UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Mar 30, 2020

14774308 - (D) (P.T.A.B. Mar. 30, 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.
14/774,308 09/10/2015 Julian Partyka 64507US02 (15-129) 5429
52237 7590 03/30/2020
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
HEWITT, JAMES M
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
03/30/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIAN PARTYKA, SCOTT D. VIRKLER, and
JONATHAN P. SANDOVAL
Appeal 2019-004768
Application 14/774,308
Technology Center 3600
Before JENNIFER D. BAHR, JAMES P. CALVE, and LEE L. STEPINA,
Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6 and 8–14.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

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 United
Technologies Corporation. Appeal Br. 2.
2 Claims 15 and 16 have been withdrawn from consideration. Final Act. 1
(Office Action Summary).
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Application 14/774,308

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a coupling mechanism for
rotational elements.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative
of the claimed subject matter.
1. A curvic seal for a curvic coupling that transfers torque
between a first component and a second component along an
engine central longitudinal axis of a gas turbine engine
comprising:
a cylindrical seal with a retention feature.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Toborg US 5,628,621 May 13, 1997
Ress US 6,076,835 June 20, 2000
Weaver US 2008/0053107 A1 Mar. 6, 2008

REJECTIONS3
Claims 1–4 and 11 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Ress.

3 Subsequent to the Final Action, Appellant amended claim 4 in an attempt
to overcome the rejection of claim 4 under 35 U.S.C. § 112(b) for lack of
antecedent basis. See Amendment (Oct. 18, 2018) 6; Final Act. 4 (rejecting
claim 4 as lacking proper antecedent basis for “said blind module
assembly”). The Examiner entered the Amendment. Advisory Act. 1.
However, the Examiner does not expressly indicate whether the rejection
under 35 U.S.C. § 112(b) has been withdrawn. See id. at 2 (addressing only
the rejections under 35 U.S.C. §§ 102(a)(1) and 103); Ans. 3–11 (not
identifying any withdrawn rejections, but only addressing the rejections
under 35 U.S.C. §§ 102(a)(1) and 103). Inasmuch as the amendment to
claim 4 specifically alters the language to which the rejection was directed,
and neither Appellant nor the Examiner mentions the rejection in the
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Claims 5, 6, 8–10, and 12–14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Toborg in view of Ress or Weaver.
OPINION
Rejection I—Anticipation
Claims 1, 3, and 4:
In contesting the Examiner’s finding that Ress anticipates the subject
matter of claim 1, Appellant’s only argument is that the language “a curvic
seal for a curvic coupling that transfers torque between a first component
and a second component along an engine central longitudinal axis of a gas
turbine engine” in claim 1 “specifically locates the curvic seal along the
engine axis for a curvic coupling that transfers torque.” Appeal Br. 9–10.
This argument is not correct. As the Examiner correctly points out, “the
recitation ‘for a curvic coupling that transfers torque between a first
component and a second component along an engine central longitudinal
axis of a gas turbine engine’ is intended use and does not require the seal to
be located along the engine axis of a curvic coupling.” Ans. 4.
In general, a preamble limits the claimed invention “if it recites
essential structure or steps, or if it is ‘necessary to give life, meaning, and
vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). The preamble limits
claim scope when it is essential to understand limitations or terms in the

briefing, we assume the Examiner intended to withdraw the rejection, and
decline to address it in our decision, instead leaving it to the Examiner to
clarify whether such a rejection is still appropriate upon return of jurisdiction
of this application to the Examiner.
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claim body. Id. Conversely, a preamble is not limiting where a structurally
complete invention is defined in the claim body and the preamble only states
a purpose or intended use for the invention. Id.
The preamble of Appellant’s claim 1 recites structure, namely, a
curvic seal. The remainder of the preamble—for a curvic coupling that
transfers torque between a first component and a second component along an
engine central longitudinal axis of a gas turbine engine—recites an intended
use for the curvic seal. The preamble does not, as Appellant contends, recite
a curvic seal located along an engine central longitudinal axis of a gas
turbine engine. Further, the body of claim 1 recites a structurally complete
invention, namely, “a cylindrical seal with a retention feature,” defined by
terms that a person having ordinary skill in the art can understand without
resort to the language in the preamble. See Advisory Act. 2 (stating that
“[t]he body of the claim ‘a cylindrical seal with a retention feature’ can stand
alone”). Moreover, if this intended use connotes other structure as Appellant
argues (see Appeal Br. 10), it is unclear what that structure is beyond the
retention feature recited in the body of claim 1. The summary of claimed
subject matter in the Appeal Brief describes the curvic seal 68 as including a
cylindrical seal with a retention feature. Appeal Br. 6. It does not describe
any other structure for the curvic seal.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s finding that Ress anticipates the subject matter of claim 1.
Accordingly, we sustain the rejection of claim 1, as well as claims 3 and 4,
for which Appellant does not present any separate arguments (see Appeal
Br. 9–14) and which thus fall with claim 1 pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv), as anticipated by Ress.
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Claim 2:
Appellant argues that “Ress simply does not disclose or suggest a U-
shaped retention feature,” as recited in claim 2. Appeal Br. 10. This
argument is not persuasive. The Examiner reads the claimed retention
feature on flange portion 42 of Ress’s sealing member 20. Final Act. 5. As
the Examiner points out on page 5 of the Answer, Ress expressly describes
flange portion 42 as being “in the approximate shape of the letter ‘U’,
incorporating opposing first and second legs 42a and 42c, respectively
joined by common side 42b.” Ress 3:27–29; see also id. 3:12–13
(describing flange portion 42 as “being generally U-shaped”). Moreover,
Ress discloses that flange portion 42 performs a retention function. See id.
3:44–49.
Responding to the Examiner’s remarks regarding claim 2 on page 2 of
the Advisory Action, Appellant argues that rotating Ress’s Figure 3 “90
degrees so that the slot in the circular seal is at the top of the page” would
not make the circle U-shaped. Appeal Br. 11. According to Appellant, “[a]
circular seal is still a circular seal no matter where the slot is located.” Id.
Appellant’s argument misunderstands the point the Examiner is making. In
the Advisory Action, the Examiner states that “turning Fig. 3 90 degrees
counter-clockwise, seal (20) is U-shaped.” Advisory Act. 2. In the Answer,
the Examiner explains that flange portion 42 of Ress’s sealing member 20 is
U-shaped, and reproduces Figure 3 of Ress, rotated 90 degrees
counterclockwise, to better illustrate the U shape of flange portion 42.
Ans. 5–6. The Examiner’s position is not, as Appellant’s argument suggests,
that the annular, or circular, shape of Ress’s split ring sealing member 20, as
illustrated, for example, in Figure 2, can be considered to be U-shaped by
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virtue of the slot, when sealing member 20 is rotated so the slot is positioned
on top. Rather, the Examiner’s position is that Ress’s sealing member 20
includes a U-shape (flange portion 42) regardless of the orientation of
Figure 3, and the Examiner provides a rotated version of Figure 3 merely to
identify the U-shape more clearly.
To the extent that Appellant may be arguing that because Ress’s
U-shaped flange portion 42 extends around the full circumference of sealing
member 20, it is circular, and not U-shaped, this position is untenable when
construing the “U-shaped” limitation consistent with Appellant’s underlying
disclosure. Appellant’s retention feature 74 is U-shaped in a longitudinal
cross-sectional view, as depicted, for example, in Appellant’s Figure 3, but
this U shape extends around the entire circumference of curvic seal 68, as
shown in Appellant’s Figure 4. Likewise, flange portion 42 of Ress’s
sealing member 20 is U-shaped in a longitudinal cross-sectional view, as
depicted, for example, in Ress’s Figure 3. Thus, Ress’s flange portion 42 is
“U-shaped” when reading this terminology consistent with the underlying
disclosure in the present application.
Appellant also argues that “claim 2 is directed to the retention feature
being U-shaped which, as shown in Appellant's Fig. 3, engages rib 76 such
that the U-shaped retention feature is U-shaped with respect to the engine
axis which completely obviates the Examiner’s interpretation.” Appeal
Br. 11. This argument is unavailing because it is not commensurate with the
scope of claim 2, which is directed only to a curvic seal and does not
positively recite an engine.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 2 as anticipated by Ress, which we, thus, sustain.
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Claim 11:
Claim 11 depends from claim 1 and further recites that the “retention
feature is shaped to interface with an inner rim that extends from an inner
surface of a cylindrical component such that said cylindrical seal is axially
locked to said first component to facilitate blind module assembly of said
first component and said second component.” Appeal Br. 18 (Claims App.).
The Examiner interprets this language as requiring only that “the retention
feature have a shape that is capable of interfacing with an inner rim that
extends from an inner surface of a (given) cylindrical component such that
said cylindrical seal is axially locked to said first component to facilitate
blind module assembly of said first component and said second component.”
Final Act. 7. The Examiner finds that Ress’s U-shaped retention feature
(flange portion 42) satisfies this claim language because
it is shaped in such a way that it is capable of interfacing with
an inner rim that extends from an inner surface of a (given)
cylindrical component such that said cylindrical seal is axially
locked to said first component to facilitate blind module
assembly of said first component and said second component.
Ans. 8.
Even assuming that the Examiner’s interpretation of the “shaped to
. . .” language of claim 11 is correct, the Examiner does not set forth any
factual findings to establish, by a preponderance of the evidence, that Ress’s
flange portion 42 is shaped in such a way that is capable of performing this
function. Merely stating that Ress’s flange portion 42 is so shaped does not
make it so. To be clear, once an examiner establishes a reasonable basis that
the prior art is capable of performing the claimed function, the burden shifts
to the applicant to show that the prior art structure is not capable of
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performing the claimed function. In re Schreiber, 128 F.3d 1473, 1478
(Fed. Cir. 1997). However, in this case, the Examiner does not make the
factual findings necessary to establish such a reasonable basis and shift the
burden to Appellant to show that this is not the case. In Schreiber, for
example, the court found that an embodiment of the prior art and the
embodiment disclosed in the appellant’s application had “the same general
shape,” thereby justifying the examiner’s conclusion that the prior art
inherently had a size and shape capable of performing the recited function.
Id. A comparison of Figures 2 and 3 of Ress with Appellant’s Figures 3 and
4 reveals that this is not the case here. Thus, the basis for the Examiner’s
finding of anticipation is not sufficiently clear, absent supporting factual
findings and/or explanation.
For the above reason, we do not sustain the rejection of claim 11 as
anticipated by Ress.
Rejection II—Obviousness
The Examiner finds that Toborg discloses a curvic joint assembly
comprising curvic coupling 22 and a curvic seal (annular seal 32) spanning
the curvic coupling. Final Act. 9. The Examiner finds that
Toborg fails to teach that the curvic seal comprises
includes an axial retention feature that interfaces with an inner
rim that extends from an inner surface of said first component
such that said curvic seal is axially locked to said first
component to facilitate blind module assembly of said first
component and said second component along the engine central
longitudinal axis (Fig. 4).
Final Act. 10.
The Examiner finds that “Ress teaches a similar curvic seal (20) in a
gas turbine engine and having an axial retention feature (40/42/46) that
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interfaces with an inner rim that (57) extends from an inner surface of said
first component such that said curvic seal is axially locked to said first
component.” Final Act. 10. The Examiner additionally finds that
Weaver also teaches a similar curvic seal (300) in a gas turbine
engine (figures; [0001]-[0003]) and having an axial retention
feature (306/307/312) that interfaces with an inner rim that
(335/337) extends from an inner surface of said first component
such that said curvic seal is axially locked to said first
component.
Final Act. 10.
The Examiner determines it would have been obvious “to modify
Toborg’s seal to be shaped like that of Ress and/or Weaver so as to have a
U-shaped retention feature in order to better retain the seal to the turbine
structure.” Final Act. 10 (emphasis added).
Appellant argues that “there is simply no ‘teaching, suggestion, or
motivation to combine the references as proposed.” Appeal Br. 14. In
particular, Appellant contends that “Toborg discloses an interface of a
rotational structure,” and that “[t]his is in contrast to Ress[,] which is a
sealing member for a sealing between static engine case members.” Id. at
15. Thus, Appellant submits that “the Examiner is essentially attempting to
propose a combination between two mutually exclusive structures which
necessarily have disparate static and dynamic forces applied thereto on the
most basic level, e.g., static vs. rotational.” Id. According to Appellant,
“[t]his alone undermines the motivation for the proposed combination.” Id.
Appellant adds that “[t]he Examiner is apparently mixing and matching
various interfaces, and various structures which are combined in a piecemeal
manner” and that this is improper hindsight. Id. at 16.
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Appellant’s arguments contesting this rejection address only the
combination of Toborg and Ress. The Examiner sets forth an alternative
basis for the obviousness rejection, namely, a combination of Toborg and
Weaver. See Final Act. 9 (stating that claims 5, 6, 8–10, and 12–14 are
rejected as “unpatentable over Toborg . . . in view of: Ress . . . or Weaver”),
10 (determining it would have been obvious “to modify Toborg’s seal to be
shaped like that of Ress and/or Weaver”). Appellant does not point out why
the Examiner’s findings or reasoning in combining Toborg and Weaver are
in error or deficient in establishing that the subject matter of claim 5 would
have been obvious.
For the above reasons, Appellant fails to apprise us of error in the
rejection of claim 5. Accordingly, we sustain the rejection of claim 5, as
well as claims 6, 8–10, and 12–14, for which Appellant does not present any
separate arguments (see Appeal Br. 14–16), under 35 U.S.C. § 103, on the
basis of the combination of Toborg and Weaver.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 11 102(a)(1) Ress 1–4 11
5, 6, 8–10,
12–14
103 Toborg, Ress/Weaver 5, 6, 8–10,
12–14

Overall
Outcome
1–6, 8–10,
12–14
11

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Application 14/774,308

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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 IN PART