Ex Parte Colson et al

Patent Trial and Appeal Board

Jul 24, 2017

13220598 (P.T.A.B. Jul. 24, 2017)

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.
13/220,598 08/29/2011 Darryl A. Colson 67010-555
PUS 1;PA-0018660
2118
26096 7590 07/26/2017
TART SON OASKFY fr OT DS P C EXAMINER
400 WEST MAPLE ROAD
SUITE 350
HAMO, PATRICK
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARRYL A. COLSON and
CRAIG M. BEERS
Appeal 2015-000211
Application 13/220,598
Technology Center 3700
Before MICHAEL L. HOELTER, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1—13 and 16—18. App. Br. 2. Claims 14 and 15 have
been canceled. See Response to Non-Final Office Action mailed December
12, 2013. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a tie rod for an air cycle
machine that supplies air to, for example, an aircraft cabin.” Spec. 11.
Appeal 2015-000211
Application 13/220,598
Claims 1, 8, and 16 are independent. Claim 1 is illustrative of the claims on
appeal and is reproduced below:
1. A shaft assembly of an air cycle machine, comprising:
a cylindrical body rotatably coupling a compressor rotor,
a turbine rotor, and a fan rotor, the cylindrical body having an
axial length and a diameter, wherein a ratio of the axial length
to the diameter is from 34.82 to 35.18.
REFERENCES RELIED ON BY THE EXAMINER
McAuliffe US 5,311,749 May 17, 1994
Breese US 5,643,093 July 1, 1997
THE REJECTION ON APPEAL
Claims 1—13 and 16—18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McAuliffe and Breese.
ANALYSIS
Appellants’ statements regarding claim 1 do not differ from the
statements presented regarding the remaining claims 2—13 and 16—18. App.
Br. 3—8. For example, when addressing independent claims 8 and 16,
Appellants simply state, “[f]or the reasons mentioned in response to the
rejection of claim 1,” each such claim “is patentable.” App. Br. 7.
Regarding claims 2—4, 6, 7, 9, 10, 12, 13, and 18, Appellants state that these
claims depend from an independent claim and as such, they “are patentable
for at least this reason.” App. Br. 6—8. Regarding claims 5, 11, and 17,
Appellants state, “as explained in response to the rejection of claim 1,” the
rejection of the claim in question “should be withdrawn.” App. Br. 6—7. In
view of the above statements for these claims that reference/rely upon
arguments presented with respect to claim 1, we select claim 1 for review,
2
Appeal 2015-000211
Application 13/220,598
with the remaining claims standing or falling therewith. See also 37 C.F.R.
§ 41.37(c)(l)(iv).
The specific limitation in contention is, “wherein a ratio of the axial
length to the diameter [of the recited “cylindrical body”] is from 34.82 to
35.18.” The Examiner states that this ratio “would have been recognized . . .
as a matter of engineering design choice” and “that the ratio of the axial
length to the diameter of a cylindrical body is a result-effective variable.”
Final Act. 3; Ans. 8. Appellants, on the other hand, contend, “the claimed
ratios are not recognized in the cited prior art” and that, although “Breese
states that natural resonant frequency is based on size and shape,” Breese
“does not teach that specific ratios of axial length to diameter are a matter of
engineering design choice.” App. Br. 4. Instead, as per Appellants, “[a]
ratio of axial length to diameter is quite different than a general reference to
a component’s size and shape.” App. Br. 4. Appellants also state,
“[sjupport of a prima faci[e] case of obviousness based on optimization of a
result-effective variable requires first that the variable be recognized in the
prior art.” App. Br. 4.
The Examiner principally relies on the teachings of Breese (and
paraphrases same) to support the above findings and conclusions.1 Final
Act. 2—3; Ans. 8—9. Breese states, “[i]t is known that when any machined
body is rotated about an axis, a natural resonant frequency is defined
thereby.” Breese 1:26—29; see also Final Act. 3, Ans. 8. Breese continues,
“[t]his natural resonant frequency is an inherent characteristic of the
1 The Examiner relies on McAuliffe for the structural limitations
acknowledging, “McAuliffe is silent as to the precise dimensions of the
length and diameter of the tie rod 16.” Final Act. 2.
3
Appeal 2015-000211
Application 13/220,598
mechanical body and is based upon many factors, including its composition,
size, and shape.” Breese 1:29-31; see also Final Act. 3, Ans. 8. Thereafter,
Breese states, “[i]n the context of a vehicular driveshaft tube, the natural
resonant frequency is often referred to as the ‘critical speed’ thereof.”
Breese 1:34—36; see also Final Act. 2. Concluding this paragraph, Breese
states, “[accordingly, an important consideration in the design and
manufacture of driveshaft tubes and other drive train assembly structures is
that they not be operated at or near their critical speeds in normal operation.”
Breese 1:43—46; see also Final Act. 3, Ans. 8.
Further, directly addressing design considerations for a driveshaft
tube, Breese states, “the critical speed for a driveshaft tube is also a function
of the size and shape of the driveshaft tube” and that “[generally speaking,
the longer the driveshaft tube is in length and the smaller it is in diameter,
the lower the critical speed.” Breese 2:7—11; see also Final Act. 3; Ans. 9.
The Examiner identifies the above passages in Breese as support that the
recited ratios “would have been recognized ... as a matter of engineering
design choice” (Final Act. 3) and “to demonstrate that the ratio of the axial
length to the diameter of a cylindrical body is a result-effective variable”
(Ans. 8.).
Appellants dispute that such teachings disclose a result-effective
variable. See App. Br. 4—5; Reply Br. 2. However, Appellants do not
explain how a skilled person reading Breese’s discussion about length and
diameter would fail to understand that such dimensions affect critical speed
and that critical speed is to be avoided. See supra.
This desire to avoid critical speed is also addressed in Appellants’
Specification when discussing problems with prior assemblies, i.e., “[djuring
4
Appeal 2015-000211
Application 13/220,598
operation, resonance causes some tie rods, rotating at typical operating
speeds, to become unbalanced and undesirably vibrate.” Spec. 14.
Appellants’ solution is a cylindrical body having a length to diameter ratio
within the disclosed range. Spec. 1 5. Appellants do not, however, indicate
how any ratio outside this recited range fails to likewise resolve the problem
of vibration, or how a ratio within this particular range achieves an
unexpected result. As such, although Appellants contend “Breese does not
demonstrate that specific ratios of axial length to diameter affect critical
speed” (Reply Br. 1), Breese certainly discloses that varying a length, or
varying a diameter, of a driveshaft affects its critical speed (see Breese 2:9—
11) and Appellants do not explain how such a variation as taught by Breese
fails to likewise affect a ratio between the driveshaft’s length and diameter.
As stated, the Examiner acknowledges that the cited art (Breese
included) fails to teach the specifically recited range of ratios,2 and hence,
the Examiner states that this range “would have been recognized by one
skilled in the art... as a matter of engineering design choice based on the
construct of the tie rod and attendant rotating bodies” in view of the
teachings of Breese. Final Act. 3. Accordingly, because no criticality or
unexpected result has been shown by Appellants as being associated with the
recited range, we are not persuaded the Examiner erred in finding that the
recited range is a matter of engineering design choice for McAuliffe’s tie rod
16 in view of the teachings of Breese. Further, we are not persuaded that, as
per the teachings of Breese, the length and/or diameter of the rotating shaft
is not a result-effective variable (when considering critical speed or natural
resonant frequency).
2 Appellants contend, “[t]he claims recite[] specific ratios.” Reply Br. 2.
5
Appeal 2015-000211
Application 13/220,598
In summation, the Examiner states, “[t]o allow for a specific range to
be patented absent a showing of the criticality of the claimed range or
otherwise showing unexpected results within a claimed range would
eventually result in all ranges being patented.” Ans. 10. The Examiner
continues stating, “[i]n the present case, neither in the original disclosure nor
through any other evidence have the Appellants demonstrated unexpected
results or criticality in the claimed ranges.” Ans. 10. We agree with the
Examiner’s statements.
Thus, based on the record presented, we sustain the Examiner’s
rejection of claims 1—13 and 16—18 as being obvious over McAuliffe and
Breese.
DECISION
The Examiner’s rejection of claims 1—13 and 16—18 is affirmed.
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
6