Ex Parte Bunker et al

Patent Trial and Appeal Board

Mar 26, 2018

12977554 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/977,554 12/23/2010
6147 7590 03/28/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
Ronald Scott Bunker
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.
238375-1 9554
EXAMINER
CIGNA, JACOB JAMES
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD SCOTT BUNKER, BIN WEI, and
HUANQI 1
Appeal2017-006040
Application 12/977,554
Technology Center 3700
Before CHARLES N. GREENHUT, BENJAMIN D. M. WOOD, and
JILL D. HILL, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is General Electric
Company. App. Br. 3.
Appeal2017-006040
Application 12/977,554
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20.2 Claims 21-25 have been canceled. App. Br. 3. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to methods for forming holes in a substrate.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for the formation of at least one passage hole in
a substrate, comprising the following steps:
a) for each passage hole or for a group of passage holes,
forming a node on the exterior surface of the substrate by a
laser consolidation process; wherein the node comprises an
upper surface; and is positioned as a pre-selected entry region
for the passage hole, or for the group of passage holes;
b) applying a protective coating system over the exterior
surface of the substrate; wherein the coating system comprises
at least one underlying metallic layer and one overlying ceramic
layer; and
c) forming the passage hole or a group of passage holes
through each node and into the substrate; while the upper
surface of the node is substantially free of the coating system.
Kikkawa
Islam
REFERENCES
us 5,621,968
US 6,269 ,540 B 1
Apr. 22, 1997
Aug. 7,2001
2 During an appeal conference, the Examiner withdrew a rejection of claim
26. Ans. 10.
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Appeal2017-006040
Application 12/977,554
REJECTION
Claims 1-20 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Kikkawa and Islam. Final Act. 2-3.
ANALYSIS
Because Appellants do not argue the appealed claims separately, we
select independent claim 1 as representative of the appealed claims and
decide the appeal on the basis of claim 1 alone. 3 7 C.F .R. § 41.50(b ).
The Examiner finds that Kikkawa teaches the method of claim 1,
including forming a node on the exterior surface of the substrate, applying a
protective coating system over the exterior surface of the substrate, and
forming a passage hole through the node and into the substrate. Final Act. 3
(citing Kikkawa, 2:56+, Fig. 4). The Examiner acknowledges that Kikkawa
does not specify how the nodes are made, and therefore relies on Islam to
teach laser consolidation, which Islam uses to make turbine blades. Id. at
3--4. According to the Examiner, "[i]t would have been obvious to a person
having ordinary skill in the art at the time the invention was made to have
provided the manufacturing method of [Islam] to the shape of the blade of
[Kikkawa] because it is well known to create a reasonable shape with a
widely practiced manufacturing method." Id. at 4.
Appellants make several arguments in support of the patentability of
claim 1, none of which we find persuasive. First, Appellants argue that the
claims "specifically require the formation of a precisely shaped node on top
of an existing substrate," which Kikkawa does not teach. App. Br. 6. The
Examiner responds that "Kikkawa's raised portion on wall 3 (as shown for
example in Figure 4) meets the limitation since the raised portion is a node,
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Appeal2017-006040
Application 12/977,554
the raised portion is formed (that is, it exists), and the raised portion is
located on the surface of the substrate." Ans. 11.
Kikkawa describes a "projection or raised portion of wall 3 of the
blade," through which a hole or set of holes 4 are formed. Kikkawa, 3:7-9,
Figs. 3, 4. This projection or raised portion is located on the exterior surface
of the blade. Id. at Figs. 1--4. According to the Specification, "the term
'node' is meant to describe a wide variety of built-up regions, protuberances,
mounds, or 'islands."' Spec. i-f 24. Thus, Kikkawa teaches "a node on the
exterior surface of the substrate." Further, the Examiner was correct in
construing claim 1 to not require the node to be formed, in the Examiner's
words, "onto a pre-existing formerly nodeless substrate." Ans. 10. Instead,
"[ t ]he very existence of a node on the exterior surface of a substrate is
sufficient ... since the node must have, at some point, been formed." Id.
at 11.
Appellants next argue that Kikkawa does not describe "the specific
problems uncovered by the present inventors." App. Br. 6; see Reply Br. 2.
The Examiner responds, inter alia, that the prior art need not recognize the
problems addressed by the inventors. Ans. 10. We agree. As the Supreme
Court has stated, "[i]n determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the avowed purpose
of the patentee controls." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 419
(2007). Moreover, as the Examiner notes, Kikkawa addresses at least one
problem addressed by Appellants: the inability of electric discharge
machining to form passage holes through a ceramic coating. See Kikkawa,
1:31-34; Spec i-fi-15-7.
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Appeal2017-006040
Application 12/977,554
Appellants also argue that "[Islam] has nothing to do with the
formation of a node on a completed blade surface, as part of a hole-drilling
technique." App. Br. 7. But Islam is not relied on for teaching the claimed
hole-drilling technique; rather, it is relied on for teaching the use of laser
consolidation to build or repair turbine blades. Final Act. 3--4. The
Examiner relies on Kikkawa to teach the hole-drilling aspects of claim 1.
Id.; see In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.").
Finally, Appellants argue that Kikkawa never suggests forming a
passage hole in a substrate having a protective coating already disposed on
it. Reply Br. 2. We disagree. Kikkawa specifically teaches that its
invention allows a heat-shielding coating layer to be formed before holes are
made in the blade using electric discharge machining. Kikkawa, 1:41--47.
Appellants do not apprise us of error in the Examiner's determination
that the subject matter of claim 1 would have been obvious. Accordingly,
we sustain the rejection of claim 1, as well as claims 2-20, as unpatentable
over Kikkawa and Islam.
DECISION
For the above reasons, the Examiner's rejection of claims 1-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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