Ex Parte Boeck et al

Patent Trial and Appeal Board

Jul 24, 2018

14101956 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/101,956 12/10/2013
23280 7590 07/26/2018
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Alexander Boeck
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5038.1171 5206
EXAMINER
CHRISTENSEN, DANIELLE M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER BOECK,
MANFRED FELDMANN, and
STEPHEN ROYSTON WILLIAMS 1
Appeal2017-009497
Application 14/101,956
Technology Center 3700
Before: MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
SEAN P. O'HANLON, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 1 and 3-10. Final Act. 2; see also
App. Br. 2. Claim 2 is canceled. See Response to Office Action filed July
12, 2016; Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). For the
reasons explained below, we AFFIRM-IN-PART the Examiner's rejections.
1 MTU Aero Engines AG is the applicant as provided under 37 C.F.R. § 1.46
and is identified as the real party in interest. App. Br. 2.
Appeal2017-009497
Application 14/101,956
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a gas turbine blade, in
particular a turbine blade having an airfoil, a shroud or a shroud segment,
and a cutting tooth." Spec. ,r 2. Apparatus claims 1, 9, and 10 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A turbine blade comprising:
an airfoil;
at least one shroud or shroud segment in a radially outer
region; and
at least one cutting tooth for engaging at least once into at
least one abradable coating of a turbine casing during operation
of the turbine blade, the cutting tooth connected to the shroud
or the shroud segment;
wherein the cutting tooth is a portion of the airfoil.
REFERENCES RELIED ON BY THE EXAMINER
Wunderlich
Jain et al.
Kleinow et al.
US 8,152,455 B2
US 2012/0195742 Al
US 2013/0028741 Al
THE REJECTIONS ON APPEAL 2
Apr. 10, 2012
Aug. 2, 2012
Jan 31, 2013
Claims 1, 3, 4, 7, and 9 are rejected under 35 U.S.C. § I02(b) as
anticipated by Jain.
Claims 1, 5, 6, 8, and 10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Wunderlich and Jain.
Claim 9 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Jain and Kleinow.
2 According to the Examiner, "[t ]he rejection of claim 10 under 35 U.S.C.
[§] 112(a)" has "been withdrawn by the [E]xaminer." Ans. 2.
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Application 14/101,956
ANALYSIS
The rejection of claims 1, 3, 4, 7, and 9
as anticipated by Jain
Claims 1, 3, 4, and 7
Independent claim 1 recites the limitation "wherein the cutting tooth is
a portion of the airfoil." The Examiner finds that Jain's cutting tooth 148
meets this limitation, stating "the cutting tooth ( 148) is a portion of the
airfoil (64)." Final Act. 4; see also Ans. 3 ("Jain can be broadly interpreted
to read on the claimed invention."). Appellants disagree, stating that in Jain,
"the airfoil does NOT extend past the tip end 90" and that "the cutting tooth
148 is clearly NOT part of airfoil 64." App. Br. 5. Hence, according to
Appellants, Jain's "tooth 148 [is] clearly ... NOT a 'portion of the airfoil'
and is clearly ... not designed to deflect air." App. Br. 5. Appellants
further state, "[t]he shroud and airfoil are two separate parts" (App. Br. 5)
and "[t]he present invention's cutting tooth is a portion of the airfoil, and the
asserted tooth of Jain's is not." Reply Br. 2. 3
There is merit to Appellants' contentions. First, Appellants claim an
"airfoil" separate from a "shroud," and these items are also separately
described in Appellants' Specification. See App. Br., Claims Appendix 1;
Spec. ,r 33. Jain also differentiates between a shroud and an airfoil. See,
e.g., Jain ,r,r 4 (Discussing known turbine buckets that "include a shroud that
extends from an outer tip end of the airfoil."), 20, 22, and 23. More
particularly, Jain states that the referenced "cutting tooth 148 ... extends
outwardly from surfaces 128 and 130" with these surfaces 128 and 130
3 Appellants' Reply Brief lacks page numbering, hence we assign such
numbering starting with the Title page bearing page number 1.
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Appeal2017-009497
Application 14/101,956
being a part of"shroud rail 108." Jain ,r,r 24, 25 and Fig. 4. The Examiner
does not appear to differentiate between the various components comprising
the recited "turbine blade," stating instead, "Jain teaches an airfoil, shroud,
and cutting tooth all formed as one piece." Ans. 4.
