United Technologies Corporation

Patent Trials and Appeals Board

May 4, 2020

15089891 - (D) (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.
15/089,891 04/04/2016 Gary D. Roberge 92855US01;
67097-3357PUS1
8523
54549 7590 05/04/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
DELRUE, BRIAN CHRISTOPHER
ART UNIT PAPER NUMBER
3745
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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARY D. ROBERGE

Appeal 2019-005450
Application 15/089,891
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14 and 16–21. 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. The Appellant identifies the real party in interest as
United Technologies Corp. Appeal Br. 1.
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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s invention “relates generally to anti-windmilling
systems for a gas powered turbine, and more specifically to an
electromagnetic anti-windmilling system.” Spec. ¶ 1. Windmilling refers to
the rotation of components of a geared turbofan engine, such as a fan, when
an aircraft is on the ground and the engine is shut down. See id. ¶¶ 2–3, 41.
Windmilling occurs because crosswinds enter and drive the geared turbofan.
See id. ¶¶ 3, 41. Windmilling is undesirable because it can result in wear on
internal engine components. See id. ¶¶ 3–4, 41.
Claims 1, 14, and 19 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A gas turbine engine comprising:
a compressor having a first compressor section and a
second compressor section;
a combustor fluidly connected to the compressor;
a turbine fluidly connected to the combustor, the turbine
having a first turbine section and a second turbine section;
a first shaft connecting the first compressor section and
the first turbine section;
a second shaft connecting the second compressor section
and the second turbine section;
a fan connected to said first shaft via a geared
architecture;
said first shaft including at least one magnetic section,
and a single electromagnet structure disposed radially outward
of said first shaft at an axial location of the at least one
magnetic section, relative to an axis defined by the gas turbine
engine.

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References
The prior art relied upon by the Examiner is:
Name Reference Date
Dooley et al. (“Dooley”) US 7,621,117 B2 Nov. 24, 2009
Sheridan US 7,849,668 B2 Dec. 14, 2010

Rejections
To facilitate our analysis, we set forth the grounds of rejection in a
different order than the order presented in the Answer and Appeal Brief.
The following rejections are before us for review. Final Act. 6–15.
Claims 1–13 and 21 are rejected under 35 U.S.C. § 102(a)(l)/(a)(2) as
anticipated by Dooley.
Claims 14, 16, 17, 19, and 20 are rejected under 35 U.S.C.
§ 102(a)(l)/(a)(2) as anticipated by Dooley.2
Claims 14, 16, 17, 19, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Dooley.
Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable over
Dooley and Sheridan.
Claims 19 and 21 are rejected under 35 U.S.C. § 112(b) as indefinite.
Claim 21 is rejected under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement.

2 The Examiner rejected claims 14, 16, 17, 19, and 20 under 35 U.S.C.
§ 102(a)(l)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103 as obvious over Dooley. Final Act. 12–14. For purposes of this
appeal only, we have separated the 35 U.S.C. §§ 102/103 rejection of claims
14, 16, 17, 19, and 20 into two grounds of rejection.
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ANALYSIS
Anticipated by Dooley
Independent Claim 1 and Dependent Claims 2–13 and 21
The Examiner finds that Dooley discloses “[a] gas turbine engine
comprising: . . . a single electromagnet structure,” as recited in claim 1.
Final Act. 8–9; see Dooley Figs. 1, 3. More specifically, the Examiner finds
Dooley’s stator windings 106 correspond to the claimed “single
electromagnetic structure,” when construing the term “single” as “only one;
not one of several.” Final Act. 9; Ans. 5 (citing Oxford On-line Dictionary,
https://en.oxforddictionaries.com/definition/ single). Accordingly, the
Examiner finds that stator windings 106 include only one electromagnet
structure.
The Appellant argues that Dooley’s anti-windmilling system “would
be non-functional with only a single stator.” Appeal Br. 7. The Appellant
supports this argument by pointing out that “Dooley is directed to an anti-
windmilling system that uses electrical power generated by a first electric
machine to power a second electric machine” and that “[t]he power provided
to the second electric machine generates an opposing rotational force on the
shaft, and stops rotation of the shaft.” Id. Put simply, the Appellant asserts
that Dooley’s anti-windmilling system includes multiple structures rather
than the claimed “single electromagnetic structure.” Id. The Appellant’s
argument is persuasive.
As an initial matter, the use of the word “single” in the phrase “a
single electromagnet structure,” in claim 1, limits the “electromagnet
structure” to be exactly one. See Free Motion Fitness, Inc. v. Cybex Int’l,
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Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005) (claimed “single cable” limited to
only one cable).
Dooley describes a two-in-one electric machine design including rotor
104 and stator 102, where stator 102 includes “independent and separated
sets” of windings 106 for channels A, B. Dooley, col. 3, ll. 2–6. Dooley
describes “[t]he windings of channel A are confined to the sector of the
stator indicated as ‘A’ in FIG. 3, while the windings of channel B are
confined to the sector of the stator indicated as ‘B’ in FIG. 3.” Id. at col. 3,
ll. 6–10 (emphasis omitted). Dooley explains that “windings [106] are
independently operable by controller 40 . . . and preferably may be operated
each in a motor and generator modes”; for example, “rotation of rotor 104
may be used to generate electricity in the windings 106 of channel A, while
the windings of channel B are turned ‘off.’” Id. at col. 3, ll. 10–14
(emphasis omitted). In another example, Dooley describes “the windings of
channel B may be used in a motor or braking mode, driven by power
generated by the windings of channel A, to impede rotation of rotor 104.”
Id. at col. 3, ll. 17–20 (emphasis omitted).
In this case, the Examiner fails to adequately explain –– using
evidence and/or technical reasoning –– how “independent and separated
sets” of stator windings 106 that are independently operable by a controller
and are used to perform different functions correspond to only one
electromagnetic structure, i.e., a “single” electromagnetic structure.
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Further, the Examiner’s finding relies on a separate definition of the
term “single” –– as allegedly interpreted narrowly by the Appellant3 –– as
“regarded as distinct from each other or others in a group.” Ans. 5–6 (citing
Oxford On-line Dictionary, https://en.oxforddictionaries.
com/definition/single). This definition appears to be inconsistent with the
Specification as it is unclear why one of ordinary skill in the art would
understand the disclosed electromagnetic structure as being distinct from
other electromagnetic structures of a group. Indeed, the Specification only
describes embodiments with one electromagnetic structure and does not
describe a group of electromagnetic structures. See, e.g., Spec. ¶¶ 50–53,
Figs. 3–5B (electromagnet 202).
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and dependent claims 2–13 and 21 as anticipated by Dooley.

Independent Claim 14 and Dependent Claims 16 and 17
Independent claim 14 recites, “[a] method for preventing rotation of a
shaft in a gas turbine engine” including “activating an electromagnet within

3 The Appellant asserts that the single electromagnetic structure is illustrated
in Figures 3–7 as a “distinct electromagnetic component” and Figures 3 and
4 show “an embodiment of the invention using a single distinct
electromagnet that is not part of an electric machine.” Appeal Br. 4–5.
Here, we understand the Appellant’s use of the term “distinct” as a
characteristic of the Appellant’s invention and not a definition of the term
“single.” For example, in the latter case the Appellant uses the phrase
“single distinct electromagnet,” and if the term “distinct” were understood as
a definition of the term “single,” then phrase “single distinct” would mean
“single single,” which appears to be a redundant use of language.
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a gas turbine engine in response to a rotation speed of the shaft falling below
a speed threshold.” Appeal Br. 13.
The Examiner finds that Dooley discloses the “activating” step of
claim 14. Final Act. 12. The Examiner supports this finding primarily with
Dooley’s description at column 4, lines 17–32. See Ans. 6–7; Final Act. 12.
The Examiner explains:
The embodiment of Dooley relied upon by the Office uses an
external electrical power to provide some or all of the braking
torque, after the controller receives signals “from any
appropriate sensors in order to determine exactly when
providing the electrical power is commended/stopped. For
instance, the windmill rotation speed can be compared to a
predetermined rotation speed acting as a threshold for
initiating and/or ending the supply of electrical power” . . .
therefore the claim language of initiating the electrical supply
based on a speed below a threshold is anticipated by the broader
language of the Dooley disclosure, since the structures as
disclosed by Dooley would allow for the initiating and/or
ending of electrical power based on a speed above and/or below
a threshold.
Ans. 6–7 (quoting Dooley, col. 4, ll. 27–32).
The Appellant argues that, regardless of the external electrical power
embodiment, Dooley’s system “activates (applies the brake) when the
rotation speed exceeds a threshold and deactivates the brake when the
rotation speed falls below the threshold.” Reply Br. 2 (emphasis added); see
Appeal Br. 8. In other words, Dooley’s system operates in an opposite
manner than required by the “activating” step of claim 14, i.e., “when the
rotation speed exceeds the threshold, the anti-windmilling system activates.”
Appeal Br. 9. The Appellant’s argument is persuasive.
The Examiner finds that Dooley’s description that “the windmill
rotation speed can be compared to a predetermined rotation speed acting as a
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threshold for initiating and/or ending the supply of electrical power,” is a
broad teaching. Dooley, col. 4, ll. 29–32. This teaching addresses the
activation of electrical power based on a threshold rotation speed, but does
not teach the specifics as to how the threshold rotation speed is reached
when Dooley’s electromagnet (i.e., stator windings 106) is activated. In an
external electrical power embodiment, as relied upon by the Examiner, when
Dooley’s system activates stator windings 106 to initiate electrical power,
the activation would seem to operate a motor or a brake to impede or prevent
rotation of the rotor by acting on the rotor in a direction opposite to rotor
rotation direction developed by the windmilling effect. In such a scenario,
the windmilling effect would have to induce a rotational speed of the rotor to
beyond the threshold to activate Dooley’s electromagnet.
Additionally, we note that on this record the Examiner fails to explain
–– using evidence and/or technical reasoning –– how Dooley discloses the
use of a rotational speed threshold in a manner that corresponds to the
activating step of claim 14, i.e., activating an electromagnet within a gas
turbine engine in response to a rotation speed of the shaft falling below a
speed threshold.
Thus, we do not sustain the Examiner’s rejection of independent
claim 14 and dependent claims 16 and 17 as anticipated by Dooley.

Independent Claim 19 and Dependent Claim 20
Similar to claim 1, independent claim 19 recites, “[a]n anti-
windmilling system for a gas turbine engine comprising . . . a single
electromagnet structure mounted to an engine static structure at a first axial
position, relative to an axis of the gas turbine engine.” Appeal Br. 13
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(emphasis added). The Examiner relies on Dooley in a substantially similar
manner for the rejection of claim 19 as presented for the rejection of claim 1.
See Final Act. 14. For substantially the same reasons we have not sustained
the rejection of claim 1, we likewise do not sustain the Examiner’s rejection
of independent claim 19 and dependent claim 20 as anticipated by Dooley.

Obviousness over Dooley
Independent Claim 14 and Dependent Claims 16 and 17
In the alternative, the Examiner rejects independent claim 14 under
35 U.S.C. § 103 as unpatentable over Dooley. Final Act. 12–13. The
Examiner determines:
Arguendo that Dooley fails to anticipate the claimed
invention, the Examiner asserts that while Dooley falls short of
using the exact terminology of the Applicant, in the exact way,
it would have been obvious to one of ordinary skill in the art to
modify the method steps of shutting down the engine and the
controller applying the brake to the engine to include the step of
the controller initiating the brake in response to a rotation speed
of the shaft falling below a speed threshold, with the expected
result of braking the turbine engine without damaging the
braking system, because Dooley teaches the windmill rotation
speed can be compared to a predetermined rotation speed acting
as a threshold for initiating and/or ending the supply of
electrical power.
Id. at 13; see Ans. 6–8.
The Examiner’s determination appears to be based on a speculative
conclusion, i.e., that it would have been obvious to modify Dooley’s general
teaching that rotation speed of the shaft may be used as a parameter that acts
as a threshold to activate an electromagnet to meet a more narrow claim
recitation of claim 14, i.e., “activating an electromagnet within a gas turbine
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engine in response to a rotation speed of the shaft falling below a speed
threshold” (Appeal Br. 13, Claims App.). This conclusion, however, is not
supported by evidence and/or technical reasoning because it fails to explain
why one of ordinary skill in the art would have modified Dooley’s system to
operate as required by the activating step of claim 14. See Appeal Br. 9;
Reply Br. 2–3. Thus, we do not sustain the Examiner’s alternative rejection
of independent claim 14 and dependent claims 16 and 17 under 35 U.S.C.
§ 103 as unpatentable over Dooley.

Independent Claim 19 and Dependent Claim 20
The Examiner also rejects independent claim 19, in the alternative,
under 35 U.S.C. § 103 as unpatentable over Dooley. Final Act. 12–13, 14.
However, the Examiner fails to rely on Dooley in any manner which would
remedy the deficiency in the Examiner’s rejection of claim 19 under
35 U.S.C. § 102. Thus, we do not sustain the Examiner’s alternative
rejection of independent claim 19 and dependent claim 20 under 35 U.S.C.
§ 103 as unpatentable over Dooley.

Obviousness over Dooley and Sheridan
The Examiner fails to rely on Sheridan in any manner that would
remedy the deficiency in the Examiner’s rejection of independent claim 16
as discussed above. Therefore, we do not sustain the Examiner’s rejection
of claim 18, which depends from claim 16, under 35 U.S.C. § 103 as
unpatentable over Dooley and Sheridan.

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Indefiniteness
Claim 19
The Examiner rejects independent claim 19 as indefinite because the
claimed “the electromagnet structure” lacks antecedent basis. Final Act. 7.
The Appellant does not present an argument for this rejection. See Appeal
Br. 6. Therefore, we summarily sustain the Examiner’s rejection of claim 19
as indefinite.

Claim 21
Claim 21 recites, “[t]he gas turbine engine of claim 1, wherein the
single electromagnet structure is not a component of an electric machine.”
Appeal Br. 13.
The Examiner rejects claim 21 as indefinite because it is unclear how
the claimed “single electromagnet structure,” which is a component of an
electrical braking machine and/or a gas turbine engine, “is not a component
of an electric machine.” See Final Act. 7; Ans. 4–5. The Appellant argues
that claim 21 is definite. Appeal Br. 6. The Appellant’s argument is not
persuasive.
The Appellant submits that the term “electric machine” would be
understood by one of ordinary skill in the electrical arts as “a term of art
referring to ‘the class of machines that either convert rotational energy into
electrical energy and/or convert electrical energy into rotational energy.’”
Appeal Br. 4 n.1 (citing https://www.electricaleasy.com/2012/12/what-is-
electrical-machine.html defining an electrical machine). However, the
asserted understanding of those skilled in the art is narrower than the
electricaleasy.com’s definition, which according to the Appellant, “defin[es]
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an electrical machine as ‘a device which converts mechanical energy into
electrical energy or vice versa.’” Id.; see Ans. 3. Put simply, according to
electricaleasy.com, the term “electric machine” refers to the use of
mechanical energy, and not just mechanical energy that is rotational.
Although the claimed invention is directed to a gas turbine engine that
includes rotating components, it is unclear why one of ordinary skill in the
art would necessarily limit the definition of the term “electric machine” from
electricaleasy.com to mechanical energy that is rotational. Additionally, we
note that the Examiner construes the term “electric machine” as “a general
term for machines using electromagnetic forces.” Ans. 3–4 (citing
https://en. wikipedia.org/wiki/Electric_machine).
Turning back to the Examiner’s rejection, the Examiner reasons that
claim 21 is indefinite because the single electromagnet structure is a
component of an electrical braking machine. The Specification describes an
anti-windmilling system, which may be understood as having braking
operation. The Specification describes Figures 2–5B as showing anti-
windmilling system 110, which includes electromagnet 202 as one of its
components. See Spec. ¶¶ 50–53. Other components of anti-windmilling
system 110 are magnetic sections 220. Id. ¶¶ 50–53, Figs. 3–5B. When
electromagnet 202 activates, it generates electromagnetic field 230. Id.
¶¶ 51–52, Figs. 3–5A. Upon generation of electromagnetic field 230 the
nearest magnetic section 220 will have the strongest attraction to
electromagnet 202 causing shaft 210 to rotate into an aligned position. Id.
¶¶ 51–52, Fig. 5B. And, “[a]s long as power is continuously provided to the
electromagnet 202, the low speed shaft 210 is locked, and the fan 102
(illustrated in Figure 2) is prevented from rotating due to windmilling.” Id.
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¶ 53. In other words, anti-windmilling system 110 uses electromagnet 202
to convert electrical energy into mechanical energy by rotating magnetic
section 220 into alignment and by maintaining magnetic section 202 in
alignment; i.e., anti-windmilling system 110 is an “electric machine” using
the definition provided by the Appellant (see Appeal Br. 4 n.1).
Additionally, anti-windmilling system 110 may be understood as a machine
that uses electromagnetic forces, i.e., as an “electric machine” using the
Examiner’s construction of the term. In sum, electromagnet 202, which is
understood as “a single electromagnetic structure,” is a component in anti-
windmilling system 110, i.e., an electric machine.
Claim 21 depends from independent claim 1. Claim 1 recites, in-part,
“[a] gas turbine engine” including a “first shaft including at least one
magnetic section, and a single electromagnet structure disposed radially
outward of said first shaft at an axial location of the at least one magnetic
section, relative to an axis defined by the gas turbine engine.” Appeal
Br. 11. In view of the Specification, one of ordinary skill in the art would
understand claim 1 as referring to the present invention’s anti-windmilling
system. See Appeal Br. 2–3 (describing, in the Summary of Claimed
Subject Matter section of the Appeal Brief, “[t]he present invention is
directed to an anti-windmilling system for an aircraft using an interaction
between an electromagnet and a ferrous component on a shaft to prevent
windmilling of the shaft. The application includes [independent claim 1].”).
With this understanding, we agree with the Examiner that claim 1 is unclear
because the claimed “single electromagnet structure,” may be reasonably
understood as a component of an electric machine, and more specifically, an
electric braking machine. In view of the foregoing, we agree with the
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Examiner’s determination that the subject matter of claim 21 is indefinite.
See In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution
a claim is indefinite when it contains words or phrases whose meaning is
unclear); Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25,
2017) (precedential) (explaining that the USPTO considers a claim indefinite
when it “contains words or phrases whose meaning is unclear”).
Thus, we sustain the Examiner’s rejection of claim 21 under
35 U.S.C. § 112(b) as indefinite.
Further, the Examiner reasons that claim 21 is indefinite because the
single electromagnet structure is a component of a gas turbine engine. The
Examiner fails to adequately explain on the record –– using evidence and/or
technical reasoning –– how a gas turbine engine is an electric machine, i.e.,
“a device which converts mechanical energy into electrical energy or vice
versa.” Accordingly, we do not agree with the Examiner that claim 21 is
indefinite for this reason.

Written Description Requirement
The Examiner rejects claim 21 under 35 U.S.C. § 112(a) because the
foregoing recitation fails to comply with the written description requirement.
Final Act. 6–7. More specifically, the Examiner finds that “wherein the
single electromagnet structure is not a component of an electric machine,” as
recited in claim 21 is new matter. Id. at 7. In view of our determination that
claim 21 is indefinite, supra, in this case, it follows that the rejection of this
claim under 35 U.S.C. § 112(a) must fall because it is necessarily based on a
speculative assumption as to the claim’s meaning. See also In re Steele, 305
F.2d 859, 862–63 (CCPA 1962). Therefore, we do not sustain the
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Examiner’s rejection of claim 21 under this ground of rejection. It should be
understood, however, that our decision in this regard is pro forma and based
solely on the indefiniteness of the claimed subject matter set forth below.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–13, 21 102(a)(1) /
(a)(2)
Dooley 1–13, 21
14, 16, 17,
19, 20
102(a)(1) /
(a)(2)
Dooley 14, 16, 17,
19, 20
14, 16, 17,
19, 20
103 Dooley 14, 16, 17,
19, 20
18 103 Dooley,
Sheridan
18
19, 21 112(b) Indefinite 19, 21
21 112(a) Written
Description

21
Overall
Outcome
19, 21 1–14, 16–18,
20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART