Ex Parte Duong et al

Patent Trial and Appeal Board

Dec 9, 2014

11958585 (P.T.A.B. Dec. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LOC DUONG, RALPH E. GORDON, and
OLIVIER J. LAMICQ
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Appeal 2012-010484
Application 11/958,585
Technology Center 3700
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Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
THOMAS F. SMEGAL, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1–
10. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm but designate our affirmance of claims 5 and 10 as a new
ground of rejection under 37 C.F.R. § 41.50(b).
The claims are directed to a method to maximize resonance-free
running range for a turbine blade and the blade produced thereby. Claim 1,
reproduced below, is illustrative of the claimed subject matter:

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1. A method of modifying the natural frequency of an
airfoil for a gas turbine engine comprising the steps of:
a) identifying the natural frequency and identifying
whether that frequency will occur during the normal operating
speed range of an associated gas turbine engine;
b) identifying at least one anti-node of the airfoil; and
c) tuning the airfoil about the location of at least one
anti-node to move an interfered natural frequency outside the
expected operating speed range.

REJECTION
Claims 1–10 are rejected under 35 § U.S.C. 103(a) as being
unpatentable over Barb et al. (US 6,814,543 B2, iss. Nov. 9, 2004),
hereinafter “Barb,” in view of Liang et al. (US 7,395,799 B2, iss. July 8,
2008), hereinafter “Liang.”

OPINION
Appellants argue with specificity claims 1, 5, 6, and 10. The
Examiner thoroughly and correctly analyzed the issues raised by Appellants
concerning independent claims 1 and 6. See Advisory Act. of Mar. 5, 2012
and Ans. 3–8. We adopt the Examiner’s factual findings and legal analysis
concerning these claims as our own. See, e.g., In re Paulsen, 30 F. 3d 1475,
1478 n. 6 (Fed. Cir. 1994).
Regarding claims 5 and 10, we cannot agree with the Examiner that
the cited teaching in Liang to perform damping at a “specific” frequency
necessarily constitutes a teaching to “affect[] only [that] frequency . .
.without perturbing other non-interfered frequencies” as is required by
claims 5 and 10. See Ans. 5, 8 (citing Liang col. 5, ll. 7–14); App. Br. 3–4.
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Dampening or attenuation can occur at a “specific resonant frequency” while
either affecting or not affecting others.
The Examiner also cites “Barb et al. Col. 9–27” stating that “[Barb]
includes mapping the response over a spectrum of frequencies to ensure that
alterations do not excite non-interfered frequency and cause damage to the
turbine.” The Examiner’s citation is incomplete and we are unable to locate
any such express teaching in Barb.
Despite the shortcomings of the Examiner’s factual findings, we do
ultimately agree with the Examiner’s conclusion of obviousness concerning
the subject matter of claims 5 and 10. The entirety of Appellants’ disclosure
on this point is reproduced below:
By locating the tuned material at the anti-nodes, the present
invention maximizes the resonance free running range of the
frequency of interest without perturbing other non-interfered
frequencies.
Spec. 3.
In light of this disclosure, either the absence of perturbing is an
inherent result that naturally follows from tuning material at the anti-nodes,
or one skilled in the art would know how to tune the material in such a way
so as to not perturb other non-interfered frequencies. If neither of these is
true, Appellants’ description falls short of the requirements of 35 U.S.C.
§ 112, first paragraph.
Ultimately, claims 5 and 10 are akin to an instruction to “do no harm.”
There would be little sense in mitigating an undesirable resonance condition
at one blade frequency only to introduce it at another. Although it is not
expressly stated in the prior art, it would have been obvious to one skilled in
the art to apply the teachings of Barb and Liang so as to arrive at a
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functioning device. Perturbing non-interfered frequencies obviously has the
potential to frustrate that objective.
DECISION
The Examiner’s rejection is affirmed. However, as we have altered the
thrust of the Examiner’s rejection of claims 5 and 10, we designate our
affirmance of claims 5 and 10 as a new ground of rejection under 37 C.F.R.
§ 41.50(b).

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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; 37 C.F.R. § 41.50(b)

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