Ex Parte Muldoon et al

Patent Trial and Appeal Board

Apr 19, 2016

13364537 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/364,537 02/02/2012 Marc J. Muldoon
54549 7590 04/21/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67097-1663PUS1;59695US02 7801
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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 MARC J. MULDOON, WILLIAM G. SHERIDAN,
GREGORY E. REINHARDT, and GREGORY M. SA VELA
Appeal2014-000911
Application 13/364,537 1
Technology Center 3700
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1, 2, and 9-21. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
BACKGROUND
According to Appellants, "[the] disclosure relates to a bearing
arrangement for a gas turbine engine." Spec. i-f 2.
1 According to Appellants, the real party in interest is United Technologies
Corporation. App. Br. 1.
Appeal2014-000911
Application 13/364,537
CLAHvIS
Claims 1, 2, and 9-21 are on appeal. Claim 1 is illustrative of the
appealed claims and recites:
1. A gas turbine engine comprising:
a housing;
first and second spools coaxial with one another and
arranged within the housing, the first spool arranged within the
second spool and extending between forward and aft ends, the
aft end extending axially beyond the second spool;
first and second bearings supporting the aft end of the first
spool relative to the housing;
a combustor section and high and low pressure turbine
sections downstream from the combustor section, the high
pressure turbine section mounted on the second spool, and the
low pressure turbine section mounted on the first spool, wherein
the housing includes a first housing portion arranged axially
between the high and low pressure turbine sections, and a second
housing portion arranged aft of the low pressure turbine section;
the first and second bearings are supported by the second
housing portion; and
the second housing portion includes a hub providing an
integrated, unitary structure removably secured to an annular
flange, the first and second bearings mounted to the hub.
Br. 11.
REJECTIONS
I. The Examiner rejects claims 14, 16, and 20 under 35 U.S.C. § 112,
first paragraph, for failing to comply with the enablement requirement.
II. The Examiner rejects claims 14, 16, and 20 under 35 U.S.C. § 112,
second paragraph, as indefinite.
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III. The Examiner rejects claims 1, 2, and 9-11 under 35 U.S.C. § 103(a)
as unpatentable over Hull2 in view of Smith '553. 3
IV. The Examiner rejects claims 12, 17-19, and 21under35 U.S.C.
§ 103(a) as unpatentable over Hull in view of Smith '553, Richards,4
VanDuyn,5 Kumar, 6 Wilson, Jr.,7 and Rider. 8
V. The Examiner rejects claims 13-15 under 35 U.S.C. § 103(a) as
unpatentable over Hull in view of Smith '553, Jain, 9 Wang, 10 and Smith
'483. 11
VI. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Hull in view of Smith '553, Jain, Wang, and Taylor. 12
VII. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Hull in view of Smith '553, Richards, VanDuyn, Kumar,
Wilson, Jr., Rider, Jain, Wang, and Smith '483.
VIII. The Examiner rejects claims 1, 2, 9-11, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Bart13 in view of Smith '553.
2 Hull, US 6,846,158 B2, iss. Jan. 25, 2005.
3 Smith, US 3,823,553, iss. July 16, 1974.
4 Richards, US 2006/0201160 Al, pub. Sept. 14, 2006.
5 VanDuyn, US 7,097,413 B2, iss. Aug. 29, 2006.
6 Kumar et al., US 2007/0231134 Al, pub. Oct. 4, 2007.
7 Wilson, Jr. et al., US 2009/0031732 Al, pub. Feb. 5, 2009.
8 Rider et al., US 4,483,149, iss. Nov. 20, 1984.
9 Jain et al., US 2010/0043390 Al, pub. Feb. 25, 2010.
10 Wang, US 2010/0064659 Al, pub. Mar. 18, 2010.
11 Smith, US 2010/0218483 Al, pub. Sept. 2, 2010.
12 Taylor et al., US 7,451,592 B2, iss. Nov. 18, 2008.
13 Bart et al., US 2012/0017603 Al, pub. Jan. 26, 2012.
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Application 13/364,537
IX. The Examiner rejects claims 12, 17-19, and 21under35 U.S.C.
§ 103(a) as unpatentable over Bart in view of Smith '553, Richards,
VanDuyn, Kumar, Wilson, Jr., and Rider.
X. The Examiner rejects claims 14 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Bart in view of Smith '553, Jain, Wang, and Smith '483.
XI. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Bart in view of Smith '553, Jain, and Taylor.
XII. The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Bart in view of Smith '553, Richards, VanDuyn, Kumar,
Wilson, Jr., Rider, Jain, Wang, and Smith '483.
XIII. The Examiner provisionally rejects claims 1, 2, and 9-12 on the
ground of nonstatutory obviousness-type double patenting over claims 1-5
of Patent Application No. 13/364,502 in view of Hull.
XIV. The Examiner provisionally rejects claims 1 and 13 on the ground of
nonstatutory obviousness-type double patenting over claim 17 of Patent
Application No. 13/364,502 in view of Bart.
XV. The Examiner provisionally rejects claims 14--16 on the ground of
nonstatutory obviousness-type double patenting over claims 18-20 of Patent
Application No. 13/364,502 in view of Bart.
DISCUSSION
Rejection I
The Examiner finds that claims 14, 16, and 20 fail to comply with the
enablement requirement because they include unbounded ranges. Final
Action 3-5. Claims 14 and 20 recite a bypass ratio of greater than about six,
and Claim 16 recites a pressure ratio of greater than about 5. The Examiner
finds that these unbounded ranges are not enabled by the Specification
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because the ranges do not have inherent upper limits and the disclosure does
not inform a person of ordinary skill in the art as to how to approach the
upper limit of these ranges. Id. at 4.
We agree and are not persuaded by Appellants' arguments for the
reasons discussed below.
Appellants first argue that the Examiner has not met his burden
because the rejection provides no analysis of the factors set forth in the
MPEP. Br. 4. We disagree. We find that the Examiner's analysis
inherently addresses several of the factors set forth in MPEP 2164.0l(a)
including the breadth of the claims, the lack of working examples in the
Specification, and the quantity of experimentation that would be required
based on the content of the disclosure.
Next, Appellants argue that they have "established that a skilled
worker would appreciate that there is a practical upper limit to the claimed
values" and that the Examiner has ignored the supporting declaration of
inventor Marc Muldoon. Br. 4. We agree that an unbounded limit in a
claim may be enabled where there is a recognized inherent upper limit. See
Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565,
1572 (Fed Cir. 1991); Andersen Corp. v. Fiber Composites, 474 F.3d 1361,
1376-77 (Fed. Cir. 2007). However, we find that Appellants have not
sufficiently shown there is an inherent upper limit to their unbounded
claims. Additionally, assuming, arguendo, that the claimed ranges have
practical upper limits, we are not persuaded that the Specification enables
one of ordinary skill in the art to approach those limits for the reasons
provided by the Examiner. Further, to the extent Appellants rely on Mr.
Muldoon' s declaration, we find that although the declaration discusses what
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those practical upper limits are, the declaration does not explain how one of
ordinary skill would achieve those limits based on the disclosure in the
Specification. See Declaration of Marc J. Muldoon 1-2.
Based on the foregoing, we sustain the rejection of claims 14, 16, and
20 under 35 U.S.C. § 112, first paragraph.
Rejection II
The Examiner finds that claims 14, 16, and 20 are indefinite based on
the same ranges identified above with respect to enablement. Final Action
5---6. We agree with Appellants that the language "greater than about"
means that the claim is broad, but does not mean that it is indefinite. See Br.
3. One of ordinary skill in the art would readily understand the metes and
bounds of the claims with respect to this language and the claimed values
need not include an upper boundary in order to be definite. Id. Accordingly,
we do not sustain this rejection.
Rejections III-VII
In as much as the rejections sustained below based on Bart are
dispositive regarding all claims on appeal, we do not reach the Examiner's
rejections based on Hull.
Rejection VIII
With respect to claim 1, the Examiner finds that Bart discloses a gas
turbine engine including a housing, first and second spools, first and second
bearings, a combustor, and a second housing portion as claimed in Figure 3,
except that this figure does not disclose the hub removably secured to an
annular flange. Final Action 28-29 (citing Bart Fig. 3). The Examiner finds
that Bart's Figure 5 illustrates a second housing portion attached to the
remainder of the housing using bolts and an annular flange and that Smith
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'553 teaches the use of bolts to fasten turbine components together. Id. at 29
(citing Bart Fig. 5; Smith '553 Fig. 2A, col. 6, 11. 24--41). The Examiner
concludes that it would have been obvious to use bolts to removably fasten
the second housing to an annular flange for ease of assembly and
disassembly. Id. Further, in response to Appellants' arguments, the
Examiner finds that Bart discloses a second housing portion that is a one-
piece structure including a hub and attached to an annular flange and first
and second bearings. Ans. 15-17 (citing Bart Figs. 3, 5).
We agree with and adopt the Examiner findings regarding the scope
and content of Bart and Smith '553 with respect to claim 1. See Final
Action 28-32; Ans. 15-17. As discussed below, we are not persuaded of
error by Appellants' arguments.
As an initial matter, we find that a preponderance of the evidence
supports the Examiner's unrebutted finding that Bart discloses a second
housing portion that is a one-piece structure. See Bart Fig. 5. Thus, we find
that the Bart discloses a second housing portion that has an "integrate,
unitary structure" under Appellants' proposed interpretation of that phrase.
See Br. 5. Appellants also argue that "the hub of Bart is not removably
secured to the housing, but is instead integral with the housing." Id. at 6. To
the extent that Appellants are arguing that the claim requires that the hub is
detachable and completely removable from the housing, we find that this
argument is not commensurate with the scope of the claims. Specifically,
the claim requires only that the second housing portion includes a hub
providing an integrated, unitary structure removably secured to an annular
flange. We find that a preponderance of the evidence supports the
Examiner's unrebutted finding that Bart's second housing portion is
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removably bolted to an annular flange. Thus, we find that the Examiner
established a prima facie showing of obviousness without error.
Accordingly, we sustain the rejection of claim 1. Appellants do not raise
separate arguments with respect to dependent claims 2, 9-11, and 13, and
thus, those claims fall with claim 1.
Rejection IX
With respect to claims 12, 17-19, and 21, Appellants essentially only
argue that the prior art does not disclose an integrated, unitary structure. For
the reasons discussed above, we are not persuaded by this argument.
Further, to the extent Appellants merely state that Bart does not disclose "the
first and second hub walls inclined radially outward and toward one another
to provide an obtuse angle and join at an annular apex," we note that a
statement that merely points out what a claim recites is not considered an
argument for the patentability of the claim. See 37 C.F.R. 41.37(c)(l)(iv).
Accordingly, we sustain this rejection for the reasons identified above with
respect to Rejection VIII.
RejectionX
With respect to claim 14, the Examiner finds that Bart, Smith '553,
and Jain disclose an engine as claimed except for a bypass ratio of greater
than about 6. Final Action 41. However, the Examiner finds that Jain
disclose a bypass ratio of 10 or greater and that it was known that a higher
bypass ratio results in a more efficient engine with less noise. Id. (citing
Jain i-f 10; Wang i-f 5. Thus, the Examiner concludes that it would have been
obvious to include a bypass ratio of greater than about six. Id.
With respect to claim 15, the Examiner finds that Bart, Smith '553,
Jain, and Wang fail to explicitly disclose a fan pressure ratio of less than
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about 1.45. Id. at 41--42. The Examiner finds that Smith '483 discloses a
gas turbine engine with a ratio between 1 and 1.4 depending upon the engine
operating conditions. Id. at 42 (citing Smith '483 Figs. 4, 5, 7 A; i-f 4). The
Examiner also finds that Smith '483 teaches that a lower ratio improves
efficiency and reduces noise levels, and thus, it would have been obvious to
modify the combined turbine engine with the claimed ratios. Id.
We agree with and adopt the Examiner findings regarding the scope
and content of Bart, etc., with respect to claims 14 and 15. See Final Action
41--42; Ans. 29-32. As discussed below, we are not persuaded by
Appellants' arguments.
Regarding claim 14, Appellants argue that Wang provides no reason
or motivation to modify Bart as the Examiner proposes because Wang
discloses only that higher bypass ratios can be more efficient and quiet.
Br. 8. Appellants assert that this language means that improved efficiency is
only a possibility and there is no indication what a higher bypass ratio might
be. Id. We disagree for the reasons provided by the Examiner. See Ans.
30-32. Specifically, we find that Wang indicates a known benefit of a
higher bypass ratio and Appellants provide no support for concluding that
this proposed benefit might actually be a detriment.
With respect to claim 15, Appellants argue that Smith '483 teaches
away from a fan pressure ratio of less than about 1.45 as claimed because
Smith discloses that a ratio of 1.6 results in an acceptable loss in fan stall
and flutter margins while a ratio of 1.3 results in unacceptable margins.
Br. 8. We disagree for the reasons provided by the Examiner. See Ans. 32.
Specifically, Smith '483 identifies a ratio of 1.3 as having a disadvantage,
but Smith '483 goes on to describe how the disadvantage is remedied. As
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such, we do not find that Smith '483 teaches away from the claimed ratio as
one of ordinary skill in the art would not be discouraged by Smith '483 from
using the claimed ratio. See In re Gurley, 27 F.3d 551, 53 (Fed. Cir. 1994).
Based on the foregoing, we find that the Examiner established a prima
facie showing of obviousness with respect to claims 14 and 15 over Bart,
etc., without error. Accordingly, we sustain this rejection.
Rejection XI
With respect to claim 16, the Examiner finds that Bart and Smith '553
teach the invention as claimed except for the requirement that the low
pressure turbine has a pressure ratio that is greater than about 5. Final
Action 43. Regarding this limitation, the Examiner finds that Jain teaches a
low pressure turbine with a ratio greater than 5 and that Taylor recognizes
that a low pressure turbine with higher ratios is able to do more work, "i.e.,
increasing the pressure drop and temperature drop of the combustion gases
flowing through the low pressure turbine." Id. (citing Jane i-f 10; Taylor
col. 4, 11. 20-40). The Examiner concludes that it would have been obvious
to optimize the pressure ratio to greater than about five to increase the
amount of power extracted from the combustion gases and increase engine
efficiency. Id.
We agree with and adopt the Examiner's findings regarding the scope
and content of the prior art including Bart, Smith '553, Jain, and Taylor as
applied to claim 16. See id.; Ans. 33-34. As discussed below, we are not
persuaded of error by Appellants' argument.
Appellants do not dispute that Jain discloses a ratio greater than 5, and
Appellants only argue that Taylor provides no details regarding what a
suitable ratio would be and cannot provide any reason to modify Bart with
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Jain's ratio. Br. 8. We disagree for the reasons provided by the Examiner.
Specifically, the Examiner relies on Jain for the claimed ratio and only relies
on Taylor as to show why a higher ratio is desirable. We find that a
preponderance of the evidence supports the Examiner's unrebutted findings
and that those findings adequately support the Examiner's conclusion
regarding obviousness with respect to this claim. Thus, we find that the
Examiner established a prima facie showing of obviousness with respect to
claim 16 over Bart, etc., without error. Accordingly, we sustain this
rejection.
Rejection XII
Appellants argue only that the rejection of claim 20 over Bart, etc., is
defective for the same reasons identified above with respect to claims 14, 15
and 17. Br. 9. Having found no deficiencies in the rejection of claims 14,
15, and 17 as discussed above, we sustain the rejection of claim 20 over
Bart, etc., for the same reasons.
Rejections XIII-XV
Regarding the double patenting rejections, Appellants state only that
"the Appellant[ s] will take the rejection[ s] under advisement
... [and] will revisit [them] once there are allowed claims." Br. 9. Thus,
Appellants do no present any arguments regarding these rejections, and they
are summarily sustained.
CONCLUSION
We affirm the rejection of claims 14, 16, and 20 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement
requirement.
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We reverse the rejection of claims 14, 16, and 20 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We do not reach the rejections under 35 U.S.C. § 103(a) over Hull.
We affirm the rejection of claims 1, 2, 9-11, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Bart in view of Smith '553.
We affirm the rejection of claims 12, 17-19, and 21under35 U.S.C.
§ 103(a) as unpatentable over Bart in view of Smith '553, Richards,
VanDuyn, Kumar, Wilson, Jr., and Rider.
We affirm the rejection of claims 14 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Bart in view of Smith '553, Jain, Wang, and
Smith '483.
We affirm the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Bart in view of Smith '553, Jain, and Taylor.
We affirm the rejection of claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Bart in view of Smith '553, Richards, VanDuyn, Kumar,
Wilson, Jr., Rider, Jain, Wang, and Smith '483.
We affirm the rejection of claims 1, 2, and 9-12 on the ground of
nonstatutory obviousness-type double patenting over claims 1-5 of Patent
Application No. 13/364,502 in view of Hull.
We affirm the rejection of claims 1 and 13 on the ground of
nonstatutory obviousness-type double patenting over claim 17 of Patent
Application No. 13/364,502 in view of Bart.
We affirm the rejection of claims 14--16 on the ground of nonstatutory
obviousness-type double patenting over claims 18-20 of Patent Application
No. 13/364,502 in view of Bart
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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