Cheng, Kenny et al.

Patent Trials and Appeals Board

Jan 27, 2020

14710870 - (D) (P.T.A.B. Jan. 27, 2020)

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.
14/710,870 05/13/2015 Kenny Cheng 36681US02;
67097-510PUS2
1012
54549 7590 01/27/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
AFZALI, SARANG
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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 KENNY CHENG and KIN KEONG THOMAS JEK
Appeal 2019-004232
Application 14/710,870
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and LEE L. STEPINA,
Administrative Patent Judges.
GREENHUT, 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 and 24. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM AND ENTER A NEW GROUND OF REJECTION.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as United Technologies
Corporation. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claim 1, the only claim before us, 2 is directed to a turbine platform
repair method using laser cladding:
1 A method of restoring a gas turbine engine component,
including the steps of:
(a) removing a section of a turbine engine component
that is located on a turbine engine platform, wherein the section
corresponds to a predetermined template; and
(b) depositing a laser cladding on the turbine engine
component to produce a replacement section in the location of
the removed section of step a); and
wherein the predetermined template is a computer file,
and said template is defined based upon a pattern of defects
from a plurality of turbine engine components.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Reid US 6,219,930 B1 Apr. 24, 2001
Hellemann US 6,568,077 B1 May 27, 2003
Cheng US 2005/0178750 A1 Aug. 18, 2005
Urashiro3 JPH1080767 A Mar. 31, 1998
REJECTIONS
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Urashiro, Cheng, and Hellemann. Final Act. 3.
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Urashiro, Cheng, and Reid. Final Act. 6.

2 The Examiner indicated Appellant’s amendment incorporating the
language of claim 24 into claim 1 would be entered for purposes of appeal.
Adv. Act. Nov. 26, 2018.
3 We reference herein the machine translation of Urashiro entered Aug. 3,
2017.
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OPINION
In both rejections, the Examiner relies on Urashiro as “implying that
there must be some data stored in a computer corresponding to the
predetermined shape which would serve as a template and pattern used for
identifying the section in need of being removed.” Final Act. 3, 6. The
Examiner attempts to support this assertion by pointing to the portion of
Urashiro’s disclosure that indicates that the repaired blade tip portion is cut
or ground into a predetermined shape. Final Act. 3, 6 (citing Urashiro paras.
8, 11). However, cutting or grinding to a predetermined shape can occur
with or without a computer-based template file. The Examiner also cites
Urashiro paragraphs 30 and 56 in the Examiner’s Answer. Ans. 8–9.
Paragraph 30 relates to the cladding, not the material removal process and
paragraph 56 is a generic description of Figure 13. Although the presence of
a predetermined shape used to repair the damage illustrated in Figure 13
may implicate the existence of a template of some sort, none of the portions
of Urashiro cited by the Examiner imply or require the presence of a
computer file template. Thus, we agree with Appellant that Urashiro lacks
sufficient evidence to demonstrate that a template stored as a computer file
is implicitly or inherently described in Urashiro. Appeal Br. 2–3.
Reid may stand for the general proposition that computer and physical
template files were known and substitutable. However, the template in Reid
is used to estimate repair costs for automotive body damage and is of a very
different nature than what would be required in Urashiro. Appeal Br. 4.
Reid’s templates help calculate the density of damage in an area, and thus
estimate the total extent of damage (Reid passim), but they do not “identify
the damaged area” as found by the Examiner. Final Act. 7. We cannot see
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how Reid’s teachings related to the computer template would be applied to
Urashiro by one skilled in the art to arrive at the claimed subject matter
without the benefit of hindsight. Thus, we do not sustain the rejection that
relies, in part, on Reid.
The express, implicit, and inherent disclosures of a prior art reference
may be relied upon in the rejection of claims under 35 U.S.C. §§ 102 or 103.
See, e.g., In re Baxter Travenol Labs 952 F.2d 388, 390 (Fed. Cir. 1991) (the
dispositive question is “whether one skilled in the art would reasonably
understand or infer” that a reference teaches or discloses all of the elements
of the claimed invention); In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(stating, “in considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom”). The illustration of the various forms of damage in figures 13a–c
of Urashiro, combined with the illustrated cut or ground portion 4 in Figure
2a being such that it would remedy each of those Figure 13a–c conditions
fairly implies at least two things: First, that there is some sort of “template”
that identifies a removed portion of the blade that is repeatedly used over
several blades. Second, that “a pattern of defects from a plurality of turbine
engine components” is relied on to define that template. To the extent any
more concrete evidence is required to establish that such techniques were
well-known in the art at the time of Appellant’s invention, Hellemann
furnishes such evidence on both points.
Like Urashiro, Hellemann repairs blades by repeatedly cutting a
predetermined shape or portion, notch 28, from the damaged part 18 of the
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blade airfoil 14. Final Act. 4, citing Hellemann (col. 4, ll. 36–53 and 60–67,
col. 5, ll. 4–17, Figs. 1–3). Hellemann states:
Machining away the damage 18 is preferably conducted
automatically in a multi-axis numerically controlled milling 10
machine 30 which may be programmed for defining the original
configuration of the blisk and its airfoils, and then machining
any damaged airfoil to form the notch 28 at the damage site.
Col. 4, ll. 8–13. Hellemann further states:
The size of the notch 28 is predetermined in advance and is
preferably uniform or constant for all of the airfoils in a 50
corresponding row of the blisk irrespective of the extent of the
damage area therein. Since machining of the notch 28 may be
programmed into the milling machine 30, it may be accurately
reproduced for each airfoil which requires repair.
Col. 4, ll. 48–53.
One skilled in the art would understand that computer files are the
routinely used mechanism for programming a numerically controlled
machine and that templates are something that establishes or serves as a
pattern for reproduction (Ans. 10 (quoting Merriam-Webster, template)).
Thus, although the exact language of Appellant’s claim is not utilized by
Hellemann, one skilled in the art would reasonably understand that the claim
language requiring use of a “predetermined template [that] is a computer
file” covers Hellemann’s disclosed process of programming the shape of a
notch into a numerically controlled milling machine, so that it may be
accurately and repeatedly reproduced.
Hellemann also discloses:
Typical foreign object damage affects primarily airfoil leading
edges, and may also affect the airfoil trailing edge typically
near the airfoil tip.
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Col. 3, ll. 53–55 (emphasis added). Hellemann’s mention that the damage is
“typical,” along with Hellemann’s reference to a plurality of “leading edges”
implies that “a pattern of defects from a plurality of turbine engine
components” is used to define the notch 28 and its corresponding
programmed template file.
For the foregoing reasons we sustain the rejection based on Urashiro,
Cheng, and Hellemann. As we have made findings of fact and articulated
reasoning not set forth by the Examiner, we designate our opinion in this
regard as including new grounds of rejection under 37 C.F.R. § 41.50(b) so
as to afford Appellant the procedural options associated therewith.
CONCLUSION
The Examiner’s rejection based on Urashiro, Cheng, and Reid is
reversed. The Examiner’s rejection based on Urashiro, Cheng, and
Hellemann is affirmed. We designate this opinion as including a new ground
of rejection under 37 C.F.R. § 41.50(b).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New
Ground
1 103(a) Urashiro, Cheng,
Hellemann
1 1
1 103(a) Urashiro, Cheng,
Reid
1
Overall
Outcome
1 1

RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
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and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

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; 37 C.F.R. § 41.50(B)