United Technologies Corporation

Patent Trials and Appeals Board

Sep 2, 2020

14790907 - (D) (P.T.A.B. Sep. 2, 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.
14/790,907 07/02/2015 Joe Ott 1213-28275AA 8573
11943 7590 09/02/2020
Getz Balich LLC
10 Waterside Drive, Suite 205
Farmington, CT 06032
EXAMINER
NGUYEN, ANDREW H
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
shenry@getzbalich.com
uspto@getzbalich.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOE OTT, JOHN J. RUP JR.,
SHAWN STEMPINSKI, STANLEY J. FUNK,
DENNIS M. MOURA, LYUTSIA DAUTOVA, and
ROGER O. COFFEY
____________________

Appeal 2020-001638
Application 14/790,907
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 6, 8–10, and 14–16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as United Technologies
Corp. Appeal Br. 3.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A tube assembly comprising:
an additive manufactured first tube;
an additive manufactured second tube connected to the
additive manufactured first tube and manufactured as one
unitary piece, and a generally annular void defined by and
radially between the additive manufactured first tube and the
additive manufactured second tube; and
a plurality of pylons projecting through the generally
annular void, the plurality of pylons connecting the additive
manufactured first tube to the additive manufactured second
tube, and
the plurality of pylons spaced axially along a centerline
of the tube assembly;
wherein the tube assembly is part of a fuel nozzle for a
gas turbine engine.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Schilling US 6,357,222 B1 Mar. 19, 2002
Caples US 8,096,135 B2 Jan. 17, 2012
Epstein US 2013/0186059 A1 July 25, 2013
Pidcock US 2015/0211418 A1 July 30, 2015
Ryon US 9,556,795 B2 Jan. 31, 2017
REJECTIONS
I. Claims 1–3, 6, 8, 14, and 16 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Schilling, Ryon, and Pidcock.
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II. Claims 9 and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Schilling, Ryon, Pidcock, and Caples.
III. Claim 10 stands rejected under 35 U.S.C. § 103 as unpatentable
over Schilling, Ryon, Pidcock, Caples, and Epstein.
OPINION
Rejection I – Obviousness based on Schilling, Ryon, and Pidcock
In contesting this rejection, Appellant presents arguments for
independent claim 1 (Appeal Br. 7–12), and relies on the same arguments
for independent claim 14 (id. at 12) and dependent claims 2, 3, 6, 8, and 16
(id.). We select claim 1 as representative, and claims 2, 3, 6, 8, 14, and 16
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Schilling discloses a
tube assembly comprising: a first tube (60); a second tube (62)
connected to the first tube (60), and a generally annular void
(between 60 and 62) defined by and radially between the first
tube (60) and the second tube (62); wherein the tube assembly
is part of a fuel nozzle for a gas turbine engine (see col. 2, lines
8–10).
Final Act. 3. The Examiner finds that
Schilling is silent on the first tube and the second tube being
additive manufactured as one unitary piece, and a plurality of
pylons projecting through the generally annular void, the
plurality of pylons connecting the additive manufactured first
tube to the additive manufactured second tube, and the plurality
of pylons spaced axially along a centerline of the tube
assembly.
Id. However, the Examiner finds that
Ryon teaches a similar fuel injector, including (in Fig. 2)
a first tube (inward of 230) and a second tube (outward of 230)
which are formed as one unitary piece (‘monolithically formed
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nozzle body’ col. 4, lines 20–24). Ryon further teaches an
additive manufactured fuel nozzle (col. 2, line 60 – col. 3,
line [2]).
Id. The Examiner determines that it would have been obvious “to modify
Schilling to include additive manufacturing the first tube and the second tube
to form one unitary piece, [in order] to promote rapid manufacturing and
eliminate joints and brazing, as taught by Ryon in col. 3, lines 3–9.” Id. at
3–4.
The Examiner also finds that
Pidcock teaches a similar tube assembly, including (in
Fig. 11) a plurality of pylons (75, see Para. [0057], lines 18–25)
projecting through the generally annular void (84), the plurality
of pylons (75) connecting the additive manufactured first tube
(82) to the additive manufactured second tube (74), and the
plurality of pylons (75) spaced axially along a centerline of the
tube assembly (see Para. [0057], lines 18–25). See also
description of additive manufacturing in Para. [0058]).
Final Act. 4. The Examiner determines that it would have been obvious to
modify the combination of Schilling and Ryon to include Pidcock’s pylons
“in order provide support structures to make the tube assembly more rigid,
as taught by Pidcock in Para. [0046], lines 16–20.” Id.
Appellant argues that “a person of skill in the art would not have
modified the teachings of Schilling based on the teachings of Ryon and
Pidcock to provide such a tube assembly.” Appeal Br. 7. Appellant asserts
that Schilling’s delivery system 60 and support system 62 are discrete
components formed of different materials, each material having a distinct
coefficient of expansion. Id. at 8 (citing Schilling, col. 2, ll. 52–55).
Appellant asserts that “there is no teaching or suggestion in Schilling nor
Ryon that such tailoring of the coefficient of expansion is possible if the
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delivery system 60 and the support system 62 were to be formed together as
one unitary piece.” Id. at 8–9. According to Appellant, one of ordinary skill
in the art
would have no reasonable expectation of success in modifying
the teachings of Schilling based on the teachings of Ryon to
form the delivery system 60 and the support system 62 together
as a unitary body since neither Schilling nor Ryon individually
or combined teach or suggest it is possible to form a unitary
body from two different materials as required in Schilling to
achieve its tailored coefficient of expansion.
Id. at 9. We are not persuaded by this argument.
The Examiner responds that “one of ordinary skill in the art would
have recognized that a single component can be additively manufactured
using two different materials.” Ans. 4–5. To support this position, the
Examiner points to Vaezi2 and Sevenson3 as evidencing “that, before the
effective filing date of the claimed invention, it was known to additively
manufacture a single component using different materials.” Id. at 5.4 The
Examiner explains that
Sevenson discloses “[w]hat they have managed to do, is figure
out a way in which a part can be 3D printed out of several
different metal alloys. For instance, a jet engine component
could be printed in one piece with several different properties
throughout.” (Sevenson, third paragraph, emphasis added).

2 Mohammad Vaezi et al., Multiple Material Additive Manufacturing – Part
1: A Review, Virtual and Physical Prototyping, Vol. 8, No. 1, 19–50 (Apr.
2013) (hereafter “Vaezi”).
3 Brittney Sevenson, Manufacturing Breakthrough Allows for 3D Printing of
Several Different Metals Within One Print, available at https://3dprint.com/
10602/3d-print-multiple-metals (July 2014) (hereafter “Sevenson”).
4 The Examiner first relied on Vaezi and Sevenson as evidence in the
Response to Arguments on page 17 of the Non-Final Action mailed Aug. 6,
2018. See Notice of References Cited mailed Aug. 6, 2018.
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Furthermore, Vaezi teaches several different methods in which
a component is additive manufactured using different materials
(Vaezi, pages 19–46).
Id. (emphasis omitted). The Examiner takes the position that “one o[f]
ordinary skill in the art would have recognized that Schilling’s injector,
made of two different materials, could have been additively manufactured
a[s] one unitary piece.” Id. However, Appellant does not specifically
address the Examiner’s position or the evidence cited in support thereof. See
generally Appeal Br.; Reply Br. Appellant does not offer any factual
evidence or persuasive technical rationale to refute the Examiner’s rationale
or explain why it would be deficient.
Appellant argues that “Schilling discloses the need for the slip joint 80
between the delivery system 60 and the support system 62 to accommodate
the still present, although reduced, thermal growth differential between the
elements 60 and 62.” Appeal Br. 9 (citing Schilling, col. 2, l. 64–col. 3,
l. 8). Appellant asserts that there would be “no motivation to manufacture
the delivery system 60 and the support system 62 as one unitary piece as
alleged in the Office Action since such a modification would result in a fixed
connection between the elements 60 and 62 at the joint 80.” Id.; see also id.
at 11 (asserting that “additively manufacturing the delivery system 60 and
the support system 62 together as a single unit would likely result in a fixed
connection at both 68 and 80”). This argument is unpersuasive.
The Examiner responds “that only one fixed connection point is
needed for the inner and outer tubes to meet the limitation ‘unitary.’”
Ans. 6. The Examiner explains that “[m]odifying Schilling to make the
inner and outer tubes unitary would not necessarily result in a fixed
connection at 80, since the assembly already includes a fixed connection
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point at 68.” Id. In this regard, Appellant does not persuasively rebut the
Examiner’s position that a fixed connection at only end 68 would make
Schilling’s assembly unitary. Moreover, Appellant does not proffer any
evidence to support the contention that using an additive manufacturing
process to produce Schilling’s assembly necessarily would result in a fixed
connection at slip joint 80. See Appeal Br. 9; Reply Br. 2–3. Appellant’s
assertion amounts to nothing more than attorney argument unsupported by
evidence and, thus, is entitled to little, if any, weight. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (An attorney’s arguments in a brief cannot take the place
of evidence.).
Appellant argues that “Schilling teaches away from a feature of ‘an
additive manufactured second tube connected to the additive manufactured
first tube and manufactured as one unitary piece’ as recited in claim 1.”
Appeal Br. 10 (emphasis omitted). We are not persuaded by this argument.
A reference teaches away from a claimed invention or a proposed
modification if “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Appellant does not point to, nor do we find, any
disclosure in Schilling criticizing, discrediting, or otherwise discouraging the
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use of additive manufacturing to form the fuel nozzle assembly as a unitary
piece, as proposed by the Examiner in the rejection.
Appellant argues that, if Schilling’s delivery system 60 and support
system 62 were additively manufactured as a unitary piece, “there would be
no way to locate the O-ring 86 in the groove 84.” Appeal Br. 9–10.
Appellant asserts that, “although Schroeder [(US 2013/0245801 A1, pub.
Sept. 19, 2013)] allegedly teaches adding an element during additive
manufacturing production, there is no teaching or suggestion in Schroeder
that such an element can be an O-ring.” Id. at 10.5 Appellant contends that
“there is no teaching or suggestion in Schroeder that an O-ring can be added
mid-additive manufacturing while still providing the required interference
fit, particularly since one of the surfaces against which the O-ring may press
may not yet be formed.” Id. According to Appellant, “if an O-ring is simply
laid on a partially manufactured part and then material is laid over the O-
ring, the O-ring will not be subject to an interference fit since that O-ring
would not be compressed before the laying of additional material.” Id. at
10–11. This line of argument is unpersuasive.
Schroeder discloses that, “[d]uring additive manufacturing production,
the process may be programmed to pause such that an element may be
added.” Schroeder ¶ 52. Although Appellant correctly observes that
Schroeder does not specifically disclose that the added element is an O-ring
(see Appeal Br. 10), Appellant’s argument does not persuasively refute the
Examiner’s position “that Schroeder’s teaching of pausing the additive

5 The Examiner first relied on Schroeder as evidence in the Response to
Arguments on page 10 of the Final Action. See Notice of References Cited
mailed March 5, 2019.
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manufacturing process to add an element obviously could have applied to
the addition of an O-ring” (Ans. 7). The Examiner explains that Appellant’s
argument
consider[s] a case in which only one surface has been formed
before adding the O-ring, while failing to consider a case in
which two opposing surfaces were formed before adding the O-
ring. Specifically, both the inner and outer tubes could have
been additively manufactured together before the insertion of
the O-ring, thus providing two surfaces between which the O-
ring could be fit.
Id. In this regard, Appellant asserts that, “if the inner and the outer tubes are
additively manufactured before inserting the O-ring, then the cavity in which
the O-ring is disposed would be enclosed without access thereto.” Reply
Br. 3. However, we understand the Examiner’s position to be that it would
have been obvious, based on the combined teachings of the references, to
pause an additive manufacturing process used to produce Schilling’s fuel
nozzle at a point in which two opposing surfaces of delivery system 60
(inner tube) and support system 62 (outer tube) are formed, such that O-ring
86 could be interference fit between these surfaces and the process would
then be resumed to complete forming groove 84 that would enclose the
O-ring. In this regard, Appellant does not proffer factual evidence or
persuasive technical reasoning to explain how, in an additive manufacturing
process to produce Schilling’s assembly, pausing the process to add O-ring
86 in groove 84 in an operable manner would be beyond the level of
ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). Thus, we are unpersuaded by Appellant’s
contention that one of ordinary skill in the art would have had no reasonable
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expectation of success in combing the reference teachings, as proposed by
the Examiner. See Appeal Br. 9.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and claims 2, 3,
6, 8, 14, and 16 falling therewith, under 35 U.S.C. § 103 as unpatentable
over Schilling, Ryon, and Pidcock.

Rejections II and III – Obviousness based on Schilling, Ryon,
Pidcock, and one or more of Caples and Epstein
In contesting the rejections of claims 9, 10, and 15, Appellant relies
on the same arguments and reasoning we found unpersuasive in connection
with the rejection of claim 1. See Appeal Br. 12–13. Accordingly, for the
same reasons discussed above with respect to Rejection I, we also sustain the
rejections of claims 9, 10, and 15 under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1–3, 6, 8, 14,
16
103 Schilling, Ryon,
Pidcock
1–3, 6, 8, 14,
16

9, 15 103 Schilling, Ryon,
Pidcock, Caples
9, 15
10 10 Schilling, Ryon,
Pidcock, Caples,
and Epstein
10
Overall Outcome 1–3, 6, 8–10,
14–16

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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