Ex Parte McAuliffe et al

Patent Trial and Appeal Board

Sep 21, 2012

10980045 (P.T.A.B. Sep. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTOPHER MCAULIFFE, BRENT J. MERRITT, and
CRAIG M. BEERS
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Appeal 2010-004664
Application 10/980,045
Technology Center 3700
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Before: JENNIFER D. BAHR, JOHN C. KERINS, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 and 7-18. We have jurisdiction under 35 U.S.C.
§ 6(b).

The Claimed Subject Matter
Environmental control systems are utilized in aircraft to cycle air in
order to cool various electronic components as well as the aircraft’s cabin.
Spec., paras. [0018], [0025]; see also Zywiak, col. 1, ll. 11-20. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. An Environmental Control System comprising:
an air cycle machine housing assembly;
a housing assembly having a first turbine housing
portion, a second turbine housing portion, and a compressor
housing portion;
a shaft mounted for rotation about an axis of rotation;
a hydrodynamic foil bearing which rotationally supports
said shaft;
a first turbine mounted to said shaft, said first turbine
communicating with a first turbine outlet along said axis of
rotation, said first turbine outlet define by said first turbine
housing portion;
a second turbine mounted to said shaft, said second
turbine communicating with a second turbine outlet along said
axis of rotation, said second turbine outlet axially opposite said
first turbine, said first turbine outlet define by said first turbine
housing portion;
a compressor upstream of said first turbine and said
second turbine, said compressor mounted to said shaft between
said first turbine and said second turbine, said compressor in
communication with a compressor inlet and a compressor outlet
located between said first turbine outlet and said second turbine
outlet, said compressor inlet and said compressor outlet directed
in a radial direction
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an annular compressor shim between said first turbine
housing portion and said compressor housing portion to provide
a desired clearance for said compressor;
an annular first turbine outlet shim between said first
turbine housing portion and said first turbine outlet to provide a
desired clearance for said first turbine; and
an annular second turbine outlet shim between said
second turbine housing portion and said second turbine outlet to
provide a desired clearance for said second turbine.

References
The Examiner relies upon the following prior art references:
Purvis
Cronin
Thomson
Zywiak
US 2,801,070
US 4,419,926
US 5,014,518
US 6,615,606
Jul. 30, 1957
Dec. 13, 1983
May 14, 1991
Sep. 9, 2003

Rejections
The Examiner makes the following obviousness rejections under 35
U.S.C. § 103(a):
I. Claims 1, 7, 13-17, and 18 over Zywiak and Purvis.
II. Claims 1, 7, 9-12, and 191 over Zywiak, Thomson, and Purvis.
III. Claims 1, 7, 9-11, and 13-18 over Thomson, Zywiak, and Purvis.
IV. Claim 8 over Thomson, Zywiak, Purvis, and Cronin.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 Claim 19 was previously canceled, and thus is not involved in this appeal.
See Amendment received Nov. 13, 2008. We leave claim 19 listed here for
accurate representation of the Examiner’s rejections but do not discuss it
further in this decision.
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OPINION
Rejection I – Zywiak and Purvis
In relevant part, independent claim 1 requires shims between the
compressor housing and first turbine housing, between the first turbine’s
outlet and housing, and between the second turbine’s outlet and housing.
The Examiner found that Zywiak’s figure 1 is similar to the
configuration of Appellants’ figure 1. Ans. 5. While not explicit, it is
implicit in this finding that the Examiner considers this to mean that there
are housings and outlets in the appropriate locations in Zywiak for shims to
be placed between. The Examiner found that Purvis teaches a shim between
a turbine housing and outlet “for the purpose of creating a clearance and
absorbing thrust. Id. Based on these findings, the Examiner concluded it
would have been obvious to include shims in Zywiak, as taught by Purvis,
“in order to create an axial clearance space and to absorb the thurst.” Id.
Appellant argues that “the schematic nature of the disclosure of
Zywiak in no way discloses or suggests the mechanical housing structure of
the [device] claimed by Appellant.” App. Br. 6-7. This argument is
persuasive. Notably, Zywiak’s figure 1 only schematically shows the
location of various components as well as the airflow paths taken. While a
device embodying the schematic illustration certainly would have housings
and outlets, the Examiner’s finding that there would be particular
housing/outlet interfaces as claimed is speculative. For example, one of the
turbine outlets could be integral to the turbine housing. Outside of an
admission in the Specification, technical reasoning on the part of the
Examiner, or other evidence, there is no way to know whether the device
embodying Zywiak would have the particular structural configuration shown
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in Appellants’ figure 1. Accordingly, we do not sustain the Examiner’s
rejection of claim 1, or of claim 7, which depends therefrom.
The scope of independent claim 13 is substantially different from
claim 1 and, in particular, does not require shims. Appellants do not address
the rejection of claim 13. Accordingly, Appellants have waived the
opportunity to challenge the Examiner’s rejection of claims 13-18 in this
appeal and we summarily sustain the rejection of claims 13-18.

Rejection II – Zywiak, Thomson, Purvis
Appellants’ arguments with respect to Rejection II are not
commensurate with the actual rejection articulated by the Examiner.
Notably, Appellants’ arguments are directed to the motivation statement
found in Rejection III. See App. Br. 9-10; compare Ans. 8 (articulating why
it would have been obvious to include a thrust bearing from Thomson into
Zywiak’s system) with Ans. 10 (articulating why it would have been obvious
to modify the compressor/turbine arrangement in Thomson in the manner
taught in Zywiak).
Nevertheless, it would be inconsistent with our determination of error
in the Examiner’s rejection of claim 1 in view of Zywiak and Purvis to
affirm the Examiner’s rejection of claim 1 in view of Zywiak, Thomson, and
Purvis, because the Examiner’s reasoning with respect to the shims (Ans. 8-
9) is in error for the same reason. Accordingly, the rejection of claims 1, 7,
and 9-12 as unpatentable over Zywiak, Thomson, and Purvis is in error for
the reason identified above and we do not sustain Rejection II.

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Rejection III – Thomson, Zywiak, Purvis
The Examiner found that Thomson describes the invention as claimed
with the exception of the shims and the compressor being located upstream
of the first and second turbine. Ans. 9-12. Notably, the Examiner found that
it would have been obvious to modify the turbine/compressor arrangement
in Thomson to locate the compressor upstream of the turbines (as shown in
Zywiak) “in order to compressing and expanding of air in an efficient
manner” [sic]. Ans. 10. Appellants argue that there is no evidence
supporting the Examiner’s reasoning. App. Br. 10. The Examiner answers,
“there is no fundamental difference in operation which undermines the
proposed combination.” Ans. 15.
Even if the Examiner is correct that there is no fundamental difference
between Thomson and Zywiak to prevent their combination, a proper
obviousness analysis requires a reasoned explanation as to why the claimed
subject matter would have been obvious to a person of ordinary skill in the
art. The Examiner’s statement merely states that such a combination is
possible, not whether such a combination is obvious.
As Appellants have pointed out, we do not find any underpinnings, be
it evidence or technical explanation, to support the Examiner’s “efficiency”
reasoning. Accordingly, Appellants’ argument apprises us of an error in the
Examiner’s proposed combination of Thomson, Zywiak, and Purvis. We do
not sustain Rejection III.

Rejection IV – Thomson, Zywiak, Purvis, and Cronin
Rejection IV builds on Rejection III. See Ans. 12. We do not sustain
this rejection because we do not sustain Rejection III and Rejection IV does
not cure the deficiency identified in Rejection III.
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DECISION
I. We reverse the Examiner’s decision to reject claims 1 and 7 in
Rejection I.
II. We affirm the Examiner’s decision to reject claims 13-18 in
Rejection I.
III. We reverse the Examiner’s decision to reject claims 1, 7, 9-12,
and 19 in Rejection II.
IV. We reverse the Examiner’s decision to reject claims 1, 7, 9-11,
and 13-18 in Rejection III.
V. We reverse the Examiner’s decision to reject claim 8 in
Rejection IV.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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