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Patent Trials and Appeals Board

Nov 13, 2019

14769316 - (D) (P.T.A.B. Nov. 13, 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.
14/769,316 08/20/2015 Gordon F. Jewess 61125US02;
67097-2208PUS1
9090
54549 7590 11/13/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
LUONG, VINH
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
11/13/2019 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GORDON F. JEWESS and ANTHONY C. JONES

Appeal 2019-003751
Application 14/769,316
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 9, 10, 12–16, 18, 20, and 21, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
United Technologies Corporation. Appeal Br. 2.
Appeal 2019-003751
Application 14/769,316

2

STATEMENT OF THE CASE
Claimed Subject Matter
Claims 9 and 16 are the independent claims on appeal. Claim 9,
reproduced below, is illustrative of the claimed subject matter.
9. An auxiliary power unit assembly comprising:
a gearbox, the gearbox including a sump level line, the
gearbox including at least one mounting pad below the
associated sump level line;
a bracket including at least one gearbox mounting face
secured to a corresponding one of the at least one mounting
pad; and
an arm of the bracket extending upwardly past the
associated sump level line;
wherein the bracket has a “U” shape and includes a
support strap that extends along a downwardly facing surface of
the gearbox.

Rejections
Claims 20 and 21 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claim 21 is rejected under 35 U.S.C. § 112(b) as indefinite.
Claims 9, 10, 12–14, 16, 18, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Suttie et al. (US 7,516,621 B2, iss. Apr. 14,
2009) (“Suttie”) and Bell et al. (US 2013/0320134 A1, pub. Dec. 5, 2013)
(“Bell”).
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Suttie, Bell, and DeDe et al. (US 2013/0015291 A1, pub. Jan. 17, 2013)
(“DeDe”).
Claims 9, 10, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Suttie, Bell, and Williams (US 2006/0032974 A1, pub.
Feb. 16, 2006).
Appeal 2019-003751
Application 14/769,316

3

ANALYSIS
Written Description
The Examiner rejects claim 20, which recites, “wherein every location
at which the at least one gearbox mounting face is secured to the gearbox is
below the associated sump level line,” and claim 21, which recites, “every
location at which the bracket is secured to the gearbox is below the sump
level line,” for failing to comply with the written description requirement.
Final Act. 3–4. The Examiner’s rejection is premised upon Figure 3
showing that arm 54 of bracket 46 is secured to gearbox 34 above sump
level line 74. See id. at 3. We agree with the Appellant that the Examiner
has an “unreasonable interpretation” of what is shown in Figure 3. See
Appeal Br. 6–7. One of ordinary skill in the art would understand Figure 3
as depicting that bracket 46 is only secured to gearbox 34 via fasteners 76,
which are all located below sump level line 74. See also Spec. ¶¶ 20, 39–
41. This adequately conveys to one of ordinary skill in the art that the
Appellant had possession of the claimed subject matter at the time the
application was filed.
Thus, we do not sustain the Examiner’s rejection of dependent
claims 20 and 21 as failing to comply with the written description
requirement.
Indefinite
The Examiner’s rejection of claim 21 as indefinite is based on
reasoning similar to the reasoning provided for the failure of claim 21 to
comply with the written description requirement. See Final Act. 3–5. For at
least the reasons discussed above, we do not sustain the Examiner’s rejection
of dependent claim 21 as indefinite.
Appeal 2019-003751
Application 14/769,316

4

Obviousness
Independent Claim 9 and Dependent Claims 10, 12–15, and 20
The Appellant argues that “Suttie does not describe a gearbox of the
APU 8, and there is therefore no basis for alleging that Suttie’s bracket 2 is
attached to a gearbox of the APU 8.” Appeal Br. 3 (emphasis omitted); see
Reply Br. 3. The Appellant’s argument is persuasive.
At the outset, we note that the Appellant’s argument is based on the
notion that claim 9 requires an understanding of the location of a gearbox of
auxiliary power unit. See Reply Br. 3. We agree. Claim 9 recites “a bracket
including at least one gearbox mounting face secured to a corresponding one
of the at least one mounting pad [of the gearbox].” This limitation connotes
that the gearbox is mounted to a particular surface of the bracket (i.e.,
gearbox mounting face). Without an explanation, on this record, of the
location of a gearbox of Suttie’s auxiliary power unit, we cannot to evaluate
whether a gearbox is mounted to a particular surface of Suttie’s bracket 2,
which is necessary to support a rejection of claim 9.
The Examiner’s rejection of claim 9 relies on a finding that Suttie’s
auxiliary power unit 8 includes a gearbox and that mounting surface 4
corresponds to the at least one gearbox mounting face. See Ans. 5; Final
Act. 5–6, 7, Appendix 2. Alternatively, the Examiner’s rejection relies on a
finding that an auxiliary power unit typically includes a gearbox. Ans. 10.
However, the Examiner fails to explain, on this record, where the gearbox is
located as a part of auxiliary power unit 8. Therefore, the finding that
mounting surface 4 corresponds to the at least one gearbox mounting face is
based on speculation.
Appeal 2019-003751
Application 14/769,316

5

The Examiner’s rejection further relies on Bell’s teachings to modify
Suttie’s assembly. Ans. 5–6. However, the modification does not appear to
account for the lack of disclosure in Suttie concerning the location of a
gearbox of auxiliary power unit 8. See id. Rather, the modification
presupposes the validity of the finding that Suttie discloses the claimed at
least one gearbox mounting face, which is not adequately established on this
record.
In the alternative, the Examiner finds that Bell teaches an auxiliary
power unit that includes a gearbox. See id. at 10. However, the Examiner
fails to provide, on this record, a reason with rational underpinning to
modify Suttie’s assembly with Bell’s teaching to either establish or change
the location of a gearbox of auxiliary power unit 8 relative to mounting
surface 4.
Thus, we do not sustain the Examiner’s rejection of independent
claim 9 and dependent claims 10, 12–14, and 20 as unpatentable over Suttie
and Bell. The remaining rejections based on Suttie and Bell in combination
with DeDe or Williams include the same deficiency as discussed above. The
deficiency is not cured by the additional findings and reasoning of the
remaining rejections. Thus, we do not sustain the rejections of: dependent
claim 15 as unpatentable over Suttie, Bell, and DeDe; and independent
claim 9 and dependent claims 10, 12, and 13 as unpatentable over Suttie,
Bell, and Williams.
Independent Claim 16 and Dependent Claims 18 and 21
The Appellant argues that the Examiner’s rejection fails to adequately
support a finding that Suttie teaches, “supporting the auxiliary power unit
gearbox utilizing a strap extending along a downwardly facing surface of the
Appeal 2019-003751
Application 14/769,316

6

auxiliary power unit gearbox,” as recited in claim 16. Appeal Br. 5
(emphasis omitted). The Appellant’s argument is persuasive. As discussed
above, the Examiner fails to establish the location of a gearbox of auxiliary
power unit 8 and does not remedy this deficiency. Therefore, the
Examiner’s finding that Suttie utilizes a strap (e.g., attachment surface 5)
that extends along a downwardly facing surface of a gearbox of auxiliary
power unit 8 is, likewise, inadequately supported. See Ans. 5, 7. Thus, we
do not sustain the Examiner’s rejection of independent claim 16 and
dependent claims 18 and 21 as unpatentable over Suttie and Bell.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
20, 21 § 112(a) Written Description

20, 21
21 § 112(b) Indefinite 21
9, 10, 12–
14, 16, 18,
20, 21
§ 103(a) Suttie, Bell 9, 10, 12–
14, 16, 18,
20, 21
15 § 103(a) Suttie, Bell, DeDe 15
9, 10, 12, 13 § 103(a) Suttie, Bell, Williams 9, 10, 12,
13
Overall
Outcome
9, 10 12–
16, 18, 20,
21

REVERSED