Ex Parte PUERTA et al

Patent Trials and Appeals Board

Jun 20, 2019

13557757 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/557,757 07/25/2012
135838 7590 06/24/2019
Studio Torta (RINGFENCE)
c/o BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313
Luis PUERTA
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.
0087748-000046 3153
EXAMINER
SEHN, MICHAEL L
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
ADIPDOCl@BIPC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LUIS PUERTA, MARCO MICHELI,
WOLFGANG KAPPIS, and ERIK BOLDT
Appeal2017-011088
Application 13/557,757 1
Technology Center 3700
Before LINDA E. HORNER, STEP AN ST AI CO VICI, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1-15 and 17-21. Final Office Action
(September 27, 2016, "Final Act."). 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 Appellants identify Ansaldo Energia Switzerland AG as the real party in
interest. Appeal Brief (March 10, 2017, "Appeal Br.") 1.
2 Claim 16 is canceled.
Appeal2017-011088
Application 13/557,757
The Examiner rejected all of the claims under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description and
enablement requirements. 3 Final Act. 6-8. Appellants contest these
rejections arguing that the Examiner failed to present a reasonable basis to
challenge the adequacy of the written description and to question the
enablement provided in the Specification.
For the reasons explained below, we agree with Appellants that the
Examiner has failed to show that the Specification lacks adequate written
description and enabling disclosure. Thus, we REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to a method and system
for injecting water into a multistage axial compressor of a gas turbine for
power enhancement and for improving efficiency. Specification (July 25,
2012, "Spec.") ,r,r 2-3. Claims 1, 6, and 9 are the independent claims.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below.
1. A method for injecting water into a multistage
axial compressor of a gas turbine, comprising:
injecting water at a plurality of points along the axial
compressor; and
controlling an injected water mass flow at individual
injection points in accordance with ambient conditions and
operating parameters of the gas turbine for creating an evened-
out loading in individual stages of the axial compressor via an
3 The Examiner withdrew a rejection of claims 1-15 and 17-21 under
35 U.S.C. § 101. Examiner's Answer (July 11, 2017, "Ans."), 2.
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Application 13/557,757
analysis of a meridional mean line flow with a droplet
evaporation model and a model of blade erosion.
Appeal Br. 43 (Claims Appendix).
ANALYSIS
Written Description Rejection
The Examiner rejected the claims for lack of adequate written
description because, according to the Examiner, the application fails to
disclose the underlying algorithms or steps required to control an injected
water mass flow via an analysis of a meridional mean line flow. Final
Act. 6. 4 Thus, the Examiner found that "it is unknown whether or not the
inventor had possession of the claimed invention." Id.
Appellants assert that the Examiner erred in this rejection because
"the Specification expressly discloses use of this analysis and a working
embodiment of a system that can use that analysis." Appeal Br. 19 ( citing
Spec. ,i,i 32-39, Fig. 1); id. at 21 (arguing that paragraphs 33-35 of the
Specification "expressly teach[] how meridional flow analysis can be
performed to account for specific issues affecting compressors and water
injection into compressors" and "provide[] specific guidance for how to
adjust such an analysis for incorporating droplet evaporation and blade
erosion modeling into the analysis."). Appellants argue that the Examiner's
rejection is based on "a conclusory contention that is devoid of any
supportive fact and improperly discounts the express text of the
4 Although the Examiner specifically addressed only independent claims 1
and 9 in the explanation of the rejection, the identified limitation asserted to
lack adequate written description also is recited in independent claim 6.
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Application 13/557,757
Specification" and "fails to account for how the teaching of the Specification
would have been understood by a person of skill in the art." Id. at 23.
To satisfy the written description requirement, "the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed."
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
( en bane). "[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. The claimed invention need not be recited in haec verba in the original
specification in order to satisfy the written description requirement. Id. at
1352.
The portion of the Manual of Patent Examining Procedure (MPEP)
relied on by the Examiner further provides that claims that define the
invention in functional terms may lack written description if the
Specification does not sufficiently describe how the function is performed or
the result is achieved. MPEP § 2161.0l(I). This portion of the MPEP states
that software inventions may lack adequate written description "when the
algorithm or steps/procedure for performing the computer function are not
explained at all or are not explained in sufficient detail ... so that one of
ordinary skill in the art would understand how the inventor intended the
function to be performed." Id.
