Ex Parte Rose

Patent Trial and Appeal Board

Aug 22, 2017

13492303 (P.T.A.B. Aug. 22, 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.
13/492,303 06/08/2012 William M. Rose PA0020734U-U73.12-791KL 5958
12208 7590 08/24/2017
Kinney & Lange, P.A.
312 South Third Street
Minneapolis, MN 55415
EXAMINER
HOLLY, LEE A
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
U S PatDocket @ kinney. com
amkoenck @ kinney. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM M. ROSE
Appeal 2015-007712
Application 13/492,3031
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
SEAN P. O’HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William M. Rose (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1—20. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, United Technologies Corporation is the real party
in interest. Br. 2 (filed Nov. 24, 2014).
Appeal 2015-007712
Application 13/492,303
INVENTION
Appellant’s invention relates to repairing a superalloy turbine
component by adding base metal to a damaged area. Spec., para. 7.
Claims 1 and 12 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A method of adding base metal to a superalloy
component, the method comprising:
identifying a region deficient in base metal;
preparing the region for addition of base metal;
subjecting the component to a preweld stress relief heat
treatment;
heating the component to a weld temperature;
adding base metal to the component by elevated
temperature cold metal transfer welding to exceed the original
dimensions of the component;
machining the component to original size specifications;
and
subjecting the component to a stress relief anneal.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 3, 4, 17, and 18 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written
description requirement.
II. The Examiner rejected claims 1, 2, 5—16, and 18—20 under 35
U.S.C. § 103(a) as being unpatentable over Lutz (US
2008/0028605 Al, published Feb. 7, 2008), Smashey (US
5,897,801, issued Apr. 27, 1999), and Hasselberg (US
2009/0241339 Al, published Oct. 1, 2009).
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Application 13/492,303
III. The Examiner rejected claims 6 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Lutz, Smashey, Hasselberg,
and Hall (US 7,841,506 B2, issued Nov. 30, 2010).
ANALYSIS
Rejection I
Appellant has not addressed the rejection of claims 3,4, 17, and 18
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. See Br. 3—4, footnote 1. Although we appreciate
Appellant’s proposed after-final amendment to the Specification and to
claims 3,4, 17, and 18, filed August 11, 2014, as the Examiner has not
entered the amendment (see Advisory Action transmitted August 21, 2014),
the rejection stands. See Ans. 3 (transmitted June 5, 2015). Accordingly,
Appellant has waived any argument of error, and we summarily sustain the
rejection of these claims. See Hyatt v. Dud as. 551 E.3d 1307, 1314 (Led.
Cir. 2008) (explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).
Rejection II
Claim 1
The Examiner finds that Lutz discloses most of the limitations of
independent claim 1, but fails to disclose “annealing the component by a
preweld stress relief heat treatment; heating the component to a weld
temperature; and using elevated temperature cold metal transfer welding.”
Final Act. 5 (transmitted June 11, 2014). Nonetheless, the Examiner finds
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Application 13/492,303
that Smashey discloses a method for weld repairing cracks in a nickel-based
superalloy including “annealing the component for a preweld heat treatment
stress relief. . . and heating the component to a weld temperature.” Id.
(citing Smashey, col. 2,11. 33—41, col. 5,11. 14—20, Fig. 1). The Examiner
further finds that Hasselberg discloses a process for repairing an airfoil
including adding base metal 84 to component 62 using cold metal transfer
welding. Id. (citing Hasselberg, para. 26, Figs. 5—7). Thus, the Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art “to provide a preweld heat treatment stress relief and heat the metallic
component of Lutz to a weld temperature as taught by Smashey in order to
provide an improved technique for repairing surface defects in articles by
avoiding very labor intensive, time consuming and expensive procedures.”
Id. (citing Smashey, col. 2,11. 1—8). The Examiner further reasons that
“us[ing] cold metal transfer welding to add material to the metallic
component of Lutz as taught by Hasselberg” would also have been obvious
to the person of ordinary skill in the art because it would “utilize less heat in
the process to facilitate reducing bum through or warp.” Id. at 6 (citing
Hasselberg, para. 26).
Appellant argues that, because the bulk material welding process of
Smashey is different from the cold metal transfer welding process of
Hasselberg, the Examiner employs impermissible hindsight and fails to
provide an adequate reason to combine their teachings. Br. 6—7; see also id.
at 10. Appellant asserts that “Hasselberg teaches away from using
[Smashey’s] ‘elevated temperature’ during the cold metal transfer welding
process” because Hasselberg specifically discloses using less heat during the
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Application 13/492,303
cold metal transfer welding process in order to reduce bum-through or
warping of the component being repaired. Id. at 7.
We are not persuaded by Appellant’s arguments because the
Examiner has provided an adequate reasoning with rational underpinning to
modify the weld repair process of Lutz’s metallic components by providing
a preweld stress relief heat treatment and a bulk heating of the metallic
components as taught by Smashey “in order to provide an improved
technique for repairing surface defects in articles by avoiding very labor
intensive, time consuming and expensive procedures.” See Ans. 6; see also
Smashey, Abstract. Moreover, the Examiner has provided an adequate
reasoning with rational underpinning to replace the TIG (tungsten inert gas)
welding repair process of Lutz with Hasselberg’s modified MIG (metal inert
gas) cold metal transfer welding process because it would “utilize less heat
in the process to facilitate reducing bum through or warp.” See Ans. 6; see
also Lutz, para 17; Hasselberg, para. 26); In re Kahn, 441 L.3d 977, 988
(Led. Cir. 2006) (“[R]ejections on obviousness grounds [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”). Hence, the Examiner’s modification is an
improvement to the weld repair process of Lutz’s metallic components in the
same way as taught by Smashey and Hasselberg that is nothing more than
the predictable use of prior art elements according to their established
functions and is therefore obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007).
The Examiner is correct in that Appellant has not shown persuasively
that Hasselberg’s modified MIG (metal inert gas) cold metal transfer
welding process cannot be used to repair Lutz’s metallic components that
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have been subjected to a preweld stress relief heat treatment and a bulk
heating, as taught by Smashey. See Ans. 7. There is no evidence of record
to suggest that, because Lutz’s metallic component is subjected to
Smashey’s preweld stress relief heat treatment and bulk heating, the
localized heating effect of Hasselberg’s modified MIG (metal inert gas) cold
metal transfer welding process would be affected such that it would not
reduce bum through or warp as taught by Hasselberg. See id. at 8.
Appellant does not point to any passage in Hasselberg that “criticize[s],
discredits] or otherwise discourage[s]” using the modified MIG (metal inert
gas) cold metal transfer welding process to repair metallic components that
have been subjected to a preweld stress relief heat treatment and to bulk
heating. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art
does not teach away from claimed subject matter merely by disclosing a
different solution to a similar problem unless the prior art also criticizes,
discredits or otherwise discourages the solution claimed).
Furthermore, we note that, like Appellant, Smashey specifically
discloses that welding should be performed without reducing the bulk
temperature of the metallic components in order “to avoid the introduction
of overly large strains and cracking prior to completion of the welding
operation.” Smashey, col. 6,11. 42-47; see also Spec., para. 18. As such,
employing Hasselberg’s modified MIG (metal inert gas) cold metal transfer
welding process to repair Lutz’s metallic components that have been
subjected to a preweld stress relief heat treatment and to bulk heating, as
taught by Smashey, would have been a “predictable use of prior art elements
according to their established functions.” See KSR, 550 U.S. at 417.
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Lastly, we do not agree with Appellant’s assertion that the Examiner
has ignored the limitation of “heating the component to a weld temperature,”
as called for by claim 1. Br. 7—8. The Examiner is correct that Smashey’s
disclosure of a preweld stress relief heat treatment at 2000-2200° F and a
bulk heating at 1750—2100° F “teach the claim limitation ‘heating the
component to a weld temperature’ as recited in independent claim 1.”
Ans. 9.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Lutz, Smashey, and
Hasselberg.
Claims 2, 6, 8—12, 13, 15, 16, and 18—20
Appellant relies on the arguments discussed supra in the rejection of
claim 1. Br. 8, 10. However, for the same reasons discussed above, we are
not persuaded of Examiner error and, thus, we also sustain the rejection of
claims 2, 6, 8—12, 13, 15, 16, and 18—20 over the combined teachings of
Lutz, Smashey, and Hasselberg.
Claim 5
Claim 5 depends from independent claim 1 and adds the limitation
“wherein preparing the region for addition of base metal comprises first
removing all coatings and exposing clean substrate material in the vicinity of
the weld site.” Br. 13, Claims App.
We do not agree with Appellant that the Examiner has erred in
rejecting claim 5 as unpatentable over Lutz, Smashey, and Hasselberg. See
id. at 8—9. The Examiner is correct that Lutz specifically discloses first
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removing the coatings from the component, then removing the damaged area
from the component, and then welding the component to restore the
component to its original dimensions. Ans. 11 (citing Lutz, paras. 15, 16).
Therefore, we also sustain the rejection the rejection of claim 5 under 35
U.S.C. § 103(a) as unpatentable over Lutz, Smashey, and Hasselberg.
Claims 7 and 14
Claim 7 depends from independent claim 1 and adds the limitation
“wherein the base metal weld addition temperature of the component during
elevated temperature cold metal transfer welding is from about 1700°F
(927°C) to about 1800°F (1204°C).” Br. 13, Claims App. Claim 14
depends from independent claim 12 and includes a similar limitation. Id.
at 14.
Appellant argues that, because Smashey discloses heating the
component to a preweld stress relief heat treatment at 2000-2200° F and
then reducing the temperature to 1750—2100° F for bulk heating the
component, the combined teachings of Lutz, Smashey, and Hasselberg fail
to disclose “adding base metal to the component by elevated temperature
cold metal transfer welding.” Br. 9; see also id. at 11. Appellant explains
that “the cold metal transfer welding process is elevated as compared to the
temperature of the component before the process,” whereas in the process of
Lutz, Smashey, and Hasselberg “the cold metal transfer welding process [is
performed] at a temperature that is reduced.” Id. at 9.
We are not persuaded by Appellant’s arguments because it is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, the
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Application 13/492,303
Examiner is correct in that the claims do not require that the weld
temperature of the component be higher than the temperature of preweld
stress relief heat treatment. See Ans. 12—13. Claim 1 requires “subjecting
the component to a preweld stress relief heat treatment” and “heating the
component to a weld temperature.” See Br. 12, Claims App. We agree with
the Examiner that Smashey discloses the above-mentioned limitations, as
Smashey discloses subjecting the metal components to a preweld stress
relief heat treatment and bulk heating the components to a temperature of
1750—2100° F before welding. See Ans. 14.
Moreover, like the Examiner, we note that, in contrast to Appellant’s
arguments, the Specification describes a preweld stress relief heat treatment
at 1700-2200° F and then a reduced weld temperature of 1700-1800° F for
bulk heating the components before welding. See id. at 13 (citing Spec.,
paras. 16, 18). Hence, interpreting claims 7 and 14 to require a weld
temperature that is higher than the temperature of the preweld stress relief
heat treatment, as Appellant argues, would be inconsistent with Appellant’s
Specification.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 7 and 14 over the combined teachings of Lutz, Smashey, and
Hasselberg.
Rejection III
Appellant does not set forth any separate arguments with respect to
this rejection. Accordingly, for the reasons discussed supra, we sustain the
rejection of claims 6 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Lutz, Smashey, Hasselberg, and Hall.
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SUMMARY
The Examiner’s decision to reject claims 3, 4, 17, and 18 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written description
requirement, is affirmed.
The Examiner’s decision to reject claims 1, 2, 5—16, and 18—20 under
35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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