Ex Parte Suciu et alDownload PDFPatent Trial and Appeal BoardNov 14, 201311718420 (P.T.A.B. Nov. 14, 2013) Copy Citation 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. 11/718,420 05/02/2007 Gabriel L. Suciu 67097-071PUS1;11151 6321 54549 7590 11/14/2013 CARLSON, GASKEY & OLDS/PRATT & WHITNEY c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER EASTMAN, AARON ROBERT ART UNIT PAPER NUMBER 3745 MAIL DATE DELIVERY MODE 11/14/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GABRIEL L. SUCIU, BRIAN MERRY, and LAWRENCE PORTLOCK ____________________ Appeal 2011-013650 Application 11/718,420 Technology Center 3700 ____________________ Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and JILL D. HILL, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013650 Application 11/718,420 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1-3 and 5-16. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. The Invention Appellants’ claimed invention “relates to a tip turbine engine, and more particularly to a non-rotating compartment located along an engine centerline.” Spec. 1:6-7. Claims 1 and 12 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A tip turbine engine comprising: a tip turbine engine which intakes an airflow traveling in a first direction, radially turns the airflow then exhausts the airflow in the first direction to generate thrust, the tip turbine engine having a nonrotatable support structure mounted about an engine centerline, said nonrotatable support structure defines a non-rotating compartment formed along said engine centerline; and a lubricating fluid system within said non-rotating compartment. The Rejections and Evidence Relied Upon The following rejections are before us on appeal: I. Claims 12 and 13 under 35 U.S.C. § 102(b) as anticipated by M.A.N. (DE 1173292; pub. Jul. 2, 1964). II. Claims 1-3 and 5-8 under 35 U.S.C. § 103(a) as unpatentable over M.A.N. and Benz (GB 905,136; pub. Sept. 5, 1962). Appeal 2011-013650 Application 11/718,420 3 III. Claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over M.A.N., Benz, and Hadaway (US 5,107,676; iss. Apr. 28, 1992). IV. Claims 14-16 under 35 U.S.C. § 103(a) as unpatentable over M.A.N. and Hadaway. OPINION Each of the rejections before us on review relies at least in part on M.A.N. Appellants argued that the Examiner had not produced an English translation of this reference (App. Br. 4), following which the Examiner provided a machine translation with the Examiner’s Answer (Ans. 8-9). Appellants acknowledge the machine translation dated June of 2011, but argue that it is not prior art. Reply Br. 1 (citing Manual of Patent Examining Procedure (MPEP) § 706.02). The rejection does not rely upon the machine translation (Ans. 8-11); rather, it relies upon the drawings of the German language version of the reference (Ans. 4-8; see also Office Action dated Jan 12, 2011, at 2-6).1 Because the machine translation is not relied upon, we need not decide if the machine translation is prior art.2 We evaluate the rejections before us based upon the figures of M.A.N. as relied upon by the Examiner. 1 The Examiner correctly notes that non-English language information, such as drawings, may be considered. Ans. 9; MPEP § 609.04(a) II.(D). 2 We note that failure to provide a translation is a petitionable matter. See 37 C.F.R. § 1.81; see generally Ex Parte Orbital Technologies Corp., 2013 WL 1289496 (PTAB 2013). Appeal 2011-013650 Application 11/718,420 4 I. Claims 12 and 13 as anticipated by M.A.N.3 Independent claim 12 is directed to a tip turbine engine that includes a non-rotatable support structure having an inner static support housing and an outer static support housing defining a non-rotating compartment. Appellants present two arguments against the rejection of claim 12. First, Appellants argue that because the Examiner did not provide an English translation of M.A.N., the Examiner is only speculating that the reference discloses tip turbine engine type flow. App. Br. 5-6. However, the Examiner found, and Appellants do not contest, that the International Preliminary Report on Patentability supplied by Appellants states that M.A.N. discloses a tip turbine engine (and by implication tip turbine engine type flow). Ans. 9; Reply Br. 1-4; see also Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (the BPAI “reviews the obviousness rejection[s] for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon,” and treats arguments not made as waived). Second, Appellants argue that if M.A.N.’s shaft 12 is indeed a shaft, it would create flow effects around it that would prevent M.A.N.’s non- rotatable compartment from being filled with a liquid such as a lubricating medium. App. Br. 6. Claim 12 does not call for a lubricating fluid system within the non-rotating compartment.4 Therefore, Appellants’ argument is 3 Appellants argue claims 12 and 13 as a group, and we select claim 12 as representative. App. Br. 5-6; Reply Br. 2; see 37 C.F.R. § 41.37(c)(1)(vii) (2011). 4 Compare to independent claim 1. App. Br. 11, Claims App’x, Claim 1. Appeal 2011-013650 Application 11/718,420 5 unconvincing because it is not commensurate in scope with claim 12.5 App. Br. 12, Claims App’x, Claim 12. As such, Appellants fail to apprise us of error in the rejection of claims 12 and 13. II. Claims 1-3 and 5-8 as unpatentable over M.A.N. and Benz The Examiner found that M.A.N. discloses the tip turbine engine of claim 1 except for a lubricating fluid system within the non-rotating compartment. Ans. 5. The Examiner found that Benz discloses a lubricating fluid system within a non-rotating compartment, and concluded that it would have been obvious to modify M.A.N. “by adapting it to house a lubricating fluid system as taught by Benz for the purposes of lubricating the apparatus and in order to reduce the friction.” Ans. 5-6. Appellants challenge the rationale for this proposed combination by arguing that it is unclear how M.A.N. operates: perhaps M.A.N. already has an auxiliary lubrication system and would not need an additional one as proposed, or perhaps M.A.N. is not in need of lubrication at all. App. Br. 7. The Examiner does not indicate, nor do we discern anything in M.A.N’s Figures 1 and 2 that teaches the presence or absence of a lubricating fluid system within the non-rotating compartment (the compartment that houses elements 3, 14, and 15). See Ans. 5. Further, because the Examiner chose to rely upon the drawings alone, we have no further information regarding M.A.N.’s lubrication system or its need for such a system. See Ans. 9. In light of this, the Examiner has not articulated 5 Appellants also argue that the Examiner does not address this argument. Reply Br. 2. The Examiner’s failure to address this unpersuasive argument does not apprise us of error in the rejection. Appeal 2011-013650 Application 11/718,420 6 reasoning with some rational underpinning to support the legal conclusion of obviousness. As such, we do not sustain the rejection of independent claim 1 and its dependent claims 2, 3, and 5-8. III. Claims 9-11 as unpatentable over M.A.N., Benz, and Hadaway Claims 9-11 depend from independent claim 1. This rejection suffers from the same shortcoming at that explained in the analysis of Rejection II, above. See Ans. 7 (relying upon the findings of claim 1); App. Br. 9 (repeating the arguments used against Rejection II). Consequently, we do not sustain the rejection of claims 9-11. IV. Claims 14-16 as unpatentable over M.A.N. and Hadaway The Examiner concluded that it would have been obvious to modify M.A.N. to reach the subject matter of claims 14-16 based upon the teachings of Hadaway “for the purposes of lubricating the gears and bearings.” Ans. 8. Our analysis of such rationale in Rejection II above is equally applicable here. See App. Br. 10. As such, we do not sustain the rejection of claims 14-16. DECISION I. We affirm the Examiner’s decision to reject claims 12 and 13 under 35 U.S.C. § 102(b) as anticipated by M.A.N. II. We reverse the Examiner’s decision to reject claims 1-3 and 5-8 under 35 U.S.C. § 103(a) as unpatentable over M.A.N. and Benz. Appeal 2011-013650 Application 11/718,420 7 III. We reverse the Examiner’s decision to reject claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over M.A.N., Benz, and Hadaway. IV. We reverse the Examiner’s decision to reject claims 14-16 under 35 U.S.C. § 103(a) as unpatentable over M.A.N. and Hadaway. 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)(1)(iv). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation