Enzo Macchia et al.

Patent Trials and Appeals Board

Dec 5, 2019

13189100 - (D) (P.T.A.B. Dec. 5, 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.
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.
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Application 13/189,100
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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.
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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
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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
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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
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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
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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
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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.
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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,
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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.
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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