Ex Parte Venkataraman et al

Patent Trial and Appeal Board

Jan 12, 2015

12219534 (P.T.A.B. Jan. 12, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KRISHNA K. VENKATARAMAN,
WILLIAM KIRK HESSLER, and PREDRAG POPOVIC
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Appeal 2012-010345
Application 12/219,534
Technology Center 3700
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Before: STEFAN STAICOVICI, JILL D. HILL, and
JAMES J. MAYBERRY, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Krishna K. Venkataraman et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 9–15. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
Independent claims 9 and 14 are independent. Claim 9, reproduced
below, illustrates the claimed subject matter on appeal.
9. A gas turbine transition piece comprising a duct body
having a forward end and an aft end, said body defining an
enclosure for confining a flow of combustion products from a
combustor to a turbine first stage nozzle; and a plurality of
dilution holes formed in said duct body at locations defined by
selected sets of X, Y, Z coordinate sets listed in Table I, said X,
Y, and Z coordinate sets measured from an origin at a center of
an exit plane at said aft end of the transition piece, wherein said
duct body has a length of substantially 20 inches, and wherein
said plurality of dilution holes have diameters in a range of
from 0.3 to 1.75 inches.
REJECTIONS
Claims 9–13 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over U.S. Patent No. 7,373,772 B2, issued May 20, 2008 to Simons. Ans.
35.
Claims 14 and 15 also stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Simons. Id. at 5.
OPINION
Appellants argue claims 9–15 as a group. Appeal Br. 11–14. We
select independent claim 9 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 10–15 stand or fall with claim 9.
The Examiner finds that Simons teaches a 30-inch long transition
piece 10, placed between a combustor 12 and a first stage of a turbine 14, the
transition piece having a dilution hole pattern as set forth in Simons’ Table I
to reduce emissions. Ans. 7 (citing Simons, col. 1, ll. 46–47).
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The Examiner also finds that, although Simons does not teach that the
locations of dilution holes are defined by the claimed selected sets of X, Y,
Z coordinates listed in Appellants’ Table I, Simons teaches a dilution hole
pattern of 7 holes as outlined in its own Table I, with a different set of X, Y,
Z coordinates that promote mixing and reduce emissions. Id. at 4–6.
According to the Examiner, “the placement of dilution holes is a well[-]
known technique to promote mixing and reduce emissions,” and “the
dilution holes may be placed in different locations in order to optimize
mixing and reduce emissions.” Id. at 6.
The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to make [Simons’] transition
piece (10) 20 inches in length with 11 dilution holes and to
match the coordinates of these dilution holes with the ones
listed in Table I (of application) in order to optimize the
promotion of mixing and reduction of emissions.
Id.
Appellants argue that Simons fails to teach the claimed “locations of
the dilution holes” and “a transition piece duct body having a length of
substantially 20 inches.” Appeal Br. 11. This argument is not contested by
the Examiner, who concludes that such sizing of the transition piece and
location of dilution holes would have been obvious.
Regarding transition piece length, the Examiner finds that, although
Simons’ transition piece is longer than the claimed transition piece, “[t]he
length of the transition piece obviously depends on the size of the gas
turbine engine in which it is installed,” and “[t]he length of the transition
piece is . . . critical in optimizing mixing and reducing emissions [and] may
be limited by the space between the combustor and the first stage of the
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turbine.” Ans. 6, 7. Appellants do not dispute that transition piece length
may vary with engine size.
Appellants argue that “the coordinates for the dilution holes in Simons
[would be] impossible to import into a twenty-inch transition piece [and]
Simons does not teach any methodology for determining dilution hole
coordinates for any other [size of] transition piece . . . .” Appeal Br. 12.
Appellants fail to explain the reason for this alleged impossibility.
The Examiner responds that it was known in the prior art (e.g.,
Simons) that a dilution hole pattern affects emission levels, and dilution hole
placement can therefore be deemed a result-effective variable, the discovery
of optimum or workable ranges of which is not inventive. Ans. 7–8.
The Examiner again concludes that it would have been obvious to one
skilled in the art to vary Simons’ dilution hole placement, reasoning that
changing the transition piece length and dilution hole placement based on
engine size and to reduce emission would be “predictable to one of ordinary
skill in the art [based on] previous realization that the holes size and pattern
do control the levels of emissions in a combustion process.” Id. at 8.
The Examiner has the better argument. Appellants have not
persuaded us that the Examiner erred in finding that the length of the
transition piece will vary based on engine size, and that location of dilution
holes for a given engine and a given transition piece length is a result-
effective variable, the discovery of optimum or workable ranges of which is
not inventive.
Appellants further argue that “the focus of the dilution hole placement
in Simons and the instant application is not the same” because although
“both Simons and the instant invention may share general objectives of
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supplying dilution air to the transition duct and reducing emissions, the
manner in which that goal is achieved is evidently not the same.” Appeal
Br. 13.
The Examiner responds that this argument fails to comply with 37
C.F.R. § 1.111(b), because it amounts to “a general allegation that the claims
define a patentable invention without specifically pointing out how the
language of the claims patentably distinguishes them from the references,”
and the function of the dilution hole is not recited in the claims. Ans. 8. We
agree with the Examiner that the claims do not recite the focus of the
dilution holes. In addition, despite the quoted language of Simons and the
Specification at pages 12–13 of the Appeal Brief, we are not persuaded that
the focus of Appellants’ dilution hole placement is different than Simons’s,
as both devices are concerned with emission reduction. Further, Appellants
have not explained how any actual difference in the focus of Simons would
render transition piece length and dilution hole location nonobvious.
Appellants also argue that “Simons discloses only seven hole
locations, whereas independent claim 9, through incorporation of the
coordinates listed in Table I of the [S]pecification, requires no fewer than 28
possible hole locations.” Appeal Br. 13. Appellants’ argument, however,
does not address the fact that claim 9 recites “a plurality of dilution holes”
defined by selected sets of X, Y, Z coordinates from Table I, rather than
more than seven dilution holes—that is, claim 9 does not require all hole
locations from Table I to be used. Moreover, because it is well settled that
duplication of parts is obvious, Appellants fail to explain how the greater
number of hole location options set forth in their Table I would render claim
9 non-obvious. See In re Harza, 274 F.2d 669 (CCPA 1960).
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For the reasons set forth above, we sustain the rejection of claim 9 as
unpatentable over Simons. Claims 10–15 fall with claim 9.
DECISION
We AFFIRM the rejection of claims 9–15 under 35 U.S.C. § 103(a) as
unpatentable over Simons.

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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