Ex Parte Woo et al

Patent Trials and Appeals Board

Mar 29, 2019

12474713 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/474,713 05/29/2009 Chee Kin Woo
54549 7590 04/02/2019
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.
53310US01;
67097-1123PUS1
CONFIRMATION NO.
2097
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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 CHEE KIN WOO, BALAJI RAO GARIMELLA,
KOK HAI LUAH, and JUN HAO FOO
Appeal 2018-003311
Application 12/474,713
Technology Center 1700
Before TERRY J. OWENS, DONNA M. PRAISS, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to finally reject claims 1, 3-12, 18-23, and 25-28, which are all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed May 29,
2009 ("Spec."); Final Office Action dated September 7, 2017 ("Final Act.");
Appeal Brief filed November 7, 2017 ("Appeal Br."); Examiner's Answer
dated January 3, 2018 ("Ans."); and Reply Brief filed February 5, 2018
("Reply Br.").
2 Appellants identify United Technologies Corporation as the real party in
interest. Appeal Br. 1.
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Application 12/474,713
The Claimed Subject Matter
Appellants' disclosure relates to a method for assisting in removal of
undesired substances from components, such as gas turbine engine
components, which includes exposing the component to a cleaning solution
and irradiating the component with microwave radiation. Spec. ,r 2;
Abstract.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (Appeal
Br. 9) (key disputed claim language italicized and bolded):
1. A method for cleaning a component having an undesired
substance thereon, comprising:
exposing the component to a cleaning solution, wherein
the cleaning solution is acidic and is in a liquid state;
irradiating the component that was exposed to the
cleaning solution with microwave radiation to assist in
removing the undesired substance from the component, wherein
the undesired substance on the component is a sulphidation
corrosion product of a substrate of the component, and wherein
irradiating the component that was exposed comprises heating
the undesired substance more than clean portions of the
component; and
wherein the method is characterized by an absence of
other sulphidation corrosion removal processes.
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Ngo et al.
("Ngo")
US 7,146,990 Bl
2
Dec. 12, 2006
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Application 12/474,713
Bostanjoglo et al. US 2007 /0170150 Al July 26, 2007
("Bostanjoglo")
Revesz EP 0467 625 A2 Jan.22, 1992
("EP 046725")
The Rejections
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 3-12, 18-23, and 25-27 are rejected under
35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, for non-
enablement ("Rejection 1 "). Ans. 3; Final Act. 2.
2. Claims 1, 3-12, 18-23, and 25-28 are rejected under
35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement ("Rejection 2"). Ans. 4;
Final Act. 3.
3. Claims 1, 3-12, 18-23, and 25-28 are rejected under
35 U.S.C. § I03(a) as being unpatentable over Ngo in view of Bostanjoglo
and EP 0467625 ("Rejection 3"). Ans. 5; Final Act. 5.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejection based on the fact-finding and reasoning set forth in the Answer and
Final Office Action, which we adopt as our own. We add the following.
Reiection 1
Appellants argue claims 1, 3-12, 18-23, and 25-27 as a group.
Appeal Br. 2. We select claim 1 as representative and claims 3-12, 18-23,
and 25-27 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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The Examiner rejects claim 1 for non-enablement. Ans. 3--4. In
particular, the Examiner finds that, although Appellants' Specification
specifically teaches that microwave radiation is required and used to
increase and maintain the temperature of the cleaning solution (see
Spec. ,r,r 21, 25, Fig. 2), the claims merely recite "irradiating the component
that was exposed to the cleaning solution." Id. at 4. The Examiner further
finds that, based on the Specification, irradiating the component while the
component is exposed to the cleaning solution is critical and essential to the
practice of the claimed method; however, such recitation is missing from the
claims. Id. at 3.
Thus, the Examiner determines that the Specification "does not enable
one of ordinary skill in the art to practice the invention without irradiating
the component while it is exposed to the cleaning solution." Id. at 3 ( citing
In re Mayhew, 527 F.2d 1229 (CCPA 1976)). In other words, the Examiner
determines that the scope of the claims, as recited, is broader than the scope
of enablement provided by the Specification to persons of ordinary skill in
the art.
Appellants argue that the Examiner's rejection should be reversed
because Appellants have "not, at any point, asserted or stated that any
features are essential to the practice of the invention" and the "examiner's
assertion that [the] features are essential is incorrect." Appeal Br. 2.
We do not find Appellants' argument persuasive of reversible error in
the Examiner's rejection. On the record before us, we find that the
preponderance of evidence supports the Examiner's determination that the
Specification does not enable one skilled in the art to perform the full scope
of the method of claim 1 without undue experimentation. In particular, we
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concur with the Examiner (Ans. 3--4) that the Specification does not enable
one of ordinary skill in the art to practice the claimed method without
irradiating the component while it is exposed to the cleaning solution.
When rejecting a claim for lack of enablement, "the [United States
Patent and Trademark Office] bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application .... " In re Wright,
999 F .2d 1557, 1561-62 (Fed. Cir. 1993) ( citing In re Marzocchi, 439 F .2d
220, 223-24 (CCP A 1971 )). "[T]o be enabling, the specification of a patent
must teach those skilled in the art how to make and use the full scope of the
claimed invention without 'undue experimentation."' Wright, 999 F.2d
1561.
Although the claimed method recites "irradiating the component that
was exposed to the cleaning solution with microwave radiation," as the
Examiner finds (Ans. 3--4), the Specification discloses that the microwave
radiation is required and used to increase and maintain the temperature of
the cleaning solution and provides support for irradiating the component
while the component is exposed to the cleaning solution, i.e., performing the
step of irradiating the component during the step of exposing the component
to the cleaning solution. See, e.g., Spec. ,r,r 6 ( disclosing that the method
"includes exposing the component to a cleaning solution and irradiating the
component with microwave radiation to assist in removing the undesired
substance from the component"), 18, 19, 21, 25, Fig. 2.
Moreover, although the claimed method, as recited, broadly
encompasses irradiating the component at any time after the component was
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exposed to the cleaning solution, the Specification does not provide any
working examples employing such a method. In re Wands, 858 F.2d 731,
737 (Fed. Cir. 1988) (identifying "the presence or absence of working
examples" in determining whether a disclosure would require undue
experimentation). The Specification also does not provide any specific
direction or guidance regarding, for example, what conditions might be used
or the quantity of experimentation necessary to practice the method, as
recited. Id. at 737.
Thus, we find that the original Specification, as filed, does not provide
sufficient guidance to allow one of ordinary skill in the art to be able to
make and use the full scope of the method recited in claim 1 without undue
experimentation. In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993)
("[T]he specification must teach those of skill in the art 'how to make and
how to use the invention as broadly as it is claimed."'); In re Fisher, 427
F .2d 833, 839 (CCP A 1970) ("[T]he scope of the claims must bear a
reasonable correlation to the scope of enablement provided by the
specification to persons of ordinary skill in the art.").
Appellants also argue that the Examiner's non-enablement rejection as
to claim 28 should be reversed because "claim 28 expressly states that the
step of irradiating is performed during the step of exposing the component to
the cleaning solution" and thus, is not subject to the rejection. This
argument is misplaced because claim 28 is not identified or included in the
list of claims subject to the Examiner's rejection for non-enablement.
Accordingly, we affirm the Examiner's rejection of claims 1, 3-12,
18-23, and 25-27 under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112,
first paragraph, for non-enablement.
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Re;ection 2
Appellants argue claims 1, 3-12, 18-23, and 25-28 as a group.
Appeal Br. 3--4. We select claim 1 as representative and claims 3-12, 18-
23, and 25-28 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejects claim 1 for failing to comply with the written
description requirement. Ans. 4--5. In particular, the Examiner determines
that adequate written descriptive support is not provided in the Specification
for "the method is characterized by an absence of other sulphidation
corrosion removal processes" recitation of the claim. Id. at 4.
Appellants argue that the Examiner's rejection should be reversed
because paragraph 14 of the originally filed Specification states that
"[t]he cleaning solution and microwave radiation may separate the substance
from a substrate surface of the component or, alternatively, loosen the
substance such that a subsequent removal action can more easily remove the
substance from a substrate surface of the component."
Appeal Br. 4.
Appellants contend that, based on paragraph 14' s disclosure, the
Specification explicitly contemplates two modes, including a first mode,
where the substance is entirely removed, and thus, would be "characterized
by an absence of other sulphidation corrosion removal processes," as recited
in the claim. Id. at 4.
The test for an adequate written description "requires an objective
inquiry into the four comers of the specification from the perspective of a
person of ordinary skill in the art ... [and] [b] ased on that inquiry, the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed."
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Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) ( en bane). Moreover, the "prior application itself must describe
an invention, and do so in sufficient detail that one skilled in the art can
clearly conclude that the inventor invented the claimed invention as of the
filing date sought." Lockwood v. American Airlines Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997).
On the record before us, we determine that "the method is
characterized by an absence of other sulphidation corrosion removal
processes" recitation of claim 1 is not adequately supported by the originally
filed Specification. As the Examiner finds ( 4--5), the originally filed
Specification does not explicitly or implicitly exclude or preclude the use of
any other sulphidation removal processes with the claimed method. Indeed,
the only discussion in the Specification regarding any other sulphidation
corrosion removal process is provided at paragraphs 3-5 of the
Specification, and none of these portions of the Specification include any
disclosure or provide sufficient written descriptive support for the
"characterized by an absence of other sulphidation corrosion removal
processes" recitation of the claim.
that
For example, paragraph 3 of the Specification states, in relevant part,
There are a variety of generally known methods for
removal of undesired substances from surf aces of a
component. For instance, gas turbine engine blades and
vanes may corrode from exposure to elevated
temperatures and exposure to the exhaust stream of the
engine. Type I sulphidation corrosion occurs at about
815-954°C (1499-1749 °F) and Type II sulphidation
corrosion occurs at about 704-954°C (1299-1749 °F).
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Spec. ,r 3; see also id. ,r 4 (disclosing that "[a]t least some known
conventional chemical methods may include immersion of the component in
one or more solutions for hours or even days to fully remove the
substance"), ,r 5 (disclosing that "[a]t least some known mechanical methods
may include grit blasting or other abrasive techniques").
We do not find persuasive Appellants' argument that paragraph 14
provides sufficient written descriptive support for the "characterized by an
absence of other sulphidation corrosion removal processes" recitation of the
claim (Appeal Br. 3--4; Reply Br. 1-3) based on the fact-finding and for the
reasoning provided by the Examiner at pages 4--5 and 9-11 of the Appeal
Brief. In particular, as the Examiner finds (Ans. 10-11), when read in its
entirety and in context, paragraph 14 does not provide adequate written
descriptive support for the limitation "the method is characterized by an
absence of other sulphidation corrosion removal processes." As the
Examiner finds (Ans. 11 ), the sentence that Appellants direct us to for
written descriptive support, at best, suggests two different modes of action of
the cleaning solution and microwave radiation. It, however, does not
disclose or provide written descriptive support for the negative limitation
regarding "the absence of other sulphidation corrosion removal processes"
recited in the claim.
Accordingly, we affirm the Examiner's rejection of claims 1, 3-12,
18-23, and 25-28 under 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
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Re;ection 3
In response to the Examiner's§ 103 rejection of claims 1, 3-12, 18-
23, and 25-28 as obvious over the combination of Ngo, Bostanjoglo, and EP
0467625, Appellants do not separately argue the patentability of the claims.
Appeal Br. 4. We select claim 1 as representative and claims 3-12, 18-23,
and 25-28 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Ngo, Bostanjoglo,
and EP 0467625 suggests a cleaning method satisfying all of the steps of
claim 1 and, thus, concludes that the combination would have rendered the
claimed method obvious. Ans. 5-7 (citing Ngo, col. 3, 11. 1-21, col. 3,
11. 14--21, col. 4, 11. 5--40 (Example); Bostanjoglo ,r,r 30-37; EP 0467625,
cols. 1-12).
The Examiner finds that Ngo teaches or suggests nearly all of
limitations of claim 1, but that the reference does not specify how the
cleaning solution is heated. Ans. 6-7. The Examiner, however, relies on
Bostanjoglo and EP 0467625 for teaching or suggesting the "irradiating the
component that was exposed to the cleaning solution with microwave
radiation" recitation of claim 1, and as evidence that "the use of microwave
sources to heat the fluids was notoriously well-known in the art." Id. at 7.
In particular, the Examiner finds that Bostanjoglo and EP 0467625
both teach that it was known in the art to use microwave radiation to heat
fluids to the desired temperatures and to maintain such temperatures. Id. at 7
(citing Bostanjoglo ,r,r 30-37 and EP 0467625, cols. 1-12). The Examiner
further finds that Bostanjoglo teaches the use of microwave heating in a
method of cleaning components (e.g., turbine blades and vanes) having
sulfidation corrosion products. Id. at 7; see also Bostanjoglo ,r,r 3 and 37.
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Based on the above findings, the Examiner concludes that:
It would have been obvious to an ordinary artisan at the
time the invention was made to use a known and
conventional way to heat and maintain temperature in the
acid treatment of Ngo et al with reasonable expectation
of success since Ngo et al do not exclude any type of
heating and since the use of microwave heating was
known in the art and since the use of microwave heating
was known in the art of removing sulfidation products
from turbine engine components.
Id. at 7.
Appellants principally argue that the Examiner's rejection of claim 1
should be reversed because the combination of Ngo and Bostanjoglo does
not teach all of the limitations of the claim and would destroy the
fundamental principle of operation of Ngo. Appeal Br. 4--7; Reply Br. 3--4.
In essence, Appellants contend that because claim 1 now expressly excludes
Ngo's additional step of removal of sulphidation corrosion in inert
atmosphere in a furnace using fluoride salts, the combination does not teach
or suggest "characterized by an absence of other sulphidation corrosion
removal processes" recitation of the claim and alters the fundamental
principle of Ngo. Appeal Br. 5---6.
We do not find Appellants' arguments persuasive of error in the
Examiner's rejection because, as previously discussed above in affirming the
Examiner's rejection of claim 1 for lack of written description (Rejection 2),
"the method is characterized by an absence of other sulphidation corrosion
removal processes" recitation of claim 1 is not adequately supported by the
originally filed Specification, and thus, does not satisfy the written
description requirement.
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Alternatively, even if we determined that the recitation did satisfy the
written description requirement, we still would not find Appellants'
arguments persuasive of reversible error in the Examiner's rejection.
Rather, on the record before us, we find that a preponderance of the evidence
and sound technical reasoning support the Examiner's analysis and
determination (Ans. 5-7, 11-15) that the combination of Ngo, Bostanjoglo,
and EP 0467625 suggests all of the limitations of claim 1, including the
negative limitation "wherein the method is characterized by an absence of
other sulphidation corrosion removal processes." Ngo, Abstract, col. 3,
11. 1-21, col. 4, 11. 5--40 (Example); Bostanjoglo, Abstract, ,r,r 30-37; EP
0467625, Abstract, cols. 1-12.
In particular, as the Examiner finds (Ans. 12-14), Ngo teaches that the
sulphidation corrosion, i.e., "black residue," is removed by immersing the
component in the acidic solutions (Ngo, col. 3, 11. 16-21), as claimed, and
not by any subsequent or additional sulphidation removal process. See, e.g.,
Ngo, col. 3, 11. 16-19 (disclosing that the "black residue" is "removed by
passing a dilute acid through the part and then washing with water to remove
the acid"), col. 4, 11. 21-23 ("Immerse component in 10% diluted Aqua
Regia (1 part HN03, 3 parts HCL) at 50° C. (122° F.) for 30 minutes to wash
the black residue from the part.").
Thus, we find that a preponderance of the evidence supports the
Examiner's finding (Ans. 14) that Ngo's black residue is actually removed
by the disclosed acid treatment and does not require any other removal
process except for the disclosed acid treatment.
Moreover, the fact that Ngo discloses a specific embodiment that
includes heating the component in a furnace in inert atmosphere using
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fluoride salts prior to the removal of the black residue (Ngo, col. 3, 11. 9-14)
does negate or take away from Ngo's broad disclosure regarding the use of
the acid treatment for removing the black residue from the component (id. at
col. 3, 11. 16-21) and for all it would have reasonably suggested to one of
ordinary skill in the art. See In re Mills, 470 F.2d 649, 651 (CCPA 1972)
( citation omitted) (" [A] reference is not limited to the disclosure of specific
working examples."); In re Preda, 401 F.2d 825, 826-27 (CCPA 1968)
("[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.").
Additionally, we note that the preamble of claim 1 recites
"comprising" transitional language and thus, the claim does not necessarily
exclude, for example, heating the component in a furnace in inert
atmosphere using fluoride salts prior to the removal of the black residue, as
described in Ngo' s embodiment.
The Examiner also provides a reasoned basis, which is supported by a
preponderance of the evidence in this appeal record, to evince why one of
ordinary skill would have combined the teachings of Ngo, Bostanjoglo, and
EP 0467625 to arrive at Appellants' claimed method. Ans. 7 (explaining
that one of ordinary skill would have combined the prior art's teachings
because the use of microwave heating was "a known and conventional way
to heat and maintain temperature in the acid treatment" and "known in the
art of removing sulfidation products from turbine engine components");
Bostanjoglo, Abstract, ,r,r 30-37; EP 0467625, Abstract, cols. 1-12.
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Appellants fail to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellants' assertions that the proposed combination would change or
destroy the principle of operation of Ngo (Appeal Br. 5---6; Reply Br. 3) are
not persuasive because they are conclusory. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997) (explaining that mere lawyer's arguments or conclusory statements,
which are unsupported by concrete factual evidence, are entitled to little
probative value).
Appellants' disagreement as to the Examiner's factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. Cf SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) ("[M]ere statements of disagreement
... as to the existence of factual disputes do not amount to a developed
argument.").
Accordingly, we affirm the Examiner's rejection of claims 1, 3-12,
18-23, and 25-27 under 35 U.S.C. § 103(a) as being unpatentable over the
combination Ngo, Bostanjoglo, and EP 0467625.
DECISION
The Examiner's rejections of claims 1, 3-12, 18-23, and 25-28 are
affirmed.
The Examiner's decision is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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