Ex Parte Marini et al

Patent Trial and Appeal Board

Jan 12, 2018

13754936 (P.T.A.B. Jan. 12, 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.
13/754,936 01/31/2013 Bonnie D. Marini 2012P04201US01 3030
28524 7590 01/17/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
SUNG, GERALD LUTHER
Orlando, EL 32817 ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BONNIE D. MARINI and BRIAN J. BOHINSKY1
Appeal 2017-000173
Application 13/754,936
Technology Center 3700
Before BRADLEY W. BAUMEISTER, BETH Z. SHAW, and
DAVID J. CUTITTAII, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—6. App. Br. 3.2 We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
1 Appellants list Siemens Energy, Inc. as the real party in interest. Appeal
Brief, filed December 16, 2015 (“App. Br.”) 3.
2 Claim 7, as well as claims 1—6, was pending at the time of the Final
Rejection mailed December 16, 2015 (“Final Act.”). See Amendment in
Response to Non-Final Rejection filed December 3, 2015 (establishing the
claims under consideration at the time of the Final Action and including
dependent claim 7). In response to the Final Action, Appellants filed an
Amendment in Response to Final Office Action on February 12, 2016,
wherein Appellants, inter alia, cancelled claim 7 and incorporated that
language into claim 1. The Examiner entered this claim amendment in the
Appeal 2017-000173
Application 13/754,936
STATEMENT OF THE CASE
Appellants describe the present invention as a gas turbine engine
system that generates power for a power grid and is capable of providing
part load, base load, and peak-load power. Spec 1:10-11.
A gas turbine engine and method of controlling the gas
turbine engine that may be utilized in a power grid having a
plurality of additional power generation sources. The gas turbine
engine is configured with a compressor having an enlarged mass
flow volume. The gas turbine engine may be operated at a base
load for supplying power to the power grid at a part load and
optimum efficiency for the engine, and may be ramped up to a
higher output to supply a peak load output to the power grid.
Abstract.
Independent claim 1, reproduced below, is illustrative of the appealed
claims:
1. A gas turbine engine system configured for power
generation, the gas turbine engine system comprising:
a compressor, a combustor and a turbine, the compressor
providing compressed air to the combustor for combustion with
a fuel to produce a hot working gas and the turbine receiving the
hot working gas to produce power;
the compressor and turbine of the gas turbine engine
system being configured with reference to a reference engine, the
reference engine defining a configuration having a
predetermined compressor upper mass flow of air for a
predetermined turbine inlet temperature to produce an optimum
engine efficiency at a predetermined compressor inlet condition
at a maximum power output for the reference engine, wherein the
predetermined compressor inlet condition comprises
[International Organization for Standardization] (ISO)
conditions for a gas turbine engine;
Advisory Action mailed February 29, 2016, so now only claims 1—6 are on
appeal.
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the turbine comprising a configuration substantially
identical to a turbine of the reference engine;
the compressor having a configuration different than a
compressor of the reference engine, wherein the compressor is
sized larger than the compressor of the reference engine to
provide a maximum flow capability of the compressor greater
than an upper flow capability of the compressor of the reference
engine;
wherein the compressor comprises inlet guide vanes
(IGVs) at an inlet to the compressor, the IGVs having a
predetermined position for operating the gas turbine engine
system at an optimum efficiency at the predetermined turbine
inlet temperature, wherein the predetermined position of the
IGVs reduces the mass flow of air into the compressor to a flow
less than the maximum flow capability; and
wherein the compressor comprises a plurality of stages,
each stage defined by a row of stationary vanes and a row of
rotating blades, and wherein about a front one-third of the stages
of the compressor, at an inlet end thereof, are sized with a larger
outer diameter than the corresponding stages of the compressor
of the reference engine.
Claims 1—6 stand rejected under 35 U.S.C. § 112(a) or 112,11 (pre-
AIA), for lacking enablement. Final Act. 3^4.
Claims 1—6 stand rejected as indefinite under 35 U.S.C. § 112(a) or
112,12 (pre-AIA), for failing to particularly point out and distinctly claim
the invention. Final Act. 4—5.
Claims 1—6 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Smith (US 3,974,645; issued Aug. 17, 1976). Final Act. 6—9.
Claims 1—6 stand alternatively rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith. Final Act. 10—11.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
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produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
THE ENABLEMENT REJECTION3
Findings and Contentions
The Examiner acknowledges that one of ordinary skill generally
would have been able to manufacture the claimed turbine engine “when the
reference engine is configured as a well-known engine of moderate or
smaller size” (Ans. 3), but he finds that Appellants’ Specification does not
enable one of ordinary skill to construct the claimed turbine engine “if the
reference engine is selected so as to be equal in size to the largest known
compressor” (Final Act. 4). The Examiner reasons that “[because gas
turbine] structures are limited in size by material, flow, etc. constraints, the
claimed scope requiring a larger engine than the largest known engine would
not be enabled.” Id. The Examiner finds that “[n]o working examples exist
in the prior art[,] and no direction is given by the inventor on this portion of
the scope.” Id. The Examiner concludes “though the level of ordinary skill
and predictability of the art are high, the lack of direction and working
examples in the prior art result in a burden of undue experimentation.” Id.
Appellants assert that “[o]ne of ordinary skill would readily appreciate
that gas turbine engines are ‘limited in size by material, flow, etc.
3 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above-mentioned Final Action and Appeal
Brief, as well as the following documents, for their respective details: the
Examiner’s Answer mailed July 1, 2016 (“Ans.”); and the Reply Brief filed
August 25, 2016 (“Reply Br.”).
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constraints,’ as stated by the Examiner.” App. Br. 8 (citing Final Act. 4).
Appellants then argue that
Because of these known limitations, . . . the person of ordinary
skill in the art would [have been] able to determine, either
through engineering calculation or with a reasonable amount of
experimentation, that a gas turbine engine as claimed that is
made with respect to a reference engine ‘sized identical to the
largest known or practically capable engine’ may have been
‘conceived, but not yet made.’ As such, this person of ordinary
skill in the art could still make and use the full scope of the
claimed invention ‘with expenditure of no more effort than is
normally required in the art. ’
App. Br. 8-9.
Analysis
The Examiner’s acknowledgment that one of ordinary skill would
have known how to make and use the invention, at least in those situations
where the reference turbine engine is of small or medium size (Ans. 3),
resolves in Appellants’ favor the question of whether Appellants’
Specification reasonably enables the claimed invention. The present
situation is not one where a disclosure of a limited number of chemical
species in an unpredictable art may not provide adequate support for a
generic claim. See, e.g., In re Fisher, 427 F,2d 833, 839, (CCPA 1970)
(contrasting mechanical and electrical elements with chemical reactions and
physiological activity).
We also disagree with the Examiner that the present claims are not
enabled merely because one can conceive hypothetical unworkable
embodiments that fall within the scope of the claims. If we were to accept
this legal theory of the enablement standard, virtually every patent claim for
all inventions would be subject to an enablement rejection. For example, a
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claim to a garment made of a novel fabric could encompass the hypothetical
situations of the garment being too small for even the most petite person to
wear, or so large as to require a zipper too heavy to lift. As another
example, a claim to a computer possessing a novel cache could encompass
the hypothetical situations of the computer being so big as to require an
unworkable power supply, or so miniaturized that the computer could not be
manufactured with known technologies.
Accordingly, the Examiner has not established that one of ordinary
skill in the art would have been unable to make or use the claimed invention
without undue experimentation. We therefore reverse the enablement
rejection of claims 1—6 under 35 U.S.C, § 112(a) or § 112, f 1 (pre-AIA),
THE INDEFINITENESS REJECTION
/.
The Examiner finds that the claim language “the turbine comprising a
configuration substantially identical to the turbine of the reference engine”
renders the claims indefinite for two reasons. Final Act. 5. According to the
Examiner,
1) it’s unclear what the characteristics of the reference engine
are, [because] the reference engine appears not [to] be actually
part of the claims and therefore it is unclear exactly what
structure is required of the turbine; [and] 2) it’s unclear what the
term “substantially identical” requires of the claimed structure.
Id. We address these two rationales in reverse order.
In relation to the second point, the Examiner further explains in
the Answer that
Appellant injects ambiguity into the claim scope [because]
the sizing of the turbine is argued to be allowed as different while
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Application 13/754,936
being “substantially identical” when differently sized
compressors define the scope of “different than” between the
claimed compressor and reference compressor. Thus, it becomes
unclear by the Appellant’s usage as to what the difference is
between “substantially identical” and “different than” [because]
both terms can be used to mean a difference is sizing between the
relative components.
Ans. 6.
The Examiner appears to be conflating claim terms. Claim 1 sets
forth a gas turbine engine system that comprises three subcomponents: a
compressor, a combustor, and a turbine. App. Br. 20, Claim App’x. The
entire “gas turbine engine system” is sometimes referenced in shorthand as
“a gas turbine engine.” See, e.g., Spec. 8:11—12 (“Fig. 1 illustrates a gas
turbine engine 10, which may also be referred to as a gas turbine engine
system”). The gas turbine engine system is also referred to even more
simply as “the turbine engine” (e.g., Spec. 10:19) or “the engine”
(e.g., Spec. 10:6). Regardless of variation, the term “engine” is always used
to distinguish the entire gas turbine engine system 10 from its subcomponent
turbine 34.
Claim 1 sets forth that “the [subcomponent] turbine compris[es] a
configuration substantially identical to a turbine of the reference engine”—
not that the entire turbine engine is substantially identical to the reference
turbine engine. As such, we do not see the further claim requirement that
“the [separate subcomponent] compressor ha[s] a configuration different
than a compressor of the reference engine” to produce any per se conflict
that would raise a question of whether the metes and bounds of the claims
reasonably could be ascertained.
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Furthermore, Appellants’ Specification provides a reasonably
objective standard for determining whether an actual turbine would have
been configured to be substantially identical to a turbine of a reference
engine. Appellants’ Specification explains that a turbine would be
substantially identical to a reference turbine when “the [actual] turbine 34 is
configured to have a maximum power and optimum efficiency when
provided with a mass flow and turbine inlet temperature that is the same as
the reference engine.” Spec. 13:4—7. As such, one reasonably would have
been able to ascertain whether an actual turbine is within the metes and
bounds of the claims if it is further the case that one reasonably would have
been able to ascertain the objective standards of a reference engine, itself.
We address that question next.
II.
The Examiner reasons in relation to the claimed reference engine that
[because] the reference engine is not viewed as part of the
claimed structure, the scope of the claims would not be fixed at
the time of allowance. Any advances to the state of the art would
broaden the scope of the claims from the time of allowance.
Therefore, the claimed comparison to a generic reference engine
would be indefinite.
Final Act. 5.
Appellants challenge this conclusion:
[although] Appellant recognizes that the reference engine is not
part of the claimed system, the claimed gas turbine engine system
as recited in claim 1 is configured with respect to the reference
engine such that the reference engine provides a context and a
point of reference for the claimed system that is needed to inform
one of ordinary skill in the art of the boundaries of the claimed
subject matter. “Breadth of a claim is not to be equated with
indefmiteness.”
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App. Br. 11 (citing In re Miller, 441 F.2d 689 (CCPA 1971).
We agree with Appellants that the question of definiteness does not
hinge on whether the recited reference engine is an affirmative claim
element. The relevant question is whether the recited reference engine
provides an objective benchmark against which any of the elements that are
affirmatively claimed—i.e., the claimed turbine, combustor, and
compressor—can be measured.
We conclude that the reference engine, as recited, does provide an
objective, functional benchmark. The reference engine includes a turbine
“configured to have a maximum power and optimum efficiency when
provided with a mass flow and turbine inlet temperature that is the same as
the reference engine.” Spec. 13:4—7. The reference engine would further
possess, coupled to the reference turbine, a compressor “having a
predetermined compressor upper mass flow of air for a predetermined
turbine inlet temperature to produce an optimum engine efficiency at a
predetermined compressor inlet condition at a maximum power output for
the reference engine.” Claim 1. The fact that the benchmark is set forth in
functional terms instead of structural terms does not make the benchmark
indefinite.
The following analogy aids in analyzing claim 1 ’s definiteness: A
hypothetical claim could set forth an objective, albeit not affirmatively
claimed, reference measurement benchmark, such as a ruler, and the claim
then could recite characteristics of affirmatively claimed subcomponents in
relation to the unclaimed measurement benchmark. For example, a
hypothetical claim could recite a first subcomponent having a length that is a
first portion of a ruler and a second subcomponent having a length that is a
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second portion of a ruler, such that the sum of the first and second portions’
lengths are greater than the ruler length by one inch. Such a hypothetical
claim would set forth a genus of possibilities in a reasonably definite manner
without individually reciting each particular embodiment encompassed by
the claim. That is, the claim would cover multiple embodiments wherein the
first and second subcomponents have respective measurements that add to
the claimed “one inch longer than a ruler”: for example,
{(1”, 12”), (2”, 11”), (3”, 9”). . . (12”, 1”)}.
To be sure, independent claim 1 is broader than this hypothetical
claim. The hypothetical claim sets forth a single reference benchmark
(a ruler), whereas claim 1 sets forth a genus of reference benchmarks—all
turbine engines that are “designed with a configuration having a
predetermined mass flow for a predetermined turbine inlet temperature to
produce an optimum efficiency at the predetermined (target) compressor
inlet condition at a maximum power output for the reference engine.”
Spec. 12:25-27.
However, this more general claim language does not make the claim
indefinite; it merely indicates that the claimed reference engine is an even
more generic benchmark. A better analogy than the above-mentioned
hypothetical claim setting forth the ruler benchmark, would be a
hypothetical claim that more broadly sets forth a measurement benchmark of
“a predetermined length.” Such a generically claimed benchmark would
read on a ruler, a yardstick, or a meter stick, but it still would constitute an
equally objective benchmark: the claim would read on a structure having
two subcomponents having a combined length of 13 inches (one inch longer
than a ruler), 37 inches (one inch longer than a yardstick), or a meter and one
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inch (one inch longer than a meter). As Appellants note, “[bjreadth of a
claim is not to be equated with indefmiteness.” App. Br. 11.
III.
The Examiner additionally finds the claims to be indefinite because of
one other limitation of claim 1:
the term “the compressor having a configuration different than
the compressor of the reference engine” renders the claims
indefinite because it’s unclear what is required by “different
configuration.” The specification provides no explanation other
than a nominal recitation of the term.
Final Act. 5.
We agree with Appellants (App. Br. 11), though, that their
Specification provides a reasonable standard for determining what this claim
language means in relation to a reference compressor:
The compressor 32 of the engine 10 is provided with a
configuration different than the compressor of the reference
engine, wherein the compressor 32 is sized larger than the
compressor of the reference engine to provide a larger volume of
air with a maximum flow capability of the compressor 32 that is
greater than an upper mass flow capability of the compressor of
the reference engine.
Spec. 13:9-13.
Conclusion
For the reasons set forth above, the Examiner has not
established that one of ordinary skill would have been unable to
reasonably ascertain the metes and bounds of the claimed invention.
We therefore reverse the indefmiteness rejection under 35 U.S.C.
§ 112(b) or § 112,12 (pre-AIA).
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THE PRIOR-ART REJECTIONS
Findings and Contentions
Appellants contend that Smith does not anticipate independent claim 1
because “Smith appears to teach a conventional turbine design in which the
maximum flow rate of the compressor matches the turbine capacity such that
the IGVs are fully open as shown in FIG. 13 while the engine is operating at
maximum power output and optimum efficiency at ISO conditions.” App.
Br. 16. According to Appellants,
Smith [does not disclose] that the compressor is sized such that
it provides a maximum flow capability greater than the upper
flow capability necessary to produce an optimum engine
efficiency and a maximum power output, as compared to a
reference engine, as recited, operating under the same conditions,
e.g. ISO conditions.
App. Br. 14.
Appellants additionally argue that:
while Appellant recognizes that Smith’s IGVs alter the air flow
into the compressor, there is no teaching or suggestion that
Smith’s IGVs are positioned to reduce the mass flow of air into
the compressor to a flow less than the maximum flow capability
of the compressor such that the gas turbine engine system
operates at a maximum efficiency at this reduced flow as
compared to a reference engine operating under ISO conditions.
Id. at 14—15.
The Examiner acknowledges that Smith does not satisfy these
conditions: “Optimum engine efficiency is not necessarily maximum power
output[, but] the claims at no point require the claimed engine to have an
optimum engine efficiency at maximum power output.” Ans. 7. The
Examiner similarly reasons
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the maximum power output of an[y] engine would be limited by
the fuel and air flow ratios, where the engine’s maximum airflow
is typically a limiting factor. Thus, the engine would produce the
maximum power at the maximum airflow where all gas turbine
engines would exhibit the same characteristics. The Examiner
notes, such a configuration may not produce desirable emissions
profiles; however, these requirements are not claimed. [Because]
the reference engine could be a theoretical engine, the claimed
reference engine could be sized in such a configuration so that
the Smith engine meets the claimed limitations where Smith is
not required to disclose the existence of the reference engine.
Final Act. 12—13.
Analysis
We disagree with the Examiner’s finding (Ans. 7) that the claims do
not require the claimed engine to have an optimum engine efficiency at
maximum power output. Claim 1 unambiguously sets for that “the turbine
compris[es] a configuration substantially identical to a turbine of the
reference engine.” Appellants sufficiently define the reference engine, in
turn, to have a maximum efficiency at maximum power:
The reference engine is defined as an engine designed with a
configuration having a predetermined mass flow for a
predetermined turbine inlet temperature to produce an optimum
efficiency at the predetermined (target) compressor inlet
condition at a maximum power output for the reference
engine. . . . The turbine 34 of the present engine 10 comprises a
configuration substantially identical to the turbine of the
reference engine. That is, the turbine 34 is configured to have a
maximum power and optimum efficiency when provided with a
mass flow and turbine inlet temperature that is the same as the
reference engine.
Spec. 12:24—13—7.
Restated, it is true that a reference engine can be of various sizes.
Regardless of the reference engine’s specific size, though, the airflow
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capacity of a reference engine’s compressor will be fixed relative to the size
of the reference engine’s turbine so as to provide a maximum airflow when
the turbine is set at maximum power. Claim 1 requires that this relationship
be modified such that an actual compressor is larger or is able to produce
more airflow than a reference compressor would be when sized relative to a
reference turbine.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s anticipation rejection of independent claim 1. Accordingly,
we reverse the Examiner’s rejection of that claim, as well as claims 2—6,
which depend from claim 1.
The Alternative Obviousness Rejection
The Examiner additionally rejects claims 1—6 as obvious over Smith
under the alternative theory that any differences between the claimed gas
turbine engine system and Smith’s turbine engine merely would be a
difference of obvious scaling of size. Final Act. 10—11. This conclusion is
unsupported for the reasons set forth above. The claimed invention is not
merely a uniformly scaled reference engine. Claim 1 instead sets forth a
turbine engine system including a compressor and a turbine wherein only the
compressor is scaled up relative to the turbine engine’s turbine. The
Examiner has not established why it would have been obvious to scale up
only the compressor while keeping the turbine sized according to the
reference.
Accordingly we reverse the Examiner’s obviousness rejection of
claim 1 over Smith, as well as claims 2—6, which depend from claim 1.
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DECISION
The Examiner’s decision rejecting claims 1—6 is reversed.
REVERSED
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