Ex Parte Phillips et alDownload PDFPatent Trial and Appeal BoardSep 14, 201613794976 (P.T.A.B. Sep. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 131794,976 03/12/2013 Kathleen R. Phillips 54549 7590 09/16/2016 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. PA19545UAA; 67097-1698US2 8352 EXAMINER GOYAL,ARUN ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 09/16/2016 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 KATHLEEN R. PHILLIPS, THOMAS G. PHILLIPS, and ETHAN K. STEARNS Appeal2014-007809 Application 13/794,976 Technology Center 3700 Before JAMES P. CALVE, LEE L. STEPINA, and FREDERICK C. LANEY, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kathleen R. Phillips et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner's Final decision rejecting claims 1-27. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal2014-007809 Application 13/794,976 THE CLAIMED SUBJECT MATTER The claimed invention is directed to a thermal management system for oil. Spec. i-f 2. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1 1. A lubricant supply system for a gas turbine engine compnsmg: a lubricant pump delivering lubricant to an outlet line, said outlet line splitting into at least a hot line and into a cool line, said hot line being directed primarily to locations associated with an engine that are not intended to receive cooler lubricant, and said cool line being directed through one or more heat exchangers at which lubricant is cooled, and said cool line then being routed to a fan drive gear; and 1 Appellants filed an Amendment on March 19, 2014, the same day as filing the Appeal Brief, but there is no indication in the record that the Amendment (hereinafter "Amendment filed concurrently with the Appeal Brief') was entered. See Ans. 1--4; see also MPEP § 1205.02 (stating "37 CPR 41.37(c)(2) prohibits the inclusion in a brief of any nev,r or non-admitted amendment, affidavit or other evidence. If an appellant wishes to seek review of an examiner's refusal to admit an amendment, affidavit or evidence, such review is by petition to the Director under 3 7 CPR 1.181. "), § 1206(!) (stating "Entry of a new amendment in an application on appeal is not a matter of right. The entry of an amendment (which may not include a new affidavit, declaration, exhibit or other evidence) submitted in an application on appeal is governed by 37 CPR 41.33, not 37 CPR 1.116."). Further, although Appellants refer to the Amendment filed concurrently with the Appeal Brief and argue that the Amendment negates the rejection of certain claims (Appeal Br. 4), the Examiner's Answer states that Appellant presented no arguments for these rejections (Ans. 2). Based on the lack of any indication in the record that the Amendment filed concurrently with the Appeal Brief was entered, and the Examiner's comments in the Answer, we understand the Examiner to not have entered the Amendment filed concurrently with the Appeal Brief, and we further understand the pending claims to be those filed with the last entered Amendment (filed on September 13, 2013). 2 Appeal2014-007809 Application 13/794,976 at least one of said one or more heat exchangers is a fuel/oil cooler, and said fuel/oil cooler being downstream of a point where said outlet line splits into said at least said hot line and said cool line, such that said hot line is not directed through said fuel/oil cooler. (Emphasis added). REFERENCES RELIED ON BY THE EXAMINER Coffinberry Sheridan Steams Phillips Papa Schwarz Gilson us 4,020,632 US 6,223,616 Bl us 8,261,527 US 8,443,582 Bl US 8,495,857 B2 US 2008/0110596 Al US 2009/0320488 Al May 3, 1977 May 1, 2001 Sept. 11, 2012 May21,2013 July 30, 2013 May 15, 2008 Dec. 31, 2009 THE REJECTIONS ON APPEAL 2 (I) Claims 1-27 are rejected on the ground of obviousness-type double patenting over claims 1-3, 8-12, 15, 17, and 18 of Steams, claims 1- 18 of Phillips, and claims 1-16 of Papa. (II) Claims 1-27 are provisionally rejected on the ground of obviousness-type double patenting over claims 1-15 of patent application serial no. 13/926,154. (III) Claims 1--4, 12, 13, 16, and 17 are rejected under 35 U.S.C. § 102(b) as anticipated by Schwarz. (IV) Claims 1 and 24 are rejected under 35 U.S.C. § 102(b) as anticipated by Coffinberry. 2 A rejection of claims 24 and 26 under 35 U.S.C. § 112, second paragraph, as failing to comply with the written description requirement, was withdrawn by the Examiner in the Advisory Action (mailed December 26, 2013). 