Ex Parte Tomaso

Patent Trial and Appeal Board

Mar 8, 2018

13644141 (P.T.A.B. Mar. 8, 2018)

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.
13/644,141 10/03/2012 Christopher Michael Tomaso 258391-1 6862
80944 7590 03/12/2018
Hoffman Warniok T T .P
EXAMINER
540 Broadway
4th Floor
RASTOVSKI, CATHERINE T
Albany, NY 12207 ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER MICHAEL TOMASO
Appeal 2017-007764
Application 13/644,141
Technology Center 2800
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1—18.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, General Electric Company. Application Data
Sheet filed October 3, 2012.
2 Appeal Brief filed November 15, 2016 (“App. Br.”).
Appeal 2017-007764
Application 13/644,141
STATEMENT OF THE CASE
Appellant claims a steam turbine performance testing system
(independent claim 1), a steam turbine (independent claim 9), and a non-
transitory computer readable medium encoded with a computer program
product for enabling performance testing of a steam turbine (independent
claim 13).
Claims 1 and 13 illustrate the subject matter on appeal and are
reproduced below:
1. A steam turbine performance testing system comprising:
an exhaust bypass conduit arranged for selective fluid
communication with an exhaust of the steam turbine, the
exhaust bypass conduit being arranged to receive a portion of
an exhaust of the steam turbine as an exhaust bypass flow;
an inlet bypass conduit arranged for selective fluid
communication with an inlet of the steam turbine, the inlet
bypass conduit being arranged to receive a portion of an inlet
steam flow of the steam turbine as an inlet bypass flow; and
a mixed flow conduit having a mixing point at one end in
fluid communication with the exhaust bypass conduit and the
inlet bypass conduit, the mixing point and the mixed flow
conduit being arranged to form a mixed flow responsive to the
exhaust bypass flow and the inlet bypass flow entering the
mixed flow conduit through the mixing point.
13. A non-transitory computer readable medium encoded
with a computer program product for enabling performance
testing of a steam turbine, the performance testing system being
arranged for selective installation on the steam turbine, the
performance testing system comprising:
an inlet bypass conduit arranged to selectively divert a
portion of an inlet steam to form an inlet bypass flow;
an exhaust bypass conduit arranged to selectively divert
a portion of an exhaust steam to form an exhaust bypass flow,
a mixed flow conduit including a mixing point in fluid
communication with the inlet bypass conduit and the exhaust
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bypass conduit such that the inlet bypass flow and the exhaust
bypass flow mix to form a mixed flow and to heat the exhaust
bypass flow with the inlet bypass flow; and
a plurality of sensors deployed to measure a respective
characteristic of each of the inlet bypass flow and the mixed
flow, each of the plurality of sensors being arranged for
communication with a computing device to send the measured
respective characteristics to the computing device, the
information including at least one characteristic of each of the
mixed flow and the portion of the inlet steam, the computer
program product comprising instructions in the form of
computer executable code that when executed configures the
computing device to:
determine at least an enthalpy, hhnx, of the mixed flow
formed from heating a portion of exhaust steam from the
exhaust with the portion of inlet steam at a mixing point;
determine at least an enthalpy, hi„iet, of the portion of the
inlet steam;
establish a heat balance between the mixed flow on one
side of the mixing point and the portion of exhaust steam and
the portion of inlet steam on another side of the mixing point;
and
determine an exhaust enthalpy, hExhaust, of the exhaust
steam based at least in part on the heat balance.
App. Br. 10, 14—15 (claims appendix) (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered June 16, 2016 (“Final Act.”) and maintains the rejections in
the Examiner’s Answer entered February 9, 2017 (“Ans.”):
I. Claims 1—4, 6—8, and 13—17 under 35 U.S.C. § 103(a) as
unpatentable over Endries et al. (US 6,643,605 Bl, issued November 4,
2003);
II. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Endries
in view of Hayashi (US 2007/0203669 Al, published August 30, 2007);
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Application 13/644,141
III. Claims 9-11 under 35 U.S.C. § 103(a) as unpatentable over
Endries in view of Yang (US 2011/0038712 Al, published February 17,
2011); and
IV. Claims 12 and 18 under 35 U.S.C. § 103(a) as unpatentable
over Endries in view of Yang and Silvestri, Jr. (US 4,827,429, issued May 2,
1989).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1—18 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action, the Answer, and below.
Rejection I
Appellant argues claims 1—4, 6—8, and 13—17 as a group on the basis
of claims 1 and 13, to which we accordingly limit our discussion. App. Br.
6-7. 37 C.F.R. § 41.37(c)(l)(iv).
Endries discloses that conventional methods for determining the
enthalpy of hot steam at the outlet of a steam turbine present considerable
difficulties, and are thus unsuitable, for determining the enthalpy of wet
steam. Col. 1,11. 18-44. Endries discloses that his invention overcomes the
problems and disadvantages of prior art methods, and provides a simple
system and method for determining an enthalpy of wet steam at an outlet of
a steam turbine, which can be used to determine the efficiency of the steam
turbine. Col. 2,11. 2-6; col. 3,11. 32-34.
Endries discloses that his method involves supplying a part volume
flow of wet steam through first supply line 2 (exhaust bypass conduit) into
mixing space 4 (mixed flow conduit), and supplying a part volume flow of
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Application 13/644,141
hot steam as a reference gas sample through second supply line 3 (inlet
bypass conduit) into mixing space 4 (mixed flow conduit). Col. 2,11. 34—39;
col. 4,11. 28—33; Fig. 2. Endries discloses determining the enthalpy of the
hot steam reference gas and the enthalpy of the reference gas/wet steam
mixture from measured physical variables, and using these enthalpy values
to calculate the enthalpy of the wet steam. Col. 2,11. 27—31, 39-46.
The Examiner finds that Endries does not explicitly disclose an
exhaust bypass conduit arranged for selective fluid communication with an
exhaust of the steam turbine, and an inlet bypass conduit arranged for
selective fluid communication with an inlet of the steam turbine. Final Act.
3^4. However, the Examiner finds that Yang, Binstock, and Tremmel
disclose controlling the flow of fluid and steam through a steam turbine
using a valve (selective fluid communication). Final Act. 4 (citing Yang |
24; Binstock col. 1,11. 60—63; Tremmal Fig. 1). The Examiner finds that
although Yang, Binstock, and Tremmel disclose using valves “in different
locations in the steam turbine systems, the purpose of each is selective fluid
communication for controlling the flow of steam in different fluid network
structures.” Final Act. 4. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of Appellant’s
invention to utilize means for selective fluid communication, such as valves,
in Endries’ system and method to selectively control the flow of fluids. Id.
Appellant argues that he identified a problem in the prior art: when
wet steam is present in a steam turbine exhaust, it is difficult to determine
exhaust enthalpy, which makes it difficult to measure steam turbine
performance. App. Br. 6. Appellant argues that a “patentable invention may
lie in the discovery of the source of a problem even though the remedy may
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be obvious once the source of the problem is identified. This is part of the
‘subject matter as a whole’ which should always be considered in
determining the obviousness of an invention under 35 USC. 103.” App. Br.
7. Appellant contends that rather than considering Appellant’s invention as
a whole, the Examiner appears to have impermissibly distilled down the
claimed invention into controlling steam flow using valves for selective fluid
communication. Id. Appellant asserts that the invention as defined by
claims 1 and 13 is not taught or suggested by Endries, and Endries thus does
not render obvious the invention as a whole. Id.
However, as discussed above, Endries explicitly discloses that
conventional methods for determining the enthalpy of hot steam at the outlet
of a steam turbine presented considerable difficulties before Enderis’
invention, and were thus unsuitable for determining the enthalpy of wet
steam. Col. 1,11. 18-44. Thus, Endries evidences that the problem
supposedly identified by Appellant was already known in the art at the time
of Appellant’s invention, and Appellant’s arguments to the contrary thus
lack persuasive merit. In re Wiseman, 596 F.2d 1019, 1022—1023 (CCPA
1979) (unsubstantiated statement of counsel was insufficient to show
appellants discovered source of the problem).
In addition, Appellant appears to misapprehend the basis for the
Examiner’s rejection of claims 1 and 13. Rather than “distilling down” the
subject matter of claims 1 and 13 into controlling steam flow using valves
for selective fluid communication, the Examiner finds that Endries discloses
or would have suggested all the limitations of claims 1 and 13 except
arranging second supply line 3 (inlet bypass conduit) to selectively receive
via a valve (selective fluid communication) a portion of the hot steam
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reference gas (inlet steam), and arranging first supply line 2 (exhaust bypass
conduit) to selectively receive via a valve (selective fluid communication) a
portion of the wet steam (exhaust steam). Final Act. 2-4; 7—1. The
Examiner provides three evidentiary references (Yang, Binstock, and
Tremmel) establishing that it was known in the art at the time of Appellant’s
invention to control the flow of fluid and steam through a steam turbine
using valves (selective fluid communication). Final Act. 4, 11. Based on
this evidence, the Examiner concludes that it would have been obvious to
one of ordinary skill in the art at the time of Appellant’s invention to utilize
valves in Endries’ system to selectively control the flow of fluid, such as the
flow of hot steam reference gas (inlet steam) through second supply line 3
(inlet bypass conduit) and the flow of wet steam (exhaust steam) through
first supply line 2 (exhaust bypass conduit), as recited in claims 1 and 13.
Id.
Thus, contrary to Appellant’s arguments, the Final Action makes clear
that the Examiner did consider claims 1 and 13 as a whole, and the Examiner
provides a sufficient factual basis to establish that the relied-upon
disclosures of Endries in view of the state of the art at the time of the
invention (as evidenced by Yang, Binstock, and Tremmel) would have
suggested the subject matter of claims 1 and 13. Although Appellant asserts
that the invention defined by claims 1 and 13 is not taught or suggested by
Endries, Appellant’s conclusory argument does not explain with particularity
why the disclosures in Endries relied-upon by the Examiner, in view of the
state of the art at the time of Appellant’s invention, would not have disclosed
or suggested the claimed subject matter. Appellant’s unsupported argument
thus has limited probative value. In re Pearson, 494 F.2d 1399, 1405
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(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”); In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991)
(“It is not the function of this court to examine the claims in greater detail
than argued by an appellant, looking for nonobvious distinctions over the
prior art.”).
Accordingly, a preponderance of the evidence relied upon in this
appeal supports the Examiner’s conclusion of obviousness, and we therefore
sustain the Examiner’s rejection of claims 1—4, 6—8, and 13—17 under
35 U.S.C. § 103(a).
Rejections II—IV
Appellant asserts without further explanation that the secondary
references applied in these rejections do not disclose “a mixed flow conduit
in fluid communication with the inlet bypass conduit and the exhaust bypass
conduit at a mixing point of the mixed flow conduit, the mixed flow conduit
thereby being arranged to receive and allow mixing of an inlet bypass flow
and an exhaust bypass flow to form a mixed flow,” and Appellant contends
that the combination of Endies and each of the secondary references thus
lacks this element. App. Br. 7—9. However, Appellant’s conclusory
assertions do not constitute substantive arguments as to the separate
patentability of claims 5, 9-11, and 13. In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art. Because Lovin did not provide such arguments,
the Board did not err in refusing to separately address claims 2—15, 17—24,
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and 31—34.”). We accordingly sustain the Examiner’s rejections of claims 5,
9-11, and 13 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejections of claims 1—18 under 35 U.S.C. §
103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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