Enzo Macchia et al.Download PDFPatent Trials and Appeals BoardDec 5, 201913189100 - (D) (P.T.A.B. Dec. 5, 2019) Copy Citation 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. 13/189,100 07/22/2011 Enzo Macchia 05002993-1398US JR/fb 9540 32292 7590 12/05/2019 NORTON ROSE FULBRIGHT CANADA LLP (PWC) 1, PLACE VILLE MARIE SUITE 2500 MONTREAL, QUEBEC H3B 1R1 CANADA EXAMINER BEEBE, JOSHUA R ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 12/05/2019 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): ipcanada@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ENZO MACCHIA, BARRY BARNETT, ANDREAS ELEFTHERIOU, TOM MCDONOUGH, GEORGE GUGLIELMIN, and JOE LANZINO ____________ Appeal 2019-002824 Application 13/189,100 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–3, 5, 8–19, and 24–27. 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 Pratt & Whitney Canada Corp., as the real party in interest. Appeal Br. 2. Appeal 2019-002824 Application 13/189,100 2 THE INVENTION Appellant’s invention relates to casings for gas turbine engines. Spec. ¶ 2. Claim 1, reproduced below with paragraph indentation added, is illustrative of the subject matter on appeal. 1. An engine casing for a gas turbine engine, comprising an annular non-metallic casing formed of a non-metallic substrate core defining a blade containment zone, and a nanocrystalline metal coating provided on a non-metallic substrate material of the non-metallic substrate core and extending therearound a circumferential extent, the nanocrystalline metal coating encapsulating and strengthening said portion of the non-metallic substrate material, the non-metallic substrate core being sandwiched by the nanocrystalline metal coating which is disposed on both the inner and the outer surfaces thereof. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Porcelli US 4,377,370 Mar. 22, 1983 Lawson US 2005/0238484 Al Oct. 27, 2005 Palumbo US 7,354,354 B2 Apr. 8, 2008 Coupe US 2008/0206048 Al Aug. 28, 2008 The following rejections are before us for review: 1. Claims 1–3, 5, 8–19, and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Coupe and Palumbo. 2. Claim 24 is rejected under 35 U.S.C. § 103 as being unpatentable over Coupe, Palumbo, and Lawson. Appeal 2019-002824 Application 13/189,100 3 3. Claims 26 and 27 are rejected under 35 U.S.C. § 103 as being unpatentable over Coupe, Palumbo, and Porcelli. OPINION Unpatentability of Claims 1–3, 5, 8–19, and 25 over Coupe and Palumbo Claim 1 Appellant presents arguments only as to claim 1 under this ground of rejection. Appeal Br. 9–13. We select claim 1 as representative such that the remaining claims under this ground of rejection will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Coupe discloses the invention substantially as claimed except for the nanocrystalline metal coating, for which the Examiner relies on Palumbo. Final Action 3–5. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to coat the casing of Coupe with a nanocrystalline metal as taught by Palumbo to achieve the claimed invention. Id. at 6. According to the Examiner, a person of ordinary skill in the art would have done this to derive the benefits of improved strength, erosion, outer appearance, ductility as well as reducing the thickness of the composite casing which would, in turn, reduce weight and improve engine performance. Id. Appellant argues that Coupe fails to teach sandwiching the non- metallic substrate core of a casing between coating layers of nanocrystalline metal. Appeal Br. 9. Appellant argues that Palumbo does not disclose coating an engine casing. Id. Although Appellant acknowledges that Palumbo discloses coating “aerospace parts,” Appellant argues that Palumbo Appeal 2019-002824 Application 13/189,100 4 does not disclose or suggest anything having the size and complexity of a gas turbine engine casing. Appellant further argues that a person of ordinary skill in the art would not have had the requisite motivation to modify Coupe by the teachings of Palumbo as found by the Examiner. Appeal Br. 11. Appellant argues that the Examiner’s stated reasons for making the proposed modification are not found in the cited references. Id. [T]he motivation to modify Coupe by Palumbo as suggested in the Office Action is not actually found in either one of Coupe or Palumbo. Id. Continuing on, Appellant criticizes the Examiner for not being an expert in the field of engine casings and further criticizes the Examiner for not being an “authority” on what was generally known in the art at the time of the invention. Id. Appellant concludes by arguing that the Examiner acted improperly by referring to non-cited references as evidence supporting a motivation to modify the applied art. Appellant’s ad hominem attack on the Examiner’s professional credentials and qualifications is not well taken. Examiners are considered to be persons of scientific competence in the fields in which they work and, as such, 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. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. Id. In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based Appeal 2019-002824 Application 13/189,100 5 upon the prior art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). When a prima facie case of obviousness is made, the burden then shifts to the applicant to come forward with evidence and/or argument supporting patentability. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). In the instant case, the Examiner has laid out a proper prima facie case of obviousness by relying on pertinent prior art references and offering cogent reasons to combine the prior art that are supported by articulated reasoning with rational underpinning. Final Action 3–6. At this juncture, the onus is on Appellant to rebut the Examiner’s case with evidence, technical reasoning, and supporting argument. Giannelli, 739 F.3d at 1379. Appellant cannot meet its burden by making personal attacks on the Examiner’s professional qualifications. Appellant’s criticism of the Examiner for citing non-applied art as evidence of the background knowledge of the person of ordinary skill and evidence of motivation to modify the applied art is similarly not well taken. In the case of Randall v. Rea, 733 F.3d 1355, 1361–63 (Fed. Cir. 2013), the court reversed a decision of the Board for engaging in a “blinkered focus” of just the applied art to the exclusion of non-applied references of record. In recognizing the role of common knowledge and common sense, we have emphasized the importance of a factual foundation to support a party’s claim about what one of ordinary skill in the relevant art would have known. [citations omitted]. One form of evidence to provide such a foundation, perhaps the most reliable because not litigation-generated, is documentary evidence consisting of prior art in the area. Id. at 1362–63. The Examiner acts properly in supporting the rejection with non-applied art references that tend to show the background knowledge of Appeal 2019-002824 Application 13/189,100 6 the skilled artisan, particularly as it relates to whether the prior art could be modified in the manner proposed in the rejection. Id. Appellant’s criticism of the Examiner because the stated reasons for making the proposed modification are not “found in the cited references” (Appeal Br. 11) is not consistent with prevailing legal authority. A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as ‘the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references .... The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art.’ In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006) (quoting In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000)). The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007). Thus, since at least KSR, it has become settled law that a reason to modify a prior art reference may be found explicitly or implicitly in market forces; design incentives; the “interrelated teachings of multiple patents”; “any need or problem known in the field of endeavor at the time of invention and addressed by the patent”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21)). Furthermore, an implicit motivation to combine exists when the improvement is Appeal 2019-002824 Application 13/189,100 7 technology-independent and the combination of references results in a product that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Dystar Textilfarben GmBH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). In the instant case, the Examiner expressly finds that the proposed combination would result in a product that is stronger, lighter, more moisture resistant, and with an improved aesthetic appearance. Final Action 6. Appellant’s arguments that: (1) Coupe fails to teach sandwiching the non-metallic substrate core of a casing between coating layers of nanocrystalline metal; and (2) Palumbo does not disclose coating an engine casing, are not persuasive. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). With respect to Appellant’s argument that the proposed combination does not teach “sandwiching” the core between upper and lower layers of a metal coating, the Examiner states that Palumbo contemplates coating both inner and outer regions of a device. Ans. 4. According to the Examiner, the rejection contemplates coating both the inner and outer surface of the casing, which results in Coupe’s composite casing being “sandwiched” by Palumbo’s coating. Id. Palumbo is directed to producing lightweight articles comprising a polymeric material that is coated with find-grained metallic materials. Palumbo, Abstract. Such lightweight articles are reported to be particularly suitable for a variety of applications including aerospace and automotive Appeal 2019-002824 Application 13/189,100 8 parts. Id. Palumbo teaches that its invention may cover the inner or outer surfaces of parts, including complex shapes. Id. at col. 8, ll. 63–67. An engine casing has an inner and an outer surface. Appellant provides no persuasive reason or explanation as to why a person of ordinary skill in the art would have coated only the inner or only the outer layer of Coupe’s casing, but not both. The Examiner is correct that coating the inner and outer surfaces results in the claimed “sandwich.” Ans. 4. Thus, Appellant’s “sandwich” argument does not apprise us of Examiner error. With respect to Appellant’s argument based on the size and complexity of the engine casing, the Examiner states: A fan casing is an enlarged round tube. Palumbo clearly acknowledges being applied to tubes, but more importantly, explicitly spells out large structures such as vehicle frames and far more complex shapes, than a large cylinder, in Col. 1, ll. 20- 34.[] The office cannot accept a biased argument by Appellant with no factual underpinning, that the shape is to[o] complex (simple cylinder of a gas turbine aeroengine vs Palumbo’s recognized more complex shapes of running boards, vehicle frames, fuel rails, sports racquets) or size (Palumbo’s method can be clearly be applied from small, golf club, to significantly larger vehicle frames, without any trouble to one of at least Palumbo’s ordinary skill in the art.). Ans. 6. “An obviousness determination requires finding that a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art and would have had a reasonable expectation of success in doing so.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286, 1291 (Fed. Cir. 2018). “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Systems, Inc. Appeal 2019-002824 Application 13/189,100 9 v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). In other words, “one must have a motivation to combine accompanied by a reasonable expectation of achieving what is claimed in the patent-at-issue.” Id. A reasonable expectation of success addresses whether a person of ordinary skill in the art would have understood that the proposed modification would have been reasonably likely to be successful. See, e.g., UCB, Inc. v. Accord Healthcare, Inc., 890 F.3d 1313, 1325–26 (Fed. Cir. 2018). “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). Palumbo teaches that its invention is applicable to a wide variety of articles, including, without limitation, sporting goods as well as automotive, aerospace and industrial components. Palumbo, col. 7, ll. 37–49. Under the circumstances, we are not persuaded by Appellant’s argument that Palumbo does not disclose or suggest coating anything having the size and complexity of a gas turbine engine casing. Appeal Br. 10. Appellant does not direct our attention to any language in Palumbo that limits its applicability to small articles with simple shapes. Furthermore, Appellant offers no evidence or technical reasoning that would tend to show that a person of ordinary skill in the art would not have had a reasonable expectation of success in applying Palumbo’s teaching to a turbine engine casing. Moreover, the fact that Palumbo expressly teaches that its invention is applicable to a wide variety of articles, including aerospace parts, is sufficient to establish that an artisan’s expectation of success in applying Palumbo to an engine casing would have been “reasonable.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, Appeal 2019-002824 Application 13/189,100 10 1364 (Fed. Cir. 2007) (“the expectation of success need only be reasonable, not absolute”). In view of the foregoing discussion, we determine the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner’s legal conclusion of unpatentability is well-founded. Accordingly, we sustain the Examiner’s unpatentability rejection of claims 1–3, 5, 8–19, and 25. Unpatentability of Claim 24 Over Coupe, Palumbo, and Lawson Claim 24 depends from claim 1 and is not separately argued. Claims App. We summarily sustain the Examiner’s unpatentability rejection of claim 24. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims). Unpatentability of Claims 26 and 27 Over Coupe, Palumbo, and Porcelli Claim 26 is an independent claim that is substantially similar in scope to claim 1, except that it recites at least one honeycomb layer in its substrate core. Claims App. Claim 27 depending therefrom is not separately argued and will stand or fall with claim 26. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner relies on Porcelli as disclosing a honeycomb layer. Final Action 13. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Coupe so as to include a honeycomb layer. Id. According to the Examiner, a person of ordinary skill in the art would have done this to provide improved containment of blade fragments. Id. Appeal 2019-002824 Application 13/189,100 11 Appellant argues that the applied art fails to disclose a non-metallic substrate core with multiple composite layers including at least one honeycomb layer as claimed. Appeal Br. 9. However, Appellant’s argument fails to rise to the level of a separate argument for patentability of claim 26. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires more than recitation of the claim elements and a naked assertion that the elements are not found in the prior art). We sustain the rejection of claims 26 and 27. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) Aff’d Rev’d 1-3, 5, 8-19, 25 103 Coupe, Palumbo 1-3, 5, 8-19, 25 24 103 Coupe, Palumbo, Lawson 24 26, 27 103 Coupe, Palumbo, Porcelli 26, 27 Overall Outcome 1-3, 5, 8-19, 24-27 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 Copy with citationCopy as parenthetical citation