Ex Parte Lomasney et al

Patent Trial and Appeal Board

Nov 9, 2016

11931318 (P.T.A.B. Nov. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111931,318 10/31/2007 Gary M. Lomasney
54549 7590 11/14/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PA-5048-U: 67097-1225 1025
EXAMINER
SUNG, GERALD LUTHER
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
11/14/2016 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 GARY M. LOMASNEY and JOSEPH PARKOS JR.
Appeal2015-001128
Application 11/931,318
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3, 5, 16, 19, 20, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2015-001128
Application 11/931,318
CLAIMED SUBJECT MATTER
The claims are directed to an organic matrix composite component,
and an engine using such component. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1 An organic matrix composite component comprising:
a component made of an organic matrix composite;
a layer of aluminum applied to the organic matrix
composite; and
a titanium oxide exterior wear resistant coating applied to
the aluminum layer wherein the aluminum directly contacts the
organic matrix composite without an intervening layer of
adhesive being disposed therebetween.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Danroc
Bernard
Ghasripoor
US 6,159,618 Dec. 12, 2000
US 2006/0275626 Al Dec. 7, 2006
US 2008/0145554 Al June 19, 2008
REJECTION
Claims 1, 3, 5, 16, 19, 20, 22, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bernard, Ghasripoor, and Danroc.
OPINION
Appellants argue the rejection of claims 1, 3, 5, 16, 19, 20, 22, and 23
under 35 U.S.C. § 103(a) as a group. App. Br. 2--4. We select claim 1 as the
representative claim, and claims 3, 5, 16, 19, 20, 22, and 23 will stand or fall
with claim l. 37 C.F.R. § 41.3l(c)(l)(iv).
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Application 11/931,318
The Applied Prior Art
With regard to claim 1, 3the Examiner finds that Bernard discloses a
means for protecting the leading edges of blades or vanes of gas turbine
engine components, "especially when the blade is formed of an organic
matrix composite (OMC), see paragraph [0011 ], where the component
comprises an organic matrix composite layer la, [and] a layer of aluminum
alloy 5 applied to the organic matrix composite." Final Act. 3. The
Examiner further finds that "Gashripoor teaches a wear resistant coating
where an example of a wear resistant coating includes titanium oxide. See
Paragraph [0027]. Gashripoor further states 'the wear-resistant coating is
particularly useful as a coating for ... turbo machine component[ s].' See
paragraph [0053]." Id. The Examiner additionally finds that "Danroc
teaches that the deposition of a single layer of titanium may use the chemical
vapor deposition to deposit the layer. See column 7, lines 17-29. The use of
chemical vapor deposition would result in an aluminum layer that directly
contacts the OMC layer without an intervening adhesive layer." Id. at 4.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art at the time of the invention "to provide a wear resistant
coating comprising titanium oxide to the blade, vane or strut of Bernard as
taught by Gashripoor" (Id.) and "to use chemical vapor deposition as taught
by Danroc to apply the aluminum layer to the organic matrix composite of
Bernard because Bernard specifically contemplates adhesive techniques
known in the art for securing titanium. See paragraph [0011] of Bernard
disclosure." Id.
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Appeal2015-001128
Application 11/931,318
Teaching Away
Appellants contend that "an object of Bernard is to create light weight
parts that are lighter than prior art parts made of titanium. (Bernard [0006])."
App. Br. 3. As such, according to Appellants, "Bernard teaches away from
using titanium because titanium increases the weight of the part. (Bernard
[0005]). Instead, Bernard reinforces aluminum with SiC particles in order to
eliminate the use of titanium to reduce weight. (Bernard [0017])." Id.; see
also Reply Br. 1, 2.
"Whether a reference teaches away from a claimed invention [is a]
question of fact." In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). Our
reviewing court has required the presence of disparaging or criticizing
statements to find a teaching away. In re Fulton, 391F.3d1195, 1201 (Fed.
Cir. 2004). Our reviewing court also has consistently held that prior art
references must be considered as a whole. W.L. Gore & Assoc., Inc. v.
Garlock, Inc., 721F.2d1540, 1550 (Fed. Cir. 1983). Considering a
reference as a whole includes consideration of the reasons why a particular
combination is discouraged. Where those reasons might not be a concern to
those skilled in the art, a reference will not lead one skilled in the art away
from a particular combination. See, e.g., In re Nehrenberg, 280 F.2d 161,
164 (CCPA 1960):
[The prior art] has considered the use of the amount of carbon set
forth in appellant's claims, but regards it as undesirable for his
particular purpose of making a steel of high toughness . . . . [The
prior art still] suggest[ s] to those skilled in the art [the] carbon
content [according to the claims] ... if extreme toughness were
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Appeal2015-001128
Application 11/931,318
not desired . . . . A disclosure of a composition of matter in a
reference may be anticipatory even though the reference
indicates that such composition is not preferred or even that it is
unsatisfactory for the intended purpose.
In this regard, the Examiner asserts: "since the only concern with the
use of Titanium Oxide instead of Silicon Carbide would be weight, where
weight was not an issue, an ordinary skilled worker would not be deterred
from using Titanium Oxide instead of Silicon Carbide since Titanium Oxide
was known to protect against wear" (Ans. 4) and "the use of Titanium Oxide
on the blade of Bernard in an industrial gas turbine engine would provide the
same benefit as that of the Bernard aircraft engine but would be less subject
to weight issues." Id.
The independent claims on appeal do not specify that the organic
matrix composite component (claim 1) or the gas turbine engine (claim 16)
are to be used in environments \~1here \~1eight is a design factor, e.g., in
aviation applications. Indeed, the Specification expresses no intent to limit
the invention to such environments. ("[T]here is no intention to limit the
concepts described herein to use with turbofans as use with other types of
gas turbine engines and other applications that may not involve gas turbine
engines are contemplated.") Spec. 3. Therefore, where weight is not a
concern - and it is not a concern in independent claim 1 (or independent
claim 16) - the Bernard reference does not lead one away from the claimed
invention. Even if weight is a viable concern, Appellants do not apprise us of
any evidence to show that the Ghasripoor coating of Titanium Oxide has
similar weight characteristics to the layer of a TA6V titanium alloy Bernard
seeks to replace for aviation applications.
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Application 11/931,318
Moreover, although Bernard teaches that aluminum alloy reinforced
with silicon carbide (SiC) is lighter than titanium alloys (Bernard i-f 8),
according to Bernard "[u]ntil now, such protection parts have been made of
titanium alloy of the T A6V type. [T A6V] is technically viable, since the
alloy presents good resistance to erosion and to impacts." Bernard i-f 5.
With that as context, the Examiner asserts that a person of ordinary skill in
the art "could physically replace Silicon Carbide with Titanium Oxide, i.e.
such replacement was not impossible/impracticable; the use of Titanium
Oxide instead of Silicon Carbide would perform the same function as
separately taught because both Silicon Carbide and Titanium Oxide were
known to protect against wear." Ans. 3--4. We agree with the Examiner's
finding that a coating of titanium oxide would have been reasonably
expected to serve the desired protective function. See Ghasripoor i-fi-127, 53,
54.
Change in Principle of Operation and Unsuitability for Intended Purpose
As noted above, an object of the Bernard reference is to create lighter
weight parts than parts made of titanium alloy. Bernard i-f 6. Appellants
contend that using titanium-based materials as protective coverings for parts
of machines such as gas turbine engines adds undesirable weight to the parts,
thereby changing the principle of operation of Bernard and rendering
Bernard unsuitable for its intended purpose. App. Br. 3--4; Reply Br. 1.
However, as also noted above, the Specification expresses no intent to limit
the purpose of the invention set forth in claim 1 (or claim 16) to use in
environments where weight is a design factor, e.g., in aviation applications.
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Application 11/931,318
Moreover, the principle of operation of aircraft gas turbine engines (where
weight is a factor) and industrial gas turbine engines (where weight is not a
factor) are quite similar despite differences in purpose. According to the
Examiner
Both aircraft gas turbines and industrial power generating gas
turbines function on the same basic principle, i.e. the Brayton
cycle, where the largest difference is the purpose of the engine.
Namely, aircraft engines were used to produce thrust to propel
an aircraft and industrial engines were used to produce
electricity. Thus, benefits and improvements made to one engine
were often applicable to another, unless the improvement was
drawn to thrust production. Among those improvements useful
in both engines would be wear coatings for blades, vanes,
buckets, etc.
Ans. 4.
Still further, we are not aware, nor have Appellants apprised us, that a
coating of Titanium Oxide as compared to, for example, a coating of Silicon
Carbide significantly negatively impacts weight. However, even if some
benefit is lost in terms of using a coating of Titanium Oxide as opposed to
Silicon Carbide, we must consider the record as a whole while guarding
against the introduction of hindsight. See, e.g., In re Fritch, 972 F.2d 1260,
1265-66, n.12 (Fed. Cir. 1992) (quoting In re Gordon, 733 F.2d 900 (Fed.
Cir. 1984) ("This court has previously found a proposed modification
inappropriate for an obviousness inquiry when the modification rendered the
prior art reference inoperable for its intended purpose.")). Here, however,
the Ghasripoor Titanium Oxide coating will operate on the same principles
as before to resist wear of surfaces coated thereby and will not render the
Bernard component inoperable for its intended purpose as a turbine engine.
There are no per-se rules of obviousness. In re Ochiai, 71 F.3d 1565, 1571
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Application 11/931,318
(Fed. Cir. 1995) As is the case here, when considering the prior art as a
whole, a simple substitution may still be obvious to a skilled artisan even if
it involves omitting what Bernard regarded as his contribution to the art
along with the advantages it might provide. See, e.g., In re Umbarger, 407
F.2d 425, 430-31 (CCPA 1969).
Accordingly, based on the record presented, and for reasons discussed
above, we sustain the rejection of claims 1, 3, 5, 16, 19, 20, 22, and 23 under
35 U.S.C. § 103(a) as unpatentable over Bernard, Ghasripoor, and Danroc.
DECISION
The Examiner's rejection of claims 1, 3, 5, 16, 19, 20, 22, and 23 is
affirmed.
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)(l )(iv).
AFFIRMED
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