UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals BoardOct 20, 2020

15448267 - (D) (P.T.A.B. Oct. 20, 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. 15/448,267 03/02/2017 Joel H. Wagner 67097-2971PUS2; 77154US03 3347 54549 7590 10/20/2020 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 10/20/2020 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 JOEL H. WAGNER, JOHN R. FARRIS, and JOHN HOSEPH MARCIN ____________ Appeal 2019-006707 Application 15/448,267 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and JEFFREY B. ROBERTSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 requests our review under 35 U.S.C. § 134(a) of the Examiner’s decision finally rejecting claims 1–3, 12, and 20 under 35 U.S.C. § 103 as being unpatentable over the combined prior art of Frank (US 5,126,082, issued June 30, 1992), Hirokawa (US 6,755,238 B1, issued June 29, 2004), and Beggs (US 6,474,348 B1, Nov. 5, 2002); and claims 4–6 as 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). “United Technologies Corporation” is identified as the real party in interest (Appeal Br. 1). Appeal 2019-006707 Application 15/448,267 2 unpatentable over these same references combined with Conroy (US 5,915,452, issued June 20, 1999).2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal: 1. A method of forming an engine component, comprising: introducing molten metal into a cavity between a shell and a casting article in the shell, the casting article including a ceramic portion and a plurality of fibers, wherein the fibers are randomly oriented within the ceramic portion, and wherein the fibers are provided by one of (1) silicon (Si) fibers, (2) carbon (C) fibers, and (3) metal fibers; and separately removing the ceramic portion and the fibers from an interior of the component. (Appeal Br. 6 (Claims App.)). OPINION Upon consideration of the evidence relied upon in this appeal and each of Appellant’s contentions as set forth in the Appeal Brief and the Reply Brief, we determine that Appellant has not identified reversible error in the Examiner’s rejection (See generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant(s) to identify the alleged error in the Examiner’s 2 The Examiner also rejects claim 6 over all these references adding Kobayashi (JP 09-253792 A, published Sept. 30, 1997) (Final Act. 7). Appeal 2019-006707 Application 15/448,267 3 rejection). We sustain the rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. It has been established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264– 65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant’s argument focuses on independent claim 1, except for the argument with respect to dependent claim 4 as addressed below (generally Appeal Br.). Appellant’s argument with respect to the rejection of claim 1 is focused on their belief that Frank is limited to ceramic reinforcing media and as such teaches away from the use of any other material for reinforcing fibers such that the Examiner’s proposed modification to use alternative reinforcing fibers as exemplified in Hirokawa is improper (Appeal Br. 3; Reply Br. 2). Appellant’s argument with respect to the rejection of claim 4 that requires the fibers are “blown out of the component using pressurized fluid” (Appeal Br. Claims Appendix 6) is that Conroy does not explicitly teach blowing fibers out of an engine component, “let alone after a leaching process left the fibers behind” (Appeal Br. 4). Appellant’s arguments are not persuasive of reversible error as they fail to consider the applied prior art as a whole and the inferences that one of Appeal 2019-006707 Application 15/448,267 4 ordinary skill would have made, as aptly explained by the Examiner (Ans. 3–5). First, whether the prior art teaches away from the claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well established that a prior art reference must be considered in its entirety, i.e., as a whole, when determining if it would have led one of ordinary skill in the art away from the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). One of ordinary skill in the art would have readily appreciated that there are numerous materials useful for reinforcing fibers in a disintegrative casting core (such as the casting core of Frank) such as exemplified in Hirokawa for a casting core. See In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments.); Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (Even a “statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.”). While Appellant focuses on col. 10:15–20 of Frank (Reply Br. 2), the Examiner relies upon Frank, col. 3, ll. 10–25 which generically refers to “dispersing reinforcing media, such as ceramic whiskers, fibers, . . . ” (see, e.g., Ans. 3). In any event, one of ordinary skill would have expected the known, alternative reinforcing fibers of, e.g., silicon, carbide, metals as exemplified in Hirokawa for a cast article to be a useful alternative for ceramic reinforcing media so as to result in the claimed casting core/fibers as recited in claim 1 (Hirokawa, col 4, ll. 31–40). Appellant has not sufficiently explained why the claimed subject matter is “more than the predictable use of prior art Appeal 2019-006707 Application 15/448,267 5 elements according to their established functions.” KSR, 550 U.S. at 417; see also Ans. 3, 4). Under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” or even routine steps, that an ordinary artisan would employ. Ball Aerosol & Specialty Container, Inc. v. Limited. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009). One of ordinary skill would have readily inferred and appreciated from the applied prior art as a whole that known reinforcing media included other materials as exemplified in Hirokawa such that the use of the same in the casting core of Frank would have been within the skill and creativity of one of ordinary skill in the art. Likewise, Appellant’s argument that Conroy does not teach blowing fibers specifically out of an engine component as recited in claim 4 (Appeal Br. 6) is not persuasive as it fails to consider the applied prior art as a whole for reasons pointed out by the Examiner (Ans. 5). Appellant has not responded or otherwise disputed the Examiner’s explanation. Thus, no error has been shown in the rejection of claims 4–6 based on the combined prior art of Frank, Hirokawa, Beggs, and Conroy, or the separate rejection of claim 6 based on the combined prior art of Frank, Hirokawa, Beggs, Conroy, and Kobayashi. Accordingly, we sustain the Examiner’s rejections on appeal. Appeal 2019-006707 Application 15/448,267 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 12, 20 103(a) Frank, Hirokawa, Beggs 1–3, 12, 20 4–6 103(a) Frank, Hirokawa, Beggs, Conroy 4–6 6 103(a) Frank, Hirokawa, Beggs, Conroy, Kobayashi 6 Overall Outcome 1–6, 12, 20 TIME PERIOD FOR RESPONSE 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