We are instructed that "[c]laims cannot be 'anticipated' by devices
that are not the same." TF3 Limited v. Tre Milano, 2018 WL 3400644 (Fed.
Cir. 2016-2285, 7/13/2018). A rejection under anticipation requires that
"[t]he identical invention must be shown in as complete detail as is
contained in the patent claim." Richardson v. Suzuki Motor Co., 868 F.2d
1226, 1236 (Fed. Cir. 1989). Not only must each claim element be shown in
a single reference, but the elements must be "arranged or combined in the
same way as recited in the claims." Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1370 (Fed. Cir. 2008).
Accordingly, while it may be true that Jain's cutting tooth 148 is a
portion of the entire rotor assembly 28 (see Ans. 4), Jain's cutting tooth is
not depicted or described as being a portion of the airfoil component of that
assembly. See also Reply Br. 2 ("Simply being connected to the airfoil does
not make anything a 'portion of the airfoil' as claimed."). Thus, the
Examiner has not established by a preponderance of the evidence that Jain
anticipates the claimed turbine blade. Consequently, we do not sustain the
Examiner's rejection of claims 1, 3, 4, and 7 as being anticipated by Jain.
Claim 9
Independent claim 9 differs from above claim 1 in that claim 9 recites,
"a single cutting tooth" and "the cutting tooth connected solely to a front
side of the shroud." App. Br., Claims Appendix 2. Appellants contend,
"[t]he cutting tooth 148 of Jain clearly is connected to BOTH sides of the
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Application 14/101,956
front side of the shroud." App. Br. 6; see also Reply Br. 2 ("Jain thus
discloses two cutting teeth and the claim language of 'a single cutting tooth'
is not met or addressed."). Hence, according to Appellants, by reading this
limitation on Jain, "the Examiner simply reads out the term 'solely' in claim
9" (App. Br. 6) as well as "single." Reply Br. 2. Additionally, Appellants
state, "[i]n fact at page 8, the Examiner states 'Jain fails to disclose that
the cutting tooth is connected solely to a front side of the shroud."' App.
Br. 6 (referencing Final Act. 8). According to Appellants, "[t]his is a clear
admission that Jain does not anticipate claim 9." App. Br. 6.
In view of the above, we agree with Appellants that Jain's cutting
tooth 148 extends from opposite sides, and not "solely" or "singly" from a
front side, of Jain's shroud. This understanding is buttressed by the
Examiner's annotation of Jain's Figure 4 wherein the Examiner identified
and described the opposite projections of Jain's tooth 148 as each being a
separate tooth. See Ans. 4 (Addressing the annotated drawing and stating
"[ w ]here the forward and afterward projections along the rail were broadly
interpreted as separate teeth."), and 5. The Examiner's annotation and
accompanying statement further explains the Examiner's statement above
(i.e., "Jain fails to disclose that the cutting tooth is connected solely to a
front side of the shroud or the shroud segment.") (Final Act. 8), which
further undercuts the Examiner's conclusion that claim 9 is anticipated by
Jain. See Final Act. 3--4. Thus, as above, the Examiner has not established
by a preponderance of the evidence that Jain anticipates the claimed turbine
blade. We do not sustain the Examiner's rejection that claim 9 is anticipated
by Jain.
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Application 14/101,956
The rejection of claims 1, 5, 6, 8, and 10
as unpatentable over Wunderlich and Jain
Claims 1, 5, 6, and 8
Appellants contend that neither Wunderlich nor Jain disclose the
limitation discussed above, i.e., "the cutting tooth is a portion of the airfoil."
App. Br. 6; see also Reply Br. 3. Here, the Examiner relies on the teachings
of Wunderlich for disclosing this limitation. Final Act. 5 (Discussing
Wunderlich and stating, "wherein the cutting tooth is a portion of the
airfoil."). However, as with Jain, the corresponding cutting teeth in
Wunderlich (i.e., sealing fins 6) are actually a part of shroud 5, and not a part
of the airfoil or blade 3. See Wunderlich 2:29-35, Fig. 1. Accordingly, for
similar reasons, the Examiner has not established by a preponderance of the
evidence that the combination of Wunderlich and Jain renders the claimed
turbine blade obvious. We do not sustain the Examiner's rejection of claims
1, 5, 6, and 8 as being obvious over Wunderlich and Jain.
Claim 10
Independent claim 10 includes the limitation, "the airfoil having a
curved extension." The Examiner acknowledges that Wunderlich fails to
disclose this limitation and instead, addresses Jain's "cutting teeth ( 148) that
extend." Final Act. 7; see also Ans. 6, 9. The Examiner reasons that it
would have been obvious "to modify Wunderlich's turbine blade by adding
cutting teeth" because "Wunderlich teaches a front rail that is curved" and
hence "the cutting tooth that extends along the leading edge will also be
curved." Final Act. 8.
Although the Examiner's logic is correct as far as it goes, such logic is
premised on Jain's cutting tooth and on Wunderlich's "front rail" and
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Application 14/101,956
"leading edge" being a part of the airfoil (i.e., "the airfoil having").
Appellants contend that this "airfoil" feature is not disclosed in either ( or the
combination of) Wunderlich and/or Jain. See App. Br. 6; see also Reply Br.
3. Again, there is merit to Appellants' contentions. As above, Jain's airfoil
lacks this teaching and, as regarding Wunderlich's "front rail," Wunderlich
does not employ this term and hence it is not clear what structure the
Examiner is referencing. If the Examiner is referencing the "leading edge"
of forward sealing fin 6 (see Examiner's annotation ofWunderlich's Fig. 1
(Final Act. 7)), this sealing fin 6 is, like in Jain, a part of Wunderlich's
shroud 5. Accordingly, the Examiner has failed to indicate where the
combination of Wunderlich and Jain render obvious the limitation of "the
airfoil having." Final Act. 7. We do not sustain the Examiner's rejection of
claim 10 as being obvious over Wunderlich and Jain.
The rejection of claim 9
as unpatentable over Jain and Kleinow
As indicated above, the Examiner acknowledges that "Jain fails to
disclose that the cutting tooth is connected solely to a front side of the
shroud." Final Act. 8. Hence, the Examiner relies on Kleinow for teaching
"a shroud rail with a single cutting tooth" and that it would have been
obvious to combine Kleinow's single cutting tooth with Jain in order to
simplify manufacture (i.e., "reducing the number of cutting teeth"). Final
Act. 8-9; see also Ans. 11.
Appellants contend that in Kleinow, tooth 91 is mounted "at the top of
shroud 88" and not to its front as recited. App. Br. 7. However, Jain clearly
discloses a tooth extending from a front ( as compared to a top) of the shroud.
See Jain Fig. 4; see also Ans. 9. Appellants acknowledge same by stating,
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Application 14/101,956
"[t]he cutting tooth 148 of Jain clearly is connected to BOTH sides of the
front side of the shroud." App. Br. 6. Further, according to the Examiner,
"Kleinow teaches that it is well known in the art to form shroud segments
with teeth formed on only one side of the shroud segment." Ans. 11. Hence
the Examiner rejects claim 9 because it would have been obvious "to modify
Jain's turbine blade by forming the cutting tooth on only the front side of the
shroud rail, as taught by Kleinow." Final Act. 8-9; see also Ans. 11.
Consequently, Appellants' contention regarding Kleinow's top projection is
not persuasive of Examiner error.
Appellants also contend that "there simply is no reason to modify Jain
at all in view of Kleinow." Reply Br. 3. However, as above, the motivation
provided by the Examiner is to simplify manufacture by "reducing the
number of cutting teeth." Final Act. 9; see also Ans. 11. In view of the
above, Appellants are not persuasive that the Examiner's rejection lacks
articulated reasoning with rational underpinning to support a conclusion of
obviousness. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, we are
not persuaded by Appellants' arguments that the combination of Jain and
Kleinow fail to render claim 9 obvious. We sustain the Examiner's rejection
of claim 9 as being obvious over Jain and Kleinow.
DECISION
The Examiner's rejections of claims 1, 3-8, and 10 are reversed.
The Examiner's rejection of claim 9 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv).
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Appeal2017-009497
Application 14/101,956
AFFIRMED-IN-PART
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