Ex Parte Arik et al

Patent Trial and Appeal Board

Mar 29, 2018

11275188 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111275, 188 12/16/2005
6147 7590 04/02/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
MehmetArik
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.
182706-1 1266
EXAMINER
WONG, ALBERT KANG
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEHMET ARIK, KURTIS GIFFORD McKENNEY,
SCOTT GAYTON LITER, and SAMHITA DASGUPTA
Appeal2017-003608
Application 11/275,188 1
Technology Center 3600
Before MARC S. HOFF, ELENI MANTIS MERCADER, and
DANIEL N. FISHMAN, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 30-53. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants' invention is a system and method for wireless monitoring
of the operation of rotating engine components, such as those in a turbine. A
sensor system includes a power module, a sensor, and a transmitter. The
power module is configured to generate an electrical signal from a non-
1 The real party in interest is General Electric Company.
2 Claims 1-29 have been cancelled.
Appeal2017-003608
Application 11/275, 188
operational energy generated by operation of the turbine. Spec. 3.
Preferably, the power module is a thermoelectric or thermionic device
constructed to generate an electrical signal from a temperature differential or
gradient to which the power module is subjected during operation of the
turbine, or the thermal gradients associated with operation of the turbine.
Spec. 7-8.
Claim 30 is reproduced below:
30. A sensor system comprising:
a turbine;
a blade rotationally attached to said turbine;
a sensor unit located in said blade;
a transmitter connected to the sensor and configured to
transmit data acquired by the sensor; and
a power source configured to generate sufficient
electrical energy to power the sensor and the transmitter from a
thermal gradient during operation of the turbine,
wherein the transmitter further comprises a receiver
constructed to wirelessly receive information from a location
remote the turbine,
wherein the blade includes a body having a passage
formed therethrough allowing passage of a coolant flow,
said passage configured to remove heat from the blade
during operation of the turbine,
wherein said thermal gradient is generated between said
coolant flow and a fluid flow external to said blade surface,
wherein the power source, the sensor, and the transmitter are
constructed as a unitary package attached to a rotating
component of the turbine such that the unitary package rotates
with the rotating component during operation of the turbine,
and wherein the power source, the sensor, and the transmitter
are constructed as a single printed circuit board.
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The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Bernier
Subramanian
Funahashi
us 4,215,412
US 2005/0198967 Al
US 2006/0118160 Al
July 29, 1980
Sept. 15, 2005
June 8, 2006
Claim 49 stands rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the subject matter sought
to be patented.
Claims 30-42, 44--46, and 48-53 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Subramanian and Funahashi.
Claims 43 and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Subramanian, Funahashi, and Bernier.
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Sept. 20, 2016), the Reply Brief ("Reply Br.," filed
Jan. 17, 2017), and the Examiner's Answer ("Ans.," mailed Nov. 17, 2016)
for their respective details.
ISSUES
1. Did Appellants properly traverse the Examiner's taking of Official
Notice of certain facts, such that the Examiner erred in not supplying a
reference in response thereto?
2. Does Funahashi constitute analogous art with respect to the claimed
invention?
3. Does the Examiner's combination of Subramanian and Funahashi
disclose or fairly suggest the invention recited in independent claim 30?
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PRINCIPLES OF LAW
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor
was concerned in order to rely on that reference as a basis for
rejection. References are selected as being reasonably pertinent
to the problem based on the judgment of a person having
ordinary skill in the art.
In re Kahn, 441F.3d977, 986-87 (Fed. Cir. 2006) (citation omitted).
An argument that merely points out what a claim recites is
unpersuasive. 37 C.F.R. § 41.37(c)(l)(iv). Accord In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule
41.3 7 to require 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.").
ANALYSIS
OFFICIAL NOTICE
Appellants argue that the Examiner improperly took Official Notice of
several facts in the rejections under appeal, and improperly disregarded
Appellants' traversal of said Official Notice. App. Br. 9--11. The Examiner
argues the Manual of Patent Examining Procedure (MPEP) requires that a
traversing patent applicant "specifically point out the supposed errors in the
examiner's action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art." Ans. 9
(citing MPEP § 2144.03(c)). Appellants contend that reliance on the MPEP
is misplaced and that the MPEP is not law. See Reply Br. 3.
Appellants cite In re Chevenard, 139 F.2d 711, 713 (CCPA 1943), in
support of their position. Chevenard states, in pertinent part, that "in the
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Application 11/275, 188
absence of any demand by appellant for the examiner to produce authority
for his statement, we will not consider this contention." Id. at 713. We do
not agree with Appellants that Chevenard stands for the proposition that all
Appellants need do is make "any demand" and the Examiner must then
supply a reference. See App. Br. 11. Although we do agree with Appellants
that the MPEP does not have the effect of law, "it is entitled to judicial
notice as the agency's official interpretation of statutes [and] regulations,
provided that it is not in conflict with the statutes or regulations." Refac Int 'l,
Ltd., v. Lotus Dev. Corp., 81F.3d1576, 1584 n.2 (Fed. Cir. 1996) (citations
omitted).
Appellants have not persuaded us that the MPEP requirement that the
traversing appellant must specifically state "why the noticed fact is not
considered to be common knowledge or well-known in the art" is in conflict
with any statute or regulation. Thus, there is no evidence on this record that
the MPEP's requirement that a traversing applicant give reasons why the
noticed fact is not considered to be common knowledge or well known in the
art is in conflict with any statute or regulation. Accordingly, we agree with
the Examiner that Appellants have not properly traversed the Examiner's
taking of Official Notice, and those noticed facts are now treated as admitted
prior art.
NONANALOGOUS ART
We do not agree with Appellants' argument that Funahashi is not
reasonably pertinent to the problem with which the inventor was concerned.
See App. Br. 12-14; see also Reply Br. 4; Kahn, 441 F.3d at 986-87. The
invention is directed, inter alia, to a self-powered remote sensor system in a
turbine engine. See Spec. 1. Funahashi discloses a thermoelectric module
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useful in thermoelectric power generation. Funahashi i-f 3. Such a module is
explicitly disclosed as being applicable to a gas turbine environment.
Funahashi i-f 118. We find, then, that Funahashi teaches a thermoelectric
module pertinent to the problem of powering a sensor system in a turbine
engme.
CLAIM30
We do not agree with Appellants' argument that it would not have
been obvious to place a thermoelectric device on the blade of Subramanian.
App. Br. 14. We agree with the Examiner's finding that Subramanian
discloses a power source 51 mounted on the blade. As noted supra, we
disagree with Appellants' contention that Funahashi does not disclose
placing a thermoelectric module anywhere in a turbine; in fact, Funahashi
explicitly suggests such placement. App. Br. 14; Funahashi i-f 118.
Consequently, we are not persuaded that the Examiner's proposed
combination of Subramanian and Funahashi is based on hindsight reasoning,
as Appellants allege. See App. Br. 14.
We further disagree with Appellants that neither Subramanian nor
Funahashi discloses a power source configured to generate sufficient
electrical energy from a thermal gradient generated between a coolant flow
within a passage of the body of the blade and a fluid flow external to the
blade surface. App. Br. 14; Reply Br. 4--5. As we have discussed, Funahashi
discloses such a (thermoelectric) power source. We note that Appellants
argued this claim limitation as a whole in the Appeal Brief, with no
argument presented suggesting that any particular sub-limitation was the
item alleged to be lacking from the references. See App. Br. 14. To the
extent that the Reply Brief could be construed as making an argument
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against the sufficiency of the amount of power generated by Funahashi' s
power source, such an argument is deemed waived, as it was not presented
in the principal Brief. See Reply Br. 4-5.
We are not persuaded by Appellants' argument that the Examiner's
position that the integration of elements onto a board is conventional is
unsupported by the references, because neither Subramanian nor Funahashi
discloses a printed circuit board. App. Br. 15; Reply Br. 5. We agree with
the Examiner that "the close proximity of the components allows the
components to be integrated to simplify the manufacturing." Final Act. 5.
Further, the Examiner took Official Notice that the components could be
connected on a single printed circuit board. Id. As discussed supra,
Appellants have not presented reasons why such integration on a single
printed circuit board is not common knowledge, and have not shown that the
requirement for such reasons in MPEP § 2144.03 is contrary to law,
regulation, or judicial precedent. See also MPEP § 2144.04(V)(B) (citing In
re Larson, 34 F.2d 965, 968 (CCPA 1965)).
Appellants' argument that the blade in Subramanian cannot also be
the printed circuit board, because the blade would then impermissibly
correspond to two claim elements, is not persuasive. App. Br. 15. Rather, we
agree with the Examiner's finding that Subramanian teaches the claimed
blade, and we agree with the Examiner's statement of Official Notice that a
single printed circuit board is used to connect electrical components. Ans. 3,
5. We further agree with the Examiner's conclusion that it would have been
obvious to integrate the electrical components onto a single circuit board,
because "[t]he integration of electronics onto a board is conventional in the
electronic arts and would be known to those at the time of the invention."
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Final Act. 10; see Ans. 6, 10. 3 Appellants' argument that such integration is
not supported by objective evidence, as neither Subramanian nor Funahashi
discloses a printed circuit board, is not persuasive because the Examiner did
not rely on a specific teaching in Subramanian or Funahashi. See App. Br.
