MTU Aero Engines AG

Patent Trials and Appeals BoardJun 1, 2020

14948526 - (D) (P.T.A.B. Jun. 1, 2020)

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. 14/948,526 11/23/2015 Karl-Hermann RICHTER 6570-P50260 3685 13897 7590 06/01/2020 Abel Schillinger, LLP 5929 Balcones Drive Suite 300 Austin, TX 78731 EXAMINER PATEL, DEVANG R ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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): hmuensterer@abel-ip.com mail@Abel-IP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KARL-HERMANN RICHTER and HERBERT HANRIEDER __________ Appeal 2019-004488 Application 14/948,526 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and DEBRA L. DENNETT, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of claims 1–20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s invention is directed to a method for arranging a reinforcement on a TiAl turbomachine engine component, such as a rotor blade of a low-pressure turbine (Spec. 1:11–14). Turbine rotor blades may 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as MTU Aero Engines AG (Appeal Br. 3). Appeal 2019-004488 Application 14/948,526 2 comprise cover shrouds, which lie adjacently against one another in an engine (id. at 1:16–17; Fig. 1). The Specification describes that the adjacent side faces of cover shrouds may have contact areas, which butt directly against each other to dampen vibration (id. at 1:17–20; Fig. 1). According to the Specification, a reinforcement arranged on these contact areas reduces the amount of mechanical abrasion between the cover shrouds (id. at 1:20– 22; Figs. 1–4). Claims 1 and 2 are illustrative (emphasis added): 1. A method for arranging a reinforcement on a TiAl component of a turbomachine, wherein the method comprises applying to the TiAl component a reinforcement in the form of reinforcing molding by brazing, using as brazing filler metal a nickel-base alloy which consist[s] of, based on a total weight of the alloy, from 7.5 % to 22.5 % by weight Cr and from 0.5 % to 7 % by weight B, remainder Ni and unavoidable impurities. 2. The method of claim 1, wherein the nickel-base alloy comprises from 10 % to 20 % by weight Cr and from 2 % to 5 % by weight B. Appellant appeals the following rejections: 1. Claims 2–7 are rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. 2. Claims 1–13 and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Richter et al. (US 8,393,528 B2, issued Mar. 12, 2013) (“Richter”) in view of Daniels et al. (WO 2013/071909 A1, published May 23, 2013, referencing the English language equivalent US 2014/0308117 A1, published Oct. 16, 2014) (“Daniels”), and further in view of Wall Colmonoy Corp. (USA), “NICROBRAZ® Appeal 2019-004488 Application 14/948,526 3 Special Purpose Filler Metals, Brazing Filler Metal Selector Chart” (2013) (“Wall Colmonoy”). 3. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over Richter in view of Daniels and Wall Colmonoy, and further in view of Qu et al. (US 2010/0252146 A1, published Oct. 7, 2010) (“Qu”). 4. Claims 15–18 are rejected under 35 U.S.C. § 103 as unpatentable over Richter in view of Daniels and Wall Colmonoy, and further in view of Frost et al. (US 6,164,916, issued Dec. 26, 2000) (“Frost”). 5. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over Richter in view of Daniels and Wall Colmonoy, and further in view of Martin (US 2013/0119048 A1, published May 16, 2013). With respect to the obviousness rejections, Appellant offers separate arguments in support of independent claim 1 and dependent claim 15 (see generally Appeal Br. 7–12, 14–15; Reply Br. 2–5). Appellant argues claims 1–20 as a group (Appeal Br. 7–15). Dependent claims 2–14 and 16–20 will stand or fall with our analysis of independent claim 1. Claim 15 will be discussed separately. FINDINGS OF FACT & ANALYSIS After review of the respective positions provided by Appellant and the Examiner, we affirm the Examiner’s rejections for the reasons presented by the Examiner and add the following for emphasis. A. Rejection of claims 2–7 as indefinite. The Examiner finally rejected claims 2–7 under 35 U.S.C. § 112(b) as indefinite because the open-ended language “‘the nickel-base alloy comprises’” conflicts with the language “‘a nickel-base alloy which Appeal 2019-004488 Application 14/948,526 4 consist[s] of,’” as recited in claim 1 (Final Act. 3). Claims 2–7 ultimately depend from claim 1. According to the Examiner, the dependent claims each recite an “open-ended transitional term,” which “does not exclude additional elements,” whereas claim 1 recites a “closed-end transitional phrase (i.e.[,] excludes other elements in the nickel-base alloy)” (Ans. 4). The Examiner concludes that claims 2–7 fail to “clearly set forth the metes and bounds of the patent protection desired” because each claim recites broad and narrow ranges (Final Act. 2; see also Ans. 4). Appellant contests the Examiner’s rejection of claims 2–7 under 35 U.S.C. § 112(b) as indefinite as a group (Appeal Br. 6; Reply Br. 2). Accordingly, we select dependent claim 2 as representative of the subject matter rejected under 35 U.S.C. § 112(b) before us on appeal. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that dependent claim 2 incorporates all of the limitations recited in independent claim 1 (Appeal Br. 6). Appellant argues that the range recited in claim 2 is “narrower than [and inside] the corresponding ranges recited in claim 1” (id.). Appellant contends that claim 2 cannot “be broader in scope than claim 1,” pursuant to 35 U.S.C. § 112(d) (Reply Br. 2). In the examination context, the relevant inquiry under 35 U.S.C. § 112(b) is “to determine whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (emphasis added) (pre-AIA statute); see also In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (“[a] claim is indefinite when it contains words or phrases whose Appeal 2019-004488 Application 14/948,526 5 meaning is unclear”) (alteration in original); Ex parte McAward, 2017 WL 3669566, at *2–6 (PTAB Aug. 25, 2017) (precedential). In this case, Appellant admits that due to the recitation of the term “comprises,” claim 2 “would theoretically allow the additional presence of elements which are different from those recited in claim 1” (Reply Br. 2, compare with Ans. 4). In our view, the Examiner correctly determined that claim 2 “does not clarify whether the nickel-base alloy is open-ended or closed-ended” (Ans. 4). We, thus, conclude that claim 2 does not meet the necessary thresholds of clarity and precision in describing and defining the claimed invention. See McAward, 2017 WL 3669566 at *4 (explaining that a “lower threshold [for ambiguity] makes good sense during patent examination because the patent record is in development and not fixed, the Office construes claims broadly during that period, and an applicant may freely amend claims”). We, therefore, affirm the indefiniteness rejection of claims 2–7. 37 C.F.R. § 41.37(c)(1)(iv). As set forth above, Appellant argues for reversal of the obviousness rejections based on limitations recited in claims 1 and 15 (Appeal Br. 7–15). The Examiner has not rejected these claims under 35 U.S.C. § 112(b) as indefinite. We exercise our discretion to review the obviousness rejections due to the particular facts of and issues presented by this case. See Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991) (exercising discretion to reach art rejections despite indefiniteness where nature of the case permitted). We address the § 103 rejections below. Appeal 2019-004488 Application 14/948,526 6 B. Rejection of Claims 1–13 and 20 as unpatentable over the combination of Richter, Daniels, and Wall Colmonoy. With respect to claim 1, the Examiner’s findings and conclusions regarding Richter, Daniels, and Wall Colmonoy are located on pages 3–5 of the Final Office Action and pages 5–9 of the Answer. The Examiner finds that Richter teaches or suggests applying a reinforcement to a TiAl turbine blade component by brazing a nickel-base alloy, such as AMS 4777, at about 1050°C (Ans. 6). The Examiner finds that Daniels teaches or suggests armoring TiAl turbomachine and aircraft engine components by brazing a nickel-base alloy, such as AMS 4777, at about 1000–1080°C (id.). The Examiner finds that Wall Colmonoy discloses commercially known nickel-base alloys brazing materials, which confer good strength to jet engine parts and highly stressed components (id.). The Examiner finds that Wall Colmonoy discloses Nicrobraz® 150 alloy brazing material, which is made of 15% Cr, 3% B, 0.06% max C, and balance Ni, and brazed at 1065–1205°C (id.). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to have selected a suitable nickel-base alloy brazing material, such as Nicrobraz® 150, for use in Richter’s method because nickel-base alloys are commonly known for brazing TiAl turbomachine parts and would have conferred good strength at a lower brazing temperature (Final Act. 5). Appellant argues that claim 1 requires that “the nickel-base alloy used as brazing filler metal consists of, based on the total weight of the alloy, from 7.5 % to 22.5 % by weight Cr and from 0.5 % to 7 % by weight B, remainder Ni and unavoidable impurities” (Appeal Br. 8). Appellant Appeal 2019-004488 Application 14/948,526 7 contends that the nickel-base alloys disclosed in Richter and Daniels contain iron and silicon, which cannot qualify as the claimed “unavoidable impurities” (id. at 8–9). Appellant concludes that neither Richter nor Daniels teach the claimed nickel-base alloy used as a brazing filler metal (id. at 8). Appellant’s argument is not persuasive because the Examiner does not rely on Richter or Daniels to teach the claimed nickel-base alloy (Ans. 11). Rather, the Examiner finds that Wall Colmonoy’s Nicrobraz® 150 “meets the claimed nickel-base alloy” (Final Act. 4 (citing Wall Colmonoy 2) (emphasis omitted)).2 Appellant’s argument attacks Richter and Daniels individually instead of addressing what the combined teachings of Richter, Daniels, and Wall Colmonoy would have suggested to the ordinarily skilled artisan. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). Appellant argues that the rejection of claim 1 should be reversed because Richter teaches away from the Examiner’s proposed combination with either Wall Colmonoy or Daniels (see generally Appeal Br. 9–11). Appellant specifically argues Richter teaches that a brazing temperature no higher than about 900°C is advantageous because TiAl cannot tolerate higher brazing temperatures (id. at 9). Appellant contends that brazing at Richter’s recommended temperature range is facilitated by 2 Appellant does not dispute the Examiner’s finding regarding Wall Colmonoy (Appeal Br. 10 (“Nicrobraz® 150 for brazing TiAl materials . . . are [sic, is] recited in the instant claims”)). Appeal 2019-004488 Application 14/948,526 8 the inclusion of a high content of noble metals in the nickel-base alloy (id.). In view of Richter’s disclosure, Appellant argues that one of ordinary skill in the art would have been led away from using Daniels’ nickel-base alloys, which are free of noble metals (id.) Appellant also contrasts Richter’s recommended brazing temperature range with Wall Colmonoy’s temperature range for Nicrobraz® 150, namely 1065–1205oC (id. at 10). In other words, Appellant argues that the ordinarily skilled artisan would have been led away from using Nicrobraz® 150 because it requires brazing temperatures that exceed Richter’s recommended brazing temperatures (id.). Teaching away requires that a reference “criticize, discredit, or otherwise discourage the solution claimed” by Appellant. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, the Examiner explains that Richter discloses, inter alia, two alternative brazing options: (i) one using an intermediate foil or plate layer and (ii) another which does not use an intermediate layer (id. at 5 (citing Richter 2:1–31; Figs. 2, 3)). Appellant’s arguments focus on Richter’s intermediate layer option, which employs a nickel-base alloy with a high content of noble metal brazed at a temperature equal to or less than 900°C (Richter 2:11–17; Fig. 3). The Examiner, however, does not rely on this option (Ans. 6). Rather, the Examiner relies on Richter’s method in which no intermediate layer is present and, consequently, noble metals are not required in the nickel-base alloy material (id. (citing Richter 3:26–33; Fig. 2)). Thus, we are not persuaded that Richter would have led the ordinarily skilled artisan away from using nickel-base alloys, which are free of noble metals, such as Appeal 2019-004488 Application 14/948,526 9 Richter’s and Daniels’ AMS 4777 (Daniels ¶ 14) and Wall Colmonoy’s Nicrobraz® 150 (Wall Colmonoy 2). We, furthermore, agree with the Examiner that Richter’s non- intermediate layer option, with a brazing temperature of about 1050°C, does not discourage one of ordinary skill in the art from brazing at a temperature greater than 900°C (Ans. 6). Appellant, however, particularly argues that Richter “clearly teaches away from using Nicrobraz® 150 for brazing TiAl materials” because Richter discloses that, “even for only a short period of time[,] the brazing temperature of a [TiAl] material should not be higher than 1050 °C” to avoid base material damage (Appeal Br. 10). According to Appellant, one of ordinary skill in the art would have concluded that satisfactory results are usually achieved at Wall Colmonoy’s suggested Nicrobraz® 150 brazing temperature of 1175°C (id.; Reply Br. 4). Appellant argues that 1175°C is “a significantly higher temperature” than the lower end of Nicrobraz® 150’s brazing temperature range, i.e., 1065°C, and not within Richter’s recommend brazing temperature of about 1050°C for only a short time period (Reply Br. 4; see also Appeal Br. 11). We are not persuaded by these arguments. Wall Colmonoy’s suggested brazing temperature of 1175°C does not detract from Wall Colmonoy’s broader teaching to braze Nicrobraz® 150 at a temperature range of 1065–1205°C. In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that “[i]t is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art”)). All disclosures of a reference including non-preferred embodiments must be Appeal 2019-004488 Application 14/948,526 10 considered in the obviousness analysis. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Richter, furthermore, does not criticize or discourage brazing at temperatures higher than about 1050°C for a short time period (see also Adv. Act. 3 (explaining that the ordinarily skilled artisan would have appreciated that a “brazing temperature of 1065 °C is very close to ‘about 1050 °C’ permitted by Richter”)). Richter does not indicate that “the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Therefore, we do not find that Richter teaches away from applying a reinforcement to a TiAl turbine blade component by brazing Wall Colmonoy’s Nicrobraz® 150 at 1065–1205oC for a short time period. Appellant argues that Richter, Daniels, and Wall Colmonoy disclose other braze materials, which use a much lower brazing temperature and are readily available (Appeal Br. 12). Appellant argues that selecting any of these other braze materials would have avoided the risk that brazing with Nicrobraz® 150 at 1065°C for a short period of time results in: (i) damaging the TiAl base material and (ii) incompletely and insufficiently brazing Richter’s reinforcement to the TiAl material (id.). A person of ordinary skill in the art, however, would have understood and weighed the tradeoff of base material damage and insufficient brazing with the benefits. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). As Appeal 2019-004488 Application 14/948,526 11 set forth above, the Examiner finds that brazing Nicrobraz® 150 confers the benefit of good strength to jet engine parts and highly stressed components (Final Act. 6). We, thus, agree with the Examiner that one of ordinary skill in the art at the time of the invention would have understood that Richter’s reinforcement can be sufficiently brazed onto a TiAl turbine blade component, at a temperature range from about 1000–1200°C, depending on the specific nickel-base alloy used as braze material (Ans. 7). Therefore, Appellant’s arguments fail to show reversible error in the Examiner’s conclusion that it would have been obvious to carry out such brazing using the claimed nickel-base alloy as a braze material (id. at 8). Thus, based on a preponderance of evidence in this record, we affirm this rejection of claims 1–13 and 20. 37 C.F.R. § 41.37(c)(1)(iv). C. Rejection of claim 14 as unpatentable over the combination of Richter, Daniels, Wall Colmonoy, and Qu. Appellant argues that the rejection of claim 14 as unpatentable over the combination of Richter, Daniels, Wall Colmonoy, and Qu should be reversed because the Examiner has not established a prima facie case of obviousness with respect to independent claim 1 (Appeal Br. 13). As discussed above, we have affirmed the rejection of claim 1. We, therefore, also affirm the rejection of claim 14. D. Rejection of claims 15–18 as unpatentable over the combination of Richter, Daniels, Wall Colmonoy, and Frost. Appellant argues that the rejection of claims 15–18 as unpatentable over the combination of Richter, Daniels, Wall Colmonoy, and Frost should be reversed because the Examiner has not established a prima facie case of Appeal 2019-004488 Application 14/948,526 12 obviousness with respect to independent claim 1 (id. at 14). As discussed above, we have affirmed the rejection of claim 1. We, therefore, also affirm the rejection of claims 16–18. We address the § 103 rejection of claim 15 below. 1. Claim 15 With respect to claim 15, the Examiner’s findings and conclusions regarding Richter, Daniels, Wall Colmonoy, and Frost are located on page 7 of the Final Office Action and page 9 of the Answer. Claim 15 is illustrative (emphasis added): 15. The method of claim 1, wherein the TiAl component is provided with a pocket which is at least partially complementary to the reinforcing molding. The Examiner finds that Frost is “directed to brazing [a] wear- resistant hardfacing material to [a] shrouded turbine blade” (Final Act. 7). The Examiner finds that Frost teaches or suggests a pre-braze cleaning of an intended mating face of shroud 10 to which an alleged reinforcing molding, i.e., hardfacing preform 28, is subsequently brazed (id.) The Examiner finds that Frost’s intended mating face “is machined by milling or grinding and nickel-blasted to roughen the surface to assist with bonding” (id.). The Examiner determines that it would have been obvious to a person of ordinary skill in the art at the time of the invention “to perform [a] pre- braze cleaning treatment similar to Frost in the method of Richter in order to assist with subsequent bonding” (id.). The Examiner construes the instant claim as not limiting the recited “pocket” to any specific structure or size (Ans. 9). The Examiner finds that Frost’s machining and blasting treatment creates at least one pocket or cavity on the component’s surface that is at Appeal 2019-004488 Application 14/948,526 13 least “partially complementary” to the reinforcing body’s surface, as required by claim 15 (id.) Appellant argues that Frost neither teaches nor suggests “a pocket which is at least partially complementary to the reinforcing molding” (Appeal Br. 14). Appellant contends that the Examiner has not shown that the disputed limitation is necessarily present in Frost’s disclosure or naturally results from the Examiner’s proposed combination of Richter, Daniels, Wall Colmonoy, and Frost (Reply Br. 5). Appellant’s arguments are misplaced because they fail to address the Examiner’s broadest reasonable interpretation of the claim term “pocket.” “During examination ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citation omitted). The best source for understanding a technical term is the specification from which it arose, informed, as needed, by the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005). Dictionary definitions may be used in tandem with the specification and prosecution to enlighten the broadest reasonable interpretation of a claim term. In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007). Our review of the Specification reveals that the claimed pockets are not limited to any particular structure or size (Spec. 8:18–20 (“[t]he pockets 16 may have a form that is at least partially complementary to the form of the reinforcing moldings 10, in particular a concave curvature 17”) (emphasis added)). Otherwise, the Specification does not provide any Appeal 2019-004488 Application 14/948,526 14 special meaning for the claim term “pocket.” Furthermore, the Webster’s New World College Dictionary defines “pocket” as “a cavity that holds or can hold something.”3 Accordingly, “pocket,” construed in the absence of a special meaning from the Specification and understood by the plain meaning of that word, encompasses any cavity capable of holding something. Therefore, in the context of a TiAl component, the dictionary definition further supports the Examiner’s position that a “pocket” encompasses a cavity created by Frost’s machining and blasting treatment on the component’s surface that is at least partially complementary to the reinforcing body’s surface. Thus, we agree with the Examiner that Frost’s pre-braze treatment necessarily results in the formation of at least one pocket within the meaning of claim 15. E. Rejection of claim 19 as unpatentable over the combination of Richter, Daniels, Wall Colmonoy, and Martin. Appellant argues that the rejection of claim 19 as unpatentable over the combination of Richter, Daniels, Wall Colmonoy, and Martin should be reversed because the Examiner has not established a prima facie case of obviousness with respect to independent claim 1 (Appeal Br. 15). As discussed above, we have affirmed the rejection of claim 1. We, therefore, also affirm the rejection of claim 19. 3 Webster’s New World College Dictionary (2014) available at https://www.yourdictionary.com/pocket. Appeal 2019-004488 Application 14/948,526 15 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2–7 112(b) Indefiniteness 2–7 1–13, 20 103 Richter, Daniels, Wall Colmonoy 1–13, 20 14 103 Richter, Daniels, Wall Colmonoy, Qu 14 15–18 103 Richter, Daniels, Wall Colmonoy, Frost 15–18 19 103 Richter, Daniels, Wall Colmonoy, Martin 19 Overall Outcome 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED