UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Dec 9, 2020

2019006546 (P.T.A.B. Dec. 9, 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.
15/030,236 04/18/2016 James M. Koonankeil 67097-2686
PUS1; 64405US0
1546
54549 7590 12/09/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
SIMMONS, JENNIFER E
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
12/09/2020 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES M. KOONANKEIL
____________________

Appeal 2019-006546
Application 15/030,236
Technology Center 2800
____________________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS,
and JULIA HEANEY, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–4, 6–16, 18, and 19. We have jurisdiction over the
appeal 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 the real party in interest as United
Technologies Corporation (Appeal Br. 1).
Appeal 2019-006546
Application 15/030,236

2
Independent claims 1 and 8 below are illustrative of the subject matter
on appeal:
1. A method of inspecting a component of a gas turbine engine,
comprising:
performing a through-hole inspection; and determining
locations of a plurality of holes from results of the through-hole
inspection,
wherein the results of the through-hole inspection include a
plurality pixels2, and wherein a blockage is identified when a number
of pixels within an acceptable hole location is below a minimum
threshold.

8. A method of inspecting a component of a gas turbine engine,
comprising:
performing a through-hole inspection, wherein the results of the
through-hole inspection include a plurality of sets of pixels, each of
the sets of pixels corresponding to one of a plurality of holes; and
determining locations of the plurality of holes from results of
the through-hole inspection by identifying one of (1) a centroid of a
corresponding one of the plurality of sets of pixels and (2) a pixel on a
perimeter of a corresponding one of the plurality of sets of pixels.

Independent claim 14 recites an inspection assembly with a controller
configured to perform a through-hole inspection on an engine component
(Appeal Br. Claims Appendix 14).
The following rejections are on appeal:
1) claims 1–4, 6–16, 18, and 19 under 35 U.S.C. § 112(b)
as indefinite.

2 Appellant states that “plurality pixels” is a “minor typographical error”,
and Appellant is willing to correct this to be “plurality of pixels” (Appeal Br.
6).
Appeal 2019-006546
Application 15/030,236

3
2) claims 1–4, 6–9, and 11 under 35 U.S.C. §§ 102(a)(1) and (a)(2) as
anticipated by
Key (US 2011/0119020 A1; May 19, 2011);
3) claim 10 under 35 U.S.C. § 103 as unpatentable over the combined
prior art of Key and Marshall (US 2012/0256920 A1; Oct. 11, 2012);
4) claims 12–16, 18, and 19 under 35 U.S.C. § 103 as unpatentable
over the combined prior art of Key and Drescher (US 2012/0188380
A1; July 26, 2012).
ANALYSIS

The § 112(b) rejection for indefiniteness
During prosecution, claims are interpreted using “the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (the scope of the
claims in patent applications is determined by giving claims their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art); Phillips v. AWH Corp., 415
F.3d 1303, 1315 (Fed. Cir. 2005) (the specification is always highly relevant
to the claim construction analysis, and is usually dispositive as it is the
single best guide to the meaning of any disputed terms).
Appeal 2019-006546
Application 15/030,236

4
Claims are definite if they “set out and circumscribe a particular area
with a reasonable degree of precision and particularity. It is here where the
definiteness of the language employed must be analyzed—not in a vacuum,
but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232,
1235 (CCPA 1971). However, “breadth [of a claim] is not to be equated
with indefiniteness.” In re Miller, 441 F.2d 689, 693 (CCPA 1971).
The Examiner found the language of claim 1 indefinite, and parses the
meaning of numerous claim phrases, often independently from the claim
language as a whole (Non-Final Act. 3–8). Notably, the Examiner admits
that one skilled in the art could “determine what the claims could mean”
(Ans. 3) but reasons that the metes and bounds are not defined as “the
relationship between” the claimed elements “is not laid out” (id.).
Claim 1 is broad in the sense that it de facto reads on any method of
inspecting a gas turbine engine component wherein the presence of a hole or
blockage therein is determined based on an analysis of a number of pixels.
However, claim 1 is not indefinite on the basis of its breadth alone. In re
Miller, 441 F.2d at 693; see also In re Gardner, 427 F.2d 786, 788 (CCPA
1970) (“Breadth is not indefiniteness.”). The Examiner, however, has not
explained sufficiently why one of ordinary skill in the art would not have
understood how to use the method(s) of determining pixels in the manner
described in the Specification, as explained in Appellant’s response, e.g.,
using a flow thermography process with a thermal imaging infrared camera
(Spec. ¶¶ 4, 6, 30, 45; Appeal Br. 5–8; Reply Br. 1, 2).
Appeal 2019-006546
Application 15/030,236

5
Appellant has persuasively reasoned that the Examiner’s § 112(b)
rejection is based on the Examiner’s belief that “the claims are too broad”
(Reply Br. 2; Appeal Br. 5–8).
In light of these circumstances, we agree with Appellant that one of
ordinary skill in the art would have understood the broad scope of the claims
in light of the Specification. Accordingly, we cannot sustain the Examiner’s
rejection of the claims as being indefinite.