15. Rather, the Examiner took Official Notice of this fact. Final Act. 5; see
Non-Final Act. mailed July 6, 2015, at 3.
We conclude that the Examiner did not err in rejecting claim 30 and
we sustain the Examiner's § 103(a) rejection.
CLAIM 31
Appellants' first contention, alleging that neither Subramanian nor
Funahashi discloses or suggests, whether alone or in combination, "a power
module, a first sensor, a second sensor and a transmitter remotely located
from one another and electrically connected by a wire, each of the power
module, the first sensor, the second sensor and the transmitter attached to a
common rotating component of the turbine such that the power module, the
first sensor, the second sensor and the transmitter rotate with the common
rotating component during operation of the turbine," amounts to a mere
restatement of the claim, and is not considered to be an argument requiring a
response. App. Br. 16. Appellants' second contention, that the Office Action
does not provide any evidence that the references, even if combined, would
include such features, is not persuasive of error. See id. We do not agree
with Appellants that the Examiner's finding that Figure 3 of Subramanian
3 Further, we agree with the Examiner's alternative conclusion that it would
have been obvious to form the components onto a separate board to be
mounted onto the blade, as this would allow easier replacement of
components. See Ans. 4.
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suggests that the components are connected by a wire is "speculation."
Figure 3 clearly illustrates power source 51 and transmitter 54 connected by
one or more wires, and sensor 50 and transmitter 54 also connected by one
or more wires (connector 52). See Subramanian i-f 40.
We conclude that the Examiner did not err in rejecting claim 31 and
we sustain the Examiner's § 103(a) rejection.
CLAIM32
Claim 32 recites, inter alia, "a sensor positioned in the shroud." The
Examiner takes Official Notice that "a shroud is part of a turbine and used to
contain the components." Final Act. 6. As a result, the Examiner finds that
compressor 12 "located inside the shroud and the sensor is located on the
compressor," and logically that said sensor is "in the shroud because it is
surrounded by the shroud." Ans. 5. We are unpersuaded, then, by
Appellants' argument that "there is no disclosure or suggestion by
Subramanian of positioning a sensor in the shroud of a turbine." App. Br. 16.
The Examiner has not, however, answered Appellants' further
argument (id. at 17) that Subramanian does not disclose or suggest a
transmitter further comprising a receiver "constructed to wirelessly receive
information from a location remote the turbine," as claim 32 requires. See
Ans. 5, 13. Accordingly, we do not sustain the Examiner's§ 103 rejection of
claim 32.
CLAIMS 33 AND 34
Appellants' arguments are not persuasive. App. Br. 17. As discussed
with respect to claim 30, the Examiner found that the combination of
Subramanian and Funahashi suggests the claimed power module. We sustain
the Examiner's§ 103(a) rejection of claims 33 and 34.
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CLAIM35
Appellants' argument repeats the claim 30 argument that the
references do not disclose or suggest a single printed circuit board. App. Br.
17. As discussed supra, the Examiner took Official Notice that the
components could be connected on a single printed circuit board, and such
Official Notice has not been appropriately challenged. We, therefore, sustain
the Examiner's§ 103(a) rejection of claim 35.
CLAIM36
The Examiner took Official Notice that "telemetry system with
receivers to control the telemetry system are known in the art." Final Act. 7.
The Examiner then concluded that "[i]t would have been obvious to modify
the system [i.e., the combination of Subramanian and Funahashi] for two
way communications to permit control functions." Ans. 7. As discussed
supra, Appellants' arguments concerning Official Notice do not satisfy the
requirements ofMPEP § 2144.03. App. Br. 17-18. We, therefore, sustain
the Examiner's§ 103 rejection of claim 36.
CLAIM 37, 39, 40, AND 44
Appellants present the same power source argument considered and
found unpersuasive with respect to claim 30, supra. App. Br. 18. We sustain
the Examiner's§ 103 rejection of claim 37, and of claims 39, 40, and 44 not
separately argued, over Subramanian and Funahashi for the reasons given
with respect to claim 30, supra.
CLAIM38
Appellants' arguments concerning the shroud limitation of claim 3 8
parallel the arguments made with respect to claim 32, and are not persuasive
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for the same reasons. App. Br. 18. We sustain the Examiner's§ 103(a)
rejection of claim 3 8.
CLAIM41
With respect to claim 41, the Examiner concludes that "[i]t would
have been obvious to direct gas flow by a heat pipe to increase the flow of
hot gases to improve the efficiency of the power source." Ans. 7; Final Act.
