Tu, John S. et al.

Patent Trials and Appeals Board

Feb 3, 2020

14908751 - (D) (P.T.A.B. Feb. 3, 2020)

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.
14/908,751 01/29/2016 John S. Tu 73018US02;
67097-2590US1
2189
54549 7590 02/03/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
BURKE, THOMAS P
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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 JOHN S. TU, JAMES P. BANGERTER, ROBERT SZE,
JAMES B. HOKE, and MONICA PACHECO-TOUGAS

Appeal 2019-003301
Application 14/908,751
Technology Center 3700
____________

Before LINDA E. HORNER, CHARLES N. GREENHUT, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant, United Technologies Corporation,1 appeals under
35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 8,
11–13, 16, 17, 20, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(b) and identifies itself
as the sole real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure “relates to improved cooling
techniques for combustor panels for use in a gas turbine engine.” Spec. ¶2.
The Claims
Claims 1, 8, 11–13, 16, 17, 20, 22, and 23 are rejected. Final Act. 1.
No other claims are pending. Id. Claim 1 is illustrative and reproduced
below.
1. A combustor for use in a gas turbine engine
comprising:
a panel with effusion cooling holes extending through
said panel, said effusion cooling holes communicating with an
inner face of said panel to deliver cooling air to said inner face
of said panel, and an outer shell attached to said panel, said
outer shell having impingement cooling holes extending to
deliver air to a chamber between said outer shell and said panel,
and then into said effusion cooling holes;
there being a nominal average spacing of said effusion
cooling holes per an entire surface area of said panel, and a
reduced spacing area of said effusion cooling holes adjacent to
at least one edge on said panel, and said effusion cooling holes
in said reduced spacing area being spaced by a distance less
than said nominal average spacing;
a rail is provided about an outer face of said panel;
said at least one edge being circumferential edges of said
panel; and
at least at said circumferential edges, said effusion
cooling holes extending from said outer face of said panel to an
outlet at said inner face at a location circumferentially aligned
with said rail at said circumferential edges.
Appeal Br. 7.
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The Examiner’s Rejections
The following rejections are before us:
1. claims 22 and 23, under 35 U.S.C. § 112(b), as indefinite (Ans.
3)2;
2. claims 1, 8, 11, and 22, under 35 U.S.C. § 102(a)(1), as
anticipated by Pacheco-Tougas3 (Final Act. 3)4;
3. claims 13, 16, 17, 20, and 23, under 35 U.S.C. § 103, as
unpatentable over Pacheco-Tougas (id. at 7); and
4. claim 12, under 35 U.S.C. § 103, as unpatentable over Pacheco-
Tougas and Kraft5 (id. at 10).
DISCUSSION
Rejection 1 — Indefiniteness
Claims 22 and 23 depend from independent claims 1 and 16,
respectively. Appeal Br. 8–9. Claims 22 and 23 additionally recite
“wherein said outlets are at a common circumferential location as said rail at
said circumferential edges.” Id. (emphasis added). Claims 1 and 16,
however, refer to the singular “an outlet.” Id. at 7–8. The Examiner thus
rejected claims 22 and 23 for lack of antecedent basis for a plurality of
outlets. Final Act. 3; Advisory Act. 2; Ans. 3.

2 The Final Action includes numerous typographical errors regarding other
claims not actually rejected under 35 U.S.C. § 112(b). Final Act. 3.
Appellant and Examiner ultimately agree that only claims 22 and 23 are so
rejected. See Appeal Br. 3; Ans. 3.
3 US 2003/0213250 A1, published Nov. 20, 2003 (“Pacheco-Tougas”).
4 Claim 22 is not listed at the beginning of the Examiner’s rejection. Final
Act. 3. However, claim 22 is rejected in the analysis provided by the
Examiner. Id. at 6.
5 US 6,427,446 B1, issued Aug. 6, 2002 (“Kraft”).
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Against this rejection, Appellant presents only conclusory attorney
argument that “a worker of ordinary skill in this art would certainly
recognize that what is meant by the claims 22 and 23 is the outlet as recited
in the independent claim,” coupled with a statement that Appellant is willing
to amend claims 22 and 23 if and when the issue raised by the Examiner in
this rejection becomes “the sole remaining issue.” Appeal Br. 3.
Appellant’s conclusory argument does not apprise us of error. We see
no reason why one skilled in the art would understand the plural recitation of
“outlets” in claims 22 and 23 to necessarily refer to the singularly recited
“outlet” of claims 1 and 16. Referencing a plurality of outlets when only
one outlet has been previously set forth, in this case, amounts to an improper
indirect limitation rendering claims 22 and 23 indefinite. See MPEP
§ 2173.05(e). We accordingly affirm Rejection 1.
Rejection 2 — Anticipation
Appellant argues the patentability of the rejected claims, namely
claims 1, 8, 11, and 22, together. Appeal Br. 3. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Pacheco-Tougas discloses a combustor (10)
within the scope of claim 1. Final Act. 3–5 (citing Pacheco-Tougas Figs. 1–
13, with particular focus on Figs. 5 and 13).
Appellant argues against the rejection solely on the basis that
Pacheco-Tougas does not teach cooling holes that are “circumferentially
aligned,” as recited in claim 1. Appeal Br. 3. For this limitation, the
Examiner cited Figures 5 and 13 and paragraph 41 of Pacheco-Tougas. See
Final Act. 4–5.
Pacheco-Tougas discloses that “the film cooling holes 32 in the outer
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front heat shield panels 18 all have a positive circumferentially oblique
orientation, whereas the film cooling holes 32 in the inner front heat shield
panels 22 all have a negative circumferential oblique orientation.” Pacheco-
Tougas ¶40. But Pacheco-Tougas discloses an “exception to the cooling
hole orientation described [in paragraph 40].” Id. ¶41. The exception
“occurs in the vicinity of the axially extending rails 50.” Id. “As shown in
FIGS. 5 and 5A, the orientation of the cooling holes 32 on each side of each
rail 50 is towards the respective rail 50.” Id. The Examiner annotates
Figure 13 to show the location of the asserted circumferentially aligned
cooling holes. Final Act. 5.
Appellant’s Appeal Brief argument is reproduced below in its
entirety:
The claims require effusion cooling holes that are
“circumferentially aligned” under rails.
The Examiner attempts to read “aligned” so broadly as to
take any meaning away from the word. However, a worker
reading this application would understand that much more is
required. Pacheco-Tougas does not disclose effusion cooling
holes extending underneath the rail to be at the claimed location.
The claims require more. A unique structure is disclosed
and claimed that provides benefits. The art does not meet these
claims. The rejection should be reversed.
Appeal Br. 3 (emphasis added).
The Examiner answers Appellant’s argument, in part, by pointing out
that “the claimed term ‘circumferentially aligned’ is not used in the
specification or the drawings.” Ans. 6. The Examiner is correct in that
regard. See generally Spec.
Appellant nonetheless argues that “paragraph 54 [sic, 55] in [sic,
Appellant’s] specification should be taken into account along with Figure
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4D to interpret ‘aligned.’ This makes clear what is meant by aligned. It
means actually physically aligned, not just pointing in the direction.” Reply
Br. 1.
Prior to the Final Action, Appellant sought to amend the
Specification, including paragraph 55, as well as various drawings and
claims. See May 22, 2018, Amendment. In the Final Action, entered June
29, 2018, the Examiner explicitly objected to the proposed replacement
drawings but did not mention the proposed amendments to the Specification.
See Final Act. Office Action Summary ¶¶10–11. In a September 19, 2018,
Advisory Action, the Examiner entered the amendments to the claims, again
not mentioning the proposed amendments to the Specification. Advisory
Act. ¶12. Hence, Appellant’s May 22, 2018, amendments to the
Specification have not been entered. Nonetheless, we reproduce below
Figure 4D along with Appellant’s proposed amendment to paragraph 55, as
it better elucidates Appellant’s claim construction position.