We begin with an examination of the disclosure provided in the
Appellants' Specification. We focus particularly on paragraphs 33-35,
which Appellants contend provide adequate support to show possession of
the claimed invention. These paragraphs of the Specification go beyond
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Application 13/557,757
simply mirroring the claim language and provide further details as to how
Appellants intended the analysis of meridional mean line flow with a droplet
evaporation model and a model of blade erosion to be performed. For
instance, paragraph 33, which describes the control system that controls the
flow of water to the various injection points in the compressor passage,
states that in performing the meridional mean line flow analysis, density and
meridional velocity are corrected and velocity triangles are modified using
"[t]he wet compression effects of the temperature lowering" and "the
increase in the steam proportion."5 As to the droplet evaporation model,
paragraph 33 further describes that "[t]he evaporation effects are calculated
in this case blade row by blade row." As to the blade erosion model,
paragraph 34 describes using "experimentally verified algorithms for
predicting the erosion rate." Paragraph 35 of the Specification then
describes that "[b ]y modulation of the relative water volume which is
injected along the compressor passage, the erosion rate can be evenly
distributed in the various blade rows, as a result of which corrosion upon the
inlet blades is drastically reduced."
In addition to paragraphs 33-35, Appellants also direct our attention
to paragraph 9 of the Specification, which describes EP 1 903 188 A2
("EP '188"). ReplyBrief(August23, 2017, "Reply Br.") 13 (asserting that
the Specification "shows that a person of skill in the art knows how to use
5 Paragraph 6 of the Specification describes that the phenomenon known as
"wet compression" resulting from evaporation of water was known in the art
at the time of Appellants' invention, and that it was understood in the art at
the time of Appellants' invention that "the resulting steam from the droplet
evaporation has an influence upon the mass flow in the compressor passage
and an increase in the specific heat Cp."
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programs for CPD analysis."); see also id. at 5 ( arguing that meridional flow
analysis is a "CPD methodology in the art."). According to paragraph 9 of
the Specification, EP '188 teaches that "water can be injected into the air
flow which is to be compressed in order to increase the mass flow and to
augment the output of the turbine." EP '188 also shows that at the time of
Appellants' invention, one having ordinary skill in the art would have
known how to implement a control unit to control the flow of water into the
compressor inlet using computational fluid dynamic (CPD) transfer analysis
to model the amount of water to be injected to achieve a desired saturation
level. EP '188 ,r 37 (describing the basic CPD process for simulating fluid
flow), id. at ,r,r 38-39 (describing CPD models for full saturation and
oversaturation of the air). 6
The Examiner does not adequately address and explain why these
additional details as to how Appellants intended the analysis of meridional
mean line flow with a droplet evaporation model and a model of blade
erosion to be performed are inadequate to show possession of the invention
to one skilled in the art. The Examiner asserts that paragraphs 33-35 of the
6 Appellants also cite to three articles that Appellants assert demonstrate the
knowledge of one skilled in the art. Appeal Br. 20-21. We do not rely on
Appellants' assertions as to what these articles contain for several reasons.
First, Appellants have not provided copies of these articles to the Office, and
in at least two instances, we were unable to locate copies of the articles at
the Internet addresses provided by Appellants in the Appeal Brief. Second,
as noted by the Examiner (Ans. 4-5), Appellants' belated citation to this
Evidence for the first time in the Appeal Brief is not permitted under our
rules. See 37 C.F.R. § 4I.33(d). Third, according to the Examiner, these
articles are not evidence of what a person skilled in the art would have
understood at the time of the invention because each reference has a
publication date after the filing date of the claimed invention. Ans. 5.
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Specification do not elaborate on "how the evaporation effects are
calculated, how the wet compression effects are taken into consideration, or
how the experimentally verified algorithms work." Ans. 3. We disagree
with the Examiner's contention. As detailed above, the Specification
describes, for example, that the wet compression effects are used to correct
the density and the meridional velocity and to modify the velocity triangles
in the meridional mean line flow analysis. Spec. ,r 33. The Specification
also describes that the evaporation effects are calculated "blade row by blade
row" and that the blade erosion model comprises an "experimentally verified
algorithm for predicting erosion rate." Id. ,r,r 33, 34. We find that
paragraphs 33-35 contain additional details for controlling an injected water
mass flow via an analysis of a meridional mean line flow with a droplet
evaporation model and a model of blade erosion, and that the Examiner has
not provided an adequate basis on which to find that these additional steps
fail to explain to one skilled in the art how the inventor intends to achieve
the claimed function.
For these reasons, we do not sustain the rejection of claims 1-15 and
17-21 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement.
Enablement Rejection
The Examiner rejected the claims for lack of an enabling disclosure
because the application fails to disclose the specific steps or algorithms
required in the analysis of a meridional mean line flow with a droplet
evaluation model. Final Act. 7. Appellants argue that the Examiner's
rejection should not be sustained because "an exemplary specific analysis
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methodology is described in paragraphs 33-39 and illustrated in Figure 1."
Appeal Br. 30.
In this rejection, the Examiner examined the Wands factors and found
that several factors weigh against enablement, including "the state of the
prior art, the level of one of ordinary skill, the amount of direction provided
by the inventor, the existence of working examples, and the quantity of
experimentation needed to make or use the invention based on the content of
the disclosure." Final Act. 7 ( citing In re Wands, 858 F.2d 731 (Fed. Cir.
1988); MPEP § 2164.0l(a)). The Examiner determined that without
disclosure of specific steps or algorithms or a working example, one of
ordinary skill in the art would have to engage in undue experimentation to
make and use the invention as claimed. Id. at 7-8.
The Examiner, however, made no specific findings as to the level of
one of ordinary skill, and the Examiner acknowledged that "[t]he state of the
prior art recognizes controlling of an injected water mass flow." Id. at 7. In
fact, as discussed above, EP '188 demonstrates the level of ordinary skill in
the art and the state of the art at the time of Appellants' invention was such
that one of ordinary skill would have known how to use computational fluid
dynamic models to predict the amount of water needed to be injected into a
gas turbine engine based on defined parameters and boundaries of the
system to be modeled, and how to use this modeling to adjust the level of
water injected on a continual or intermittent basis. EP '188 ,i,i 37-41. Thus,
we disagree with the Examiner's findings that the state of the prior art and
the level of one of ordinary skill weigh against enablement. 7
7 For the same reasons discussed above, we do not rely on Appellants'
assertions on pages 32-34 of the Appeal Brief that various cited articles
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The Examiner also acknowledged that the breadth of the claim is
narrow. Final Act. 7. Thus, the Wands factor relating to the breadth of the
claim does not weigh against enablement.
The crux of the Examiner's non-enablement determination appears to
lie in the Examiner's finding that Appellants "fail[] to provide sufficient
direction for one of ordinary skill in the art to carry out the controlling step."
Id. (noting that the Specification does not "disclose the specific steps or
algorithms required in the analysis of a meridional mean line flow with a
droplet evaporation model"). As discussed above in the analysis of the
written description rejection, the Examiner's explanation fails to adequately
address the additional details provided in the Specification describing how
the wet compression effects are to be taken into account in the meridional
mean line flow analysis and how the droplet evaporation model is to be
calculated. See Spec. ,r 33.
Further, although the Examiner makes the bald assertion that undue
experimentation would be necessary to make and use the invention, the
Examiner fails to explain adequately in the rejection the basis for this
finding. In the Answer, the Examiner points to the description in the
Specification "that 'a large number of aerodynamic compressor parameters
... can be calculated and tracked"' as the basis for finding that this large
number of parameters "requires more experimentation than a small number
of parameters." Ans. 7. We disagree with the Examiner's characterization
of this description in the Specification.
demonstrate the knowledge of one skilled in the art at the time of
Appellants' invention. See n.6 above.
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We understand the Specification to describe that a benefit of using the
meridional mean line flow analysis to control water flow is that it allows for
tracking of a large number of aerodynamic compressor parameters that are
linked to compression load. Spec. ,r 34. The Specification further provides
examples of such parameters, e.g., "Koch factor, diffusion coefficients, load
factor, flow coefficient, etc." Id. Thus, the Specification demonstrates that
this method provides for advantages of tracking factors that may affect
compression loading, but the Examiner does not provide a reasonable basis
for inferring that the invention requires the identification and tracking of all
such parameters for purposes of enabling the invention.
The Examiner also notes the absence of a working example as a factor
weighing against enablement. Final Act. 7. The Examiner has not shown,
however, that a specific working example of the exact algorithm for
implementing the flow control is necessary in this case, based on the state of
the art and the level of ordinary skill, to enable the claimed invention.
For these reasons, we find that the Examiner has failed to provide an
adequate basis on which to conclude that the Specification lacks an enabling
disclosure of the claimed invention. For this reason, we do not sustain the
rejection of claims 1-15 and 17-21 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
DECISION
The decision of the Examiner rejecting claims 1-15 and 17-21 is
reversed.
REVERSED
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