The §§ 102 and 103 Rejections
We have reviewed each of Appellant’s arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner’s finding that the claimed subject matter of representative claims 1
and 8 are anticipated within the meaning of § 102 in view of the applied
prior art of Key as well as the Examiner’s obviousness determination of
claim 14. Accordingly, we sustain the Examiner’s §§ 102 and 103 rejections
on appeal for essentially those reasons expressed in the Answer, including
the Examiner’s Response to Argument section.
We add the following primarily for emphasis.
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (Fed. Cir. 2011) (BPAI
2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections.”).
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. Therefore, we look to the specification to
Appeal 2019-006546
Application 15/030,236

6
see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (citation omitted). “[A]s applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” Id.
Appellant argues that Key does “not teach identifying a blockage
when a number of pixels within an acceptable hole location is too low” as
recited in claim 1 (Appeal Br. 9). Similarly Appellant argues that Key does
not teach determining a hole location in the manner recited in claim 8, as
Key “identifies only its thermally significant pixels, groups them based on
their film cooling effect, and then defines their centroid” (id.).
These arguments are not persuasive of reversible error in the
Examiner’s rejection of claims 1 and 8, because they fail to fully address the
applied prior art and the inferences that one of ordinary skill in the art would
have made therefrom.
Notably, Appellant does not explicitly address the Examiner’s
analysis of Key’s Fig. 21, which details classifying holes as partially
blocked, blocked, or “thru” (i.e., open) (Ans. 17, Key ¶¶ 17–19, 81, 86, 87).
Appellant’s process as described in the Specification (and dependent claims
2–4) uses a flow thermography process, which uses an infrared camera to
detect heat patterns and flow. Likewise, Key uses an “infrared inspection
machine” (Key ¶ 55) to obtain an “infrared signature” for each “individual
film cool feature” (i.e., each hole in the gas turbine blade) (Key abstract).
Furthermore, as pointed out by the Examiner, Key determines whether
holes are blocked or missing in a gas turbine engine component based on a
pixel count (Ans. 16–18). One of ordinary skill would have readily inferred
Appeal 2019-006546
Application 15/030,236

7
that a blocked hole is identified when the pixel count is lower than a pixel
count for an unblocked hole/cooling feature of Key. In re Preda, 401 F. 2d
825, 826 (CCPA 1968) (In determining whether a reference anticipates the
subject matter recited in a claim, “it is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.”)
With respect to claim 8, as pointed out by the Examiner, the film
cooling effect location of Key is determined by the hole location, and Key
teaches calculation of the centroid of the film cooling effect (Ans. 19; Key
e.g., Figs. 10A, 10B, ¶ 81). As shown in Figs. 10A and 10B, a “Film
Cooling Feature” is a hole in the gas turbine component.
In light of these circumstances, Appellant has not shown reversible
error in the Examiner’s findings that the language of each of claim 1 and
claim 8 encompasses Key’s infrared imaging method that uses pixels to
determine hole locations (that is, a film cooling feature) and blockages.
With respect to independent claim 14 and its dependent claim 16,
Appellant argues that Key does not identify misaligned holes, or blocked or
partially blocked holes, because it only identifies cooling effects (Appeal Br.
10, 11). As pointed out by the Examiner, a film cooling feature is a hole
location (Ans. 19, 20) and Key does base its determination of blocked or
partially blocked holes based on the number of pixels (Ans. 21; Key, e.g.,
Fig. 21, ¶ 81). One of ordinary skill would have reasonably inferred that
less pixels than a full count of pixels for an open hole means a partial or
fully blocked hole. One of ordinary skill would have also reasonably
inferred that a defective “film cooling feature” hole as exemplified in Fig.
10B of Key can be viewed as a misaligned hole. Furthermore, Appellant
Appeal 2019-006546
Application 15/030,236

8
does not even address the Examiner’s findings that Drescher also verifies
locations of holes in a turbine component based on image analysis to
determine the centroid of cooling air exit hole expressed as a pixel location
(Non-Final Act. 12, 13).
Thus, Appellant’s arguments are not persuasive of reversible error in
the Examiner’s obviousness rejection, because they fail to fully address the
applied prior art and the inferences that one of ordinary skill in the art would
have made therefrom. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (It has been established that “the [obviousness] analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”); see also id. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”); Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the flexible inquiry
set forth by the Supreme Court, the PTO must take account of “the
inferences and creative steps,” as well as routine steps, that an ordinary
artisan would employ.).
Appellant does not present any further arguments with respect to the
remaining dependent claims, including claim 10 rejected separately (Appeal
Br. 11).

Appeal 2019-006546
Application 15/030,236

9
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–16,
18, 19

112(b) Indefiniteness
1–4, 6–
16, 18, 19

1–4,
6–9, 11 102(a)(1)/(a)(2) Key
1–4,
6–9, 11

10 103 Key, Marshall 10
12–16,
18, 19 103 Key, Dresher
12–16,
18, 19

Overall
Outcome

1–4, 6–
16,
18, 19

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