Ex Parte Brown et al

Patent Trial and Appeal Board

Nov 18, 2014

12122869 (P.T.A.B. Nov. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CLAYTON D. BROWN and STEVEN M. MODON
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Appeal 2012-008447
Application 12/122,869
Technology Center 3700
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Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Clayton D. Brown and Steven M. Modon (Appellants) seek our
review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
1 and 3–12. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to an axial blade slot pressure face
with an undercut. Claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A blade and disk assembly comprising:
a blade body having a blade bearing surface;
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a disk body including at least one slot to receive said
blade body, said slot having a disk bearing surface that contacts
said blade bearing surface at a bearing interface, and said slot
having an undercut surface that is spaced apart from said blade
body, and wherein an angle between said disk bearing surface
and a line tangent to said undercut surface is at least 70
degrees and is less than 90 degrees.

REFERENCES RELIED ON BY THE EXAMINER

Howell US 3,689,176 Sept. 5, 1972
Juenger US 5,141,401 Aug. 25, 1992
Nguyen US 5,554,005 Sept. 10, 1996
Sakata JP 58-167807 Apr. 10, 19831

THE REJECTIONS ON APPEAL
Claims 1 and 3–6 are rejected under 35 U.S.C. § 102(b) as anticipated
by Sakata.
Claims 1 and 3–6 are rejected under 35 U.S.C. § 102(b) as anticipated
by Nguyen.
Claims 1 and 3–6 are rejected under 35 U.S.C. § 102(b) as anticipated
by or under 35 U.S.C. § 103(a) as obvious over Juenger.
Claims 7–12 are rejected under 35 U.S.C. § 103(a) as obvious over
Sakata, Nguyen, or Juenger, and Howell.
ANALYSIS
The rejection of claims 1 and 3–6 as anticipated by Sakata.
(I)
Claim 1 recites, in part:

1 The Examiner provided an English translation of this Japanese-language
reference to Appellants on July 28, 2011, and our citations to text in Sakata
refer to this translation.
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wherein an angle between said disk bearing surface and a
line tangent to said undercut surface is at least 70
degrees and is less than 90 degrees.

The Summary of the Claimed Subject Matter, directs our attention to
Appellant’s figure 3 as depicting certain elements of claim 1. Br. 2.

Figure 3 depicts a cross-sectional view of an interface between a blade body
36 and a disk body 32, including an angle (A) between a disk bearing
surface 50 and a line L2 tangent to an undercut surface 60.
(II)
The Examiner rejects claim 1 as anticipated by Sakata stating:
Sakata et al. teach… [a] slot having an undercut surface 6b that
is spaced apart from the blade body, and wherein an opening
angle between the disk bearing surface and a line tangent to the
undercut surface is described in the Abstract as meeting at an
angle that is roughly perpendicular (Machine translation, page
6, lines 2-4).
Ans. 4.

