General Electric Company

Patent Trials and Appeals Board

Apr 29, 2020

14753588 - (D) (P.T.A.B. Apr. 29, 2020)

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.
14/753,588 06/29/2015 Martha Alejandra Azcarate Castrellon 280325-1 1991
80944 7590 04/29/2020
Hoffman Warnick LLC
540 Broadway
4th Floor
Albany, NY 12207
EXAMINER
CHRISTENSEN, DANIELLE M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
04/29/2020 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):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARTHA ALEJANDRA AZCARATE CASTRELLON,
CESAR CORONA BRAVO, and STEVEN SEBASTIAN BURDGICK
____________

Appeal 2019-006000
Application 14/753,588
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP, and LISA M. GUIJT,
Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 4, 6–11, 14, 15, 17, 19, and 21–26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies General Electric Company as the
Applicant and real party in interest. Appeal Br. 1.
Appeal 2019-006000
Application 14/753,588
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THE INVENTION
Appellant’s invention relates to diaphragm nozzle segments in steam
turbines. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A steam turbine diaphragm nozzle segment comprising:
a pair of opposing sidewalls,
wherein the pair of opposing sidewalls each have a
circumferential dimension measured along opposing sides of
each of the sidewalls;
an airfoil extending between the pair of opposing
sidewalls and integral with each of the pair of opposing
sidewalls, the airfoil having a single contact surface for
directing a flow of working fluid through a flow channel,
wherein the airfoil has a pressure side defining a portion of the
flow channel; and
a fill region integral with the airfoil and the pair of
opposing sides, the fill region extending between the pair of
opposing sides along an entirety of a length of the airfoil, the
fill region for completely obstructing the flow of working fluid,
wherein the airfoil, the pair of opposing sidewalls and
the fill region are integrally cast or forged components from a
homogeneous material,
wherein the fill region extends from the airfoil to a first
circumferential edge of each of the opposing sidewalls along
the circumferential dimension,
wherein the flow channel extends from the pressure side
of the airfoil to a second circumferential edge of each of the
opposing sidewalls along the circumferential dimension, the
second circumferential edge being distinct from the first
circumferential edge.
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Application 14/753,588
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Birmann US 2,013,512 Sept. 3, 1935
Egli US 2,197,521 Apr. 16, 1940
Sasaki US 7,179,052 B2 Feb. 20, 2007
Silvestri CA 2,138,462 A1 June 21, 1995
The following rejections are before us for review:
1. Claims 1, 4, 6, 7, 14, 21–24, and 26 are rejected under 35 U.S.C.
§ 102 as anticipated by Birmann.
2. Claims 8–10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Birmann and Silvestri.
3. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable
over Birmann, Silvestri, and Egli.
4. Claims 15, 17, and 25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Birmann, Silvestri, and Sasaki.
5. Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable
over Birmann, Silvestri, Sasaki, and Egli.
OPINION
Anticipation of Claims 1, 4, 6, 7, 14, 21–24, and 26
by Birmann
Independent claims 1 and 7 are argued together. Appeal Br. 8–14.
Claims 4, 6, 14, 21–24, and 26 depend, directly or indirectly, from either
claim 1 or claim 7 and are not separately argued. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv).
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Application 14/753,588
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The Examiner finds that Birmann discloses all of the limitations of
claim 1. Non-Final Act. 2–4. In particular, the Examiner finds that
Birmann’s nozzle segment has: (1) a pair of opposing sidewalls; and (2) a
fill region. Id. Moreover, the Examiner finds that Birmann is structurally
indistinguishable from a similar device formed integrally by casting or
forging. Id. at 4.
Appellant first argues that the Examiner errs in finding that Birmann
element 26 is a “sidewall.” Appeal Br. 10. In response, the Examiner
explains that reference to element 26 in the Non-Final Action is a
typographical error and corrects the rejection to recite that elements 20
and 24 correspond to the claimed sidewalls. Ans. 3. Appellant does not
dispute the corrected finding.
Appellant next argues that Birmann lacks a “fill region” as claimed.
Appeal Br. 12.
Appellant submits that the Examiner has either misinterpreted
Birmann as teaching a claimed element (the fill region in this
instance), or the Examiner has failed to provide sufficient
reasoning as to how Birmann teaches the claimed element (fill
region).
Id. at 12–13.
In response, the Examiner construes a “fill region” as having the
