Ex Parte Murphy

Patent Trial and Appeal Board

Jun 22, 2017

13584257 (P.T.A.B. Jun. 22, 2017)

United States Patent and Trademark Office
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.
13/584,257 08/13/2012 David S. Murphy PA22192A;
67097-1959US1
4821
54549 7590 06/26/2017
TART SON OASKFY fr OT DS/PR ATT fr WHTTNFY
EXAMINER
400 West Maple Road
Suite 350
WALTERS, RYAN J
Birmingham, MI 48009 ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID S. MURPHY
Appeal 2015-008159
Application 13/584,2571
Technology Center 3700
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
David S. Murphy (“Appellant”) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—15. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellant, the real party in interest is the assignee, United
Technologies Corporation. Appeal Br. 1.
Appeal 2015-008159
Application 13/584,257
STATEMENT OF THE CASE
Appealed Subject Matter
The Appellant’s invention “relates to post processing of laser peened
articles.” Spec. 12. Claims 1 and 11 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A method of finishing and removing a laser remelt layer
of a component generated by a laser peening process,
comprising:
a) grit blasting a surface at a laser remelt layer;
b) chemically etching the surface; and
c) mechanically finishing the surface.
Appealed Rejections2
Claims 1—15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Stenard et al. (US 5,373,983, issued Dec. 20, 1994;
hereafter “Stenard”) and Dulaney et al. (US 7,776,165 Bl, issued Aug. 17,
2010; hereafter “Dulaney”).
Claims 1—10 and 15 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Kirschman et al. (US 2010/0249926 Al, published
Sept. 30, 2010; hereafter “Kirschman”) and Dulaney.
2 In the Final Office Action (mailed Jan. 5, 2015), the statement for the
rejection under 35 U.S.C. § 112, second paragraph, includes claims 1—10
and 12. The Examiner has withdrawn the rejection of dependent claims 4
and 12. Ans. 7. Additionally, the Examiner fails to include reasons to reject
claims 1—3 and 5—10, and claims 1—3 and 5—10 do not depend from claims 4
and 12. As such, the inclusion of claims 1—3 and 5—10 in the statement of
rejection appears to be an inadvertent error.
2
Appeal 2015-008159
Application 13/584,257
ANALYSIS
Obviousness based on Stenard and Dulaney
The Appellant argues that the rejection of claims 1—15 under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Stenard and Dulaney is improper.
Appeal Br. 3. The Appellant contends that the surface processing described
in Stenard would not applicable to a laser remelt layer. See id. The
Appellant contends that Stenard’s method is directed to removing any
exposed fiber or other contaminant from a surface, and as such, “has nothing
to do with treating a laser remelt layer . . . there would be no reason for
bringing a part having a laser remelt layer to the Stenard process.”3 Id.
The Examiner’s rationale for combining the teachings of Stenard to
the laser remelt layer of Dulaney’s turbine component is “to remove any
contaminate from a surface of a machined composite article.” Final Act. 3—
4 (emphasis added). And, in response to the Appellant’s argument, the
Examiner determines that “the Stenard process can be used to remove
contaminants of any surface and Dulaney teaches that laser processing can
remove compressed residual stress in the material.” Ans. 8 (emphasis
added). However, the Examiner’s rationale and response fails to reasonably
explain why Dulaney’s removal of compressed residual stresses in a material
(i.e., a laser remelt layer) would include a contaminant. Hence, the
Examiner’s reasoning fails to be adequately supported.
3 Stenard describes “[a]n object of the present invention is to provide a
method for removing any exposed fiber or other contaminate from the
surface of a machined composite article for subsequent diffusion bonding.”
Stenard, col. 1,11. 42^45.
3
Appeal 2015-008159
Application 13/584,257
Thus, we do not sustain the Examiner’s rejection of claims 1—15 as
unpatentable over Stenard and Dulaney.
Obviousness based on Kirschman and Dulaney
Independent claim 1 and dependent claims 4—10 and 15
The Appellant argues “Kirschman . . . does not disclose the media
blasting in Paragraph [0082] as being intended to remove a laser remelt
layer.” Appeal Br. 3; Reply Br. 1. The Appellant’s argument is not
persuasive.
Initially we note that the relevant recitation of claim 1, i.e., “grit
blasting a surface at a laser remelt layer” (Appeal Br., Claims App.), does
not require removal of a laser remelt layer by grit blasting. Although the
preamble of claim 1 recites “[a] method of finishing and removing a laser
remelt layer of a component generated by a laser peening process,” removal
of the laser remelt layer does not necessarily need to be a result of grit
blasting a surface. See also Spec. H 36-42 (explaining that laser remelt
layer 23 has a damaged area 47, and removal of damaged area 47 includes
processes other than grit blasting, e.g., chemical removal process 104 and
mechanical removal process 106). As such, the Appellant’s argument is not
commensurate with the scope of the claim.
In applying Kirschman’s disclosure to the foregoing claim limitation,
the Examiner cites to paragraph 82 among others. Ans. 8 (citing Kirschman
1178—82, Fig. 4); Final Act. 5. Kirschman’s paragraph 82 describes
compression stress processing station 208 (block 106), which may include
laser peening a surface of an implant (i.e., material). And, a skilled artisan
would understand that the material’s laser peened surface — processed at
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Appeal 2015-008159
Application 13/584,257
station 208 — is further processed at polishing surface treatment station 210
(block 108), which may include sand blasting. See Kirschman || 74, 82,
Figs. 4, 7A—7D. As such, we agree with the Examiner’s finding that
Kirschman discloses “grit blasting a surface at a laser remelt layer,” as
recited in claim 1. Further, we determine a skilled artisan would understand
that Kirschman’s surface processing at station 210 removes at least some of
the laser remelt layer.
The Appellant asserts Kirschman discloses a “very detailed surface
treatment,” including a chemical treatment, and argues that chemical etching
would provide no additional benefit to Kirschman. Appeal Br. 3; Reply
Br. 1—2. Also, the Appellant asserts that “Dulaney discloses a chemical
treatment, but not in combination with the media blasting and mechanical
finishing otherwise required by the claims.” Appeal Br. 3. For these
reasons, the Appellant argues that “the Examiner appears to be relying solely
on hindsight.” Reply Br. 2. The Appellant’s argument is not persuasive.
Kirschman and Dulaney each disclose many types of surface
treatments which can be used on the surface of an implant. For example,
Kirschman describes at paragraph 82, “[a]t station 210, the implant is
polished or surface treated. In this regard, such polishing or surface
treatment may include electropolishing, mechanical polishing, coating,
media blasting (e.g., sand blasting) or machining.” Notably, the use of the
phrase “may include” suggests an open listing of techniques to treat the laser
peened surface at polishing surface treatment station 210. The use of the
phrase “may include” also suggests that more than one technique may be
used to treat the surface of the implant. Further, polishing the surface of the
implant, which includes a laser remelt layer as discussed above, may occur
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Application 13/584,257
at finish processing station 212 and sterilizing station 214. See Kirschman
TfTf 83—84. As such, Kirschman instructs a skilled artisan to treat the surface
of the implant (i.e., a laser remelt layer) with an iterative process using
various techniques. Dulaney similarly provides an open-ended listing of
techniques to treat (i.e., remove) a laser remelt area, including “the step of
performing at least one of grinding, sanding, mechanical milling, chemical
milling, electro-chemical milling, chemical etching, polishing, and thermally
treating the processed workpiece.” Dulaney, col. 4,11. 34—38 (emphasis
added); see Final Act. 6 (citing Dulaney, col. 3,11. 33—65, col. 7,11. 10-15,
21). And Dulaney’s use of the phrase “at least one” — similar to
Kirschman’s disclosure — instructs a skilled artisan to treat a laser remelt
layer with an iterative process using various techniques. Moreover, a skilled
artisan would appreciate that the listings of surface treatment techniques in
Kirschman and Dulaney overlap. As such, the inclusion of chemical
etching, as taught by Dulaney, to Kirschman surface treatment techniques
provides a skilled artisan with another known alternative within the iterative
process of using various techniques to treat a laser remelt layer.
Thus, we sustain the Examiner’s rejection of claim 1 as unpatentable
over Kirschman and Dulaney. We also sustain the Examiner’s rejection of
claims 4—10 and 15 as they are not argued separately.
Dependent Claims 2 and 3
The Appellant separately argues the Examiner’s rejection of claims 2
and 3.4 Appeal Br. 3—A. The Appellant asserts that claims 2 and 3 “claim
the order of grit blasting, chemical etching and mechanical finishing” and
4 Notably, claim 3 depends from claim 2 and claim 2 depends from claim 1.
Appeal Br., Claims App.
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Application 13/584,257
argues that “[t]he Kirschman process, modified with Dulaney, does not meet
the claimed order.” Id. The Appellant acknowledges, however, that the
Examiner’s rejection of claims 2 and 3 is in-part supported by a holding in
In re Burhans, 154 F.2d 690, 692 (CCPA 1946). See id. at 4; Final Act. 6—7
(citing Burhans for the holding that a “selection of any order of performing
process steps is prima facie obvious in the absence of new or unexpected
results”; MPEP § 2144.04). For example, for the rejection of claim 2, the
Examiner determines:
it would be obvious to perform step b) after step a) since
changing the sequence of the steps would have been prima facie
obvious to one of ordinary skill in the art, absent a showing of
unexpected results.. .. Thus one of ordinary skill in the art could
have performed grit blasting as disclosed by Kirschman, prior to
chemically etching, absent a showing of unexpected results.
Final Act. 6.
The Appellant argues that Kirschman and Dulaney contemplate very
fine processing and “[sjimply arguing that the ‘order can be changed’ and an
obviousness rejection still be supported, is not supported by the current law.”
Appeal Br. 4. Further, the Appellant asserts that “a laser remelt area is very
thin” (e.g., 1 mil), and “[wjith such fine processing, which is what one must
assume applies to the processing of all laser remelt layers, the order of
processing is critical.” Id. The Appellant’s argument is not persuasive.
First, the Appellant does not apprise us how the current law
invalidates the holding of Burhans. And, the Appellant fails to demonstrate
that the result of the claimed sequence of steps as required by claims 2 and 3
is unexpected. Second, the Appellant fails to persuasively explain — by
way of evidence or technical reasoning — why grit blasting a surface at a
laser remelt layer, chemical etching that surface, and mechanically finishing
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Application 13/584,257
the surface is in conflict with Kirschman’s surface treatment. As discussed
above, based on the combined teachings of Kirschman and Dulaney, a
skilled artisan would have understood that treating a laser peened surface
may entail an iterative process using various techniques such as those
included by claims 2 and 3.
Thus, we sustain the Examiner’s rejection of claims 2 and 3 as
unpatentable over Kirschman and Dulaney.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—15 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Stenard and Dulaney.
We AFFIRM the Examiner’s decision rejecting claims 1—10 and 15
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Kirschman and
Dulaney.
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)(l)(iv).
AFFIRMED-IN-PART
8