Ex Parte Lugo et al

Patent Trial and Appeal Board

Feb 24, 2017

12974286 (P.T.A.B. Feb. 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.
12/974,286 12/21/2010 Valentina Lugo PA15900U;
67010-541PUS1
3423
26096 7590 02/28/2017
TART SON OASKFY fr OT DS P C EXAMINER
400 WEST MAPLE ROAD
SUITE 350
FLORES, JUAN G
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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 VALENTINA LUGO, LAWRENCE BINEK, and
VICTORIA S. RICHARDSON
Appeal 2015-002749
Application 12/974,286
Technology Center 3700
Before: WILLIAM A. CAPP, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-002749
Application 12/974,286
CLAIMED SUBJECT MATTER
The claims are directed to a fan rotor ring for an air cycle machine, an
air cycle machine, and a method of installing a fan rotor ring. Appeal Br. 8—
9 (Claims App.). Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A fan rotor ring for an air cycle machine, the fan rotor ring
comprising:
a ring body defining a main bore having a main bore
diameter DR1 and central axis; and
an annular flange extending axially from the ring body
over a length L and defining a fan ring bore having a fan ring
bore inner diameter DR2, where a ratio DR2/ L is 1.63-1.69.
Appeal Br. 8 (Claims App.).1
Appellants’ Summary of the Claimed Subject Matter refers to Figures
3 A and 3B as depicting the claimed fan rotor ring (Appeal Br. 2), and we
reproduce these Figures below.
1 Regarding the length of the flange, the Specification states “An annular
flange 68 extends axially from the ring body 66 over a length L and defines
a fan ring bore 70 having a fan ring bore inner diameter DR2.” Spec. 119.
Thus, the DR2/L ratio is a ratio of the diameter of a bore to its depth. See
Fig. 3B.
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Application 12/974,286
Appellants’ Figure 3A is a perspective view of fan ring 64. Spec. 110.
Appellants’ Figure 3B is a cross-sectional view of the fan ring depicted in
Figure 3 A, including flange 68 with length L and fan ring bore 70 with inner
diameter DR2. Spec. H 11, 19.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Carter US 6,151,909 Nov. 28,2000
Ijima US 6,712,583 B2 Mar. 30,2004
LoBosco US 5,252,028 Oct. 12, 1993
REJECTIONS
(I) Claims 1,2, 4—11, and 13—15 are rejected under 35 U.S.C. §
103(a) as unpatentable over Carter.
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Application 12/974,286
(II) Claims 3 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Carter and Ijima.
(III) Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Carter and Lobosco.
OPINION
Rejection (I); claims 1, 2, 4—11, and 13—15
Appellants argue claims 1, 2, 4—11, and 13—15 as a group. See Appeal
Br. 3—7. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1
as the representative claim for this group, with claims 2, 4—11, and 13—15
standing or falling with claim 1.
The Examiner finds that Carter discloses all the features recited in
claim 1 except that the ratio DR2/ L is 1.63—1.69 (Final Act. 4), and
Appellants do not dispute these findings (see Appeal Br. 3—7). As to the
ratio recited in claim 1, the Examiner finds that “it would have been an
obvious matter of design choice to modify” the device in Carter to use “the
specific shape and dimensions as claimed for the purpose of reducing of
imbalance and dynamic issues that would otherwise arise.” Final Act. 5
(emphasis added). The Examiner finds that Appellants disclose no problem
solved or any purpose for the recited ratio “above the fact that it allows the
fan rotor and fan rotor ring to operate as a unitary rigid object.” Final Act. 5.
Appellants contend that there is no evidence that the prior art
recognizes the recited ratio as a result-effective variable, and therefore,
providing a structure with the recited ratio would not have been a matter of
mere optimization. Appeal Br. 4.
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Application 12/974,286
In response, the Examiner indicates that the rejection of claim 1 is not
based on optimization. Ans. 14.
We agree with the Examiner that Appellants’ arguments on this point
do not address the rejection of claim 1. The Examiner’s articulated rationale
for modifying Carter does not mention optimization. See, e.g., Final
Act. 4—5.
Appellants next assert “The rejection does not articulate how the
claimed ratio would have been obvious as a matter of design choice. The
Examiner points to numerous variables, operating conditions, and other
considerations as alleged design factors, none of which are the claimed ratio
or even recognize such a ratio.” Appeal Br. 4. Appellants contend that the
Examiner provided a “laundry list of alleged factors,” and “one of the
alleged design factors is temperature, but there is no analysis of how
temperature, or any of the other factor[s] for that matter, would make the
claimed ratio obvious as a matter of design choice.” Appeal Br. 5.
In response, the Examiner states,
By providing various examples, the examiner intended to clarify
why the claimed ratios were rejected on design choice, since it is
clear that the when operating conditions are taken into account
during the design phase of a fan rotor ring they will influence the
material selection, size and shape of the fan rotor ring.
Ans. 15.
Appellants’ arguments on this point are not persuasive. For all
practical purposes, Appellants’ claimed ratio merely defines the shape of the
interior space of the bore. Appellants present neither argument nor evidence
that convinces us that the particular interior shape of the claimed bore is
significant, achieves unexpected results, or is anything more than one of
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Application 12/974,286
numerous shapes (length/diameter ratios) that a person of ordinary skill in
the art would find obvious for the purpose of defining an interior shape
(length/diameter ratio) of a bore for a fan rotor ring. See In re Dailey, 357
F.2d 669, 673 (CCPA 1966). We agree that the Examiner’s reference to
temperature as one of the factors that would be considered by a person of
ordinary skill in the art was merely an example demonstrating that such a
person would possess some knowledge of the art and the problems faced in
designing components such as those claimed. An artisan must be presumed
to know something about the art apart from what the references disclose.
See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Appellants next assert that the Examiner is applying the concept of
design choice as a per se rule, without any rational underpinning or
convincing line of reasoning. Appeal Br. 5—6; Reply Br. 2—\. Appellants
refer to paragraph 23 of the Specification and state that the Examiner has
acknowledged the alleged advantage, discussed in this paragraph, provided
by the claimed ratio. Appeal Br. 6. Further, Appellants contend:
The rejection also asserts that it appears that the fan rotor
ring, ring body, and hub of Carter would perform equally well
with a shape having the dimensions as claimed by Applicant, and
that in the absence of proof to the contrary, the prior art taught
by Carter would have the structure to define the qualitative ratios
being claimed. Such an assertion is speculative and conclusory,
and does not shift the burden to Applicant.
Appeal Br. 6.
We find Appellants’ arguments to be ineffective for three reasons.
First, the advantage that Appellants assert is provided by the claimed ratio
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Application 12/974,286
amounts to providing a desired fit between the fan rotor ring and its
associated mating component. In this regard, the Specification states:
In embodiments, a ratio DR2/Dri is 2.043-2.054. In
embodiments, a ratio DR2/L is 1.63-1.69. In embodiments, a ratio
D2/DR2 is 1.002-1.007. In embodiments, a ratio DRo/DR2 is 1.290-
1.295. The selected ratios ensure that the fan rotor ring 64 can
withstand the design stresses applied during operation of the
ACM 20 and ensure a proper fit with the mating components of
the ACM 20 such that the fan rotor ring 64 and the fan rotor 36
function as a unitary rigid body.
Spec. 123 (emphases added). Thus, the ratios mentioned in paragraph 23
make the fan rotor ring strong enough to withstand stresses during operation
and ensure a proper fit. In the context of claim 1, we find that making an
item sufficiently robust to withstand operating stresses to be a matter of
degree, not a qualitative difference and would be within the ability of one of
ordinary skill in the art. Additionally, as further explained below, this
alleged benefit is not necessarily associated with the recited ratio. As to the
proper fit, this feature provides the benefit of having the fan rotor ring and
the fan rotor function as a unitary rigid body. Thus, this purported benefit is
nothing more than a statement of how tight the fit between the mating
components is. We understand the Examiner to find that the desired fit
between one component and the component with which it connects would
have been, absent evidence to the contrary, a matter of design choice, and
we are not apprised of Examiner error on this point.
Second, even assuming arguendo that providing a part sufficiently
strong to withstand operating stresses is not a matter of design choice and
that providing a part that mates with another part as a unitary rigid body is
not merely another way of stating that the mating components fit properly,
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these advantages are not sufficiently tied to the ratio recited in claim 1 to
support Appellants’ argument. In this regard, we note that paragraph 23
states that the ratios (plural) ensure the above-noted characteristics.
Paragraph 23 lists four different ratios. There is no persuasive evidence in
the Specification or identified by Appellants for a finding that the particular
ratio recited in claim 1, on its own, results in improved strength. Indeed, in
this regard, the ratio recited in claim 1 relates to the aspect ratio of a hole
(i.e., the absence of material), not to the thickness or strength of any
structural feature of the recited fan rotor ring. Further, as to operating as a
rigid unitary body, it is logical that the wall thickness may matter in this
regard, but Appellants provide no technical reasoning or objective evidence
that the aspect ratio of the hole has any effect.
Third, the mating component discussed in paragraph 23 is not
specified in claim 1. Thus, whether the recited diameter to depth ratio in
claim 1 results in a proper fit or provides any other benefit depends on the
dimensions of a component not required by claim 1. In other words, the
ratio recited in claim 1 may or may not result in a proper fit, depending on
the component upon which the fan rotor ring is placed, just as would occur
with a fan rotor ring with a bore having a diameter to depth ratio outside the
range recited in claim l.2
Appellants contend that the Examiner improperly characterizes the
ratio recited in claim 1 in terms of a difference in dimensions, and
2 If Appellants’ arguments based on the alleged benefits discussed in
paragraph 23 were to be accepted on the current record, then every bottle
cap with a diameter-to-depth ratio configured to receive a new size of bottle
would be non-obvious.
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Appellants assert that the recited ratio is “unit-less.” Reply Br. 2. We do
not agree with Appellants’ argument on this point inasmuch as the Examiner
properly addresses the feature in terms of the scope of claim 1. The mere
fact that the Examiner characterizes a ratio of two dimensions as a difference
in dimensions is not pertinent to the findings the Examiner made.
We have considered all of Appellants’ arguments for the patentability
of claim 1, but we find them to be unavailing for the reasons discussed
above. Claims 2, 4—11, and 13—15 fall with claim 1.
Rejections (II) and (III); claims 3, 12, and 16
Appellants rely on the same arguments for the patentability of
claims 3, 12, and 16 as those discussed above for claim 1. Accordingly, we
affirm the rejections of claims 3, 12, and 16 for the same reasons discussed
above regarding Rejection (I).
DECISION
The Examiner’s decision to reject claims 1—16 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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