Ex Parte Cunha et al

Patent Trial and Appeal Board

Nov 5, 2014

12349620 (P.T.A.B. Nov. 5, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/349,620 01/07/2009 Frank Cunha 085.11669-US-AA(05-473-2) 5391
52237 7590 11/05/2014
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
WIEHE, NATHANIEL EDWARD
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
11/05/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK CUNHA, OM PARKASH SHARMA, and
EDWARD F. PIETRASZKIEWICZ
____________

Appeal 2012-008894
Application 12/349,6201
Technology Center 3700
____________

Before: ANTON W. FETTING, MICHAEL C. ASTORINO, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Frank Cunha et al. (“Appellants”) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 13, 15–17, 19–22, 24, and 25. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The Appeal Brief identifies United Technologies Corporation as the real
party in interest. See App. Br. 1.
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CLAIMED SUBJECT MATTER
Claim 13 is illustrative of the subject matter on appeal:
13. A blade-outer-air-seal [“BOAS”] consisting of:
a cast first section;
a cast second section;
at least one cooling microcircuit intermediate said first and
second sections;
said at least one cooling microcircuit having a leading edge
microcircuit with a plurality of outlets for creating a
flow of cooling fluid in a first direction and a trailing
edge microcircuit with a plurality of outlets for creating
a flow of cooling fluid in a second direction opposed to
said first direction;
said at least one cooling microcircuit having a first inlet
along a first side of said at least one cooling
microcircuit and a second inlet along a second side of
said at least one cooling microcircuit opposed to said
first side of said at least one cooling microcircuit; and
a mating surface interlayer between said first and second
sections.
App. Br. 20.
REJECTIONS
Appellants request our review of the following rejections.2 See App.
Br. 5–6, 14.
Claims 13, 15–17, and 19 are rejected under 35 U.S.C. § 112, ¶ 1, as
failing to comply with the written description requirement.
Claims 13 and 19–22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Liotta (US 5,993,150, iss. Nov. 30, 1999), Guibert

2 There is some discussion in the briefs of rejections applying to claim 18,
but claim 18 has been canceled and is not before us on appeal. See
App. Br. 2, 13; Ans. 25.
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(US 4,679,981, iss. July 14, 1987), and Burke (US 6,331,217 B1,
iss. Dec. 18, 2001).
Claims 15, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Liotta, Guibert, Burke, and Romanov (US 7,306,424 B2,
iss. Dec. 11, 2007).
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Liotta, Guibert, Burke, and Chiu (US 6,402,464 B1,
iss. June 11, 2002).
Claims 13, 15, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Romanov, Guibert, and Burke.
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Romanov, Guibert, Burke, and Chiu.
Claims 20–22, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Romanov, Guibert, and Burke.3

ANALYSIS
A. Rejection of Claims 13, 15–17, and 19 as Lacking Written Description
The Examiner rejects independent claim 13 and its dependent claims
15–17 and 19 under 35 U.S.C. § 112, ¶ 1, as failing to comply with the
written description requirement. See Ans. 5, 14–18. The rejection is based
on Appellants’ use of “consisting of” as a transition in claim 13, which
excludes any element, step, or ingredient not specified in the claim. See id.
at 5 (citing In re Grey, 53 F.2d 520 (CCPA 1931)). According to the
Examiner, the Specification “lacks any indication that the invention is or can

3 The Examiner’s analysis additionally refers to DeMarche
(US 6,779,597 B2, iss. Aug. 24, 2004) and Chiu. See Ans. 12–13.
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be constituted solely on the basis of the enumerated elements of the claim to
the exclusion of any and all other potential elements.” Ans. 15. The
Examiner further contends the Specification, in Figure 1, shows a “mounting
arrangement” having “a generic axial hook arrangement commonly used to
secure BOAS elements to the casing of a turbine.” Id. at 17. Claim 13 does
not recite that hook arrangement.
Appellants respond that the only elements disclosed in the written
description as forming the inventive BOAS are those listed in claim 13. See
Reply Br. 2. Concerning Figure 1, Appellants assert “if some structural
element is not in the written description/specification, then that structural
element is not part of Appellants’ invention,” and “the mounting
arrangement [in Figure 1] is not described because it is not part of
Appellants’ invention.” Id. at 3–4.
We are persuaded by Appellants that the Specification as filed
conveys with reasonable clarity to one of ordinary skill that the inventors
had possession at the time of filing of a BOAS “consisting of” the four
elements recited in claim 13. See App. Br. 6–9; Reply Br. 2–4; Honeywell
Int’l, Inc. v. U.S., 609 F.3d 1292, 1301 (Fed. Cir. 2010). For example, the
Specification describes the “present invention” as a BOAS having the four
elements of claim 13: a first section, a second section, at least one cooling
microcircuit, and a mating surface interlayer. Spec. ¶ 6. That disclosure
uses “comprises” not “consists of,” but it also identifies only the four
elements of claim 13 as being part of Appellants’ invention. Moreover, we
are persuaded by Appellants’ argument that the Specification, taken as a
whole, limits its discussion to the four elements recited in claim 13 and
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specific properties thereof as being part of the invention. See App. Br. 8–9;
Reply Br. 2.
As to Figure 1, the Examiner is correct that it shows a hook
arrangement in BOAS 12, which is not recited in claim 13. However, the
Specification describes Figure 1 merely as showing the location of a BOAS
in a gas turbine engine. See Spec. ¶¶ 8, 12. That is, BOAS 12 in Figure 1 is
not described as showing the claimed invention; it does not even show any
one of the four elements of claim 13. Thus, we are not persuaded that one of
ordinary skill, upon reviewing the Specification, would understand the hook
arrangement of Figure 1 to be a part of Appellants’ claimed invention.
We, therefore, do not sustain the Examiner’s written description
rejection of claim 13 and its dependent claims 15–17 and 19.
B. Rejection of Claims 13 and 19–22 as Unpatentable Over
Liotta, Guibert, and Burke
The Examiner cites shroud assembly 28 of Liotta as a BOAS
exhibiting several limitations of independent claim 13. See Ans. 6.
Appellants challenge the Examiner’s finding that Liotta discloses claim 13’s
requirement of “a first inlet along a first side of” the microcircuit and “a
second inlet along a second side of” the microcircuit “opposed to” the first
side. See App. Br. 10, 12, 20; Reply Br. 6–7. More specifically, Appellants
assert “[t]he inlets in Liotta are all along the same side and thus do not meet
the limitation.” App. Br. 12. For the following reasons, we are persuaded
that the Examiner erred in finding that Liotta discloses a first inlet and a
second inlet along opposing sides of a microcircuit.
The Examiner finds that Liotta’s inlets 38a, shown for example in
Liotta’s Figure 2, include a first inlet and a second inlet along opposing sides
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of microcircuit 38f.4 See Ans. 6, 21–24. Specifically, the Examiner states
inlets 38a “are provided by one [or] more holes extending in a
circumferential row, thus providing a first inlet nearer a first sidewall and a
second or last in the row inlet that is nearer an opposed second sidewall.”
Id. at 6 (emphasis added); see also id. at 23–24 (discussing alleged
“circumferential rows” of inlets 38a).
We conclude the Examiner erred in finding Liotta’s inlets 38a extend
in “circumferential rows.” Figure 2 is the only figure in Liotta which shows
inlets 38a, and it shows two of them. Those two inlets 38a do not extend in
a circumferential row. Rather, the circumferential direction of Liotta
extends from the top to the bottom in Figure 4. See Liotta, 3:26–33, 5:60–
67, 6:8–13, Figs. 2–4. The row formed by the two inlets 38a in Figure 2
extends transversely to that circumferential direction, as can be seen by
comparing Figure 2 with Figure 4. Liotta fails to disclose the existence of
additional inlets 38a forming rows in the circumferential direction. See, e.g.,
id. at 3:63–4:4, 5:43–48. All the more so, Liotta does not disclose such rows
extending far enough to be “along” opposed circumferential sides as
required by claim 13. The Examiner’s findings in this regard rest upon mere
speculation.
The Examiner’s rejection of independent claim 20 rests upon the same
erroneous finding concerning the alleged “circumferential rows” of Liotta as
the rejection of independent claim 13. See Ans. 6, 21–24. Moreover, the
Examiner does not rely on either Guibert or Burke as curing that deficiency

4 The Examiner also finds inlets 40a include a first inlet and a second inlet
along opposing sides of microcircuit 40f. See Ans. 6. Our analysis of inlets
38a applies equally well to inlets 40a.
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in Liotta. See id. at 6–7. Thus, for the foregoing reasons, we do not sustain
the rejection of claims 13 and 19–22 as unpatentable over Liotta, Guibert,
and Burke.
C. Rejection of Claims 15, 24, and 25 as Unpatentable Over
Liotta, Guibert, Burke, and Romanov
- and -
Rejection of Claims 16 and 17 as Unpatentable Over
Liotta, Guibert, Burke, and Chiu
In these claim rejections, the Examiner does not rely on either
Romanov or Chiu as curing Liotta’s failure to disclose first and second inlets
along opposing sides of a microcircuit. See Ans. 8–9. We therefore do not
sustain these rejections for the reasons provided above in relation to the
rejection of the parent claims 13 and 20.
D. Rejection of Claims 13, 15, and 19 as Unpatentable Over
Romanov, Guibert, and Burke
The Examiner cites outer air seal assembly segment 22 of Romanov
as a BOAS exhibiting the limitations of independent claim 13, except for a
“first section” and a “second section,” and a “mating surface interlayer.”
See Ans. 9–11. The Examiner cites Guibert as disclosing separate first and
second sections in a BOAS, and Burke as disclosing a mating surface
interlayer between two joined turbine components. See id.
Appellants contend Romanov fails to disclose, as required by
claim 13, first and second inlets along opposing sides of a microcircuit. See
App. Br. 15; Reply Br. 6–7. More specifically, Appellants assert
Romanov’s inlets 46 “are not on opposed sides,” “[t]hey are on a single
side,” and “‘[n]ear’ is not the same as ‘along.’” App. Br. 15. We are not
persuaded by the Appellants’ contention.
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As shown in Figures 3 and 4 of Romanov, inlets 46 extend far enough
to each opposite side of microcircuits 40 and 42 (to the left and the right in
Figure 4) so as to be “along” those sides. We agree with the Examiner that
Romanov’s inlets 46 are substantially the same as the “cooling fluid inlets
60” illustrated in Figure 2 of the present Specification. See Spec. ¶ 13,
Fig. 2; Ans. 21–22. As the Examiner notes, Figure 2 of the Specification
shows a casting core that represents the void spaces defining the
microcircuits within a BOAS, rather than a BOAS itself. See Ans. 21. Thus,
the spaces in Figure 2 where the two lead lines for numeral 60 end
correspond to places where material (not air passages formed by the
material) will exist after the casting operation is completed. See id. When
the casting using the core of Figure 2 is finished, the resulting BOAS
structure will be substantially similar to Romanov’s Figure 2 in relation to
the placing of the inlets.
Appellants also contend it would not have been obvious to modify the
Romanov BOAS, which is made in one section, to be made in two sections
as disclosed in Guibert, because the two-section construction “actually
makes manufacture more difficult.” See App. Br. 11, 15. In particular,
according to Appellants, “making something from two pieces is in fact more
difficult because it raises alignment issues” and “[i]t certainly does not
facilitate the manufacture of the interior cavities because [Romanov] has
shown that his interior cavities can be manufactured in one piece—which is
the easier method of manufacture.” Id. at 11–12; see Reply Br. 4–6. We are
not persuaded by the Appellants’ contention.
We agree with the Examiner that Guibert expressly discloses that
making a BOAS in two sections “facilitates the manufacture of” the BOAS.
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See Guibert, 4:59–61; Ans. 10–11, 18–21. Appellants’ direct attack on the
accuracy of that statement in Guibert is supported solely by attorney
argument, without any citation to the disclosures of the prior art references
on appeal or testimony from a person of ordinary skill. We find that attack
to be unpersuasive. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d
1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence);
Laitram Corp. v. Cambridge Wire Cloth Co., 919 F.2d 1579, 1583 (Fed. Cir.
1990) (criticizing parties’ “reliance on attorney argument and counsel’s
unsworn statements as ‘evidence’”).
Appellants next fault the Examiner’s analysis for failing to find in the
prior art the specific motivation that led Appellants to design a two-piece
BOAS: making inspection of the microcircuits easier. See App. Br. 11, 15;
Reply Br. 4–6. However, “the law does not require that the references be
combined for the reasons contemplated by the inventor.” In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992).
Appellants further contend Burke does not cure the deficiencies of
Romanov and Guibert in relation to the “interlayer” of claim 13, because
there is no reason why one of ordinary skill in the art would want to form an
interlayer due to Romanov’s integral structure. See App. Br. 11, 15. The
Examiner cites Burke as being pertinent to a two-piece BOAS resulting from
the combination of Romanov and Guibert, not a one-piece BOAS as
disclosed in Romanov alone. See Ans. 10–11, 26. We therefore find
Appellants’ contention to be unpersuasive.
Appellants do not argue dependent claim 15 separately from its parent
claim 13. See App. Br. 15. Concerning dependent claim 19, Appellants
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merely re-state their arguments concerning parent claim 13 (see App.
Br. 16), which we find unpersuasive for the reasons already provided.
For the foregoing reasons, we are not persuaded by Appellants’
arguments on appeal concerning the rejection of claims 13, 15, and 19 as
unpatentable over Romanov, Guibert, and Burke, and we sustain that
rejection.
E. Rejection of Claims 16 and 17 as Unpatentable Over
Romanov, Guibert, Burke, and Chiu
Claim 16 depends from independent claim 13, and provides the
cooling microcircuit is “formed on only one of said sections and includes a
cover plate over said at least one cooling microcircuit.” App. Br. 20.
Claim 17 depends from claim 16. See id. at 21. The Examiner cites Chiu as
disclosing the features of claims 16 and 17, and concludes it would have
been obvious to modify the BOAS of Romanov, Guibert, and Burke as
described in relation to parent claim 13 to include those features. See
Ans. 11–12.
Appellants contend “there is no reason to provide a bonded cover
plate since the structure in Romanov is an integral, one piece structure which
does not require any cover plate.” App. Br. 16. The Examiner cites Chiu as
being pertinent to a two-piece BOAS resulting from the combination of
Romanov and Guibert, not a one-piece BOAS as disclosed in Romanov
alone. See Ans. 11–12, 27. We therefore find Appellants’ contention to be
unpersuasive, and we sustain the rejection of claims 16 and 17 as
unpatentable over Romanov, Guibert, Burke, and Chiu.
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F. Rejection of Claims 20–22, 24, and 25 as Unpatentable Over
Romanov, Guibert, Burke, and DeMarche
Concerning this rejection, Appellants assert the claims are allowable
for the same reasons Appellants present for the allowability of claim 13. See
App. Br. 17–18. Those arguments are unpersuasive for the reasons provided
above. We therefore sustain this rejection.
DECISION
The rejections of claims 13, 15–17, and 19 as failing to comply with
the written description requirement; of claims 13 and 19–22 as unpatentable
over Liotta, Guibert, and Burke; of claims 15, 24, and 25 as unpatentable
over Liotta, Guibert, Burke, and Romanov; and of claims 16 and 17 as
unpatentable over Liotta, Guibert, Burke, and Chiu, are each REVERSED.
The rejections of claims 13, 15, and 19 as unpatentable over
Romanov, Guibert, and Burke; of claims 16 and 17 as unpatentable over
Romanov, Guibert, Burke, and Chiu; and of claims 20–22, 24, and 25 as
unpatentable over Romanov, Guibert, Burke, and DeMarche, are each
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

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