Ex Parte Lucas

Patent Trial and Appeal Board

Dec 21, 2017

13485035 (P.T.A.B. Dec. 21, 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.
13/485,035 05/31/2012 James L. Lucas PA-0022280-U; 6248
67097-1896
54549 7590 12/26/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
12/26/2017 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES L. LUCAS
Appeal 2016-007337
Application 13/485,035
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James L. Lucas (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-007337
Application 13/485,035
CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A gas turbine engine, comprising:
a fan including a first plurality of fan blades supported on
a first fan support that is rotatable about a fan axis, and a second
plurality of fan blades supported on a second fan support that is
rotatable about the fan axis independent of the first plurality of
fan blades;
a compressor section;
a combustor in fluid communication with the compressor
section;
a turbine section in fluid communication with the
combustor; and
a geared architecture including at least one gear
configured to be driven by the turbine section for rotating about
a gear axis that is transverse to the fan axis, the at least one gear
being configured for driving the first fan support for rotating the
first plurality of fan blades in a first direction, the at least one
gear being configured for driving the second fan support for
rotating the second plurality of fan blades in a second direction
that is opposite to the first direction;
including a bypass ratio greater than about 10:1.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Price
Seda
US 2,501,633
US 6,732,502 B2
Mar. 21, 1950
May 11,2004
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Application 13/485,035
REJECTIONS1
I. Claims 1-23 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement
requirement.
II. Claims 1-23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Price and Seda.
DISCUSSION
Rejection I
The Examiner determines that claims 1 and 11 are not enabled
because these claims “recite[] ‘a bypass ratio greater than about 10:1’, [and]
the recited claim language ‘greater than about’ is not bounded at its upper
limit and therefore includes bypass ratios ranging from 10:1 to infinity.”
Final Act. 8. In support of this contention, the Examiner cites Andersen
Corp v. Fiber Composites, LLC, 474 F.3d 1361, 1376-77 (Fed. Cir. 2007)
which relied in part upon Scripps Clinic & Research Foundation v.
Genetech, Inc., 927 F.2d 1565 (Fed. Cir. 1991) as setting forth a test for
open-ended claims. Id. However, Scripps sets forth no such test. Rather,
Scripps stands for the proposition that:
Open-ended claims are not inherently improper; as for all
claims their appropriateness depends on the particular facts of
the invention, the disclosure, and the prior art. They may be
supported if there is an inherent, albeit not precisely known,
upper limit and the specification enables one of skill in the art
to approach that limit.
1 The rejection of claims 1-23 under 35U.S.C. § 112, second paragraph is
withdrawn by the Examiner. Ans. 2.
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Application 13/485,035
Scripps, 927 F.2d at 1572 (citing In re Fisher, 427 F.2d 833 (CCPA
1970)).
Furthermore, the standard for determining whether the specification
meets the enablement requirement was cast in the Supreme Court decision of
Minerals Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the
question: is the experimentation needed to practice the invention undue or
unreasonable? That standard is still the one to be applied. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988).
Determining enablement is a question of law based on underlying
factual findings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). The
determination that “undue experimentation” would have been needed to
make and use the claimed invention is not a single, simple factual
determination. Rather, it is a conclusion that may be reached by weighing
the following factual considerations: (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Wands, 858 F.2d at 737.
The rejection at issue merely addresses one of the Wands factors (i.e.,
factor 8, the breadth of the claim), then concludes that the claim is not
enabled. See Final Act. 8-10. The rejection fails to address any other
Wands factors or perform the required weighing. Thus, the Examiner fails
to set forth a prima facie case of non-enablement. Furthermore, we agree
with Appellant that “[t]he physical and structural limitations of a gas turbine
engine construction necessarily impose a maximum bound on the bypass
ratio that can be achieved” because, “an ‘infinite’ bypass ratio would require
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Application 13/485,035
a physical fan duct that was infinitely larger than the primary flow path of
the gas turbine engine.” Appeal Br. 4. As noted by Appellant “[s]uch a
construction would be impossible to achieve.” Id.
For these reasons, we do not sustain the Examiner’s decision rejecting
claims 1 and 11, and their respective dependent claims 2-10 and 12-23 as
failing to comply with the enablement requirement.
Rejection II
Appellant argues claims 1-23 together. See Appeal Br. 5-6. We
select claim 1 as the representative claim, and claims 2-23 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Price and Seda disclose or suggest all of the
limitations of claim 1. See Final Act. 14-16. In particular, the Examiner
finds Seda teaches a “gas turbine engine (10) having a first plurality of fan
blades (4, 13) rotating in a first direction and a second plurality of fan blades
(6, 15) rotating in a second direction opposite the first direction having a
bypass ratio in the range of 5 to 15,” and the Examiner determines that it
would have been obvious to improve Price by applying Seda’s ratio to
Price’s device. Final Act. 15 (citing Seda 2:10-20).
Appellant contends that “the Price reference teaches away from the
Examiner’s proposed modification to that reference.” Appeal Br. 5. In
support of this contention, Appellant directs our attention to column 1, lines
45—49 of Price which state, “[i]t is a further object of this invention to
provide an improved aircraft propulsive unit which shall be economical in
fuel consumption, light in weight, and have a reduced frontal area in
proportion to power developed.” Id. Appellant notes that in Seda “a high
bypass ratio is achieved by having a bypass flow path that is larger than a
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Application 13/485,035
core flow path.” Id. Appellant argues that “[i]t follows that increasing the
bypass ratio involves increasing the size of the bypass flow path” which is
contrary to Price’s object of having a reduced frontal area. Id.
However, as quoted above, the object of Price is not solely to have a
reduced frontal area. Rather, as Price states, it is an object of Price’s
invention “to have a reduced frontal area in proportion to power developed.”
Price 1:45^49. Appellant does not explain how Seda’s alleged need for an
increase in size of the frontal region would not be proportional to the power
developed. Thus, Appellant does not explain how Seda’s teachings are
contrary to Price’s objective.
We further agree with the Examiner that Appellant does not identify
where Price ‘“criticize[s], discredits], or otherwise discourage[s]” the use of
a larger frontal region when that increase is proportional to the power
developed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We will
not read into a reference a teaching away from a proposed combination
when no such language exists. See Dystar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellant further argues that “the Examiner’s proposed modification
would require a significant redesign of the arrangement in the Price
reference.” Appeal Br. 6. However, “a person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR Int’l. Co. v. Teleflex,
Inc., 550 U.S. 398, 421 (2007). Appellant provides no evidence or
convincing argument that such redesign is beyond the skill of one skilled in
the art. Thus, Appellant’s argument is unconvincing.
In the Reply Brief, Appellant for the first time argues that “the
Examiner has not presented any reasoned rationale as to why one of skill in
the art would have modified Price to include the claimed bypass ratio.”
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Reply Br. 5. In accordance with 37 C.F.R. § 41.41 (b)(2), lacking a showing
of good cause, we do not consider this argument which is not responsive to
an argument raised in the Answer.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2-23, which fall therewith.
DECISION
The Examiner’s rejection of claims 1-23 under 35 U.S.C. § 112, first
paragraph is REVERSED.
The Examiner’s rejection of claims 1-23 under 35 U.S.C. § 103(a) 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
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