Ex Parte Dillard

Patent Trial and Appeal Board

Apr 24, 2018

13416676 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/416,676 03/09/2012 Gary J. Dillard
54549 7590 04/26/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
67097-1716PUS1;52672US01 1051
EXAMINER
LINDERMAN, ERIC W
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/26/2018 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY J. DILLARD
Appeal2017-001705
Application 13/416,676 1
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-5, 7-11, 13-15, and 17-27. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellant the real party in interest is United Technologies
Corporation. Br. 1.
2 Claims 6, 12, and 16 were canceled by Appellant. Final Act. 2.
Appeal2017-001705
Application 13/416,676
CLAIMED SUBJECT MATTER
The claims are directed to "an apparatus for minimizing [the]
signature of an engine." Spec. i-f 4. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. Apparatus for minimizing signature of an engine having an
exhaust gas path and a fan gas path, said apparatus comprising:
a casing separated into a casing forward portion and a
casing aft portion, wherein said casing includes an axial gap
between said casing forward portion and said casing aft portion
and said axial gap surrounds an entire circumference of said
casing; and
a liner disposed within said casing, said exhaust gas path
passing within said liner and said fan gas path passing between
said liner and said casing, wherein said casing forward portion
and said casing aft portion are each in register with said liner.
REJECTIONS
The Examiner made the following rejections:
I. Claims 8 and 24--27 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claims 8 and 14 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Thayer (US 5,706,650, issued Jan. 13, 1998).
III. Claims 1-5, 7, 9-11, 13, 15, and 17-27 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Thayer and Farah
(US 7,367,567 B2, issued May 6, 2008).
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OPINION
Rejection I-The rejection of claims 8 and 24-27
under 35 US.C. § 112,first paragraph
The Examiner finds that claims 8 and 24--27 are not supported by the
specification and in particular lack written description of the following:
A) "a liner disposed within said casing having a unitary construction
between said casing forward portion and said casing aft portion" as recited
in claim 8; B) a "unitary piece of material axially aligned with the axial gap"
as recited in claims 26 and 27; and C) "said casing forward portion is non-
rotatable relative to an engine case" as recited in claims 8, 24 and 25. Final
Act. 3--4 (emphasis omitted). Appellant argues that "[a] person of ordinary
skill in the art would recognize that the Applicant was in possession" of the
claimed features at the time of filing of the application. Br. 4--5.
Although terms may not be contained within the Specification, the
description requirement does not demand that the Specification recite the
claimed invention in haec verba. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1352 (Fed. Cir. 2010) (en bane). "[W]ritten description" support
for the language of the claims may be contained in the drawings. See Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). Our
reviewing court has grappled with the meaning of the similar terminology of
"unitary, one piece" in In re Pond, 466 F. App'x 876 (Fed. Cir. 2012). In
that case, the court affirmed the Board's decision, which focused on the
resultant end product, finding that "the process of insert molding of two
materials having similar properties results in bonding of the two parts such
that the end product is of a unitary, one-piece construction." In re Pond, 466
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F. App 'x at 879. We are also reminded of earlier instructions from our
reviewing court to the effect that unless the claims, the specification, or the
prosecution history require that the particular component be a single, one-
piece structure, a court normally will not read that limitation into the claim.
See e.g., Utica Enters., Inc. v. Fed. Broach & Mach. Co., 109 F. App'x 403,
407---08 (Fed. Cir. 2004).
The Examiner relies upon the following definition of "unitary" as
"[b ]ased on or characterized by one or more units" to construe the claims.
Ans. 3. Appellant does not challenge this definition, nor does Appellant
proffer a different definition. See Br. 3---6. In reviewing the Examiner's
definition it is clear that the definition is broad enough to include parts that
are constructed of a single element or of several elements joined together to
act as a unit.
Lack of Written Description Ground A: Claim 8
Appellant directs us to Figures 3 and 4 of the Specification. Br. 4--5.
The invention shown therein shares similarities with the prior art Figures 1
and 2 and the numbering system is consistent between the prior art Figures
and the invention illustrated in Figure 3. Spec. i-f 33. Differences in
numbering are meant to highlight differences between the prior art and
Appellant's invention. Id. Thus, looking at Appellant's Figure 2, the liner
35 appears as a single element from the forward portion 55 to the aft portion
65. Appellant's Figure 3 shows a similar liner 335 that is a single element
from the forward portion 355 to the aft portion 365. Thus, Appellant's
drawings provide written description support for the "liner disposed within
said casing having a unitary construction axially between said casing
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forward portion and said casing aft portion." Br. 12, Claims App.; see Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (stating
that "the written description requirement is satisfied by the patentee's
disclosure of 'such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention."' (quoting
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
Accordingly, we do not sustain the rejection under 35 U.S.C. § 112, first
paragraph, of claim 8 on this ground.
Lack of Written Description Ground B: Claims 26 and 27
Appellant asserts that the fact that "the liner includes different regions
with different shapes does not mean that the liner is not unitary." Br. 6. As
stated supra, liner 335 is continuous from the forward portion to the aft
portion. The liner at the central converging portion 360 is parallel to and
thus axially aligned with the axial gap. Thus, Appellant's Figures 3 and 4
provide support for the "liner [to] include[] a unitary piece of material
axially aligned with the axial gap in said casing," as recited in clams 26 and
27. Id. at 14, Claims App. Thus, Appellant's illustrated liner 335 is a single
element and is thus consistent with the Examiner's definition. Accordingly,
the Examiner does not demonstrate that there is a lack of written description
support for the invention recited in claims 26 and 27 and, thus, we do not
sustain the rejection under 35 U.S.C. § 112, first paragraph.
Lack of Written Description Ground C: Claims 8, 24, and 25
As Appellant points out, paragraph 33 of the Specification states that
nozzle 300 extends from case 22 of gas turbine engine 10, and Figure 3
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shows casing forward portion 375 extending from engine case 22 such that
casing forward portion 375 cannot rotate relative to engine case 22. Br. 3--4.
Thus, considering paragraph 33 and Figure 3 together, a person having
ordinary skill in the art would recognize that the "casing forward portion is
non-rotatable relative to an engine case." Id. at 12, Claims App.
Accordingly, we do not sustain the rejection of claims 8, 24, and 25 under
35 U.S.C. § 112, first paragraph, on this ground.
Rejection II-The rejection of claims 8 and 14
under 35 US.C. § 102(b)
Appellant argues claims 8 and 14 as a group without presenting
separate arguments for the patentability of claim 14 apart from its
dependency from claim 8. Br. 5-6. We select claim 8 as representative of
this group, and claim 14 stands or falls with claim 8. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Thayer teaches a liner made of a unitary
construction. See Final Act. 4, 6. ("[F]ig. 1 shows that the liner is one piece
between the casing forward and aft portion." (emphasis omitted)). Further,
the Examiner finds that Thayer teaches the same configuration as
Appellant's, and thus, the minimum pressure imbalances would also be
taught by Thayer. Id. at 5.
Appellant responds that the "[ e ]lement identified as the liner ...
includes divergent flaps 3 8 ... [,] which would create discontinuities in the
liner making the liner multiple pieces with moveable flaps and not unitary as
claimed." Br. 6. Furthermore, Appellant argues that if the liner is not
unitary then "the divergent flaps 3 8 would not be able to function because it
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would not pivot as intended." Id. As stated supra, the Examiner's
uncontested definition of "unitary" includes a single element or several
elements that are of a unitary construction. The Examiner's finding that
Thayer teaches a unitary construction is consistent with this definition.
Appellant challenges the Examiner's position by first arguing that the
pivoting of flap 38 keeps Thayer's liner from being unitary. Br. 6.
Appellant's argument is not supported by the claim language. Claim 8
requires that the "liner disposed within [the] casing [has] a unitary
construction." Br. 12, Claims App. The language of claim 8 does not
preclude the liner from pivoting but only that the part be of unitary
construction. That is, Thayer's liner is composed of a single element or
several elements, and once constructed, acts as a unit.
Accordingly, for the reasons stated supra, the anticipation rejection of
claim 8 and its dependent claim 14 is sustained.
Rejection III-The rejection of claims 1-5, 7, 9-11, 13, 15, and 17-27
under 35 USC§ 103(a)
Claims 1-5, 7, 20-22, 25, and 26
In contesting the rejection of claims 1-5, 7, 20-22, 25, and 26 as
unpatentable over Thayer and Farah, Appellant does not present separate
arguments for the patentability of claims 2-5, 7, 20-22, 25, and 26 apart
from their dependency from claim 1. Br. 7-9. We select claim 1 as
representative of this group, and claims 2-5, 7, 20-22, 25, and 26 stand or
fall with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
The Examiner finds that Thayer discloses the invention claimed with
the exception of an axial gap that is taught by Farah. Final Act. 5-8; see id.
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at 8 (determining it would have been obvious to modify Thayer's casing to
include an axial gap between the casing forward and aft portions "in order to
provide for expansion and contraction along with creating flexibility in the
region of contact" as explained in lines 5-8 of Farah's Abstract). Appellant
argues that "the axial gap [in Farah] identified by the Examiner ... is not an
axial gap because exhaust duct assembly 18 is in an overlapping axial
relationship" with turbine 16. Br. 7-8. According to Appellant, "because
[Farah's] two elements are in overlapping axial relationship as discussed
above there cannot be an axial gap." Id. at 8. As the Examiner points out,
"Appellant does not claim that the axial gap does not having [sic] any
'overlapping axial relationships' with the outer surface of the turbine
casing." Ans. 4. Appellant's argument is not persuasive because the
language of the claims is not so specific as to preclude axial overlap as the
gap in Farah extends radially as well as axially. Therefore, Appellant's
argument is not commensurate with the scope of claim 1, and thus, for that
reason, does not demonstrate error in the Examiner's rejection. See In re
Self, 671F.2d1344, 1348 (CCPA 1982) (limitations not appearing in the
claims cannot be relied upon for patentability).
Appellant also argues that modifying Thayer's nozzle as taught by
Farah would change the principle of operation of Thayer's
convergent/divergent nozzle or make it unsatisfactory for its intended
purpose. Br. 8. Appellant references Thayer, column 1, line 59 to column 2,
line 6, in support of this argument. Id. Appellant argues that Farah's
exhaust duct should be added to the nozzle of Thayer (id.); however, this is
not the modification proposed by the Examiner. The Examiner proposes to
modify Thayer to include an axial gap "as taught by Farah, in order to
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provide for expansion and contraction along with creating flexibility in the
region of contact." Final Act. 8. Appellant does not address the rejection as
proposed by the Examiner and, thus, the argument is not on point.
Accordingly, the rejection of claim 1 is sustained and likewise, the
rejection of claims 2-5, 7, 20-22, 25, and 26 is also sustained because these
claims fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 9-11 and 13
Claims 9-11 and 13 depend from claim 8. Br. 12, Claims App.
Appellant relies upon the fact that these claims are dependent upon claim 8
for patentability. Id. at 9. In the absence of any new arguments for
patentability we likewise sustain the rejection of claims 9-11 and 13.
Claims 15, 17-19, and 24
Appellant argues claims 15, 17-19, and 24 together as a group
without presenting separate arguments for the patentability of claims 1 7-19
and 24 apart from their dependency from claim 15. Br. 9. We select claim
15 as representative of this group, and claims 17-19 and 24 stand or fall with
claim 15. See 37 C.F.R. § 41.37(c)(l)(iv).
As argued previously, Appellant argues that modifying Thayer's
nozzle as taught by Farah would change the principle of operation of
Thayer's convergent/divergent nozzle or make it unsatisfactory for its
intended purpose. Id. However, Appellant's arguments miss the mark. The
Examiner proposes to modify Thayer to include an axial gap as taught by
Farah. Thus, Appellant's arguments are not persuasive. See supra,
discussion of claim 1.
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Accordingly, the rejection of claim 15 is sustained and likewise, the
rejection of claims 17-19 and 24 are also sustained because these claims fall
with claim 15. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 23 and 27
Appellant does not present any arguments specifically addressing the
Examiner's rejection of claims 23 and 27 and, in failing to do so, fails to
identify any reversible error. See Appeal Br. 7-9. We therefore summarily
sustain this rejection. See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir.
2008) (explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).
To the extent that Appellant may intend to rely on the arguments
presented for claims 1 and 8, from which claims 23 and 27 depend,
indirectly, these arguments fail to apprise us of error, for the reasons
discussed above, and, thus, likewise would fail to apprise us of error in the
rejection of claims 23 and 27. Thus, we sustain the rejection of claims 23
and 27 for this additional reason.
DECISION
We REVERSE the Examiner's rejection of claims 8 and 24--27 under
35 U.S.C. § 112, first paragraph.
We AFFIRM the Examiner's rejection of claims 8 and 14 under 35
U.S.C. § 102(b ).
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Application 13/416,676
We AFFIRM the Examiner's rejection of claims 1-5, 7, 9-11, 13, 15,
and 17-27 under 35 U.S.C. § 103(a).
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) (2009).
AFFIRMED
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