UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Sep 30, 2020

15039929 - (D) (P.T.A.B. Sep. 30, 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.
15/039,929 05/27/2016 Lee Drozdenko 75240US02;
67097-2825PUS1
6431
54549 7590 09/30/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
HTAY, AYE SU MON
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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 LEE DROZDENKO, JAMES O. HANSEN,
JESSE C. MEYER, MARIA C. KIREJCZYK,
SCOT A. WEBB, BRANDON A. GATES, and
RICHARD B. BERGETHON
____________

Appeal 2020-001293
Application 15/039,929
Technology Center 3700
____________

Before: PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3, 5–11, 13, and 15–20. We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Sept. 6, 2019), and Reply Brief (“Reply Br.,” filed Nov. 27, 2019), and
the Examiner’s Answer (“Ans.,” mailed Nov. 4, 2019), and Final Office
Action (“Final Act.,” mailed Mar. 7, 2019). Appellant identifies the real
party in interest as Raytheon Technologies Corporation, formerly known as
Appeal 2020-001293
Application 15/039,929

2
We REVERSE.

CLAIMED INVENTON
The claimed invention “relates to an adhesive and fabric stackup
utilized between a sheath and a fan blade” for a gas turbine engine. Spec.
¶¶ 2–3.
Claims 1 and 11 are independent. Claim 1 is reproduced below:
1. A blade comprising:
an airfoil extending from a trailing edge to a leading edge,
said airfoil including a body formed of an aluminum containing
material;
a sheath at said leading edge and formed of a titanium
containing material, with a sandwich positioned intermediate
said sheath and said airfoil body, said sandwich including an
outer adhesive layer adjacent the sheath, an intermediate layer
and an inner adhesive layer adjacent the body;
wherein said fabric layer is a woven fabric layer; and
wherein said woven fabric layer has holes that are less than
.001 inch on average.

REJECTION
Claims 1, 3, 5–11, 13, and 15–20 are rejected under 35 U.S.C. § 103
as unpatentable over Parkin (US 2013/0239586 A1, pub. Sept. 19, 2013).

United Technologies Corporation. “Update to Real Party in Interest,” dated
April 23, 2020.
Appeal 2020-001293
Application 15/039,929

3
ISSUE
Did the Examiner err in finding that it would have been an obvious
design choice to modify the holes of Parkin’s scrim to be less than .001 inch
on average?
ANALYSIS
Appellant argues that modifying Parkin’s scrim to have holes less than
.001 inch, as required by independent claims 1 and 11, is not an obvious
matter of design choice. Appeal Br. 2–5; Reply Br. 1–2.
The Examiner, recognizing that Parkin’s woven fabric (a scrim) does
not disclose a holes less than .001 inch, determines that it would have been
an obvious matter of design choice to modify Parkin’s scrim to have the
claimed hole size. Final Act. 4, 7. In support of this argument, the
Examiner cites In re Rose, 220 F.2d 459 (CCPA 1955) for the proposition
that a change in size is generally recognized as within the level of ordinary
skill in the art. Id.
The Examiner’s reliance on In re Rose is misplaced. In Rose, the
appellant argued that the claimed “lumber package” was large and required a
lift truck for handling; whereas, the prior art packages (a package of
relatively small pieces of lumber and a package of window screen frames)
could be lifted by hand. Rose, 220 F.2d at 463. The court held that “this
limitation [(i.e., size and weight of the package)] is [not] patentably
significant since it at most relates to the size of the article under
consideration which is not ordinarily a matter of invention.” Id. (citation
omitted).
Here, in contrast, the Examiner does not propose a change in the
overall size of the article under consideration (i.e., a blade (claim 1); an
Appeal 2020-001293
Application 15/039,929

4
engine (claim 11)). Instead, the Examiner proposes changing the structure
of Parker’s woven fabric (a scrim) to that of a tightly woven fabric having
holes less than .001 inch on average, even though the Specification describes
the tightly woven fabric as performing differently from a scrim. In re Gal,
980 F.2d 717, 719 (Fed. Cir. 1992) (holding that a finding of obvious design
choice is precluded when the claimed structure and the function it performs
are different from the prior art).
In this regard, Appellant’s Specification describes that prior art
techniques have used a scrim material between a sheath and a fan blade of a
gas turbine engine to prevent galvanic corrosion. Spec. ¶¶ 7–8. However,
the scrim material “has not been as successful as would be desired.” Id. ¶ 8.
The Specification provides that a scrim, in contrast with the woven fiber
recited in Appellant’s claims, “has holes more on the order of 1/16th of an
inch” (.0625 inch).2 Spec. ¶ 50. Appellant’s woven fabric is “tightly
woven” and “to the extent there are any holes . . . , they are exceedingly
small.” Id. ¶ 49 (describing that the holes are less than .001 inch, and in
some embodiments are less than .0005 inch and other embodiments
“effectively have no holes whatsoever”).
Appellant’s description in the Specification of a scrim as a woven
fiber having holes significantly larger than the claimed woven fabric is
consistent with the ordinary meaning of the term scrim as an open or loosely
woven fabric. See, e.g., Scrim: “[D]urable, loosely woven fabric, often
cotton, linen, hemp, or a synthetic fiber, used for curtains or upholstery

2 The Specification converts 1/16th of an inch to .062 cm; however, the
correct conversion is 0.159 cm. Presumably “cm” is a typographical error
meant to be “in.”
Appeal 2020-001293
Application 15/039,929

5
lining or in industry.” American Heritage® Dictionary of the English
Language (5th Ed. 2016) (last accessed Sept. 21, 2020),
https://www.thefreedictionary.com/scrim; Scrim: “[A]n open-weave muslin
or hessian fabric, used in upholstery, lining, building, and in the theatre to
create the illusion of a solid wall or to suggest haziness, etc[.], according to
lighting.” Collins English Dictionary (12th Ed. 2020) (last accessed Sept. 21,
2020), https://www.thefreedictionary.com/scrim; see also Ans. 4 (citing
Merriam-Webster Dictionary’s definition of Scrim: “[D]urable plain-woven
usually cotton fabric for use in clothing, curtains, building, and industry.”).3
The Examiner’s proposed definition of the term “scrim” is consistent with
that described above in the Specification.
In short, the Examiner has not demonstrated that the substitution of
“woven fabric layer ha[ving] holes that are less than .001 inch on average”
for the scrim described in Parkin would have been an obvious matter of
design choice. Final Act. 4, 7; see also Ans. 4–7. Nor has the Examiner
adequately articulated reasoning as to why one of ordinary skill in the art
would have been motivated to substitute a “woven fabric layer ha[ving]
holes that are less than .001 inch on average” for the scrim described in
Parkin. Final Act. 4, 7; see also Ans. 4–7.
Therefore, we do not sustain the rejection of claims 1, 3, 5–11, 13, and
15–20 under 35 U.S.C. § 103 as unpatentable over Parkin.

3 https://www.merriam-webster.com/dictionary/scrim (last accessed Sept.
14, 2020).
Appeal 2020-001293
Application 15/039,929

6
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Basis/References Affirmed Reversed
1, 3, 5–11, 13,
15–20 103 Parkin
1, 3, 5–11,
13, 15–20

REVERSED