3 Appeal2014-007809 Application 13/794,976 (V) Claims 1and5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schwarz. (VI) Claims 6-11, 18, 19, 22, and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Schwarz and Gilson. (VII) Claims 6 and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gilson and Coffinberry. (VIII) Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schwarz and Sheridan. (IX) Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over Schwarz, Gilson, and Sheridan. ANALYSIS Rejection(!) Appellants do not make substantive arguments against this rejection. See Appeal Br. 4--8. Accordingly, we summarily sustain the Examiner's rejection of claims 1-27 on the ground of obviousness-type double patenting over claims 1-3, 8-12, 15, 17, and 18 of Steams, claims 1-18 of Phillips, and claims 1-16 of Papa. Rejection (II) Since the date of the Final Office Action, patent application serial no. 13/926,154 was abandoned, and we therefore decline to reach this provisional double patenting rejection. Re} ection (111) The Examiner finds that Schwarz teaches all the features recited in claim 1, and specifically, "Schwarz teaches a cool line consisting of 23-25- 4 Appeal2014-007809 Application 13/794,976 27-28-29 and the hot line consisting of23-25-28-32." Final Act. 4-5, and 12. Appellants assert that claim 1 "requires 'at least one of said one or more heat exchangers is a fuel/oil cooler, and said fuel/oil cooler being downstream of a point where said outlet line splits into said at least said hot line and said cool line'" and that "[t]he line downstream of the combiner 28 heading to the heat exchanger 29 in Schwarz cannot meet the 'fuel/oil cooler' limitation, nor can it meet the limitation that 'said hot line is not directed through said fuel/oil cooler."' Appeal Br. 5. In response, the Examiner refers to an annotated copy of Figure 4 of Schwarz. See Ans. 2--4; see also Final Act. 5. We reproduce the Examiner's annotated version of Figure 4 of Schwarz below. Figure 4 of Schwarz depicts schematic diagram of a generator lubrication system coupled to an engine lubrication system via oil-to-oil heat exchanger 40, which is positioned upstream of air-oil heat exchanger 29. Schwarz 5 Appeal2014-007809 Application 13/794,976 iii! 34--35. The Examiner's annotations indicate where the Examiner finds the hot, cool, first, and second lines. Ans. 3. Further describing annotated Figure 4, the Examiner states: [E]ven though Schwarz teaches a combined flow at 28 (when lubricant flows through heat exchanger 27), the flow reaching parts 32 would always be hotter than the flow reaching parts 36 (the flow to 36 passes through additional heat exchangers 40 and 29) as such the line from 25-28-32 reads on claim limitation "hot line" and the line 25-27-28-40-29-36 reads on claim limitation "cool line" (the flow in line 25-28 is hotter than the flow in line 25-27-28 and the flow in line 28-32 is hotter than the flow in line 28-40-29-36). Ans. 2-3 (emphasis added). In reply, Appellants reiterate, "the claimed cool line must pass through a fuel/oil cooler downstream of a point where the outlet line splits into the hot line and the cool line. In Schwarz, the fuel/oil cooler 27 is upstream of the point 28." Reply Br. 2. We agree with Appellants on this issue. In the discussion of the rejection of claim 1, the Examiner does not specifically identify the point in Schwarz' Figure 4 where the Examiner finds that the outlet line splits "into at least a hot line ... and into a cool line" as recited in claim 1. See Final Act. 4--5, 12. However, in the discussion of claim 12, the Examiner finds that combiner arrangement 28 corresponds to such a point. Final Act. 6. Further, as combiner arrangement 28 is the last common point in what the Examiner finds, in the rejection of claim 1, are the cool line (25-27-28-40- 29-36) and hot line (25-28-32), it appears that the Examiner considers combiner arrangement 28 to be the point at which the two lines split in the rejection of claim 1, as well. The Examiner's annotations to Figure 4 also indicate that the Examiner considers combiner arrangement 28 to be the 6 Appeal2014-007809 Application 13/794,976 point where the outlet line splits. As Appellants point out (Appeal Br. 5; see also Reply Br. 2) the heat exchanger downstream from combiner arrangement 28 is not a fuel-oil cooler as required by claim 1. Rather, the fuel-oil cooler disclosed in Schwarz (oil and fuel heat exchanger 27) is upstream of combiner arrangement 28. See Schwarz, Fig. 4. Accordingly, we do not sustain the Examiner's rejection of claim 1 and claims 2--4 depending therefrom as anticipated by Schwarz. Claim 12 Independent claim 12 recites, in part: a valve positioned on said cool line, at a location downstream of a point where said hot line splits off from said cool line, and said valve splitting said cool line into two lines, with a first line being directed through said one or more heat exchanger, and a second line being directed through at least one other cooler. Amendment (filed Sept. 13, 2013) 5. Referring to the annotated copy of Figure 4 of Schwarz, the Examiner finds that Schwarz teaches "a valve ( 41) positioned on said cool line, at a location downstream of a point where said hot line splits off Uunction 28) from said cool line, and said valve splitting said cool line into two lines." Final Act. 6. Appellants' state: [T]he Examiner also argues that the valve 41 of Schwarz would separate the cool line into two lines. However, this interpretation misses the point that Schwarz lacks a cool line and a hot line, as required by independent claim 12. Rather, given the Examiner's apparent interpretation, all of the flow is either hot or cold, i.e., there is no cool line directed to the fan drive gear. Appeal Br. 7. Appellants further state that claim 12 requires: [A] valve positioned on the cool line at a location downstream of the point where the hot line splits off from the cool line, and the 7 Appeal2014-007809 Application 13/794,976 valve splitting the cool line into two lines, with the first line being directed through "said one or more heat exchanger[,]" and a second lines being directed through at least one other cooler. The flow to the "cool line" 23 of Schwarz does not meet this limitation, as it does not have the split, as was previously pointed out. Reply Br. 2 (emphasis added). We agree with Appellants on this issue because valve 41 in Schwarz is a bypass valve and therefore does not split the flow it receives via line 23 into two lines, as claimed. See Schwarz ,-r 30. In this regard, Schwarz states: This bypass valve allows computer 26' to direct the engine oil from air and oil heat exchanger 29 directly to higher temperature sensitivity parts 36 thus bypassing heat exchanger 40 to thereby prevent heat in the engine oil and heat in the generator oil from being transferred from one to the other. Schwarz ,-r 30. Thus, as Appellants point out, the flow leaving valve 41 is all the same temperature inasmuch as there is only one flow stream leaving valve 41. Schwarz either (i) directs this flow to the heat exchanger 40 to exchange heat between the generator oil (in line 13) and engine oil (in line 23), or (ii) directs the flow to bypass heat exchanger 40. Thus, bypass valve 41 does not split the flow in line 23 as required by claim 12. Accordingly, we do not sustain the Examiner's rejection of claim 12, or of claims 13, 16, and 17 depending therefrom, as anticipated by Schwarz. Rejection (IV) Appellants assert that the rejection of claims 1 and 24 as anticipated by Coffinberry is "moot" in light of the Amendment filed concurrently with the Appeal Brief. See Appeal Br. 4. As this Amendment was not entered by the Examiner, this argument is not commensurate with the current status of 8 Appeal2014-007809 Application 13/794,976 claims 1 and 24, and we sustain the Examiner's rejection of claims 1 and 24 as anticipated by Coffinberry. Rejection (V) Appellants assert that "claim 1 is being amended in the concurrently filed Amendment to recite the limitations of claim 2, thereby reducing issues for Appeal," and this renders the rejection of claim 1 as unpatentable over Schwarz moot. Appeal Br. 4. However, as discussed above, the record does not indicate that the Amendment filed concurrently with the Appeal Brief was entered by the Examiner, and the Examiner's comments indicate that the Examiner has not considered the above-noted Amendment to the claims. Specifically, the Examiner sates: [NJ o arguments for [the] rejection of Claim 1 under 3 5 USC [ §] 103(a) as being obvious over Schwarz as discussed on page 7 paragraph 12 of the Office Action mailed on 10/21/2013. Consequently no arguments were presented for rejection of Claims 6, 18, 19, 22 and 23 as being unpatentable over Schwarz in view of Gilson because Appellant just argued on page 7 that independent claims 6 and 18 recite same features as claim 1. Ans. 2. 3 In reply, Appellants reiterate that claim 1 was amended to include the features of claim 2, and Schwarz "was not relied upon, standing alone, to 3 We do not have jurisdiction to review the Examiner's decision to enter or not enter the Amendment filed concurrently with the Appeal Brief, as this is a matter that is reviewable by petition to the Director under 3 7 C.F .R. § 1.181. See MPEP §1201 (the Board will not ordinarily hear a question that is reviewable by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F .2d 1395, 1403 (CCP A 1971 )) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that the refusal of an examiner to enter an 9 Appeal2014-007809 Application 13/794,976 reject claim 2. As stated at Page 4 of the Appeal Brie±: that rejection is now moot." Reply Br. 1. As the Amendment filed concurrently with the Appeal Brief was not entered by the Examiner, the claims on appeal are those filed with the last entered Amendment (filed on September 13, 2013), and Appellants' arguments are not commensurate with the scope of claims 1 and 5. Accordingly, we find Appellants argument to be unpersuasive, and we sustain the Examiner's rejection of claim 1 and claim 5 depending therefrom as unpatentable over Schwarz. Rejection (VI) Independent claim 6 recites, in part, "said fuel/oil cooler being downstream of a point where said outlet line splits into said at least said hot line and said cool line." Amendment 4 (filed Sept. 13, 2013). Independent claim 18 recites, in part, "a valve positioned on said cool line, at a location downstream of a point where said hot line splits off from said cool line." Id at 6. The Examiner finds that "Schwarz teaches all the inventions as discussed above for Claim 1 (under 35 USC [§]102 above and as an alternative under 35 USC [§]103 above) and Claim 12 including a gas turbine engine." Final Act. 9 (emphasis added). The Examiner further finds that "Schwarz does not teach the specifics of the gas turbine engine" required by claims 6 and 18, and the Examiner relies on Gilson to teach these features. Final Act. 9. amendment of claims is reviewable by petition under 3 7 C.F .R. § 1.181, and not by appeal to the Board)). 10 Appeal2014-007809 Application 13/794,976 Appellants rely on the same arguments for the patentability of independent claims 6 and 18 as those discussed above regarding the patentability of claims 1 and 12. Appeal Br. 7. Claims 6--11 We agree with Appellants' arguments with respect to the rejection of claim 1 as anticipated by Schwarz, and we reverse the Examiner's rejection of claim 6 and claims 7-11 depending therefrom based on the Examiner's incorrect finding that Schwarz discloses all the features recited in claim 1. With respect to the rejection of claim 6 based on the Examiner's finding that claim 1 is unpatentable over Schwarz under 35 U.S.C. § 103(a), we sustain this rejection for the same reasons discussed above for Rejection (V). Claims 7-11 fall with claim 6. Claims 18, 19, 22, and 23 For the same reasons discussed above regarding the rejection of claim 12 as anticipated by Schwarz, we reverse the Examiner's rejection of claims 18, 19, 22, and 23 as unpatentable over Schwarz and Gilson. Re} ection (VII) Appellants rely on the Amendment filed concurrently with the Appeal Brief to address the rejection of claims 6 and 26 as unpatentable over Gilson and Coffinberry. Appeal Br. 2. However, as discussed above, this Amendment was not entered by the Examiner. Accordingly, we sustain the Examiner's rejection of claims 6 and 26 as unpatentable over Gilson and Coffinberry. Rejection (VIII) The Examiner states, "[c]laim 25 is rejected under 35 U.S.C. 103(a) as being unpatentable over Schwarz in view of Sheridan ( 6,223, 616). Schwarz 11 Appeal2014-007809 Application 13/794,976 teaches the invention as claimed and as discussed for Claims 1 and 5, above." Final Act. 11. We understand the Examiner's reference to a discussion of claims 1 and 5 to refer to the Examiner's rejection of claims 1 and 5 as unpatentable over Schwarz (see Final Act. 7-8) because the anticipation rejection based on Schwarz does not include a rejection of claim 5 (see Final Act. 4---6). Appellants assert that the rejection of claim 25 is "moot" in light of the cancelation of claim 25 in the Amendment filed concurrently with the Appeal Brief. 8. As this Amendment was not entered by the Examiner, Appellants' argument is not commensurate with the current status of claim 25, and we sustain the Examiner's rejection of claim 25. Rejection (IX) Appellants assert that the rejection of claim 27 is "moot" in light of the cancelation of claim 27 in the Amendment filed concurrently with the Appeal Brief. 8. As this Amendment was not entered by the Examiner, the argument is not commensurate with the current status of claim 27. Claim 27 ultimately depends from claim 6. Accordingly, claim 27 falls with claim 6 for the same reasons discussed above regarding Rejection (VI). DECISION (I) We affirm the Examiner's rejection of claims 1-27 on the ground of obviousness-type double patenting over claims 1-3, 8-12, 15, 17, and 18 of Steams, claims 1-18 of Phillips, and claims 1-16 of Papa. (II) We do not reach the Examiner's provisional rejection of claims 1-27 on the ground of obviousness-type double patenting over claims 1-15 of patent application serial no. 13/926,154. 12 Appeal2014-007809 Application 13/794,976 (Ill) We reverse the Examiner's rejection of claims 1--4, 12, 13, 16, and 17 as anticipated by Schwarz. (IV) We affirm the Examiner's rejection of claims 1 and 24 as anticipated by Coffinberry. (V) We affirm the Examiner's rejection of claims 1 and 5 as unpatentable over Schwarz. (VI) We affirm the Examiner's rejection of Claims 6-11 as unpatentable over Schwarz and Gilson based on applying Schwarz in accordance with Rejection (V). We reverse the Examiner's rejection of Claims 6-11 as unpatentable over Schwarz and Gilson based on applying Schwarz in accordance with Rejection (III). We reverse the Examiner's rejection of claims 18, 19, 22, and 23 as unpatentable over Schwarz and Gilson. (VII) We affirm the Examiner's rejection of claims 6 and 26 as unpatentable over Gilson and Coffinberry. (VIII) We affirm the Examiner's rejection of claim 25 as unpatentable over Schwarz and Sheridan. (IX) We affirm the Examiner's rejection of claim 27 as unpatentable over Schwarz, Gilson, and Sheridan. 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 13 Copy with citationCopy as parenthetical citation