Ex Parte Morin

Patent Trial and Appeal Board

Jun 22, 2016

11711841 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111711,841 02/27/2007 James Morin
7590 06/22/2016
Siemens Corporation
Intellectual Property Department
170 Wood A venue South
Iselin, NJ 08830
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.
2007P01392US 7568
EXAMINER
MAYE,AYUBA
ART UNIT PAPER NUMBER
3742
MAILDATE DELIVERY MODE
06/22/2016 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 JAMES MORIN
Appeal2014-006105
Application 11/711,841
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
James Morin (Appellant) 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision finally rejecting claims 1-10 and 21-30. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to "a process and apparatus for
cooling a metal part such as a gas turbine blade during a welding operation."
1 The Appeal Brief identifies Siemens Energy, Inc., as the real party in
interest. Appeal Br. 3.
Appeal2014-006105
Application 11/711,841
Spec. 1, 11. 5---6. Independent claim 1, reproduced below, illustrates the
claimed subject matter:
1. An apparatus for cooling a metal part during a welding
operation comprising:
at least one polymeric pouch configured so as to be
positioned adjacent a surface of the metal part and capable of
receiving a coolant fluid; and
a cooling system adapted to circulate the coolant fluid
through said at least one polymeric pouch such that energy in a
form of heat is transferred from the metal part during a welding
repair operation, through said at least one polymeric pouch to
said coolant fluid.
Appeal Br. 16 (Claims App.).
REJECTIONS
I. Claims 1, 5, 21-23, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Davis (US 7,536,783 B2, issued May 26,
2009) and Cheon (US 7,286,355 B2, issued Oct. 23, 2007).
II. Claims 2 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Davis, Cheon, and Rogers (US 5,832,697, issued Nov. 10,
1998).
III. Claims 3, 4, 6-10, 25, 26, and 28-30 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Davis, Cheon, and Dwyer (US
6,139,412, issued Oct. 31, 2000).
ANALYSIS
Rejection I-Obviousness over Davis and Cheon
Claims 1, 5, and 21
As to claim 1, the Examiner found Davis discloses an apparatus for
cooling a metal during a welding operation, comprising a cooling system
adapted such that heat energy is transferred from a metal part during a
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Appeal2014-006105
Application 11/711,841
welding repair operation. Final Act. 2--4 (citing Davis, col. 4, 11. 1-23; Fig.
1 ). According to the Examiner,
during welding, wherein the surface to be repaired which is
airfoil ( 14 as shown in fig. I) adapted to be heated, and there
would be automatically energy transferring occurs [sic} because
of the heat that will be generated from the welding, therefore, the
Davis's system is capable of transferring energy in the form of
heat from a metal part "during a welding operation."
Id. at 6 (emphasis added).
The Examiner found Davis does not disclose at least one polymeric
pouch, and a cooling system adapted to circulate coolant fluid through the
polymeric pouch. Id. at 3. The Examiner found Cheon discloses these
features. Id. at 4 (citing Cheon, col. 1, 11. 19-20). The Examiner concluded
it would have been obvious to modify Davis to include a plurality of
pouches, as taught by Cheon, "to cool the objects having the uneven
surfaces." Id.
Appellant contests the Examiner's finding that Davis discloses a
cooling system used during a welding repair operation, as claimed. Appeal
Br. 6. Appellant contends that even if Davis discloses some type of energy
transfer that occurs during welding, this would not amount to a "cooling
system," as claimed. Id.
Davis discloses a system 10 that may be used to straighten airfoils 14
of turbine vane segment 12. Davis, col. 2, 11. 53-56. "One or more orifices
56 may be cut into an outer surface 58 of the airfoil 14 to facilitate
straightening of the airfoil 14." Id. at col. 4, 11. 1-2; see also Figs. 3, 4.
Appellant contends orifice 56 disclosed in Davis "has nothing to do
with cooling, but instead is disclosed only as being used to facilitate
straightening of the airfoil 14." Appeal Br. 5 (citing Davis, col. 4, 11. 1-2).
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Appeal2014-006105
Application 11/711,841
We agree with Appellant. The Examiner does not indicate what
particular description in the passage in Davis cited (i.e., col. 4, 11. 1-23)
corresponds to the claimed "cooling system." To the extent the Examiner
may consider orifice 56 to be a "cooling system," Davis does not describe
that orifice 56 functions as a cooling system and provides heat transfer from
airfoil 14 during a welding repair operation, as required by claim 1. Rather,
Davis discloses only that orifice 56 facilitates strengthening. Thus, the
Examiner does not explain how orifice 56 is a "cooling system," or how
anything else described in the cited passage can be considered a "cooling
system."
Davis discloses that "[t]he airfoil can be cooled while maintaining the
force on the inner shroud. The temperature can be lowered to about 150
degrees F." Davis, col. 1, 11. 56-58; see also col. 4, 11. 42--44. This
description does not indicate how the airfoil is cooled while force is
maintained on the inner shroud. Nor does this description state that airfoil
14 is cooled during welding. In fact, Davis states that "[t]he orifice 56 may
be sealed by welding the orifice 56 closed while the airfoil 14 remains
heated." Id. at col. 4, 11. 48-52. As such, Davis discloses that airfoil 14
remains heated during the welding operation. Although Davis discloses that
airfoil 14 can be cooled, Davis does not disclose a cooling system that is
operable "such that energy in a form of heat is transferred from the metal
part during a welding repair operation."
Appellant contends Cheon is not analogous prior art to the claimed
subject matter. Appeal Br. 7. The Examiner found that "both Davis and
Cheon apparatus are cooling metals." Final Act. 7.
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Appeal2014-006105
Application 11/711,841
Cheon discloses a cooling system for electronic devices. Cheon,
Abstr. The system includes a coolant supply that supplies liquid coolant to
pouch bodies 14, 16, 18. Id. Electronic components to be cooled are placed
between adjacent pouch bodies 14, 18 and 18, 16. Id.; Figs. 5, 6. Even if
both Davis and Cheon cool metals, the Examiner has not articulated an
adequate reason with a rational underpinning why one of ordinary skill in
the art would have turned to Cheon's teaching of using pouch bodies to cool
electronic components. However, "there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Davis discloses that airfoil 14 remains heated during the welding operation.
Davis, col. 4, 11. 48-52. The Examiner does not explain why one of ordinary
skill would have disregarded this explicit description and modified Davis to
incorporate a cooling system to instead cool airfoil 14 during the welding
operation.
The obviousness inquiry considers not only "whether a person of
ordinary skill in the art would have been motivated to combine the prior art to
achieve the claimed invention [but also] whether there would have been a
reasonable expectation of success in doing so." DyStar Textilfarben GmbH &
Co. Deutschland KG v. CH Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)
(citation omitted). Here, the Examiner has not shown that Cheon's cooling
system designed to cool electronic components provided on mounting board 10
reasonably would have been expected to provide adequate heat transfer and
cooling of Davis' airfoil 14 during a welding repair operation.
For the above reasons, we do not sustain the rejection of claim 1, and
clams 5 and 21 depending therefrom, as unpatentable over Davis and Cheon.
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Appeal2014-006105
Application 11/711,841
Claims 22, 23, and 27
Independent claim 22 is directed to an apparatus for cooling an airfoil
of a blade during a welding operation, and, otherwise, recites substantially
the same limitations as claim 1. Appeal Br. 17 (Claims App.). For claim 22,
the Examiner's findings (Final Act. 3) and Appellant's argument for
patentability (Appeal Br. 9-10) are substantially the same as for claim 1.
Accordingly, we do not sustain the rejection of claim 22, and claims 23 and
27 depending therefrom, as unpatentable over Davis and Cheon.
Rejection II- Obviousness over Davis, Cheon, and Rogers
The Examiner's application of Rogers to the rejection of claims 2 and
24, which depend from claims 1 and 22, respectively, does not cure the
deficiencies of the rejection of claims 1 and 22 (see Rejection I). Final Act.
4--5. Accordingly, we do not sustain the rejection of claims 2 and 24 as
unpatentable over Davis, Cheon, and Rogers.
Rejection III-Obviousness over Davis, Cheon, and Dwyer
Claims 3, 4, and 6-10 depend from claim 1, and claims 25, 26, and
28-30 depend from claim 22. The Examiner's application of Dwyer to the
rejection of these dependent claims does not cure the deficiencies of the
rejection of claims 1 and 22. Final Act. 5---6. Accordingly, we do not sustain
the rejection of claims 3, 4, 6-10, 25, 26, and 28-30 as unpatentable over
Davis, Cheon, and Dwyer.
DECISION
The Examiner's decision to reject claims 1-10 and 21-30 is reversed.
REVERSED
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