following characteristics:
a. The fill region is integral with the airfoil and the pair of
opposing sides
b. The fill region extends between the pair of opposing sides
and an entirety of a length of the airfoil
c. The fill region is integrally cast or forged from a
homogenous material with the airfoil and pair of opposing
sidewalls
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d. The fill region completely obstructs the flow of working
fluid; and
e. The fill region extends from the airfoil to a first
circumferential edge.
Ans. 4. The Examiner further explains that:
Since the claims recite that the fill region is integrally formed of
a homogenous material with the airfoil and the pair of opposing
sidewalls and the claims fail to distinguish with any specific
features where the airfoil ends and the fill region begins, the fill
region can be interpreted as shown below.
Id. The Examiner then furnishes an annotated version of Birmann, Figure 6,
with an annotation indicating where the “fill region” is disposed. Id.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Appellant’s Specification explains that a nozzle segment can include a
fill region.
Partially obstructive nozzle segment 400, 500 can also include a
fill region 418 integral with airfoil 412 and sidewalls 402. Fill
region 418, airfoil 412 and sidewalls 402 can be integrally cast
or forged from a common (e.g., substantially homogeneous)
material such as a metal (e.g., steel, iron, etc.). Fill region 418
can extend between sidewalls 402 along an entirety of a length
(L) of airfoil 412, where fill region 418 is sized and positioned
to completely obstruct the flow of working fluid (e.g., steam).
Spec. ¶ 22. The Specification further provides:
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More particularly, sidewalls 402 each have a
circumferential dimension (de) measured along opposing
sides 420 of each sidewall 402, and fill region 418 extends from
airfoil 412 to a first circumferential edge (leading edge 404,
trailing edge 406) of each sidewall 402 along circumferential
dimension (de). As described herein, airfoil 412 has a pressure
side 422 defining a portion of flow channel 416, where the flow
channel 416 extends from pressure side 422 to a second
circumferential edge (e.g., other one of leading edge 404 or
trailing edge 406) of each of sidewalls 402 along
circumferential dimension (de), where the second
circumferential edge (e.g., other one of leading edge 404 or
trailing edge 406) is distinct from the first circumferential edge
(e.g., leading edge 404 or trailing edge 406).
Id. ¶ 23 (emphasis added).
Thus, although the “fill region” completely obstructs the flow of
working fluid (Claims App., claim 1), we are also cognizant that the claimed
diaphragm nozzle segment includes an “airfoil” that directs a flow of
working fluid through a flow channel (Id.) and that the “fill region” is
“integral” with the “airfoil” that directs working fluid through a flow
channel. Id.
Figures 5 and 6 depict the contours of Birmann’s curved guide vane.
Birmann, Figs 5, 6. Figure 4 depicts an axial elevation of the guide vane
section. Id. p. 1, col. 2, ll. 53–54, Fig 4. In Figure 4, curved vane 22, opens
toward the right hand side of the drawing. Id. The drawing further depicts
that the curved vane is structurally supported by a certain material thickness
that appears immediately to the left of callout 22. Id. Such thickness is
depicted as extending along the entire length of the airfoil. Id. Having
considered the competing positions of Appellant and the Examiner, it is our
opinion that the Examiner’s findings of fact comport with a broad, but
reasonable, construction of “fill region.” In that regard, we note that
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Appellant fails to offer any operational definition of “fill region” that is
consistent with the Specification but nevertheless patentably distinguishes
the invention from Birmann.
Finally, Appellant argues that the Examiner errs in treating the
“integrally cast or forged . . . from a homogeneous material” limitation as a
product-by-process limitation. Appeal Br. 13. Appellant argues that if a
process limitation connotes specific structure, such structure should be
considered. Id. at 13–14 (citing In re Nordt Development Co., LLC, 881
F.3d 1371 (Fed. Cir. 2018)).
In light of the Nordt decision discussed above, Appellant points
out that the claimed feature “wherein the airfoil, the pair of
opposing sidewalls and the fill region are integrally cast or
forged components from a homogeneous material” describes a
structural requirement of the claimed product, and as such,
should be given patentable weight.
Id. at 14. Appellant, however, fails to explain how or why casting or forging
the airfoil, sidewalls, and fill region “connotes specific structure” so as to
create a structural difference over Birmann. Appeal Br. 13.
In response, the Examiner explains that Birmann discloses that its
airfoil and sidewalls are integral and that the entire assembly can be formed
of stainless steel. Ans. 6 (citing Birmann, p. 2, col. 1, ll. 28–35).
Birmann is directed to guide vanes and associated diaphragms for
pressure stage turbines. Birmann p. 1, col. 1, ll. 1–4. The passage in
Birmann relied on by the Examiner at page 6 of the Answer states:
The guide vane sections indicated generally at 11 are illustrated
in detail in Figs. 5 to 7 inclusive. Each of these consists of a
lower hook portion 18 extending downwardly from the inner
boundary wall 20 between which and the outer boundary
wall 24 there is suitably curved vane as indicated at 22. The
whole assembly is made integral and may, if desired, be made
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of stainless material which will not be corroded by the working
fluid.
Id. p. 2, col. 1, ll. 28–35 (emphasis added). Thus, both Birmann and
Appellant’s airfoils, sidewalls, and fill regions are made of a homogenous
material (stainless steel) and both are “integral.” Id. Birmann is merely
silent as to whether it is formed by casting or forging as opposed to, for
example, being machined from a larger piece of stock material.
The record before us does not indicate that the Nordt Development
case applies here. Nordt Development acknowledges the general rule that,
typically, patentable weight is not accorded to a process limitation in a
product-by-process claim. Nordt Development, 881 F.3d at 1375 (citing In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). Thorpe states the general
rule that patentability of product claims that contain process limitations is
based on the product itself, not the process. Id. Appellant recites the naked,
legal principle from Nordt Development, but makes no effort to connect such
legal principle to the facts of the case before us.
Nordt Development involved a knee brace that was made from an
injection molding process. Nordt Development, 881 F.3d at 1372. In that
case, the applicant disclosed that certain aspects of the brace could be
formed from injection molding of a first elastomeric material and that other
aspects of the otherwise integral brace could be formed through injection
molding of a second elastomeric material. Id. at 1373. The applied art in
the Nordt Development rejection involved a knee brace comprised of a fabric
sleeve and a stiffener formed of elastic, non-elastic, or partially elastic
material. Id. at 1373–74. The Federal Circuit considered that the issue
presented “was not an easy one” and agreed that the appellant failed to
persuasively explain what structural limitation is imparted by the injection-
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molded limitation. Id. at 1376. Notably, the Federal Circuit did not reverse
the Board, but only vacated and remanded the case for further proceedings in
light of a corrected claim construction. Id.
Given the facts and circumstances of this case, we are not persuaded
that the integral, stainless steel airfoil of Birmann is structurally distinct
from the cast or forged, stainless steel airfoil of Appellant. Thus, this case
calls for application of the general rule espoused in Thorpe, supra.
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and,
accordingly, sustain the Examiner’s Section 102 anticipation rejection of
claims 1, 4, 6, 7, 14, 21–24, and 26.
Unpatentability of Claims 8–11
over Combinations Based on Birmann and Silvestri
Appellant does not argue for the separate patentability of claims 8–11
apart from arguments presented with respect to claim 7 which we have
previously considered. Appeal Br. 14–16. Appellant’s argument that
Silvestri and/or Egli do not cure deficiencies of Birman relating to claim 7
does not apprise us of Examiner error as we disagree with Appellant that
Birmann is deficient.
We sustain the Examiner’s rejection of claims 8–11. See 37 C.F.R.
§ 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of
arguments for separate patentability).
Unpatentability of Claims 15, 17, and 25
over Birmann, Silvestri, and Sasaki
Claim 15 is an independent claim, and claims 17 and 25 depend
therefrom. Claims App. Appellant does not argue for the separate
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patentability of these claims apart from arguments previously presented.
Appeal Br. 16–17. We sustain the Examiner’s rejection of claims 15, 17,
and 25. 37 C.F.R. § 41.37(c)(1)(iv).
Unpatentability of Claim 19
over Birmann, Silvestri, Sasaki, and Egli
Claim 19 depends from claim 15, is not separately argued, and falls
with claim 15. 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
§ Reference(s)/Bases Aff’d Rev’d
1, 4, 6, 7,
14, 21-24,
26
102 Birmann
1, 4, 6, 7,
14, 21-24,
26

8-10 103 Birmann, Silvestri 8-10
11 103 Birmann, Silvestri, Egli 11
15, 17, 25 103 Birmann, Silvestri, Sasaki 15, 17, 25
19 103 Birmann, Silvestri, Sasaki, Egli 19
Overall
Outcome
1, 4, 6-11,
14, 15, 17,
19, 21-26.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED