Ex Parte Adams et alDownload PDFPatent Trial and Appeal BoardDec 18, 201815292249 (P.T.A.B. Dec. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/292,249 10/13/2016 Paul R. Adams 54549 7590 12/20/2018 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 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 ATTORNEY DOCKET NO. 59389US10; 67097-2790US6 CONFIRMATION NO. 4746 EXAMINER NGUYEN, ANDREW H ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 12/20/2018 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. ADAMS, SHANKAR S. MAGGE, JOSEPH BRENT STAUBACH, WESLEY K. LORD, FREDERICK M. SCHWARZ, and GABRIEL L. SUCIU Appeal 2018-005364 1, 2 Application 15/292,249 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL 3 STATEMENT OF THE CASE 1 "Appellant has filed a Notice of Appeal for co-pending Application No. 15/292,438." App. Br. 1. That co-pending application has been assigned Appeal No. 2018-005365. 2 The Examiner notes, "Inter partes review was instituted for parent application 13/475,252 (Patent 8,844,265) on 1/3/2017 and the final written decision was mailed 12/29/2017 which found claims 1, 2, 6-16, and 20 unpatentable." Ans. 2. 3 United Technologies Corporation is the applicant pursuant to 37 C.F.R. § 1.46 (see Application Data Sheet dated October 13, 2016) and Appellant Appeal2018-005364 Application 15/292,249 This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's final rejection of claims 1-30, which constitute all the claims pending in this application. Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained below, we do not find error in the Examiner's rejections of these claims. Accordingly, we AFFIRM the Examiner's rejections. CLAIMED SUBJECT MATTER The disclosed subject matter "relates to turbofan engines" and "[ m Jore particularly, [] relates to low pressure turbine sections of turbofan engines which power the fans." Spec. ,r 2. Claims 1 and 18 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A turbofan engine comprising: a fan including a circumferential array of fan blades, and a core including a core flowpath, the fan configured to communicate a portion of air into the core flowpath and a portion of air into a bypass flowpath; a compressor in fluid communication with the fan, the compressor including a low pressure compressor section and a high pressure compressor section, the low pressure compressor section including a low pressure compressor section inlet with a low pressure compressor section inlet annulus area; a fan duct including a fan duct annulus area outboard of the low pressure compressor section inlet, wherein the ratio of the fan duct annulus area to the low pressure compressor section inlet annulus area defines a bypass area ratio that is greater than 8.0; a combustor in fluid communication with the compressor; identifies United Technologies Corporation as the real party in interest. See App. Br. 1. 2 Appeal2018-005364 Application 15/292,249 a shaft assembly having a high portion and a low portion; a turbine in fluid communication with the combustor, the turbine having a high pressure turbine section coupled to the high portion of the shaft assembly to drive the high pressure compressor section, and a low pressure turbine section coupled to the low portion of the shaft assembly to drive the fan, the low pressure turbine section including blades and vanes, and a low pressure turbine airfoil count defined as the numerical count of all of the blades and vanes in the low pressure turbine section; wherein a ratio of the low pressure turbine airfoil count to the bypass area ratio is less than 150; wherein the low pressure turbine section further includes a maximum gas path radius and the fan blades include a maximum radius, and a ratio of the maximum gas path radius to the maximum radius of the fan blades is less than 0.55; and an epicyclic gearbox coupled to the fan and rotatable by the low pressure turbine section through the low portion of the shaft assembly to allow the low pressure turbine to tum faster than the fan, the gearbox having a speed reduction ratio between 2: 1 and 13: 1 determined by the ratio of diameters within the gearbox; wherein each of the low pressure compressor section, high pressure compressor section, low pressure turbine section and high pressure turbine section include a plurality of stages, wherein: each of the plurality of stages of the low pressure turbine includes a disk, and a circumferential array of blades extend from the disk, each of the blades including an airfoil extending from a platform at an inner diameter, to an outer diameter shroud, the shroud having an outboard seal which seals with an abradable fixed seal. Cronstedt Orlando et al. Udall Henry et al. Schreiber REFERENCES us 3,814,549 US 7,841,165 B2 US 2002/0172593 Al US 2008/0098718 Al US 2010/0259013 Al 3 June 4, 1974 Nov. 30, 2010 Nov. 21, 2002 May 1, 2008 Oct. 14, 2010 Appeal2018-005364 Application 15/292,249 Knip, Jr., G., Analysis of an Advanced Technology Subsonic Turbofan Incorporating Revolutionary Materials, NASA TECHNICAL MEMORANDUM, May 1987. Kurzke, J., Fundamental Differences Between Conventional and Gear Turbofans, PROCEEDINGS OF ASME TURBO EXPO 2009: POWER FOR LAND, SEA AND AIR, pp. 145-153, June 8-12, 2009. THE REJECTIONS ON APPEAL Claims 1-30 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Final Act. 2. Claims 1-7, 9, 10, and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, and Schreiber. Final Act. 3. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, Schreiber, and Henry. Final Act. 7. Claims 11-13, 15, and 16 are rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, Schreiber, and Cronstedt. Final Act. 7-8. Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, Schreiber, Cronstedt, and Udall. Final Act. 8. Claims 18-22 and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, and Kurzke. Final Act. 9. Claims 25 and 26 are rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, and Henry. Final Act. 12. Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, and Udall. Final Act. 13. Claim 27 is rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, and Schreiber. Final Act. 14. 4 Appeal2018-005364 Application 15/292,249 Claim 28 and 29 are rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, and Cronstedt. Final Act. 14. Claim 30 is rejected under 35 U.S.C. § 103 as being unpatentable over Orlando, Knip, Kurzke, Cronstedt, and Udall. Final Act. 15. ANALYSIS The rejection of claims 1-30 for failing to comply with the enablement requirement Independent claims 1 and 18 are similar in that they both recite the limitations: (1) "the ratio of the fan duct annulus area to the low pressure compressor section inlet annulus area defines a bypass area ratio that is greater than 8.0;" (2) "a ratio of the low pressure turbine airfoil count to the bypass area ratio is less than 150;" and, (3) "a ratio of the maximum gas path radius to the maximum radius of the fan blades is less than 0.55." App. Br. 14, 17 (Claims App.). The Examiner determines that because the range of each of these recited ratios does not have either an upper boundary or a lower boundary, a person skilled in the art would not be enabled to: (1) "make and use a turbofan engine with a bypass area ratio approaching infinity;" (2) "make and use a turbofan engine with a bypass area ratio approaching infinity or a low pressure turbine airfoil count of zero;" and (3) "make and use a turbofan engine with a maximum gas path radius of zero or a fan blade radius of infinity." Final Act. 2-3; see also Ans. 2--4 In reply, Appellant contends that "[t]he Examiner has provided no analysis regarding the undue experimentation factors established in the case of In re Wands, 858 F.2d 731 [](Fed.Cir. 1988)," and "[a]bsent such analysis, it is impossible for the Examiner to conclude that Appellant's Specification is insufficient to enable a worker of skill in the art to make and 5 Appeal2018-005364 Application 15/292,249 use the claimed invention." App. Br. 4--5. Appellant further points out that open-ended claims "may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit." App. Br. 5 (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1572 (Fed. Cir. 1991)). Appellant contends that "there is an inherent, practical limitation to each of the claimed open-ended ratios" because "it is impossible to have an infinite fan duct annulus area within a finite bypass duct" and "a worker of ordinary skill in the art would recognize that an infinite bypass area ratio is unachievable and impractical." App. Br. 5. Appellant contends that in a similar manner, "[p ]ractical lower limits also exist for ratios of second turbine airfoil count to bypass area ratio" and "practical lower limits exist for ratios of maximum gas path radius to maximum radius of fan blades." App. Br. 6. Appellant's contentions are persuasive. When rejecting a claim for lack of enablement, as here, "the [Examiner] bears an initial burden of setting forth a reasonable explanation as to why [the Examiner] believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application .... " In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). In other words, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d at 1561; In re Wands, 858 F.2d at 737 (setting forth eight factors to be considered to evaluate whether a disclosure would require undue experimentation). The Examiner's rejection does not explain why the 6 Appeal2018-005364 Application 15/292,249 disclosure, as filed, is not sufficiently complete to enable a skilled artisan to make and use the subject matter of claims 1 and 18 without undue experimentation. See Ans. 2--4. Although the Examiner is not required to discuss all Wands factors, the record does not reflect that the Examiner considered any Wands factor or other evidence to determine whether undue experimentation is required to make and use the claimed invention. See In re Hillis, 2012 WL 1817636, at *4 (Fed. Cir. May 21, 2012). Thus, even if some experimentation is required-rather than undue experimentation-we agree with Appellant that an ordinary artisan would be able to determine the practical inherent limits for the claimed range of ratios. As Appellant explains, one of ordinary skill in the art "would understand from at least the[] portions of Appellant's Specification[] the basic architecture of a bypass turbine engine" in relation to "sufficient airflow to be delivered by the fan 42 to the core flow path C for combustion to occur and the engine to function." Reply Br. 3. Hence, considering this disclosure coupled with knowledge from the ordinary artisan, undue experimentation would not be necessary to determine the limits for the recited range of ratios. Concerning "the Examiner's arguments that the claimed quantities represent 'engineering design variables/quantities,"' we further agree with Appellant that "the numerical ranges 'must be considered in the context in which it is being applied,' here within a gas turbine engine, and not as an unconstrained 'mathematical exercise."' App. Br. 7 ( quoting Ex parte F eulner4). As such, we do not sustain the stated rejection of claims 1-30, for lack of enablement. 4 Appeal No. 2013-010469 (App. No. 13/366,419, decided 10/23/2015), pp. 8-9. 7 Appeal2018-005364 Application 15/292,249 The rejection of claims 1-7, 9, 10, and 17 as being obvious over Orlando, Knip, Kurzke, and Schreiber Appellant argues claims 1-7, 9, 10, and 17 together. App. Br. 8-13; see also Reply Br. 5-9. We select claim 1 for review, with claims 2-7, 9, 10, and 17 standing or falling therewith. See 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Orlando discloses the various components of the turbofan engine (including the recited fan, compressor, fan duct, combustor, shaft and turbine) but acknowledges that "Orlando is silent as to the" three cited ratios replicated above. Final Act. 3--4. The Examiner relies on the data disclosed in Figure 13 of Knip to ascertain the recited "bypass area ratio" and also the recited ratio between the gas path radius and fan blade radius. Final Act. 5. Regarding the third ratio, the Examiner relies on the above "bypass ratio" to conclude that it would have been obvious to provide "a ratio of the low pressure turbine airfoil count to the bypass area ratio of less than 150, as taught by Kurzke." Final Act. 5. The Examiner reasons that the modifications are obvious because "[i]t has been held that combining or simple substitution of prior art elements according to known methods to yield predictable results renders the limitation obvious" and also that "providing a ratio of the low pressure turbine airfoil count to the bypass area ratio of less than 150 yields predictable results." Final Act. 5. The Examiner further acknowledges that "Orlando in view of Knip and Kurzke fails to teach ... the shroud having an outboard seal which seals with an abradable fixed seal." Final Act. 5. The Examiner finds that "it was well known in the art [ for the shroud to have] an outboard seal which seals with an abradable fixed seal, as taught by Schreiber (Fig 1-2 and para[.] 14; airfoil 4, shroud 7, abradable fixed seal 1 O)." Final Act. 5---6. The Examiner concludes that it would have been obvious to modify the turbofan engine of 8 Appeal2018-005364 Application 15/292,249 Orlando to have "an outer diameter shroud, the shroud having an outboard seal which seals with an abradable fixed seal in order to increase efficiency, as taught by Schreiber." Final Act. 6. Appellant contends that "[the] rejection is improper for at least five reasons." App. Br. 8. First, Appellant argues that "the teachings of Orlando and Knip are so disparate that a person of ordinary skill would not have made such a modification without the use of teachings of the current application as a roadmap in an exercise of hindsight reconstruction." App. Br. 9; see also Reply Br. 5-7. This contention is unpersuasive because the Examiner explains that "[b ]oth Orlando and Knip teach turbofan engines comprising the necessary sections (fan, low pressure compressor, high pressure compressor, high pressure turbine, low pressure turbine)." Ans. 4. "The differences cited by Appellant (single fan, number of turbine stages) are well known in the art;" "[t]heir effects are also well-known in the art ... and would have been obvious;" and, "[ s ]uch changes were within the level of ordinary skill in the art." Ans. 4--5. Accordingly, per the Examiner, "any such changes made to Orlando would be implemented with a reasonable expectation of success." Ans. 5. In other words, the combined teachings of Orlando, Knip, and Kurzke regarding modifying the turbofan engine of Orlando to have the range of ratios as claimed, would yield predictable results of efficiency and energy extraction from the working fluid. We also note that Appellant's argument appears to be based on a bodily incorporation into Orlando's turbofan engine of one or more specific teachings of Knip. However, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the 9 Appeal2018-005364 Application 15/292,249 structure of the primary reference. See In re Keller 642 F.2d 413,425 (CCPA 1981). "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." Id. Second, Appellant also contends that "[t]he rejection does not establish a motivation to combine Orlando and Knip," and that "[ m ]odifying the Orlando engine to include additional turbine stages, as disclosed by Knip, would increase the overall weight of the engine" ("[ s ]uch an increase in weight [being] against conventional wisdom held by engine designers"). App. Br. 9; see also Reply Br. 8-9. These contentions are also unpersuasive because the Examiner explains that "there are many reasons to include additional stages, including to extract a desired amount of energy from the working fluid and to decrease loading on each of the stages." Ans. 5. Further, "[w]eight is a single design consideration in a multitude" of such considerations. Ans. 5 (referencing "page 6, last paragraph;" "page 7, first paragraph;" and "Figure 16" of Knip ). We have been instructed that "a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine." Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Appellant next contends that "[ t ]he Examiner's [ m ]easurement of Figure 13 of Knip is improper" (App. Br. 10) and that "Figure 13 of Knip is a small, low-fidelity image" meaning that "[ t ]here is no indication that the low pressure turbine of Figure 13 of Knip is actually drawn to scale." App. Br. 11; see also Reply Br. 9. We recognize the teachings of Hockerson-Halberstadt, Inc. v. Avia Grp. Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000); however, this does not 10 Appeal2018-005364 Application 15/292,249 mean that "things [Knip's] drawings show clearly are to be disregarded." See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). Here, the Examiner explains that "Knip's figure [13] is drawn to scale, as evidenced by the X and Y axes" and that "[t]he axes give incremental markings, indicative of the actual radius and length relative to the various engine components." Ans. 6- 7. Hence, "the entire purpose of the figure is to provide measurements for each of the engine elements." Ans. 7. Accordingly, the Examiner's action of extracting certain values from Figure 13 of Knip (see Final Act. 5) is not persuasive of Examiner error. Appellant further contends that "[t]he rejection does not establish that it would have been obvious to modify the combination of Orlando and Knip further in view of Schreiber." App. Br. 12 (bolding omitted). In support for this contention, Appellant argues that (1) there is no "reasonable expectation of success;" (2) "the addition of shrouds would[] affect the geometry of the turbine blades and turbine flow path as allegedly taught by Knip;" (3) the addition of outer diameter shrouds is not a simple substitution as the Examiner suggests;" and, ( 4) "[ t ]he addition of outer diameter shrouds and outboard abradable fixed seals allegedly taught by Schreiber would likely increase the weight of the combination." App. Br. 12; see also Reply Br. 9. We first note that the Examiner provided motivation (reasoning) for modifying the turbofan engine of Orlando with the teachings of Schreiber and did not suggest simple substitution. The Examiner stated that it would have been obvious to modify the turbofan engine of Orlando with "the shroud having an outboard seal which seals with an abradable fixed seal in order to increase efficiency, as taught by Schreiber." Final Act. 6. As to Appellant's contention regarding weight, this argument is unpersuasive for 11 Appeal2018-005364 Application 15/292,249 the same reason noted above. For these and other reasons (see Ans. 7), Appellant's contentions are not persuasive of Examiner error. Appellant finally contends that "[ t ]he Knip reference shows itself to be unreliable." App. Br. 12. In support for this contention, Appellant argues that "the entire tone of Knip is that technology must develop, such that a new engine might be made 'incorporating revolutionary materials,"' and that "Knip does not provide any teachings with regard to how such materials could enable such an engine." App. Br. 12. These arguments are unavailing in that they do not address the rejection. The Examiner does not rely on Knip for teaching materials used for the turbofan engine of Orlando; rather, the Examiner relies on Knip for teaching the range of ratios as claimed. See Final Act. 5. Further, as the Examiner points out, "weight is a single consideration in a multitude, and there are many ways to decrease weight, including by material selection and removal of other engine parts." Ans. 8. We note that in the Reply Brief, Appellant contends that the Examiner does not point to any record evidence to support the Examiner's contentions that the claimed quantities were known to be result effective, much less that a relationship between the two quantities was known to be result effective or that it was known to keep a ratio of the claimed quantities within any particular range (see Answer at pp. 4--5). Reply Br. 7. This argument also fails to address the rejection because the basis of the rejection is not modifying the turbofan engine of Orlando via routine optimization. Rather, the Examiner finds that Knip and Kurzke disclose the range of ratios as claimed and modifying the turbofan engine of Orlando would thus be obvious because "[i]t has been held that combining 12 Appeal2018-005364 Application 15/292,249 or simple substitution of prior art elements according to known methods to yield predictable results renders the limitation obvious." Final Act. 5. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claims 1-7, 9, 10, and 17 as being obvious over Orlando, Knip, Kurzke, and Schreiber. We sustain the rejection of claims 1-7, 9, 10, and 17. The rejection of claims 18-22 and 24 as being obvious over Orlando, Knip, and Kurzke Appellant argues claims 18-22 and 24 together. App. Br. 13; see also Reply Br. 5-9. We select independent claim 18 for review, with claims 19- 22 and 24 standing or falling therewith. Appellant contends that "[r]egarding the Examiner's rejection of independent claim 18, the Examiner's arguments parallel the rejection of claim 1, and are deficient for at least the reasons discussed above." App. Br. 13. Because we find no deficiencies in the Examiner's rejection of independent claim 1 as being obvious over Orlando, Knip, Kurzke, and Schreiber for the reasons discussed above, we likewise sustain the Examiner's rejection of claims 18-22 and 24 as being obvious over Orlando, Knip, and Kurzke. The rejection of claim 8 as being obvious over Orlando, Knip, Kurzke, Schreiber, and Henry The rejection of claims 11-13, 15, and 16 as being obvious over Orlando, Knip, Kurzke, Schreiber, and Cronstedt The rejection of claim 14 as being obvious over Orlando, Knip, Kurzke, Schreiber, and Udall 13 Appeal2018-005364 Application 15/292,249 The rejection of claims 25 and 26 as being obvious over Orlando, Knip, Kurzke, and Henry The rejection of claim 23 as being obvious over Orlando, Knip, Kurzke, and Udall The rejection of claim 27 as being obvious over Orlando, Knip, Kurzke, and Schreiber The rejection of claims 28 and 29 as being obvious over Orlando, Knip, Kurzke, and Cronstedt The rejection of claim 30 as being obvious over Orlando, Knip, Kurzke, Cronstedt, and Udall For these rejections, Appellant contends that "[r]egarding the Examiner's rejection of the remaining dependent claims, the additions of the Henry, Cronstedt, and Udall references do not cure the above noted deficiencies of the base combination." App. Br. 13. As we find no deficiencies in the Examiner's rejection of independent claim 1 as being obvious over Orlando, Knip, Kurzke, and Schreiber and of independent claim 18 as being obvious over Orlando, Knip, and Kurzke for the reasons discussed above, we likewise sustain the Examiner's rejections of claims 8, 11-16, 23, and 25-30 over the variously indicated combinations of cited art. DECISION The Examiner's rejection of claims 1-30 under 35 U.S.C. § 112, first paragraph, for lack of enablement is reversed. The Examiner's rejections of claims 1-30 under 35 U.S.C. § 103 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). 14 Appeal2018-005364 Application 15/292,249 AFFIRMED 15 Copy with citationCopy as parenthetical citation