UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Oct 20, 2020

2019006707 (P.T.A.B. Oct. 20, 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.
15/448,267 03/02/2017 Joel H. Wagner 67097-2971PUS2;
77154US03
3347
54549 7590 10/20/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
YUEN, JACKY
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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 JOEL H. WAGNER, JOHN R. FARRIS,
and JOHN HOSEPH MARCIN
____________

Appeal 2019-006707
Application 15/448,267
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision finally rejecting claims 1–3, 12, and 20 under 35 U.S.C.
§ 103 as being unpatentable over the combined prior art of Frank (US
5,126,082, issued June 30, 1992), Hirokawa (US 6,755,238 B1, issued June
29, 2004), and Beggs (US 6,474,348 B1, Nov. 5, 2002); and claims 4–6 as

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). “United Technologies Corporation” is identified as the real party in
interest (Appeal Br. 1).
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unpatentable over these same references combined with Conroy (US
5,915,452, issued June 20, 1999).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal:
1. A method of forming an engine component,
comprising:
introducing molten metal into a cavity between a shell
and a casting article in the shell,
the casting article including a ceramic portion and a
plurality of fibers, wherein the fibers are randomly oriented
within the ceramic portion, and wherein the fibers are provided
by one of (1) silicon (Si) fibers, (2) carbon (C) fibers, and (3)
metal fibers; and
separately removing the ceramic portion and the fibers
from an interior of the component.
(Appeal Br. 6 (Claims App.)).
OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejection (See generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s

2 The Examiner also rejects claim 6 over all these references adding
Kobayashi (JP 09-253792 A, published Sept. 30, 1997) (Final Act. 7).
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rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
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.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s argument focuses on independent claim 1, except for the
argument with respect to dependent claim 4 as addressed below (generally
Appeal Br.).
Appellant’s argument with respect to the rejection of claim 1 is
focused on their belief that Frank is limited to ceramic reinforcing media and
as such teaches away from the use of any other material for reinforcing
fibers such that the Examiner’s proposed modification to use alternative
reinforcing fibers as exemplified in Hirokawa is improper (Appeal Br. 3;
Reply Br. 2). Appellant’s argument with respect to the rejection of claim 4
that requires the fibers are “blown out of the component using pressurized
fluid” (Appeal Br. Claims Appendix 6) is that Conroy does not explicitly
teach blowing fibers out of an engine component, “let alone after a leaching
process left the fibers behind” (Appeal Br. 4).
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the applied prior art as a whole and the inferences that one of
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ordinary skill would have made, as aptly explained by the Examiner (Ans.
3–5).
First, whether the prior art teaches away from the claimed invention is
a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is
well established that a prior art reference must be considered in its entirety,
i.e., as a whole, when determining if it would have led one of ordinary skill
in the art away from the claimed invention. W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). One of ordinary skill
in the art would have readily appreciated that there are numerous materials
useful for reinforcing fibers in a disintegrative casting core (such as the
casting core of Frank) such as exemplified in Hirokawa for a casting core.
See In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments.); Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (Even a “statement that a
particular combination is not a preferred embodiment does not teach away
absent clear discouragement of that combination.”). While Appellant
focuses on col. 10:15–20 of Frank (Reply Br. 2), the Examiner relies upon
Frank, col. 3, ll. 10–25 which generically refers to “dispersing reinforcing
media, such as ceramic whiskers, fibers, . . . ” (see, e.g., Ans. 3). In any
event, one of ordinary skill would have expected the known, alternative
reinforcing fibers of, e.g., silicon, carbide, metals as exemplified in
Hirokawa for a cast article to be a useful alternative for ceramic reinforcing
media so as to result in the claimed casting core/fibers as recited in claim 1
(Hirokawa, col 4, ll. 31–40). Appellant has not sufficiently explained why
the claimed subject matter is “more than the predictable use of prior art
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elements according to their established functions.” KSR, 550 U.S. at 417;
see also Ans. 3, 4).
Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol & Specialty
Container, Inc. v. Limited. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
One of ordinary skill would have readily inferred and appreciated from the
applied prior art as a whole that known reinforcing media included other
materials as exemplified in Hirokawa such that the use of the same in the
casting core of Frank would have been within the skill and creativity of one
of ordinary skill in the art.
Likewise, Appellant’s argument that Conroy does not teach blowing
fibers specifically out of an engine component as recited in claim 4 (Appeal
Br. 6) is not persuasive as it fails to consider the applied prior art as a whole
for reasons pointed out by the Examiner (Ans. 5). Appellant has not
responded or otherwise disputed the Examiner’s explanation. Thus, no error
has been shown in the rejection of claims 4–6 based on the combined prior
art of Frank, Hirokawa, Beggs, and Conroy, or the separate rejection of
claim 6 based on the combined prior art of Frank, Hirokawa, Beggs, Conroy,
and Kobayashi.

Accordingly, we sustain the Examiner’s rejections on appeal.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 12, 20

103(a) Frank, Hirokawa,
Beggs
1–3, 12, 20
4–6

103(a) Frank, Hirokawa,
Beggs, Conroy
4–6

6 103(a) Frank, Hirokawa,
Beggs, Conroy,
Kobayashi
6
Overall
Outcome
1–6, 12, 20

TIME PERIOD FOR RESPONSE
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