Ex Parte Schwarz et al

Patent Trial and Appeal Board

Jan 31, 2018

13459498 (P.T.A.B. Jan. 31, 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.
13/459,498 04/30/2012 Frederick M. Schwarz 61447US01; 3101
67097-1847US1
54549 7590 02/02/2018
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
02/02/2018 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,
DANIEL BERNARD KUPRATIS, and
THOMAS J. PRAISNE
Appeal 2017-002075
Application 13/459,498
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 CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, and 5-20. Final Act. 1 (Office Action Summary); see also
Advisory Action dated March 8, 2016. Claims 3 and 4 have been canceled.
Amendment dated October 21, 2015. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
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
Appeal 2017-002075
Application 13/459,498
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 for
compressing air to a higher pressure than said first compressor
rotor;
a first turbine rotor, said first turbine rotor configured to
drive said second compressor rotor, and a second turbine rotor,
said second turbine rotor configured to drive said first
compressor rotor;
a fan drive turbine positioned downstream of said second
turbine rotor, said fan drive turbine for driving said fan rotor
through a gear reduction;
said first compressor rotor and said second turbine rotor
configured to rotate as an intermediate speed spool, and said
second compressor rotor and said first turbine rotor configured
to rotate together as a high speed spool, with said high speed
spool, said intermediate speed spool, and said fan drive turbine
configured to rotate in the same first 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 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.
REFERENCES RELIED ON BY THE EXAMINER
Dev US 7,219,490 B2 May 22, 2007
Orlando US 2008/0098715 A1 May 1,2008
Donnerhack US 2009/0133380 A1 May 28, 2009
Somanath US 7,632,064 B2 Dec. 15,2009
Ress, Jr. US 8,887,485 B2 Nov. 18,2014
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Appeal 2017-002075
Application 13/459,498
THE REJECTIONS ON APPEAL1
Claims 1 and 5-16 are provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claims 1 and 3-16 of co­
pending US Application No. 13/437,304.
Claims 1, 2, and 5-20 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
2, 3, 5, 6, and 8-12 of co-pending Application No. 13/437,290 in view of
Orlando.
Claims 1, 5-10, 13, 14, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Donnerhack, Dev, and Somanath.
Claims 1, 2, and 5-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ress, Jr., Dev, and Somanath.
ANALYSIS
Provisional double-patenting rejections
We do not reach the provisional double-patenting rejections in this
case. Appellants state, “[sjhould this application ultimately be allowed, or
should any of the co-pending applications be allowed, Appellant will submit
a Terminal Disclaimer at the appropriate time.” App. Br. 4. Hence, until
such time arrives, the Examiner’s provisional double-patenting rejections
remain in effect.
1 “The Examiner withdrew the rejection under [35 U.S.C. § 112, second
paragraph] in the Advisory Action mailed on 03/08/2016.” Ans. 2.
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Application 13/459,498
Prior art rejections
Both independent claims 1 and 17 recite a “power density.”2 Final
Act. 7-8. 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 both rejections, the Examiner replicates Figure
22 of Dev.3 Final Act. 6, 9; Ans. 4. Based on this graph, 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. 5,9; Ans.
3 (referencing In re Antonie, 559 F.2d 618 (CCPA 1977)). 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
Applicant) would” have the values recited “in view of In re Antonie and In
reAller,”4 Final Act. 7, 10; see also Ans. 3.
Appellants contend, “[t]he original references do not meet the power
density ratio required by the claims” and “Dev is able to achieve greater
thrust at lower volume of the entire engine, as opposed to a lower volume of
2 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.”
3 Figure 22 of Dev is a graph contrasting “ENGINE CYLINDRICAL
VOLUME, cu.ft.” (x-axis) to “RATED THRUST, lbf’ (y-axis).
4In reAller, 220 F.2d 454 (CCPA 1955).
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Appeal 2017-002075
Application 13/459,498
the turbine.” App. Br. 5. 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. 6 (citing Antonie)-, see also id. at 7-9. 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, 9; see
also id. at 8.
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, 9; see also Ans. 3-5. 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. 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.5 Dev 2:35-36. Further, the Examiner contends “the ratio
taught by Dev can easily be converted to teach the claimed ratio” (Ans. 5)
but nowhere does the Examiner attempt to explain that any change in Dev’s
5 Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 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.”
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Appeal 2017-002075
Application 13/459,498
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 thrust to turbine section volume above
[a value] was known in the Art.” Final Act. 6, 9; see also Ans. 5.
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.
6. 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.
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. 7-9. We reverse the Examiner’s rejection of claims
1, 5-10, 13, 14, and 17-20 as unpatentable over Donnerhack, Dev, and
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Application 13/459,498
Somanath. We likewise reverse the Examiner’s rejection of claims 1, 2, and
5-20 as unpatentable over Ress, Jr., Dev, and Somanath.
DECISION
The Examiner’s rejections under 35 U.S.C. § 103(a) are reversed.
REVERSED
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