UNITED TECHNOLOGIES CORPORATIONDownload PDFPatent Trials and Appeals BoardApr 20, 202014904621 - (D) (P.T.A.B. Apr. 20, 2020) Copy Citation 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. 14/904,621 01/12/2016 Dmitrity A. Romanov 67097-2565PUS1;72913US02 1013 54549 7590 04/20/2020 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER SUTHERLAND, STEVEN M ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 04/20/2020 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 DMITRITY A. ROMANOV and BRIAN DUGUAY ____________ Appeal 2019-005237 Application 14/904,621 Technology Center 3700 ____________ Before NATHAN A. ENGELS, ERIC C. JESCHKE, and FREDERICK C. LANEY, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s decision, as set forth in the Final Office Action dated December 5, 2018, rejecting claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. BACKGROUND The disclosed subject matter “relates to controlling the radial position of a structure supported by the case during thermal transients.” Spec. ¶ 3. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies United Technologies Corporation as the real party in interest. Appeal Br. 1. Appeal 2019-005237 Application 14/904,621 2 Claims 1 and 11 are independent. Claim 1 is reproduced below, with emphasis added: 1. A radial position control assembly for a gas turbine engine comprising: a case structure; a support structure operatively supported by the case structure respectively with first and second splines engaging one another, the support structure including an annular recess; a support ring received in the annular recess, the support structure and the support ring having different coefficients of thermal expansion; and an axial biasing member urging the first and second splines into engagement with one another. REJECTIONS 1. Claims 1–19 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. 2. Claims 1–19 stand rejected under 35 U.S.C. § 112(b) as failing to particularly point out and distinctly claim the subject matter regarded as the invention. DISCUSSION Rejection 1 – Written Description A. Summary of Rejection The Examiner rejected independent claims 1 and 11, finding that those claims lack adequate written description in the Specification. See Final Act. 7–8. More specifically, the Examiner found that “the limitation ‘an axial biasing member’ [in both independent claims] invokes section Appeal 2019-005237 Application 14/904,621 3 112(f) without disclosing adequate structure for performing the recited function.” Id. at 8. According to the Examiner, “[t]he disclosure recites that the axial biasing member is component 122 in figures 5 and 8; however, the specification is silent to the structure of the component, such that it cannot be determined that applicant possessed the claimed invention at the time of disclosure.” Id. The Examiner further found that “[t]he figures do not provide enough detail to determine the form of component 122, which is shown as amorphous, and extends between 124 and 126.” Id. Dependent claims 2–10 and 12–19 are rejected under this ground based solely on their dependence from either claim 1 or 11. Appellant argues the patentability of the independent claims as a group. See generally Appeal Br.; Reply Br. We address the independent claims together, with the dependent claims standing or falling with the independent claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). B. The Applicability of 35 U.S.C. § 112(f) We first address the Examiner’s conclusion that the phrase “axial biasing member” in claims 1 and 11 invokes 35 U.S.C. § 112(f). In the Office Action, the Examiner stated that “axial biasing member” invokes § 112(f) “because it uses . . . a generic placeholder ‘member’ coupled with functional language ‘axial biasing’ . . . without reciting sufficient structure to achieve the function.” Final Act. 5.2 According to the Examiner, “the 2 The Examiner also concluded that the phrase “radial biasing member” in claims 10 and 19 invokes § 112(f), but the Examiner does not presently reject any claims based on that phrase. We thus do not address the Examiner’s conclusion as to the phrase “radial biasing member.” Appeal 2019-005237 Application 14/904,621 4 generic placeholder [(i.e., ‘member’)] is not preceded by a structural modifier.” Id. Appellant argues that “axial biasing member” does not invoke § 112(f) because “MPEP 2181 . . . recognizes an example (‘reciprocating member’), much like the axial and radial biasing members, for which § 112, ¶ 6[3] does not apply.” Appeal Br. 4 (quoting MPEP § 2181.I.A). Appellant also argues that “[a]nother skilled worker, Michael McCaffrey, inventor of now issued [U.S.] patent 9,200,530 used th[is] same term[]” and that “[t]his fact alone rebuts the Examiner’s § 112, ¶¶ l, 2 and 6 arguments since a skilled worker is the basis for rejections based on each of these paragraphs.” Appeal Br. 4. Appellant states that “the Examiner has offered no evidence concerning a skilled worker.” Id. The Federal Circuit has “stated that the use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies” and that “the failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112, para. 6 does not apply.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part) (internal citations omitted). Because “axial biasing member” does not include the word “means,” we start from the presumption that § 112(f) does not apply. 3 The Leahy-Smith America Invents Act (“AIA”) re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C. § 112(f) and included revisions to that section that became effective on September 16, 2012. Pub. L. No. 112-29, § 4(c), 4(e), 125 Stat. 284, 296–97 (2011). Because the application before us was filed after that date, we apply the AIA version of the statute. See Pub. L. No. 112- 29, § 4(e), 125 Stat. at 297. The same analysis would apply, however, even under the pre-AIA version of the statute. Appeal 2019-005237 Application 14/904,621 5 This presumption, however, is not “strong” and can be overcome “if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Here, we agree with the Examiner that the term “member” in the limitation at issue acts as a “generic placeholder” (Final Act. 5; Ans. 3)—i.e., a nonce word, similar to “mechanism,” “means,” “device,” and “element”—which “typically do[es] not connote sufficiently definite structure.” Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (“MIT”), cited in Williamson, 792 F.3d at 1350. And we also agree with the Examiner that the modifying phrase “axial biasing” in the limitation at issue merely provides a functional description of the generic “member.” See Final Act. 5 (stating that “axial biasing” provides “functional language . . . without reciting sufficient structure to achieve the function”); Ans. 3 (stating that “axial biasing” “describe[s] the function of the member[] . . . and not the mechanical structure of the member[]”). When addressing similar claim limitations—i.e., ones reciting a functional descriptor combined with a generic placeholder—the Federal Circuit has consistently determined that the predecessor to § 112(f) applied. For example, in MIT, the court determined that “colorant selection mechanism” did not connote sufficient structure to one of ordinary skill in the art and that § 112 ¶ 6 applied. See MIT, 462 F.3d at 1354. Specifically, the court viewed “mechanism” as not alone connoting sufficient structure and determined that “colorant selection” was not defined in the specification or otherwise understood to one of ordinary skill in the art. Id. at 1353–54. Appeal 2019-005237 Application 14/904,621 6 As another example, in Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214, 1215 (Fed. Cir. 1998), the court held that the district court was correct to apply § 112 ¶ 6 to the recited “lever moving element” because that limitation was “described in terms of its function not its mechanical structure” and was correct to apply § 112 ¶ 6 to the recited “moveable link member” (emphasis added) because that phrase does not “provide any structure as necessary to remove th[e] limitation from the ambit of section 112, ¶ 6.” See also Williamson, 792 F.3d at 1349–51 (holding that § 112 ¶ 6 applied to “distributed learning control module” because “‘[m]odule’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6” and “[t]he prefix ‘distributed learning control’ does not impart structure into the term ‘module’”). In contrast, for example, in Lighting World, Inc. v. Birchwood Lighting, Inc., the court determined that “connector assembly” recited sufficient structure (such that § 112 ¶ 6 did not apply), but the court based the analysis on evidence that “connector”—rather than “assembly”—would have been understood by one of skill in the art to denote structure. 