Ex Parte Simpson

Patent Trial and Appeal Board

Nov 6, 2018

13665901 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/665,901 10/31/2012
6147 7590 11/08/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
James Edward Simpson
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.
261477-1 7803
EXAMINER
VOLZ, ELIZABETH J
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES EDWARD SIMPSON1
Appeal2018-001991
Application 13/665,901
Technology Center 3700
Before MICHAEL L. HOELTER, JAMES P. CAL VE, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 4, 5, 10, 12-14, 16-27, and 29-32. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 General Electric Company is identified as the real party in interest and also
is the applicant pursuant to 37 C.F.R. § 1.46. Appeal Br. 2.
Appeal2018-001991
Application 13/665,901
CLAIMED SUBJECT MATTER
Claims 4, 5, 10, and 16 are independent. Claim 4 is shown below.
4. A cryogenic tank for containing a cryogenic fluid
therein, the cryogenic tank comprising:
a shell having an interior side, an exterior side, and an
internal volume that is bounded by the interior side, the shell
being configured to contain the cryogenic fluid within the
internal volume, the shell having a shape that includes at least
two elongated lobes that are defined by partial cylinders that
intersect each other, the partial cylinders of the at least two
lobes extending lengths along central longitudinal axes that are
offset from each other, the at least two lobes comprising
opposite domes that extend at opposite ends of the length of the
corresponding partial cylinder; and
an internal reinforcement frame comprising a web of
elongate frame members that extend within the internal volume
of the shell, the frame members extending along the interior
side of the shell such that lengths of the frame members extend
along paths that follow the profile of the interior side of the
shell, wherein the internal reinforcement frame is configured to
distribute loads exerted on the shell along at least three different
directions, wherein the frame members of the reinforcement
frame comprise formers and stringers, the lengths of the
formers peripherally surrounding the central longitudinal axes
of the partial cylinders, the lengths of the stringers extending
along the central longitudinal axes of the partial cylinders, the
stringers and formers overlapping each other, wherein the shell
has a volume efficiency of at least approximately 57% and the
internal reinforcement frame have a mass efficiency of between
approximately 6.25 Gal/lbm and 7. 7 5 Gal/lbm.
REJECTIONS
Claims 4, 5, 10, 12-14, and 29-32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Becker (US 3,314,567, iss. Apr. 18, 1967).
Claims 16-27 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Becker and Burkdoll (US 3,454,245, iss. July 8, 1969).
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Appeal2018-001991
Application 13/665,901
ANALYSIS
Claims 4, 5, 10, 12-14, and 29-32 Unpatentable over Becker
The Examiner finds that Becker discloses a cryogenic tank for
containing a cryogenic fluid, and the tank has all of the structures required
by independent claims 4, 5, and 10 to include a shell configured to contain
the cryogenic fluid with at least two elongated lobes defined as partial
cylinders, and an internal reinforcement frame. Final Act. 2-5; Ans. 9.
The Examiner finds that Becker does not teach a volume efficiency of
at least approximately 57% or a mass efficiency of between approximately
6.26 Gal/lbm and 7.75 Gal/lbm, as recited in claims 4, 5, and 10. Final Act.
3-5. However, the Examiner determines these efficiencies would have been
obvious to a person of ordinary skill "since it has been held that discovering
an optimum value of a result effective variable involves only routine skill in
the art. MPEP 2144.05(III)." Id. at 3, 4, 5. The Examiner also reasons that
Becker must have a volume efficiency and a mass efficiency because they
are described as ratios in the Specification; "[t]herefore, one of ordinary skill
in the art would be able to find the optimal value to be used." Id. at 10; Ans.
9-10. In addition, the Examiner finds that Appellant has not described the
criticality of the claimed ranges in the Specification. Final Act. 11; Ans. 11.
Appellant argues that the Examiner has not provided evidence that the
general conditions of the claim are disclosed in the prior art, or that the prior
art recognizes the claimed efficiencies as result-effective variables that can
achieve a recognized result such that an optimum range can be determined
by routine experimentation. Appeal Br. 6-8. Appellant also argues that "the
Office Action presents ZERO evidence that either the volume efficiency or
the mass efficiency is a result-effective variable." Id. at 8. We agree.
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Appeal2018-001991
Application 13/665,901
Before a variable can be optimized through routine experimentation to
render obvious a claimed feature, the variable must be shown to be result-
effective. See In re Urbanski, 809 F.3d 1237, 1242 (Fed. Cir. 2016) ("Board
properly found that both Gross and Wong recognize that reaction time and
degree of hydrolysis are result-effective variables that can be varied in order
to adjust the properties of the hydrolyzed fiber in a predictable manner.").
"A recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective." In re Applied Materials, 692
F.3d 1289, 1297 (Fed. Cir. 2012) (holding the claimed polishing pad groove
dimensions were shown as result effective variables because prior art taught
that their modification changed the polishing rate and pad performance); In
re Antonie, 559 F.2d 618, 620 (CCPA 1977) (reversing a rejection where the
parameter to be optimized was not recognized as a result-effective variable
because "[i]t is impossible to recognize, from the [prior art] experiment ...
that 'treatment capacity' is a function of 'tank volume' or the tank volume-
to-contractor area ratio. Recognition of this functionality is essential to the
obviousness of conducting experiments to determine the value of the 'tank
volume' ratio which will maximize treatment capacity.").
Absent a showing that a feature is recognized as a result-effective
variable, an applicant does not have to show the criticality of that feature. In
re Boesch, 617 F.2d 272,276 (CCPA 1980) (explaining "a prima facie case
of obviousness may be rebutted where the results of optimizing a variable,
which was known to be result effective, (are) unexpectedly good."' ( quoting
Antonie, 559 F.2d at 620)); see Applied Materials, 692 F.3d at 1297 (ranges
that are obvious to optimize as result-effective variables may be patentable if
the ranges are critical and produce a new and unexpected result).
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Appeal2018-001991
Application 13/665,901
The Examiner has not established that the claimed volume and mass
efficiencies would have been obvious to achieve by routine experimentation
because the Examiner has not shown that Becker teaches these efficiencies
as result-effective variables. 2 Final Act. 3-5. Therefore, Appellant is not
required to establish the criticality of the claimed volume or mass efficiency.
Boesch, 617 F.2d at 276; Urbanski, 809 F.3d at 1242--43 (Where reaction
time and degree of hydrolysis were shown to be result-effective variables
that can be varied to adjust the properties of hydrolyzed fiber in a predictable
manner to render obvious the claimed reaction time and hydrolysis ranges,
Urbanski failed to show that those ranges were critical or produced a new
and unexpected result as compared to the prior art.); see also E.I. DuPont de
Nemours & Co. v. Synvina C. V., 904 F.3d 966, 1006 (Fed. Cir. 2018) (If the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover optimum or workable ranges by routine experimentation, but the
presumption may be rebutted where a modification to a parameter produces
a new and unexpected result different in kind and not merely in degree from
results of the prior art or the parameter is not recognized as result-effective.).
2 "Volume efficiency" compares the internal volume of a tank used to store
fluid to the space needed to contain the tank. Spec. ,r 17. "Mass efficiency"
compares the internal volume of a tank to the tank's weight. Id. Various
parameters of the cryogenic tanks can be used to achieve a predetermined
volume efficiency or mass efficiency, or increase the efficiencies. Id. ,r 78.
As the number of lobes increases, the volume efficiency of a tank generally
increases, but the mass efficiency of the tank decreases. Id. f 81. Thus, an
optimal volume efficiency may yield a suboptimal mass efficiency. Becker
designs tanks of sheet metal to fit tapered ship hulls, but does not expressly
teach mass or volume efficiencies. Becker, 3:11-35, 4:25-54, Figs. 12, 13.
To the extent Becker inherently may disclose mass and volume efficiencies,
the Examiner has not shown that Becker teaches to use these efficiencies to
effect some property/result so that the efficiencies are result effective.
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Appeal2018-001991
Application 13/665,901
Accordingly, we do not sustain the rejection of independent claims 4,
5, and 10, or their dependent claims 12-14, and 29-32.
Claims 16-2 7 Unpatentable over Becker and Burkdoll
Claim 16 recites an aircraft having an airframe and a cryogenic tank
according to claim 10. Appeal Br. 14 (Claims App.). The Examiner's
reliance on Burkdoll to teach an aircraft and airframe (Final Act. 7) does not
overcome the deficiencies of Becker as to claim 10. Thus, we do not sustain
the rejection of claim 16 or claims 17-27, which depend therefrom.
DECISION
We reverse the rejections of claims 4, 5, 10, 12-14, 16-27, and 29-32.
REVERSED
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