Ex Parte Czechowski et al

Patent Trial and Appeal Board

Jan 25, 2018

12943793 (P.T.A.B. Jan. 25, 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.
12/943,793 11/10/2010 Edward S. Czechowski IRND-991 4391
123446 7590 01/29/2018
Ingersoll-Rand Company
Taft, Stettinius & Hollister LLP
One Indiana Square
Suite 3500
Indianapolis, IN 46204-2023
EXAMINER
HAMO, PATRICK
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
taft-ip-docket @ taftlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD S. CZECHOWSKI, ROBERT SMALL,
JOHN R. BATTERSHELL, and ROBERT M. KOLODZIEJ
Appeal 2016-006700
Application 12/943,793
Technology Center 3700
Before: CHARLES N. GREENHUT, BENJAMIN D. M. WOOD, and
ANNETTE R. REIMERS, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006700
Application 12/943,793
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims
9-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a modular rotor assembly with an axially
extending internal oil passage. Claim 9, reproduced below, illustrates the
claimed subject matter:
9. A system, comprising:
a carrier, comprising:
a single structure having first and
second bearing support regions in first and
second fixed positions that are axially
spaced apart relative to one another,
wherein the carrier is configured to self-
contain and align first and second bearings
in the first and second bearing support
regions in the first and second fixed
positions, respectively; and
at least one internal oil passage
extending lengthwise through the single
structure from an oil line connector
extending axially into a longitudinal end of
the carrier to both the first and second
bearings, wherein the at least one internal
oil passage is disposed between an exterior
side surface and an interior surface of the
single structure, the exterior side surface is
sealed along an entire length of the single
structure surrounding the at least one
internal oil passage, the exterior side surface
is symmetrical about a rotational axis of the
1 Appellants stated that the real party in interest is Cameron International
Corporation. App. Br. 2.
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Application 12/943,793
first and second bearings at opposite first
and second axial end portions of the single
structure, and the carrier is sized to fit within
a bore of a machine.
REFERENCES2
Mead US 1,754,724 Apr. 15, 1930
Corydon US 2,218,393 Oct. 15, 1940
Burkhart US 2,438,385 Mar. 23, 1948
Dolza US 2,491,483 Dec. 20, 1949
Frank US 3,826,589 July 30, 1974
Miles US 4,097,205 June 27, 1978
Osborn US 4,108,506 Aug. 22, 1978
Glaser US Re. 34,276 June 8, 1993
Middlebrook US 7,128,061 B2 Oct. 31,2006
REJECTIONS
Claims 9, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Middlebrook and Burkhart. Final Act. 2.
Claims 10, 11, and 14—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Middlebrook, Burkhart, and AAPA. Id. at 4.
Claims 21, 22, 24, 25, 28, and 29 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Middlebrook and Glaser. Id. at 9.
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Middlebrook, Glaser, and Burkhart. Id. at 12.
Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Middlebrook, Glaser, and AAPA. Id. at 13.
Claims 9 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mead, Burkhart, and Dolza. Id. at 14.
2 The Examiner also relies on Figure 1 of Appellants’ Drawings as
Applicant’s Admitted Prior Art (AAPA). Final Act. 4.
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Application 12/943,793
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mead, Burkhart, Dolza, and Corydon. Id. at 16.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mead, Burkhart, Dolza, and AAPA. Id. at 17.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mead, Burkhart, Dolza, and Middlebrook. Id. at 18.
Claims 14 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mead, Burkhart, Dolza, and Frank. Id. at 19.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mead, Burkhart, Dolza, Frank, and Corydon. Id. at 20.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Mead, Burkhart, Dolza, Frank, and Miles. Id. at 21.
ANALYSIS
Claims 9, 12, and 13—Unpatentable over Middlebrook and Burkhart
Appellants argue claims 9, 12, and 13 as a group. App. Br. 15. We
select claim 9 as representative of the group and decide the appeal on the
basis of claim 9 alone. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Middlebrook teaches the system of claim 9
except that its internal oil passage 64 does not extend lengthwise as claim 9
requires. Final Act. 2—3 (citing Middlebrook, Figs. 2A, 3A). The Examiner
therefore relies on Burkhart to teach an internal oil passage extending
lengthwise. Id. at 3 (citing Burkhart, Figs. 2). The Examiner notes that
Burkhart discloses several embodiments comprising internal, lengthwise­
extending passages that supply lubricant to bearings. Id. (citing Burkhart,
Figs. 3—4). The Examiner determines that it would have been obvious to one
of ordinary skill in the art “to incorporate the internal passage from an oil
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Application 12/943,793
line connector as taught by Burkhart et al into the single structure of the
carrier of Middlebrook for the purpose of dedicating lubricant to the first and
second bearings of Middlebrook thereby enhancing the lubrication of the
bearings.” Id. at 3^4.
In response, Appellants contend that “given that the configuration of
Middlebrook already distributes the lubricant along the external groove 63 to
the lubrication apertures 65, there would be no clear reason to change this
configuration in view of Burkhart.” App. Br. 12. Appellants further
contend that, in fact, external groove 63 provides specific benefits that
would be lost if it were replaced with Burkhart’s internal passage. Id. at 12—
13.
We agree with Appellants that Middlebrook teaches that external
groove 63 provides specific benefits beyond that of supplying lubrication to
the bearings. Specifically, Middlebrook teaches that external groove 63
permits lubricating oil to flow into annular gap 67 around sleeve 60 to create
a “hydrostatic supporting force” that helps dampen vibrations. Middlebrook,
6:66—7:6. But in proposing the combination of Middlebrook with Burkhart,
the Examiner is not proposing that external groove 63 be replaced, but rather
that Burkhart’s lengthwise oil passage be used along with external groove
63. Ans. 3. The proposed combination, therefore, would result only in the
replacement of oil passage 64.
Appellants respond that adding additional oil passages would
“unnecessarily complicate the design of Middlebrook without any added
benefit,” and would likely require a substantial redesign of Middlebrook.
App. Br. 13. Appellants do not, however, support these assertions with
evidence or reasoned argument, and such unsupported assertions do not take
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the place of evidence in the record. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). Moreover, Appellants do not argue that modifying
Middlebrook in this manner would require more than ordinary skill. In any
event, “a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to combine.”
Medichem v. Rolabo, 437 F.3d 1157, 1165 (Fed. Cir. 2006); see Winner Infl
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another.”). Here, as the Examiner states, adding
Burkhart’s lengthwise oil passage to Middlebrook’s device enhances oil
lubrication of the bearings because it provides a direct oil path to both
bearings. Ans. 2—A. Even if there would have been no enhancement
resulting from replacing Middlebrook’s radial oil passage 64 with Burkhart’s
lengthwise oil passage, such replacement would amount to no more than the
“mere substitution of one element for another known in the field,” yielding
the predictable result of lubricating bearings. See KSR Int 7 Co. v. Teleflex
Inc., 550 U.S. 398, 415—16 (2007) (“when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result”).
As we are not persuaded that the Examiner erred in rejecting claims 9,
12, and 13 as unpatentable over Middlebrook and Burkhart, we sustain the
rejection.
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Application 12/943,793
Claims 10, 11, and 14—20—Unpatentable
over Middlebrook, Burkhart, and AAPA
Appellants substantially repeat the arguments made above with
respect to the Middlebrook-Burkhart combination. Because we did not find
those arguments persuasive, we sustain the Examiner’s rejection of claims
10, 11, and 14—20 as unpatentable over Middlebrook, Burkhart, and AAPA.
Claims 21, 22, 24, 25, 28, and 29—Unpatentable over Middlebrook and
Glaser; Claim 23—Unpatentable over Middlebrook, Glaser, and Burkhart;
Claims 26 and 27—Unpatentable over Middlebrook, Glaser, and AAPA
In support of the patentability of claims 21—29, Appellants rely on the
arguments made in connection with the Middlebrook-Burkhart combination.