382 F.3d 1354, 1359–63 (Fed. Cir. 2004), overruled by Williamson, 792 F.3d at 1349 (“expressly overul[ing] the characterization of th[e] presumption [based on the absence of ‘means’] as ‘strong’”). Here, in line with the Examiner’s position, we view the “axial biasing member” limitation as more similar to the language in MIT and Mas-Hamilton, and less similar to the language in Lighting World. Further supporting the application of § 112(f) here, the balance of the claim language in the clauses reciting “axial biasing member” merely provide additional description of the function(s) performed rather than Appeal 2019-005237 Application 14/904,621 7 description of the relevant structure. See Appeal Br. 8 (Claims App.) (claim 1 – reciting “an axial biasing member urging the first and second splines into engagement with one another”), 10 (claim 11 – reciting “an axial biasing member urging the first and second splines into engagement with one another while accommodating misalignment between the first and second splines from non-uniform circumferential gaps between the segments”). See MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019 (“In assessing whether the claim limitation is in means-plus-function format, we do not merely consider the introductory phrase (e.g., ‘mechanical control assembly’) in isolation, but look to the entire passage including functions performed by the introductory phrase.”). Quoting the Federal Circuit’s decision in Williamson, 792 F.3d at 1349, Appellant states: “The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Appeal Br. 4; see also id. at 3 (quoting a similar standard from MPEP § 2181(I)(A)). According to Appellant, “[a] skilled worker would clearly understand that the axial . . . biasing members are resilient, spring-like structures in at least a partially compressed state.” Id. Although Appellant provides the applicable standard, we agree with the Examiner that the stated understanding of one of ordinary skill in the art is not supported by any record evidence, and is instead mere attorney argument. See Ans. 3 (§ 2, ¶ 3); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). As to Appellant’s reliance on “reciprocating member” being held to not invoke § 112 ¶ 6 in the context of the Federal Circuit’s decision in CCS Appeal 2019-005237 Application 14/904,621 8 Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) (Appeal Br. 4 (discussing MPEP § 2181(I)(A)), we agree with the Examiner that the decision there is distinguishable. As noted by the Examiner, in CCS Fitness, the “reciprocating member” was determined not to invoke § 112 ¶ 6 because it was “modified by sufficient structure in the claim.” Ans. 3 (citing CCS Fitness, 288 F.3d at 1369–70); see CCS Fitness, 288 F.3d at 1370 (discussing how “the claims themselves describe the ‘member’ as having a ‘rear support and a front end’ with one end of this structure circulating around a crankshaft and the other having wheels so that it can ‘rollably engage the base portion’ of the claimed invention”). In contrast, the recitations of “axial biasing member” in the claims here provide either its function (claims 1 and 11, last clauses) or its location (claim 2), rather than any structural description. In addition, the Federal Circuit determined there that “member” “ha[d] an established meaning” in the context of the invention at issue there. CCS Fitness, 288 F.3d at 1362. Here, in contrast, we have no such evidence—only attorney argument (as discussed above). Further, Appellant’s reliance on the presence of the phrase “axial biasing member” in U.S. Patent No. 9,200,530 is misplaced. As noted by the Examiner (and not contested by Appellant), the ’530 patent is not related to the instant application. See Ans. 4 (“Invocation of section 112(f) does not relate to the presence of the same claim limitations in an unrelated patent.”); see also Reply Br. 2 (“The present application does not have to claim priority or incorporate by reference the USPN 9,200,530; that is irrelevant.”). Appellant contends that, regardless, “[t]he ’530 patent is relevant for establishing what a skilled worker in the art understands with regard to ‘axial biasing member’” and that “[t]he same term[ is] used by the Appeal 2019-005237 Application 14/904,621 9 same inventor (by definition, a skilled worker) in the same art area.” Reply Br. 2. In neither brief, however, does Appellant address the Examiner’s findings—stated in the Office Action and repeated in the Answer—that the ’530 patent uses “axial biasing member” in a different way than the instant application. Specifically, the Examiner finds that the “axial biasing member” in the ’530 patent “comprises a generally rectangular shape, which is different from the shape disclosed in the drawings of the instant application, and is also described as a seal in Col. 7, ll. 48–50” whereas, “[i]n the instant application, axial biasing member 122 is not described as a seal in the specification.” Final Act. 10; Ans. 4 (“The axial biasing member (116) in [the ’530 patent] is structurally different than the axial biasing member (122) shown in figure 5 of the instant application.”). We determine that the disparate uses of “axial biasing means” further supports the application of § 112(f) here. See MTD Prods., 933 F.3d at 1344 (determining that “mechanical control assembly” invokes § 112 ¶ 6 and noting that the patent challenger in an inter partes review “did not dispute [the patent owner’s] reliance on various prior patents and publications that used ‘mechanical control assembly’ to describe a wide variety of structures with varying functions”). Finally, we are not persuaded of error by Appellant’s assertion that the relied-upon disclosures in the Specification here (e.g., Spec. ¶¶ 65, 68, Fig. 5) “provide definition to a skilled worker as to what the axial . . . members are” and thereby avoid application of § 112(f). Reply Br. 2; Appeal Br. 3 (stating, in a section on the applicability of § 112 ¶ 6, that “the ‘axial biasing member’ [is] described in the specification”). This argument conflates the determination of whether a claim term invokes § 112(f) with the subsequent Appeal 2019-005237 Application 14/904,621 10 review (if § 112(f) is invoked) of the specification to identify the structure that performs the claimed function(s). See MTD Prods., 933 F.3d at 1344 (“[T]his view would seem to leave § 112, ¶ 6 without any application: any means-plus-function limitation that met the statutory requirements, i.e., which includes having corresponding structure in the specification, would end up not being a means-plus-function limitation at all.”). For these reasons, Appellant has not shown error in the Examiner’s determination that § 112(f) applies to the phrase “axial biasing member.” C. Analysis of Written Description The test for compliance with the written description requirement is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Having determined that § 112(f) applies, we now look to whether the Specification discloses sufficient structure that corresponds to the claimed function(s). See Williamson, 792 F.3d at 1351. Addressing the Examiner’s determination summarized above that the Specification did not disclose sufficient structure corresponding to the “axial biasing member” to demonstrate possession of the claimed invention (Final Act. 7–8), Appellant argues that “[t]he axial biasing member is illustrated as element 122 in Figure 5 and described in ¶0069.” Appeal Br. 4. According to Appellant, “[t]his language, taken with Figure 5, communicates that the axial biasing member is a resilient, spring- like structure in at least a partially compressed state.” Id. at 4–5. We are not apprised of error by this argument because, again, we agree with the Examiner’s position that Appellant’s asserted understanding Appeal 2019-005237 Application 14/904,621 11 of one of ordinary skill in the art is not supported by any record evidence. See Ans. 5 (first full paragraph); In re Pearson, 494 F.2d at 1405 (“Attorney’s argument in a brief cannot take the place of evidence.”). Here, the record supports the Examiner’s position that, for example, paragraph 69 and Figure 5 (along with the claim language at issue) describe the function and location of the “axial biasing member” but do not provide “sufficient detail” as to its “structure.” Ans. 4 (emphasis omitted) (discussing MPEP § 2163(I)). We are also not persuaded by Appellant’s argument that the Examiner held the Specification here to an improperly high standard. See Reply Br. 2 (“[T]he Examiner essentially argues that since a blueprint of the axial . . . biasing member[] is not provided then written description is not met.”). For the reasons above, Appellant has not shown error in the Examiner’s finding that the Specification does not disclose sufficient structure corresponding to the “axial biasing member” to demonstrate possession of the claimed invention. Thus, we sustain the rejection of claims 1 and 11 under § 112(a). Claims 2–10 and 12–19 fall with those claims. Rejection 2 – Indefiniteness The Examiner rejected claims 1 and 11, determining that those claims are indefinite. See Final Act. 8–9. More specifically, the Examiner stated that “the limitation ‘an axial biasing member’ invokes section 112(f) without disclosing adequate structure for performing the recited function.” Id. at 8. According to the Examiner, “[t]he disclosure only recites that the axial biasing member is component 122 in figures 5 and 8; however, the specification is silent to the structure of the component, such that it unclear Appeal 2019-005237 Application 14/904,621 12 what structure is use to carry out the function of axial biasing, rendering the claims vague and indefinite.” Id. at 8–9. Dependent claims 2–10 and 12–19 are rejected under this ground based solely on their dependence from either claim 1 or 11. Appellant again argues the patentability of the independent claims as a group. See generally Appeal Br.; Reply Br. We address the independent claims together, with the dependent claims standing or falling with the independent claims. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that “MPEP 2181 sets for[th] guidelines as to whether a §112, ¶2 rejection is proper where §112, ¶6 has been applied” and that “[t]here, Examiners are reminded that if there is corresponding structure in the specification (e.g., the drawings) then the claims are definite.” Appeal Br. 5. Appellant argues that axial biasing member 122 is “shown in multiple figures, such as Figure 5.” Id. Appellant’s arguments do not apprise us of error. The passage from MPEP § 2181 does not support Appellant’s assertion that “if there is corresponding structure in the specification (e.g., the drawings) then the claims are definite.” Appeal Br. 5. Instead, the passage provides that “drawings may provide a written description of an invention as required by 35 U.S.C. 112” (MPEP § 2181(III) (emphasis added) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir 1991)), and the balance of that section of the MPEP makes clear that the test here is one of sufficiency of disclosure, not merely whether the feature at issue is depicted at all. See, e.g., MPEP § 2181(III) (“A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the written description fails to link or associate the disclosed structure, material, or acts to the claimed Appeal 2019-005237 Application 14/904,621 13 function, or if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function.”) (emphasis added); In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc) (“[I]f one employs means-plus-function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.”) (emphasis added). Appellant continues that “[t]here is no doubt that a designer of a gas turbine engine from Figure 5 . . . and the accompany text in the disclosure link the structure to the function of [the] ‘axial biasing’ . . . member 122.” Appeal Br. 6. The issue here, however, is not a failure to link axial biasing member 122 to the claimed function (cf. Appeal Br. 6); instead, the issue is the lack of clarity as to the nature of the structure of the “axial biasing member.” Here, the record supports the Examiner’s position that, even though Figure 5 depicts an axial biasing member 122, and even considering that Figure and the other relied-upon aspects of the Specification, “it is unclear what type of structure is being used to [perform the recited function of] bias[ing] the first and second splines into engagement.” Ans. 5. Appellant also argues that the “inventor of the ’530 patent recognized and understood the meaning of ‘axial biasing member.’” Appeal Br. 6. We are not apprised of error based on the presence of the term “axial biasing member” in the ’530 patent. In the context of this Rejection, Appellant has again not addressed the Examiner’s findings that “axial biasing member” was used in a different way in the ’530 patent, which supports a finding that Appeal 2019-005237 Application 14/904,621 14 there is no understood meaning of the term at issue. See Ans. 5–6 (stating that “the axial biasing member (116) shown in patent 9,200,530 is a different shape from the biasing member in the instant application, used for a different purpose (compressing seal 114 opposite seal 116), and is described as a seal in patent 9,200,530”). For the reasons above, Appellant has not shown error in the Examiner’s determination that the Specification did not disclose sufficient structure corresponding to the “axial biasing member” to satisfy the definiteness requirement. Thus, we sustain the rejection of claims 1 and 11 under § 112(b). Claims 2–10 and 12–19 fall with those claims. CONCLUSION We affirm the Examiner’s rejection of claims 1–19. More specifically, we affirm the decision to reject claims 1–19 under 35 U.S.C. § 112(a) and we affirm the decision to reject claims 1–19 under 35 U.S.C. § 112(b). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–19 112(a) Written Description 1–19 1–19 112(b) Indefiniteness 1–19 Overall Outcome 1–19 Appeal 2019-005237 Application 14/904,621 15 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 Copy with citationCopy as parenthetical citation