Nicholas D. Stilin et al.

Patent Trials and Appeals Board

Dec 11, 2019

13527036 - (D) (P.T.A.B. Dec. 11, 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.
13/527,036 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.
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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
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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
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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
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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
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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.
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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
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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