Ex Parte Liang et al

Patent Trial and Appeal Board

Oct 18, 2013

13176078 (P.T.A.B. Oct. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
13/176,078 07/05/2011 George Liang 2010P26645US 3919
28524 7590 10/21/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
DAVIS, JASON GREGORY
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
10/21/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GEORGE LIANG and SANTIAGO R. SALAZAR
____________________

Appeal 2013-010592
Application 13/176,078
Technology Center 3700
____________________

Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
HYUN. J. JUNG, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13, 16-18, and 20-23.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1 and 9 are the independent claims on appeal. Claim 1 is
reproduced below and is illustrative of the appealed subject matter.
1. A ring segment for a gas turbine engine comprising:
a panel having a leading edge, a trailing edge, a first
mating edge, a second mating edge, an outer side, and an inner
side, wherein cooling fluid is provided to said outer side and
said inner side defines at least a portion of a hot gas flow path
through the gas turbine engine;
a first mating edge cooling system within said panel that
receives a portion of the cooling fluid provided to said outer
side of said panel for cooling said panel at one of said first and
second mating edges, said first mating edge cooling system
comprising at least one first mating edge impingement
chamber, each first mating edge impingement chamber
including:
at least one metering supply passage extending
from said outer side of said panel to said first mating
edge impingement chamber, wherein cooling fluid
impinges on a surface of said panel defining said first
mating edge impingement chamber as it flows into said
first mating edge impingement chamber through said at
least one metering supply passage; and
at least one metering discharge passage that
extends from said first mating edge impingement
chamber to said one of said first and second mating edges

1 Appellants identify the real party in interest as Siemens Energy, Inc. App.
Br. 3.
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of said panel for discharging cooling fluid from said first
mating edge impingement chamber, said at least one
metering discharge passage having a diameter that is
smaller than a diameter of said first mating edge
impingement chamber to provide metering for cooling
fluid being discharged from said first mating edge
impingement chamber.

REJECTIONS2
Appellant seeks review of the following rejections:
(1) claims 1-4 under 35 U.S.C. § 102(b) as anticipated by Parker (US
7,284,954 B2, iss. Oct. 23, 2007) (Ans. 3-5);
(2) claims 5, 6, and 8 under 35 U.S.C. § 103(a) as unpatentable over
Parker and Liang ‘108 (US 7,670,108 B2, iss. Mar. 2, 2010) (Ans. 6-7);
(3) claim 7 under 35 U.S.C. § 103(a) as unpatentable over Parker and
Liang ‘955 (US 7,665,955 B2, iss. Feb. 23, 2010) (Ans. 9);
(4) claims 1-4, 7-13, 16-18, 20, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Liang ‘955 and Parker (Ans. 9-18);
(5) claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Liang ‘955, Parker, and Liang ’108 (Ans. 19); and
(6) claims 21 and 22 under 35 U.S.C. § 103(a) as unpatentable over
Liang ‘955, Parker, and Tomita (US 7,033,138 B2, iss. Apr. 25, 2006) (Ans.
21-22).

2 The provisions of the America Invents Act (“AIA”) relating to 35 U.S.C.
§§ 102, 103 apply to applications having an effective filing date on or after
March 16, 2013. The effective filing date of the instant application is July 5,
2011, so the rejections are based on the pre-AIA versions of these statutes.
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ANALYSIS
Rejection (1)
The Examiner’s rejection is predicated on finding that Parker’s
openings 32 are metering supply passages as recited in claim 1. Ans. 3-4.
The Examiner reasoned that “[t]he openings of Parker have a limited
size/cross section and allow as much cooling fluid which can fill the opening
to pass through at any given time . . . [thereby] limit[ing] the amount of
cooling fluid from the outer plenum which can pass through the opening and
into the impingement chamber.” Id. at 23. The Examiner further reasoned
that “[t]he size of the openings relative to the ‘chamber’ does not undo the
control and restriction of the fluid which occurs between the plenum and the
opening.” Id. at 24.
Appellants contend that Parker’s openings 32 are not metering supply
passages and point to page 10 of the Specification in support of their
interpretation of the term “metering supply passage” as a passage that is
capable of restricting the amount of cooling fluid that can pass through the
cooling system. App. Br. 6-7. As amended, the last paragraph on page 10
of the Specification states that:
[A]s the cooling fluid associated with the first and second
mating edge cooling systems 72, 74 is metered twice, i.e., a first
time at the metering supply passages 90, 92 and a second time
at the metering discharge passages 98, 100 (since the diameters
of the metering discharge passages 98, 100 are smaller than the
diameters of the first and second mating edge impingement
chambers 94, 96, see Figs. 2-4), amounts of cooling fluid
provided to the first and second mating edge cooling systems
72, 74 are believed to be more accurately controlled.
Amendments to the Specification mailed March 1, 2013, p. 2. Appellants
contend that since Parker’s openings 32 “are the same size as the ‘chamber’
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that the openings (32) feed, a flow rate of the fluid passing therethrough is
not controlled or restricted” by the openings. App. Br. 8. Rather, “a
maximum amount of fluid capable of being held by the chambers is always
allotted into the chambers by the openings (32).” Reply Br. 2.
We agree with Appellants that the Examiner has erred in finding that
Parker discloses “at least one metering supply passage extending from said
outer side of said panel to said first mating edge impingement chamber” in
light of the Specification as it would be interpreted by one of ordinary skill
in the art. Parker’s openings 32 do not restrict the amount of cooling fluid
entering the impingement chamber of the cooling system.
For the foregoing reasons, Appellants have shown error by the
Examiner in finding that Parker discloses all of the limitations of claim 1,
and we do not sustain the rejection of claim 1, and dependent claims 2-4
which depend therefrom, as anticipated by Parker.

Rejections (2) and (3)
Claims 5-8 depend directly or indirectly from claim 1. The
Examiner’s rejections under 35 U.S.C. § 103(a) of claims 5-8 rely on the
Examiner’s erroneous finding that Parker teaches at least one metering
supply passage. Ans. 6-9. The Examiner has not explained how Liang ‘108,
Liang ‘955, or an engineering expedient might cure this deficiency.
Accordingly, for the reasons discussed supra, we do not sustain the
Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 5, 6, and 8 as
unpatentable over Parker and Liang ‘108; and claim 7 as unpatentable over
Parker and Liang ‘955.

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Rejection (4)
Claims 1-4, 7-13, 16-18, and 20
The Examiner’s rejection is predicated on finding that Liang ’955’s
vortex channel feed holes 46 are metering supply passages as recited in
claim 1. Ans. 10. The Examiner reasoned that “[t]he vortex channel feed
holes [46] do restrict and control the amount of fluid from the plenum to the
vortex cooling channel.” Id. at 27. Appellants’ contention that Liang ’955’s
vortex channel feed holes 46 are not metering supply passages is not
persuasive because it does not provide evidence or cogent reasoning as to
why the Examiner’s finding is incorrect. App. Br. 12.
The Examiner’s rejection is also predicated on finding that Liang ’955
discloses that “cooling fluid impinges on a surface of the panel defining the
first mating edge impingement chamber as it flows into the first mating edge
impingement chamber through the at least one metering supply passage.”
Ans. 10. The Examiner reasoned that “fluid would strike against the bottom
wall of the vortex cooling channel prior to forming a vortex flow” or that
“cooling fluid adjacent the far wall will flow radially inward and impinge on
the bottom surface.” Id. at 27-28 (citing Examiner-annotated Figure 3 of
Liang ’955).
Appellants contend that “cooling fluid entering the vortex channels
(18) . . . would flow down the smooth curves of the sidewalls that define the
vortex channels (18) . . . wherein there would be no striking of cooling fluid
against a wall to provide impingement cooling thereof.” App. Br. 13; see
also Reply Br. 5-6. We recognize the language of claim 1 relating to
“cooling fluid imping[ing] on a surface” to be a functional limitation. While
features of an apparatus may be recited either structurally or functionally,
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claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). “[A]pparatus claims cover what a device is, not
what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990). Therefore, as long as Liang ’955’s vortex
channel feed holes 46 are capable of allowing cooling fluid to impinge on a
surface defining the vortex channel 18, the feed hole satisfies the functional
limitation. Because of the similarities between Appellants’ metering supply
passages (see Amendments to the Specification mailed November 28, 2012,
p. 2 (“[t]he metering supply passages 90 . . . have circular cross sections and
are located toward the first mating edge 36 . . . .”)) and Liang ’955’s feed
holes (see Liang ’955, col. 4, ll. 42-44, 62-63 (“vortex channel feed hole 46
may feed cooling fluids to the vortex cooling channel 18 proximate to the
upstream edge 42 of the outer plate 22. . . . [and] [t]he vortex channel feed
holes 46 may be circular . . . .”)), the Examiner is on solid ground in finding
that the recited functional limitation would also be present in Liang ’955.
As such, Appellants have the burden of establishing that the feature would
not be present. See Schreiber, 128 F.3d at 1478 (once the Examiner finds
that the prior art structure would be capable of performing all of the
functions claimed, the burden shifts to the applicant to show that this is not
the case). Claim 1 does not include specific parameters for flow rate, and
Appellants do not provide evidence or persuasive reasoning as to why Liang
’955’s vortex channel feed holes 46 would not be capable of allowing at
least some portion of cooling fluid to strike the bottom of the vortex cooling
channel 18 as found by the Examiner under at least some flow conditions
(e.g., high velocity flow).
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The Examiner acknowledged that Liang ’955 fails to teach that the
diameters of the metering discharge passages are smaller than the diameters
of the impingement chambers, but found that Parker teaches discharge
passages having a smaller diameter than the impingement chamber. Ans.
10-11 (citing Examiner-annotated Figure 3 of Parker on page 6 of the
Examiner’s Answer). The Examiner concluded that:
[i]t would have been obvious to one having ordinary skill
in the art . . . to . . . make the discharge passages smaller in
diameter than the impingement chamber as taught by Parker . . .
to increase the metering of the fluid between the impingement
cavity and the area downstream of the discharge passage.
Id. at 11-12.
Appellants contend that modifying Liang ’955 as proposed by the
Examiner “would change the princip[le] of operation of the cooling
arrangement . . . by completely disrupting the precise layout of ring segment
cooling components in Liang [’]955.” App. Br. 13; see also Reply Br. 7.
The “principle of operation” referred to by Appellants relates to the “basic
principles” under which the prior art device was designed to operate. In re
Ratti, 270 F.2d 810, 813 (CCPA 1959). Under In re Ratti, “a change in the
basic principles” refers to change that is fundamental in scope so as to relate
to scientific or technical principles under which the invention is designed to
operate. We are not persuaded that a “change in the basic principles” occurs
by making Liang ’955’s exhaust orifices 48 smaller when Liang ’955’s
device, even as modified by Parker, continues to exhaust cooling fluids.
For the foregoing reasons, Appellants have failed to show error by the
Examiner in concluding that the subject matter of claim 1 is unpatentable
over Liang ’955 and Parker, and we sustain the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Liang ’955 and Parker.
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Appellants do not present separate arguments for claims 2-4, 7-13, 16-
18, and 20. App. Br. 14-15. Accordingly, for the same reasons discussed
supra, we also sustain the rejection of claims 2-4, 7-13, 16-18, and 20 as
unpatentable over Liang ’955 and Parker.
Claim 23
The Examiner acknowledged that Liang ’955, as modified by Parker,
fails to teach that the diameters of the metering supply passages closer to the
leading edge of the panel are larger than those closer to the trailing edge as
recited in claim 23, but found that Liang ’955 teaches “having different sized
supply passages based on different heat loads.” Ans. 18 (citing Liang ’955,
col. 2, ll. 9-16). The Examiner concluded that:
[i]t would have been obvious to one having ordinary skill in the
art . . . to modify the ring segment of Liang [’955] as modified
by Parker by increasing the diameter of the supply passages
near the leading edge to be larger than the supply passages near
the trailing edge as an engineering expedient for the purpose of
cooling the leading edge where the heat load may be larger.
Id. at 18-19.
Appellants contend that “[t]he Examiner’s conclusion of obviousness
is not supported by articulated reasoning or evidence and could only be
based on hindsight using the Appellant[s’] own disclosure as a guide.” App.
Br. 15. The Examiner responded that:
because the turbine ring segment is downstream of the
combustor of the turbine engine and the leading edge is closer
to the combustor, it experiences a higher temperature than the
trailing edge. Therefore, one having ordinary skill in the art
would recognize that the leading edge would require more
cooling and sizing the supply passages with a greater diameter
would provide more cooling fluid to the leading edge.
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Ans. 29-30. We do not agree with Appellants’ hindsight contention because
Appellants’ assertion fails to point out the error in the Examiner’s stated
rationale. See Ans. 18-19, 29-30.
For the foregoing reasons, Appellants have failed to show error by the
Examiner in concluding that the subject matter of claim 23 is unpatentable
over Liang ’955 and Parker, and we sustain the rejection of claim 23 under
35 U.S.C. § 103(a) as unpatentable over Liang ’955 and Parker.

