Ex Parte Adams et al

Patent Trial and Appeal Board

Dec 21, 2018

15292438 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/292,438 10/13/2016 Paul R. Adams
54549 7590 12/26/2018
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.
59389US12;
67097-2790US8
CONFIRMATION NO.
2727
EXAMINER
NGUYEN, ANDREW H
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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 2018-005365 1' 2, 3
Application 15/292,438
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
1 "Appellant has filed a Notice of Appeal for co-pending Application No.
15/292,249" filed October 13, 2016. App. Br. 1. That co-pending
application has been assigned Appeal No. 2018-005364.
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 identified as the applicant on the
Application Data Sheet dated October 13, 2016 submitted in association
with this application. United Technologies Corporation is also identified as
the real party in interest and as the assignee of the entire right to this
application. See App. Br. 1. Accordingly, pursuant to 37 C.F.R. § 1.46, we
understand United Technologies Corporation as the Appellant.
Appeal2018-005365
Application 15/292,438
DECISION ON APPEAL
STATEMENT OF THE CASE
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, 11, 24, and 29 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;
a compressor in fluid communication with the fan, the
compressor including a second compressor section and a first
compressor section, the second compressor section including a
second compressor section inlet with a second compressor
section inlet annulus area;
a fan duct including a fan duct annulus area outboard of
the second compressor section inlet, wherein the ratio of the fan
duct annulus area to the second compressor section inlet
annulus area defines a bypass area ratio that is greater than 6.0;
a combustor in fluid communication with the
compressor;
a shaft assembly having a first portion and a second
portion;
a turbine in fluid communication with the combustor, the
turbine having a two-stage first turbine section coupled to the
first portion of the shaft assembly to drive the first compressor
2
Appeal2018-005365
Application 15/292,438
section, and a four-stage second turbine section coupled to the
second portion of the shaft assembly to drive the fan, each of
the second turbine section stages including blades and vanes,
and a second turbine airfoil count defined as the numerical
count of all of the blades and vanes in the second turbine
section;
wherein a ratio of the second turbine airfoil count to the
bypass area ratio is less than 150;
wherein the second 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
wherein a hub-to-tip ratio (Ri:Ro) of the second turbine
section is between 0.4 and 0.5 measured at the maximum Ro
axial location in the second turbine section; and
a planetary gearbox coupled to the fan and rotatable by
the second turbine section through the second portion of the
shaft assembly to allow the second turbine section 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.
Cronstedt
Lee
Orlando et al.
Udall
Seda et al.
Henry et al.
REFERENCES
us 3,814,549
us 4,313,711
US 7,841,165 B2
US 2002/0172593 Al
US 2003/0163984 Al
US 2008/0098718 Al
June 4, 1974
Feb.2, 1982
Nov. 30, 2010
Nov. 21, 2002
Sept. 4, 2003
May 1, 2008
Knip, Jr., G., Analysis of an Advanced Technology Subsonic Turbofan
Incorporating Revolutionary Materials, NASA TECHNICAL MEMORANDUM,
1-24 (May 1987).
Kurzke, J., Fundamental Differences Between Conventional and Gear
Turbofans, PROCEEDINGS OF ASME TURBO EXPO 2009: POWER FOR LAND,
SEA AND AIR, 145-153, (June 8-12, 2009).
3
Appeal2018-005365
Application 15/292,438
THE REJECTIONS ON APPEAL 4
Claims 1-30 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Final Act. 2-3.
Claim 27 is rejected under 35 U.S.C. § 112(a) as failing to comply
with the written description requirement. Final Act. 3.
Claims 1, 2, and 5 are rejected under 35 U.S.C. § 103 as being
unpatentable over Orlando, Knip, Kurzke, and Lee. Final Act. 4.
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Orlando, Knip, Kurzke, Lee, and Henry. Final Act. 8.
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Orlando, Knip, Kurzke, Lee, and Cronstedt. Final Act. 9.
Claims 7 and 8 are rejected under 35 U.S.C. § 103 as being
unpatentable over Orlando, Knip, Kurzke, Lee, and Udall. Final Act. 9.
Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Orlando, Knip, Kurzke, Lee, Udall, and Seda. Final Act.
10.
4 In the Advisory Action dated September 29, 2017, the Examiner indicated
that the proposed amendments of September 20, 2017 would be entered and
stated "[t]he amendments to the claims overcome the 112(b) rejections."
