Nicholas D. Stilin et al.Download PDFPatent Trials and Appeals BoardDec 11, 201913527036 - (D) (P.T.A.B. Dec. 11, 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. 13/527,036 06/19/2012 Nicholas D. Stilin 61634PUS01;67097-1866PUS1 4839 54549 7590 12/11/2019 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER CHRISTENSEN, DANIELLE M ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 12/11/2019 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte NICHOLAS D. STILIN and JEREMY L. FOX ____________ Appeal 2019-002833 Application 13/527,036 Technology Center 3700 ____________ Before JOHN C. KERINS, BRETT C. MARTIN, 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 1–8, 18, 26, 27, 29, and 30. 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 United Technologies Corporation as the real party in interest. Appeal Br. 2. Appeal 2019-002833 Application 13/527,036 2 THE INVENTION Appellant’s invention relates to guide vane airfoils in turbine engines. Spec. ¶¶ 1–4. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An airfoil comprising: an airfoil body extending between a leading edge and a trailing edge, a suction side and a pressure side, and a first end and a second end; at least one fitting separate and distinct from the airfoil body, the at least one fitting including a pocket in which at least one of the first end or the second end is disposed, the at least one fitting including mounting lugs configured to receive respective fasteners therein; and at least one shroud adhesively bonded to the at least one fitting, the at least one shroud including a plurality of distinct shroud pieces that circumscribe the at least one fitting, the distinct shroud pieces extending between first and second broadsides, perimeter edges, and interior edges that define an elongated, arcuate through-hole that extends between the first and second broadsides, the arcuate though-hole entrapping the pocket of the at least one fitting, and the at least one shroud including openings that correspond to the mounting lugs such that the fasteners can be received through the openings into the mounting lugs. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Roth US 4,832,568 May 23, 1989 Varsik US 5,411,370 May 2, 1995 Glover US 2002/0076320 Al June 20, 2002 Tiemann US 6,632,070 Bl Oct. 14, 2003 Harper US 2010/0254804 Al Oct. 7, 2010 Appeal 2019-002833 Application 13/527,036 3 The following rejections are before us for review: 1. Claims 1, 2, and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Harper, Varsik, and Tiemann. 2. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Harper, Varsik, Tiemann, and Glover. 3. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Harper, Varsik, Tiemann, and Roth. 4. Claims 5, 26, 27, 29, and 30 are rejected under 35 U.S.C. § 103 as being unpatentable over Harper, Varsik, Tiemann, Glover, and Roth. OPINION Unpatentability of Claims 1, 2, and 18 over Harper, Varsik, and Tiemann Claim 1 Appellant argues claims 1, 2, and 18 as a group. Appeal Br. 3–5. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Harper discloses the invention substantially as claimed except for adhesive bonding and a plurality of shroud pieces, for which the Examiner relies on Varsik and Tiemann respectively. 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 modify Harper with the teachings of Varsik and Tiemann to achieve the claimed invention. Id. According to the Examiner, a person of ordinary skill in the art would have done this to provide a means of coupling pieces together and simplify the manufacturing process. Id. Appellant argues that Varsik fails to teach adhesive bonding as claimed. Appeal Br. 3. Appellant argues that Varsik uses adhesive between Appeal 2019-002833 Application 13/527,036 4 base plate 70 and compartment 64 of shroud piece 60. Id. According to Appellant: [T]he adhesive would be between the compartment 64 and the base plate 70. There is no “fitting” in Varsik as claimed that has a pocket and mounting lugs, and Varsik, therefore, does not teach using adhesive between such a fitting and a shroud. Appeal Br. 3–4. Appellant further argues that Varsik’s base plate lacks “bolt holes.” Id. at 4 (“There are no bolts and thus no bolt holes”). In response to Appellant’s argument that Varsik’s adhesive is not located in an analogous location to that of Appellant, the Examiner finds that Varsik’s base plate 96 is coupled to wall 82 that extends from shroud 78 and that such base plate is coupled to such wall by adhesive. Ans. 3 (citing Varsik, col. 4, ll. 62–63). Since both Harper and Varsik disclose a separate component that is joined to a shroud, it would be reasonable for one having ordinary skill in the art to recognize that an adhesive can be used as a means for coupling components to a shroud. Id. In response to Appellant’s “bolt hole” argument, the Examiner considers Varsik’s base plate to be analogous to the fitting of Harper. The plate, while it does serve to locate the pins, would also be held in place by the pins should the adhesive fail, as the pins would prevent the plate from falling away just by their physical presence. And so . . . the pins do act as a secondary means of holding the plate in place. Id. at 4. Harper is directed to a stator vane assembly. Harper, Abstract. Harper teaches that vane 50 fits into pocket 42 of vane boot (fitting) 40. Id. ¶ 30, Figs. 3–5. Inner ring (shroud) 44 is connected to vane boot (fitting) 40 by screws 46. Id. As perhaps best seen in Figure 4, inner ring (shroud) 44 Appeal 2019-002833 Application 13/527,036 5 overlies and abuts boot (fitting) 40 in a manner that is substantially similar to the depiction in Figure 7 of Appellant’s disclosure. See Appellant’s Fig. 7. Varsik is directed to a vibration damping shroud for a turbine engine vane. Varsik, Abstract. Varsik’s vane 18 extends through aperture 80 in non- metallic shroud 18. Id., col. 5, ll. 51–63, Fig. 5. Sidewall 82 extends radially from aperture 80 to define chamber 84 for receiving the inner end of each vane 18. Id. Base plate 96 is positioned against sidewall 82 of shroud 18 and secured thereto with a “suitable adhesive.” Id. col. 7, ll. 41–-43. Having considered the competing positions of Appellant and the Examiner, we determine that the Examiner states the better position. In the first instance, we determine that Varsik’s sidewall 82 is an integral part of shroud 78, therefore, Varsik does teach adhesively bonding a fitting to a shroud. Secondly, even assuming, arguendo, that the location of Varsik’s adhesive is not identical to that of Appellant’s invention, it is located sufficiently proximate to that of Appellant’s invention and/or Harper’s screw location, that a person of ordinary skill in the art would have had a reasonable expectation of success in modifying Harper so as to connect the shroud and fitting with adhesive instead of screws. “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); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007) (“the expectation of success need only be reasonable, not absolute”). Thus, a claimed invention may be obvious even when the prior art does not teach each claim limitation, so long as the record contains some reason that would cause one of skill in Appeal 2019-002833 Application 13/527,036 6 the art to modify the prior art to obtain the claimed invention. Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 728 (Fed. Cir. 2002). Next, we do not find Appellant’s “bolt hole” argument persuasive. Claim 1 does not require the use of bolts to be used in conjunction with the claimed mounting lugs. Claims App. Instead, claim 1 merely recites that the mounting lugs are configured to receive “fasteners.” Id. Varsik’s shroud 78 features a radially extending cavity 88 defined by wall 90. Id. col. 6, ll. 1–9. Each such cavity contains a sleeve 92. Id. Sleeve 92 slidably engages support pin 72 that extends from inner case 22 to anchor the vane to the case in a manner that is “longitudinally and circumferentially secure.” Id. Varsik’s cavity 88 corresponds to Appellant’s claimed “mounting lugs.” Varsik’s pin 72 and sleeve 92 are received in cavity 88. Id. Figs. 5–6. Inasmuch as Varsik’s pin 72 and sleeve 92 arrangement anchor the vane in a manner that is “secure,” such arrangement qualifies as a “fastener” within the meaning of claim 1. Id., col. 6, ll. 1–9. Thus, cavity 88 is configured to receive a “fastener” within the meaning of claim 1. Id. Appellant argues that a person of ordinary skill in the art would not modify Harper with Varsik because Harper discloses that holes 43 have a common location to enable easy changing of boot 40. Appeal Br. 5. Appellant argues that placing Varsik’s adhesive between Harper’s boot 40 and ring 44 would frustrate the quick and easy replacement of boot 40 that Harper desires. Id. Consequently, according to Appellant, “one of ordinary skill in the art would be deterred from using the adhesive in Harper as proposed in the rejections.” Id. see also Reply Br. 2. Appeal 2019-002833 Application 13/527,036 7 Appellant’s argument is not persuasive. There is no requirement in claim 1 that the fitting be easily changeable. Thus, Harper’s easy change feature is extraneous to the instant invention. It is well settled that merely omitting an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill in the art. In re Karlson, 311 F.2d 581, 584 (CCPA 1963). “The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.” Winner Int'’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349, n.8 (Fed. Cir. 2000); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” An engine manufacturer that did not need or require a “quick change” feature for its vane fittings would not be dissuaded from using adhesive as an alternative means of attaching a fitting to a vane shroud. 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, 2, and 18. Unpatentability of Claims 3–5, 26, 27, 29 and 30 over Combinations Based on Harper, Varsik, and Tiemann These claims depend, directly or indirectly, from either claim 1 or independent claim 18. Claims App. Appellant does not argue for the separate patentability of these claims, which stand rejected as being unpatentable over Harper, Varsik, and Tiemann in combination with Appeal 2019-002833 Application 13/527,036 8 additional references, apart from arguments that we have previously considered and found unpersuasive with respect to the rejection of claims 1 and 18. Appeal Br. 5–6. Thus, we are not apprised of error and, accordingly, we sustain the rejections of claims 3–5, 26, 27, 29 and 30. CONCLUSION In summary: Claims Rejected § Reference(s)/Bases Aff’d Rev’d 1, 2, 18 103 Harper, Varsik, Tiemann 1, 2, 18 3 103 Harper, Varsik, Tiemann, Glover 3 4 103 Harper, Varsik, Tiemann, Roth 4 5, 26, 27, 29, 30 103 Harper, Varsik, Tiemann, Glover, Roth 5, 26, 27, 29, 30 Overall Outcome 1-8, 18, 26, 27, 29, 30 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