United Technologies Corporation

Patent Trials and Appeals Board

May 4, 2020

14616922 - (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.
14/616,922 02/09/2015 Frederick M. Schwarz 72407US01;
67097-3134PUS1
7525
54549 7590 05/04/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
DURDEN, RICHARD KYLE
ART UNIT PAPER NUMBER
3753
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 FREDERICK M. SCHWARZ and WILLIAM G. SHERIDAN
____________

Appeal 2019-005522
Application 14/616,922
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–5 and 10.2 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “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. 1.
2 Claims 6–9 and 11–20 are cancelled. See Amendment (filed Dec. 5,
2017).
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THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
1. A gas turbine engine comprising:
a fan rotor having a hub and a plurality of fan blades
extending radially outwardly of said hub,
a compressor positioned downstream of the fan rotor, the
compressor having a first compressor blade row defined along a
rotational axis of said fan rotor and said compressor, and
a gear reduction positioned axially between said first
compressor blade row and said fan rotor, said gear reduction
including a ring gear and a carrier, said carrier having an axial
length and said ring gear having an outer diameter, wherein a
ratio of said axial length to said outer diameter is greater than or
equal to 0.20 and less than or equal to 0.40, and wherein said
gear reduction is connected to drive said hub to rotate.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:

Name Reference Date
Giffin US 2006/0024162 A1 Feb. 2, 2006
Orlando US 2007/0240399 A1 Oct. 18, 2007
McCune US 2010/0331140 A1 Dec. 30, 2010

M. Savage et al., Effects of Planetary Gear Ratio on Mean Service Life,
A.S.M.E. Int’l Power Transmission & Gearing Conf., 1–7 (Oct. 1996)
(hereafter “Savage”)

THE REJECTIONS
I. Claim 2 stands rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 2–4.
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II. Claims 1, 2, 5, and 10 stand rejected under 35 U.S.C. § 103 as
unpatentable over Orlando and Savage. Id. at 5–7, 9–11.
III. Claims 1, 2, 5, and 10 stand rejected under 35 U.S.C. § 103 as
unpatentable over Orlando, Savage, and McCune. Id. at 7–9.
IV. Claims 3 and 4 stand rejected under 35 U.S.C. § 103 as unpatentable
over Orlando, Savage, and Giffin. Id. at 11–12.

OPINION
Rejection I – Indefiniteness
Claim 2 recites, in relevant part, “a volume is defined for said carrier
and said ring gear, and said volume being greater than or equal to 899
inches3 (.0147 meters3) and less than or equal to 1349 inches3 (.0221
meters3).” Appeal Br. 7 (Claims App.). The Examiner determines that this
language renders the claim indefinite because “it is unclear how the volume
is to be determined.” Final Act. 2. The Examiner explains that “there may
be at least three reasonable methods [for determining volume], . . . each of
which would produce a substantially different result.” Id.; see also id. at 2–3
(discussing a cylindrical volume calculation, an annular volume calculation,
and a specific displacement volume calculation). The Examiner also
explains that “it is unclear which elements are to be included in the
calculation.” Id. at 3; see also id. (“For example, it is unclear if the central
sun and star gears (93 & 96, respectively) are intended to be included in the
calculation as part of the volume.”). According to the Examiner, “a person
having ordinary skill in the relevant art would not be reasonably apprised of
the metes and bounds of the claimed limitation.” Id. at 4.
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Appellant argues that the identified claim language does not render
the claim indefinite. Appeal Br. 2–3. In particular, Appellant asserts that,
“[t]he Examiner speculates about cylindrical volume or an annular volume.
However, in the absence of any disclosure to utilize a volume that would be
defined as such, one must take the actual volume of the actual components.”
Id. at 2; see also Reply Br. 1 (arguing that the claim would be understood to
refer to “the actual volume, as other structure is illustrated in the area that
might be taken up by the Examiner’s proposed ‘cylindrical’ argument”). We
agree with Appellant.
Appellant’s Specification describes that “a volume of the ring gear
100 plus the carrier 94 may be between 899 inches3 and less than or equal to
1349 inches3.” Spec. ¶ 43. The Specification also describes that “carrier 94
mounts . . . sun gear 93 and a plurality of star gears 96. Star gears 96 are
mounted on journals 98 which are fixed within . . . carrier 94.” Id. ¶ 38. In
other words, the carrier is distinct from the elements that it mounts (e.g., sun
gear, star gears, journals), and a defined volume of the carrier would not
include the additional elements. We determine that, in view of the
disclosure of the Specification, one of ordinary skill in the art would
understand what is claimed—the defined volume is the actual displaced
volume of the carrier and ring gear elements, without any additional
elements.
For these reasons, we do not sustain the rejection of claim 2 under
35 U.S.C. § 112(b) as being indefinite.

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Rejection II – Obviousness based on Orlando and Savage
Claims 1, 5, and 10
In contesting this rejection of claims 1, 5, and 10, Appellant presents
arguments for independent claim 1, and does not separately argue dependent
claims 5 and 10. See Appeal Br. 3–5. We select independent claim 1 as
representative, and claims 5 and 10 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
The Examiner finds that Orlando teaches a gas turbine engine
including most of the limitations of claim 1 (Final Act. 5–6), but does not
teach that the “ratio of said axial length to said outer diameter is greater than
or equal to 0.20 and less than or equal to 0.40” (id. at 6). However, the
Examiner explains that “it has been generally held that where the difference
between the claimed invention and the prior art is only change of form,
proportions, or degree, the claimed invention is not patentable over the prior
art, even though the changes may produce better results than prior
inventions.” Id. at 7 (citing MPEP § 2144.05(II)(A–B)). The Examiner
further explains in the Answer, that
the only difference between the prior art and the apparatus of
claim 1 is the ratio between the axial length of the carrier and
the outer diameter of the ring gear (i.e. a difference of
proportion between the carrier length and gear diameter; a
change in form), [and] such a difference is unpatentable at least
in view of the above [legal] guidance.
Ans. 12 (citing Smith v. Nichols, 88 U.S. 112, 118–19 (1874); In re
Williams, 36 F.2d 436, 438 (CCPA 1929)); see also id. (explaining “that one
common and accepted definition of ‘proportion’ is ‘the relation of one part
to another or to the whole with respect to magnitude, quantity, or degree :
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ratio’” such that “‘proportion’ and ‘ratio’ appear to be synonyms in this
context”).
The Examiner also suggests that Appellant does not show that a
device having the ratio recited in claim 1 necessarily would perform
differently than Orlando’s device, and without such a showing, the claimed
device is not patentably distinct from the prior art device. See Ans. 13
(citing Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984) (holding
that where the only difference between the prior art and the claims was a
recitation of relative dimensions of the claimed device and a device having
the claimed relative dimensions would not perform differently than the prior
art device, the claimed device was not patentably distinct from the prior art
device)); see also Final Act. 15 (“The [S]pecification does not set forth any
evidence of criticality or unexpected results, nor has the [Appellant]
presented any such evidence. . . . [I]t appears that the [Appellant] leaves
open the possibility that other ratios may also be satisfactory, and the
claimed range is merely preferable, rather than having some critical or
unexpected benefit.”).
Appellant argues that the Examiner erred in concluding that the
claimed ratio between carrier axial length and ring gear diameter would have
been obvious. Appeal Br. 3–5; Reply Br. 2. In particular, Appellant asserts:
The Examiner has also argued that the only difference
between the claims and the art is “form/proportion/degree” the
only change is one of “form, proportions, or degree,” but this
misses the point that the claims specifically require a ratio. The
difference between the prior art and the patented invention in In
re Antonie[, 559 F.2d 618 (CCPA 1977)] was also one only of
“form, proportions, or degree.” The Examiner here is far afield
from any proper legal underpinning to this rejection.
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Appeal Br. 5. This argument does not apprise us of error in the Examiner’s
conclusion of obviousness.3 Appellant’s reference to In re Antonie is
unavailing with respect to the Examiner’s articulated rationale that is not
based on the optimization of a recognized result-effective variable, but is
instead based on other supporting legal precedent (Smith v. Nichols, In re
Williams, and Gardner v. TEC Syst., Inc.). As discussed above, the
Examiner reasons that the only difference between claim 1 and the prior art
is “a difference of proportion between the carrier length and gear diameter; a
change in form,” which is unpatentable based on supporting legal precedent.
Ans. 12. Appellant does not adequately explain why the fact that the
“claims specifically require a ratio” (Appeal Br. 5) precludes the application
of the Examiner’s other cited legal precedent in support of the rejection.
We have also considered Appellant’s assertion that “paragraphs 38–42
[of the Specification] do set forth benefits from the claimed range.” Reply
Br. 2. The Specification describes that a gear reduction can be packaged in a
smaller diameter engine by reducing the ring gear diameter and increasing
the axial length of the ring gear and journal bearings. Spec. ¶¶ 40, 42. The
Specification describes that “[a] ratio of the length L1 to the diameter D1
may be greater than or equal to about 0.20 and less than or equal to about
0.40.” Id. ¶ 44. However, this disclosure does not indicate, much less show,
that there is any criticality to the particular ratio between carrier axial length
and ring gear outer diameter recited in claim 1. In other words, Appellant

3 We note that we do not address the Examiner’s reasoning based on routine
optimization, or Appellant’s arguments in response thereto, because we
affirm the Examiner’s rejection based on other reasoning by the Examiner as
explained herein.
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has not set forth persuasive evidence that a ratio of axial length to outer
diameter that is greater than or equal to 0.20 and less than or equal to 0.40,
as recited in the claim, provides a different function or yields unexpected
results as compared to other ratios. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975) (finding that the use of the claimed feature “would be an
obvious matter of design choice” when it “solves no stated problem” and
“presents no novel or unexpected result” over the disclosed alternatives).
Accordingly, the Examiner articulates adequate reasoning based on rational
underpinnings to support the conclusion of obviousness, and Appellant does
not offer any factual evidence or persuasive technical rationale to refute the
Examiner’s reasoning or explain why it would be deficient. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007)).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion of obviousness with respect to claim 1. Accordingly,
we sustain the rejection of claim 1, and claims 5 and 10 falling therewith,
under 35 U.S.C. § 103 as unpatentable over Orlando and Savage.

Claim 2
In rejecting claim 2, which depends from claim 1, the Examiner finds
that “Orlando does not disclose the additional limitation wherein said
volume is greater than or equal to 899 inches3 and less than or equal to 1349
inches3.” Final Act. 9. However, the Examiner finds that “Savage teaches
(table 1) a design constraint of a volume of the transmission being 1000 in3
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as an upper limit of the tested design.” Id.; see also id. at 10 (noting “that
the range taught by Savage of <1000 in3 overlaps the claimed range of 899
in3 to 1349 in3” and reasoning that “[i]n the case where claimed ranges
‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of
obviousness exists” (citing MPEP § 2144.05(I))). The Examiner determines
that it would have been obvious “to modify the gas turbine engine disclosed
by Orlando to have a volume of 1000 in3 or less, as taught by Savage, for the
purpose of utilizing a volume known in the art to work in the particular
application or field of endeavor.” Id. at 9–10.
Appellant argues that the art does not teach the volume range recited
in claim 2 is a result-effective variable. Appeal Br. 5–6. Appellant
acknowledges that “[i]t is not Appellant’s contention that it is the first to
ever form a gear reduction within the volume range,” but argues that “the
volume range of claim 2 is dependent to the other limitations of claim 1.
There is no showing of volume for a carrier and ring gear within the claimed
range, and in a gas turbine engine otherwise having the structure required by
claim 1.” Id. at 6. In this regard, Appellant does not address with sufficient
specificity the Examiner’s position or explain why it is deficient. See Final
Act. 9–10; Ans. 12. Notably, Appellant does not contest the Examiner’s
finding that the recited range and Savage’s range overlap. Thus, Appellant
does not apprise us of error in the Examiner’s conclusion of obviousness
with respect to claim 2.
For the above reasons, we sustain the rejection of claim 2 under
35 U.S.C. § 103 as unpatentable over Orlando and Savage.

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Rejection III – Obviousness based on Orlando, Savage, and McCune
With respect to Rejection III, Appellant does not set forth any
additional substantive arguments separate from the arguments discussed
supra; instead adding only that McCune does not cure the asserted
deficiencies in Rejection II. See Appeal Br. 4 (“The addition of McCune
adds nothing. Again, McCune does not show that the particular claimed
ratio here has any impact on any feature.”). Thus, for the same reasons that
Appellant’s arguments do not apprise us of error in Rejection II, Appellant
also does not apprise us of error in Rejection III.
Accordingly, we sustain the rejection of claims 1, 2, 5, and 10 under
35 U.S.C. § 103 as unpatentable over Orlando, Savage, and McCune.

Rejection IV – Obviousness based on Orlando,
Savage, and Giffin
The Examiner finds that “Orlando does not disclose the additional
limitation wherein a ratio of said hub radius to said fan blade radius is less
than or equal to 0.36 or greater than or equal to 0.24.” Final Act. 11.
However, the Examiner finds that Giffin teaches “a ratio of said hub radius
to said fan blade radius is between 0.1 and 0.3 (para. 14: ‘Inlet tip radius 76’,
‘inlet hub radius 78’, ‘. . . first stage 50 is designed with a fan inlet radius
ratio that is between 0.1 and 0.3. . .’).” Id. The Examiner finds that “the
range taught by Giffin of 0.1 - 0.3 overlaps the claimed ranges of ≤0.36 and
≥0.24.” Id. at 12. The Examiner determines that it would have been
obvious “to modify the gas turbine engine disclosed by Orlando such that
the ratio of said hub radius to said fan blade radius is between 0.1 and 0.3, or
to otherwise to optimize the ratio, as taught by Giffin, to improve flow per
unit frontal area and overall engine performance.” Id. The Examiner also
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explains that “such a modification is obvious as the result of the use of a
known technique (utilizing a ratio of hub radius to fan blade radius between
0.1 and 0.3) to improve a similar device (a gas turbine engine) in the same
way.” Id.
Appellant argues that Giffin “may disclose a hub having a radius[, but
this] does not turn the ratio required by this claim into a result-effective
variable.” Appeal Br. 6 (emphasis omitted). This argument is unpersuasive
because it is not responsive to the rejection presented. The Examiner does
not determine that the ratio ranges recited in claims 3 and 4 would have been
obvious as the optimization of a result-effective variable. Instead, as
discussed above, the Examiner finds that Giffin teaches a ratio of hub radius
to fan blade radius that overlaps the ranges recited in claims 3 and 4. See
Final Act. 11–12; see also Ans. 15 (explaining that “Giffin explicitly teaches
a hub radius, a fan blade radius and a ratio of the hub radius to the fan blade
radius being in the range of 0.1 to 0.3, which overlaps the claimed ranges of
≤0.36 as in claim 3 and ≥0.24 as in claim 4”). In this regard, Appellant does
not specifically address or identify error in the Examiner’s findings as to the
disclosure of Giffin, which is supported by a preponderance of the evidence.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion of obviousness with respect to claims 3 and 4.
Accordingly, we sustain the rejection of claims 3 and 4 under 35 U.S.C.
§ 103 as unpatentable over Orlando, Savage, and Giffin.

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CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
2 112(b) Indefiniteness 2
1, 2, 5, 10 103 Orlando, Savage 1, 2, 5, 10
1, 2, 5, 10 103 Orlando, Savage,
McCune
1, 2, 5, 10
3, 4 103 Orlando, Savage,
Giffin
3, 4
Overall Outcome 1–5, 10
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