Ex Parte Duelm et al

Patent Trial and Appeal Board

Dec 20, 2018

14783965 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/783,965 10/12/2015 Shelton 0. Duelm
54549 7590 12/25/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
67097-2370 PUSl;
63097USO
CONFIRMATION NO.
5284
EXAMINER
ZAMORA ALVAREZ, ERIC J
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHEL TON 0. DUELM and KEVIN L. RUGG
Appeal2018-005396
Application 14/783,965
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 seeks review under 35 U.S.C. § 134 of the Examiner's
decision, as set forth in the Final Office Action dated November 22, 2017
("Final Act."), rejecting claims 1, 3-10, and 12-18. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 United Technologies Corporation ("Appellant") is the applicant, according
to 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br.
1.
Appeal2018-005396
Application 14/783,965
CLAIMED SUBJECT MATTER
Claims 1 and 14 are independent claims. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A gas turbine engine, comprising:
a plurality of stator vanes, each of the plurality of stator
vanes including an airfoil section and a platform provided at an
end of the airfoil section, the platform provided with flanges on
opposed ends thereof, the flanges being fastened to
corresponding flanges of an adjacent one of the plurality of stator
vanes, wherein the flanges are provided on circumferential ends
of the platform, wherein at least one of the plurality of stator
vanes is made of a ceramic matrix composite (CMC) material,
and wherein the flanges are integrally formed with the at least
one stator vane.
Appeal Br. 7 (Claims App.).
REJECTIONS 2, 3
Claims 1, 3-8, and 12-18 are rejected under 35 U.S.C. § 103 as
unpatentable over Marx (US 6,592,326 B2, issued July 15, 2003) and
Morrison (US 2005/0254942 Al, published Nov. 17, 2005).
Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Marx,
Morrison, and Klompas (US 4,492,517, issued Jan. 8, 1985).
Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
Marx, Morrison, and Harmon (US 4,015,910, issued Apr. 5, 1977).
2 In the Final Office Action, the drawings are objected to under 37 C.F.R.
§ 1.12I(d). See Final Act. 4--5. However, the objection is not within the
jurisdiction of the Board. See 3 7 C.F .R. § 1.181.
3 The rejection of claim 9 under 35 U.S.C. § 112, second paragraph, has
been withdrawn. Ans. 2-3.
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Application 14/783,965
ANALYSIS
Claims 1, 3-8, and 12-18 over Marx and Morrison
Appellant argues for patentability of claims 1, 3-8, and 12-18 as a
group. Appeal Br. 5---6; Reply Br. 1--4. We select claim 1 as the
representative claim, and claims 3-8, and 12-18 stand or fall with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Marx discloses a gas turbine engine
comprising flanges integrally formed with at least one stator vane. Final
Act. 11 ( citing Marx Fig. 1 ). The Examiner acknowledges that Marx does
not disclose a stator vane that is made of a ceramic matrix composite (CMC)
material. Id. The Examiner finds, however, that Morrison discloses a stator
vane made of a CMC material and flanges integrally formed with the stator
vane. Id. at 12 (citing Morrison ,r,r 8, 26). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify the
stator vane of Marx to be made of a CMC material in order to be able to
operate in and withstand higher operating temperatures than a gas turbine
engine made of metal alloy materials. Id. (citing Morrison ,r 5).
Appellant contends that Morrison does not support the Examiner's
position. Appeal Br. 5; see also Reply Br. 1--4. According to Appellant,
paragraph 7 of Morrison teaches away from forming flanges integrally with
a stator vane because Morrison lists drawbacks associated with such a
construction, and then proposes a solution by making the vane and flanges
separate. Appeal Br. 5; see also Reply Br. 1-2. Appellant argues that
Morrison's Figures 1-10 show a vane separate from the flanges. Appeal Br.
5. Appellant contends Morrison teaches that each of an airfoil and a
platform is separately formed as "single-pieces" and Morrison does not use
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Application 14/783,965
the term "single-piece parts" to refer to an integrally formed airfoil and
platform. Reply Br. 2. According to Appellant, the Examiner's citation to
the MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) in the Answer
appears to be a new ground of rejection, and the Examiner merely
established that one could make the proposed modification, rather than one
would have done so. Id. at 2-3.
Appellant's contentions are unpersuasive. First, the Examiner's
citation to the MPEP is done to support the Examiner's position. Second,
"the ultimate criterion of whether a rejection is considered 'new' in a
decision by the board is whether [ Appellant has] ... had fair opportunity to
react to the thrust of the rejection." In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976). Even assuming the Examiner made a new ground of
rejection, Appellant had a fair opportunity to react to the thrust of that
rejection in the Reply Brief. Moreover, 37 C.F.R. § 41.40 states:
