Ex Parte Nelson et al

Board of Patent Appeals and Interferences

Jun 3, 2009

10996878 (B.P.A.I. Jun. 3, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WARREN ARTHUR NELSON, BRIAN PETER ARNESS,
PAUL THOMAS MARKS, RAYMOND EDWARD CHUPP,
and TARA EASTER MCGOVERN
____________________

Appeal 2008-002783
Application 10/996,878
Technology Center 3700
____________________

Decided:1 June 3, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/996,878

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STATEMENT OF THE CASE
Warren Arthur Nelson et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-5, 7, 11-15, 21-26, 28-33, and
35. Appellants do not appeal the rejection of claim 27, which, along with
claims 21 and 24-26, stands provisionally rejected on the ground of
obviousness-type double patenting. (App. Br. 1, 8.) We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellants’ claimed invention pertains to a pattern of ridges on the
surface of turbine shrouds. (Spec. 1, ¶ [0001].) According to Appellants,
the ridges, which may be made of an abradable material, are used to
minimize the clearance between rotating blades and the interior surface of
stationary turbine shrouds. (See id. at 2, ¶ [0005]; 7, ¶ [0010].) Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A pattern for improving aerodynamic performance
of a turbine comprising:
a material disposed at a base surface disposed at an
interior surface of a turbine shroud such that said material is
capable of abradable contact with a tip portion of a turbine
bucket, said material disposed in a pattern, wherein said pattern
comprises,
a first plurality of ridges disposed at said base surface
such that at least a first portion of said first plurality of ridges
corresponding to at least a back portion of said turbine bucket is
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oriented at a first angle with respect to an axis of rotation of
said turbine bucket,
each ridge of said first plurality of ridges having a first
sidewall and a second sidewall, said first and second sidewalls
each having a first end and an opposite second end, said first
end of said first and second sidewalls extending from said base
surface, said first and second sidewalls sloping toward each
other until meeting at said second ends of respective first and
second sidewalls defining a centerline and a top portion of
said ridge, said first and second sidewalls are inclined with
substantially equal but opposite slopes with respect to said base
surface.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Lau US 6,887,528 B2 May 3, 2005
Before us for review is the Examiner’s rejection of claims 1-5, 7, 11-
15, 21-26, 28-33, and 35 under 35 U.S.C. § 102(e) as being anticipated by
Lau.
The Examiner, in the Final Rejection dated September 15, 2006, also
provisionally rejected claims 21, 24, 25, 26 and 27 on the ground of
nonstatutory obviousness-type double patenting. Appellants do not appeal
this rejection. (See App. Br. 8 (Appellants identifying the provisional
double patenting rejection, but stating that the anticipation rejection is the
“one ground of rejection to be reviewed on appeal[.]”).) We note that the
Examiner has not made any determination on the record as to the effect of
Appellants’ terminal disclaimer (filed August 28, 2006) on the double
patenting rejection.

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ISSUE
The Examiner found that Lau anticipates claims 1-5, 7, 11-15, 21-26,
28-33, and 35. (Ans. 3.) Appellants argue that Lau does not disclose a
plurality of ridges where each ridge has first and second sidewalls inclined
with substantially equal but opposite slopes. (App. Br. 9-10; Reply Br. 1-3.)
The Examiner found that Lau’s Figure 4 discloses a plurality of ridges each
with two sidewalls having the recited substantially equal but opposite slopes.
(Ans. 3, 4-5.)
Therefore, the issue presented is:
Have Appellants demonstrated error in the Examiner’s finding that
Lau discloses the recited ridge configuration?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Lau teaches profiled abradable coatings for stationary turbine
shrouds. (Lau, col. 1, ll. 5-8.) Figure 4 of Lau is reproduced below:

Figure 4 depicts a profiled ceramic abradable coating deposited by a
narrow-foot-print plasma gun. (Lau, col. 2, ll. 65-66.)
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2. Lau discloses that the profiled coating 30 is applied to the
substrate 32 by plasma spraying to form a profiled pattern. (Lau, col. 3,
ll. 47-54.) The coating may be in the form of a plurality of stripes 36. (Id.,
col. 3, ll. 55-56; Fig. 4 (especially the right portion of the figure).) Lau’s
Figure 4 depicts stripes 36 each having two sidewalls extending from the
substrate 32 and meeting so as to define a centerline and a top portion of a
ridge. (See Lau, Fig. 4; see also App. Br. 9 (Appellants referring to the left
and right sidewalls and the centerlines of Lau’s stripes); Reply Br. 2 (same).)
3. Each ridge of the four stripes 36 shown in the cross-sectional
view in the left portion of Lau’s Figure 4 has first and second sidewalls
inclined with substantially equal but opposite slopes with respect to the base
surface (substrate 32).

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is Appellants’ burden to
precisely define the invention, not the United States Patent and Trademark
Office’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35
U.S.C. § 112, ¶ 2). Appellants have the opportunity to amend the claims
during prosecution, and broad interpretation by the Examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. Prater, 415 F.2d at 1404-05.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987) (citations omitted).
Patent drawings can anticipate claims if the drawings clearly show the
claimed structure. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). A
drawing teaches all that it reasonably discloses and suggests to a person of
ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979).

ANALYSIS
Appellants argue the rejected claims as a group. (App. Br. 9-10.) We
select claim 1 as the representative claim, and claims 2-5, 7, 11-15, 21-26,
28-33, and 35 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Appellants argue that the Examiner erred because the anticipation
rejection is based on Lau’s Figure 4. (Reply Br. 1-2.) Appellants contend
that the figure is of little value because it is not drawn to scale and that Lau’s
written description does not support a finding that the sidewalls in Figure 4
are inclined with substantially equal but opposite slopes. (Id.) Appellants
further contend that findings based on the measurement of a drawing’s
features are of little value. (See Reply Br. 1-2 (citing Hockerson-
Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000); In re Chitayat, 408 F.2d 475 (CCPA 1969), and Manual of Patent
Examining Procedure (MPEP) 2125).) Appellants’ argument is not
persuasive because the Examiner’s finding that Lau’s figure discloses
substantially equal but opposite slopes is not based on the measurement of
Lau’s figure (see Ans. 3, 4-5). Further, claim 1 does not require a level of
precision implied by Appellants’ argument. Lau’s Figure 4 might not be an
adequate disclosure of the exact sidewall slopes, but we see no error in the
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Examiner’s reliance on the figure as a teaching of the claimed “substantially
equal but opposite slopes.”
Lau’s Figure 4 shows a cross-sectional view of four ridges (stripes
36). (See Facts 1-2.) Appellants argue that “the third and fourth stripes 36
of Lau [counting from the left] do not include sidewalls that are mirror
images of one another” (App. Br. 9), and that “the sidewalls of Figure 4 are
not inclined with equal but opposite slopes” (Reply Br. 2). These arguments
are not commensurate with the claim language, which does not require
mirror image slopes or exactly equal but opposite slopes.
Appellants argue that Lau’s stripes (particularly the third and fourth
stripes), do not have the recited substantially equal and opposite slope
relationship because the left sidewalls have a concavity that is not present in
the right sidewalls. (App. Br. 9; Reply Br. 2.) Appellants’ use of the
modifier “substantially” in the claim indicates an intention to encompass
slope relationships that are not precisely equal but opposite. Neither the
language of claim 1 nor Appellants’ Specification defines the breadth of the
term “substantially” in the context of the slope relationship. (Cf. Spec. 9-10,
¶ [0013] (describing the embodiment shown in Appellants’ Figure 3 as
having sidewalls with “substantially equal, but opposite slopes”).)
“Substantially” is often construed in patent claims as largely but not wholly
that which is specified. See, e.g., York Prods., Inc. v. Cent. Tractor Farm &
Family Ctr., 99 F.3d 1568, 1572-73 (Fed. Cir. 1996). As such, we do not
perceive error in the Examiner’s finding that Lau discloses the recited
sidewalls “inclined with substantially equal but opposite slopes,” when the
claim is given the broadest reasonable construction consistent with the
Specification.
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Appellants also argue that, even if Lau’s first and second stripes do
not have a concave sidewall, the third and fourth are concave, so Lau does
not teach a plurality of stripes in which each ridge has the recited
substantially equal but opposite slope relationship. (App. Br. 9-10.)
Because the Examiner correctly found that the third and fourth stripes have
the recited slope relationship (Ans. 4-5; see Fact 3), Appellants’ “each ridge”
argument is moot. Nonetheless, we disagree with the Appellants to the
extent that they suggest that each and every ridge in an anticipatory
reference must have substantially equal but opposite slopes (see Reply Br.
2-3). Claim 1 (which uses the open transition phrases “comprising” and
“comprises” to define the recited pattern) merely requires that each ridge in
a first plurality of ridges have the recited slope relationship, but does not
require every ridge in the pattern to be so configured. See AFG Industries,
Inc. v. Cardinal IG Company, Inc., 239 F.3d 1239, 1244-45 (Fed. Cir. 2001).
Appellants have not shown that the Examiner erred in rejecting
claim 1 as anticipated by Lau. Accordingly, we sustain the rejection of
claim 1, and of claims 2-5, 7, 11-15, 21-26, 28-33, and 35 which fall with
claim 1.

CONCLUSION
We conclude that the Appellants have not demonstrated error in
the Examiner’s finding that Lau discloses the recited ridge configuration.
Therefore, Appellants have failed to show that the Examiner erred in
rejecting claims 1-5, 7, 11-15, 21-26, 28-33, and 35 as anticipated by Lau.

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DECISION
The decision of the Examiner to reject claims 1-5, 7, 11-15, 21-26,
28-33, and 35 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

LV:

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