Ex Parte BarnettDownload PDFPatent Trial and Appeal BoardJun 18, 201311516600 (P.T.A.B. Jun. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BARRY BARNETT ____________ Appeal 2011-003742 Application 11/516,600 Technology Center 3700 ____________ Before FRED E. McKELVEY, GAY ANN SPAHN, and ADAM V. FLOYD, Administrative Patent Judges. FLOYD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 7-10, and 13 have been twice rejected. Claims 2, 5, and 6 have been cancelled. The Examiner objects to claims 3, 4, 11, and 12 as being dependent upon a rejected base claim. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-003742 Application 11/516,600 2 CLAIMED SUBJECT MATTER Claims 1 and 13 are the independent claims on appeal. Claim 1 is illustrative of the subject matter on appeal, and recites, with emphasis added: 1. A fan case for surrounding a fan having blades in a gas turbine engine comprising: a hollow body; an abradable liner disposed inside the hollow body, the abradable liner having an inside surface for circumscribing the fan blades; a flange on the hollow body defining a surface for mating to a forward part of the engine; a first radial slot extending across the mating surface of the flange, wherein the first radial slot is in a free-draining relation with the inside surface of the abradable liner; and wherein the abradable liner comprises: a radial passage, through the abradable liner, aligned with the first radial slot. Independent claim 13 is directed to a turbo-fan gas turbine engine having a fan case including, inter alia, the identical italicized language of independent claim 1 supra. REJECTION Claims 1, 7-10, and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable over Admitted Prior Art (APA)1 and Hauff (US 5,769,626, iss. Jun. 23, 1998). 1 Specifically, the Examiner cites to the prior art described in the Specification at paragraphs [0002] through [0009] and Figures 1 and 2. Ans. 4. Appeal 2011-003742 Application 11/516,600 3 ANALYSIS The rejection of claims 1, 7-10, and 13 as unpatentable over APA and Hauff The Examiner finds all limitations of independent claims 1 and 13 to be disclosed in APA with the exception of “a first radial slot extending across the mating surface of the flange, wherein the first radial slot is in a free-draining relation with the inside surface of the abradable liner and wherein the abradable line comprises a radial passage aligned with the first radial slot of the hollow body.” Ans. 3-4; see also Ans. 5. The Examiner finds that “Hauff et al. teaches that ‘condensates sometimes lead to leaks in flange connections.’” Ans. 4 (citing Hauff, col. 2, ll. 16-18). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify the APA “by moving the drainage features from the location around the blade tips . . . to the flange mating connection for the purpose of controlling the known leakages taught in Hauff et al. resulting in a radial slot through the flange and the abradable liner . . . compris[ing] a radial passage aligned with the first radial slot of the hollow body.” Ans. 4. In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the burden of coming forward with evidence or argument shift to the appellant. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. In the present case, the Examiner does not make factual findings regarding modifying the structure of APA to incorporate the “radial slot” and “radial passage” as recited in the claims. For example, the Examiner has not explained why one of ordinary skill in the art would move the drainage Appeal 2011-003742 Application 11/516,600 4 features to the mating surface of the flange as opposed to some other location or as opposed to some other solution (e.g., reducing the condensation which was the solution described in Hauff). Additionally, even assuming the drainage holes were to be relocated to the mating surface of the flange, the Examiner has not explained why this would result in the radial slot and radial passage arrangement recited in the claims. Thus, the Examiner has not made sufficient findings based on evidence of record to justify a prima facie case of obviousness of the subject matter of independent claims 1 and 13. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). Thus, the rejection of independent claims 1 and 13, and claims 7-10 dependent upon claim 1, under 35 U.S.C. § 103(a) as unpatentable over APA and Hauff is not sustained. DECISION We REVERSE the rejection of claims 1, 7-10, and 13 under 35 U.S.C. § 103(a) as unpatentable over APA and Hauff. REVERSED hh Copy with citationCopy as parenthetical citation