Ex Parte Bruck et al

Patent Trial and Appeal Board

Jul 25, 2018

14076465 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/076,465 11/11/2013
28524 7590 07/27/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Gerald J. Bruck
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2013Pl4770US 3912
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD J. BRUCK and AHMED KAMEL
Appeal2017-008503
Application 14/07 6,465
Technology Center 1700
Before LINDA M. GAUDETTE, MONTE T. SQUIRE, and
BRIAND. RANGE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-20, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In our Decision, we refer to the Specification filed November 11, 2013
("Spec."); Final Office Action dated June 24, 2015 ("Final Act."); Advisory
Action dated August 31, 2015 ("Adv. Act."); Appeal Brief filed October 13,
2015 ("Br."); and Examiner's Answer dated December 23, 2016 ("Ans.").
2 Appellants identify Siemens Energy, Inc. as the real party in
interest. Br. 1.
Appeal2017-008503
Application 14/076,465
The Claimed Invention
Appellants' disclosure relates to the field of welding and, in particular,
to the weld repair of superalloy components using a weld joint having
asymmetric sides. Spec. 1, 3, 11 (Abstract), Fig. 2. According to
Appellants, the claimed weld joint reduces the magnitude of centerline
shrinkage stress and the likelihood of centerline shrinkage cracking. Id. at 3.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (Br. 15)
(key disputed claim language italicized and bolded):
1. An apparatus comprising:
a substrate comprising a surface;
a weld prep formed into the surface and
comprising opposed first and second sides in cross
section;
the first side disposed at a first angle relative to the
surface and the second side disposed at a second angle
different than the first angle relative to the surface; and
weld metal deposited into the weld prep and
joining the first and second sides.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Richardson
Ekelof et al.,
(hereinafter "Ekelof')
us 4,501,950
us 6,155,475
Fuesting US 2006/0231535 Al
Ntsama-Etoundi et al., US 2006/0277753 Al
(hereinafter "N tsama-E toundi")
2
Feb.26, 1985
Dec. 5, 2000
Oct. 19, 2006
Dec. 14, 2006
Appeal2017-008503
Application 14/076,465
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4, 6-11, 13-18, and 20 are rejected under
35 U.S.C. § 103 as being unpatentable over Fuesting in view ofEkelof and
Ntsama-Etoundi ("Rejection 1 "). Ans. 2; Final Act. 2.
2. Claims 5, 12, and 19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Fuesting in view of Ekelof and Ntsama-Etoundi as
applied to claims 1, 8, and 18, and further in view of Richardson ("Rejection
2"). Ans. 9; Final Act. 9.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections based on the fact finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
highlight and address specific findings and arguments below for emphasis.
Rejection 1
Claims 1-4. 6-11. 13. 16. 18. and 20
Appellants argue independent claims 1, 8, and 15 as a group but do
not present separate argument for the patentability of claims 2--4, 6, 7, 9-11,
13, 16, 18, and 20. Br. 4. We select claim 1 as representative and claims 2-
4, 6, 7, 9-11, 13, 16, 18, and 20 stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner determines that the combination of Fuesting, Ekelof,
and Ntsama-Etoundi suggests an apparatus satisfying all of the limitations of
claim 1 and thus, concludes the combination would have rendered the claim
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Application 14/076,465
obvious. Ans. 2-3 (citing Fuesting ,r,r 17-25, Figs. 1-3; Ekelof, col. 1,
11. 28-52; Ntsama-Etoundi i124, Figs. IA, IB, IC, ID, IE, IF).
Appellants argue that the Examiner's rejection of claim 1 should be
reversed because the cited art does not teach or suggest the limitation "the
first side disposed at a first angle relative to the surface and the second side
disposed at a second angle different than the first angle relative to the
surface." Br. 3. In particular, Appellants contend that none of the cited
references teach or suggest "a weld prep where the first and second angles
(A1 and A2) are different," as recited in the claim. Id. at 4. Rather,
Appellants argue that "all references presented disclose weld preps where
first and second angles A1 and A2 are the same." Id. at 4.
Appellants also argue that "[t]here is no rational basis" for the
Examiner's proposed combination of the prior art references. Br. 10. In
particular, Appellants contend that because Fuesting discloses repairing a
workpiece by excavating material and welding a repair having an ideal shape
and Elekof discloses how to weld two substrates together when the joint
geometry is non-ideal, "there is no rational underpinning" for the
Examiner's proposed combination of the two references and it is, therefore,
based on improper hindsight. Id. at 10-11.
We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we find that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination that the combination of Fuesting,
Ekelof, and Ntsama-Etoundi suggests a weld joint satisfying all of the
limitations of claim 1, and the Examiner's conclusion that the combination
would have rendered the claim obvious. Fuesting ,r,r 17-25, Figs. 1-3;
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Application 14/076,465
Ekelof, col. 1, 11. 28-52; Ntsama-Etoundi ,I 24, Figs. IA, IB, IC, ID, IE,
IF.
We concur with the Examiner's finding (Ans. 2-3, 10-12) that the
cited art does teach or suggest "the first side disposed at a first angle relative
to the surface and the second side disposed at a second angle different than
the first angle relative to the surface" recitation of claim 1. In particular, as
the Examiner finds (Ans. 10-11), Figure IC ofNtsama-Etoundi shows a side
view of a workpiece (blade member 10) with the damaged portion to be
repaired removed and a weld prep formed having two different angles
relative to the surface, as recited in the claim. Compare Annotated Figure
IC ofNtsama-Etoundi (Br. 11), with Figure 2 of the Specification. See also
Ntsama-Etoundi ,r,r 24--26.
Appellants' arguments do not reveal reversible error in the
Examiner's factual findings and analysis in this regard.
We do not find Appellants' arguments regarding the Elekof reference
at pages 5-10 of the Appeal Brief persuasive for the well-stated reasons
provided by the Examiner at page 12 of the Answer. In particular, as the
Examiner explains (Ans. 12), Appellants' arguments in this regard are
misplaced because they are premised on what Appellants contend the Elekof
reference teaches individually, and not on the combined teachings of the
cited references as a whole and what the combined teachings would have
suggested to one of ordinary skill in the art. One cannot show non-
obviousness by attacking references individually where the rejection is based
on a combination of references. See In re Keller, 642 F.2d 413,425 (CCPA
1981 ).
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Application 14/076,465
Contrary to what Appellants argue, the Examiner relies (Ans. 12) on
Ntsama-Etoundi-and not Elekof-for disclosing a weld prep where the first
and second angles relative to the surface are different (Ntsama-Etoundi, Fig.
1 C, ,r,r 24, 26).
We do not find Appellants' argument that there is "no rational basis"
and "no rational underpinning" for the Examiner's proposed combination of
the cited references (Br. 10-11) persuasive of reversible error based on the
fact-finding and for the reasons provided by the Examiner at pages 2-3 and
13 of the Answer.
Rather, on the record before us, we find that the Examiner does
provide articulated reasoning with rational underpinning to evince why one
of ordinary skill would have combined the teachings of the cited references
to arrive at Appellants' claimed invention. Ans. 3, 13 ( explaining that it
would have been obvious to one of ordinary skill in the art to create a weld
prep based on and corresponding to the shape and size of the defect being
removed "to conserve as much of the original workpiece as possible in order
to maintain the strength of the workpiece and also to prevent the
unnecessary need for excessive amounts of weld material which would drive
up costs").
Appellants' disagreement with the Examiner's reasons for combining
the references, without more, is insufficient to establish reversible error.
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,420 (2007) (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed); cf SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of
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Application 14/076,465
disagreement ... as to the existence of factual disputes do not amount to a
developed argument.").
Claims 14 and 17
Appellants present separate argument for the patentability of
dependent claims 14 and 17 as a group. Br. 11-13. We select claim 17 as
representative and claim 14 stands or fall with claim 17. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Claim 1 7 depends from claim 15 and recites a method further
compnsmg:
forming the weld prep by moving an end mill tool into the
surface with its axis of rotation transverse to the surface such
that a direction of motion of the end mill tool into the surface
defines an angle relative to the surface of a first side of the
weld prep, and an orientation of a cutting surface of the end
mill tool defines an angle relative to the surface of a second side
of the weld prep.
Br. 17 (Claims App'x) (key disputed claim language italicized and bolded).
The Examiner determines that the combination of Fuesting, Ekelof,
and Ntsama-Etoundi suggests a method satisfying all of the steps of claim 17
and concludes the combination would have rendered the claimed method
obvious. Ans. 2-3, 8, 13-15 (citing Fuesting ,r,r 17-26, Figs. 1-3; Ekelof,
col. 1, 11. 28-52; Ntsama-Etoundi, Abstract, i124, Figs. IA, IB, IC, ID, IE,
IF).
Appellants argue that the Examiner's rejection of claim 17 should be
reversed because "Ntsama-Etoundi does not teach or suggest forming both
sides of the weld prep with the milling tool as claimed." Br. 13. Appellants
contend that although Ntsama-Etoundi discloses using a mill, the reference
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Application 14/076,465
does not disclose using the milling tool to define/create both sides of the
weld prep, as required by the claim. Id. at 11-12.
We do not find Appellants' argument persuasive of reversible error in
the Examiner's rejection based on the fact-finding and reasoning provided
by the Examiner at pages 2-3, 6-8, and 13-15 of the Answer.
In particular, we concur with the Examiner's findings (Ans. 14) that a
milling tool was well known in the art and one skilled in the art would have
known to choose the tool with the specific shape and angle required for
forming the triangular weld prep desired, which stand unrebutted by
Appellants. KSR, 550 U.S. at 421 ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."); see also id. at 416 ("The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
Accordingly, we affirm the Examiner's rejection of claims 1--4, 6-11,
13-18, and 20 under 35 U.S.C. § 103 as obvious over the combination of
Fuesting, Ekelof, and Ntsama-Etoundi.
Rejection 2
Appellants do not present any additional substantive arguments in
response to the Examiner's Rejection 2, stated above.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming the
Examiner's Rejection 1, we affirm the Examiner's Rejection 2.
DECISION/ORDER
The Examiner's rejections of claims 1-20 are affirmed.
It is ordered that the Examiner's decision 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
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