App. Br. 20—21. Because we found those arguments unpersuasive, we
sustain the Examiner’s rejections of these claims.
Claims 9 and 12—Unpatentable over Mead, Burkhart, and Doha
Claim 9 requires the exterior side surface of the single structure to be
“symmetrical about a rotational axis of the first and second bearings at
opposite first and second axial end portions of the single structure.” App.
Br. 33 (Claims App.). The Examiner finds that Mead’s inlet pipe 1 satisfies
this requirement if combined with Dolza, alleging that pipe 1 is “probably
flexible in view of the Dolza reference which discloses pipe (22) to be
flexible.” Final Act. 14—15 ; see Dolza, Fig. 1. The Examiner further alleges
that “[i]f the pipe (1) of Mead is adjusted so that it is symmetrical like
Dolza, the adjusted carrier would read on the claim.” Final Act. 15. The
Examiner argues in the alternative that it would have been obvious to one of
ordinary skill “to form [Mead’s pipe (1)] as a separate piece from the carrier
because MPEP 2144.04 (V—C) states that constructing a formerly integral
structure (Mead) in various elements involves only routine skill in the art.”
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Id. The Examiner also argues that “the bend in the inlet pipe (1) of Mead is
clearly not necessary in view of the Dolza reference which shows the main
supercharger (11) is clearly next to a straight inlet pipe (22).” Id.
Appellants dispute that Mead in view of Dolza teaches or suggests the
claimed symmetrical side surface. Appellants argue, among other things,
that “the Examiner’s rejection appears to be based on mere possibilities
without any articulated reasoning with a rational underpinning.” App.
Br. 22. Appellants also argue that Mead “teaches away from a symmetrical
configuration of the pipe” because Mead teaches that space around the
engine is limited and “the curved pipe 1 contributes to space reduction
around the engine.” Id.
We decline to sustain this rejection. As is evident from Mead’s sole
figure, Mead’s inlet pipe 1 is not symmetrical about the illustrated support
regions. See Mead, Fig. 1. Thus, the Examiner must rely on Mead as
modified by Dolza’s teachings. But even if one of ordinary skill in the art
would have made Mead’s pipe 1 symmetrical in view of Dolza, the
Examiner has not articulated a reason to combine Mead and Dolza. See In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (obviousness determination
must be supported with articulated reasoning with rational underpinning).
And to the extent it would have been obvious to make inlet pipe 1 separable
from the remainder of Mead’s impeller casing, the Examiner has not
explained how making pipe 1 separable satisfies claim 9’s symmetry
requirement.
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Remaining Rejections Based on the
Combination of Mead, Doha, and Burkhart
The Examiner rejects claims 10, 11, 13, and 14—17 as unpatentable
over Mead, Dolza, Burkhart, and at least one additional reference. Final
Act. 16—21. Claims 10, 11, and 13 depend from claim 9. App. Br. 33—34
(Claims App.) Claims 15—17 depend from claim 14, which is similar to
claim 9. Id. at 34—35. These rejections rely on the analysis above with
respect to claims 9 and 12, Final Act. 16—21, which we found unpersuasive.
The Examiner does not rely on the additional references to cure the deficient
analysis. Accordingly, for the reasons discussed above, we do not sustain
these rejections.
DECISION
For the above reasons, we affirm the following rejections: (1) claims
9, 12, and 13 as unpatentable over Middlebrook and Burkhart; (2) claims 10,
11, and 14—20 as unpatentable over Middlebrook, Burkhart, and AAPA; (3)
claims 21, 22, 24, 25, 28, and 29 as unpatentable over Middlebrook and
Glaser; (4) claim 23 as unpatentable over Middlebrook, Glaser, and
Burkhart; and (5) claims 26 and 27 as unpatentable over Middlebrook,
Glaser, and AAPA. We reverse all of the rejections based on the
combination of Mead and Dolza.
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).
AFFIRMED
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