Ex Parte Swanson et al

Patent Trial and Appeal Board

Apr 25, 2013

11527188 (P.T.A.B. Apr. 25, 2013)

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.
11/527,188 09/26/2006 Timothy A. Swanson 67097-669; 1586-US 3811
54549 7590 04/26/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
KIM, TAE JUN
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
04/26/2013 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 TIMOTHY A. SWANSON, DEBORA F. KEHRET,
STEFAN M. POTH and DONALD E. GROVE
____________

Appeal 2011-003090
Application 11/527,188
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BRADFORD E. KILE and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

KILE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003090
Application 11/527,188

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3-8, 14 and 15. App. Br. 1. Claims 2 and 9-13 have been
canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellants’1 (Timothy A. Swanson, et al.) invention is directed to a
system for balancing forces controlling a cross-sectional area of exhaust in a
gas turbine engine. Spec. 1, para. [0002].
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A nozzle for a gas turbine engine comprising:

a plurality of flaps which may move to provide a
desired cross-sectional area for a nozzle outlet;

an actuator structure for driving said flaps through
a linkage, said actuator structure
including at least one actuator member moving the
flaps through an intermediate structure;

an air supply for supplying pressurized air to a
surface of said intermediate structure, said
pressurized air assisting said actuator member in
holding said flaps at a desired position, and
resisting a force from pressure within said nozzle,
and a valve for controlling flow of pressurized air
to said surface of said intermediate structure, a
control for said valve reducing the flow of air
when certain system conditions are sensed; and

a pressure ratio between the air pressure within
said nozzle, and an ambient pressure is utilized to
control said valve.

1 Appellants identify the real party in interest as United Technologies
Corporation. App. Br. 1.
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Application 11/527,188

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App. Br., Clms. App’x.

The Examiner relies on the following references in rejecting the
appealed subject matter:
Mendez US 4,420,932 Dec. 20, 1983
Gutierrez US 5,594,850 Aug. 18, 1998

Appellants request review of the following rejections advanced on
Appeal by the Examiner:
Claim 15 stands rejected under 35 U.S.C. § 112 (first paragraph).
Claim 15 stands rejected under 35 U.S.C. § 112 (second paragraph).2
Claims 1, 3-8, 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gutierrez and Mendez.

OPINION
Claim 15 - 35 U.S.C. § 112 (first paragraph).
The Examiner finds that the limitation of claim 15 “wherein said sync
ring can move independently from said flaps” fails to comply with the
written description requirement of the statute. Ans. 4-5, para. 4.
On November 17, 2009 Appellants attempted to include a specific
recitation in the Specification at paragraph [0012] that the sync ring and
flaps move independently of each other but that proposed amendment was
refused entry by the Examiner as constituting new matter and has not been

2 Appellants characterize this ground of rejection in their Reply Brief as a
“New Rejection.” We note, however, that in the Final Office Action dated
February 22, 2010, claim 15 was rejected under 35 U.S.C. § 112 (second
paragraph) and in the Examiner’s Answer the Examiner maintains this
rejection. Ans. 4, para. 2. Accordingly, the rejection of claim 15 under
§ 112 (second paragraph) is not a “New Rejection” as Appellants assert.
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Application 11/527,188

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entered. Ans. 5. The issue for our consideration then is whether the
Specification, as originally filed, contains a written description sufficient to
support the recitation “wherein said sync ring can move independently from
said flaps” in claim 15.
Determining whether a specification complies with the independent
written description requirement of § 112, first paragraph, is a question of
fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). Our reviewing court has explained:
[t]he test for determining compliance with the written
description requirement of [35 U.S.C. § 112, first paragraph,] is
whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). Moreover, the inquiry
is “from the perspective of a person of ordinary skill in the art.” Ariad, 598
F.3d at 151; Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(en banc) citing with approval in Verve, LLC v. Crane Cams, Inc., 311 F.3d
1116, 1119 (Fed. Cir. 2002) (patent documents are meant to be “a concise
statement for persons in the field”); In re Nelson, 280 F.2d 172, 181
(CCPA 1960) (“The descriptions in patents are not addressed to the public
generally, to lawyers or to judges, but as section 112 says, to those skilled in
the art to which the invention pertains. . . .”)
Here, the Examiner found that the Specification does not disclose a
written description of the claimed limitation “wherein said sync ring can
move independently from said flaps.” Ans. 4. We agree with the
Appeal 2011-003090
Application 11/527,188

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Examiner’s finding. The Specification lacks a specific written description of
this claim limitation.
The Examiner has created a prima facie case of failure by Appellants
to comply with the written description requirement of the statute. The
Examiner’s prima facie case, however, is subject to rebuttal as a matter of
fact, In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996), however, no
declaration evidence is presented with this appeal. App. Br. 8, EVIDENCE
APPENDIX - None. Appellants’ arguments relying upon language in the
proposed, but un-entered, amendment to the Specification (App. Br. 3) are
unavailing because the proposed language is not part of the Specification.
We are similarly unpersuaded by Appellants’ contention that the original
Specification satisfies the written description requirement by illustrating
mechanical linkages between the sync ring and flaps 31. Id. If anything,
these portions of the Specification demonstrate that movement of the sync
ring causes the flaps to move. Such a linkage, without further explanation,
favors a finding that movement of the flaps is dependent (and not
independent) upon movement of the sync ring. Therefore, we affirm the
Examiner’s rejection under 35 U.S.C. § 112, first paragraph of claim 15 for
failing to meet the written description requirement.

Claim 15 - 35 U.S.C. § 112 (second paragraph).
The Examiner additionally rejects claim 15 based upon inclusion of a
claim term “can.” The Examiner finds “the phrase ‘can’ renders the claim
indefinite because it is unclear whether the limitation(s) following the phrase
are in fact performed by the invention, and are part of the invention or if
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Application 11/527,188

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such recitation ‘can’ is just a possible result that may or may not happen.”
Ans. 4, para. 2.
Appellants assert “it is clear that was [sic] is intended by the word
‘can’ is to state the possibility the two parts can move independently of each
other. At times, the parts may not move at all.” Rep. Br. 1.
We agree with Appellants. A claim is indefinite under §112, ¶ 2 when
the claim is “not amenable to construction” or “insolubly ambiguous.”
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.
2005). “The definiteness requirement [of 35 USC § 112, ¶ 2,] seeks to
‘ensure that the claims delineate the scope of the invention using language
that adequately notifies the public of the patentee’s right to exclude.’” Id.
We therefore reverse the rejection of claim 15 as being indefinite under
§ 112, second paragraph.

Obviousness - Claims 1, 5-7, and 15.3
Appellants’ Figure 2, reproduced below, discloses a partial cross-
sectional view of a nozzle control in accordance with the claimed invention:

3 Appellants argue claims 1, 5-7 and 15 as a group with respect to the 35
U.S.C. § 103(a) ground of rejection. We select claim 1 as a representative
claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
App
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Appeal 2011-003090
Application 11/527,188

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plurality of holes 90 spaced around the actuator 46 and serves to balance all
of the flaps. Id. at col. 4, ll. 44-65.
The Examiner acknowledges that Gutierrez:
fails to disclose a valve for controlling flow of pressurized air
to said surface of said intermediate member, a control for said
valve reducing the flow of air when certain system conditions
are sensed; and a pressure ratio between the air pressure
within said nozzle, and an ambient pressure is utilized to
control said valve.
Ans. 7. With respect to this deficiency in Gutierrez, the Examiner points out
that Mendez discloses “a pressure control valve in a gas turbine engine that
controls the flow of pressurized air on the nozzle flaps and a control for the
valve for reducing the flow of air when certain system conditions are
sensed.” Ans. 8. Further the Examiner notes that “Mendez . . . teaches of a
pressure control valve which utilizes the difference in pressure between the
air in the cavity [related to ambient air pressure] and the air in the main
exhaust flow.” Id. The Examiner reasons that it would have been obvious:
to modify Gutierrez, Jr. with a valve for controlling flow of
pressurized air to said surface of said intermediate member, a
control for said valve reducing the flow of air when certain
system conditions are sensed; and a pressure ratio between the
air pressure within said nozzle, and an ambient pressure is
utilized to control said valve.
Id.
Appellants argue that:
[t]he Examiner appears to miss the point that Mendez, et al.
does not provide a controlled flow of air with a valve to a sync
ring. Thus, Mendez would only suggest modifying Gutierrez to
have a valve controlling air flow to within the chamber
surrounding element 66, for example. This is not what is
required by the claims.
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Application 11/527,188

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Reply Br. 2; see also App. Br. 4.
The Supreme Court has admonished lower courts that a combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416 (2007). (“Common sense teaches . . . that
familiar items may have obvious uses beyond their primary purposes, and in
many cases a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle.”) KSR, 550 U.S. at 420.
Appellants are correct that Mendez does not specifically disclose
delivering the Mendez valued air pressure to a sync ring. App. Br. 4; Reply
Br. 2. Rather Mendez discloses controlling flap position by delivering
controlled air pressure to a low pressure side of the nozzle flaps. We agree
with the Examiner, however, that if enhanced flap pressure control is desired
with respect to a gas turbine engine such as disclosed by Gutierrez, by
utilizing a valued air pressure supply disclosed by Mendez, one of skill in
the art would logically first consider delivering the Mendez valued air
pressure supply into the sync ring of Gutierrez as that is the location where
the Gutierrez jet engine design indicates that flap balancing air pressure
should be delivered. We affirm the Examiner’s rejection of claim 1 and all
of the remaining claims within this group since they have not been argued
independently.

Obviousness – Claim 3.
Claim 1, discussed above, recites “a control for said valve reducing
the flow of air when certain system conditions are sensed.” App. Br., Clms.
App’x. Claim 3 adds the recitation “wherein the flow of pressurized air to
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Application 11/527,188

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said surface is reduced when said ratio is less than three.” Id. Appellants’
Specification is limited with respect to the significance of this “less than
three” limitation. The only reference to the claimed ratio occurs in
paragraph [0014] and reads in relevant part: “Essentially, should the pressure
ration between areas 40 and 42 be lower (e.g., less than three), then it would
be desirable to block airflow to the sync ring 44.” Spec. 2, para. [0014].
The Examiner finds that: “the applied prior art structure being the
same, does the same.” Ans. 9. The Examiner continues: “In addition, it has
been held that ‘[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation.’” In re Aller, 220 F.2d 454, 456 (CCPA 1955).”
Appellants reply that “Mendez is doing something so distinct that the
claimed ratio would make no sense.” Reply Br. 2.
We find Appellants’ position lacking. For a claim ratio limitation to
render an otherwise obvious claim combination unobvious there must be
some significance or criticality with respect to the claimed limitation. In re
Reni, 419 F.2d 922, 925 (CCPA 1970) (“Arguing that the specification is
equivocal on this point and that no comparative or other evidence has been
proffered to show criticality, the solicitor maintains that ‘the appellant
cannot rely for patentability on the maintenance of hydrochloric acid
concentration within the claimed range.’”). Here the only reference in
Appellants’ Specification to the relevant claim limitation is “(e.g., less than
three).” The “e.g.” abbreviation of exempli gratis – for example does not
convince us that the “less than three” limitation is critical to the claimed
invention. No evidence has been submitted with Appellants’ Appeal Brief
that lends any significance to the “less than three” limitation. Accordingly,
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we agree with the Examiner that this apparent arbitrary ratio limitation,
without more, does not provide a basis for patentability of claim 3. See In re
Mayne, 104 F.3d 1339 (Fed. Cir. 1997). We affirm the rejection of claim 3.

Obviousness - Claims 4 and 14.
Claims 4 and 14 add the limitation that the intermediate structure is a
sync ring. Appellants assert that “any modification to Gutierrez which may
be possible based on Mendez would have nothing to do with this sync ring.”
App. Br. 5. This issue has been determined with respect to claim 1 above.
The most logical delivery of controlled air pressure from a valued system as
taught by Mendez would be to the sync ring of Gutierrez to control flap
position. That is the function of the Gutierrez sync ring. To disregard its
intended purpose and function would be illogical. We affirm the Examiner’s
rejection of claims 4 and 14.

Obviousness – Claim 8.
Claim 8 adds to claim 1 a recitation of “said valve dumps air to
atmosphere when the flow of air to the intermediate member is to be
reduced.” App. Br., Clms. App’x.
Appellants contend that “Mendez et al. simply selects between low
pressure and high pressure compressed air, and does not dump to
atmosphere under any condition.” App. Br. 5.
The Examiner finds that “[w]hen the valve is closed to reduce the
flow of air to the intermediate member/structure 102, the flow of air (B) will
be increased to the passage created between the cooling liner (87) and the
flap (34) . . .which will then be discharged to the atmosphere.” Ans. 11.
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We agree with the Examiner. The same reasoning is true for partial
closures of the valve 40 of Mendez as full closure. As the balancing
pressure logic constricts valve 40, less air will necessarily flow through the
valve and any air not flowing through the valve 40 will necessarily bypass
and be exhausted to atmosphere. We affirm the Examiner’s rejection of
claim 8.

ORDER
The Examiner’s rejection of claim 15 under 35 U.S.C. § 112 (first
paragraph) is affirmed; the Examiner’s rejection of claim 15 under 35 U.S.C.
§ 112 (second paragraph) is reversed; and the Examiner’s rejections of
claims 1, 3-8, 14 and 15 under 35 U.S.C. § 103(a) are affirmed.
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) (2011).

AFFIRMED

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