UNITED TECHNOLOGIES CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 20, 202015108613 - (D) (P.T.A.B. May. 20, 2020) 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. 15/108,613 06/28/2016 Grant O. Cook III 67097-2830PUS1; 74590US02 7747 54549 7590 05/20/2020 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER PETERS, BRIAN O ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 05/20/2020 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 GRANT O. COOK III and WENDELL V. TWELVES Appeal 2019-006162 Application 15/108,613 Technology Center 3700 Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. 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 the real party in interest as United Technologies Corporation. Appeal Br. 1. Appeal 2019-006162 Application 15/108,613 2 CLAIMED SUBJECT MATTER The claims are directed to thermal expansion joints for a gas turbine engine. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A component for a gas turbine engine comprising: an underlying substrate; a plurality of ceramic panels having intermediate thermal expansion joints bonded by a bond layer to said underlying substrate, with said thermal expansion joints formed of a material having a greater coefficient of expansion than a material forming said ceramic panels, and said ceramic panels and said thermal expansion joints positioned to define an outer surface for the component. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Arnold US 5,489,074 Feb. 6, 1996 Sherman US 6,489,036 B1 Dec. 3, 2002 Strangman US 7,150,926 B2 Dec. 19, 2006 Dierksmeier US 7,789,621 B2 Sept. 7, 2010 Vance US 7,871,716 B2 Jan. 18, 2011 REJECTIONS Claims 1–5, 10, 11, 14–17, 19, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Vance. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Vance. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Vance and Strangman. Appeal 2019-006162 Application 15/108,613 3 Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Vance and Arnold. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Vance and Dierksmeier. Claims 12, 13, and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Vance and Sherman. OPINION Claims 1–5, 10, 11, 14–17, 19, and 20 Appellant argues claims 1–5, 10, 11, 14–17, 19, and 20 as a group. Appeal Br. 3–4. We select claim 1 as representative. Claims 2–5, 10, 11, 14–17, 19, and 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 requires “ceramic panels having intermediate thermal expansion joints . . . with said thermal expansion joints formed of a material having a greater coefficient of expansion than a material forming said ceramic panels.” Appellant’s sole dispute is whether Vance’s thermal expansion joint (grout 64) has a greater coefficient of thermal expansion than its ceramic panels (tiles 56, 58). Appeal Br. 3–4. The Examiner finds that Vance discloses this feature. Final Act. 5 (citing Vance 4:5–6). The Examiner explains that Vance discloses the recited thermal expansion relationship, finding that “Vance discloses that the outer layer of ceramic tiles may be alumina which has a thermal expansion coefficient of 7.2x10-6,” and “that the grout may be LaPO4 which has a thermal expansion coefficient of 7.9x10-6.” Final Act. 2 (citing Vance 3:57– 61, 4:7–12). Appellant responds that “the Examiner picks and chooses between the materials mentioned for the grout and the materials mentioned for the tile” and, in particular, “picks one of three distinct elements Appeal 2019-006162 Application 15/108,613 4 (alumina) for an outer layer of a tile” with “a single grout material among the six distinct proposed grout materials found at column 4 between lines 10 and 12.” Appeal Br. 3; see also Reply Br. 2 (citing In re Arkley, 455 F.2d 586, 587–88 (CCPA 1972)). Appellant explains that some combinations of the materials listed in Vance do not provide the recited thermal expansion relationship. Id.; Reply Br. 2–3. Appellant’s argument is not persuasive. We read Vance as disclosing a number of embodiments. As Appellant acknowledges, Vance discloses only three options for the outer tile layer material and six options for grout material––eighteen total material combination embodiments. One of the embodiments is the combination presented by the Examiner (ceramic tiles made of alumina and grout made of monazite2 (LaPO4)). This is not picking and choosing among different embodiments, as Appellant alleges. That other embodiments may not have the same thermal expansion relationship is not persuasive of error because the Examiner does not rely on those other embodiments. See, e.g., Appeal Br. 3 (“Why not also pick alumina for the grout?”). Appellant additionally contends that “‘alumina’ is not a single fixed material” and its coefficient of thermal expansion can “range above 8.0, and thus can be higher than the ‘grout’ numbers the Examiner cites.” Appeal Br. 3 (citing Product Sheet included in Evidence Appendix). Referring to Appellant’s Product Sheet, the Examiner finds that “[a]lumina has a coefficient of thermal expansion of 7.2 X 10-6 C-1 between 40-400°C and 8.0 x 10-6 C-1 at 800°C.” Ans. 3. Citing the “Journal of the American Ceramic 2 The Examiner notes that Vance’s spelling, “monazite,” appears to be in error. Ans. 3. Appeal 2019-006162 Application 15/108,613 5 Society,” the Examiner finds that “[t]he coefficient of thermal expansion of monazite increases with temperature from 7.5 X 10-6 C-1 at 20°C to 10.5 x 10-6 C-1 at 1000°C, with an average over this temperature range of 9.6 X 10-6 C-1. These values ... are approximately 25% higher than for alumina.” Id. (internal quotations omitted). Appellant does not dispute these particular findings and, instead, contends that “[t]here are other types of alumina” and “the article’s tests are not on pure monazite.” Reply Br. 3. Appellant, however, provides no persuasive explanation, supported by evidence, to its belief that one skilled in the art would not appreciate Vance’s disclosed monazite would not have a higher coefficient of thermal expansion than its disclosed alumina. The Examiner’s evidence supports such an understanding by one of ordinary skill. Appellant’s contention that “the Examiner’s own prior ‘evidence’ states that LaPO4 would have a CTE of 7.9” (Reply Br. 3) is also unpersuasive, as that value is one of the values within the range provided in the Examiner’s Answer, which explains that the coefficient of thermal expansion varies by temperature (Ans. 3). We again note that the claim merely recites that the thermal expansion joints be formed of a material having a greater coefficient of expansion than the material forming the ceramic panels. The Examiner has provided sufficient evidence that a person of ordinary skill would understand that monazite/alumina embodiment disclosed in Vance satisfies this recitation. Appellant additionally contends that monazite has “poor bonding properties with the other oxide such as alumina.” Reply Br. 3. This is unpersuasive because the Examiner’s rejection is based on anticipation, rather than obviousness, and, as explained above, the combination of Appeal 2019-006162 Application 15/108,613 6 monazite and alumina is disclosed in Vance as one of its embodiments. Moreover, that is a new argument, raised for the first time in the Reply Brief, and was not necessitated by anything presented in the Answer. Accordingly, that argument is improper. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). For the reasons above, the preponderance of the evidence supports the Examiner’s decision to reject claims 1–5, 10, 11, 14–17, 19, and 20. Claim 8 Claim 8 depends from claim 1, and further recites that “a cross-section of said joint between said components includes smaller end portions and an enlarged central portion.” The Examiner determines that “it would have been an obvious matter of design choice . . . to modify the joint’s cross- sectional shape as taught by Vance by utilizing a joint with smaller end portions and an enlarged central portion as claimed for the purpose of mechanically holding the panels to the substrate.” Final Act. 7–8 (citing MPEP § 2144.04 (IV)(B)). The Examiner notes that this is “the shape of the joint between the tiles found in Appellant’s Fig. 4D,” and “Appellant does not attribute any new or unexpected result to this shaped joint, merely that it is another way in which for [sic] form the joint.” Ans. 5. The Examiner explains that “the entire disclosure concerning Fig. 4D is found in a single sentence at [0056] which reads ‘Figure 4D shows panels 120 having a joint 124 formed of an enlarged central portion 128 and smaller fingers 122 and 126 at the edges.’” Id. at 5–6. The Examiner explains that because “this Appeal 2019-006162 Application 15/108,613 7 shape did not provide any new or unexpected result beyond what every other shape provided, i.e. the fastening of the tiles to the substrate, the shape was not critical and therefore was not given patentable weight.” Id. at 6. Appellant contends that “an Examiner cannot merely recite ‘design choice’ to fill a void in a factual record to support a finding of obviousness.” Appeal Br. 4. Appellant contends that “claim 8 requires a shape and not merely a size.” Id. at 5. In its Reply Brief, Appellant contends that “[c]laim 8 recites the shape of Figure 4D,” and “it is quite clear [that] the joint would expand into the central portions and lock the tiles,” which “a worker of skill in this art would immediately recognize the locking benefit.” Reply Br. 3–4. Further, Appellant belatedly argues that the locking benefit is a “new or unexpected result[].” Id. at 4; see generally Appeal Br. (not identifying this or any other alleged new and unexpected result). “[D]esign choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function. In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995)). Although Appellant’s Figure 4D is one embodiment that would read on the claim 8, the claim is not limited to that embodiment. The claim does not recite where the end portions of the joint are defined. Figure 4D depicts smaller vertical end portions of the joint in the section illustrated, but the claim also covers other configurations, such as where lateral end portions of the joint are smaller than the central portion (i.e., a cross-section taken perpendicular to that shown in Figure 4D). Such an arrangement would not have the locking benefit asserted by Appellant. Accordingly, Appellant’s contention is not commensurate with the scope of claim 8. Appeal 2019-006162 Application 15/108,613 8 Appellant’s contention that design choice cannot be used on a shape is also unpersuasive. Appeal Br. 5 (“claim 8 requires a shape and not merely a size”). A change in shape has been held obvious as a matter of design choice where an appellant did not show the shape was significant or beyond what was obvious to perform the same function. See In re Dailey, 357 F.2d 669, 672–73 (CCPA 1966) (affirming design choice determination where “Appellants have presented no argument which convinces us that the particular configuration of their container is significant or is anything more than one of numerous configurations a person of ordinary skill in the art would find obvious for the purpose of providing mating surfaces in the collapsed container”). For the reasons set forth above, we are not persuaded of error in the rejection of claim 8. Claims 6, 7, and 9 Appellant includes separate headings for claims 6, 7, and 9, which each depend from claim 1, but no meaningful separate argument for those claims. We are not apprised of error based on Appellant’s conclusory statements regarding those claims. Claims 12, 13, and 18 Appellant does not address the rejection of claim 12, 13, or 18. Claim 12 depends from claim 1 and claim 18 depends from claim 14. Because we are not apprised of error in the rejection of claims 1 and 14 for the reasons explained above, we are also not apprised of error in the rejection of claims 12 and 18. Appeal 2019-006162 Application 15/108,613 9 Claim 13 is independent, and Appellant does not address that claim in the Appeal Brief. Accordingly, we summarily affirm the Examiner’s rejection of claim 13. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 10, 11, 14–17, 19, 20 102(a)(1) Vance 1–5, 10, 11, 14–17, 19, 20 8 103 Vance 8 6 103 Vance, Strangman 6 7 103 Vance, Arnold 7 9 103 Vance, Dierksmeier 9 12, 13, 18 103 Vance, Sherman 12, 13, 18 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation