Ex Parte Schwarz et al

Patent Trial and Appeal Board

Feb 21, 2018

13437304 (P.T.A.B. Feb. 21, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/437,304 04/02/2012 Frederick M. Schwarz 61457US01; 4398
67097-1803US1
54549 7590 02/23/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
GOYAL, ARUN
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
02/23/2018 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 FREDERICK M. SCHWARZ,
and DANIEL BERNARD KUPRATIS
Appeal 2017-002377
Application 13/437,304
Technology Center 3700
Before: MICHAEL L. HOELTER, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 5, 6, and 8-20. Final Act. 1; see also Advisory Action, mailed
March 2, 2016 (“Advisory Act.”). Claims 2—4 and 7 have been canceled.
1 Appellants identify the following cases as being related (abandoned cases
are not included herein): (i) Application Serial No. 13/407,795, filed
February 29, 2012, Geared Turbofan Engine with Counter-Rotating Shafts,
(present status: Examiner’s Answer mailed November 2, 2017, no Appeal
No. assigned); and (ii) Application Serial No. 13/459,498, filed April 30,
2012, Geared Turbofan with Three Turbines All Co-Rotating (present status
assigned Appeal No. 2017-002075, Decision rendered January 31, 2018).
Appeal 2017-002377
Application 13/437,304
(see Amendment, filed October 15, 2015). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a gas turbine having three
turbine sections, with one of the turbine sections driving a fan through a gear
change mechanism.” Spec. ^ 1. Apparatus claims 1 and 17 are independent.
Claim 1 is illustrative of the claimed subject matter and is reproduced below:
1. A gas turbine engine comprising:
a fan rotor, a first compressor rotor and a second
compressor rotor, said second compressor rotor compressing air
to a higher pressure than said first compressor rotor;
a first turbine rotor, said first turbine rotor driving said
second compressor rotor, and a second turbine rotor, said
second turbine rotor driving said first compressor rotor;
a fan drive turbine positioned downstream of said second
turbine rotor, said fan drive turbine driving said fan rotor
through a gear reduction;
said first compressor rotor and said second turbine rotor
rotating as an intermediate speed spool, and said second
compressor rotor and said first turbine rotor rotating together as
a high speed spool, with said high speed spool, said
intermediate speed spool, and said fan drive turbine rotating in
the same direction; and
a power density of the engine is greater than or equal to
about 1.5 lbf/in3, and less than or equal to about 5.5 lbf/in3, said
power density being defined as a ratio of thrust produced by
said engine expressed in pounds force to a volume of a turbine
section incorporating each of said first turbine rotor, said
second turbine rotor and said fan drive turbine rotor, expressed
in cubic inches[] and said thrust is sea level take-off flat-rated
static thrust.
2
Appeal 2017-002377
Application 13/437,304
REFERENCES RELIED ON BY THE EXAMINER
Dev US 7,219,490 B2 May 22, 2007
May 1,2008
May 28, 2009
Dec. 15,2009
Nov. 18,2014
Nov. 18,2014
Orlando et al.
Donnerhack
Somanath et al
Ress, Jr.
US 2008/0098715 Al
US 2009/0133380 Al
US 7,632,064 B2
US 8,887,485 B2
US 8,887,487 B2Kupratis et al.
THE REJECTIONS ON APPEAL2
Claims 1, 5, 6, and 8-20 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1 and
6 of Kupratis.
Claims 1,5, and 6-16 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1 and 3-16 of copending Application No. 13/459,498.
Claims 1,5, and 6-16 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1 and 3-16 of copending Application No. 13/437,290 in view of
Orlando.
Claims 1, 5, 6, 8-10, 13, 14, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Donnerhack, Dev, and Somanath. Final Act.
4-7.
Claims 1, 5, 6, and 8-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ress, Jr., Dev, and Somanath. Final Act. 7-10.
2 “[T]he Examiner withdraws the rejection under 35 U.S.C. [§] 112 [second]
paragraph.” Advisory Act. 2.
