Ex Parte TraskDownload PDFPatent Trial and Appeal BoardJul 22, 201613346872 (P.T.A.B. Jul. 22, 2016) Copy Citation 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). 2 Appeal2014-007822 Application 13/346,872 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. 3 Appeal2014-007822 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 4 Appeal2014-007822 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." 5 Appeal2014-007822 Application 13/346,872 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 6 Appeal2014-007822 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 7 Copy with citationCopy as parenthetical citation