Ex Parte Trask

Patent Trial and Appeal Board

Jul 22, 2016

13346872 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/346,872 01/10/2012 Richard D. Trask
54549 7590 07/26/2016
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.
67097-1650PUSl;PA0018924U 9388
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
07/26/2016 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 RICHARD D. TRASK
Appeal2014-007822
Application 13/346,872
Technology Center 1700
Before CATHERINE Q. TIMM, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 11-1 7 and 19-21 of Application
13/346,872 as anticipated under 35 U.S.C. § 102(b) and rejected claim 18
under 35 U.S.C. § 103(a) as obvious. Final Act. (September 11, 2013).
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 United Technologies Corp. is identified as the real party in interest.
Appeal Br. 1.
Appeal2014-007822
Application 13/346,872
BACKGROUND
The '872 Application describes a diffusion bonding machine for
manufacturing articles, e.g., hollow turbine blades. Spec. i-f 1. Hollow
turbine fan blades can be manufactured by diffusion bonding two halves to
one another. Id. i-f 2. Each blade half can include features, such as ribs, that
must mate precisely with each other to ensure the desired bonding between
the two halves of the fan blade. Id. i-fi-12, 32; Fig. 1.
Claim 11 is the '872 Application's sole independent claim. It is
reproduced below, with the limitation that is central to the issues discussed
in this appeal italicized:
11. A diffusion bonding machine comprising:
a work station;
a support structure configured to receive first and second
die sets, each of the first and second die sets configured to
receive a component within each of the first and second die
sets;
a heat transfer device at the vvork station and arranged
near the support structure and configured to transfer heat
relative to the die sets; and
a separating mechanism at the work station and
configured to provide a separated position in which a space is
provided between the first and second die sets with each of the
first and second die sets closed about its respective component
during heat transfer.
Appeal Br. 6 (Claims App.) (emphasis added).
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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 11-17 and 19-21 are rejected under 35 U.S.C. § 102(b) as
anticipated by Elly.2' 3 Final Act. 2.
2. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Elly and Burroughs.4 Final Act. 5.
DISCUSSION
Rejection 1. Appellant argues for reversal of this rejection based
upon the limitations of claim 11. Appeal Br. 3--4. Accordingly, we select
claim 11 as representative of the claims subject to this rejection. 37 C.F.R.
§ 41.37(c)(l)(iv). Claims 12-17 and 19-21 will stand or fall with claim 11.
The Examiner rejected claims 11-17 and 19-21 as anticipated by
Elly. Final Act. 2.
Appellant argues that the Examiner erred by finding that Elly
describes "a separating mechanism configured to provide a separated
position for first and second die sets where a space is provided between them
when each is closed about its respective component during heat transfer."
Appeal Br. 3 (emphasis omitted) (paraphrasing claim 1 ). In particular,
Appellant argues that Elly does not describe the claimed separating
mechanism because the bottom section Sb of the first die set is rigidly
2 US 4,153,405, issued May 8, 1979.
3 We have corrected the Examiner's apparently inadvertent omission of
claim 21 from the summary statement of Rejection 1. The detailed
explanation of the rejection indicates that the Examiner rejected claim 21 as
anticipated by Elly. See Final Act. 4.
4 US 1,450,481, issued April 3, 1923.
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Application 13/346,872
attached to the floating platen 5 which, in tum, is rigidly attached to the top
section 9a of the second die set. Appeal Br. 3 (citing Elly col. 3, line 61---col.
4, line 6; Fig. 1 ). Appellant argues that, due to this rigid attachment, Elly's
apparatus cannot provide the claimed "separated position," in which there is
a space between the first die set and the second die set because the space
between the die sets is occupied by floating platen 5. Id.
The Examiner responds that Appellant's arguments are unpersuasive
because claim 11 does not require empty or open space between the first and
second die sets when they are in the separated position: "[ e ]ven though there
is a platen between the die sets, they are still spaced apart from each other.
. . . The claim language is open and does not preclude anything being within
the space between the [die sets]." Answer 7.
Appellant also contends that the Examiner erred in finding that Elly
anticipates the claimed invention because Elly does not describe
simultaneously heating the first and second die sets when each is closed
about a component. Appeal Br. 3--4.
The Examiner responds that Appellant has adopted an unduly narrow
claim interpretation: "The claim does not require that the die sets be closed
at the same time." Answer 7 (original emphasis); see also Answer 8 ("The
claim does not require that both [die sets] are closed at the same time.").
Because the questions presented by this appeal tum upon the
interpretation of claim 11, we begin by considering the proper interpretation
of the disputed claim language. Oakley, Inc. v. Sunglass Hut Int 'l, 316 F .3d
1331, 1339 (Fed. Cir. 2003) (explaining that anticipation and obviousness
require comparison of the properly construed claims to the available prior
art); In re Paulsen, 30 F.3d 1475, 1479 (Fed. Cir. 1997) ("[T]o properly
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Application 13/346,872
compare [the prior art] with the claims at issue, we must construe the term
[in dispute] to ascertain its scope and meaning.").
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997).
In this case, we must consider the proper interpretation of the claim
language "a separating mechanism ... configured to provide a separated
position in which a space is provided between the first and second die sets
with each of the first and second die sets closed about its respective
component during heat transfer." First, we consider how a person of
ordinary skill in the art would have understood this language at the time of
the invention, giving the words their ordinary meaning. We begin by noting
that the phrase "configured to" is frequently used to mean "made to" or
"designed to." See In re Man Machine Interface Techs., LLC, No. 2015-
1562, 2016 WL 1567181, at *2 (Fed. Cir. April 19, 2016) (citing In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014)). Furthermore, a person
having ordinary skill in the art would interpreted the word "provide" to
mean "to supply or make available." See "Provide," Webster's Ninth New
Collegiate Dictionary 948 (1989).
Thus, a person having ordinary skill in the art would understand this
claim limitation to be directed to a separating mechanism that is designed to
supply a "separated position." The person of ordinary skill in the art would
further understand that the rest of the claim limitation defines what is meant
by the term "separated position."
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In particular, the claim specifies that a "separated position" is one in
which each of the first and second die sets is closed around a component and
in which there is a space between the first die sets and the second die sets. A
person having ordinary skill in the art would have understood that the term
"space" ordinarily means "a limited extent in one, two, or three dimensions:
DISTANCE, AREA, VOLUME" or a "physical space independent of what
occupies it- called also absolute space." "Space," Webster's Ninth New
Collegiate Dictionary 1129 (1985). Thus, in the absence of consideration of
Appellant's Specification, a person having ordinary skill in the art would
understand that the term space includes a three-dimensional volume that
may or may not be empty.
Next, we tum to Appellant's Specification to determine whether, and
to what extent, it would have provided a person having ordinary skill in the
art with a different understanding of the claim's meaning. After
consideration of the Specification, we conclude that it would have led a
person having ordinary skill in the art to believe that claim 11 's proper
meaning, when considered in the context of the '872 Application's
Specification, is narrower than its ordinary meaning. In particular, the
Specification clarifies the meaning of the terms "provide a separated
position" and "space."
With respect to the phrase "provide a separated position," the
Specification describes a separating mechanism that moves the first and
second die sets from a non-separated position to a separated position during
the diffusion bonding process. See Spec. i-fi-19-14, 33-36, 38; Figs. 5A, 6A.
That is, the separating mechanism acts upon the die sets to separate them as
part of the process. In view of this description, a person having ordinary
skill in the art would have understood that the claimed separating
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Application 13/346,872
mechanism must do more than simply define the space between the first die
set and the second die set by keeping the die sets in a spaced apart
relationship throughout the entire diffusion bonding process.
With respect to the term "space," the Specification would have led a
person of ordinary skill in the art to an understanding that the space between
the first die set and the second die set is not occupied by other structure. See
Spec. iTiT 34, 36, 38; Fig. 6A.
In view of the foregoing, we conclude that the Examiner used an
unreasonably broad interpretation of claim 11 's language in formulating the
anticipation rejection. We, therefore, reverse the rejection of claim 11. We
also reverse the rejection of the pending claims 12-17 and 19-21 for the
same reason.
Rejection 2. The Examiner rejected claim 18 as unpatentable over
the combination of Elly and Burroughs. Final Act. 5.
Appellant contends that this rejection should be reversed because
Burroughs does not cure the alleged deficiencies of Elly with respect to
claim 11, from which claim 18 depends. Appeal Br. 4.
Because we have reversed the rejection of claim 11 as anticipated by
Elly, we also reverse the rejection of claim 18.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 11-
21 of the '872 Application.
REVERSED
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