United Technologies Corporation

Patent Trials and Appeals Board

Sep 16, 2020

2020001349 (P.T.A.B. Sep. 16, 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.
16/100,257 08/10/2018 Sasha M. Moore 73555US03;
67097-2736PUS2
6942
54549 7590 09/16/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
WILENSKY, MOSHE K
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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 SASHA M. MOORE, THOMAS N. SLAVENS,
NICHOLAS M. LORICCO, and TIMOTHY J. JENNINGS
____________

Appeal 2020-001349
Application 16/100,257
Technology Center 3700
____________

Before DANIEL S. SONG, STEFAN STAICOVICI, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated May 22, 2019, hereinafter “Final
Act.”) rejecting claims 1–13. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. United Technologies Corporation is identified as the real
party in interest in Appellant’s Appeal Brief (filed Sept. 25, 2019,
hereinafter “Appeal Br.”). Appeal Br. 1.
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SUMMARY OF DECISION
We AFFIRM IN PART.

INVENTION
Appellant’s invention relates to forming an engine component by
flowing machining fluid through a pre-formed internal passageway to
change its pre-formed dimension. Spec. para. 4.
Claims 1 and 13 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method of forming an engine component, comprising:
forming an engine component having an internal
passageway, the internal passageway formed with an
initial dimension; and
establishing a flow of machining fluid within the
internal passageway in a same direction as an expected
direction of a flow of cooling fluid within the internal
passageway during operation of an engine, the machining
fluid changing the initial dimension.

REJECTIONS

I. The Examiner rejects claims 1–5, 8, and 10–13 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Kildea.2
II. The Examiner rejects claim 9 under 35 U.S.C. § 103 as being
unpatentable over Kildea.
III. The Examiner rejects claims 2–4, 6, and 7 under 35 U.S.C.
§ 103 as being unpatentable over Konter3 and Kildea.

2 Kildea, US 5,247,766, issued Sept. 28, 1993.
3 Konter et al., US 2009/0041587 A1, published Feb. 12, 2009.
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ANALYSIS
Rejection I
Claims 1–5, 8, 10, and 11
Appellant does not argue the patentability of claims 2–5, 8, 10, and 11
apart from claim 1. See Appeal Br. 4–5. Thus, in accordance with 37
C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the representative claim to
decide the appeal of the rejection of these claims, with claims 2–5, 8, 10, and
11 standing or falling with claim 1.
The Examiner finds Kildea discloses, inter alia, a method for forming
an engine component 2 with internal passageways 4, 5 having an initial
dimension and introducing pressurized air with abrasive grit 9 into
passageways 5 to modify, i.e., enlarge, the initial dimension of passageways
5 to a desired final dimension. Final Act. 2 (citing Kildea, col. 1, ll. 27–42,
54–65, col. 1, l. 66–col. 2, l. 23, Figure). The Examiner further finds that
because in Kildea the pressurized air with abrasive grit 9 exits passageways
5, i.e., cooling holes, Kildea discloses machining fluid flowing in the same
direction as cooling fluid would flow during operation of engine component
2, as called for by claim 1. Id. at 3 (citing Kildea, col. 2, ll. 1–15).
Appellant argues that the claimed “term ‘establishing’ is used in the
present disclosure to mean introducing.” Appeal Br. 4. Thus, according to
Appellant, because Kildea’s machining fluid, i.e., pressurized air with
abrasive grit 9, is introduced into cooling hole 6, “Kildea establishes its flow
of grit fluid in a direction opposite the direction of the expected direction of
cooling flow.” Id.
We are not persuaded by Appellant’s arguments because the
Examiner is correct that claim 1 does not require that “every internal
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passageway in Kildea have machining fluid flowing in the proper direction,”
i.e., the same direction as cooling fluid would flow during operation of an
engine component. Examiner’s Answer (dated Oct. 25, 2019, hereinafter
“Ans.”) 8 (emphasis added). Limitations not appearing in the claims cannot
be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA
1982). Here, we agree with the Examiner that “[t]he moment machining
fluid flows out through exit passage (5) of Kildea (which is the proper
direction) and changes its dimensions . . . the claim limitation is met.” Id.
Furthermore, the recited “internal passageway” of claim 1, which has
machining fluid flowing in the same direction as cooling fluid would flow
during operation of an engine component, requires an initial dimension
changed by the flow of machining fluid. See Appeal Br. 8 (Claims App.).
As the dimension of Kildea’s hole 6 is not changed by the flow of
pressurized air and grit 9, i.e., machining fluid, hole 6 does not constitute
“an internal passageway,” as called for by independent claim 1. See Kildea,
col. 2, ll. 38–40 (As grit 9 is introduced at a low velocity into hole 6 it will
not have a detrimental effect on the dimension of hole 6). However, as the
Examiner correctly finds, cooling hole 5, which is enlarged by the flow of
pressurized air and grit 9, constitutes “an internal passageway,” as called for
by claim 1. See Ans. 8; see also Kildea, col. 2, ll. 10–14 (Grit 9 from
chamber 4 is accelerated to a high velocity by pressurized air flowing from
chamber 1 into cooling holes 5). Therefore, because in Kildea pressurized
air and grit 9 is introduced into cooling hole 5 (see Kildea, col. 2, ll. 12–14),
i.e., “internal passageway,” and cooling air flows through cooling hole 5
during operation (see id., col. 1, ll. 13–16, 54–56), Kildea discloses
“establishing a flow of machining fluid . . . in a same direction as . . . flow of
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cooling fluid within the internal passageway during operation of an engine
[component],” as recited by claim 1.
Accordingly, for the foregoing reason, we sustain the rejection under
35 U.S.C. § 102(a)(1) of claim 1 as anticipated by Kildea. Claims 2–5, 8,
10, and 11 fall with claim 1.

Claims 12 and 13
Claims 12 and 13 require, inter alia, that the Reynolds number of the
machining fluid flowing within an internal passageway of an engine
component substantially match the Reynolds number of the cooling fluid
flowing within the internal passageway during operation of the engine
component. See Appeal Br. 9–10 (Claims App.).
The Examiner finds that “the Reynolds number . . . include[s] a wide
variety of values” due to various variables that affect its value and the
various power levels and fluid velocities found in a turbine during operation.
Final Act. 3–4; Ans. 8 (“The Reynolds number is a dimensionless value
calculated using the velocity, density, and viscosity of the flowing fluid.”).
Thus, according to the Examiner, because “Kildea teaches [that] the
[machining] fluid is pressurized air,” which “is precisely the same fluid that
would flow into the coolant channels of the turbine blade during operation,”
a skilled artisan would reasonably infer that the machining fluid of Kildea
will have a Reynolds number that matches at least one value in the range of
expected Reynolds number[s] … during operation.” Final Act. 4 (citing
MPEP § 2144.01) (“implicit disclosures are not inherencies”); Ans. 8.
Appellant argues that “there is no basis for concluding that Kildea’s
flow substantially matches any Reynolds number during engine operation”
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and, moreover, “Kildea does not imply a Reynolds number of cooling flow
during operation because Kildea introduces flow in the opposite direction.”
Appeal Br. 6.
We appreciate the Examiner’s position that “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.” In re Preda, 401 F.2d 825, 826 (CCPA 1968) (emphasis added).
However, the reference must include specific teachings that allow a person
of ordinary skill in the art to draw inferences to fill in the gap and thus get to
the missing limitation. See In re Baxter Travenol Labs, 952 F. 2d 388, 390
(Fed. Cir. 1991) (As “Becker referred to Baxter’s commercial system and
Baxter’s commercial systems utilized a DEHP-plasticized primary bag, it is
clear that one skilled in the art would have known that Becker was referring
to a DEHP-plasticized primary bag.”).
In this case, although the flow of both Kildea’s machining fluid
(pressurized air and grit 9) and cooling fluid (pressurized air) can be
characterized by the Reynolds number, the Examiner does not point to any
specific teachings in Kildea that would allow a person of ordinary skill in the
art to draw a reasonable inference that the Reynolds number of the
machining fluid (pressurized air and grit 9) is “substantially matching” the
Reynolds number of the cooling fluid (pressurized air). In particular, as
Kildea is devoid of any mention of Reynolds numbers, it is not clear from
the Examiner’s rejection how a skilled artisan would reasonably draw an
inference about matching Reynolds numbers. Moreover, a skilled artisan
would reasonably recognize that Kildea’s pressurized air and grit 9 will have
a different density and viscosity than pressurized air, i.e., cooling fluid, due
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to the presence of grit 9. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962)
(An artisan must be presumed to know something about the art apart from
what the reference discloses.). Accordingly, Appellant is correct that “[a]t
best, the Examiner has established a possibility of a matching Reynolds
number,” which “is not sufficient for anticipation.” Reply Brief (filed Dec.
10, 2019, hereinafter “Reply Br.”) 2 (emphasis added).
Hence, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § 102(a)(1) of claims 12 and 13 as anticipated by Kildea.

Rejections II and III
Claims 2–4, 6, 7, and 9 depend directly or indirectly from independent
claim 1. See Appeal Br. 8–9 (Claims App.). As Appellant does not
separately argue the rejections of these claims (see id. at 7), for the same
reasons discussed supra in regards to the rejection of independent claim 1,
we sustain the rejections under 35 U.S.C. § 103 of claim 9 as unpatentable
over Kildea and of claims 2–4, 6, and 7 as unpatentable over Konter and
Kildea.
CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–5, 8,
10–13
102(a)(1) Kildea 1–5, 8,
10, 11
12, 13
9 103 Kildea 9
2–4, 6, 7 103 Konter, Kildea 2–4, 6, 7
Overall
Outcome
1–11 12, 13
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART