Ex Parte Scarinci

Patent Trial and Appeal Board

Aug 14, 2013

11255339 (P.T.A.B. Aug. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS SCARINCI
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Appeal 2011-008679
Application 11/255,339
Technology Center 3700
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Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 17-22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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Claimed Subject Matter
The claimed subject matter relates to a “ gas turbine engine
combustion system[]” and “[m]ore particularly, . . . to a mixing duct for the
passage of a swirled fuel and air mixture to a burning zone of a combustor.”
Spec. 1, ll. 4-6. Claim 17 (the sole independent claim), reproduced below,
with emphasis added, is representative of the appealed subject matter.
17. An apparatus comprising:
a housing;
a centerbody located within said housing;
a combustion chamber;
an annular fluid flow passage located within
said housing and around at least a portion of said
centerbody, said annular fluid flow passageway
having an outlet in flow communication with said
combustion chamber;
a plurality of radial vanes located within
said housing and adapted to impart swirl to a
working fluid flow passing through said annular
fluid flow passage; and
wherein said annular fluid flow passage
between said plurality of radial vanes and said
outlet being a curvilinear passage configured to
turn the working fluid flow from a radial inwards
direction to an axial direction and the force due to
the swirling motion of the working fluid flow is
equal and opposite to the force due to turning the
working fluid flow from a radial direction to an
axial direction.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 17 and 19-22 under 35 U.S.C. § 102(b) as anticipated by
Scarinci (US 6,698,206 B2, issued Mar. 2, 2004); and
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II. claims 17-22 under 35 U.S.C. § 103(a) as unpatentable over
Scarinci.1

OPINION
Anticipation based on Scarinci
With respect to the above-emphasized functional language, the
Examiner sets forth three alternative interpretations as to how Scarinci
anticipates claim 17. First, the Examiner finds that “the force from/to the
working fluid does not provide a structural limitation that differentiates
Applicant’s invention from Scarinci because forces and working fluids are
not a part of the structure.” Ans. 4. Appellant argues that claim 17’s
functional claim language “should be evaluated and considered, just like any
other limitation of the claim, for what it reasonably conveys to a person of
ordinary skill in the pertinent art in the context in which it is used,” and “[a]
person of [ordinary] skill in the art would appreciate that the curvilinear
shape of the annular passage in conjunction with the swirling produced with
the radial vanes are configured to provide for the recited function when a
working fluid is flowed through it.” App. Br. 10.2
We agree with Appellant. Claim 17’s functional language defines a
particular radius of curvature of the passage which balances the force due to
the swirling motion of the working fluid with the force due to turning the

1 The Examiner originally rejected claims 17 and 19-22 as anticipated by
Scarinci and claim 18 as unpatentable over Scarinci. Final Rej. 2-5. In the
Answer, the Examiner added a new ground of rejection additionally
rejecting claims 17 and 19-22 as unpatentable over Scarinci. Ans. 6-11.
2 All references to “App. Br.” are to the “SUBSTITUTE APPEAL BRIEF
IN RESPONSE TO EXAMINER’S ANSWER” filed February 28, 2011.

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working fluid flow from a radial direction to an axial direction. App. Br. 7-
8. As stated in the present Specification, “[i]n one form[,] the curvature of
the annular mixing duct 29 defines a fluid flow path wherein the centrifugal
force associated with the swirling motion of the fluid flow is compensated
by the curvature of the streamlines being turned from a substantially radial
direction to a substantially axial direction,” and “[a] result is that the
centrifugal forces associated with the swirling motion and the streamlines
being turned from a radial to an axial direction are equal and opposite at all
times.” Spec. 9. Thus, although the forces and working fluids are not a part
of the structure, they do define the radius of curvature of the passage that is
capable of balancing the forces.
Second, the Examiner finds that because the flow of Scarinci turns
from radial to axial . . . the action/reaction forces should be the same as in
Applicant’s invention.” Ans. 4. In essence, the Examiner’s position appears
to be that because Scarinci discloses all the same structure as the present
invention, Scarinci inherently performs the same function. Ans. 7-8.
Appellant argues, and we agree, that the functional language of claim 17 is
not anticipated by Scarinci because it is “[t]he interplay between the swirling
motion imparted by the claimed radial vanes, as well as the curvilinear
passage that turns the working fluid from radial to axial, [that] affects
whether the forces between the actions are balanced.” App. Br. 8. In other
words, the Examiner “essentially determined that a passage shape that
merely turns a flow from radial to axial is always the same as a shape that
provides for a balance of forces within the fluid that is both swirling and
turning,” but this is not correct because “only passages having a particular
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structural curvature will satisfy the claimed limitation,” which is not taught
by Scarinci. App. Br. 7, 9.
Third, the Examiner states that “when App[ell]ant’s apparatus and
Scarinci’s apparatus are not in operation, the forces on the fluid throughout
the apparatuses are zero (or gravity) – they are equal because the fluid is not
being forced through the passages.” Ans. 4-5. Appellant argues, and we
agree, that the Examiner “is attempting to reject the language based upon a
comparison between a non-operation of the apparatus of claim 17 and the
apparatus of Scarinci, but such a comparison runs directly counter to the
language of the wherein clause” which “imparts patentability based upon
how the device operates when a fluid is flowed through it.” App. Br. 12.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 17, and claims 19-22 dependent thereon, under 35 U.S.C.
§ 102(b) as anticipated by Scarinci.

Obviousness based on Scarinci
In the alternative, the Examiner finds that Scarinci substantially
discloses the subject matter of independent claim 17, but “is silent as to the
forces due to swirling and turning the fluid.” Ans. 7. The Examiner also
finds that:
Optimization of the shape is generally recognized as
within the level of ordinary skill in the art. The change in
shape, or curvature of the passage would be well recognized in
the art as obvious since such a modification is a function of the
flow dynamics within the passage. It has been held that where
the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art. In re Aller . . . . Scarinci teaches the
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general conditions (i.e.[,] the swirlers and change in direction
from radial to axial).
Ans. 8. The Examiner concludes that:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to optimize the duct shape of
Scarinci’s combustor in order to optimize the flow dynamics
through the passage such that the force due to the swirling
motion of the working fluid flow is equal and opposite to the
force due to turning the working fluid flow from a radial
direction to an axial direction.
Furthermore, Applicant has not shown that the particular
shape provides new and unexpected results. It is well known in
the art that gentle curvatures are conducive to laminar flow
while sharp curvatures tend to create turbulence. Optimizing
the curvature in order to create a particular kind of flow would
be within the level of ordinary skill in the art and obvious.
Ans. 8-9.
Appellant argues that “[t]he Examiner’s insistence that a person of
skill would be motivated to ‘optimize’ [the] Scarinci reference is misplaced
because Scarinci fails to appreciate the interplay between swirling flow and
turning flow,” and “[n]othing is disclosed or suggested in Scarinci that
recognizes the interplay between turning a flow and swirling a flow.” App.
Br. 15.
We agree with Appellant. Discovery of an optimum value of a result
effective variable is ordinarily within the skill of the art. See In re Boesch,
617 F.2d 272, 276(CCPA 1980) and In re Aller, 220 F.2d 454, 456 (CCPA
1955). However, exceptions have been found where the results of
optimizing the variable are unexpectedly good or where the parameter
optimized was not recognized to be a result-effective variable. In re
Antonie, 559 F.2d 618, 620 (CCPA 1977). In this case, the Examiner has
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not established that Scarinci recognized that the radius of curvature of the
passage 54 was a result-effective variable.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 17, and claims 18-22 dependent thereon, under 35 U.S.C.
§ 103(a) as unpatentable over Scarinci.

DECISION
We reverse the Examiner’s decision to reject claims 17-22.

REVERSED

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