Rejections (5) and (6)
Claims 5, 21, and 22
Appellants do not present separate arguments for the rejections of
claims 5, 21, and 22. App. Br. 16-17. Accordingly, for the same reasons
discussed supra, we also sustain the rejections, under 35 U.S.C. § 103(a), of:
claim 5 as unpatentable over Liang ’955, Parker, and Liang ’108; and claims
21 and 22 as unpatentable over Liang ’955, Parker, and Tomita.
Claim 6
The Examiner acknowledged that Liang ’955, as modified by Parker
and Liang ’108, fails to teach that the diameters of the metering supply
passages closer to the leading edge of the panel are larger than those closer
to the trailing edge as recited in claim 6, but found that:
It is well known in the art of shroud cooling that forming
the supply passages with different sized diameters will create a
pressure differential between the leading edge discharge fluid
and the trailing edge discharge fluid. It is beneficial to have the
leading edge have higher pressure so that the cooling fluid will
flow downstream upon exiting through the discharge passages.
Ans. 20. The Examiner concluded that:
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the ring
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segment of Liang [’]955 as modified by Parker and Liang
[’]108 by having the leading edge supply passages have a larger
diameter than the trailing edge supply passages as an
engineering expedient for the purpose of creating the desired
pressure gradient.
Id.
Appellants contend that “the Examiner’s reasoning . . . is flawed”
because Appellants’ “exemplary reasons for the metering supply passages of
the leading edge cooling system being larger than the metering supply
passages of the trailing edge cooling system . . . do not relate to cooling fluid
flowing downstream upon exiting the discharge passages, as asserted by the
Examiner.” App. Br. 16-17.
Appellant’s contention is unpersuasive because there is no
requirement that an artisan’s reasons for making modifications of the prior
art be the same as that of the patent applicant for the purposes of an
obviousness inquiry. See Ans. 30; see also In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en
banc) (citation omitted) (“Although the motivation to combine here differs
from that of the applicant, the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
obviousness.”)); see also In re Linter, 458 F.2d 1013, 1016 (CCPA 1972)
(“The fact that [A]ppellant uses [a claimed feature] for a different purpose
does not alter the conclusion that its use in a prior art composition would be
prima facie obvious from the purpose disclosed in the references.”).
For the foregoing reasons, Appellants have failed to show error by the
Examiner in concluding that the subject matter of claim 6 is unpatentable
over Liang ’955, Parker, and Liang ’108, and we sustain the rejection of
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claim 6 under 35 U.S.C. § 103(a) as unpatentable over Liang ’955, Parker,
Liang ’108, and an engineering expedient.

DECISION
The Examiner’s rejections of: claims 1-4 under 35 U.S.C. § 102(b) as
anticipated by Parker; and under 35 U.S.C. § 103(a), of: claims 5, 6, and 8 as
unpatentable over Parker and Liang ‘108; and claim 7 as unpatentable over
Parker and Liang ‘955 are REVERSED.
The Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 1-4,
7-13, 16-18, 20, and 23 as unpatentable over Liang ‘955 and Parker; claims
5 and 6 as unpatentable over Liang ‘955, Parker, and Liang ’108; and claims
21 and 22 as unpatentable over Liang ‘955, Parker, and Tomita are
AFFIRMED.
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

rvb