(III)
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Appellants argue that Sakata fails to disclose the particular range,
including the lower and upper boundaries recited in claim 1. Br. 4.
Appellants state, “[t]here certainly is no disclosure [in Sakata] of the claimed
angle being at least 70 degrees,” and therefore, Sakata does not teach all the
elements recited in independent claim 1. Id.
Appellants also “[dispute] the assertion that Sakata teaches that the
angle can be less than 90 degrees [and therefore within the recited range]
because the benefits taught by Sakata are a result of the surface pressure
acting perpendicularly on the bearing surface 6a.” Br. 4.
(IV)
Regarding Appellants’ argument that Sakata fails to disclose the lower
and upper boundaries of the range recited in claim 1, we see no error in the
Examiner’s position. For Sakata to anticipate the recited range, Sakata need
not disclose an identical range. “It is also an elementary principle of patent
law that when, as by a recitation of ranges or otherwise, a claim covers
several compositions, the claim is ‘anticipated’ if one of them is in the prior
art.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 782 (Fed.
Cir. 1985). As Sakata discloses an angle that is “roughly perpendicular,”
(Sakata 6) we agree with the Examiner’s statement, “Sakato et al. do in fact
have an angle with a starting point of at least 70 degrees, as at least 70
degrees includes 70 degrees as well and value larger than 70 degrees.” Ans.
10.
Regarding Appellants’ second argument, that Sakata does not teach an
angle less than 90 degrees, we are not persuaded Sakata does not disclose
such an angle. Sakata states:
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Figure 5 through Figure 7 illustrate only the corner parts 6b of
the blade-fastening groove 6 in magnification. In Figure 5, (a)
and (b), the corner parts 6b of the grooves are each formed by a
single curve. Since this means that the curved parts of the
corners 6b of the grooves cross the bearing surfaces 6a at
roughly perpendicular angles, tensile stress does not occur,
and the dovetails do not become damaged.
Sakata, English Translation, 5–6 (emphasis added). The term “roughly”
means “without completeness, exactness: APPROXIMATELY.”
WEBSTER’S TENTH NEW COLLEGIATE DICTIONARY 1020 (1998). The
Examiner found that a disclosure of “roughly perpendicular” as set forth in
Sakata qualifies as a disclosure of an angle “less than 90 degrees.” Ans. 4
and Final Office Action dated September 29, 2011. Appellants have not
pointed to any evidence of a definition of “approximately” that would
exclude values of the angle in Sakata below 90 degrees. Moreover, the
benefits taught by Sakata do not require the disclosed roughly perpendicular
angle to be exclusively above or equal to 90 degrees. Rather, the recited
benefits are disclosed as occurring so long as the angle is close to 90
degrees. For example, Sakata states: [f]urther, even in cases in which the
curve of the groove corner 6b is not necessarily perpendicular to the bearing
surface 6a, a sufficient decrease in the tensile stress can be expected at the
fretting points, in other words, at the points band b' in Figure 4.” Sakata 6.
Having found no error in the Examiner’s determination that “roughly
perpendicular” includes values below 90 degrees, we next discuss whether
such a finding is sufficient for the Examiner to conclude Sakata anticipates
claim 1. Specifically, we discuss whether a range such as the one defined by
“roughly perpendicular” discloses the feature at issue in claim 1. In Atofina
v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006), the Federal
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Circuit held that a range of 100 ºC – 500 ºC and a preferred range of 150 ºC
– 350 ºC in the prior art did not anticipate a recited range of 330 ºC – 450 ºC.
Id. at 999–1000. The Federal Circuit said, given the “considerable
difference” between the 100 ºC – 500 ºC disclosed range and the 330 ºC –
450 ºC recited range, “no reasonable fact finder could conclude that the prior
art describes the claimed range with sufficient specificity to anticipate this
limitation of the claim.” Id. at 999. Regarding the 150 ºC – 350 ºC range
disclosed in the prior art, the court said “[m]oreover, the disclosure of a
range of 150 to 350 ºC does not constitute a specific disclosure of the
endpoints of that range, i.e., 150 ºC and 350 ºC, as [accused infringer]
asserts.” Id. at 1000
In contrast, in ClearValue, Inc. v. Pearl River Polymers, Inc.,
668 F.3d 1340 (2012), the Federal Circuit held that a prior art range of 150
ppm or less anticipated a recited range of 50 ppm or less. ClearValue
distinguished Atofina, stating, “[u]nlike Atofina, here there is no
‘considerable difference between the claimed range and the range in the
prior art.’” Id. at 1345. The court also noted that the patentee did not assert
that the claimed method worked differently at different points within the
prior art range of 150 ppm or less. Id.
In the present case, like the situation in ClearValue, Appellants have
not presented evidence that the benefit provided by the range recited in
claim 1 would not occur at values disclosed in the cited prior art. Rather,
Appellants argue (citing paragraphs 26–28 of the Specification) that the
benefit occurs when an angle of at least 70 degrees is used. Br. 4–5.
Therefore, we have not been presented with evidence the upper end of the
range is critical to the benefits provided by the arrangement recited in claim
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1. Further, the small range (of angles “roughly perpendicular”) disclosed in
Sakata is very close to being entirely within the relatively large range recited
in claim 1, so there is no persuasive evidence of a “considerable difference”
between the recited range and the range disclosed in Sakata as was the case
in Atofina. Accordingly, as between Atofina and ClearValue, the present
case is more like ClearValue, and we sustain the rejection of claims 1 and 3–
6 as anticipated by Sakata.
The rejection of claims 1 and 3–6 as anticipated by Nguyen
In the rejection of claim 1 over Nguyen, the Examiner states Nguyen
discloses:
an opening angle (W) between the disk bearing surface and a
line tangent to the undercut surface is described in col. 2, lines
45-46 as 60-degrees for production related reasons. Nguyen
then teach in col. 2, lines 64-67 that the “opening angle can
advantageously also be selected even larger, if the production
conditions allow.” A person skilled in the art would have
appreciated the disclosure of an even larger opening angle than
60-degrees includes at least 70-degrees, but less than 91
degrees, as this threshold cuts into the disk disadvantageously,
weakening the mechanical properties of the disk.
Ans. 5.
Appellants assert “Nguyen does not disclose or teach any values that
fall within the claimed range, i.e. Nguyen does not disclose any overlap with
the claimed range.” Br. 6.
We agree with Appellants on this issue and reverse the rejection of
claims 1 and 3–6 as anticipated by Nguyen. The Examiner relies on the
disclosure that the angle in Nguyen can be “even larger” than 60 degrees
(Ans. 5), but this disclosure is qualified in Nguyen with the statement “if the
production conditions allow.” The Examiner’s conclusion based on the
“even larger” language involves some degree of speculation in order to reach
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the claimed range and as such, this disclosure in Nguyen does not qualify as
a disclosure within Appellants’ claimed at least 70 to less than 90 degree
range as is required for anticipation.
The rejection of claims 1 and 3–6 as obvious over Juenger
The Examiner rejects claim 1 as obvious over Juenger, stating:
Juenger et al. teach the optimum angle is in the range of 3 to 60
degrees, but also teach “the larger the break angle the better the
results in terms of eliminating stress peaking at the blade
dovetail edges 30 (see col. 4, lines 49-51 ).” Thus, because the
claimed range and the Juenger et al. range are close enough that
one skilled in that art would have expected them to have the
same results, a prima facie case of obviousness exists.
Titanium Metals Corp. of America v. Banner, 778 F.2d 775,
227 USPQ 773 (Fed. Cir. 1985). One having ordinary skill in
the art at the time the invention was made would have found it
obvious to make the Juenger et al. break angle 40 between 70
and 90 degrees as discussed in col. 4, lines 49-53 for the
purpose of reducing the stresses in the blade dovetail edges 30.
Ans. 7-8.
Appellants argue “Juenger clearly teaches away from the claimed
range. Juenger teaches that large break angles weaken the disk.” Br. 9.
Appellants state “[t]he example given as being a large break angle is an
angle in excess of 90 degrees. This is only an example of a large break
angle. There is nothing to suggest that disfavored large break angles are only
greater than 90 degrees.” Id. Additionally, regarding the lower boundary
recited for the range in claim 1, Appellants argue “[t]here is nothing
disclosed or taught in Juenger to suggest that the break angle must be at least
70 degrees.” Id.
Regarding the results provided by various break angles, Juenger
states:
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Ideally, the larger the break angle the better the results in terms
of eliminating stress peaking at the blade dovetail edges 30.
However, a large break angle, e.g., in excess of ninety degrees,
weakens the disk material radially outward of line 36. It has
been determined that, again depending on the particular engine
design, the optimum break angle is in the range of three to sixty
degrees.
Juenger, col. 4, ll. 49–56.
As noted above, Juenger discloses an optimum range of 3 to 60
degrees. Juenger, however, also states that the larger the break angle, the
better the results in eliminating stress, but cautions against angles that
exceed 90 degrees. Thus, the Examiner’s rationale for modifying Juenger to
include angles in the recited range (to reduce stress) is supported by the
evidence. Further, we are not persuaded Juenger teaches away from break
angles in the range of at least 70 degrees to less than 90 degrees. The
statement above from Juenger, “a large break angle, e.g., in excess of ninety
degrees, weakens the disk material” does not teach away from angles in the
recited at least 70 degree to less than 90 degree range. Indeed, when read as
a whole, the warning not to use angles in excess of ninety degrees, the
explicit disclosure of the use of angles of 60 degrees, and the explanation
that the larger the angle, the better the results, support the Examiner’s
position. A warning to avoid exceeding an angle of 90 degrees, when read
with the remainder of Juenger, implies that angles below 90 degrees are
acceptable.
Regarding Appellants’ argument that “[t]here is nothing disclosed or
taught in Juenger to suggest that the break angle must be at least 70
degrees,” we refer to our discussion of claim 1 and Sakata above, “[i]t is also
an elementary principle of patent law that when, as by a recitation of ranges
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or otherwise, a claim covers several compositions, the claim is “anticipated”
if one of them is in the prior art.” Titanium Metals Corp. of America v.
Banner, 778 F.2d 775, 782 (Fed. Cir. 1985). The feature at issue here is the
recited range, not the boundary points of the range per se. Accordingly, we
are not persuaded of Examiner error on this point.
In light of the discussion above, we sustain the rejection of claim 1
and claims 3–6 depending therefrom as obvious over Juenger.
The rejection of claims 1 and 3–6 as anticipated by Juenger
We do not reach the rejection of claims 1 and 3–6 as anticipated by
Juenger inasmuch as this rejection is cumulative to the rejection of these
claims as obvious over Juenger.
The rejection of claims 7–12 as obvious over Sakata, Nguyen, or
Juenger and Howell.
Appellants rely on the arguments made for independent claim 1 for
independent claim 7 as well. Br. 9. Accordingly, claims 7–11 stand or fall
with claim 1. Therefore, we affirm the rejections of claims 7–11 as obvious
over Sakata and Howell and as obvious over Juenger and Howell. We
reverse the rejection of claims 7–11 as obvious over Nguyen and Howell.
DECISION
Although we have carefully considered all of Appellants’ arguments,
we are not persuaded that the positions taken by the Examiner with respect
to claims 1 and 3–6 and anticipation by Sakata and obviousness over
Juenger are in error.
Accordingly, the rejection of claims 1 and 3–6 as anticipated by
Sakata and the rejection of claims 1 and 3–6 as obvious over Juenger are
affirmed.
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The rejection of claims 7–12 as obvious over Sakata or Juenger, and
Howell is affirmed.
The rejection of claims 1 and 3–6 as anticipated by Nguyen is
reversed.
The rejection of claims 7–12 as obvious over Nguyen and Howell is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).

AFFIRMED

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