilled artisan would have been motivated to use these
materials for the claimed blank and applied material of Xu. Ans. 10.
Appellant argues that the aircraft engine structural components in
Ravenhall are cast articles with a reinforced structural composite core and
the cast articles “have virtually nothing in common with the turbine casing
of XU.” Appeal Br. 15–16. Appellant argues that the issue is whether it
would have been obvious to use Ti-64 for the forged casing blank of Xu and
to use Ti-6242 for making the rings of Xu. Id. at 16.
Ravenhall teaches titanium as a material of choice in making high
strength aircraft engine structural components because of its low density,
high strength, and high stiffness. See Ravenhall 1:15–20. More particularly,
Ravenhall uses the claimed titanium alloys, namely, Ti-64 and Ti-6242, to
make different aircraft parts such as engine struts, peripheral structures, and
sheaths of turbine gas engine frames 10. Id. at 3:7–13, 6:19–31, Fig. 1.
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The Examiner reasons that these teachings of Ravenhall would have
motivated a skilled artisan to make the claimed blank and additional material
of these titanium alloys as recited in claim 35 because Ravenhall teaches to
use these different alloys to make different parts for gas turbine engines such
as casings and structural components that are connected. Final Act. 7; Ans.
10. The Examiner also reasons that these teachings would have motivated a
skilled artisan to modify the process of Xu to make the casing and rings of
the claimed alloys for similar expected benefits. See Final Act. 7; Ans. 10.
Appellant’s arguments do not apprise us of error in the Examiner’s
findings and determination in this regard, and we agree with the reasoning
set forth by the Examiner. Appeal Br. 15–16. Ravenhall’s use of these
titanium alloys in a metal matrix composite structure is not dispositive and is
not precluded by claim 36, which recites “the forged blank is produced from
Ti-64 and the applied material comprises Ti 6242.” Claim 36 is open-ended.
It does not proscribe the use of other elements with the claimed alloys.
The Specification discloses that “it is for example possible for the
forged blank to be produced from Ti-64 and for the functional regions to be
produced from Ti 6242.” Spec. 6. This allows the blank to have a first alloy
composition such as Ti-64 and the functional element to have a second alloy
composition such as Ti 6242. Id. at 10. No unexpected results or criticality
are described for this feature, however, and Appellant does not argue or
present evidence of such unexpected results or criticality.
Cleveland teaches titanium or alloy powder or other metal deposited
on a workpiece and formed by laser deposition welding. Cleveland ¶ 16.
Jakimov teaches that various superalloys can be used to form layers by
kinetic cold gas spraying/compacting. See Jakimov ¶¶ 19, 42.
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Claim 36 does not recite any properties of the claimed titanium alloys.
Claim 36 requires the blank to be formed of one alloy and applied material
to comprise another. The Examiner identifies prior art teachings that use the
alloys in gas turbine engine components. Appellant has not persuaded us of
error in the Examiner’s findings that Ravenhall teaches the claimed titanium
alloys or reasoning that a skilled artisan would have used the alloys in Xu’s
engine casing and components for similar results. See KSR, 550 U.S. at 418
(court can consider inferences and creative steps a skilled artisan would use).
For the foregoing reasons, we sustain the rejection of claim 36.
Claim 37
Rejected over Xu, Cleveland, and Durocher
Claim 37 depends from claim 20 and recites “the forged blank is
produced from IN625 and the applied material comprises IN718 or DA718.”
The Examiner finds that Durocher teaches a gas turbine engine shroud made
of IN625 or IN718 and determines it would have been obvious to a skilled
artisan to make the blank and applied material of Xu and Cleveland of these
alloys to display material characteristics ideal for aircraft engine structure
components. Final Act. 8; Ans. 10.
Appellant argues that Durocher teaches to make feather seal 40 and
metal inject a shroud body around that seal to provide a shroud segment with
an integrated feather seal, and “[i]t is not seen that a feather seal and the
turbine casing or the rings of Xu have anything in common with a feather
seal.” Appeal Br. 17–18. Appellant also argues that the issue is whether it
would have been obvious to use IN625 for the forge casing blank of Xu and
DA718 for making the rings of Xu, and the Examiner has not provided any
explanation in this regard. Id. at 18.
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The Specification does not ascribe criticality or unexpected results to
the claimed alloys. Spec. 6, 10. Nor does Appellant present evidence of
unexpected results or criticality to produce the forged blank from IN625 and
the applied material to comprise IN718/DA718.
The Examiner correctly finds that Durocher uses/applies the alloys in
a gas turbine engine shroud and reasons that it would have been obvious to
use/apply the alloys for Xu’s similar casing and rings for predictable results.
Ans. 10. Appellant’s arguments do not apprise us of Examiner error in this
regard. See KSR, 550 U.S. at 417 (holding that the use of a technique that
improves one device to improve similar devices in the same way is obvious
unless its application is beyond the level of ordinary skill in the art).
Thus, we sustain the rejection of claim 37.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
20, 21, 23–32,
34, 35, 38, 39
103 Xu, Cleveland 20, 21, 23–32,
34, 35, 38, 39

22 103 Xu, Cleveland,
Jakimov
22
33 103 Xu, Cleveland,
Stoltenhoff
33
36 103 Xu, Cleveland,
Ravenhall
36
37 103 Xu, Cleveland,
Durocher
37
Overall
Outcome
20–39
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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