Ex Parte Tatman et alDownload PDFPatent Trial and Appeal BoardAug 27, 201813565950 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/565,950 08/03/2012 Neil L. Tatman 54549 7590 08/29/2018 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. 67097-1960PUS1;62238US01 5644 EXAMINER WOLCOTT, BRIAN P ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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 NEILL. TATMAN and RICHARD K. HAYFORD Appeal 2017-011480 Application 13/565,950 1 Technology Center 3700 Before LINDA E. HORNER, LISA M. GUIJT, and SEAN P. O'HANLON, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's rejections under pre-AIA 35 U.S.C. § 103(a) of claims 9, 12, and 13 as unpatentable over Boite (US 5,775,874, issued July 7, 1998) and Klapproth (US 4,856,963, issued August 15, 1989), and of claim 11 as unpatentable over Boite, Klapproth, and Radwill (US 3,708,076, issued 1 Neil L. Tatman and Richard K. Hayford ("Appellants") identify United Technologies Corporation as the real party in interest. Appeal Brief (March 20, 2017) (hereinafter "Appeal Br."), at 1. Appeal 2017-011480 Application 13/565,950 January 2, 1973). Final Office Action (October 28, 2016) (hereinafter "Final Act."). 2 We have jurisdiction under 35 U.S.C. § 6(b ). The claimed subject matter relates to "an anti-rotation lug for a gas turbine engine stator assembly." Specification (August 3, 2012) (hereinafter "Spec."), ,r 1. For the reasons explained below, we do not find error in the Examiner's rejections. Accordingly, we AFFIRM. CLAIMED SUBJECT MATTER Claim 9 is the sole independent claim remaining on appeal. Claim 9 is reproduced below with the disputed claim language emphasized in italics. 9. An anti-rotation lug for a stator assembly compnsmg: a base having a perimeter; and a oval-shaped boss extending from a base, the boss arranged within the perimeter, and the boss including spaced apart lateral swfaces joined on opposing sides by arcuate surfaces facing opposing directions to provide the oval shape, wherein the base includes a relief cut next to the boss to provide a pad that is proud of the relief cut, the pad extends from a same side of the base and in a same direction as the boss. Appeal Br. 9 (Claims Appendix). 2 Claims 1-7 and 14-18 are pending, but not rejected, and claims 8, 10, and 16 are canceled. The Examiner withdrew rejections under pre-AIA 35 U.S.C. § 103(a) of: (1) claims 1-4 as unpatentable over Dube (US 7,144,218 B2, issued December 5, 2006), Klapproth, and Shepherd (US 5,249,920, issued October 5, 1993), (2) claims 5, 14, 15, 17, and 18 as unpatentable over Dube, Klapproth, Shepherd, and Radwill, and (3) claims 6 and 7 as unpatentable over Dube, Klapproth, Shepherd, and Torrance (US 6,901,821 B2, issued June 7, 2005). Examiner's Answer (July 14, 2017) (hereinafter "Ans."), at 2-3. 2 Appeal 2017-011480 Application 13/565,950 ANALYSIS Appellants argue the claims subject to the first ground of rejection, i.e., claims 9, 12, and 13, as a group. Appeal Br. 4-5. We select claim 9 as representative of the group, and claims 12 and 13 stand or fall with claim 9. 37 C.F.R. § 4I.37(c)(l)(iv). Appellants rely on the same arguments presented in support of claim 9 as the basis for seeking reversal of the second ground of rejection of dependent claim 11. Appeal Br. 4--5. Thus, the outcome of the appeal turns on our analysis of the rejection of independent claim 9 over Boite and Klapproth. The Examiner found that Boite discloses the claimed anti-rotation lug substantially as recited in claim 9 except for the oval-shaped boss. Final Act. 3-4. The Examiner found that Klapproth teaches an anti-rotation lug for a stator assembly comprising an oval-shaped boss. Id. at 4. The Examiner determined that the oval-shaped boss feature constitutes a mere change in shape and not a patentable distinction over the prior art. Id. The Examiner further explained that Boite and Klapproth disclose art-recognized alternative anti-rotation devices for stator assemblies within a turbine casing. Ans. 3. The Examiner found that one of ordinary skill would recognize that both the round and oval boss shapes are recognized alternatives in the art, and the modification of Boite' s round boss with an oval boss, as taught in Klapproth, is a mere substitution of one art-known boss shape for another to achieve the predictable result of preventing rotation in both the circumferential and radial directions. Id. at 3-4. Appellants present several arguments as to why the Examiner's articulated reasons to modify the cylindrical rod of Boite to an oval shape are insufficient. Appeal Br. 4-5; Reply Brief (September 14, 2017) 3 Appeal 2017-011480 Application 13/565,950 (hereinafter "Reply Br."), at 2-3. As explained below, Appellants' arguments do not identify error in the Examiner's finding that Klapproth teaches an oval boss as an alternative shape known to those skilled in the art, and do not identify error in the Examiner's reasoning that the proposed modification to use an oval boss in Boite is anything more than a simple substitution of one known shape for another. First, Appellants argue that Boite' s cylindrical rod provides an interference fit with the casing, and "[ a ]ny shape more complex than a cylinder would unnecessarily add machining cost to Boite with absolutely no benefit." Appeal Br. 5; Reply Br. 2. Appellants do not support this attorney argument with any evidence. Mere attorney argument cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further, even were the cost to machine an oval boss incrementally more than the cost to machine a circular boss, this fact alone does not rebut the Examiner's position that oval bosses were well-known alternative shapes. Further, as noted by the Examiner, oval bosses provide additional anti-rotation advantages not provided by a circular boss in a circular hole. See Ans. 4 (Examiner noting that use of Klapproth' s oval boss in Boite would allow one to dispense with the circumferential groove on the inner surface of the casing into which the base of Boite's anti-rotation lug fits). Second, Appellants argue that the claimed oval shape provides "an unpredicted result" because it "prevents the lug from rotating in the aperture, which in tum prevents the stator vane from rotating about its radial axis." Appeal Br. 5; Reply Br. 3. Again, Appellants have not provided any evidence to support the assertion that the result is "unpredicted." We agree with the Examiner that this result is predictable. Ans. 4 (Examiner finding 4 Appeal 2017-011480 Application 13/565,950 that "it is well understood that round bosses in round holes rotate about the round hole, and oval bosses in oval holes do not rotate about the oval hole"). Third, Appellants argue that the claimed oval shape "is functionally significant" because it "assures desired orientation of the lug relative to the case during assembly about the radial axis, which subsequently enables desired alignment of the stator vane relative to the case." Appeal Br. 5; Reply Br. 3. This functional aspect asserted by Appellants is not persuasive because Appellants' do not point to any evidence of this function, such as discussion in Appellants' Specification. In fact, Appellants' Specification does not provide any explanation for, or attribute any significance to, the disclosed oval shape of the boss as it relates to orientation of the lug relative to the case. See Spec. ,r 45 (describing generally that anti-rotation lug 86 extends through aperture 80 and is received in notch 84 to prevent undesired circumferential movement of stator 70 relative to compressor case 62 during assembly, and anti-rotation lug 86 also prevents rotation of stator 70 with respect to compressor case 62). We agree with the Examiner's finding that Boite and Klapproth disclose art-recognized alternative anti-rotation devices for stator assemblies and that based on these teachings, one having ordinary skill in the art would recognize that both circular and oval boss shapes are known alternatives in the art. Ans. 3-4. We further agree with the Examiner's determination that it would have been obvious to substitute the circular boss of Boite with the oval boss of Klapproth as a mere substitution of one known boss shape for another to achieve the predictable result of preventing rotation in both the circumferential and radial directions. Id. at 4. See also KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("when a patent claims a structure 5 Appeal 2017-011480 Application 13/565,950 already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result"). Appellants have not shown that the use of an oval boss when combined with a known anti-rotation lug does more than yield a predictable result. Thus, Appellants have not identified error in the Examiner's determination of obviousness. For these reasons, we sustain the rejections under 35 U.S.C. § 103(a) of claims 9 and 11-13. DECISION The decision of the Examiner rejecting claims 9 and 11-13 is 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)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation