Ex Parte Schwarz et al

Patent Trial and Appeal Board

Feb 24, 2016

13446510 (P.T.A.B. Feb. 24, 2016)

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
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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.
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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.
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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
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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
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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
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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 ..._,
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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
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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.
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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
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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)
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