Ex Parte Szela et al

Patent Trial and Appeal Board

Aug 21, 2017

13972966 (P.T.A.B. Aug. 21, 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.
13/972,966 08/22/2013 Edward R. Szela PA4943U;
67097-1040PUS2
5311
26096 7590 08/23/2017
TART SON OASKFY fr OT DS P C EXAMINER
400 WEST MAPLE ROAD
SUITE 350
AFZALI, SARANG
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD R. SZELA, MICHAEL A. JOY, DANIEL A. BALES,
BRADFORD A. COWLES, and DAVID A. RUTZ
Appeal 2015-008318
Application 13/972,9661
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4—7, 9—14, 16, 17, 19, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify United Technologies Corporation as the real party
in interest. Appeal Br. 1.
Appeal 2015-008318
Application 13/972,966
ILLUSTRATIVE CLAIM
1. A repaired article comprising:
a body extending between a first side and a second side,
the body including a repair section having an associated
thickness between the first side and the second side, and the
repair section includes regions of plastic deformation
distributed through the thickness, wherein the repair section
includes a microstructure that is substantially free of
orthorhombic delta phase regions of NLCb and the body is
made of an alloy comprising about 50-55 wt% nickel and about
4.75—5.5wt% columbium.
REJECTIONS
I. Claims 1, 2, 7, 9—14, 16, 17, 19, and 20 are rejected under
35 U.S.C. § 102(b) as anticipated by Baumgarten et al. (US 5,111,570, iss.
May 12, 1992) (“Baumgarten”).
II. Claims 4—6 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Baumgarten and Burke et al. (US 6,508,000 B2, iss. Jan.
21, 2003) (“Burke”).2 * * * * * 8
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
2 In addition to Rejections I and II herein, the Final Office Action sets forth
additional rejections. Pages 7—10 of the Final Office Action state that claims
1, 2, 4, 11—14, 17, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Birkner et al. (US 2007/0186416 Al, pub. Aug. 16, 2007)
(“Birkner”) and Baumgarten. Pages 11—12 of the Final Office Action state
that claims 5, 6, 14, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Birkner, Baumgarten, and Burke. The Examiner has
withdrawn these rejections involving Birkner. See Answer 9. In addition,
the Final Office Action (pages 5—6) inadvertently states that canceled claim
8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Baumgarten.
See Answer 9.
2
Appeal 2015-008318
Application 13/972,966
ANALYSIS
Anticipation
As to the anticipation rejection, the Appellants do not dispute that
Baumgarten teaches a “repair section” containing the amounts of nickel and
columbium recited in claim 1, but the Appellants argue that Baumgarten’s
“repair section” lacks “a microstructure that is substantially free of
orthorhombic delta phase regions of NECb.” See Appeal Br. 2—3.
According to the Appellants, Baumgarten discloses heating a plug of repair
material to at least 1700° F, during joining, such that it would be in the
“delta phase.” Id. at 3.
The April 1, 2015, Advisory Action states that, because the “delta
phase” is formed as a result of process steps (subjecting the material to a
certain temperature for a period of time), whereas the claimed subject matter
is a product, the limitation at issue is given no “patentable consideration.”
Adv. Act. 4. In addition, the Examiner maintains that it would have been a
matter of routine experimentation for one of ordinary skill in the art to have
exposed the Baumgarten repair material to the 1700° F temperature for a
period of time short enough to avoid the formation of “delta phase regions.”
Id. Moreover, according to the rejection, “delta phase regions” must not
arise from high temperatures applied while attaching the “repair section,”
because the Appellants’ Specification teaches doing so by welding, which
would involve temperatures as high as 2500° C, or 4532° F. Answer 7—9
(citing Spec. 29, 38). Therefore, the Examiner determines that “delta
phase regions” are avoided by foregoing post-attachment heat treatment (at
temperatures higher than 1750° F). Id. at 9. Thus, according to the
Examiner, because Baumgarten’s heat treatment step is not mandatory,
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Appeal 2015-008318
Application 13/972,966
Baumgarten’s repaired product must meet the claim limitation at issue. Id.;
see also Final Action 3^4 (citing Baumgarten, col. 6,11. 56—59).
The Appellants emphasize that the heat applied, during Baumgarten’s
attachment of the repair material, creates “delta phase regions” —
notwithstanding any omission of post-attachment heat treatment. See
Appeal Br. 2—3. Further, the Appellants contend that the rejection lacks
evidentiary support for the proposition that one of ordinary skill in the art
could perform the joining operation disclosed in Baumgarten within a time
period that would avoid the formation of “delta phase regions.” Id. at 3.
The Appellants’ argument is persuasive of error in the rejection of
claim 1. As an initial matter, we agree with the Appellants that the absence
of “delta phase regions” is a structural feature of claim 1, a product or
apparatus claim, that bears patentable weight — even though it is the result
of a process. See Appeal Br. 3. Further, the rejection does not sufficiently
show that Baumgarten’s forge-joining repair technique would entail the
same temperature and time period as the attachment of a repair section by
welding, as disclosed in the Specification, such that Baumgarten would yield
a repaired product having “a micro structure that is substantially free of
orthorhombic delta phase regions of NFCb,” per claim 1. Further, the
statement that it would be “within the routine experimentation for one of
skill in the art” to employ Baumgarten’s process, for a time period short
enough to avoid creating “delta phase regions” (Adv. Act. 4), is not
supported by adequate factual findings and, in any event, is not applicable in
an anticipation rejection, wherein “a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
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Appeal 2015-008318
Application 13/972,966
In view of the foregoing, we do not sustain the rejection, under
35 U.S.C. § 102(b), of independent claim 1 and, for like reasons,
independent claim 13, as well as dependent claims 2, 7, 9—12, 14, 16, 17, 19,
and 20.
Obviousness
Because each of claims 4—6 and 17 depends (directly or indirectly)
from one of the claims addressed in the previous section, and because the
Burke reference is not shown to overcome the deficiency of Baumgarten
discussed above, we do not sustain the rejection of claims 4—6 and 17 under
35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 2, 7, 9—14,
16, 17, 19, and 20 under 35 U.S.C. § 102(b).
We REVERSE the Examiner’s decision rejecting claims 4—6 and 17
under 35 U.S.C. § 103(a).
REVERSED
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