Ott, Joe et al.

Patent Trials and Appeals Board

Jan 31, 2020

14798582 - (D) (P.T.A.B. Jan. 31, 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.
14/798,582 07/14/2015 Joe Ott 74142US02(14-242-2) 8960
52237 7590 01/31/2020
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
UTT, ETHAN A
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
01/31/2020 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 JOE OTT, STANLEY J. FUNK, ROGER O. COFFEY,
SHAWN STEMPINSKI, JOHN J. RUP JR., LYUTSIA DAUTOVA,
and DENNIS M MOURA,
____________

Appeal 2019-003835
Application 14/798,582
Technology Center 1700
____________

Before JEFFREY W. ABRAHAM, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, 5, 9, 11, and 21–23.3 We have jurisdiction
under 35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed July 14, 2015 (“Spec.”);
Final Office Action dated July 23, 2018 (“Final Act.”); Advisory Action
dated Oct. 26, 2018 (“Advisory Act.”); Appeal Brief filed Jan. 14, 2019
(“Appeal Br.”); Examiner’s Answer dated Feb. 19, 2019 (“Ans.”); and
Reply Brief filed Apr. 18, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies United Technologies Corporation
as the real party in interest. Appeal Br. 2.
3 Claims 2, 6–8, and 15–20 are withdrawn and claims 4, 10, 12, 13, and 14
are cancelled. Appeal Br. 4.
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Application 14/798,582

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We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to an additively manufactured
component, which includes a heat transfer augmentation feature with a
surface finish between about 125–900 micro inches. Spec. ¶ 7; Abstract.
Claim 1 illustrates the claimed subject matter on appeal and is reproduced
below from the Claims Appendix to the Appeal Brief:
1. An additively manufactured component, comprising:
a heat transfer augmentation feature with an additively
manufactured surface finish that defines a surface roughness
average (Ra) between 125–900 micro inches, wherein said
additively manufactured surface finish includes a defined
contour arranged with respect to an airflow to control the airflow
turbulence to tailor a heat transfer.
Appeal Br. 16 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Lee US 6,142,734 Nov. 7, 2000
Morrison et al. (“Morrison”) US 2009/0183850 A1 July 23, 2009
Nagaraj et al. (“Nagaraj”) US 2010/0162715 A1 July 1, 2010
Davis, Jr. et al. (“Davis”) US 2010/0242485 A1 Sept. 30, 2010

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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:4
1. Claims 1, 3, 9, 11, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Morrison (“Rejection 1”). Ans. 4.
2. Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable
over Morrison as applied to claim 1 above, and further in view of Lee
(“Rejection 2”). Id. at 8.
3. Claims 22 and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Morrison as applied to claim 1 above, and further in view
of Davis and Nagaraj (“Rejection 3”). Id. at 9.
OPINION
Rejection 1
The Examiner rejects claims 1, 3, 9, 11, and 21 under § 103 as
obvious over Morrison (Ans. 4–8), which we refer to as Rejection 1.
The Examiner determines that Morrison teaches or suggests a
component satisfying all of the limitations of claim 1 and concludes the
reference would have rendered the claim obvious. Ans. 4–6.
Regarding the surface finish having “a surface roughness average (Ra)
between 125–900 micro inches” recitation of claim 1, the Examiner relies
principally on paragraph 63 of Morrison for teaching or suggesting that
element of the claim. Id. at 5. In particular, the Examiner determines that,
based on paragraph 63 of Morrison’s disclosure regarding “surface cooling

4 The Examiner’s § 112 rejection of claims 1, 3, 5, 9, 11, and 21–23 for
indefiniteness is withdrawn by the Examiner at page 3 of the Answer.
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features 74 each having a dimension of less than 200 µm,” which
corresponds to less than 7,874 micro inches, it would have been obvious to
one of ordinary skill to have arrived at the claimed surface roughness
average (Ra) of between 125–900 micro inches because Morrison’s range
encompasses the claimed range. Id. at 5 (citing In Re Peterson, 315 F.3d
1325, 1330 (Fed. Cir. 2003)).
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because Morrison does not teach or suggest a surface finish having
“a surface roughness average (Ra) between 125–900 micro inches,” as
required by the claim. Appeal Br. 13; Reply Br. 1–2. Rather, in contrast to
the Examiner’s rejection, Appellant contends that Morrison’s discussion
regarding a dimension of less than 200 µm actually refers to the geometry of
the cooling feature component itself, i.e., the height or thickness dimension
of the cooling feature component, and not to the feature’s surface finish
having a surface roughness average (Ra) falling within that range. Appeal
Br. 13 (arguing “the stacked arrangement upon which the Examiner
apparently relies is not a surface finish but simply the component geometry);
see also Reply Br. 1–2 (arguing the Examiner is “attempting to conflate” the
component geometry with the surface finish).
Appellant’s argument is persuasive because the Examiner has not
established by a preponderance of the evidence that Morrison teaches or
suggests a surface finish having “a surface roughness average (Ra) between
125–900 micro inches,” as recited in the claim. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (holding the examiner bears the initial burden of
establishing a prima facie case of obviousness).
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We are not persuaded the portions of Morrison the Examiner cites
and relies upon in the rejection teach or suggest a feature with a surface
finish having “a surface roughness average (Ra) between 125–900 micro
inches,” as recited in the claim. See Ans. 5 (citing Morrison ¶¶ 63, 65).
Rather, Morrison teaches that the surface cooling features 74 each comprise
a three-tiered projection, i.e., stacked arrangement having a size dimension
of greater than 500 µm and cooling features 76 having a size dimension of
less than 200 µm. Morrison ¶¶ 62, 63, Fig. 6. Although Morrison discusses
that the cooling features 74 are located on the internal surface portion 75 of
the cooling passages 73 and may include additional surface features 76
stacked thereon having a size dimension, i.e., height or thickness of less than
200 µm (Morrison ¶ 63, Fig. 6), which corresponds to less than 7,874 micro
inches, there no specific teaching or suggestion of the cooling features
having a surface finish with a surface roughness average (Ra) falling within
the claimed range.
Contrary to what the Examiner’s rejection seems to imply, the fact
that Morrison may describe cooling features having a height, for example, of
less than 7,874 micro inches does not necessarily teach or suggest that the
surface finish of the cooling features would necessarily have a surface
roughness average (Ra) falling within the claimed range of between
125–900 micro inches, which differs by several orders of magnitude.
As Appellant points out (Appeal Br. 13–14; Reply Br. 1–2), the
Examiner appears to misinterpret Morrison’s disclosure at paragraph 63
regarding the size of the cooling features 74 as describing or corresponding
to the surface finish of the features. The height or thickness of a cooling
feature, however, is not the same thing as that feature’s surface finish or
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surface average roughness. Although these characteristics may, perhaps, be
related in some general way, which the Examiner does not adequately
explain, they are nonetheless two different physical properties. Indeed, the
Specification distinguishes between the size/geometric dimensions of the
claimed features and the features’ surface finish characteristics, which,
according to the Specification, differ by several orders of magnitude. See
Spec.¶ 56 (describing heat augmentation features 118 between about
0.01–1.0 inches (104–106 micro inches) in thickness or diameter), ¶ 60
(disclosing that the surface finish 140 is “controlled to be within about 125 –
190 micro inches”), ¶ 62 (disclosing that the surface finish 140 is applied to
a fin 150, for example, and that the fin 150 “may be about 0.02 inches”
(20,000 micro inches thick)), Fig. 5 (depicting the height of surface finish
140 in micro inches).
The Examiner also does not identify sufficient evidence or
persuasively explain how or why one of ordinary skill in the art would have
arrived at a feature with a surface finish having a surface roughness average
(Ra) between 125–900 micro inches, as recited in the claim, based on
Morrison’s disclosure regarding its cooling features having, for example, a
height of less than 7,874 micro inches. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (requiring “reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s comments at
pages 5–6 and 10–11 of the Answer are not well-taken because they do not
meaningfully address Appellant’s principal argument that Morrison’s
disclosure relates to the size or height dimension of the cooling feature 74
feature itself and not to its surface finish, and without more, does not
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necessarily teach or suggest the surface finish having surface roughness
average (Ra) between 125–900 micro inches, as required by the claim.
Thus, for principally the same reasons provided by Appellant at pages
12–14 of the Appeal Brief and pages 1–2 of the Reply Brief, we are not
persuaded the Examiner has established by a preponderance of the evidence
that Morrison teaches or suggests a surface finish having “a surface
roughness average (Ra) between 125 – 900 micro inches,” as claimed.
We, therefore, do not sustain the Examiner’s rejection of claim 1.
Because claims 3, 9, and 21 depend from claim 1 and claim 11 recites the
same “surface roughness average (Ra) between 125–900 micro inches” as
claim 1, we also do not sustain the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 3, 9,
11, and 21 under 35 U.S.C. § 103 as obvious over Morrison.
Rejections 2 and 3
The Examiner rejects claim 5 under § 103 as obvious over the
combination of Morrison and Lee (Ans. 8), which we refer to as Rejection 2
and claims 22 and 23 under 35 U.S.C. § 103 as obvious over the
combination of Morrison, Davis, and Nagaraj (Ans. 9–10), which we refer to
as Rejection 3.
The foregoing deficiencies in the Examiner’s findings and analysis
regarding the Morrison reference and “a surface roughness average (Ra)
between 125 – 900 micro inches” recitation of claim 1 discussed above in
reversing the Examiner’s Rejection 1 are not remedied by the Examiner’s
findings regarding the additional references or combination of references
cited in support of the second and third grounds of rejection.
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Accordingly, for principally the same reasons stated above for
reversing Rejection 1, we reverse the Examiner’s Rejections 2 and 3 stated
above.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 9, 11,
21
103 Morrison 1, 3, 9, 11,
21
5

103 Morrison, Lee 5

22, 23 103 Morrison, Davis,
Nagaraj
22, 23
Overall
Outcome
1, 3, 5, 9,
11, 21–23
REVERSED