Ex Parte Trindade et al

Patent Trial and Appeal Board

Oct 24, 2013

11481110 (P.T.A.B. Oct. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICARDO TRINDADE,
EDWARD F. PIETRASZKIEWICZ and MATHEW C. GARTLAND
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Appeal 2011-011131
Application 11/481,110
Technology Center 3700
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Before MICHAEL L. HOELTER, LYNNE H. BROWNE and
CARL M. DeFRANCO, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE

Ricardo Trindade et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 13-30. Claims 1-12 are
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 13 and 21 are independent; claim 13 is reproduced below:
13. A turbine engine structure comprising:
a wall having an exterior surface and a
defining a passage,
a locating hole extending through the wall
from the exterior surface to the passage and
generally normal to the exterior surface, and
a film hole recessed in the exterior surface
adjoining the locating hole and in communication
with the passage.

PRIOR ART
Scricca US 5,649,806 Jul. 22, 1997
Fehrenbach US 6,329,015 B1 Dec. 11, 2001
Tiemann US 6,530,416 B1 Mar. 11, 2003
Beck US 2006/0162893 A1 Jul. 27, 2006

GROUNDS OF REJECTION ON APPEAL

1. Claims 21-28 and 30 stand rejected under 35 U.S.C. § 112, second
paragraph as indefinite.
2. Claim 21 stands rejected under 35 U.S.C. § 102(e) as anticipated by
Beck.
3. Claim 21 stands rejected under 35 U.S.C. § 102(e) as anticipated by
Fehrenbach.
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4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Beck and Tiemann.
5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Fehrenbach and Tiemann.
OPINION
Indefiniteness
Appellants argue claims 21-28 and 30 as a group. See App. Br. 4-5.
We select independent claim 21 as the representative claim and claims 22-28
and 30 stand or fall with claim 21 with respect to this ground of rejection.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Regarding claim 21, the Examiner finds that it would not have been
“clear . . . whether or not the applicant is positively claiming a film hole
adjoining the locating hole, and how a film cooling hole can adjoin a
locating hole without consuming it.” Ans. 3-4. In support of the rejection
the Examiner states that “there is an apparent contradiction in the claim.
The contradiction is that the claim requires ‘a film hole recessed in the
exterior surface adjoining the locating hole’, while positively reciting ‘the
locating hole not consumed by the film hole.’” Ans. 10-11. We discern no
apparent contradiction in these two limitations. As argued by Appellants,
such a configuration is shown in Appellants’ figure 5B. See App. Br. 5;
Reply Br. 1. We further note that Appellants’ Specification states that “the
locating holes 60 may not necessarily all be consumed by film holes 62.”
Spec., para. [0024].
The Examiner further alleges that the Specification does not provide
support for the claimed subject matter and concludes that the claim language
is indefinite. See Ans. 11. The Examiner applies the incorrect standard for
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determining whether or not claim 21 is indefinite. The test for definiteness
under 35 U.S.C. § 112, second paragraph, is not whether there is support for
the claimed subject matter, the test is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). The Examiner has failed to
explain why one of ordinary skill in the art would not understand what is
claimed.
For these reasons, we do not sustain the Examiner’s rejection of claim
21, and claims 22-28 and 30 which stand therewith, as indefinite.

Anticipation
Beck:
The Examiner finds that Beck discloses each and every limitation of
claim 21. In particular, the Examiner finds that Beck discloses a locating
hole 13 that is not consumed by the film hole 10. See Ans. 4 (citing Beck,
Fig. 1 and para. 0041). Appellants argue that Beck fails to disclose a
locating hole that is not consumed by the film hole as required by claim 21.
See App. Br. 5; Reply Br. 2. In support of this argument, Appellants
contend that in paragraph [0041] Beck does not “infer or require that the
locating hole not be consumed by the cooling hole.” App. Br. 6.
Appellants’ argument is not persuasive. As shown in figure 1, Beck’s
locating hole (13) is not consumed by its cooling (film) hole 10.
For these reasons, we sustain the Examiner’s rejection of claim 21 as
anticipated by Beck.

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Appellants have not appealed the rejection of claims 22, 24-27 and 30
as anticipated by Beck. Accordingly, we summarily sustain this rejection.
Fehrenbach:
The Examiner finds that Fehrenbach discloses each and every
limitation of claim 21. In particular the Examiner finds that Fehrenbach
discloses a locating hole 18 that is not consumed by the film hole 24. See
Ans. 5. Appellants argue that Fehrenbach fails to disclose a locating hole
that is not consumed by the film hole as required by claim 21. See App. Br.
5; Reply Br. 2. We agree. Fehrenbach does not directly address the final
relationship between its “locating” hole 18 and its “film” hole 24; however,
Fehrenbach states:
Directing the abrasive water jet as shown in FIG. 3
serves on initial impact to generate the desired
triangular shape for the opening 24, while the
energy dissipated as the abrasive water jet
continues down through the hole 18 to remove
material from the substrate 12 serves to enlarge the
hole 18. The result is the cooling hole 22 and
opening 24 and 15 noncircular shape 25 of the
dashed line shown in FIG. 4.

Fehrenbach, col. 5, ll. 11-17. Fehrenbach’s figure 4 appears to show the
non-circular shape 25 of “locating” hole 18 inside (i.e. consumed by) “film”
hole 24.
For these reasons, we do not sustain the Examiner’s rejection of claim
21.
Appellants have not appealed the rejection of claims 23-27 and 30 as
anticipated by Fehrenbach. Accordingly, we summarily sustain this
rejection.
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Obviousness
Beck and Tiemann:
The Examiner finds that Beck discloses every limitation of claim 13
except for “a locating hole [extending] generally normal to the exterior
surface.” See Ans. 7. The Examiner finds that “Tiemann discloses locating
holes (formed by 53) that are perpendicular to the exterior surface.” Id. The
Examiner further finds that the locating holes are cast generally normal to
the exterior surface “for the purpose of securing the cores to the exterior wall
and simplifying the construction of the connecting device to a cylinder
which can be more cheaply produced th[a]n more complicated geometries.”
Id.
Appellants first argue that “providing [] ‘normal’ locating hole does
not simplify construction.” App. Br. 7. In response to this argument, the
Examiner finds that “[t]he connecting devices (53) of Tiemann have a
simple construction and would be cheaper to produce than the more
complicated angled pin structure of Beck.” Ans. 15. The Examiner further
finds that “Tiemann discloses that this particular pin construction has the
advantage of forming a more consistent wall thickness.” Id. (citing
Tiemann, col. 2, ll. 16-31).
In response to the Examiner’s further finding regarding more
consistent wall thickness, Appellants argue that the text cited “does not
attribute a consistent wall thickness to the specific orientation of locating
pins.” App. Br. 7; Reply. Br. 2. We agree that this text does not attribute
consistent wall thickness to the normal orientation of Tiemann’s locating
pins (holes) 53; however, we do not find Appellants’ first argument
persuasive as Appellants have not provided any evidence or persuasive
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argument in support of their contention that normal locating holes do not
simplify construction.
For these reasons, we sustain the Examiner’s rejection of claim 13 as
unpatentable over Beck and Tiemann.
The Appeal Brief omits the rejection of claims 14, 16-19 and 29 as
unpatentable over Beck and Tiemann. Accordingly, we summarily sustain
this rejection.
Fehrenbach and Tiemann:
The Examiner finds that Fehrenbach discloses every limitation of
claim 13 except for “a locating hole [extending] generally normal to the
exterior surface.” See Ans. 8. The Examiner finds that “Tiemann discloses
locating holes (formed by 53) that are perpendicular to the exterior surface.”
Id. The Examiner further finds that the locating holes are cast generally
normal to the exterior surface “for the purpose of securing the cores to the
exterior wall and simplifying the construction of the connecting device to a
cylinder which can be more cheaply produced then more complicated
geometries.” Id.
Appellants present the same arguments for this rejection as discussed
supra with respect to the rejection based on Beck and Tiemann. See App.
Br. 7; Reply Br. 2. Appellants’ arguments are not persuasive for the same
reasons.
Accordingly, we sustain the Examiner’s rejection of claim 13 as
unpatentable over Fehrenbach and Tiemann.
The Appeal Brief omits the rejection of claims 15-19 and 29 as
unpatentable over Fehrenbah and Tiemann. Accordingly, we summarily
sustain this rejection.
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Beck, Tiemann and Scricca:
The Appeal Brief omits the rejection of claim 20 as unpatentable over
Beck Tiemann and Scricca. Accordingly, we summarily sustain this
rejection.
Beck and Scricca:
The Appeal Brief omits the rejection of claim 28 as unpatentable over
Beck and Scricca. Accordingly, we summarily sustain this rejection.

DECISION
The rejection of claims 21-28 and 30 as indefinite is REVERSED.
The rejection of claims 21, 22, 24-27 and 30 as anticipated by Beck is
AFFIRMED.
The rejection of claims 21 as anticipated by Fehrenbach is
REVERSED.
The rejection of claims 23-27 and 30 as anticipated by Fehrenbach is
AFFIRMED.
The rejection of claims 13, 14, 16-19 and 29 as unpatentable over
Beck and Tiemann is AFFIRMED.
The rejection of claims 13, 15-19 and 29 as unpatentable over
Fehrenbach and Tiemann is AFFIRMED.
The rejection of claim 20 as unpatentable over Beck, Tiemann and
Scricca is AFFIRMED.
The rejection of claim 28 as unpatentable over Beck and Scricca is
AFFIRMED.

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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).

AFFIRMED-IN-PART

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