Ex Parte Beers et al

Patent Trial and Appeal Board

Feb 13, 2018

13869050 (P.T.A.B. Feb. 13, 2018)

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.
13/869,050 04/24/2013 Craig M. Beers 71106US01;
67010-488US1
7282
26096 7590 02/15/2018
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EXAMINER
400 WEST MAPLE ROAD
SUITE 350
NGUYEN, NINH H
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/15/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG M. BEERS and BRENT J. MERRITT
Appeal 2017-004050
Application 13/869,0501
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 4, 5, 8, 9, and 12. Final Office
Action (April 5, 2016) (hereinafter “Final Act.”). We have jurisdiction
under 35 U.S.C. § 6(b).
1 Hamilton Sundstrand Corporation (“Appellant”), which is owned by
United Technologies Corporation, is the applicant as provided for under
37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal
Brief 1 (September 6, 2016) (hereinafter “Appeal Br.”).
Appeal 2017-004050
Application 13/869,050
The claims relate to a turbine nozzle and shroud for use in an air cycle
machine. Air cycle machines condition air for use in an aircraft cabin air
conditioning and temperature control system. The Examiner found that two
prior art patents directed to air cycle machines disclose the claimed nozzle
and shroud except for specific design parameters of the vanes. The
Examiner found that other prior art patents show that these design
parameters were known result-effective variables. The Examiner thus
determined that the claimed subject matter would have been obvious to one
having ordinary skill in the art as a matter of routine optimization.
Appellant challenges the Examiner’s determination based on optimization.
For the reasons explained in the decision, we find that the Examiner failed to
set forth adequate reasoning to support a determination of obviousness. As
such, we REVERSE the rejections under 35 U.S.C. § 103.
The Examiner also made a provisional double patenting rejection of
the claims over claims of co-pending applications in combination with prior
art. Appellant does not contest this rejection. As explained in the decision,
we do not reach this provisional rejection.
CLAIMED SUBJECT MATTER
Claims 1, 5, and 9 are the independent claims. Claim 1 is illustrative
of the subject matter on appeal and is reproduced below.
1. A nozzle and shroud for use in an air cycle machine
comprising:
a plate and a shroud curving in a first axial direction about
a center axis of said shroud relative to said plate;
a plurality of vanes extending in a second axial direction
away from said plate, with said plurality of vanes extending for
a height away from said plate and a width being defined as the
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Application 13/869,050
closest distance between two adjacent vanes, with a ratio of said
height to said width being between 1.3653 and 1.7992;
wherein there are 19 circumferentially spaced ones of said
vanes; and
wherein a total flow area is defined between all 19 of said
vanes and said total flow area being between 1.6802 to 2.2141
square inches (10.840-14.284 centimeters).
Appeal Br. 7 (Claims Appendix).
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Smolinski US 5,142,778 Sept. 1, 1992
Merritt US 5,249,934 Oct. 5, 1993
Nenov US 5,460,003 Oct. 24, 1995
Rowe US 5,522,134 June 4, 1996
Marques US 6,789,315 B2 Sept. 14, 2004
Barril US 8,113,787 B2 Feb. 14, 2012
Colson US 2012/0156028 A1 June 21, 2012
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1, 4, 5, 8, 9, and 12 stand rejected under the doctrine of
obviousness-type double patenting over various claims of U.S.
Application Nos. 13/869,045 and 13/869,051 in view of Marques.
2. Claims 1,5, and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Colson and Marques.
3. Claims 4, 8, and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Colson, Marques, Merritt, and Barril.
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Application 13/869,050
4. Claims 1,5, and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Merritt and Marques.
5. Claims 4, 8, and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Merritt, Marques, and Barril.
ISSUE
The issue presented by this appeal is whether the Examiner has
articulated adequate reasoning to explain why one having ordinary skill in
the art would have modified the air cycle machine of either Colson or
Merritt to have the number of vanes, the ratio of vane height to vane width,
and total flow area as claimed.
RELATED APPEALS
This appeal is related to three other appeals pending at the Board. See
Appeal 2017-004029 (Appl. No. 13/869,045); Appeal 2017-004034 (Appl.
No. 13/869,048); and Appeal 2017-004053 (Appl. No. 13/869,053). These
appeals involve similar subject matter, overlapping prior art, and
substantially the same rejections and arguments over the prior art.
ANALYSIS
First Ground of Rejection: Obviousness-type Double Patenting
The Examiner provisionally rejected all of the pending claims on the
basis of obviousness-type double patenting in view of claims of the ’045
application or the ’051 application in view of Marques. Final Act. 5-7.
Appellant does not contest this rejection. Appeal Br. 3.
Because this rejection is provisional, we decline to reach it. We leave
it to the Examiner to determine at the time when any claims of this
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Application 13/869,050
application are otherwise in condition for allowance whether the
obviousness-type double patenting rejection remains proper. See Ex parte
Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). The Manual of
Patent Examining Procedure (MPEP) § 804(I)(B)(l)(b) (9th ed., January
2018 [R-08.2017]) provides guidance to examiners as to the handling of
provisional nonstatutory double patenting rejections.
Second Ground of Rejection: Obviousness over Colson and Marques
The Examiner found that Colson discloses a nozzle and shroud
substantially as recited in independent claims 1,5, and 9, except that Colson
does not disclose 19 vanes, a ratio of height to width of 1.3653 - 1.7992, and
a total flow area of 1.6802 - 2.2141 square inches.2 Final Act. 7-8. The
Examiner found Marques teaches that total throat area of a turbine nozzle is
a design parameter that determines the performance for the turbine. Id. at 8
(finding Marques defines total throat area as the vane length L times the
throat width D0 summed for all of the throat areas between adjacent vanes in
the nozzle); id. at 2-3 (quoting Marques, col. 1,11. 35^47, discussing that
total throat area determines the turbine flow function).3 Based on these
teachings in the art, the Examiner found that the parameters of total number
of vanes, ratio of height to width, and total flow area were known result-
2 The Examiner found that Colson discloses a ratio of width to height of
0.745 - 0.769. Final Act. 8. Colson’s ratio, when inverted, results in a
height-to-width ratio of 1.3 - 1.3415.
3 The Examiner additionally cited Nenov and Rowe as evidence that total
flow area of a nozzle was known in the art to be a result-effective variable,
and Smolinski as evidence that the total number of vanes and the height-to-
width ratio of a nozzle were known in the art to be result-effective variables.
Id. at 3—4.
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effective variables. Final Act. 8. The Examiner determined that it would
have been obvious to make the nozzle and shroud of Colson with the
claimed parameters “to satisfy a design requirement” as a matter of routine
optimization. Id.
We agree with the Examiner that the claimed parameters are result-
effective variables. For example, Colson teaches that the ratio of vane width
to vane height facilitates directional control characteristics of the turbine
flow into the rotor (Colson 118), and Marques teaches total flow area
through the nozzle determines the turbine flow function (Marques, col. 1,
11. 35-42). But, these facts alone are not enough for a prima face case of
obviousness in this case. See In re Stepan Co., 868 F.3d 1342, 1346 (Fed.
Cir. 2017) (reversing a rejection based on a rationale of routine optimization
because the rejection failed to explain why it would have been routine
optimization to arrive at the claimed invention). Here, the Examiner’s
explanation that one having ordinary skill in the art would have arrived at
the claimed parameters “to satisfy a design requirement” is insufficient.
This reasoning simply repackages “routine optimization” using different
wording and fails to provide some rational underpinning explaining why a
person of ordinary skill would have arrived at the claimed invention through
routine optimization.
The Examiner relies in In re Boesch, 617 F.2d 272 (CCPA 1980) to
support the rejection. Final Act. 8. In Boesch, the court held that a prima
facie case of obviousness is established when the claimed ranges overlap
ranges disclosed in the prior art. 617 F.2d at 275-76. See also In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of
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obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art.”) and In re Applied Materials
Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (“Such overlap itself provides
sufficient motivation to optimize the ranges.”)
Unlike the situation presented in Boesch, in this case the Examiner
does not point to evidence that the claimed ranges are within or overlap with
the ranges taught in the prior art. See Stepan, 868 F.3d at 1348 (holding that
if the claimed range is not within or does not overlap the prior art range, it is
the PTO’s burden to show that the claimed range would have been obvious
to a person of ordinary skill in the art). In fact, the nozzle of Colson’s air
cycle machine has parameters that differ, in some cases by a significant
degree, from the claimed parameters.
Colson teaches a nozzle and shroud for an air cycle machine
comprising 23 vanes and a ratio of vane width to vane height of 0.745 -
0.769. Colson || 16, 18. This disclosed range, when inverted, represents a
ratio of height to width of 1.3004 to 1.3423. In one specific embodiment,
Colson discloses that the vanes have a throat width of 0.092 inches and a
vane height of 0.120 inches. Id. 118. In this embodiment, the ratio of the
width to height is 0.767, which, when inverted, represents a ratio of height to
width of 1.3043. Colson teaches that the ratio of width to height “facilitates
directional control characteristics of the turbine flow into the turbine rotor.”
Id. As such, Colson teaches that the width and height dimensions of the
vanes, and specifically, the ratio of these two dimensions, is a result-
effective variable. That said, Colson’s range does not overlap with the
claimed range of 1.3653 to 1.7992.
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Further, in Colson’s embodiment, the total flow area, calculated by
multiplying the vane throat width (i.e., 0.092 inches) by the vane height (i.e.,
0.120 inches) by the total number of vanes (i.e., 23), equals 0.25392 square
inches. This total flow area is considerably lower than the claimed range of
1.6802 to 2.2141 square inches.
The Examiner has failed to explain why a person having ordinary skill
in the art would have been led to modify the air cycle machine of Colson to
decrease the number of vanes, increase the ratio of vane height to vane
width, and increase the total flow area to arrive at the claimed invention.
Marques does not provide such a reason. Marques uses “total throat
area” to refer to the width between adjacent vane pairs of a turbine nozzle
multiplied by the length (i.e., height) of the vanes multiplied by the number
of vane pairs. Marques, col. 4,1. 51 - col. 5,1. 13. Marques describes that
the “total throat area, a design parameter of the gas turbine engine,
determines the turbine flow function, which in turn sets the compressor
pressure ratio and operating line, and is an important parameter in
determining compressor stall margin.” Id. at col. 1,11. 35^47. Marques
teaches that the final total throat area target range is a parameter “selected by
engine designers to optimize the performance of the gas turbine engine.” Id.
at col. 5,11. 9-12. Marques, at most, provides a suggestion that total flow
area can be used to optimize turbine flow function.
We have no reason to believe that Colson did not optimize the
parameters for its disclosed nozzle design. Colson’s embodiment, as
explained above, results in a total flow area considerably lower than the
claimed range. Assuming that the teachings of Marques are applicable to the
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Application 13/869,050
air cycle turbine of Colson, the Examiner does not identify any reason, based
on the teachings in Marques, to modify Colson to increase total flow area
through the nozzle.
In addition to reliance on routine optimization, the Examiner made a
statement nominally based on design choice. Final Act. 5 (stating that
because Appellant’s Specification does not disclose that the claimed number
of vanes, height to width ratio, and total flow area solve a stated problem or
are designed for a particular purpose, the limitations are considered a design
choice). We understand this statement to be an attempt by the Examiner to
bolster a routine optimization determination by pointing out that the
Specification does not show criticality of the claimed parameters. The
Examiner appears by this statement to have shifted the burden of proving
patentability to Appellant. Such a shift in the burden of production does not
occur until once the Examiner has set forth a prima facie case of
obviousness. As the Examiner failed to provide adequate reasoning to
support a determination of obviousness, the fact that Appellant did not
provide rebuttal evidence is not determinative of the outcome in this appeal.
In summary, the Examiner has failed to explain adequately why a
person having ordinary skill in the art would have been led to modify the air
cycle machine of Colson to decrease the number of vanes, increase the ratio
of vane height to vane width, and increase the total flow area to arrive at the
claimed invention. As such, we do not sustain the second ground of
rejection.
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Third Ground of Rejection: Obviousness over Colson, Marques, Merritt,
and Barril
This rejection of dependent claims 4, 8, and 12 suffers from the same
deficient rationale for the proposed modification of Colson with the
teachings of Marques discussed above. Final Act. 10. The Examiner’s
reliance on Merritt and Barril for the base material and coating limitations of
these dependent claims does not cure this deficiency. Id. As such, we do
not sustain the third ground of rejection.
Fourth Ground of Rejection: Obviousness over Merritt and Marques
In this alternate rejection of claims 1,5, and 9, the Examiner relies on
the disclosure of an air cycle machine in Merritt combined with the
teachings of Marques to determine obviousness of the claimed subject
matter. Final Act. 11-13. Merritt generally discloses an air cycle machine,
but it contains no specific discussion about the design of the vanes of the
turbine nozzle. As such, this patent appears to provide even less support
than Colson to explain why one having ordinary skill in the art would have
arrived at the claimed number of vanes, ratio of vane height to vane width,
or total flow area recited in the claims. As such, we do not sustain the fourth
ground of rejection.
Fifth Ground of Rejection: Obviousness over Merritt, Marques, and Barril
This rejection of dependent claims 4, 8, and 12 suffers from the same
deficient rationale for the proposed modification of Merritt with the
teachings of Marques discussed above. Final Act. 13. The Examiner’s
reliance on Barril for the coating limitations of these dependent claims does
not cure this deficiency. Id. at 13—14. As such, we do not sustain the fifth
ground of rejection.
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DECISION
The rejections of claims 1, 4, 5, 8, 9, and 12 under 35 U.S.C. § 103 are
reversed.
We do not reach the provisional obviousness-type double patenting
rejection of claims 1, 4, 5, 8, 9, and 12.
REVERSED
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