Ex Parte Schwarz et alDownload PDFPatent Trial and Appeal BoardFeb 24, 201613446510 (P.T.A.B. Feb. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/446,510 04/13/2012 Frederick M. Schwarz 54549 7590 02/26/2016 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. PA21526UAA; 67097-1808US1 CONFIRMATION NO. 8094 EXAMINER SUTHERLAND, STEVEN M ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 02/26/2016 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 FREDERICK M. SCHWARZ, GABRIEL L. SUCIU, WILLIAM K. ACKERMANN, and DANIEL BERNARD KUPRATIS Appeal2014-001580 Application 13/446,510 Technology Center 3700 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frederick M. Schwarz et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-12 and 14--20, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate our affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal2014-001580 Application 13/446,510 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1 1. A turbine section of a gas turbine engine comprising: a fan drive turbine section; and a second turbine section, wherein said fan drive turbine section has a first exit area at a first exit point and is configured to rotate at a first speed, wherein said second turbine section has a second exit area at a second exit point and is configured to rotate at a second speed, which is faster than the first speed, wherein a first performance quantity is defined as the product of the first speed squared and the first area, wherein a second performance quantity is defined as the product of the second speed squared and the second area; wherein a ratio of the first performance quantity to the second performance quantity is between about 0.5 and about 1.5; and a mid-turbine frame positioned intermediate said fan drive and second turbine sections, and said mid-turbine frame having a first bearing supporting an outer periphery of a first shaft rotating with said second turbine section. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Schwark Durocher US 2009/0229242 Al US 2010/0132376 Al Sept. 17, 2009 June 3, 2010 1 The Claims Appendix in the Appeal Brief contains incorrect versions of claims 10, 17, and 20; the correct versions can be found in Appellants' Amendment dated October 30, 2012 (hereinafter "Amendment"). 2 Appeal2014-001580 Application 13/446,510 Jane's Aero-Engines (Bill Gunston ed., iss. 7, 2000) (hereinafter "Jane's"). Stanley W. Kandebo, Geared-Turbofan Engine Design Targets Cost, Complexity, Aviation Week & Space Technology, Feb. 23, 1998, at 32 (hereinafter "Kandebo"). REJECTIONS2 I. Claims 1-12 and 14--20 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. II. Claims 1-12 and 14--20 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. III. Claims 1---6, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jane's, Durocher, and Kandebo. IV. Claims 7, 10-12, and 14--16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jane's, Durocher, Kandebo, and Schwark. 3 V. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jane's, Schwark, and Kandebo. 2 The Examiner provisionally rejected claim 10 under 35 U.S.C. § 101 as claiming the same invention as that of claim 14 of Application 13/410,776. Final Act. 2. According to United States Patent and Trademark Office records, a notice of abandonment for Application 13/410,776 was mailed on January 26, 2015, following a request for express abandonment, filed January 9, 2015, rendering the rejection moot. Thus, we do not reach the rejection. 3 The statement of rejection incorrectly includes claims 19 and 20. See Final Act. 7. 3 Appeal2014-001580 Application 13/446,510 VI. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jane's, Schwark, Kandebo, and Durocher.4 OPINION Rejection I -Indefiniteness The stated basis for the Examiner's rejection is that each of independent claims 1, 10, and 17 recites "an apparatus, [with structure defined by] the outlet area of the turbine sections, and a method of using the apparatus, [including a step of] rotating the first and section [sic] turbine sections at different rotational speeds." Final Act. 3--4 (citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011)). According to the Examiner, "[i]t is unclear whether infringement occurs when one operates turbine sections at the speeds claimed, or when one constructs turbine sections with the same outlet areas." Id. at 4. The Examiner's reliance on Katz is misplaced because, unlike the claims at issue in that particular case, the apparatus claims in the present application recite a system capability (i.e., turbine sections configured to rotate at a first speed and a second speed, respectively), and not an active method step, such as a user action. Compare Katz, 639 F.3d at 1318 (holding that recitations "'wherein ... callers digitally enter data' and 'wherein ... callers provide ... data"' are "directed to user actions, not 4 The statement of rejection omits Kandebo, but refers to Jane's in view of Schwark "as applied to claim 18 above." See Final Act. 12. Thus, because of the reference to the combination as applied to claim 18 and because claims 19 and 20 depend directly or indirectly from claim 18, which stands rejected as unpatentable over Jane's, Schwark, and Kandebo, we understand the rejection of claims 19 and 20 to be based on the combination of Jane's, Schwark, Kandebo, and Durocher. 4 Appeal2014-001580 Application 13/446,510 system capabilities") and JPXL Holdings, L.L.C v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (holding that a claim to a system including an input means, "wherein ... the user uses the input means to [either change or accept transaction information]" recites both a system and a method for using that system, thereby making it "unclear whether infringement ... occurs when one creates a system that allows the user to [change or accept the transaction information], or whether infringement occurs when the user actually uses the input means to [change or accept the transaction information]"), with Amendment 2, 3, 5 (claims 1, 10, and 17 reciting "wherein said fan drive turbine section ... is configured to rotate at a first speed" and "said second turbine section . . . is configured to rotate at a second speed"). Thus, the reasons articulated by the Examiner do not form a basis on which the rejection can be sustained. The Examiner is correct, however, that claims 1-12 and 14--20 are indefinite. Independent claims 1, 10, and 17 recite, "said fan drive turbine section has a first exit area ... and is configured to rotate at a first speed" and "said second turbine section has a second exit area ... and is configured to rotate at a second speed, which is faster than the first speed." Amendment 1, 3--4, 5 (emphasis added). Claims 1, 10, and 17 further recite that "a ratio of the first performance quantity [ (defined as the product of the first speed squared and the first area)] to the second performance quantity [ (defined as the product of the second speed squared and the second area)] is between about 0.5 and about 1.5." Id. at 1, 3--4, 5. The above limitations render the claims indefinite because it is unclear at what point during operation of the engine the claimed ratio must be met. As correctly pointed out by the Examiner, "turbine sections do not tum at a 5 Appeal2014-001580 Application 13/446,510 single speed during operation [and] ... [t]he turbine sections of a two spool gas turbine also do not tum at a fixed ratio of rotational speeds relative to each other." Ans. 2. The Examiner remarks that "each variable (two speeds and two areas) that comprises the ratio of performance quantities has an unbounded range constrained by a minimum of only one of the other three variables, allowing for an infinite number of possible gas turbine structures." Id. at 3. It is not clear, for example, whether the claimed turbine engine or turbine section must be constructed to satisfy the claimed ratio of performance quantities over the entire range of operation of the turbine sections, or only at certain predetermined speeds. One of ordinary skill in the art would have no point of reference to look to in determining the rotational speeds at which the turbine sections of the claimed invention are configured to rotate in accordance with the claims. Appellants assert that "[a] worker of ordinary skill in the art knows which speeds are looked at to determine the AN2 quantity," but Appellants offer no evidence or explanation in support of this assertion. Reply Br. 1. For the above reasons; the metes and bounds of claims 1, 10, and 17 are unclear. Likewise, dependent claims 2-9, 11, 12, 14-16, and 18-20 fail to recite any further limitations that -vvotdd resolve the aforementioned indefiniteness issue, and, thus, are also indefinite by viliue of their dependency from independent claims 1, l 0, and 17. For the above reasons, we sustain the rejection of claims 1-12 and 14-20 under 35 U.S.C. § 112, second paragraph, as being indefinite. However, because the basis of our conclusion differs from that articulated by the Examiner, we designate our affinnance of this rejection a new ground of 6 Appeal2014-001580 Application 13/446,510 rejection pursuant to 37 C.F.R. § 41.50(b) to give Appellants an oppmiunity to respond thereto. Rejection II - Enablement In rejecting claims 1-12 and 14--20 as failing to comply with the enablement requirement, the Examiner found that "[t]he relationship between the exit area of a turbine section and the performance quantity of the turbine section[,] critical or essential to the practice of the invention, but not included in the claim(s)[,] is not enabled by the disclosure." Final Act. 2 (citing In re Mayhew, 527 F.2d 1229 (CCPA 1976)). According to the Examiner: There is no disclosed relationship between the exit area, which is a function of the square of the outer radius of the exit minus the inner radius of the exit multiplied by pi, and the performance quantity of the turbine section. The exit area of a turbine can be the same for two turbines with very different outer radii, which \'l1ill change the maximum allo\'l1able rotational speed of the turbine, which will change the performance quantity. As disclosed, the only variable affecting the ratio of performance quantities between the low and high pressure turbine sections is the rotational speed of the low pressure turbine, which 1s increased by using a geared turbofan. Id. at 2-3. The Examiner further explained that "[t]he performance quantities of the turbine sections are a result of the structure and function of the turbine sections, and [A ]ppellant[ s] ha[ ve] not disclosed what structure or function of the turbine section enables a higher performance quantity." Ans. 2. When rejecting a claim for lack of enablement, an examiner bears the initial burden of setting forth a reasonable explanation as to why the scope of the claim is not adequately enabled by the description provided in the 7 Appeal2014-001580 Application 13/446,510 specification. See Jn re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993). The dispositive issue is whether an applicant's disclosure, considering the level of ordinary skill in the art as of the date of the application, would have enabled a person of such skill to make and use the claimed invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982). Factors to be considered in determining whether a disclosure would require undue experimentation include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (citation omitted). These factors are illustrative; what is relevant to an enablement determination depends upon the facts of the particular case. See Amgen, Inc. v. Chugai Pharm. Co.; 927 F.2d 1200; 1213 (Fed. Cir. 1991). In the case before us, the Examiner asserts that Appellants' Specification fails to disclose the relationship between the exit area of a turbine section and the performance quantity of the turbine section. This asse1iion is incmTect, as Appellants' Specification and independent claims 1, 10, and 17 expressly define the performance quantity of a turbine section as the product of the turbine section speed squared and the turbine section exit area. See Spec.~ 35. Given the explicit definition of perfonnance quantity set forth by AppeHants, the Examiner does not explain with sufficient clarity why a person of ordinary skill in the mi would have been unable to rnake and use the claimed invention without undue experimentation. Accordingly, the Examiner has not met the initial burden of setting forth a reasonable ..._, 8 Appeal2014-001580 Application 13/446,510 explanation as to why the scope of claims 1----12 and 14---20 is not adequately enabled by the description provided in the Specification. Thus, we do not sustain the rejection of these claims under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Rejection III - Obviousness based on Jane's, Durocher, and Kandebo Each of independent claims 1, 10, and 17 requires "wherein a ratio of the first performance quantity to the second performance quantity is between about 0.5 and about 1.5." Amendment 1, 3--4, 5. Appellants argue that the cited references do not disclose a ratio of performance quantities of two turbine sections. Appeal Br. 5; Reply Br. 1. In particular, Appellants contend that the Examiner failed "to show any knowledge in the cited prior art of a ratio of AN2 [performance] quantities for serial turbine sections." Appeal Br. 6. The Examiner found that Jane's teaches a gas turbine engine, substantially as claimed, except for, inter alia, a ratio between performance quantities for two turbine sections. Final Act. 4--5. The Examiner also found that Jane's and Kandebo establish that "[t]he rotational speed of the turbine section and the exit area of the turbine section are recognized as result-effective variables." Id. at 5 (citing In re Antonie, 559 F.2d 618 (CCPA 1977)). According to the Examiner, performance quantity is a result-effective variable because it is a product of the two result-effective variables of rotational speed and exit area, and, thus, a ratio of performance quantities also represents a result-effective variable. Ans. 3--4. The Examiner determined that "the optimization of [performance quantity ratio] ranges, as it is disclosed and claimed in the instant application, was an 9 Appeal2014-001580 Application 13/446,510 obvious extension of prior art teachings, as it would have taken only ordinary skill in the art to change the velocity of the low pressure turbine section in order to modify the performance quantities of the system." Final Act. at 5---6 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). The Examiner's reliance on the principle of routine optimization set forth in Aller is unavailing to address the limitation in question. We are not convinced that a ratio of performance quantities represents an art-recognized result-effective variable simply because each performance quantity is a product of result-effective variables. The Examiner does not point to any evidence that a performance quantity for a turbine section has been recognized in the art as a result-effective variable, much less that a ratio of performance quantities for two turbine sections has been so recognized.5 See Antonie, 559 F.2d at 620 (holding a situation in which the parameter optimized was not recognized as a result-effective variable to be an exception to the general rule of Aller). For the above reasons, the Examiner failed to establish a prima facie case that the subject matter of independent claim 1 would have been obvious. Accordingly, we do not sustain the rejection of claims 1---6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Jane's, Durocher, and Kandebo. 5 The Examiner relies on Durocher for its teachings regarding a mid-turbine frame with guide vanes for supporting first and second shafts of a gas turbine through bearings, and not for any teaching directed to the performance quantity ratio. See Final Act. 6-7. 10 Appeal2014-001580 Application 13/446,510 Rejections IV, V, and VI - Obviousness based on Jane's, Schwark, and Kandebo, alone or in combination with Durocher In formulating the rejections of the remaining claims, the Examiner does not rely on Schwark for any teaching, nor articulate any additional findings or reasoning, that would remedy the aforementioned deficiency in the combined teachings of Jane's, Durocher, and Kandebo. See Final Act. 7-13. Thus, we do not sustain the Examiner's rejections of claims 7, 10-12, and 14--20 under 35 U.S.C. § 103(a). DECISION We AFFIRM the decision of the Examiner to reject claims 1-12 and 14--20 under 35 U.S.C. § 112, second paragraph, as being indefinite. We REVERSE the decision of the Examiner to reject: • claims 1-12 and 14--20 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement, • claims 1---6, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Jane's, Durocher, and Kandebo, • claims 7, 10-12, and 14--16 under 35 U.S.C. § 103(a) as unpatentable over Jane's, Durocher, Kandebo, and Schwark, • claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over Jane's, Schwark, and Kandebo, and • claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over Jane's, Schwark, Kandebo, and Durocher. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of 11 Appeal2014-001580 Application 13/446,510 rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. ... (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same record .... 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; 37 C.F.R. § 41.50(b) 12 Copy with citationCopy as parenthetical citation