2020005044 (P.T.A.B. Apr. 19, 2021)

United Technologies Corporation

Patent Trials and Appeals BoardApr 19, 2021

2020005044 (P.T.A.B. Apr. 19, 2021)

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. 14/855,956 09/16/2015 Paul R. Hanrahan 67097-3053PUS1;78303US02 9936 54549 7590 04/19/2021 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER MIKUS, JASON ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 04/19/2021 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 PAUL R. HANRAHAN Appeal 2020-005044 Application 14/855,956 Technology Center 3700 Before DANIEL S. SONG, JEREMY M. PLENZLER, and LEE L. STEPINA, Administrative Patent Judges. PLENZLER, 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 1–18, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter NEW GROUNDS OF REJECTION in accordance with 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as United Technologies Corporation. Appeal Br. 1. Appeal 2020-005044 Application 14/855,956 2 CLAIMED SUBJECT MATTER The claims are directed to a turbine engine. Claim 1, reproduced below and reformatted for improved clarity, is illustrative of the claimed subject matter: 1. A stage for a gas turbine engine comprising: a circumferential airfoil array providing a total airfoil count for the stage and that includes first and second sets of airfoils, the first set of airfoils comprising first airfoils, and the second set of airfoils comprising second airfoils, the first airfoils within the first set of airfoils having the same vibrational frequency as one another, and the second airfoils within the second set of airfoils having the same vibrational frequency as one another, the airfoil array has first, second, third and fourth arcuate regions, the first and second arcuate regions arranged opposite one another, and the third and fourth arcuate regions arranged opposite one another, the first set of airfoils includes a different vibrational frequency than the second set of airfoils, the first set of airfoils has first primary, first secondary and first tertiary airfoil groups that are each provided by the first airfoils, the second set of airfoils has second primary, second secondary and second tertiary airfoil groups that are each provided by the second airfoils, the first primary airfoil group and second primary airfoil group respectively arranged in the first and second arcuate regions, the first secondary airfoil group and second secondary airfoil group arranged in the third arcuate region, and Appeal 2020-005044 Application 14/855,956 3 the first tertiary airfoil group and the second tertiary airfoil group arranged in the fourth arcuate region, the first and second arcuate regions provide greater than 50% of the total airfoil count. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Delvaux US 2012/0099995 A1 Apr. 26, 2012 REJECTION Claims 1–18, 20, and 21 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Delvaux. OPINION Background To provide context for the discussion below, we begin with a brief summary of Appellant’s Specification. The Specification discusses an issue identified as “[s]tructural vibratory coupling between adjacent airfoils [that] can occur during engine operation.” Spec. ¶ 4. The Specification explains that blade mistuning has been used in the past to address this issue. Id. The Specification provides an example “[f]or rotating stages of the engine . . . in which there are two sets of blades are arranged in circumferentially alternating relationship to provide an even numbered blade array.” Id. The Specification explains that “[o]ne set of blades has a different characteristic than the other set of blades to provide two different resonant frequencies.” Id. The Specification provides another example “[f]or fixed stages” with “different sets of vanes in adjacent quadrants of the array.” Id. Appeal 2020-005044 Application 14/855,956 4 The description of the purported novel features begins at paragraph 41 of the Specification, and is depicted in Figure 3, which is reproduced below. “Figure 3 is a perspective view of a stage having first and second airfoils arranged in circumferentially alternating relationships with one another.” Spec. ¶ 30. The Specification explains that “[t]he circumferential airfoil array 80 provides a total airfoil count for the stage and that includes first and second sets of airfoils ‘A’ and ‘B.’” Id. ¶ 41. The first and second sets of airfoils are each broken up into primary, secondary, and tertiary subgroups. Id. Neither the Specification nor the Figures provides any detail of the features of the blades within a given group, or any blades for that matter. That is, we do not know whether all blades within the same group have the same or different structural features, or what any given blade should look Appeal 2020-005044 Application 14/855,956 5 like. Rather, the Specification focuses on characteristics of a set, not individual blades within a set and, more specifically, differences between sets. See Spec. ¶¶ 42–50. The Specification explains that “[t]he first set of airfoils ‘A’ has a different characteristic than the second set of airfoils ‘B’ to provide a different vibrational frequency.” Id. ¶ 42. Although the “different characteristic” is described as “at least one of an airfoil thickness, an airfoil shape, an airfoil spacing, a platform endwall shape, an airfoil material and an airfoil weight,” the only characteristic discussed further in the Specification is airfoil spacing. See, e.g., id. (“In the example, the different characteristic is the airfoil spacing.”). The Specification explains that this “different characteristic . . . provide[s] a different vibrational frequency” (id.), but does not elaborate as to whether this is intended to mean a difference in resonant frequencies of the structures or some sort of difference in vibration induced in the structures during turbine operation. The airfoil spacing is described in terms of “a simulated airfoil count.” See Spec. ¶ 43. “The first and second sets of airfoils ‘A,’ ‘B’ each have an airfoil spacing based upon a simulated stage airfoil count within +/- 10 airfoils of the total airfoil count, in the example, 42.” Id. In the example provided, “the first set of airfoils ‘A’ has an airfoil spacing based within +8 airfoils of the total airfoil count, for example, 46.70” and “[t]he second set of airfoils ‘B’ has an airfoil spacing based within -8 airfoils of the total airfoil count, for example, 38.16.” Id. A declaration from the inventor was required during prosecution to understand this manner of defining airfoil spacing. See Hanrahan Dec. (filed April 12, 2019).2 The declaration 2 Although framed as how one skilled in the art would understand the originally-filed application, we note that there is no evidence provided to Appeal 2020-005044 Application 14/855,956 6 contained a significant amount of detail not present in the originally filed application. The declaration explains that the simulated airfoil count spacing is determined by dividing 360 degrees by the simulated count, resulting spacing defined in terms of degrees between adjacent blades. Hanrahan Dec. ¶ 5.3 For example, the “A” group spacing example would be 7.71 degrees (360/46.7) and the “B” group spacing would be 9.43 degrees (360/38.16). Id. The limited disclosure provided by the Specification results in numerous problems. We address two of those problems below in our new grounds of rejection based on lack of written description and indefiniteness. Indefiniteness–New Ground of Rejection We reject the claims as indefinite because we simply do not know what is required, structurally, for “the first airfoils within the first set of airfoils having the same vibrational frequency as one another, and the second airfoils within the second set of airfoils having the same vibrational frequency as one another,” as required by claims 1 and 20. The claims simply define these airfoils in terms of their function (i.e., that they “hav[e] the same vibrational frequency as one another”). It is unclear whether this “same vibrational frequency” is the byproduct of a particular spacing arrangement, or whether it is the result of some other unspecified structure support this allegation, which relies solely on the inventor’s testimony that the people at his employer (Appellant) that reviewed and approved the application understood the disclosure. Hanrahan Dec. ¶ 4. 3 The declaration includes two paragraphs labeled “5.” This citation refers to the first paragraph 5. Appeal 2020-005044 Application 14/855,956 7 of the individual airfoils. Moreover, we do not know whether this “same vibrational frequency” is a characteristic of the structure itself (e.g., the resonant frequency of the individual airfoils) or if it is a vibration that is system induced during operation of the turbine engine. Indeed, even in its briefing, when disputing whether Delvaux teaches this “same vibrational frequency” feature, Appellant does not identify any particular structure required by the limitation. See Appeal Br. 6 (simply alleging that “the airfoils at arrows 1-3 [in the Examiner’s markup of Delvaux’s Figure 3] must be the same vibrational frequency as one another, and the airfoils at arrows 4-6 must be at the same vibrational frequency as one another” and “[c]learly they are not in Delvaux.”), 7 (simply questioning “[w]here is, for example, the airfoil configuration of Figure 3, below, disclosed with the claimed relationship between the airfoils.”). A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Based on our review of the record, we are left to wonder what is required to meet the claim language noted above. Accordingly, we determine that the claims are sufficiently unclear to warrant a rejection under 35 U.S.C. § 112(b) as being indefinite. Appellant has the opportunity to resolve ambiguities during prosecution. See, e.g., McAward, at *6–7. Appeal 2020-005044 Application 14/855,956 8 For the reasons set forth above, we reject claims 1–18, 20, and 21 under 35 U.S.C. § 112(b) as being indefinite. Written Description–New Ground of Rejection “The test for the sufficiency of the written description ‘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.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). Even assuming the claims are somehow definite, the recitation that “the first airfoils within the first set of airfoils having the same vibrational frequency as one another, and the second airfoils within the second set of airfoils having the same vibrational frequency as one another” lacks written description support. This limitation defines the relationship between the airfoils in a given set (i.e., the airfoils in set A or the airfoils in set B). This feature was added by amendment submitted on August 9, 2018. Appellant provided no corresponding explanation as to where any purported support exists in the originally-filed Specification for this feature. Appellant cites paragraph 41 of the Specification in its “Summary of the Claimed Subject Matter” as support for this limitation. Appeal Br. 2. That paragraph does not mention the term “frequency” or provide any detail about the first or second sets of airfoils. See Spec. ¶ 41. As detailed above in our background discussion, there is simply no discussion whatsoever as to any characteristics of airfoils in a given set relative to one another. We see no disclosure, for example, as to what would cause one airfoil in set A to have the same vibrational frequency as another airfoil in set A. Appeal 2020-005044 Application 14/855,956 9 To the extent Appellant believes this to be the natural byproduct of airfoil spacing, we note that there is nothing in the record supporting this position. Moreover, it appears that some airfoils in a given set would behave differently than others. For example, although the airfoils in set A within regions A1, A2, A3 may be spaced 7.71 degrees relative to one another in their respective regions, the airfoils in set A that are directly adjacent airfoils from set B will not have the same spacing. Similarly, the airfoils in set B within regions B1, B2, B3 may be spaced 9.43 degrees relative to one another in their respective regions, but the airfoils in set B that are directly adjacent airfoils from set A will not have the same spacing. That is, for example, the airfoil in region A1 adjacent region B3 will not be spaced 9.43 degrees from the airfoil in region B3 adjacent region A1. And if the spacing is by some chance 9.43 degrees, it certainly cannot also be 7.71 degrees (the spacing between adjacent airfoils in set B). For at least the reasons noted above, we reject claims 1–18, 20, and 21 under 35 U.S.C. § 112(a) as lacking written description support. Anticipation As noted above, Appellant repeatedly alleges that Delvaux does not disclose its first and second sets of airfoils having the same vibrational frequency, but never explains what is missing from Delvaux such that it does not have airfoils with the same vibrational frequency. See Appeal Br. 6, 8. Nevertheless, we cannot affirm the Examiner’s rejection because we do not know what is required by claims, as explained above. Because we determine the claims to be indefinite, and addressing the rejection would require speculation on our part as to what is actually required by the claims, we do not reach the merits of the rejection of claims Appeal 2020-005044 Application 14/855,956 10 1–18, 20, and 21. Instead, we reverse those rejections. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims). It should be understood that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. This decision should not be viewed as disparaging the teachings of Delvaux relative to the application before us in any way. CONCLUSION The Examiner’s rejection under 35 U.S.C. § 102(a)(1) is reversed, and we enter new grounds of rejection under 35 U.S.C. § 112(a) and (b). DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–18, 20, 21 102(a)(1) Delvaux 1–18, 20, 21 1–18, 20, 21 112(a) Written Description 1–18, 20, 21 1–18, 20, 21 112(b) Indefiniteness 1–18, 20, 21 Overall Outcome 1–18, 20, 21 1–18, 20, 21 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM Appeal 2020-005044 Application 14/855,956 11 THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b)