Steven J. Bullied et al.

Patent Trials and Appeals Board

Jul 7, 2020

14937988 - (D) (P.T.A.B. Jul. 7, 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.
14/937,988 11/11/2015 Steven J. Bullied 67097-1373PUS2;
56479US02
6976
54549 7590 07/07/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
YUEN, JACKY
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
07/07/2020 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN J. BULLIED, CARL R. VERNER, and
GAURAV M. PATEL1
____________

Appeal 2019-002899
Application 14/937,988
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHELLE N. ANKENBRAND, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 4, 7–9, and 11–17. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of die casting
components with integral seals. E.g., Spec. ¶ 2; Claim 1. Claim 1 is
reproduced below from page 9 (Claims Appendix) of the Appeal Brief:

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 United
Technologies Corporation. Appeal Br. 1.
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1. A method of die casting a component with an integral seal,
comprising:
positioning an insert that defines an open cell structure such that
the insert is within a first opening formed in a first die element
of a die and does not extend into a second opening formed in a
second die element of the die;
injecting molten metal into the first opening and the second
opening; and
solidifying the molten metal within the first opening and the
second opening to form the component with the integral seal,
wherein the molten metal solidifying in the first opening forms
the integral seal and the molten metal solidifying in the second
opening forms the component.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 1, 4, 7–9, 11, 13, 14, and 16 over Schirra
(US 2002/0005233 A1, published Jan. 17, 2002), Lawer
(US 2001/0031201 A1, published Oct. 18, 2001), Bottome
(US 2010/0158676 A1, published June 24, 2010), and Haug
(US 6,648,055 B1, issued Nov. 18, 2003).
2. Claims 12 and 15 over Schirra, Lawer, Bottome, Haug, and
Alvanos (US 2008/0260522 A1, published Oct. 23, 2008).
3. Claim 17 over Schirra, Lawer, and Mashiko (US 6,085,830, issued
July 11, 2000).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
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Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated February 7, 2018, and in the Examiner’s Answer.
Rejection 1
The Appellant argues the claims as a group. We select claim 1 as
representative, and the remaining claims subject to Rejection 1 will stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s statement of the rejection of claim 1 appears at
pages 3–5 of the Final Action. As the Examiner summarizes in the Answer:
[T]he rejections of the claims are based on a combination of
Schirra, Lawer, Bottome, and Haug, where Schirra discloses die
casting of gas turbine engine components, including seals
(abstract), and [] Lawer teaches gas turbine engine seals
(abstract) and suggests integrally casting a seal structure into the
seal segment (paragraph [0047]), where the sealing structure has
an open cell shape (paragraph [0003], [0032-0033], [0041]).
Bottome shows using an insert to form the integrated structure
(combination thereby suggesting using an insert with the open
cell shape) and Haug shows an arrangement of positioning an
insert in a die such that the inserts will not be damaged by kinetic
energy of the casting material during die casting (an
arrangement, such as seen in figures 1-2 and 5-7b of Haug, is
positioned within a first opening formed in a first die element and
does not extend into a second opening formed in a second die
element). The insert for the casting of a turbine blade seal in the
combination would thus be shaped as the honeycomb abradable
seal of Lawer for forming turbine blade seals (as discussed in
Schirra and Lawer).
Ans. 4.
The Appellant first argues that, because Haug discloses the use of an
insert to produce a “dense and pore-free penetration structure,” “[m]odifying
the casting method of Schirra/Lawer/Bottome in view of the teachings of
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Haug would not result in forming a component with an integral seal having
‘an open cell structure.’” Appeal Br. 4.
That argument is not persuasive because it attacks the references
individually and does not meaningfully show error in the Examiner’s
combination rationale. See In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.”).
The Examiner is proposing the use of an open cell insert in view of Lawer
and Bottome, see Final Act. 4–5; not the use of Haug’s insert to produce
Haug’s structure.
The Appellant also argues that “Bottome discloses abradable inserts
92, 94 that are positioned directly between two dies 104, 106 for integrally
molding the inserts 92, 94 with the body of a component with a strong
joint.” Appeal Br. 5. The Appellant argues that, because Bottome’s inserts
are the inserts on which the Examiner relies, a person of ordinary skill in the
art would “select the positioning of the insert of Bottome,” i.e., between two
die elements, “rather than the position of the insert of Haug,” i.e., within an
opening of a first die element. Id.
That argument is not persuasive. As the Appellant’s argument shows,
it was known in the art to position an insert either between two die elements,
as in Bottome, or within an opening of one element, as in Haug.2 The

2 For the first time in the Reply Brief, the Appellant argues that Haug does
not teach an insert within an opening of a die element that does not extend
into a second opening. Reply Br. 4. The Appellant’s argument is untimely
because the Appellant did not present it in the Appeal Brief, and the
Appellant has not attempted to show good cause for presenting it for the first
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Appellant fails to argue that it would have been beyond the ordinary level of
skill in the art to select an appropriate insert position from among known
insert positions, including placement of the insert within an opening of one
die element. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–21 (2007)
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”;
“[I]n many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.”).
Moreover, the Examiner finds that Haug teaches “various positions of
the insert and fixing structures selected so that bending moments on the
insert are minimized and that the inserts will not be damaged by the kinetic
energy of the casting metal.” Final Act. 5 (internal citations omitted).
Although the Appellant argues that those disclosures are limited to the
specific “context” of Haug, Appeal Br. 6, we agree with the Examiner that,
also in Schirra, positioning of an insert is relevant to bending forces and
kinetic energy on the insert as molten metal flows into the die. See, e.g.,
Schirra Fig. 9. For instance, positioning an insert within the opening formed
in Schirra’s die element 36b (as opposed to die element 36a) would appear
to result in both less force and less kinetic energy on the insert from the
casting metal flowing into the die opening. See id.
On this record, we are not persuaded of reversible error in the
Examiner’s finding that the art teaches or suggests positioning an insert
within a first die element opening such that the insert does not extend into a
second die element opening. See In re Jung, 637 F.3d 1356, 1365 (Fed.

time in the Reply Brief. See 37 C.F.R. § 41.41(b)(2). We decline to
consider it.
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Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections . . . .”).
The Appellant also argues that “shielding elements” present in Haug
would prevent Haug’s insert from forming an open cell structure. Appeal
Br. 6.
That argument is not persuasive because it attacks Haug individually.
See Keller, 642 F.2d at 426. The Examiner’s combination rationale does not
require the use of Haug’s shielding elements. Cf. id. at 425 (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”). The Appellant does not
meaningfully argue that it would have been beyond the ordinary level of
skill in the art to position an insert in a die opening, such as that of Schirra,
without the use of Haug’s fixing elements or shielding elements.
Additionally, as the Examiner explains in the Answer, given that the
arrangement of Haug’s insert is similar to the arrangement of inserts that the
Appellant’s Specification discloses, “it is unclear why a lateral flow of metal
around [Haug’s] insert would completely envelop[] the insert, as argued by
the Appellant.” Ans. 5. The Appellant fails to respond to that argument in
the Reply or to otherwise persuasively show that the proposed combination
falls beyond the scope of claim 1.
On this record, we are not persuaded of reversible error in the
Examiner’s determination that the proposed combination would yield a
component having an open cell seal. See Jung, 637 F.3d at 1365.
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The Appellant raises no other arguments as to claim 1. We affirm the
Examiner’s rejection of claim 1.
Rejection 2
The Appellant argues that Rejection 2 should be reversed “[f]or at
least the reasons noted” as to Rejection 1. Because we affirm as to
Rejection 1, and the Appellant raises no separate arguments as to
Rejection 2, we likewise affirm as to Rejection 2.
Rejection 3
Independent claim 17 is similar to claim 1 except that claim 17
requires that the open cell structure be formed “without positioning an insert
in the first die element.” The Specification discloses that this can be
achieved, for example, by “pre-defin[ing]” the die cavity “with an open cell
structure . . . that corresponds to a desired structure of an integral seal.”
Spec. ¶ 44. “That is . . . the die cavity . . . [may be] formed with design
features, such as a honeycomb, open cell structure, that [] automatically
form corresponding features within a cast component once molten metal is
injected into the die cavity . . . i.e., no inserts are required.” Id.
The Examiner relies on Schirra and Lawer as described above. The
Examiner further finds that, because Schirra and Lawer do not disclose the
use of an insert, “the combination would suggest that the open cell structure”
of the combined prior art would be “formed directly in a die element.” Final
Act. 9. In the Answer, the Examiner also explains that there are two primary
ways to form a shape in a die-cast product: “[1] the corresponding negative
shape will be formed into the die or [2] supplied by an insert into the die.”
Ans. 6.
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Additionally, the Examiner finds that Mashiko discloses that fins of a
die-cast heatsink may be formed either by using inserts or by forming the fin
feature “directly in one of the die elements, such that the fin shaped portion
does not extend into the second die element.” Final Act. 10. The Examiner
determines that it would have been obvious “to form the open cell structure
of Schirra et al as modified by Lawer et al in a first die element, as Schirra et
al as modified by Lawer et al already suggests [] die casting said structure
(thus incorporating the structure in the mold cavity),” and that “it would
have been obvious to arrange the seal structure portion in only one element,
as such an arrangement is known from Mashiko et al for forming a
component.” Id.
The Appellant argues that “Schirra and Lawer are both silent as to
how the integral seal is die cast and therefore cannot be relied on as teaching
forming the open cell structure without positioning an insert in the die.”
Appeal Br. 7.
That argument is unpersuasive because it fails to address the
Examiner’s finding that there are two ways of forming a feature in a die-cast
product, one of which does not involve an insert, and that a person of
ordinary skill in the art would have understood the combination of Schirra
and Lawer to suggest forming a feature without an insert because neither
Schirra nor Lawer describes the use of an insert to form features on a die-
cast product. On this record, we discern no persuasive basis to reject the
Examiner’s reasoning.
Additionally, Mashiko discloses that die-cast features can be formed
without an insert. E.g., Mashiko Fig. 29 (showing “slits 101” in mold 100
“which are in communication with a cavity 102 for molding the fins 8”).
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Thus, the record shows that forming features without using an insert was
known in the art as an alternative to forming features using an insert.
Compare Mashiko Fig. 28 (element 8), with Mashiko Fig. 29 (element 101).
The Appellant also argues that Mashiko’s Figure 29, on which the
Examiner relies for showing the formation of features without an insert,
actually does show the use of inserts. Appeal Br. 7–8. Specifically, the
Appellant argues that “inserts 91, 95” are required “in order to cast the
component having the desired heat pipe features.” Id. at 8.
That argument is unpersuasive because the Appellant does not
persuasively dispute the Examiner’s finding that Mashiko’s Figure 29
discloses forming fins using slits 101 formed in the die element, as opposed
to using an insert. In other words, there is no meaningful dispute that
Mashiko discloses the forming of die-cast features (e.g., fins) without an
insert, even if Mashiko uses inserts for other features (e.g., heat pipes). The
Examiner’s proposed combination involves the use of a known element (die
element with features structurally integrated into the cavity of one die
element, as opposed to an insert) according to its established function (die-
casting a product with structural features). Such combinations typically do
not result in nonobvious subject matter. See KSR, 550 U.S. at 416–21. The
Appellant has not shown otherwise in this case. See Jung, 637 F.3d at 1365.
We affirm the Examiner’s rejection of claim 17.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 7–9, 11,
13, 14, 16 103(a)
Schirra, Lawer,
Bottome, Haug
1, 4, 7–9, 11,
13, 14, 16
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Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
12, 15 103(a)
Schirra, Lawer,
Bottome, Haug,
Alvanos
12, 15
17 103(a) Schirra, Lawer, Mashiko 17
Overall
Outcome
1, 4, 7–9, 11–
17
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