UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Aug 31, 2020

15011969 - (D) (P.T.A.B. Aug. 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.
15/011,969 02/01/2016 Caitlin Oswald 91302US01(15-395) 2652
52237 7590 08/31/2020
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
YAGER, JAMES C
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
08/31/2020 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 CAITLIN OSWALD, JESSE R. BOYER,
and JOHN P. RIZZO, JR.

Appeal 2019-004150
Application 15/011,969
Technology Center 1700
____________

Before JEFFREY T. SMITH, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9 and 20–25.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as United
Technologies Corporation. (Appeal Br. 2.)
2 Pending claims 10–19 are withdrawn from consideration. (Final Act. 1;
Appeal Br. 4.)
Appeal 2019-004150
Application 15/011,969

2
STATEMENT OF THE CASE
Claims 1 illustrates the subject matter on appeal and is reproduced
below:
1. A component, comprising:
an additively manufactured component with an internal
passage; and
a multiple of ultrasonic horns additively manufactured
within the internal passage to clean the internal passage of
conglomerated powder subsequent to additive
manufacturing of the component.
(Appeal Br. 16, Claims Appendix.)
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:3
I. Claims 20–24 rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
II. Claims 4, 6, 8, 9, 20, 22, and 24 rejected under 35 U.S.C. § 112(b)
as indefinite.
III. Claims 1–9 and 20–25 rejected under 35 U.S.C. § 103 as
unpatentable over Tsai (US 2010/0327072 A1, December 30, 2010), Kinley
(US 2005/0136520 A1, June 23, 2005), and Ford (GB 2517490 A, February
25, 2015).

OPINION
Written Description Support
The Examiner determines the recitation “the input section of one
ultrasonic horn extends at least partially into the output section of a

3 The complete statement of the rejections on appeal appears in the Final
Office Action. (Final Act. 2–15.)
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3
subsequent ultrasonic horn to form a chain of ultrasonic horns” or “the chain
of ultrasonic horns extend along the entirety of the internal passage” is not
supported by the written description of the Specification. (Final Act. 3.)
Appellant does not contest this rejection. (See generally Briefs.) 37
C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).
Accordingly, we summarily sustain the Examiner’s rejection of claims
20–24 under 35 U.S.C. § 112(a) for the reason the Examiner provides.

Indefiniteness
Claims 4 and 22
The Examiner determines the phrase “non line of sight” renders
claims 4 and 22 indefinite because it is unclear what is meant by this phrase
and how the internal passage can be “non line of sight.” (Final Act. 4.)
Appellant respectfully submits that usage of the term “non line of
sight internal passage” is readily understood and the Examiner accurately
describes said passage in the first full paragraph of page 4 in the Final
Action. (Appeal Br. 9.) Specifically, the Examiner states “[f]or purposes of
this office action, it will be interpreted as the additively manufactured
component is bent such that there is no line of sight through the internal
passage from one end of the component to the other end.” (Final Act. 4.)
We do not sustain the rejection of claims 4 and 22 under 35 U.S.C. §
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4
112(b) as indefinite for the reasons Appellant presents.

Claim 6
The Examiner determines the phrase “the output section smaller
extends at least partially within the input section” renders the claim
indefinite because it is unclear how the output section can be partially within
the input section if they are on opposite ends of the horns. (Final Act. 4.)
Appellant respectfully submits that this phrase is also definite for the
same reasons presented with regard to claims 20–24. (Appeal Br. 10.)
We sustain the rejection of claim 6 under 35 U.S.C. § 112(b) as
indefinite for the reasons the Examiner presents. (Final Act. 4.)

Claims 8, 9, and 24
The Examiner determines the phrase “natural frequency” renders the
claims indefinite because it is unclear what is meant by this phrase or what
frequencies are considered “natural.” (Final Act. 4.)
Appellant responds:
[T]he geometry of the ultrasonic horns can also be designed to
particular known natural frequencies, with considerations to
avoid the natural frequencies of the actual additively
manufactured component, see paragraph [0038]. One of
ordinary skill in the art will readily understand what a natural
frequency of a component is and how to avoid such.
(Appeal Br. 10.)
We sustain the rejection of claims 8, 9, and 24 under 35 U.S.C. §
112(b) as indefinite. Appellant has not directed us to evidence that provides
an explanation of known natural frequencies as required by the claimed
invention.
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Claim 20
The Examiner determines the phrase “the input section of one
ultrasonic horn extends at least partially into the output section of a
subsequent ultrasonic horn to form a chain of ultrasonic horns” renders the
claim indefinite because it is unclear how the input section can extend into
the output section when the output section is smaller than the input. (Final
Act. 4.)
Appellant argues “that claim 20 is also definite as disclosed and
illustrated in which the input section can extend into the output section.”
(Appeal Br. 10.)
We sustain the rejection of claim 20 under 35 U.S.C. § 112(b) as
indefinite for the reasons the Examiner presents. Appellant has not
specifically identified which Figures and portions of the Specification
support the argument.
In summary, we sustain the Examiner’s rejection of claims 6, 8, 9, and
24 under 35 U.S.C. § 112(b) for the reason the Examiner provides but
reverse the Examiner’s rejection of claims 4 and 22 under 35 U.S.C. §
112(b) for the reasons Appellant provides.

Prior Art Rejection
After review of the respective positions Appellant and the Examiner
provide, we determine that Appellant has demonstrated reversible error in
the Examiner’s rejection under 35 U.S.C. § 103. We limit our discussion to
independent claim 1.
The Examiner finds Tsai discloses an ultrasonic device comprising
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cascaded multiple Fourier horns that does not have an internal passage
wherein the horns are within the internal passage as required by independent
claim 1. (Final Act. 6.) The Examiner further finds Tsai does not disclose
that the tube or the horns are additively manufactured. (Final Act. 7.) The
Examiner finds Kinley discloses an ultrasonic apparatus comprising
cascading ultrasonic horns inside a tube with multiple bends that is non line
of sight and comprising first and second flanges. (Final Act. 6.) The
Examiner finds Ford discloses that additive manufacturing may be used to
make articles of complex shapes through a passageway that may be tortuous.
(Final Act. 7 (citing Abstract, Figures 1–7).) The Examiner determines it
would have been obvious to incorporate the tube with multiple bends that is
non line of sight and comprising first and second flanges of Kinley into the
ultrasonic device of Tsai because it is well-known in the art to do so, and
doing so amounts to nothing more than using known structural features in a
known environment to accomplish an entirely expected result. (Final Act.
7.) The Examiner further determines that it would have been obvious to
manufacture the ultrasonic device of modified Tsai using additive
manufacturing techniques as disclosed by Ford because it is well-known in
the art to do so, and doing so would amount to nothing more than using a
conventional manufacturing technique in a known environment to
accomplish an entirely expected result. (Final Act. 7.)
Appellant argues the Examiner has not provided a proper reason to
combine the cited references. Specifically, Appellant argues Tsai is directed
to a method for transporting a liquid for atomization and a method and
devices for atomizing the same. (Appeal Br. 11.) Appellant argues Tsai’s
Fourier horns are not utilized for anything related to additive manufacturing
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or even manufacturing in general. (Appeal Br. 12.) Appellant argues Kinley
is directed to a liquid ethanol process. (Appeal Br. 12.) Appellant argues
Ford has a generic teaching of additive manufacturing and makes no
reference to cleaning of a non line of sight passage or anything which would
suggest modification of a manufacturing process. (Appeal Br. 13.)
Appellant further argues the only motivation to make the combination as
proposed is based on hindsight. (Appeal Br. 13.)
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The subject matter of independent claim 1 is directed to a component,
comprising an internal passage and multiple ultrasonic horns, additively
manufactured, within the internal passage. The multiple ultrasonic horns
function to clean the internal passage of conglomerated powder subsequent
to additive manufacturing of the component. The Examiner has failed to
direct us to evidence that the combination of Tsai, Kinley, and Ford
describes or suggests a component comprising an internal passage with
multiple ultrasonic horns contained therein, as claimed. As the Examiner
notes, Ford describes additive manufacturing of various components wherein
the internal passage comprises removable components, such as chain links or
interconnected sections, which function to clean the unprocessed product
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material from internal passage. Ford Abstr., Figures 1 and 2. Ford further
discloses:
[O]ther specific types and construction of removable
components can be formed within the passageway of the
intermediate object during the additive manufacturing method
provided that they are capable of being physically removed
from the passageway and that any unprocessed powdered
material remaining within the passageway is at least partly
removed by the removable component as it is withdrawn by the
user.
(Ford, paragraph bridging 5–6.)
The Examiner, however, does not establish that the applied references or
another prior art reference would have provided one of ordinary skill in the
art with an apparent reason to utilize multiple ultrasonic horns within an
internal cavity as required by the claimed invention. Thus, we agree with
Appellant that the Examiner benefitted from impermissible hindsight in
combining the teachings of the cited art to arrive at the subject matter of
claim 1. Appeal Br. 13; see In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (“A rejection based on section 103 clearly must rest on a factual basis,
and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art.”).
Accordingly, we do not sustain the Examiner’s rejection of claims 1–9
and 20–25 under 35 U.S.C. § 103 over the combination of Tsai, Kinley, and
Ford.

CONCLUSION
Because neither of the affirmed rejections reach all the claims, our
decision is an affirmance in part.
In summary:
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Application 15/011,969

9
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20–24 112(a) Written Description 20–24
4, 6, 8, 9, 20,
22, 24 112(b) Indefiniteness
6, 8, 9,
20, 24 4, 22
1–9, 20–25 103 Tsai, Kinley, Ford 1–9, 20–25
Overall
Outcome
6, 8, 9,
20–24 1–5, 7, 25

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART