Ucasz, Mark T. et al.

Patent Trials and Appeals Board

Oct 17, 2019

14617628 - (D) (P.T.A.B. Oct. 17, 2019)

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.
14/617,628 02/09/2015 Mark T. Ucasz PA-0027162-US 6791
11943 7590 10/17/2019
O''''Shea Getz P.C.
10 Waterside Drive, Suite 205
Farmington, CT 06032
EXAMINER
WANG, XIAOBEI
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
10/17/2019 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):
shenry@osheagetz.com
uspto@osheagetz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK T. UCASZ, BRUCE R. SAXTON,
DANIEL A. BALES, and WILLIAM J. BRINDLEY
____________

Appeal 2019-000664
Application 14/617,628
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JAMES A. WORTH, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final decision to reject claims 1, 4–10, 16–20, 22, and 23. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42 and as named in the Application Data Sheet filed February 9,
2015 (“United Technologies Corporation). Appellant is also identified as
the real party in interest. Appeal Br. 3.
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The invention is generally directed to a method for servicing an airfoil
of an engine. Spec. ¶ 4. Claim 1 illustrates the subject matter claimed and is
reproduced below:
1. A method for servicing an airfoil of an engine, comprising:

removing a ceramic layer from the airfoil;

removing a first portion of a first bondcoat layer from the airfoil while
leaving a second portion of the first bondcoat layer intact on the airfoil; and

applying a second bond coat layer on top of the second portion of the
first bondcoat layer using a coating technique subsequent to the removal of
the first portion of the first bondcoat layer,

wherein the ceramic layer is removed from the airfoil prior to the
removal of the first portion of the first bondcoat layer from the airfoil, and

wherein a wall thickness of a metal base layer of the airfoil is retained
during the removal of the first portion and the application of the second
bondcoat layer.

Independent claim 10 is directed to an airfoil of an engine while
independent claim 16 is directed to a method for servicing hardware
associated with an engine.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:2, 3
I. Claims 1, 4–10, 16–20, 22, and 23 rejected under 35 U.S.C. §
112(a) as failing to comply with the written description requirement.

2 The Examiner withdrew a rejection under 35 U.S.C. § 112(b). Ans. 7.
3 The rejection statements are modified to remove references to cancelled
claims 2, 3, 11–15, and 21. See Appeal Br. 3; Advisory Action entered
March 8, 2018; Amendment filed February 27, 2018.
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II. Claims 1, 4–6, 9, 10, 16–19, 22, and 23 rejected under 35
U.S.C. § 102(a)(1)/(a)(2) as anticipated by Gupta (US 2010/0126014 A1,
published May 27, 2010).

III. Claims 7 and 8 rejected under 35 U.S.C. § 103 as unpatentable
over Gupta.

IV. Claim 20 rejected under 35 U.S.C. § 103 as unpatentable over
Gupta and Rigney (US 2005/0106315 A1, published May 19, 2005).

OPINION
Rejection I (Lack of written description under 35 U.S.C. § 112(a))
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we reverse the Examiner’s rejection of claims 1, 4–10, 16–20,
22, and 23 under 35 U.S.C. § 112(a) for lack of written description. We add
the following for emphasis.
The Examiner finds that there is no express support in the
Specification, as originally filed, for the limitation in claim 1 of “applying a
second bondcoat layer on top of the second portion of the first bondcoat
layer.” Ans. 8. According to the Examiner, the Specification only describes
that “a second bondcoat layer may be applied to the airfoil.” Ans. 8; Spec.
¶ 34. Appellant argues that the Specification describes the application of a
second bondcoat layer to the airfoil using a cathodic arc technique. Appeal
Br. 8 (see n.2). Thus, Appellant contends that this disclosure sufficiently
describes the disputed claim language.

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We agree with Appellant that there is reversible error in the
Examiner’s determination that the disputed language lacks adequate
descriptive support.
Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.

See also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). “This inquiry . . . is a question of fact. . . . [T]he level of detail
required [in the Specification as originally filed] to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. Whether the written description requirement is complied with is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563–64 (Fed. Cir. 1991).
Here, the Specification describes a cathodic arc coating technique that
coats desired surfaces of a component by rotating and otherwise
manipulating the component to promote the formation of a uniform coating
on these surfaces. Spec. ¶ 25; see Application Figure 2. This is also the
exemplary technique disclosed for applying the second bondcoat during
repairs. Spec. ¶ 34. One skilled in the art, upon reading this disclosure
together with Application Figure 2, would understand that the application of
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the second bondcoat using this technique would result in “applying a second
bondcoat layer on top of [a] portion of the first bondcoat layer” because a
large portion of the surface of the component is exposed in the coating
section.
Thus, after careful review of the record before us, we determine that
the Specification provides an adequate written description for the claimed
subject matter including the disputed language identified by the Examiner.
Accordingly, we reverse the Examiner’s rejection of claims 1, 4–10,
16–20, 22, and 23 under 35 U.S.C. § 112 (a) as lacking written descriptive
support for the reasons presented by Appellant and given above.

Prior Art Rejections II–IV (under 35 U.S.C. §§ 102(a)(1)/(a)(2) and 103)
For the prior art rejections, Appellant relies on the same line of
arguments to address the anticipation rejection of independent claims 1, 10,
and 16 and does not present separate arguments for any of the dependent
claims rejected as anticipated or obvious by the cited art. Id. Accordingly,
we select independent claim 1 as representative of the subject matter claimed
and decide the appeal as to all prior art grounds of rejection based on the
arguments presented for claim 1.
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we affirm the Examiner’s rejections of claims 1, 4–10, 16–20,
22, and 23 under 35 U.S.C. §§ 102(a)(1)/(a)(2) and 103 for the reasons the
Examiner provides. We add the following for emphasis.
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Claim 1
Claim 1 is directed to a method for servicing an airfoil of an engine by
retaining a wall thickness of a metal base layer of the airfoil during repair of
a damaged bondcoat layer. That is, the airfoil is repaired without damaging
the metallic underlayer of the airfoil.
We refer to the Examiner’s Final Action for a complete statement of
the anticipation rejection of claim 1. Final Act. 4. Briefly, the Examiner
finds that Gupta (1) describes the claimed repair method and (2) seeks to
avoid wall thickness loss in the underlying metallic layer. Final Act. 4; Ans.
9; Gupta ¶¶ 7, 29.
Appellant argues that Gupta’s Figures 2 and 3 show damage to the
vane in the form of a crack “C” that penetrates a thermal barrier coating
(TBC) top coat 24, a bond coat 22, and a wall of the vane 12. Appeal Br. 9.
According to Appellant, Gupta describes repairing the crack repairs using
conventional braze or welding processes. Id. Appellant contends that one
skilled in the art would appreciate that at least a portion of the metal base
layer 12 wall thickness is removed as part of the crack repair to facilitate the
braze/welding Gupta describes. Id. Thus, Appellant asserts that Gupta does
not describe the claimed invention. Id.
The arguments do not persuade us of reversible error in the
Examiner’s determination of anticipation for the reasons the Examiner
presents. Ans. 9–11.
As the Examiner notes, Gupta discloses an embodiment where the
first bondcoat is not entirely removed to avoid wall thickness loss. Ans. 10;
Gupta ¶ 29. As the Examiner further notes, the embodiment illustrated in
Gupta’s Figures 4 and 6 (before and after repair) does not show a loss of
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material/thickness from the metal layer. Ans. 10. Appellant points to no
portion of Gupta that describes a loss of material or wall thickness in the
metal layer of the component subject to repair or any other objective
evidence that the repair process would entail removal of a portion of the
cracked metal base layer. Ans. 11. Appellant, at most, has provided mere
attorney arguments and such arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979).
Accordingly, we affirm the Examiner’s prior art rejections of claims
1, 4–10, 16–20, 22, and 23 under 35 U.S.C. §§ 102(a)(1)/(a)(2) and 103 for
the reasons the Examiner presents and we provide above.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4–10,
16–20, 22,
23
§ 112(a) Spec. ¶¶ 25, 34;
Drawings, Fig. 2
1, 4–10,
16–20,
22, 23
1, 4–6, 9,
10, 16–19,
22, 23
§ 102(a)(1)/
(a)(2)
Gupta 1, 4–6, 9,
10,
16–19,
22, 23

7, 8 § 103

Gupta 7, 8
20 § 103

Gupta, Rigney 20
Overall
Outcome
1, 4–10,
16–20,
22, 23

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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)(1) (2017).

AFFIRMED