8. The Examiner has not explained how the claim requirement, that a
thermoelectric device be in thermal communication with at least two
temperatures selected from the options listed in the claim, is taught in
Subramanian or Funahashi. The Examiner also has not taken Official Notice
that such a limitation is well known in the art. The Examiner, therefore, has
failed to set forth the prima facie obviousness of claim 41. We do not sustain
the Examiner's§ 103(a) rejection of claim 41.
CLAIM42
We agree with Appellants that the Examiner's Official Notice that "a
heat exchanger is a conventional means to conduct heat" is insufficient to
compel a conclusion that it would have been obvious to include "a heat
exchanger attached to at least one of a heat-in side and a heat-out side of the
power source," as claim 42 requires. See Ans. 8; App. Br. 19. We do not
sustain the Examiner's § 103(a) rejection of claim 42.
CLAIM45
The obviousness of integrating the claimed components on a single
circuit board has been addressed by the Examiner with respect to claim 30.
Therefore, we agree with the Examiner that "integrally connecting" the
sensors, power source, and transmitter has indeed been addressed in a prior
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claim, and we are not persuaded by Appellants' argument. See App. Br. 19.
We sustain the Examiner's § 103(a) rejection of claim 45.
CLAIMS 46 AND 48
We are not persuaded by Appellants' argument that the combination
of Subramanian and Funahashi fails to disclose or suggest "generating an
electrical signal by converting at least one of a temperature differential and a
temperature gradient generated during operation of a rotating engine." App.
Br. 19. We agree with the Examiner's finding, with respect to claim 30, that
the combination of references suggests this limitation. We further observe
that Funahashi explicitly suggests placement of the device in a turbine.
Funahashi i-f 118. We sustain the Examiner's§ 103(a) rejection of claims 46
and 48.
CLAIMS 49, 52, AND 53
Appellants' argument that the rejection of claim 49 is deficient for the
reasons expressed with respect to claim 30 is not persuasive. App. Br. 19--
20. As discussed supra, we do not agree with Appellants that the Examiner
erred in rejecting claim 30. Contrary to Appellants' further argument, we
agree with the Examiner that, as discussed with respect to claim 30, the
combination of Subramanian and Funahashi suggests a blade for a turbine
engine, comprising a body having an outer surface subject to a pressurized
flow of gas, and a passage formed in the body configured to allow passage
of a flow of coolant, and a power module that generates an electrical signal
from a thermal gradient or a temperature differential. We sustain the
Examiner's§ 103(a) rejection of claim 49, as well as claim 53 not separately
argued. As Appellants have failed to specifically argue why the limitations
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of claim 52 are not disclosed or suggested by the references, we sustain the
§ 103(a) rejection of claim 52, dependent from claim 49, as well.
CLAIM 50
We are not persuaded by Appellants that the Examiner erred. We
agree with the Examiner's finding that Figure 2 of Funahashi shows the
claimed plurality of semiconductor legs, at least one n-type leg and at least
one p-type leg, coupled electrically in series and thermally in parallel. As
discussed with respect to claim 30, the combination suggests the use of the
power module of Funahashi, comprising a heat-in surface and a heat-out
surface. Ans. 7; see App. Br. 20. We sustain the Examiner's§ 103(a)
rejection of claim 50.
CLAIM 51
We agree with Appellants that reference to "Figure 3 of Funahashi,"
the sole ground of the Examiner's rejection, is not sufficient to establish that
the combination of Subramanian and Funahashi discloses or suggests the
claimed invention. App. Br. 20; Ans. 7. We do not sustain the Examiner's
§ 103(a) rejection of claim 51.
CLAIMS 43 AND 4 7
Appellants' sole argument, that Bernier "fails to cure any of the
deficiencies of the combination of Subramanian and Funahashi et al.
discussed above" (App. Br. 20) is not well taken, as we do not agree with
Appellants that such deficiencies exist. Accordingly, we sustain the
Examiner's§ 103 rejection of claims 43 and 47.
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35 U.S.C. § 112 REJECTION OF CLAIM 49
Appellants do not contest the§ 112 rejection of claim 49. App. Br. 9.
Accordingly, we sustain proforma the Examiner's rejection of claim 49
under 35 U.S.C. § 112, second paragraph.
CONCLUSIONS
1. Appellants did not properly traverse the Examiner's taking of
Official Notice of certain facts; thus, the Examiner did not err in not
supplying a reference in response.
2. Funahashi constitutes analogous art with respect to the claimed
invention.
3. The Examiner's combination of Subramanian and Funahashi fairly
suggests the invention recited in independent claim 30.
DECISION
The Examiner's decision to reject claims 30, 31, 33--40, 43-50, 52,
and 53 is affirmed. The Examiner's decision to reject claims 32, 41, 42, and
51 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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