Aerojet Rocketdyne, Inc.

Patent Trials and Appeals Board

Apr 5, 2021

2020004803 (P.T.A.B. Apr. 5, 2021)

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.
15/204,205 07/07/2016 Guy Spear AR200015;
67397-523PUS1
2308
116344 7590 04/05/2021
Joel G Landau
Aerojet Rocketdyne
PO Box 7922
RLB70
Canoga Park, CA 91304
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/05/2021 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):
joel.landau@rocket.com
nicole.holieway@rocket.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GUY SPEAR, TED SMITH, and
MICHAEL GAGNE
____________

Appeal 2020-004803
Application 15/204,205
Technology Center 3700
____________

Before DANIEL S. SONG, STEFAN STAICOVICI, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 5, 8–13, 15, and 16 as unpatentable under 35 U.S.C.
§ 103 over Hughes (US 2,968,919, iss. Jan. 24, 1961), and Puster
(US 3,611,878, iss. Oct. 12, 1971). We have jurisdiction under 35 U.S.C.
§ 6(b).2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Aerojet Rocketdyne, Inc. as the
applicant and real party in interest. Appeal Br. 1.
2 Rejections of claim 3 on various grounds have been obviated by Appellant
cancelling claim 3 after the Examiner issued the Final Office Action. See
Amendment, Jan. 2, 2020.
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Application 15/204,205
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We AFFIRM.
THE INVENTION
Appellant’s invention relates to rocket engines. Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A system comprising:
a combustion chamber having a throat; and
a regulator for changing a cross-sectional area of the throat, the
regulator including,
a first piston in fluid connection with the combustion
chamber, and
a second piston moveable with the first piston, the second
piston at least partially defining the throat;
a bias member configured to preload the first piston, the
bias member including a dashpot and a second component
selected from the group consisting of a spring, a magnet, a
piezoelectric, and a pressure actuator.
OPINION
Appellant argues claims 1, 2, 5, 8–13, 15, and 16 as a group. Appeal
Br. 4–6. Claim 1 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Hughes discloses the invention substantially
as claimed except for a damper (dashpot), for which the Examiner relies on
Puster. Final Act. 4–5. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time the invention was
made to modify Hughes with a damper to work with its spring component.
Id. at 5. According to the Examiner, a person of ordinary skill in the art
would have done this to dampen the piston movement to avoid sudden
overshoots or undershoots of the piston position. Id.
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Appellant argues that Hughes and Puster are not analogous art.
Appeal Br. 5. Hughes is directed to a rocket motor with a variable throat
nozzle. Hughes, col. 1, ll. 47–53. Hughes is analogous as it comes from the
same field of endeavor as Appellant’s rocket nozzle invention. See In re
Bigio, 381 F.3d 1320, 1325–26. (Fed. Cir. 2004) (explaining that a reference
qualifies as analogous art under the “field of endeavor” test if the structure
and function of the prior art is similar to the structure and function of the
claimed invention as disclosed in the application). Id. at 1325–26.
With respect to Puster, a reference may be considered analogous if it
is reasonably pertinent to the particular problem with which the inventor is
involved. Bigio, 381 F.3d at 1325. A reference is reasonably pertinent if,
because of the matter with which it deals, it logically would have
commended itself to an inventor’s attention in considering his problem. In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure has
the same purpose as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an obviousness
rejection.” Id. In the instant case, Appellant never denies that Puster is
reasonably pertinent to the problem of over and under shooting of pistons in
a variable geometry rocket nozzle. See generally Appeal Br.
Instead, Appellant argues that an invention may be patentable because
it discovers the source of a problem even though the remedy may be obvious
once the source of the problem is identified. Id. at 5 (citing MPEP § 2141).
Appellant argues that the need or problem that a secondary reference
logically commends itself to must be “known” in the field of endeavor at the
time of the invention. Id. Appellant argues that neither Puster nor Hughes
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establish that preventing overshoot in a variable rocket nozzle throat
addressed a known problem. Id.
Appellant is generally correct that a patentable invention may lie in
the discovery of the source of a problem even though the remedy may be
obvious once the source of the problem is identified. In re Sponnoble, 405
F.2d 578, 585 (CCPA 1969). However, the discovery of the cause of a
problem does not result in a patentable invention where the solution is
obvious from prior art which contains the same solution for a similar
problem. In re of Wiseman, 596 F.2d 1019, 1023 (CCPA 1979).
Here, the Examiner finds that Puster uses a damper to solve
essentially the same problem that Appellant purportedly solves with a
damper and further finds that use of dampers is old and well known. Id.
at 10, 15–16.
Puster’s dashpot damper and Appellant's dashpot damper
solved the same problem because controlling sudden movement
of a mass (in this case the piston mass) by limiting the rate of
movement of said mass was the designed and intended use of
dashpot dampers for over 100 years.
Id. at 10 (emphasis in original). Appellant does not challenge this finding.
In sustaining a determination of obviousness by the PTO’s Board of Appeal,
the Wiseman court compared the applicant’s solution to that of a similar
problem in the prior art. Wiseman, 596 F.2d at 1023. Here, the Examiner
follows the correct approach endorsed by Wiseman. Ans. 15–16.
Furthermore, the Wiseman court noted that the applicant failed to
provide a clear and persuasive assertion in its specification that it was
relying on discovery on a previously unknown source of a problem as a basis
for patentability of its alleged invention. Wiseman, 596 F.2d at 1023 (“The
specification does not say appellants discovered it”). Appellant’s
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Specification explains that relatively large pressure changes in the
combustion chamber and throat may cause pistons 134 to move at a high
rate, but that damper 150 operates to smooth such movement by limiting the
rate of movement for large pressure swings. Spec. ¶ 32. However,
Appellant does not direct us to any passage in the Specification that
represents that it was first to discover this problem. See generally Spec.
Apart from naked, unsubstantiated assertions of counsel, there is nothing in
the record that supports the notion that practitioners in the field of rocket
propulsion were previously unaware of such pressure swings and its effect
on nozzle throat components. Indeed, Hughes acknowledges that variation
in chamber pressure “naturally” creates thrust characteristics that vary over a
wide range. Hughes, col. 1, ll. 22–29. As explained by the Wiseman court:
[T]here must be some evidence of record by way of affidavits
or declarations, or at least a clear and persuasive assertion in the
specification, that the fact relied on to support patentability was
the discovery of the applicants for patent.
Wiseman, 596 F.2d at 1023. Here, Appellant presents no evidence that tends
to show that it was the first to “discover” this problem. See generally
Appeal Br., Reply Br.
Finally, we turn to Appellant’s argument that a person of ordinary
skill in the art would not have been motivated to combine Hughes and Puster
in the manner proposed by the Examiner. Appeal Br. 5. Appellant argues
that the Examiner errs in proposing the combination because the Examiner
fails to provide evidence that a person of ordinary skill in the art would have
foreseen any benefit in using a dashpot in Hughes. Appeal Br. 6. Appellant
accuses the Examiner of engaging in “pure conjecture.” Id.
There is no reason to assume . . . that dampening the piston
movement to avoid sudden overshoots or undershoots of the
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piston position would be necessary or beneficial within the
system of Hughes . . . The examiner appears to be assuming
that dampening piston movement is a universal good, regardless
of the system. There is no basis for this assumption, and it is
therefore improper.
Id.
Appellant’s attack on the Examiner’s expertise in the field is not well
taken. An Examiner is deemed competent to makes findings, informed by
scientific knowledge, as to the meaning of prior art references to persons of
ordinary skill in the art and the motivation those references would provide to
such persons. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent
legal error or contrary factual evidence, those findings can establish a prima
facie case of obviousness. Id. In the instant case, Hughes teaches that
variation in combustion chamber pressure creates thrust characteristics that
vary over a wide range. Hughes, col. 1, ll. 22–29. This teaching provides
the Examiner with a sound basis for finding that Hughes’s device could be
improved by incorporation of a damper. The Examiner’s findings
concerning the teachings of Hughes and Puster and the motivations that they
would provide to a person of ordinary skill in the art appear to be well within
the scope of the Examiner’s competency and appear to be based on sound
scientific principles. Appellant’s response thereto amounts to empty rhetoric
untethered to any evidence or technical reasoning. See Wiseman, 596 F.2d
at 1022 (explaining that unsupported argument cannot take the place of
evidence); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(explaining that attorney argument and conclusory statements that are
unsupported by factual evidence are entitled to little probative value).
“An obviousness determination requires finding that a person of
ordinary skill in the art would have been motivated to combine or modify the
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teachings in the prior art and would have had a reasonable expectation of
success in doing so.” Regents of Univ. of Cal. v. Broad Inst., Inc., 903
F.3d 1286, 1291 (Fed. Cir. 2018). “The reasonable expectation of success
requirement refers to the likelihood of success in combining references to
meet the limitations of the claimed invention.” Intelligent Bio-Systems, Inc.
v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). In other
words, “one must have a motivation to combine accompanied by a
reasonable expectation of achieving what is claimed in the patent-at-issue.”
Id. “For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed.
Cir. 1988); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed.
Cir. 2007) (“the expectation of success need only be reasonable, not
absolute”).
In the instant case, the Examiner provides a cogent reason for
modifying Hughes with Puster, namely, to dampen piston movement to
avoid sudden overshoots or undershoots of the piston position. Final Act. 6.
The Examiner provides an informed explanation and analysis as to what
dampers are and how they are used. Ans. 9–10. In the Examiner’s proposed
combination, a damper as taught by Puster is being used in accordance with
its typical function. A person of ordinary skill in the art would have had a
reasonable expectation of success in using Puster’s damper with Hughes’
insert. Appellant presents neither evidence nor persuasive technical
reasoning that making the proposed combination requires more than the
ordinary skill or produces unexpected results.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
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founded. In view thereof, we sustain the Examiner’s unpatentability
rejection of claims 1, 2, 5, 8–13, 15, and 16.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 8-13,
15, 16
103 Hughes, Puster 1, 2, 5, 8-13,
15, 16

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