Ex Parte Murdock et al

Patent Trial and Appeal Board

Nov 30, 2018

14508774 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/508,774 10/07/2014
135291 7590 12/04/2018
Cantor Colburn LLP - Pratt & Whitney
20 Church Street
22 Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
James R. Murdock
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
72652US02 (U420773US2) 5559
EXAMINER
EASTMAN, AARON ROBERT
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES R. MURDOCK and MARK QUINN
Appeal2018-005297
Application 14/508,774 1
Technology Center 3700
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1-3, 5-12, and 14--20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellants, "[ t ]he real party in interest in this appeal is
United Technologies Corporation." Appeal Br. 2.
Appeal2018-005297
Application 14/508,774
STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellants' invention "relates to turbomachinery and, more
particularly, to various means for holding a turbomachinery fan blade in a
radially tight fashion within a supporting rotor slot." Spec. ,r 1.
Claims 1, 10, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A fan assembly comprising:
a rotor having an outer periphery and at least one slot
extending radially inwardly through the outer periphery and
terminating at a base surface disposed at a radial depth from the
outer periphery of the rotor;
at least one fan blade including an airfoil connected to a
root, the root being received in the slot, the root terminating at an
inner face and having a radial length that is less than the radial
depth of the slot to define a gap between the inner face of the root
and the base surface of the slot;
a spacer disposed in the gap, the spacer being a non-
metallic injection molded polymeric spacer fabricated from a
polymer.
Claim Objection
The Examiner objected to two terms in claim 17. Final Act. 2. The
first objection is directed to the term "fan blade" in line 9; the Examiner
suggests that the term "fan blade" should read "root." Id. The second
objection is directed to the term "root" in line 1 O; the Examiner suggests that
the term "root" should read "fan blade." Id.
After the Final Office Action (mailed April 12, 2017), the Appellants
amended claim 17 to overcome the second objection. See Amendment 5---6
(filed June 12, 2017). The Examiner entered the amendment. Advisory
Action, Box. 7(b) (mailed June 29, 2017). The Appellants presumed that the
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objection to claim 17 was withdrawn. Appeal Br. 20. However, the
Examiner has not withdrawn the objection to claim 17 because the first
objection remains unresolved. See Ans. 16.
Although the Appellants do not address the merits of the first
objection of claim 17, we note that this matter is not within the jurisdiction
of the Board. This matter is reviewable by petition under 3 7 C.F .R. § 1.181
(see Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201
(9th ed., rev. 8, Jan. 2018)).
Rejections
The Appellants request our review of the following rejections.
Appeal Br. 6.
I. Claims 1-3, 5-9, and 18-20 are rejected under 35 U.S.C.
§ I02(a)(l) as anticipated by Alexander (US 2013/0156591 Al, published
June 20, 2013).
II. Claims 1-3, 5-9, and 18-20 are rejected under 35 U.S.C.
§ I02(a)(l) as anticipated by Douguet et al. (US 2009/0060745 Al,
published Mar. 5, 2009) ("Douguet").
III. Claims 10-12 and 14--17 are rejected under 35 U.S.C. § 103 as
unpatentable over Alexander and Calvert (US 6,692,231 B 1, issued Feb. 17,
2004).
IV. Claims 10-12 and 14--17 are rejected under 35 U.S.C. § 103 as
unpatentable over Douguet and Calvert.
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ANALYSIS
Rejections I & IIL Anticipation by Alexander and Obviousness based on
Alexander and Calvert
Independent Claim 1
For the rejection of claim 1 under 35 U.S.C. § 102(a)(l) as anticipated
by Alexander, the Examiner finds that Alexander discloses a fan assembly
including polymeric spacer 16 disposed in a gap between root 36 of fan
blade 14 and slot 28 of rotor 12. See Final Act. 3; Alexander ,r,r 17-20,
Fig. 1. As for claim 1 's recitation that "the spacer [is] a non-metallic
injection molded polymeric spacer fabricated from a polymer," the
Examiner determines that the term injection molded is a product-by-process
limitation. Final Act. 3. The Appellants contend that the claimed "product
is defined [ sic as] an injection molded polymeric spacer and the terms of the
claim must be given their full patentable weight." Appeal Br. 7.
We agree with the Examiner that the claim term injection molded is a
product-by-process limitation. The term injection molded defines the spacer
at least in part in terms of the process by which it is made. See SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006)
(citation omitted) ("A product-by-process claim is 'one in which the product
is defined at least in part in terms of the method or process by which it is
made."').
We note that the Appellants do not advance a persuasive argument
that the term "injection molded" includes a structural limitation. And the
Specification does not include evidence that the term "injection molded" is a
structural limitation. Moreover, as pointed out by the Examiner, the
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Appellants fail to advance an argument that Alexander's spacer does not
teach the claimed product. See Ans. 14--15.
Instead, the Appellants argue that Alexander's spacer cannot be
formed by the process referenced in claim 1, i.e., injection molding. See
Appeal Br. 7. The Appellants' argument is not persuasive. As stated in In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), "[t]he patentability of a
product does not depend on its method of production." And, "[r]egardless of
how broadly or narrowly one construes a product-by-process claim, it is
clear that such claims are always to a product, not a process." See
SmithKline, 439 F.3d at 1317.
Regardless, even assuming arguendo the Appellants' argument was
germane to the issue presented, the argument would not be persuasive. The
Appellants contend that Alexander fails to disclose the claimed injection
molded polymeric spacer because "a rigid elastic material and a complaint
material cannot be injection molded together simultaneously." Appeal Br. 7
( emphasis added); see Reply Br. 2-3. However, claim 1 recites "the spacer
[is] a non-metallic injection molded polymeric spacer fabricated from a
polymer," which does not require that the entirety of the spacer be made
simultaneously through a process of injection molding.
The Appellants also argue that "the spacer of Alexander cannot be an
injection molded part as the rigid elastic material [(i.e., leaf spring backbone
66)] cannot be rammed or pushed through a screw-type plunger of an
injection molding apparatus into a mold of the apparatus."2 Reply Br. 3.
2 "The leaf spring backbone 66 may be constructed from a rigid elastic
material such as ... a carbon composite material (e.g., laminated, 3D woven
carbon sheets)." Spec. ,r 20.
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However, the Appellants fail to explain and we fail to ascertain why the
foregoing would be necessary for claim 1 to read on Alexander's spacer.
Among other things, claim 1 references the polymeric spacer as injection
molded; claim 1 does not require a reinforcing member to be injection
molded.
Further, the Specification fails to explain any criticality as to the
formation of the polymeric spacer or that a reinforcing member must be
injection molded along with a polymer. See Spec. ,r 32 ( explaining that the
spacer may be "injection-molded, compression-molded, blow-molded
additively manufactured or a composite-layup piece formed of at least one of
the following: polyamide, polyetherimide (PEI), polyimide, polyether ether
ketone (PEEK), polyether ketone ketone (PEKK), polysulfone, nylon,
polyphenylsulfide, polyester, or any of the foregoing with fiber
reinforcement e.g., carbon fiber or glass-fiber"); see also Thorpe, 777 F.2d
at 697 ("If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.").
Accordingly, even if the process by which the spacer was made was
germane to the issue presented, the fact that Alexander's spacer 16 may be
constructed of a rigid elastic material and a compliant member fails to show
that the Examiner erred in rejecting claim 1.
Independent Claim 10
Claim 10 recites "[a] method of coupling a fan blade to a rotor" and
includes the step of "providing a spacer fabricated from a polymer,"
"wherein the spacer is a non-metallic injection molded polymeric spacer
fabricated from a polymer." Appeal Br., Claims App. Notably, claim 10
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does not include a step of making or forming a polymeric spacer by injection
molding.
For the rejection of claim 10 under 35 U.S.C. § 103 as unpatentable
over Alexander and Calvert, the Examiner finds that Alexander teaches the
subject matter of claim 10, except that Alexander's spacer, which is made of
polyether ether ketone (PEEK), is not disclosed as injection molded. See
Final Act. 10-11; Alexander ,r 20. The Examiner finds "Calvert teaches that
polyether ether ketone (PEEK) can be injection molded." Final Act. 11
(citing Calvert, col. 11, 11. 34--40, col. 12, 11. 16-22). The Examiner
determines that it would have been obvious to modify the Alexander's
spacer to be formed by injection molding, as taught by Calvert, to allow
formation of a variety of unique shapes. Final Act. 11.
The Appellants point out that the Examiner's rejection relies on a
finding that Alexander's spacer is not injection molded and argue that
Alexander's spacer cannot be injection molded. See Appeal Br. 13-14;
Reply Br. 5-7. More specifically, the Appellants argue, "[i]fthe spacer of
Alexander was modified as alleged in the outstanding office action, the
'rigid elastic material' and the complaint member constructed from a
'complaint material' could not be formed together and thus the spacer of
Alexander would not be suitable for its intended purpose." Id. For reasons
similar to those discussed above, the Appellants' argument is not persuasive.
Further, we note that the teaching of Calvert that concerns injection molding
includes an injection molding process where a resin is injected into a fiber
preform. See Calvert, col. 11, 1. 34 - col. 12, 1. 22 ("The process involves
two basic procedures: fabricating a fiber preform in the general shape of the
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finished article and impregnating the preform with a thermosetting resin
while the preform is disposed in a mold.").
Independent Claim 18
Claim 18 includes a similar limitation as claim 1, i.e., "a spacer
disposed in the gap, the spacer being a non-metallic injection molded
polymeric spacer fabricated from a polymer selected from the group
consisting of: polyamide, polyetherimide (PEI), polyimide, polyether ether
ketone (PEEK), polyether ketone ketone (PEKK), polysulfone, nylon,
polyphenylsulfide, polyester, and combinations thereof." Appeal Br.,
Claims App.
The Examiner's rejection of claim 18 under 35 U.S.C. § 102(a)(l) as
anticipated by Alexander and the Appellants' argument that the rejection is
improper are similar to those presented for the rejection of claim 1. See
Final Act. 5---6; Appeal Br. 20-22. For reasons similar to those discussed
above, the Appellants' argument is not persuasive.
Dependent Claims 2, 3, 5-9, 11, 12, 14-17, 19, and 20
The Appellants provide a separate heading for each of the dependent
claims. Appeal Br. 9-12, 23-24. The Appellants fail to provide a
persuasive argument for the rejection of these claims. For each dependent
claim the Appellants rely on the argument presented for the independent
claim from which it depends. Id. In some instances the Appellants also
recite the claim language of the dependent claim and argue that the prior art
does not teach the additional claim language. See, e.g., id. at 10 ("[C]laim 3
recites that 'the reinforcing material is selected from the group consisting of
carbon fibers and glass fibers"' and "is also believed to be allowable over
Alexander."). This is not persuasive of error because "[a] statement which
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merely points out what a claim recites will not be considered an argument
for separate patentability of the claim." 37 C.F.R. § 4I.37(c)(l)(iv). See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted the same language in the prior rule under 37 C.F.R.
§ 41.3 7 ( c )( 1 )( vii) as requiring "more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.").
Conclusion
Thus, we sustain the Examiner's rejection of: claims 1-3, 5-9, and
18-20 under 35 U.S.C. § 102(a)(l) as anticipated by Alexander; and
claims 10-12 and 14--17 under 35 U.S.C. § 103 as unpatentable over
Alexander and Calvert.
Rejections II & IV. Anticipation by Douguet and Obviousness based on
Douguet and Calvert
Independent Claim 1
For the rejection of claim 1 under 35 U.S.C. § 102(a)(l) as anticipated
by Douguet, the Examiner finds that Douguet discloses a fan assembly
including a polymeric spacer. See Final Act. 6-7. The Examiner identifies
layers 31, 32, 33, which are parts of shim 20, as corresponding to the spacer.
Id. at 7; see Douguet ,r,r 33. And, the Examiner finds that Douguet's spacer
is disposed in a gap between root 16 of fan blade 14 and slot 4 of rotor 2.
See Final Act. 6-7; Douguet ,r,r 33, 36-37, Figs. 1-2. The Appellants argue
"that the shim of Douguet cannot be an injection molded polymeric spacer
as one of the three layers has a different Young's modulus than the others
and thus they cannot be injection molded together simultaneously." Appeal
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Br. 8; see Reply Br. 3-5. The Appellants' argument is not persuasive for
reasons similar to those discussed above with regard to the rejection of
claim 1 as anticipated by Alexander. Most notably, the Appellants fail to
advance an argument that Douguet's spacer does not teach the claimed
product; instead the Appellants' argument focuses primarily on the process
by which Douguet's spacer can be made.
Independent Claim 10
Claim 10 recites "[a] method of coupling a fan blade to a rotor" and
includes the step of "providing a spacer fabricated from a polymer,"
"wherein the spacer is a non-metallic injection molded polymeric spacer
fabricated from a polymer." See Appeal Br., Claims App. As previously
discussed, claim 10 does not include a step of making or forming a
polymeric spacer by injection molding.
For the rejection of claim 10 under 35 U.S.C. § 103 as unpatentable
over Douguet and Calvert, the Examiner finds that Douguet teaches the
subject matter of claim 10, except that Douguet's spacer, which is made of
polyimide, is not disclosed as injection molded. See Final Act. 12-13;
Douguet ,r,r 33, 36-37. The Examiner finds "Calvert teaches that polyimide
can be injection molded." Final Act. 13; see Calvert, col. 11, 1. 34- col. 12,
1. 22. The Examiner determines that it would have been obvious to modify
the Douguet's spacer to be formed by injection molding, as taught by
Calvert, to allow formation of a variety of unique shapes. Final Act. 13.
The Appellants point out that the Examiner's rejection relies on a
finding that Douguet's spacer is not injection molded and argue that
Douguet's spacer cannot be injection molded. See Appeal Br. 14--17; Reply
Br. 7-10. More specifically, the Appellants argue that Douguet's three
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layers 31-33 include two separate materials that cannot be injection molded
together simultaneously and that the Douguet's spacer includes a base
part 20B and branches 20A that cannot be formed by injection molding
because there is no suitable parting line. 3 Appeal Br. 15-16. Additionally,
the Appellants contend that the proposed modification "would change the
principle of operation of the shim of Douguet and render the shim of
Douguet inoperable for its intended purpose." Id. at 15 (emphasis omitted).
For reasons similar to those discussed above, the Appellants' argument is
not persuasive. Most notably, claim 10 does not require that the entirety of
the spacer be made simultaneously through a process of injection molding.
And, the Appellants fail to persuasively show that Douguet's polymeric
spacer cannot be made by some type of injection molding. For example,
claim lO's requirement of providing a non-metallic injection molded
polymeric spacer fabricated from a polymer reads on each polyimide
layer 31, 32, 33 ofDouguet's shim 20 being fabricated by injection molding
and then adhering or fastening the layers together. See also Douguet ,r,r 33,
39-46.
Independent Claim 18
The Examiner's rejection of claim 18 under 35 U.S.C. § 102(a)(l) as
anticipated by Douguet and the Appellants' argument that the rejection is
improper are similar to those presented for the rejection of claim 1. See
Final Act. 8-10; Appeal Br. 22-23. For reasons similar to those discussed
above, the Appellants' argument is not persuasive.
3 "A 'parting line' is the line of separation on the molded plastic part where
the two halves of the plastic injection mold meet." Appeal Br. 16.
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Dependent Claims 2, 3, 5-9, 11, 12, 14-17, 19, and 20
The Appellants provide a separate heading for each of dependent
claims. Appeal Br. 9-12, 23-24. The Appellants fail to provide a
persuasive argument for the rejection of these claims. For each dependent
claim the Appellants rely on the argument presented for the independent
claim for which it depends. Id. In some instances the Appellants also recite
the claim language of the dependent claim and argue that the prior art does
not teach the additional claim language. This is not persuasive of error
because "[a] statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim."
37 C.F.R. § 4I.37(c)(l)(iv).
Conclusion
Thus, we sustain the Examiner's rejection of: claims 1-3, 5-9, and
18-20 under 35 U.S.C. § 102(a)(l) as anticipated by Douguet; and
claims 10-12 and 14--17 under 35 U.S.C. § 103 as unpatentable over
Douguet and Calvert.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-3, 5-12, and
14--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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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