[0055] Figure 4D shows details of the holes 134. As
shown, an inlet to the holes 134 on the outer face 116 extends at
an angle that is non-perpendicular and non-parallel to the face
116, and each extend generally outwardly toward their respective
edges 136 and 138 such that the outlet 150 is circumferentially
aligned with the location of the rails 130. That is, the outlet 150
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is at a common circumferential location at the rails 130. The
holes 134 extend at the edge 136 and 138, at each of the
circumferential directions such that outlets 150 are is spaced
closer to each of the circumferential edges than is an inlet to the
effusion cooling holes 134.
Spec. Fig. 4D; May 22, 2018, Amendment 2 (underlining denoting material
to be added; strikethrough denoting material to be deleted).
All told, we understand Appellant’s argument to be that
“circumferentially aligned” requires cooling holes that extend under the
circumferential rail as shown in Appellant’s Figure 4D. See Appeal Br. 3
(“The claims require effusion cooling holes that are ‘circumferentially
aligned’ under rails.”). However, Appellant’s Specification does not support
construing “circumferentially aligned” so narrowly.
Although we must read Appellant’s claims in light of the
Specification, we will not read limitations from the Specification into the
claims. See Sjolund v. Musland, 847 F.2d 1573, 1581–82 (Fed. Cir. 1988)
(“[W]hile it is true that claims are to be interpreted in light of the
specification . . . , it does not follow that limitations from the specification
may be read into the claims. . . . [T]he claims define the invention.”).
Reading a requirement that the cooling holes must extend under the
circumferential rail into the term “circumferentially aligned” is particularly
inappropriate given that the Specification does not describe Figure 4D as
showing such a relationship. Indeed, nowhere does the Specification use the
term “circumferentially aligned.” Furthermore, Appellant’s Figure 3 shows
the absence of such a feature. There, the illustrated cooling hole 134 closest
to the circumferential rail 130 does not extend below (or above per the
inverted orientation shown) the rail 130.
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For the foregoing reasons, we are not apprised of error in the
Examiner’s interpretation of “circumferentially aligned with” to include
Pacheco-Tougas’s hole locations that are “angled toward” (Ans. 4 (quoting
Pacheco-Tougas ¶¶41, 65)) the circumference. Elements are reasonably
considered “aligned” in this fashion the way something is considered
“aligned” with a target. See Ans. 5 (quoting dictionary.com). Furthermore,
as the Examiner points out, even under Appellant’s proposed narrow
interpretation of “circumferentially aligned with,” Pacheco-Tougas appears
to disclose this arrangement of “effusion holes (32) having outlets (shown as
a ‘+’) extending underneath the rails.” Ans. 6. Despite Pacheco-Tougas
being assigned to Appellant,6 putting Appellant in the best position to
explain any errors this determination, Appellant has left the Examiner’s
position in this regard uncontroverted.
Accordingly, Appellant does not apprise us of error. Accordingly, we
affirm the rejection of claim 1, as well as that of claims 8, 11, and 22, which
fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Rejection 3 — Obviousness In View of Pacheco-Tougas
Claims 13, 16, 17, and 20
Appellant argues the patentability of the rejected claims, namely
claims 13, 16, 17, and 20 together. Appeal Br. 3. We select claim 13 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites “said effusion cooling holes adjacent to at least one
edge on said panel.” Appeal Br. 7. Claim 13 depends from claim 1 and
adds “wherein adjacent is defined by being spaced by a distance from said at

6 Reel/Frame: 012913 / 0045; Received: 05/24/2002.
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least one edge equal to or less than ten (10) average diameter of said
effusion cooling holes.” Id. at 8.
The Examiner acknowledges that Pacheco-Tougas does not explicitly
teach claim 13’s recitation. Final Act. 7. The Examiner found that
“Pacheco-Tougas does teach, however, that a relatively small axial distance
between consecutive rows of holes and a first row of the holes being located
extremely close to the peripheral rail wall segment increases heat extraction
through convection in this region of the panels.” Id. (citing Pacheco-Tougas
¶47). Thus, according to the Examiner, Pacheco-Tougas discloses that the
spacing between effusion cooling holes and the circumferential edges is a
result-effective variable. Id.; see Pacheco-Tougas ¶47 (“a relatively small
axial distance between consecutive rows of holes and [] the first row [being]
located extremely close to the peripheral rail wall segment . . . increases the
heat extraction through convection in this critical region of the panels”
(emphasis added)). The Examiner concluded that “since the general
conditions of the claim, i.e. that the spacing between the cooling holes and
the circumferential edges can be reduced, were disclosed in the prior art by
Pacheco-Tougas, it is not inventive to discover the optimum workable range
by routine experimentation” [and] “it would have been obvious to one of
ordinary skill” to employ the spacing recited in claim 13. Id. at 8.
Appellant argues that the Examiner’s citations and analysis are
insufficient “to render the definition of ‘adjacent’ a result effective variable
at all.” Appeal Br. 4 (emphasis added); see also id. at 5 (“[W]ithout more,
the Examiner’s argument that the definition is a ‘result-effective variable’
must fail.” (emphasis added). Appellant’s argument is inapposite to the
Rejection as articulated by the Examiner. The result-effective variable
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identified by the Examiner is not the “definition” of “adjacent” recited in
claim 13 (i.e., it is not “being spaced by a distance from said at least one
edge equal to or less than ten (10) average diameter of said effusion cooling
holes.”). Rather, the result-effective variable identified by the Examiner is
“the spacing between the cooling holes and the circumferential edges.”
Final Act. 8. The Examiner found that Pacheco-Tougas discloses that when
this variable is reduced, it has the effect of increasing heat extraction. Id.
That Appellant’s claim 13 recites its purported optimum range for the
result-effective variable is measured or expressed as a fraction of the average
diameter of the cooling holes does not apprise us of error in the Examiner’s
reasoning. First, it remains that, for any given hole diameter, the relationship
between hole proximity and heat extraction is taught by the prior art.
Pacheco-Tougas ¶47. Second, the cited portion of Pacheco-Tougas also
recognizes the importance of diameter optimization. Id.
Appellant does not apprise us of error in the rejection of claim 13.
Accordingly, we affirm the rejection of claim 13, as well as that of claims
16, 17, and 20, which fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 23
Claim 23 recites: “The combustor section as set forth in claim 16,
wherein said outlets are at a common circumferential location as said rail at
said circumferential edges.” Appeal Br. 9. Although Appellant argues this
claim separately from claims 13, 16, 17, and 20, Appellant does so in a
conclusory fashion, which does not apprise us of error. See Appeal Br. 3.
Accordingly, we affirm the rejection of claim 23.
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Rejection 4 — Obviousness In View of Pacheco-Tougas and Kraft
Claim 12 recites: “The combustor as set forth in claim 1, wherein a
spacing between adjacent ones of said effusion cooling holes in said reduced
spacing area being equal to or less than ten (10) average diameter of said
effusion cooling holes.”
For this claim, the Examiner additionally relies on Kraft, and
specifically its teaching “that the diameter of each of the holes and the
spacing of the hole from each other is sized to maximize the cooling
effectiveness of the hole pattern, improve fuel/air mixing, while at the same
time not sacrificing the structural integrity of the liner.” Final Act. 10 (citing
Kraft 2:61–3:16). Thus, according to the Examiner, Kraft discloses that the
“the spacing of adjacent holes is recognized as a result-effective variable.”
Id.; see Kraft 3:12–16 (“The diameter of each of the holes and the spacing of
the holes from each other is sized to maximize the cooling effectiveness of
the hole pattern, improve fuel/air mixing, while at the same time not
sacrificing the structural integrity of the combustion liner.”); see also
Pacheco-Tougas ¶47 (“a relatively small axial distance between consecutive
rows of holes and [] the first row [being] located extremely close to the
peripheral rail wall segment . . . increases the heat extraction through
convection in this critical region of the panels” (emphasis added)). The
Examiner concluded that “it would have been obvious to one of ordinary
skill in the art before the effective filing date of the claimed invention to
modify Pacheco-Tougas to provide the spacing of the cooling holes as taught
by Kraft in order to maximize the cooling effectiveness of the hole pattern,
while not sacrificing the structural integrity of the liner.” Final Act. 11.
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Appellant’s arguments against the rejection of claim 12 merely echo
those presented for claim 13. More specifically, Appellant argues that the
limitation added by claim 12 renders the claim nonobvious because it recites
the optimum spacing, not in direct units of length, but rather in terms of a
fraction of the average diameter of the cooling holes. Appeal Br. 5. For
reasons similar to those expressed above, this argument does not apprise us
of error.
Accordingly, we affirm the rejection of claim 12.

SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
22, 23 112(b) Indefiniteness 22, 23
1, 8, 11, 22 102(a)(1) Pacheco-Tougas 1, 8, 11, 22
13, 16, 17,
20, 23
103 Pacheco-Tougas 13, 16, 17,
20, 23

12 103 Pacheco-
Tougas, Kraft
12
Overall
Outcome
1, 8, 11–13,
16, 17, 20,
22, 23

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED