John T. Pech et al.

Patent Trials and Appeals Board

Oct 24, 2019

14260819 - (D) (P.T.A.B. Oct. 24, 2019)

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.
14/260,819 04/24/2014 John T. Pech 1510801.271US1[77132US1] 1873
61654 7590 10/24/2019
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
CORDAY, CAMERON A
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN T. PECH and BENJAMIN T. HARDER
____________________

Appeal 2019-000954
Application 14/260,819
Technology Center 3700
____________________

Before DANIEL S. SONG, STEFAN STAICOVICI, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3 and 5–10.2 Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Hamilton
Sundstrand Corporation. Appeal Br. 2.
2 Claim 4 is cancelled and claims 11–13 are withdrawn.
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THE CLAIMED SUBJECT MATTER
Claims 1 and 6 are independent. Claims 2, 3, and 5 depend from
claim 1. Claims 7–11 depend from claim 6. Claim 1 is reproduced below.
1. A turbine starter configured for use with a
turbomachine, comprising:
a turbine starter housing defining a cavity, wherein the
cavity is configured to hold a quantity of starter oil; and
a temperature sensor disposed within the cavity and
configured to sense a temperature within the housing;
wherein the starter further includes a speed sensor for
sensing a rotational speed of at least one rotating component of
the starter, wherein the temperature sensor is disposed on the
speed sensor within the cavity.

REJECTION
References Basis Claims
Mouton3, Fujiki4, and Schmidt5 § 103 1–3 and 5–10

OPINION
Appellant presents arguments for claims 1, 6, and 9, arguing claims 1
and 9 together (Appeal Br. 6–8), and presenting separate arguments for
claim 6 (id. at 8–10).
Claims 1 and 9 each recite “a speed sensor for sensing a rotational
speed of at least one rotating component of the starter.” The Examiner finds
that Schmidt teaches this limitation and proposes modifying Mouton’s

3 US 4,779,413, issued Oct. 25, 1988.
4 US 7,387,101 B2, issued June 17, 2008.
5 US 7,448,220 B2, issued Nov. 11, 2008.
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teachings accordingly. Final Act. 3–4; Ans. 2. In the Final Action, the
Examiner finds that “Schmidt teaches (Fig. 2) a speed sensor (40) for
sensing a speed of the shaft of the turbine starter.” Final Act. 3 (citing
Schmidt 4:1–15). Appellant responds that although “[t]he Examiner alleges
that Schmidt discloses a speed sensor for sensing speed of the shaft of the
turbine starter . . . referring to Fig. 1 of Schmidt . . . the speed sensor 14 of
Schmidt is not capable of sensing speed of the starter 6 as it is unconnected
to the starter.” Appeal Br. 6. In the Answer, the Examiner explains that
Appellant has failed to address the Examiner’s findings. See Ans. 2 (“The
Appellant does not make any arguments regarding the elements cited by the
examiner, specifically Fig. 2 of Schmidt and the speed sensor for the starter
40 (described in Col. 4 lines 1–15 of Schmidt).”). The Examiner is correct.
Accordingly, we are not apprised of error in the Examiner’s findings related
to Schmidt.6
Appellant additionally contends, without citation, that “[t]he
Examiner even admits that none of the references disclose the speed sensor

6 In the Answer, when explaining Appellant’s failure to address the findings
in the Final Action, the Examiner states that “[t]he speed sensor 40 senses
the speed of the ‘APU’ (see Fig. 2), or Auxiliary Power Unit” and “[t]he
‘APU’ functions as the turbine starter (see Schmidt Col. 1 lines 11-18).” In
the Reply Brief, Appellant provides new argument, but presents that
argument as a response to allegedly new basis to the rejection from the
Examiner. See Reply Br. 2 (“the Examiner, for the first time, argues that an
entire auxiliary power unit (APU) of Schmi[d]t is analogous to the claimed
starter,” but “such a statement is a new ground of rejection.”). The basis for
the Examiner’s rejection did not change in the Answer. Engine speed
detector 40 in Schmidt (relied on by the Examiner in the Final Action as
noted above), detects APU speed. See, e.g., Schmidt Fig. 2. We do not
consider the new argument raised for the first time in the Reply Brief. See
37 C.F.R. § 41.41(b)(2).
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within the starter but alleges that this is an obvious rearranging of parts.”
Appeal Br. 7. Rather than address the rationale provided by the Examiner,
which Appellant acknowledges (i.e., “rearrangement of parts”)7, Appellant
contends that “[t]here is simply no disclosure, suggestion, or motivation
provided in any of the references to include a speed sensor within the starter,
and thus, it is clear that the Examiner uses impermissible hindsight.” Id.
This does not apprise us of error, as there is no requirement that the
references, themselves, suggest the proposed modifications. Because
Appellant provides no argument addressing the rationale provided by the
Examiner, we are not apprised of Examiner error.
Similar to claim 1, claim 6 recites “a temperature sensor disposed
within the cavity and configured to sense a temperature within the housing.”
As in the rejection of claim 1 (Final Act. 3), the Examiner finds that Fujiki
teaches this feature in connection with the rejection of claim 6 and proposes
modifying Mouton’s teachings accordingly (id. at 5–6). The Examiner finds
that “[i]n an art solving the same problem of oil cooling as Mouton, Fujiki
teaches an oil level sensor for detecting an oil level,” and, more specifically,
Fujiki teaches (Fig. 1) an oil level sensor (12) configured to sense an oil
temperature and level within the oil housing (11).” Final Act. 4. Although
Appellant does not dispute this same finding in connection with claim 1,
Appellant contends that “[w]ith respect to independent claim 6 . . . Fujiki is
clearly not analogous art because it is neither (1) in the same field of
endeavor to turbomachine starters as in Mouton, nor is it (2) reasonably

7 The Examiner explains that “rearranging parts of an invention involves
only routine skill in the art.” Final Act. 4 (citing In re Japikse, 181 F.2d
1019 (CCPA 1950) and MPEP 2144.04).
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pertinent the same problem encountered by the inventor of Mouton.” Appeal
Br. 8 (emphasis added).
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC
v. MGA Entm’t., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Two separate tests define the scope of analogous art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325).
In the Answer, the Examiner clarifies that Fujiki is analogous art
because “Fujiki is in the art of engine oil cooling, and solves the same
problem of determining an oil level in an engine oil compartment.” Ans. 2.
That is, the Examiner finds that Appellant’s field of endeavor is “engine oil
cooling” and the problem addressed by Appellant is “determining an oil
level in an engine oil compartment,” and finds that Fujiki is both in this field
of endeavor and reasonably pertinent to this problem. Id. Appellant
responds by reiterating that “Fujiki is neither in the same field of endeavor
or reasonably pertinent to the problem faced by the inventor of Mouton.”
Reply Br. 3 (emphasis added). The Examiner has the better position, at least
with respect to whether Fujiki is reasonably pertinent to the particular
problem with which the inventor of the pending application is involved.
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Initially, we note that Appellant applies the wrong test for analogous
art. The question is not whether the references are analogous to one another,
but, rather, whether a reference is within the inventor’s field of endeavor or
reasonably pertinent to the particular problem with which the inventor of the
pending application is involved. Notably, Appellant does not dispute the
Examiner’s finding regarding the particular problem with which the inventor
is involved (“determining an oil level in an engine oil compartment”) or the
finding that “Fujiki . . . solves the same problem of determining an oil level
in an engine oil compartment.” Ans. 2. The Specification supports the
Examiner’s determination, explaining, for example, that “[l]eaks in the
starter and/or general oil consumption can result in a low oil level,” and
“[a]s a precaution, the starter must be serviced after a certain amount usage
to check and/or replace the oil in the starter.” Spec. 1:12–14. Fujiki,
likewise, relates to “detecting an oil level.” Fujiki, Abstract. For at least
these reasons we are not apprised of Examiner error based on Appellant’s
contentions related to Fujiki being non-analogous art.
Appellant further contends that “Fujiki does not disclose, and even
teaches away from, sensing the temperature within the housing and
determining if the sensed temperature indicates a sufficient quantity of oil.”
Appeal Br. 8. Appellant contends that “Fujiki discloses a significantly more
complicated system where the rate of temperature change of a heated
element is measured, not the temperature within the housing.” Id. Appellant
contends that “Fujiki only discloses determining thermal dissipation.” Id. at
9. The Examiner responds that Fujiki’s thermal dissipation determination
corresponds to sensing temperature. Ans. 3. Appellant responds by simply
alleging, without evidence or explanation, that “[s]ensing a dissipation rate
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of input heat is not the same as sensing temperature.” Reply Br. 3. Based
on the record before us, the Examiner has the better position. As the
Examiner explains, “Fujiki teaches a sensor that senses oil temperature by
measuring heat dissipation of an element over time,” where “[t]he heat
dissipates more slowly when the temperature of the oil is high, and the heat
dissipates more quickly when the temperature of the oil is low.” Ans. 3.
Appellant provides no persuasive explanation as to why a temperature
sensor must sense an absolute temperature directly, rather than determine a
heat dissipation over time, which indirectly senses a temperature.
Unlike claim 1, independent claim 6 additionally requires “a
computing apparatus configured to receive signals from the temperature
sensor and to determine if the temperature within the housing indicates a
sufficient quantity of starter oil.” The Examiner finds that “Schmidt teaches
(Fig. 2) a computing apparatus (44) configured to receive signals from a
temperature sensor” and that “[t]he computing apparatus does not allow the
turbine to start unless the temperature is at a predetermined level.” Final
Act. 4–5.
Appellant responds that “Schmidt has nothing to do with a
turbomachine starter” and “[f]or similar reasons as presented above, Fujiki is
also not combinable with Schmidt as they are not analogous.” Appeal Br. 9.
This is unpersuasive because, as explained above, the question is not
whether Schmidt and Fujiki are analogous to one another. Appellant does
not dispute that Schmidt is within the inventor’s field of endeavor or
reasonably pertinent to the particular problem discussed above with which
the inventor is involved.
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Appellant additionally contends that “Schmidt simply is not
configured to determine a sufficient quantity of starter oil.” Appeal Br. 9.
That, too, is unpersuasive of Examiner error because the Examiner does not
rely on a finding that Schmidt provides such a teaching. See Final Act. 4–5
(“Schmidt teaches (Fig. 2) a computing apparatus (44) configured to receive
signals from a temperature sensor. The computing apparatus does not allow
the turbine to start unless the temperature is at a predetermined level.”); see
also Ans. 3 (“Schmidt is provided merely to teach a computing apparatus 44
that is configured to receive signals from a temperature sensor.”).
Accordingly, we sustain the Examiner’s decision to reject claims 1–3
and 5–10.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed

1–3 and 5–10 § 103 Mouton,
Fujiki, and
Schmidt
1–3 and 5–10
Overall
Outcome
1–3 and 5–10

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED