Steven J. Bullied et al.Download PDFPatent Trials and Appeals BoardJul 7, 202014937988 - (D) (P.T.A.B. Jul. 7, 2020) Copy Citation 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. Appeal 2019-002899 Application 14/937,988 2 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. Appeal 2019-002899 Application 14/937,988 3 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 Appeal 2019-002899 Application 14/937,988 4 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 Appeal 2019-002899 Application 14/937,988 5 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. Appeal 2019-002899 Application 14/937,988 6 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. Appeal 2019-002899 Application 14/937,988 7 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. Appeal 2019-002899 Application 14/937,988 8 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”). Appeal 2019-002899 Application 14/937,988 9 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 Appeal 2019-002899 Application 14/937,988 10 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 Copy with citationCopy as parenthetical citation