Ex Parte Derrien

Patent Trial and Appeal Board

Oct 2, 2017

13512054 (P.T.A.B. Oct. 2, 2017)

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.
13/512,054 05/25/2012 Gerard Derrien 399310US41PCT 1102
22850 7590 10/04/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MCCLURE, CHRISTINA D
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
10/04/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERARD DERR TEN
Appeal 2017-000781
Application 13/512,0541
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 9-20. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is SNECMA. Appeal Br.
2.
Appeal 2017-000781
Application 13/512,054
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a method of repairing
the compressor blade of an aeronautical turbine engine. Spec. 1:4—7. In
particular, the method refills deformations of the metal part with a laser
refilling operation such that no milling operation is necessary after hot
isostatic pressing (“HIP”). Id. at 4:27—32. Claim 9, reproduced below with
emphasis added to certain key recitations, is illustrative of the claimed
subject matter:
9. A method for repairing a titanium based alloy part by
refilling damaged parts by spraying a powder of the titanium
alloy onto the titanium alloy part, the method comprising:
laser-refilling the damaged parts by injecting the powder
of titanium alloy using an inert gas which is then injected into a
laser beam such that dimensions of the titanium alloy part after
the laser-filling are the same as original dimensions of the
titanium alloy part prior to damage; and
then hot isostatic pressing, a maximum temperature
applied during the isostatic pressing not exceeding
recrystallization temperature of the titanium alloy,
wherein the dimensions of the laser-filled titanium
alloy part do not change during the hot isostatic pressing
such that the dimensions of the laser-filled titanium alloy
part after the hot isostatic pressing are the same as the
original dimensions of the titanium alloy part prior to
damage.
Appeal Br. 20 (Claims App’x).
2 In this opinion, we refer to the Final Office Action dated September 22,
2015 (“Final Act.”), the Appeal Brief filed February 22, 2016 (“Appeal
Br.”), the Examiner’s Answer dated August 26, 2016 (“Ans.”), and the
Reply Brief filed October 11, 2016 (“Reply Br.”).
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Application 13/512,054
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Stenard et al.
(“Stenard”)
White et al.
(“White”)
Gigliotti et al.
(“Gigliotti”)
Azer et al.
(“Azer”)3
H.V. Atkinson and S. Davies, Fundamental Aspects of Hot Isostatic
Pressing: An Overview, 31A Metallurgical and Materials Transactions A
2981-3000 (2000) (“Atkinson”).
Chapter 11. Thermal Processing of Metal Alloys,
http://www.virginia.edu/bohr/mse209/chapterl l.htm, archived at
http://web.archive.org/web/20030309090222, Mar. 9, 2003) (“Thermal
Processing”).
M. Boivineau et al., Thermophysical Properties of Solid and Liquid Ti-6AL-
4V (TA6V) Alloy, 27 Inti. J. of Thermophysics 507—529 (2006)
(“Boivineau”).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 9, 12, 13, and 17—19 under 35 U.S.C. § 103 as
unpatentable over White in view of Azer. Ans. 2.
Rejection 2. Claim 10 under 35 U.S.C. § 103 as unpatentable over
White in view of Azer and further in view of Boivineau. Id. at 10.
US 5,415,336
US 5,732,467
EP 1 643 011 Al
EP 1 743 729 A2
May 16, 1995
Mar. 31, 1998
Apr. 5, 2006
Jan. 17, 2007
3 The first listed inventor on this reference is Bernard Patrick Bewlay. We
nonetheless refer to the reference as Azer because the Examiner uses this
nomenclature.
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Rejection 3. Claim 11 under 35 U.S.C. § 103 as unpatentable over
White in view of Azer and Boivineau and further in view of Gigliotti. Id.
at 11.
Rejection 4. Claim 14 under 35 U.S.C. § 103 as unpatentable over
White in view of Azer and further in view of Stenard. Id. at 12.
Rejection 5. Claim 15 under 35 U.S.C. § 103 as unpatentable over
White in view of Azer and further in view of Thermal Processing. Id. at 13.
Rejection 6. Claim 16 under 35 U.S.C. § 103 as unpatentable over
White in view of Azer and further in view of Atkinson. Id. at 15.
Rejection 7. Claim 20 under 35 U.S.C. § 103 as unpatentable over
White in view of Azer, Boivineau, Atkinson, Stenard, and Thermal
Processing. Id. at 16.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellant’s arguments, we
are not persuaded that Appellant identifies reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellant does not present substantively separate arguments for the
Examiner’s rejection of dependent claims and, in substance, argues all
claims as a group. See Appeal Br. 17—19. Therefore, consistent with the
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provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to
claim 1, and all other claims on appeal stand or fall together with claim 1.
The Examiner finds that White teaches a method for repairing cracks
on the surface of titanium based alloy parts. Ans. 2 (providing citations to
White). The Examiner finds that White teaches refilling the crack of the
damaged component by Hyper Velocity Oxy-Fuel (“HVOF”) or thermal
spray processes and then subjecting the part to hot isostatic pressing
(“HIP”). Id. The Examiner finds that White does not teach laser refilling as
the thermal spray process for coating the cracked regions and does not teach
that the process form a part having the same dimensions as the original part.
Id. at 3.
The Examiner finds that Azer teaches a method for repairing turbine
components by coating them with a laser cladding process. Id. at 3
(providing citations to Azer). The materials include titanium. Id. Azer
teaches that its process reforms blades to a shape identical to the original
shape of the part prior to damage. Id. The Examiner concludes that it would
have been obvious to a person having ordinary skill in the art at the time of
the invention that the method of laser cladding to repair a turbine followed
by hot isostatic pressing would be successful when applied to a titanium
based-alloy. Id. at 4. The Examiner further concludes that it would have
been obvious to a person of ordinary skill in the art to modify White to use
the laser cladding taught by Azer in order to reap the various benefits taught
by Azer. Id. at 4—6.
Appellant argues that the Examiner’s obviousness conclusion is in
error because White teaches away from laser cladding. Appeal Br. 6—8.
Appellant cites passages of White that describe the disadvantages of welding
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or similar processes to support this point. Id. (citing, e.g., White 1:63—2:5,
3:18-27).
We do not agree that White teaches away from combining the
teachings of White and Azer. “A reference may be said to teach away when
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
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, White does not discourage
or lead away from the combination of laser cladding with HIP as proposed
by the Examiner. Ans. 28—29. Rather, White teaches that the primary
disadvantage to welding is that “the microstructure of the weld is not
directionally oriented” and this diminishes mechanical properties. White
1:65—2:2. The Examiner found that White teaches that hot isostatic pressing
results in microstructure being maintained, and a preponderance of the
evidence supports this finding. Ans. 29; see also White 3:7—27 (explaining
that hot isostatic pressing results in diffusing healing of the cracks “thereby
preserving the unique microstructure with its inherent mechanical property
advantages”). Thus, a person of ordinary skill reading White would
understand White’s addition of the HIP process as a second step overcomes
the primary disadvantage of welding alone.
Appellant also argues that the problems of difficulty in performing the
weld and increased cracking during weld will not be solved with HIP.
Appeal Br. 8; Reply Br. 4—5. The Examiner, however, finds that White is
referencing conventional fusion welding processes and does not indicate that
laser cladding is a process that will encounter these problems. Ans. 30. The
Examiner further finds that Azer offers benefits such as, for example,
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minimizing thermal impact and stress on the substance. Id.; see also e.g.,
Azer 149 (explaining advantages of laser cladding process during
deposition). A person of ordinary skill in the art would have understood that
this benefit would lead to minimizing cracking.
Moreover, even if a person of skill in the art would have recognized
some potential downsides to the Azer process in view of the teachings of
White, that person would weigh those downsides against the advantages
taught by Azer. A given course of action having simultaneous advantages
and disadvantages does not necessarily obviate motivation to combine.
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). In
sum, a preponderance of the evidence supports the Examiner’s stated
reasons for combining White and Azer but does not support Appellant’s
teaching away argument.
Appellant also argues that the cited references do not teach claim 9’s
recitation “wherein the dimensions of the laser-filled titanium alloy part do
not change during the hot isostatic pressing such that the dimensions . . .
after the hot isostatic pressing are the same as the original dimensions of the
titanium alloy part prior to damage.” Appeal Br. 9. The Examiner finds,
however, that Azer teaches using laser cladding to re-form the blade in a
shape identical to the blade’s original shape. Ans. 31. The Examiner also
finds that White teaches excess material may be removed after thermal spray
and HIP process such that excess material also may not be present. Id. The
Examiner explains that it would have been obvious to use HIP after
performing the laser cladding repair of Azer “such that no excess materials
needs to [be] removed or wasted in the process.” Id. at 32. A preponderance
of the evidence supports the Examiner’s position, and Appellant does not
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provide a persuasive rebuttal. See Reply Br. 6 (addressing each reference
individually rather than addressing the Examiner’s reasoning with regard to
the combination of White and Azer).
Appellant also argues that Azer focuses on niobium silicide alloys and
cannot not be understood being relevant or predictably useful in the context
of claim 9’s recited “titanium based alloy.” Appeal Br. 9—15. Appellant
emphasizes that Azer defines “niobium silicide-based” and “niobium silicide
material” as having at least 75 percent niobium silicide component. Appeal
Br. 12.
The Examiner finds, however, that White teaches that acceptable
superalloys for turbine blades include niobium-base and titanium-base alloys
including niobium-titanium alloys. Ans. 32; see also White 4:30-36 (“For
purposes of this invention, acceptable superalloys would also include high
temperature alloys . . . such as niobium-base and titanium-base alloys,
including niobium-titanium alloys . . .”). The Examiner further finds that
niobium based alloys exhibit melting temperatures similar to those of
titanium alloys. Ans. 32—33 (citing Azer and Boivineau). The Examiner’s
findings that niobium and titanium alloys are similar in the context of this art
supports the Examiner’s conclusion that a person of skill in the art would
have understood that Azer’s laser cladding techniques could be applied to
the titanium alloy taught by White to yield the various advantages taught by
Azer. Id. at 4—6.
Moreover, while Azer focuses primarily on niobium-base alloys, it
also suggests that its process may be used with titanium-based alloys. The
Examiner finds that Azer’s paragraph 32 teaches an embodiment in which
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titanium may be a main component and explains why that embodiment may
include more titanium than niobium. Ans. 33.
Appellant argues that the Examiner misreads paragraph 32 because
“such a composition” in paragraph 32 refers back to the “various niobium
silicide compositions” referenced in paragraph 31. Appeal Br. 14. Azer
does not, however, define “niobium silicide compositions” as requiring a
high percentage of niobium. Rather, Azer defines “niobium silicidQ-based
composition” (emphasis added) and “niobium silicide material” as requiring
75 weight percent of “some form of niobium silicide composition.” Azer |
20. Azer also explains that for the embodiment of paragraphs 31 and 32 the
niobium silicide composition can have a high percentage of titanium (up to
45%) and indicates the composition may have less of niobium. Ans. 33; see
also In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all disclosures of the
prior art, including unpreferred embodiments, must be considered”). Thus,
Azer uses the term “niobium silicide composition” at paragraphs 31 and 32
merely to indicate that niobium silicide is used.
Based on the evidence as a whole, we agree with the Examiner that
Azer would have suggested to a person of ordinary skill in the art that Azer’s
process would also predictably work with titanium-based alloys. The
evidence establishes that incorporating Azer’s laser cladding process into the
process of White would improve White in the same way it improves Azer
and is no more than predictable use of prior art elements according to
established functions. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Because Appellant does not identify reversible error, we sustain the
Examiner’s rejections.
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DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
9-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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