Ex Parte Brown et alDownload PDFPatent Trial and Appeal BoardNov 18, 201412122869 (P.T.A.B. Nov. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte CLAYTON D. BROWN and STEVEN M. MODON ________________ Appeal 2012-008447 Application 12/122,869 Technology Center 3700 ________________ 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; Appeal 2012-008447 Application 12/122,869 2 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. Appeal 2012-008447 Application 12/122,869 3 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) Appeal 2012-008447 Application 12/122,869 4 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: Appeal 2012-008447 Application 12/122,869 5 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 Appeal 2012-008447 Application 12/122,869 6 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 Appeal 2012-008447 Application 12/122,869 7 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 Appeal 2012-008447 Application 12/122,869 8 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: Appeal 2012-008447 Application 12/122,869 9 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 Appeal 2012-008447 Application 12/122,869 10 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. Appeal 2012-008447 Application 12/122,869 11 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 Ssc Copy with citationCopy as parenthetical citation