See Adv. Act. dated Sept. 29, 2017, pp. 1-2. In the later Advisory Action
dated December 15, 2017, the Examiner indicated that the proposed
amendments of November 27, 2017 would be entered and stated
"[r]egarding the amendments submitted 11/27/2017, the amendments are
entered for correcting minor antecedent basis issues. The rejections from the
Final Rejection mailed 7/18/2017 are maintained." See Adv. Act. dated Dec.
15, 2017, pp. 1-2. As the Examiner did not raise any issue concerning the
indefiniteness of claims 1-10, 22, and 23 under 35 U.S.C. § 112(b) in the
Answer, we consider the rejections of these claims as not being before us on
appeal. See Final Act. 3--4.
4
Appeal2018-005365
Application 15/292,438
Claims 11-14, 16, 17, 20, 21, 24, and 26-30 are rejected under
35 U.S.C. § 103 as being unpatentable over Orlando, Knip, and Lee. Final
Act. 11.
Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over
Orlando, Knip, Lee, and Henry. Final Act. 17.
Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over
Orlando, Knip, Lee, and Cronstedt. Final Act. 18.
Claims 19 and 25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Orlando, Knip, Lee, and Kurzke. Final Act. 18.
Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable over
Orlando, Knip, Lee, and Udall. Final Act. 19.
Claim 23 is rejected under 35 U.S.C. § 103 as being unpatentable over
Orlando, Knip, Lee, Udall, and Seda. Final Act. 20.
ANALYSIS
The rejection of claims 1-30
for failing to comply with the enablement requirement
Independent claim 1 recites the limitations: (1) "the ratio of the fan
duct annulus area to the second compressor section inlet annulus area
defines a bypass area ratio that is greater than 6.0"; (2) "a ratio of the second
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. 17 (Claims App.). 5 The Examiner
determines that because the range of each of these recited ratios does not
5 We note that independent claim 11 recites limitation ( 1) only and
independent claims 24 and 29 do not recite any of limitations (1 }-(3). App.
Br. 19, 21-23 (Claims App.).
5
Appeal2018-005365
Application 15/292,438
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.
Appellant 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 "the
basic architecture of a bypass turbine engine requires some air to travel to
the core engine for combustion to occur and the engine to function" and "a
worker of ordinary skill in the art would recognize that an infinite bypass
area ratio is unachievable and impractical." App. Br. 5---6. 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; see also Reply Br. 1-5.
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
6
Appeal2018-005365
Application 15/292,438
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 731, 737 (Fed. Cir.
1988) (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 disclosure, as filed, is not sufficiently complete to
enable a skilled artisan to make and use the subject matter of claim 1 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 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 to be able to practice
the claimed invention. 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. 4. Hence, considering this
disclosure coupled with knowledge from the ordinary artisan, undue
experimentation would not be necessary to determine the limits for the range
of ratios as claimed. Concerning "the Examiner's arguments that the
claimed quantities represent 'engineering design variables/quantities,"' we
7
Appeal2018-005365
Application 15/292,438
further agree with Appellant that "the numerical ranges 'must be considered
in the context in which [they are] being applied,' here within a gas turbine
engine, and not as an unconstrained 'mathematical exercise."' App. Br. 7-8
(quoting Ex parte Feulner6); Final Act. 20. As such, we do not sustain the
stated rejection of claims 1-30, for lack of enablement.
The rejection of claim 27
for failing to comply with the written description requirement
Claim 27 recites "the ratio of the fan duct annulus area to the second
compressor section inlet annulus area defines a bypass area ratio that is
greater than 6.0." App. Br. 22; emphasis added (Claims App.). The
Examiner finds that "[t]he original disclosure fails to teach the second
turbine driving the first compressor section and the fan in combination with
the limitations of claim 27." Final Act. 3. The Examiner explains that "[t]he
claim has apparently mistakenly switched the 'first compressor section' and
'the second compressor section."' Ans. 4.
In reply, Appellant states that "[t]o reduce the number of issues on
appeal, Applicant has submitted an Amendment herewith to amend claim 27
in the manner suggested by the Examiner." Reply Br. 10.
As that proposed claim amendment has not been entered by the
Examiner, claim 27 stands rejected for failing to comply with the written
description requirement. Accordingly, we summarily sustain this rejection
of claim 27.
6 Appeal No. 2013-010469 (App. No. 13/366,419, decided 10/23/2015), pp.
8-9.
8
Appeal2018-005365
Application 15/292,438
The rejection of claims 1, 2, and 5
as being obvious over Orlando, Knip, Kurzke, and Lee
Appellant argues claims 1, 2, and 5 together. App. Br. 9-15; see also
Reply Br. 5-10. We select claim 1 for review, with claims 2 and 5 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 claimed turbofan engine (including the recited fan, compressor, fan duct,
combustor, shaft, turbine, and gearbox) but acknowledges that "Orlando is
silent as to" the three cited ratios reiterated above. Final Act. 5-7. 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. 6. Regarding the "airfoil count"
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. 7. The Examiner reasons that these 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. 7.
The Examiner further acknowledges that Orlando is silent as to "a
hub-to-tip ratio (Ri:Ro) of the low pressure turbine being between 0.4 and
0.5 measured at the maximum Ro axial location in the second turbine
section." Final Act. 5. The Examiner finds Knip teaches in Figure 13,
"Ri:Ro at maximum Ro axial location in the low pressure turbine is 0.5 -
10in/20in." Final Act. 6. The Examiner also finds that "Lee teaches that
9
Appeal2018-005365
Application 15/292,438
hub/tip ratio of a turbine may be 0.5, and that the ratio is a result[]-effective
variable, affecting efficiency (see col[.] 4 11. 49-52)." Final Act. 6. The
Examiner concludes that it would have been obvious to modify the turbofan
engine of Orlando "to make the hub-to-tip ratio of the fan drive turbine
section between 0.4 to 0.5 at the maximum R[o] axial location, as taught by
Knip and Lee." Final Act. 6. The Examiner notes that "[i]t has been held
that where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only routine skill in
the art," and that "[i]n this case, the general conditions of the claim
determining optimum hub/tip ratio of a turbine - is disclosed," and thus,
"[ d]iscovering the optimum or workable ranges involves only routine skill in
the art." Final Act. 6-7.
Appellant contends that "[the] rejection is improper for at least three
reasons." App. Br. 9. 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. 1 O; see also Reply Br. 6-8.
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--5. "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. 5. Accordingly, per the Examiner, "any such changes made to
10
Appeal2018-005365
Application 15/292,438
Orlando would be implemented with a reasonable expectation of success."
Ans. 5. In other words, the combined teachings of Orlando, Knip, and
Kurzke applied in 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. See Ans. 5.
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. See App. Br. 9. However, the test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. See In re Keller, 642 F.2d 413,
425 (CCP A 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. 10 ( emphasis omitted); 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---6 (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
11
Appeal2018-005365
Application 15/292,438
obviate motivation to combine." Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006). Accordingly, alleged disadvantages of the
proposed combination must be considered along with advantages.
Appellant further contends that "[t]he Examiner's [m]easurement of
Figure 13 of Knip is improper" (App. Br. 13, (emphasis omitted)) 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. 14; 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
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. 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. 6) is not
indicative of Examiner error.
Appellant further contends that "[t]he rejection has not established a
reasonable expectation of success in modifying Orlando in view of Lee."
App. Br. 11 ( emphasis omitted). In support for this contention, Appellant
argues that (1) "[t]he purpose of the machine disclosed in the Lee patent is
solely to extract work from oscillating fluid flows, such as water waves; it
does not produce thrust or even drive a fan"; (2) "the Lee reference does not
teach that hub-to-tip ratio was known to be result-effective within the
12
Appeal2018-005365
Application 15/292,438
context of a fan drive turbine of a gas turbine engine, much less keeping this
ratio within any particular range"; (3) "a single data point is insufficient to
establish that a given parameter was known to be a result effective variable";
and, (4) "[t]he cited portion of Lee only gives one data point (hub-to-tip ratio
of 0.5) and does not demonstrate any causal relationship between hub-to-tip
and the alleged efficiency." App. Br. 11-12; see also Reply Br. 9-10.
These arguments are unpersuasive. As the Examiner points out, "Lee
teaches that their invention relates to 'turbines and like rotary machines,
hereinafter referred to collectively as turbines ... which are of the kind in
which a working fluid, either in liquid or gaseous form, is arranged to act on
a plurality of generally radially extending rotor blades for producing a
rotation of a rotor' (col[.] 111. 4--12)." Ans. 6 (emphasis added). Lee
discloses that "[a] typical design of turbine rotor with a hub/tip ratio of 0.5
can be shown to give an integrated theoretical efficiency of 72Yz%,
demonstrating acceptable overall efficiencies of such a rotor" (Lee col. 4, 11.
