Ex Parte OttoDownload PDFPatent Trial and Appeal BoardMay 26, 201613557550 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/557,550 07/25/2012 John R. Otto 54549 7590 05/31/2016 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. 22579USAA; 67097- l 897PUS2 CONFIRMATION NO. 3983 EXAMINER MEADE, LORNE EDWARD ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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 JOHN R. OTT01 Appeal2014-003605 Application 13/557,550 Technology Center 3700 Before JENNIFER D. BAHR, AMANDA F. WIEKER, and FREDERICK C. LANEY, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John R. Otto ("Appellant") appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-17 and 21-23.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, the Real Party in Interest is United Technologies Corporation. Appeal Br. 1. 2 Appellant states that claims 18-20 are cancelled. Id. at 21, Claims App. Appeal2014-003605 Application 13/557,550 CLAIMED SUBJECT MATTER The invention concerns a gear assembly support for a gas turbine engine. Spec., Abstract. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. A gear assembly support for use in a gas turbine engine, compnsmg a support member having an inner portion and an outer portion, one of the inner portion or the outer portion being configured to be coupled to a gear assembly and the other of the inner portion or the outer portion being configured to be coupled to a housing in a gas turbine engine, the support member including a plurality of removal features each having a plurality of engaging surfaces facing in a first direction opposite to a pulling force in a second direction parallel to an axis through a center of the support member, wherein an orientation of the engaging surfaces on each of the removal features relative to each other is configured to resist any bending moment on the support member during application of the pulling force on the support member. Appeal Br. 18, Claims App. (emphasis added). Independent claim 10 contains similar language to that emphasized above in claim 1. Id. at 20, Claims App. REJECTIONS3 The claims stand rejected as follows: I. Claims 1, 9, 10, and 21under35 U.S.C. § 112 i-f 2 as indefinite. 3 In the Answer, the Examiner withdraws a provisional nonstatutory double patenting rejection. Ans. 2. Additionally, the Examiner's objection to the drawings is reviewable by petition under 3 7 C.F .R. § 1.181, not by appeal to the Board. See Appeal Br. 15-16; see Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 2 Appeal2014-003605 Application 13/557,550 II. Claims 1, 5-7, 9, 10, 14--16, and 21under35 U.S.C. § 102(b) as anticipated by Davies (US 3,720,060, iss. Mar. 13, 1973). III. Claims 2--4 and 11-13 under 35 U.S.C. § 103(a) as unpatentable over Davies and MacDonald (US 2,253,241, iss. Aug. 19, 1941). IV. Claims 8 and 17 under 35 U.S.C. § 103(a) as unpatentable over Davies. V. Claims 1, 2, 4, 5, 9-11, 13, 14, and 21-23 under 35 U.S.C. § 103(a) as unpatentable over Moniz (US 7,490,460 B2, iss. Feb. 17, 2009), Mancuso (Jon R. Mancuso & Roger Jones, Coupling Interface Connection, Proceedings of the 30th Turbomachinery Symposium), Cornwell (US 1,858,238, iss. May 17, 1932), and Sawaya (US 6,581,265 B2, iss. June 24, 2003). VI. Claims 1, 2, 4, 5, 9-11, 13, 14, and 21-23 under 35 U.S.C. § 103(a) as unpatentable over Moniz, Mancuso, Cornwell, Sawaya, and Lewis (US 5,230,540, iss. July 27, 1993). Claims 9 and 21 ANALYSIS Indefiniteness under 3 5 U.S. C. § 112 f 2 The Examiner finds that "partially flexible," appearing in claims 9 and 21, is a relative term that renders the claim indefinite, because the term is not defined by the claim and the Specification does not provide a standard for ascertaining the requisite degree. Final Act. 3--4. 3 Appeal2014-003605 Application 13/557,550 Appellant contends that a person of ordinary skill in the art would readily recognize what is meant by this language, especially in light of paragraph 49 of the Specification, which states that "the support member 'is at least partially flexible for supporting the geared architecture 48 within the engine 20 in a manner that accommodates some limited relative movement between the geared architecture 48 and the axis A resulting from forces associated with operation of the engine.'" Appeal Br. 3. We are persuaded by Appellant's argument. Appellant's Specification provides a standard by which a person of ordinary skill in the art can ascertain the requisite degree of flexibility required by the claims. In other words, "partial flexib[ility]" is described as sufficient flexibility to permit "some, limited relative movement between the geared architecture 48 and the axis A." Spec. i-f 49; see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir. 2014) ("Although absolute or mathematical precision is not required ... [t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art."). Therefore, we cannot sustain the Examiner's rejection. Claims 1 and 10 The Examiner finds that claims 1 and 10 are "incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections." Final Act. 4. The Examiner finds the omitted elements to be: the plurality of removal features each having a stem and an arcuate cross member located at a distal end of said stem, said stem protruding from said outer portion parallel to said 4 Appeal2014-003605 Application 13/557,550 longitudinal axis and towards a front portion of said housing, said arcuate cross member including a first tab and a second tab, said first tab protruding from a side of the stem facing radially inward towards said longitudinal axis and said second tab protruding from a side of the stem facing radially outward away from said longitudinal axis; and a plurality of engaging surfaces located on a side of said arcuate cross member facing away from said front portion of said housing, said plurality of engaging surfaces including a first planar surface and a second planar surface, said first planar surface oriented perpendicular to said longitudinal axis and located on said first tab, said second planar surface oriented perpendicular to said longitudinal axis and located on said second tab. Id. at 4--5. The Examiner finds that these elements are essential to performing the claimed limitation of "resist[ing] any bending moment on the support member during application of the pulling force on the support member" because, without these elements, a bending moment would be generated. Id. at 5-9. Appellant argues that "the Examiner's suggested additions to the claims are unnecessary and unfounded." Appeal Br. 4. Appellant argues that the Specification does not disclose these features as critical and "there are a variety of ways to include a removal feature consistent with Appellant's claims. The particular language suggested by the Examiner might cover one particular embodiment of such a support member. Appellant is not required, however, to unnecessarily limit its claims to read solely on a particular embodiment." Id. at 5-7. We are persuaded by Appellant's argument. The Examiner has not shown persuasively that these purportedly "essential" features are critical to the function of Appellant's invention, rather than describing a preferred 5 Appeal2014-003605 Application 13/557,550 embodiment.4 Furthermore, the Examiner has not shown that a person of ordinary skill in the art would not understand the scope of the claim in the absence of these purportedly essential elements. Therefore, we cannot sustain the Examiner's rejection. Anticipation by Davies - Claims 1, 5-7, 9, 10, 14-16, and 21 Appellant's Claim 1 requires that the gear assembly support include: a plurality of removal features each having a plurality of engaging surfaces facing in a first direction opposite to a pulling force in a second direction parallel to an axis through a center of the support member, wherein an orientation of the engaging surfaces on each of the removal features relative to each other is configured to resist any bending moment on the support member during application of the pulling force on the support member. Appeal Br. 18, Claims App. Independent claim 10 contains similar language. Id. at 20, Claims App. 4 We are unpersuaded by the Examiner's argument that MPEP 2164.08(c), cited by Appellant and discussing enablement, is inapplicable to the pending indefiniteness rejection. Ans. 6. The Examiner's rejection cites MPEP 2172.01, (see Final Act. 4), which directs attention to MPEP 2164.08( c ). Appellant's discussion of this portion of the MPEP, therefore, is reasonable because the issues presented by claims that allegedly omit essential elements are related to both indefiniteness and enablement. 6 Appeal2014-003605 Application 13/557,550 The Examiner finds that Davies anticipates claims 1 and 10, and provides an annotated version of Figure 3, which is reproduced below. Final Act. 10-12. The annotated figure reflects the Examiner's findings regarding the structures corresponding to Appellant's claimed "support member" and "removal features." Id. at 12. Specifically, the Examiner finds that Davies' bolts are the claimed "plurality of removal features," and finds that the "head and threads" of the bolts are the claimed "engaging surfaces." Id. at 11. The Examiner finds that the orientation of the engaging surfaces on each bolt "is configured to resist any bending moment on the support member during application of the pulling force on the support member," as 7 Appeal2014-003605 Application 13/557,550 claimed,5 because "[b]olts are symmetric around their longitudinal axis and when tightened, i.e., during application of the pulling force, they symmetrically distribute the force in a bolt cone around their longitudinal axis without any local bending moments." Id. The Examiner also finds that Newton's Third Law of Motion dictates that when Davies' bolts are tightened, an equal and opposite force is applied, such that "the support member would be pulled by the bolt threads towards the gas turbine housing until the two components make contact." Ans. 14--16 (providing annotated Figure A-1). 6 Appellant argues, inter alia, that the Examiner's rejection relies on a "pulling force (tension) on the bolts rather than a pulling force on the structure that the Examiner considers to be the support member," as claimed. Appeal Br. 7. Appellant also argues that the Examiner's rejection relies on the bolts' resistance to a bending moment, but does not address whether the structure identified as the support member resists a bending moment, as claimed. Id. We are persuaded by Appellant's arguments. The Examiner has not established that the orientation of the structures identified as the engagement surfaces of Davies' removal features (i.e., the "head and threads" of Davies' bolts) is "configured to resist any bending moment on the support member during application of the pulling force on the support member," as required 5 The Examiner finds that this is a statement of desired result and the prior art "only requires the ability to so perform." Final Act. 11; Ans. 12-14. 6 The drawing identified as "Figure A-1" appears to be an original drawing provided by the Examiner for the first time in the Answer. See Ans. 17. 8 Appeal2014-003605 Application 13/557,550 by claims 1 and 10. Even accepting the Examiner's position that Davies' bolts are removal features with engaging surfaces as claimed, the Examiner has not shown that this structure is capable of resisting a bending moment on the support member during application of a pulling force on the support member. The Examiner's discussion of the application of a pulling force on the removal features (Davies' bolts), and the resistance of a bending moment on those removal features, is not commensurate with the claim scope. The Examiner's discussion of Newton's Third Law does not dictate a different result. Even if an equal and opposite force is applied to the turbine housing generally, the Examiner has not shown that this is a pulling force applied on the structure the Examiner identifies as the "support member." See Final Act. 12. The Examiner's identification of the "support member" in annotated Figure A-1 in the Answer does not correspond to the Examiner's identification of the "support member" in the Final Rejection. Compare Ans. 16, with Final Act. 12. The Examiner has not established that when Davies' bolts, as shown in Davies' Figure 3, are tightened, an equal and opposite pulling force is applied on the structure identified as the support member, in Davies' Figure 3. Because the Examiner has not shown that Davies discloses this requirement of independent claims 1 and 10, we cannot sustain the Examiner's rejection of those claims, or claims 5-7, 9, 14--16, and 21, which depend therefrom. Obviousness over Davies and MacDonald - Claims 2--4 and 11-13 The Examiner does not rely on MacDonald to cure the above-noted deficiencies in the Examiner's rejection of claims 1 and 10. Therefore, for 9 Appeal2014-003605 Application 13/557,550 the reasons discussed above with respect to claims 1 and 10, we cannot sustain the Examiner's rejection of claims 2--4 and 11-13. Obviousness over Davies - Claims 8 and 17 The Examiner's obviousness analysis over Davies does not cure the above-noted deficiencies in the Examiner's rejection of claims 1 and 10. Therefore, for the reasons discussed above with respect to claims 1 and 10, we cannot sustain the Examiner's rejection of claims 8 and 17. Obviousness over Moniz, Mancuso, Cornwell, and Sawaya-Claims 1, 2, 4, 5, 9-11, 13, 14, and 21-23 The Examiner finds that Moniz discloses a gear assembly support comprising a support member (320), which includes a plurality of removal features (390), each of which has a plurality of engaging surfaces (walls of 390). Final Act. 18-19. The Examiner finds that Moniz is silent regarding the orientation of engaging surfaces being configured to resist any bending moment on the support member during application of the pulling force on the support member. Id. at 21. The Examiner finds that Mancuso teaches that it was known to remove a gear housing from a shaft by using a wheel puller, and that gas turbines were known to include tight fitting couplings with a puller was used. Id. at 22. The Examiner finds that Cornwell and Sawaya teach specific wheel pullers with circumferentially arranged pulling elements that generate a pulling force. Id. The Examiner concludes that it "would have been recognized" by a person of ordinary skill in the art to "apply[] the known technique taught by Mancuso and using the known wheel pullers taught by Cornwell and Sawaya to the geared architecture ( 100) support member of Moniz[, which] would have yielded predictable results and 10 Appeal2014-003605 Application 13/557,550 resulted in an improved system, namely, a system [having the claimed orientation and functional capability]." Id. at 22-23. Appellant argues, inter alia, that Moniz' slots 390 cannot be characterized as removal features having engaging surfaces, as claimed. Appeal Br. 13. Appellant contends that "[t]here is nothing within the Moniz reference that in any way indicates how the slots 390 would be used for exerting a pulling force" and, therefore, a person of ordinary skill in the art would have no reason to combine the references as claimed. Id. (emphasis omitted); Reply Br. 3--4. "Appellant is attacking the Examiner's lack of an articulated rationale for even beginning the proposed combination based on the slots 390." Reply Br. 4. We are persuaded by Appellant's arguments. The Examiner fails to provide articulated reasoning with rational underpinning to support the proposed combination of references. The Examiner concludes that a "puller," to be used for removal of the gear assembly, could be added to Moniz' slots 390. This combination disregards Moniz' explicit disclosure that slots 390 absorb thrust load. Moniz 8:21-31. These slots are not used for removal in any way. The Examiner fails to explain why a person of ordinary skill in the art, faced with Moniz' thrust absorbing slots, would have been motivated to add a wheel puller to that structure. 7 The 7 We understand that claim terms are construed broadly during examination, (see Ans. 29), however, the construction afforded to claim terms must be reasonable. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) ("A construction that is 'unreasonably broad' and which does not 'reasonably reflect the plain language and disclosure' will not pass 11 Appeal2014-003605 Application 13/557,550 Examiner's conclusion that the proposed combination "would have yielded predictable results and resulted in an improved system," is conclusory and does not articulate reasonably why the combination would have been obvious in the first place. "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Therefore, we cannot sustain the Examiner's rejection of claims 1 or 10, or claims 2, 4, 5, 9, 11, 13, 14, and 21-23, which depend therefrom. Obviousness over Moniz, Mancuso, Cornwell, Sawaya, and Lewis - Claims 6--8 and 15-17 The Examiner does not rely on Lewis to cure the above-noted deficiencies in the Examiner's rejection of claims 1 and 10. Therefore, for the reasons discussed above with respect to claims 1 and 10, we cannot sustain the Examiner's rejection of claims 6-8 and 15-17. DECISION The rejections of claims 1-17 and 21-23 is REVERSED. REVERSED muster."). Here, the Examiner's construction of "removal features" to include thrust absorbing slots that are not used for removal, is unreasonable. 12 Copy with citationCopy as parenthetical citation