3
Appeal 2017-002377
Application 13/437,304
ANALYSIS
Double-patenting and
provisional double-patenting rejections
Regarding the Examiner’s double-patenting rejection in view of
Kupratis, Appellants have not submitted a terminal disclaimer but instead
state, “[sjhould this application ultimately be allowed, or should any of the
co-pending applications be allowed, Appellants] will submit a Terminal
Disclaimer at the appropriate time.” App. Br. 3. Hence, the Examiner’s
double-patenting rejection remains in effect, and we summarily sustain the
rejection of claims 1, 5, 6, and 8-20.
Regarding the Examiner’s provisional double-patenting rejections
under copending Application No. 13/459,498 and copending Application
No. 13/437,290 in view of Orlando, Appellants make the same statement as
above. See App. Br. 3. Hence, until such time arrives, both of the
Examiner’s provisional double-patenting rejections remain in effect, and we
do not reach them in this appeal.
Prior art rejections
Both independent claims 1 and 17 recite a “power density.”3 In both
of the obviousness rejections, the Examiner relies on Dev as recognizing that
engine performance “is associated to the ratio of the thrust to the volume of
the engine, Fig. 22.” Final Act. 5, 8 (emphasis added); see also Ans. 3, 5. In
3 Claims 1 and 17 each define the engine’s “power density” as a ratio “of
thrust... to a volume of a turbine section” (emphasis added). Both claims
further recite the power density being “greater than or equal to about 1.5
lbf/in3, and less than or equal to about 5.5 lbf/in3.”
4
Appeal 2017-002377
Application 13/437,304
both rejections, the Examiner replicates Figure 22 of Dev.4 Final Act. 6, 9;
Ans. 4. Based on the graph depicted, the Examiner states, “the ratio of the
thrust to the turbine section volume[] has been recognized in the prior art as
a result effective variable,” which “can be obviously optimized through
routine experimentation.” Final Act. 5-6, 9; Ans. 3 (referencing Dev Fig.
22; In re Antonie, 559 F.2d 618 (CCPA 1977); MPEP 2144.05(II)(B)).
Somanath is relied on for teaching a “mid-turbine-frame.” Final Act. 6, 9;
Ans. 3,5. The Examiner concludes that it would have been obvious to
modify the respective primary reference (i.e., Donnerhack or Ress, Jr.) to
include Somanath’s frame “so that the thrust-to-volume ratio (as defined by
[Appellants]) would” have the values recited “in view of In re Antonie and
In reAller.”5 Final Act. 7, 10; see also Ans. 3.
Appellants contend, “the claimed power density is only associated
with the volume of the turbine section, and not the overall volume of the
engine” and “Dev is able to achieve greater thrust at lower volume of the
entire engine, as opposed to a lower volume of the turbine A App. Br. 3—4.
Appellants contend “[njowhere in the prior art is any such ratio discussed”
and further, “the Examiner must first show that the parameter to be
optimized is recognized as a result-effective variable.” App. Br. 5-6 (citing
Antonie); see also id. at 8. In summation, Appellants state that, without
support that the “claimed ratio is a known result-effective variable,” “there is
no prima facie case of obviousness.” App. Br. 7.
4 Figure 22 of Dev is a graph contrasting “ENGINE CYFINDRICAF
VOEUME, cu.ft.” (x-axis) to “RATED THRUST, lbf’ (y-axis).
5 In reAller, 220 F.2d 454 (CCPA 1955).
5
Appeal 2017-002377
Application 13/437,304
There is merit to Appellants’ contentions. The Examiner understands
that engine volume is a combination of (a) turbine section volume;
(b) compressor section volume; and (c) combustor section volume. Final
Act. 5, 6, and 8-9; see also Ans. 3—4. The Examiner further recognizes that
the graph shown in Figure 22 of Dev “uses total engine volume” and not just
turbine volume as recited. Final Act. 6, 9; Ans. 4. The Examiner seeks to
resolve this disparity by addressing “Dev’s Fig. 1” stating, “the volume of
the turbine section appears to be less than 25% of total engine volume”
thereby achieving a ratio within the recited range. Final Act. 6, 9; Ans. 4.
This is problematic for multiple reasons. First, the Examiner relies on the
apparent scale of Figure 1 of Dev to arrive at a percentage of turbine volume
(Final Act. 6, 9; Ans. 4) even though Dev describes Figure 1 as being “a
schematic” view.6 Dev 2:35-36. Appellants contend that “measuring
drawings which have not been stated to be to scale is improper, and
reversible.” Reply Br. 2; see also App. Br. 5. Further, the Examiner
contends “the ratio taught by Dev can easily be converted to teach the
claimed ratio.” Ans. 4. However, nowhere does the Examiner attempt to
explain that any change in Dev’s engine volume would be proportional
across all three contributing volume sections, nor does the Examiner address
the issue where one section’s volume might vary (or remain constant) but
not another. Instead, based on a schematic figure that is not described as
illustrating relative proportions, the Examiner concludes that “the ratio of
6 Hookerson-Halberstadt, Inc. v. Avia Group International, Inc., 222 F.3d
951, 956 (Fed. Cir. 2000), states that “patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the [Specification is completely silent on the issue.”
6
Appeal 2017-002377
Application 13/437,304
thrust to turbine section volume above [a value] was known in the Art.”
Final Act. 6, 9; see also Ans. 4.
We are instructed by our reviewing court that “[t]he Patent Office has
the initial duty of supplying the factual basis for its rejection” and that “[i]t
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). We are of the opinion that the Examiner’s use of a schematic
drawing to calculate relative proportions is a “resort to speculation,
unfounded assumptions or hindsight reconstruction.” Id.', see also App. Br.
5. Additionally, the Examiner appears to presume that changes in engine
volume will result in proportional volume changes across the turbine,
compressor, and combustor sections. However, as indicated above, the
Examiner does not explain how a change in engine volume could not also
encompass a disproportionate effect on the volume of these three sections.
In effect, one skilled in the art, viewing Dev’s changing engine volume,
would have to guess at what the turbine section volume might be. The
Examiner does not state or otherwise indicate that one skilled in the art
would be aware of an expected ratio between an engine’s volume and the
volume of the turbine section of that engine, such that one skilled in the art
could employ Dev’s Figure 22 to reasonably ascertain a turbine section
volume (and from which the recited “power density” could be determined).7
7 In other words, although it may be possible for one skilled in the art to
ascertain a turbine section volume from Dev (i.e., fore-armed with
knowledge of what a turbine section volume might reasonably be based on a
given engine volume), that correlation is not before us for review and we
decline to rely upon a stated scaling of Figure 1 of Dev to arrive at a turbine
7
Appeal 2017-002377
Application 13/437,304
Accordingly, and based on the record presented, we agree with
Appellants that the Examiner has failed to properly express a prima facie
case of obviousness. App. Br. 6-7. We reverse the Examiner’s rejection of
claims 1, 5, 6, 8-10, 13, 14, and 17-20 as unpatentable over Donnerhack,
Dev, and Somanath. We likewise reverse the Examiner’s rejection of claims
1, 5, 6, and 8-20 as unpatentable over Ress, Jr., Dev, and Somanath.
DECISION
The Examiner’s nonstatutory obviousness-type double patenting
rejection of claims 1, 5, 6, and 8-20 in view of Kupratis is affirmed.
The Examiner’s provisional double-patenting rejections of claims 1, 5,
and 6-16 have not been reached.
The Examiner’s art rejections of claims 1, 5, 6, and 8-20 under 35
U.S.C. § 103(a) are reversed.
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
section volume. See App. Br. 5; Reply Br. 2. For example, regarding
combustor section volume, Dev teaches “the combustor volume diminishes
with the cube of engine scale.” Dev. 14:63-64.
8