49-52; emphasis added) and coupled with the disclosure discussed above,
and we agree with the Examiner that Lee teaches that "hub/tip ratio is a
result[] effective variable, affecting efficiency of the turbine." Ans. 6. In
other words, as Lee discloses that the efficiency of a rotor would be varied
and affected by the varying of the hub/tip ratio, the hub/tip ratio would thus,
be a result effective variable. We further note that even if Lee does not
disclose that the hub-to-tip ratio is a result effective variable, the Examiner
finds that both Lee and Knip disclose a value of 0.5, which borders the
claimed range ("a hub-to-tip ratio (Ri:Ro) of the second turbine section is
between 0.4 and 0.5." App. Br. 17 (Claims App.) (emphasis added). See
Final Act. 6. Because Lee discloses a value of 0.5, a prima facie case of
13
Appeal2018-005365
Application 15/292,438
obviousness exists absent a showing of unexpected properties. See In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("We have also held that a
prima facie case of obviousness exists when the claimed range and the prior
art range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties.").
Appellant finally contends that "[t]he Knip reference shows itself to
be unreliable." App. Br. 15 (emphasis omitted). 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.
15.
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. 6. 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 with respect
to the Knip reference,
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).
14
Appeal2018-005365
Application 15/292,438
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
or simple substitution of prior art elements according to known methods to
yield predictable results renders the limitation obvious." Final Act. 7.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1, 2, and 5 as being obvious over
Orlando, Knip, Kurzke, and Lee. We thus, sustain the rejection of claims 1,
2, and 5.
The rejection of claims 11-14, 16, 17, 20, 21, 24, and 26--30
as being obvious over Orlando, Knip, and Lee
Appellant argues claims 11-14, 16, 17, 20, 21, 24, and 26-30
together. App. Br. 15; see also Reply Br. 5-10. We select independent
claim 11 for review, with claims 12-14, 16, 17, 20, 21, 24, and 26-30
standing or falling therewith.
Appellant contends that "[r]egarding the Examiner's rejection of
independent claims 11, 24, and 29, the Examiner's arguments parallel the
rejection of claim 1, and are deficient for at least the reasons discussed
above." App. Br. 15.
Because we find no deficiencies in the Examiner's rejection of
independent claim 1 as being obvious over Orlando, Knip, Kurzke, and Lee
for the reasons discussed above, we likewise sustain the Examiner's
rejection of claims 11-14, 16, 17, 20, 21, 24, and 26-30 as being obvious
over Orlando, Knip, and Lee.
15
Appeal2018-005365
Application 15/292,438
The rejection of claims 3 and 4
as being obvious over Orlando, Knip, Kurzke, Lee, and Henry
The rejection of claim 6
as being obvious over Orlando, Knip, Kurzke, Lee, and Cronstedt
The rejection of claims 7 and 8
as being obvious over Orlando, Knip, Kurzke, Lee, and Udall
The rejection of claims 9 and 10
as being obvious over Orlando, Knip, Kurzke, Lee, Udall, and Seda
The rejection of claim 15
as being obvious over Orlando, Knip, Lee, and Henry
The rejection of claim 18
as being obvious over Orlando, Knip, Lee, and Cronstedt
The rejection of claims 19 and 25
as being obvious over Orlando, Knip, Lee, and Kurzke
The rejection of claim 22
as being obvious over Orlando, Knip, Lee, and Udall
The rejection of claim 23
as being obvious over Orlando, Knip, Lee, Udall, and Seda
For these rejections, Appellant contends that "[r]egarding the
Examiner's rejection of the remaining dependent claims, the additions of the
Lee, Henry, Cronstedt, Udall, and Seda references do not cure the above
noted deficiencies of the base combination." App. Br. 15.
As we find no deficiencies in the Examiner's rejection of independent
claim 1 as being obvious over Orlando, Knip, Kurzke, and Lee and
independent claims 11, 24, and 29 as being obvious over Orlando, Knip, and
Lee for the reasons discussed above, we likewise sustain the Examiner's
rejections of claims 3, 4, 6-10, 15, 18, 19, 22, 23, and 25, over the variously
indicated combinations of cited art.
16
Appeal2018-005365
Application 15/292,438
DECISION
The Examiner's rejection of claims 1-30 under 35 U.S.C. § 112(a) for
failing to comply with the enablement requirement is reversed.
The Examiner's rejection of claim 27 under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement is summarily
affirmed.
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).
AFFIRMED
17