Ex Parte Schwarz et al

Patent Trial and Appeal Board

Aug 22, 2018

13723421 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/723,421 12/21/2012 Frederick M. Schwarz
54549 7590 08/24/2018
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. CONFIRMATION NO.
64659US02;
67097-2222PUS1
9299
EXAMINER
PRAGER, JESSE M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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 WILLIAM G. SHERIDAN
Appeal2017-006847
Application 13/723,421
Technology Center 3700
Before KEVIN F. TURNER, EDWARD A. BROWN, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 5-9, 13-16, and 19-21. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellant is the Applicant, United Technologies Corporation, which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal2017-006847
Application 13/723,421
SUMMARY OF THE INVENTION
The claimed subject matter is directed to balancing thrust loads within
turbomachines. Spec. ,r 2; Appeal Br. 2. Claims 1, 9, and 16 are
independent. Claim 1, reproduced below from page 11 (Claims Appendix)
of the Appeal Brief, is illustrative of the claimed subject matter:
1. A turbomachine thrust balancing system, comprising:
a member coupled in rotation with a turbine for
transferring rotational power therefrom; and
a load carrying device rotatably supporting the member,
the load carrying device configured to counteract a thrust load
generated by the turbine, wherein the load carrying device
comprises a plurality of ball bearings, and each of the ball
bearings within the plurality of ball bearings has a diameter that
is 0.75 inches or greater.
REJECTIONS
Claims 1, 5-9, 13, 14, 16, and 19-21 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over McCune (US 2009/0092487 Al,
published Apr. 9, 2009) and McCutchan (US 2009/0313965 Al, published
Dec. 24, 2009).
Claims 1, 5, 6, and 19 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Feest (US 2004/0234369 Al, published Nov. 25,
2004).
Claim 15 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over McCune, McCutchan, and Pal (US 2011/0027064 Al,
published Feb. 3, 2011).
Claim 15 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over McCune, McCutchan, and Brostmeyer (US 7,677,048 Bl,
issued Mar. 16, 2010).
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Application 13/723,421
ANALYSIS
Rejection Based on McCune and McCutchan
Appellant presents arguments for claims 1, 5-9, 13, 14, 16, and 19-21
collectively. Appeal Br. 3-7. We select claim 1 as representative, treating
claims 5-9, 13, 14, 16, and 19-21 as standing or falling with representative
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that McCune discloses a turbomachine thrust
balance system substantially as claimed, including a load carrying device
configured to counteract a thrust load generated by the turbine, but does not
disclose that the load carrying device comprises ball bearings. Final Act. 3.
The Examiner relies on McCutchan to teach the use of ball bearings within
turbine engine thrust bearings. Id. at 3--4. The Examiner finds that
McCutchan does not disclose the diameter of its ball bearings, but
determines that it would have been obvious to one of ordinary skill in the art
to modify the ball bearings of the McCune-McCutchan combination "by
providing ball bearing[ s] at the recited dimensions as an engineering
expedient for the purpose of providing sufficient[ly] sized ball bearings to
handle the thrust loads of the desired application." Id. at 4; see also id. at 3
(noting the lack of "a showing of how the device performs differently").
The Examiner further determines that Decerle2 evidences that bearing
size is a result-effective variable regarding the load-bearing capability of the
bearing. Ans. 6-7. The Examiner reasons that, because Appellant has not
made "a showing that the particular [recited] dimensions are critical," it
would have been obvious "to utilize bearings at the recited dimensions as an
2 US 2013/0236291 Al, published Sept. 12, 2013.
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Application 13/723,421
engineering expedient for the purpose of providing sufficiently sized ball
bearings to handle the thrust loads of the desired application." Id. at 7.
Appellant traverses, first arguing that the rejection fails to set forth
"any teaching that ball bearings are recognized in the art as being resized to
handle the thrust loads of a desired application." Appeal Br. 4. This
argument is unpersuasive because, as explained above, the Examiner
provides such a showing in the Answer, which Appellant does not refute.
See Reply Br. 1-2.
Appellant next argues that "[ c ]hanging the sizes/proportions of
McCune would not permit McCune to read on the claims" because "[i]f the
sizes/proportions of McCune were changed, McCune would still fail to teach
the claimed ball bearings." Appeal Br. 5. This argument is unpersuasive
because, as explained above, the Examiner relies on McCutchan to teach the
use of ball bearings, which are combined with McCune. Appellant further
argues that the rejection "impermissibly extends the scope of the
'size/proportion rational,' which applies to the scaling of a prior art device,
not the scaling of a feature introduced to a prior art device." Reply Br. 2;
see also Appeal Br. 5. This conclusory argument is unsupported by any
citation to authority, and fails to apprise us of error. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (holding that attorney arguments or
conclusory statements are insufficient to rebut a prima facie case of
obviousness). To the extent that Appellant asserts that the "size/proportion
rational" cannot be used in a rejection based on the combined teachings of a
plurality of references, we disagree and note that at least two of the cases
cited by Appellant in support of this contention-In re Rose, 220 F .2d 459
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Application 13/723,421
(CCPA 1955) and In re Rinehart, 531 F.2d 1048 (CCPA 1976) (see Appeal
Br. 5}-involved obviousness rejections based on a plurality of references.
Appellant next argues there are differences between the claimed ball
bearings and those of McCutchan. Appeal Br. 5---6. According to Appellant,
Appellant's ball bearings "are 'particularly appropriate for accommodating
the peak thrust loads of greater than 30,000 pounds,"' and McCutchan's ball
bearings "are used in connection with a turbine coupled to the fan through a
common shaft." Id. at 6; see also id. at 7 (characterizing its argument as a
showing of criticality). Appellant further asserts that McCune "teaches
roller bearings, not ball bearings." Id. at 6. These arguments are
unpersuasive. First, as correctly noted by the Examiner, McCune discloses
thrust bearings that are configured to counteract a thrust load generated by
the turbine. McCune ,r 16 ("the thrust bearing accommodates axial loads of
the shaft and prevents movement of the shaft in an aft direction, i.e., toward
the turbine"). Contrary to Appellant's assertion, McCune does not specify
that its bearings are roller bearings. Moreover, the Examiner relies on
McCutchan to teach the use of ball bearings in McCune' s system, and
McCutchan explains that "ball bearings are often utilized [to support rotor
shafts] due to their high thrust load capability and high reliability."
McCutchan ,r 3. Appellant's piecemeal attacks on the individual cited
references fail to apprise us of error in their combined teachings as
articulated by the Examiner, which, for the reasons set forth above, are
supported by substantial evidence. Additionally, Appellant has not shown
that the claimed bearing diameter is critical or exhibits unexpected or
superior results. See, e.g., In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) ( explaining the need for a showing of criticality when the difference
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Application 13/723,421
between the claimed invention and the prior art is some range or other
variable within the claims); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972)
("the burden of showing unexpected results rests on he who asserts them").
Finally, Appellant argues that "there are practical upper limits to
unbounded ranges, and a person having skill in this art would understand
those limits and thus understand the claimed range has a practical upper
limit." Appeal Br. 6. Appellant further cites Ex parte Feulner, No. 2013-
010469 (PTAB Oct. 23, 2015) for the proposition that "[a] claim ... is not
made unclear simply because an upper boundary is not specified." Id.
These arguments fail to apprise us of error, as the Examiner did not issue an
indefiniteness rejection.
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1, 5-9, 13, 14, 16, and 19-21 as being unpatentable over McCune
and McCutchan.
Rejection Based on Feest
The Examiner finds that F eest discloses a turbo machine thrust balance
system substantially as recited in claim 1, including ball bearings, but does
not disclose the specific dimensions of the ball bearings. Final Act. 8. The
Examiner determines that it would have been obvious to one of ordinary
skill in the art to modify Feest's ball bearings "by providing ball bearing[s]
at the recited dimensions as an engineering expedient for the purpose of
providing sufficient[ly] sized ball bearings to handle the thrust loads of the
desired application." Id. at 9; see also Ans. 7-8 (regarding bearing diameter
as a result-effective variable and Appellant's failure to demonstrate
criticality of bearing diameter).
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Appellants traverse, arguing that "there is no connection in Feest, or
elsewhere, that would cause the skilled person to modify the ball bearing to
have a diameter that is O. 7 5 inches or greater in response to a particular
thrust load." Appeal Br. 7. Continuing, Appellant asserts that "[s]ince the
rejection fails to show this feature in the prior art, relying on an increase in
ball bearing size as being an engineering expedient to handle a particular
thrust load is not supported." Id. (emphasis added).
Appellant's argument that the Examiner has not shown an explicit
teaching, suggestion, or motivation in the cited reference or the knowledge
in the art to modify the reference, or the desirability of the modification, is
not persuasive because the Supreme Court has rejected the rigid requirement
of demonstrating a teaching, suggestion, or motivation in the references to
show obviousness. See KSR Int'! Co. v. Teleflex Co., 550 U.S. 398,419
(2007). As our reviewing court held:
KSR directs that an explicit teaching, suggestion, or motivation
in the references is not necessary to support a conclusion of
obviousness. 550 U.S. at 415-16 .... The Supreme Court has
instructed that "a court must ask whether the improvement is
more than the predictable use of prior art elements according to
their established functions," id. at 417 ... , and apply "an
expansive and flexible approach" to obviousness, id. at 415 ....
In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017). As noted above,
the Examiner sets forth that bearing diameter is recognized as a result-
effective variable, which Appellant does not refute. See Ans. 6-7; Reply Br.
1-2. Appellant's argument fails to apprise us of error in the Examiner's
findings or reasoning.
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Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1 and its dependent claims 5, 6, and 19, which are not argued
separately, as being unpatentable over Feest.
Rejection Based on McCune, McCutchan, and Pal
Claim 15 depends directly from claim 9 and recites "a rear disk cavity
having a pressure during a flat-rated, sea level take-off that is less than about
20 psi different than a pressure in a gas path of the turbomachine at an exit
from the low pressure turbine during the flat-rated, sea level take-off."
Appeal Br. 12 (Claims App.). The Examiner finds that the turbomachine of
McCune as modified by McCutchan discloses a turbomachine substantially
as claimed, but does not disclose the rear disk cavity of claim 15. Final Act.
10. The Examiner finds that Pal discloses "a pressurized system to minimize
the net axial thrust by controlling the pressure and pressure differentials at
the rear cavity," and determines that it would have been obvious to one of
ordinary skill in the art to modify the McCune-McCutchan turbomachine
"by providing a rear disk cavity having a pressure, as taught by [Pal], to
minimize the net axial thrust on the thrust bearing during both steady state
and transient operating levels, without reducing the overall efficiency of the
turbine." Id.
The Examiner further determines that it would have been obvious to
modify the McCune-McCutchan-Pal turbomachine "by providing the
pressure within the claimed range as an engineering expedient for the
purpose of providing of controlling [sic] the net axial thrust on the thrust
bearing during operation." Id. at 10-11. According to the Examiner, the
recited pressure differential "is a change of degree and/or is not critical, and
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Application 13/723,421
is a workable range by routine experimentation." Ans. 9 ( emphases and
citations omitted). Continuing, the Examiner finds that "[t]here is no
evidence on record that less than 20 psi is critical," "[Pal] clearly associates
the pressure with net thrust, and it follows that the pressure difference is
recognized to be associated with the net thrust." Id.
Appellant traverses, first arguing that "[ c ]laim 15 is allowable insofar
as it depends from patentable claim 1" because "[ t ]he addition of Pal fails to
cure the underlying deficiencies associated with the modification to McCune
involving McCutchan." Appeal Br. 7-8. This argument is unpersuasive
because, as set forth above, Appellant fails to apprise us of any such
deficiency in the rejection of claim 1.
Appellant further argues that the Examiner's determination that it
would have been an obvious "engineering expedient" to modify the
turbomachine of the McCune-McCutchan-Pal combination to have the
recited pressure differential "is not supported by facts gleaned from the prior
art, which is required." Id. at 8. Continuing, Appellant asserts that "[t]he
rejection points to no teaching in the art of a rear disk cavity having" the
recited pressure differential. Id. ( emphasis added).
Appellant's arguments are unpersuasive for reasons similar to those
discussed above. The Examiner's rationale for modifying cited references
need not be found explicitly in the references. See KSR, 550 U.S. at 419;
Ethicon, 844 F.3d at 1350. Moreover, Appellant does not refute the
Examiner's determination that the recited pressure differential would have
been an obvious result of optimization through routine experimentation. See
Ans. 8-10; Reply Br. 1-2. Thus, Appellant fails to apprise us of error in the
Examiner's findings or reasoning.
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Accordingly, for the foregoing reasons, we sustain the rejection of
claim 15 as being unpatentable over McCune, McCutchan, and Pal.
Rejection Based on McCune, McCutchan, and Brostmeyer
The Examiner finds that the turbomachine of McCune as modified by
McCutchan discloses a turbomachine substantially as claimed, but does not
disclose the rear disk cavity of claim 15. Final Act. 11. The Examiner finds
that Brostmeyer discloses "a cooling system with a rear disk cavity that
utilizes ambient air to cool the last stage, to reduce the amount of bleed air
consumed, and improve the efficiency of the turbine engine," and
determines that it would have been obvious to one of ordinary skill in the art
to modify the McCune-McCutchan turbomachine
by providing a rear disk cavity having a pressure that is less
than about 20 psi different than a pressure in a gas path of the
turbomachine at an exit from the low pressure turbine during
the flat-rated, sea level take-off, as taught by Brostmeyer, to
reduce the amount of bleed air consumed, and improve the
efficiency of the turbine engine.
Id. According to the Examiner, "[t]he specific pressure difference at the exit
of [Brostmeyer's] turbine would be very close to ambient pressure (i.e. less
than 20 psi)." Adv. Act. 2. The Examiner further determines that "a
pressure of the exit of the turbine, which could be defined anywhere within
the exit, would be nearly the same as the pressure within the rear disk cavity,
which could be defined at any radial portion of the cavity" and "[a]t a
specific instance[] in the cavity, as the pressure of the cavity increases
radially, the pressure would be nearly the same pressure of the gas path
exhaust flow." Ans. 10.
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Application 13/723,421
Appellant traverses, first arguing that "[ c ]laim 15 is allowable insofar
as it depends from patentable claim 1" because "[ t ]he addition of
Brostmeyer fails to cure the underlying deficiencies associated with the
modification to McCune involving McCutchan." Appeal Br. 8-9. This
argument is unpersuasive because, as set forth above, Appellant fails to
apprise us of any such deficiency.
Appellant further argues that the Examiner's determination that
Brostmeyer teaches the use of a rear disk cavity as recited "is not supported
by facts gleaned from the prior art, which is required." Id. at 9. Continuing,
Appellant asserts that "[t]he rejection points to no teaching in the art of a
rear disk cavity having" the recited pressure differential. Id.
Appellant's arguments are unpersuasive because they do not address
the Examiner's findings, as set forth in the Answer, that Brostmeyer
discloses a rear disk cavity having a pressure differential as recited in claim
15. See Ans. 10; Reply Br. 1-2. By failing to contest the Examiner's
findings as set forth in the Answer, Appellant fails to apprise us of error in
such findings.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 15 as being unpatentable over McCune, McCutchan, and Brostmeyer.
DECISION
The Examiner's decision to reject claims 1, 5-9, 13-16, and 19-21 is
affirmed.
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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
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