(a) Timing. Any request to seek review of the primary
examiner's failure to designate a rejection as a new ground of
rejection in an examiner's answer must be by way of a petition
to the Director under § 1.181 of this title filed within two months
from the entry of the examiner's answer and before the filing of
any reply brief. Failure of appellant to timely file such a petition
will constitute a waiver of any arguments that a rejection must be
designated as a new ground of rejection.
As Appellant does not show that it timely filed such a petition, any argument
that the rejection should now be designated as a new ground of rejection is
considered waived.
Third, to the extent Appellant is contending that the phrase "integrally
formed with" should be construed as meaning a unitary or monolithic single
piece (i.e., the flanges and the at least one stator vane are a unitary or
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Application 14/783,965
monolithic single piece of material), this argument is not persuasive.
Appellant does not direct us to any description in the Specification that
supports this specific meaning of "integrally formed with." We note
paragraph 54 of the Specification describes, "[i]n one example, the stator
vane 60 is made of a CMC material, and the flanges 90 are formed integrally
with the stator vane 60 during a molding process." See Spec. ,r 54 ( emphasis
added). This description does not define "formed integrally with," or
otherwise indicate clearly what this phrase means. This description merely
discloses a process (molding) used in an example to integrally form flanges
90 with stator vane 60. And, this description does not indicate that flanges
90 can be integrally formed with stator vane 60 only by a molding process.
We also note the term "integral" has been interpreted to cover more than a
unitary, one-piece, construction. See, e.g., Advanced Cardiovascular Sys.,
Inc. v. Scimed Life Sys., Inc., 887 F.2d 1070, 1074 (Fed. Cir. 1989).
Morrison describes that CMC materials can be used for forming an
"integral" vane component by sinter bonding respective joint surfaces of an
airfoil member and a platform member. See Morrison ,r 8. Even accepting
Appellant's apparent construction of "integrally formed," Morrison discloses
that it is known in the art to have an integrally formed single part
construction. See id. ,r 7. Morrison merely discloses there are advantages
and disadvantages, that is, tradeoffs, in using CMC material to form a
platform and an airfoil as a "single integral part." See id. We note,
however, that "a given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate motivation to
combine." See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006). Indeed, a combination of references may be obvious even if the
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Application 14/783,965
combination eliminates a benefit of one of the references. See In re
Urbanski, 809 F.3d 1237, 1242 (Fed. Cir. 2016). Although Morrison
describes disadvantages or challenges, such as complexity and cost that may
be associated with conventional composite ceramic processing methods used
to form single integral parts, Morrison also discloses advantages, such as
enhanced mechanical strength and ductility. Morrison ,r 7. Morrison
describes that CMC materials provide higher operating temperatures. Id.
,r 5. Considering these advantages also, we are not persuaded that Morrison
fails to support the Examiner's position. In that regard, we note that "[a]
known or obvious composition [ or structure] does not become patentable
simply because it has been described as somewhat inferior to some other
product for the same use." In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994).
Accordingly, we are not persuaded by Appellant's contentions that
Morrison teaches away from forming flanges integrally with a stator vane, or
from flanges and a stator vane formed of a single piece. Nor are we
persuaded that it would not have been obvious to integrally form the flanges
with a stator vane in a gas turbine engine simply because that construction
might be inferior in some way to another gas turbine engine. The Examiner
has provided a reason why one of ordinary skill in the art would have
modified Marx in view of Morrison. We are not persuaded that the
Examiner's rationale is inadequate.
Thus, we sustain the rejection of claim 1 as unpatentable over Marx
and Morrison. Claims 3-8 and 12-18 fall with claim 1.
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Claim 9 over Marx, Morrison, and Klompas
Claim 10 over Marx, Morrison, and Harmon
For dependent claims 9 and 10, Appellant relies on the same
arguments as those presented for parent claim 1. Appeal Br. 6. As
Appellant does not apprise us of any error in the rejection of claim 1, we,
accordingly, sustain the rejections of claim 9 as unpatentable over Marx,
Morrison, and Klompas, and of claim 10 as unpatentable over Marx,
Morrison, and Harmon, for the same reasons as for claim 1.
DECISION
We affirm the rejections of claims 1, 3-10, and 12-18.
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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