Ex Parte LucasDownload PDFPatent Trial and Appeal BoardDec 21, 201713485035 (P.T.A.B. Dec. 21, 2017) Copy Citation 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 2 Appeal 2016-007337 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. 3 Appeal 2016-007337 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 4 Appeal 2016-007337 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 5 Appeal 2016-007337 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.” 6 Appeal 2016-007337 Application 13/485,035 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 7 Copy with citationCopy as parenthetical citation