UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

May 4, 2020

2019005782 (P.T.A.B. May. 4, 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.
14/432,442 03/30/2015 Chris J. Niggemeier PA-0024261-US-AA 2684
11943 7590 05/04/2020
Getz Balich LLC
10 Waterside Drive, Suite 205
Farmington, CT 06032
EXAMINER
KIM, CRAIG SANG
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
shenry@getzbalich.com
uspto@getzbalich.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS J. NIGGEMEIER, KARL D. BLUME,
JOHN H. MOSLEY, and ANDREAS SADIL
Appeal 2019-005782
Application 14/432,442
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, 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 and 3–20. See Final Act. 1. 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
Corp. Appeal Br. 3.
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Application 14/432,442

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to inner diffuser case struts for a
combustor of a gas turbine engine. Claims 1, 5, and 10 are independent.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An inner diffuser case for use in a combustor of a gas
turbine engine comprising:
an outer shroud;
an inner shroud;
an annular flow path defined by and between the outer and
inner shrouds; and
a multiple of struts extending across the annular flow path,
the multiple of struts including a multiple of open struts and a
multiple of solid struts.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rofka US 2009/0067984 A1 Mar. 12, 2009
Wong US 2010/0307165 A1 Dec. 09, 2010
Danis US 8,387,358 B2 Mar. 05, 2013

REJECTIONS
I. Claim 1, 3, 5–10, and 12–20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Danis and Wong. Final Act. 2.
II. Claims 4 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Danis, Wong, and Rofka. Final Act. 6.

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OPINION
Rejection I –Danis and Wong
Claims 1, 3, 5–10, 12–17
The Examiner finds that Danis discloses, inter alia, multiple struts
including open struts, but is silent as to solid struts. Final Act. 2. The
Examiner finds that Wong discloses a plurality of solid struts. Final Act. 3.
According to the Examiner, because Danis only uses (supplies with steam)
certain open struts, it would have been obvious to replace the unused open
struts with I-beam solid struts, which, the Examiner finds, Wong teaches are
“lighter and still provide comparable strength and stiffness.” Final Act. 3
(citing Wong ¶ 27).
Appellant argues that Figure 5 of Danis, upon which the Examiner
relies, depicts all open struts that are all intended to be used, i.e., fluidly
coupled with steam cavity 52. Appeal Br. 8–9. Appellant asserts that “there
is no teaching or suggestion in Danis that only three of its struts 12 need to
be open struts as alleged in the Office Action.” Appeal Br. 9.
Appellant also contends that a proper reading of Wong is that Wong’s
struts require a fairing, and that there would have been no motivation to
replace the strut 12 of Danis with only an I-beam strut rather than a strut and
a fairing as taught by Wong. Appeal Br. 10. Appellant thus argues that
replacing a strut of Danis with one from Wong would still result in the use of
only hollow struts because the fairing/strut combination taught by Wong is
hollow. Id.
The Examiner responds that Danis teaches that not all struts are to be
fluidly coupled, because “Danis specifically states that it is not often
possible or feasible to evenly or uniformly distribute steam from the outer
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supply header to all of the struts.” Ans. 7 (citing Danis, 5:30–47). As to the
combination with Wong, the Examiner states that not all embodiments of
Wong require fairings, and moreover, the rejection relies only on the
teaching of a solid strut, not the combination of a strut and a fairing. Id.
(citing Wong, Fig. 2.); see also Final Act. 2 (“Regardless of the use of the
fairing or not, the strut itself is solid.”).
In reply, Appellant argues that Figure 5 of Danis illustrates that each
of struts 12 is open, and Danis discloses that each of the ten struts 12
depicted in Figure 5 is hollow. Reply Br. 2–4 (citing Danis, 5:39–40).
Appellant asserts that even if Danis depicts steam in only three out of the ten
struts, this does not suggest that the other struts need not be open. Reply Br.
4.
As to Wong, Appellant asserts that because each strut 12 of Figure 4
of Wong includes a hollow fairing, there is no suggestion that a person of
skill in the art would replace the strut 12 of Danis with only an I-beam strut
of Wong without a fairing. Id. According to Appellant, because Wong
teaches a strut assembly having a hollow fairing, Wong does not suggest a
solid strut. Reply Br. 5.
The Examiner has the better position. In the Figure 5 embodiment,
Danis discloses that steam is supplied to “three out of the ten hollow struts
12” (Danis, 5:40), and this disclosure supports the Examiner’s finding (Final
Act. 3) that Danis does not require all of its struts to be hollow. Further,
Figure 5 relates to only one embodiment of Danis. Danis also explicitly
states that “one or more of the struts 12 are hollow” (Danis, 4:3–4), which
implies that not all struts in Danis are required to be hollow. A reference
must be considered for everything that it teaches, not simply the described
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invention or a preferred embodiment. In re Applied Materials, Inc., 692
F.3d 1289, 1298 (Fed. Cir. 2012). Contrary to Appellant’s assertion, Danis
does not require that “all of its struts 12 need to be open.” Appeal Br. 9.
As to Appellant’s argument that Wong’s Figure 4 uses a hollow
fairing with a strut, Appellant appears to ignore that the Examiner finds that
Figure 2 of Wong does not include a fairing. Specifically, Wong discloses
that Figure 2 depicts strut assembly 114 having multiple (solid) struts 300
that exhibit an I-beam configuration. Wong ¶ 19; Ans. 7. We do not find
persuasive Appellant’s argument that any replacement of Danis’s hollow
strut with the strut of Wong would require that both Wong’s I-beam strut
and fairing are used. Appellant does not contest the Examiner’s finding that
an I-beam strut would be lighter and still provide comparable strength and
stiffness. See Appeal Br. The Examiner’s finding of fact on this point does
not rely on also modifying Danis to include a fairing.
For these reasons, we are not apprised of error in the Examiner’s
determination that it would have been obvious to replace ones of Danis’s
open struts that are not being used for fluid communication with Wong’s I-
beam solid struts.
Appellant does not provide additional arguments directed to
independent claims 5 and 10 (see Appeal Br. 13–14), and dependent claims
3, 6–9, and 12–17, and therefore those claims fall with claim 1.
Claims 18 and 19
Claim 18 recites “a first of the multiple of open struts is arranged
circumferentially between and adjacent to an adjacent pair of the multiple of
solid struts.” Appeal Br. 18 (Claims App.). Claim 19 recites, in part, “the
second of the multiple of solid struts is arranged circumferentially between
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and adjacent to the first of the multiple of solid struts and a second of the
multiple of open struts.” Id. at 19.
In rejecting claims 18 and 19, the Examiner relies on explanatory
Figures reproduced below.

The Examiner’s explanatory Figures depict a schematic diffuser case
having 10 struts with open struts shown by dashed lines and closed struts
shown by solid lines. See Final Act. 4–5. The Examiner circles various
ones of the struts to indicate which struts are relied on to meet the claim
limitations. Id.
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Appellant argues that the Examiner’s Figures depict the open strut
adjacent to other open struts not adjacent to solid struts. Appeal Br. 11–13.
The Examiner responds that “Merriam Webster defines adjacent as
‘not distant; nearby’.” Ans. 7. According to the Examiner, the struts in the
Examiner’s Figures “can reasonably considered to be nearby to each other.”
Id.
Appellant replies that even if “nearby” is a reasonable definition of
adjacent, a person of skill in the art would not consider the Examiner’s
denoted solid struts to be nearby the open strut since the circled open and
solid struts are separated from one another by at least another open strut.
Reply Br. 5.
Although we appreciate that in certain contexts, the term “adjacent”
can mean “not distant or nearby,” the Examiner does not explain adequately
why such an interpretation is the broadest reasonable interpretation
consistent with the Specification. “The correct inquiry in giving a claim
term its broadest reasonable interpretation in light of the Specification ... is
an interpretation that corresponds with what and how the inventor describes
his invention in the Specification, i.e., an interpretation that is ‘consistent
with the specification.”’ In re Smith International, Inc., 871 F.3d 1375,
1382–1383 (Fed. Cir. 2017). Here, Appellant’s Specification depicts an
embodiment of solid and open struts in Figure 4, reproduced below.
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Figure 4 is a front view of the inner diffuser case. Spec. ¶ 17.
In Figure 4, inner diffuser case 64-I has a multiple of open struts 102A
and a multiple of solid struts 102B. Spec. ¶ 36. Each open strut 102A is
between and next to a pair of solid struts 102B. Thus, consistent with the
Specification, one of ordinary skill in the art would reasonably understand
the term “adjacent” to mean next to. By contrast, under the Examiner’s
definition, all struts disclosed by Appellant would be “nearby” other struts.
For example, for the claim 19 limitation, “the second of the multiple of solid
struts is arranged circumferentially between and adjacent to the first of the
multiple of solid struts and a second of the multiple of open struts,” the
Examiner finds that second solid strut C is adjacent to first solid strut A and
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open strut D, with the Examiner apparently ignoring the unlabeled additional
solid struts between C and D. See Ans. 5–6. Moreover, claims should not
be construed so broadly as to vitiate an express claim limitation. See
Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997)
(each element in a claim is material to defining the scope of the invention.).
By the Examiner interpreting “adjacent” to allow all struts to be adjacent to
each other, the Examiner is vitiating the term “adjacent.” For these reasons,
the Examiner appears to be relying on an unreasonably broad interpretation
of the term “adjacent.” The Examiner’s unreasonably broad claim
interpretation led to the Examiner's incorrect finding that Danis and Wong
disclose the claimed strut arrangement. Accordingly, we do not sustain the
rejection of claims 18 and 19.
Claim 20
Claim 20 recites “wherein each of the multiple of struts comprises an
exterior surface exposed to gas flowing through the annular flow path.”
The Examiner finds that Danis’s Figure 3 depicts gas 89 in contact
with the exterior of the struts in flow path 57. See Final Act. 6.
Appellant argues that because Wong requires a fairing that covers the
strut, the fairing and not the strut would be in contact with the gas. Appeal
Br. 13.
The Examine responds that only the strut is relied upon in the
rejection of claim 20, consistent with the embodiment of Figure 2 of Wong,
which, the Examiner finds, discloses struts without fairings. Ans. 8.
Appellant replies that “there is no support for this contention.” Reply
Br. 6. According to Appellant, Figure 4 of Wong requires a fairing for each
I-beam strut. Id.
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Appellant’s argument as to what Wong depicts in Figure 4 appears to
ignore that the Examiner also relies on Figure 2 of Wong, which does not
include a fairing. See Wong, Fig. 2; Ans. 8. We are not apprised of error in
the Examiner’s finding that each of the struts is in contact with the gas flow.
Accordingly, we sustain the rejection of claim 20.

Rejection II– Danis, Wong, and Rofka
Claims 4 and 11 depend from claims 1 and 10, respectively.
Appellant does not provide additional arguments directed to claims 4 and 11
(see Appeal Br. 14), and therefore these claims fall with claims 1 and 10.

CONCLUSION
The Examiner’s rejections are affirmed as to claims 1, 3–17, and 20,
and are reversed as to claims 18 and 19.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–10,
12–20
103 Danis, Wong 1, 3, 5–10,
12–17, 20
18, 19
4, 11 103 Danis, Wong, Rofka 4, 11
Overall
Outcome:
1, 3–17, 20 18, 19

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Application 14/432,442

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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