Ex Parte Ballard et al

Patent Trial and Appeal Board

Oct 31, 2018

14046072 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/046,072 10/04/2013
30024 7590 11/02/2018
NIXON & V ANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Henry G. Ballard JR.
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. CONFIRMATION NO.
JHN-839-2419 3612
EXAMINER
MIKUS, JASON
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY G. BALLARD JR.,
DOUGLAS FRANK BEADIE, and
JOHN DAVID MEMMER 1
Appeal2018-002958
Application 14/046,072
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-11 and 13-22. Claim 12 has been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 The General Electric Company ("Appellant") is the applicant as provided
under 3 7 C.F .R. § 1.46 and is identified as the real party in interest. Appeal
Brief 3 ("Appeal Br."), filed Aug. 4, 2017.
Appeal2018-002958
Application 14/046,072
We AFFIRM-IN-PART and designate our affinnance of the rejection
of claims 1-11 and 13-15 under 35 U.S.C. § 101 as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to clearance control in a turbine,
such as a gas turbine." Spec. ,r 1; Figs. 1, 2. Claims 1, 8, 16, and 18 are
independent.
Claims 8 and 16 are illustrative of the claimed subject matter and
recite:
8. A method to design an inner annular shell which houses a
rotating axial turbine comprising:
estimating rates of thermal radial expansion for each of the
inner annular shell and the axial turbine which includes a turbine
wheel and a row of buckets mounted to the wheel;
estimating a clearance between tips of the buckets and an
interior surface attached to the inner annular shell aligned with
the tips, wherein the clearance is estimated based on the rates of
thermal radial expansion;
determining a surface area or volume of at least a portion
of a cooling passage in the inner annular shell based on the
clearance, and
generating a design of the cooling passage in which the
cooling passage has the determined surface area or volume.
16. A method for clearance control in a gas turbine including
an inner annular shell housing a turbine wheel supporting a row
of turbine buckets, the method comprising:
during a startup stage of the gas turbine, thermally
expanding in the inner annular shell at a rate faster than thermally
expanding the turbine wheel and the row of turbine buckets;
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directing compressed gas through an interior passage of
the inner annular shell during the startup operation, and
controlling a clearance between tips of the turbine buckets
and an inner surface of the inner annular shell or connected to the
inner annular shell, wherein the control of the clearance is
achieved, at least in part, based on a surface area and/or volume
of the interior passage sized to cause the inner annular shell to
achieve the faster thermal expansion, wherein the surface area or
volume of the interior passage is configured to achieve the faster
thermal expansion.
THE REJECTIONS
I. Claims 8-11, 13-15, and 22 stand rejected under 35 U.S.C. § 112,
second paragraph, for indefiniteness.
II. Claims 1-11, 13-15, 21, and 22 stand rejected under 35 U.S.C. § 101,
as being directed to patent-ineligible subject matter. 2
III. Claims 16-20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Bolms (US 7,246,993 B2, issued July 24, 2007) and Nakamura (US
2010/0247298 Al, published Sept. 30, 2010).
ANALYSIS
Rejection I - Indefiniteness
With respect to claim 8, the Examiner finds the phrase "generating a
design of the cooling passage in which the cooling passage has the
determined surface area or volume" renders the claim indefinite because
"[i]t is unclear what is meant by the generation of a design as the
2 The Examiner lists claims 1-15, 21, and 22 as being rejected. See Non-Final
Office Action 5 ("Non-Final Act."), dated Dec. 29, 2016. However, claim 12
is canceled. See Appeal Br. 8 (footnote 1), 15 (Claims App.).
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specification does not detail what type of design would be generated," and
"[ w ]ithout a proper recitation of the type of design that is generated, i.e.
blueprint, drawing, [or] printed structure, it is not known what is meant by
the generation of a design." Non-Final Act. 4.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim "contains words or phrases whose meaning is unclear." In
re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014). Here, we agree with
Appellant "[t]he step for generating a design is sufficiently specific to
inform a person of ordinary skill in the art that the step is one that generates
a design of a cooling passage having a specific surface area or volume"
(Appeal Br. 7), and "[t]he rejection wrongly attempts to limit the invention
to a specific type of design" (id. at 8). The phrase "generating a design" is
clear and claim 8 does not limit the type of design, such a consideration
relates to the breadth, and not the indefiniteness, of the claim. SmithKline
Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005)
(breadth is not indefiniteness).
Accordingly, we do not sustain the Examiner's rejection of claims 8-
11, 13-15, and 22, as being indefinite.
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Rejection II - Patent-Ineligible Subject Matter
Claims 1-11 and 13-15
Appellant does not offer arguments in favor of claims 2-7, 9-11, and
13-15 separate from those presented for independent claims 1 and 8. See
Appeal Br. 8-10; see also Reply Br. 2-3. 3 We select claim 8 as the
representative claim, and claims 1-7, 9-11, and 13-15 stand or fall with
claim 8. 4 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). Appellant presents separate
arguments for claims 21 and 22, which are separately addressed below.
In rejecting claim 8 under 35 U.S.C. § 101, the Examiner applies the
two-step framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1296-97 (2012) and reiterated in Alice
Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014),
which considers, in the first step, whether the claims are "directed to" a
patent-ineligible concept, e.g., an abstract idea, and then, in a second step,
whether the claims, individually and as an ordered combination, recite an
inventive concept-an element or combination of elements sufficient to
ensure the claims amount to "significantly more" than the abstract idea and
transform the nature of the claims into a patent-eligible concept.
3 Reply Brief ("Reply Br."), filed Jan. 26, 2018.
4 Claim 8 is similar to claim 1 in that both claims recite the steps of"estimating
rates of thermal radial expansion," "estimating a clearance," and "determining
a surface area or volume" or "calculating a volume or a surface area." Appeal
Br. 14--15 (Claims App.). As claim 8 is more limiting by reciting, among
other things, "generating a design of the cooling passage in which the cooling
passage has the determined surface area or volume," we select claim 8 as the
representative claim. See id.
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Pursuant to the first step of the Alice analysis, the Examiner
determines "[ c ]laim 8 is directed to the abstract idea of estimating,
determining, and generating a design," which entails nothing more than
"mathematical functions and/or pure mental steps." Non-Final Act. 5. The
Examiner explains (1) "the estimation and determination function can be
considered a purely mathematical operation and is not subject matter eligible
for patent protection"; and (2) claim 8 "do[ es] not recite specific
manipulation of the data in relation to other structure which ties the steps to
a practical application." Id.; see also id. at 3 (citing Parker v. Flook, 437
U.S. 584 (1978)). Pursuant to the second step of the analysis, the Examiner
determines claim 8 "do[es] not include additional elements that are sufficient
to amount to significantly more than the judicial exception because the
estimations and determinations based on said estimations are things that can
be routinely performed by a computer or in a person's head." Id. at 5.
Appellant contends claim 8 is not directed to abstract idea. Appeal
Br. 9. More specifically, Appellant contends (1) the Examiner's
characterization of the claimed invention "ignores substantive requirements
of [the claims] such as estimating 'the rate of thermal expansion of each of a
stator and rotor', estimating 'a clearance between the rotor and stator based
on the rates of thermal expansion', and calculating a volume 'of at least a
portion of a cooling passage in the stator or rotor based on the clearance"' 5
(id.); (2) "[t ]he values and estimations are not merely the result of collecting
information because the volume and area of the cooling passage does not yet
5 These limitations are recited in claim 1 and Appellant notes similar
limitations are recited in claim 8. See Appeal Br. 9.
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exist until the method is performed" (id.); (3) "there has been no credible
showing that the estimations and calculations recited in the claims can be
performed as a mental process by humans" (id.); (4) "the claims do not
broadly cover a pure mathematical algorithm" and "will not preempt any
mathematical algorithm or general method of design" (id.); and ( 5) "the
claims are directed to a specific application (a cooling passage in a stator)"
(id. at 10). See also Reply Br. 2-3.
To the extent the Examiner asserts if claim 8 can be performed by a
computer then claim 8 is directed to an abstract idea, we agree with
Appellant the Examiner's assertion is a mis-statement of the law. See Reply
Br. 2. We note, however, the Examiner appears to be asserting if the steps
were carried out by a computer, then the functions used by the computer to
carry them out are routine and conventional with respect to the second step
of the analysis. See Non-Final Act. 5.
We agree with the Examiner claim 8 is directed to an abstract idea.
"[M]ental processes are a subcategory of unpatentable abstract ideas."
Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) (internal citation and quotation marks omitted). Although Appellant
notes correctly claim 8 requires steps relating to estimating "the rate of
thermal expansion of each of a stator and rotor," estimating "a clearance
between the rotor and stator based on the rates of thermal expansion," and
calculating a volume "of at least a portion of a cooling passage in the stator
or rotor based on the clearance," each of these steps can be performed as a
mental process by humans. Even if crediting Appellant's contention the
values and estimations are not merely the result of collecting information,
such values and estimations are not precluded in claim 8 from being derived
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from a mental process by humans. Although the last step of claim 8 recites
"generating a design of the cooling passage in which the cooling passage has
the determined surface area or volume," there is nothing in the claim to
require the design to be a physical structure or to require this step to be a
physical step. As such, all the steps of claim 8 can be performed as a mental
process by humans.
In response to Appellant's contention claim 8 does not preempt any
mathematical algorithm or general method of design, we note although
preemption may inform patent ineligibility, its absence does not demonstrate
patent eligibility. See Fair Warning, IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1098 (Fed. Cir. 2016). We are not persuaded by Appellant's
preemption argument because for claims covering a patent ineligible
concept, preemption concerns "are fully addressed and made moot" by an
analysis under the Mayo/ Alice framework. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). The Examiner
performs such an analysis in the rejection and we conduct such an analysis
under the Mayo/ Alice framework supra.
To be complete, we address Appellant's contention claim 8 is directed
to a specific application of a cooling passage in a stator and includes details
of a process to arrive at a design of a cooling passage. See Appeal Br. 10.
In regard to the limitation "generating a design of the cooling passage in
which the cooling passage has the determined surface area or volume," we
note such "generating" either implements the abstract idea or is merely
insignificant post-solution activity. See Parker v. Flook, 437 U.S. 584, 590
(1978) ("The notion that post-solution activity, no matter how conventional
or obvious in itself, can transform an unpatentable principle into a patentable
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process exalts form over substance."); cf Mayo, 132 S. Ct. at 1298 ("Purely
'conventional or obvious' '[pre]-solution activity' is normally not sufficient
to transform an unpatentable law of nature into a patent-eligible application
of such a law").
For the above reasons, Appellant fails to apprise us of error in the
Examiner's determination claim 8 is directed to patent-ineligible subject
matter. Accordingly, we sustain the Examiner's rejection of claim 8 as
being directed to patent-ineligible subject matter. We further sustain the
Examiner's rejection of claims 1-7, 9-11, and 13-15, which fall with claim
8. However, as our reasoning differs from or supplements the Examiner's,
we designate our affirmance as a new ground of rejection under 37 C.F.R.
§ 4I.50(b).
Claims 21 and 22
Claim 21 depends from claim 1 and claim 22 depends from claim 8.
Appeal Br. 16 (Claims App.). Claim 21 recites the step of "further
comprising forming the cooling passage in the stator or the rotor having the
calculated volume or the calculated surface area for the at least a portion of
the cooling passage," and claim 22 recites the step of "further comprising
forming the cooling passage in the inner annular shell based on the design of
the cooling passage and having the determined surface area or the
determined volume of the at least a portion of the cooling passage." Id.
As Appellant points out, claims 21 and 22 require physically forming
a cooling passage and the Examiner fails to explain how the positive
recitation of a physical element does not affect whether the claim is
"directed to" an abstract idea. See Appeal Br. 10; Reply Br. 3. We thus do
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not sustain the Examiner's rejection of claims 21 and 22 as being directed to
patent-ineligible subject matter.
Rejection III - Obviousness over Balms and Nakamura
The Examiner finds Bolms discloses a method for clearance control in
a gas turbine including an inner annular shell housing a turbine wheel
supporting a row of turbine bucket, the method comprising: ( 1) directing
compressed gas through an interior passage of the inner annular shell during
the startup operation; and (2) controlling a clearance between tips of the
turbine buckets and an inner surface of the inner annular shell or connected
to the inner annular shell, wherein the control of the clearance is achieved, at
least in part, based on a surface area and/or volume of the interior passage
sized to cause the inner annular shell to achieve the faster thermal expansion,
and wherein the surface area or volume of the interior passage is configured
to achieve the faster thermal expansion. Final Act. 6 ( citing Bolms col. 1, 11.
18-21; Figs. 1, 6); see also id. at 8.
The Examiner acknowledges "Bolms does not explicitly teach
thermally expanding the inner annular shell at a rate faster than thermally
expanding the turbine wheel and the row of turbine buckets during a startup
stage of the gas turbine." Id. at 6; see also id. at 8. The Examiner
concludes, however, it would be obvious to "modify the method of operation
of Bolms to take place during the startup stage of the gas turbine engine to
take advantage of the steady state starting temperature of the engine
components." Id. at 6; see also id. at 8.
Alternatively, the Examiner relies on Nakamura for disclosure of
controlling a clearance between tips of the turbine buckets and an inner
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surface of the inner annular shell or connected to the inner annular shell,
wherein the control of the clearance is achieved, at least in part, based on a
surface area and/or volume of the interior passage sized to cause the inner
annular shell to achieve the faster thermal expansion, and wherein the
surface area or volume of the interior passage is configured to achieve the
faster thermal expansion. Final Act. 7 (citing Nakamura Abstract, ,r 9); see
also id. at 8. The Examiner concludes it would have been obvious to
"modify the clearance control system of Bolms with the explicit teaching of
controlling clearance between turbine components as taught in Nakamura for
the purpose of affecting the radial expansion of turbine parts during
operation." Id. at 7 (citing Nakamura ,r 13); see also id. at 8-9.
Appellant's contentions, reiterated below, are persuasive. As
Appellant points out, Bolms and Nakamura do not disclose the limitations
"during a startup stage of the gas turbine, thermally expanding in the inner
annular shell at a rate faster than thermally expanding the turbine wheel and
the row of turbine buckets" and "the control of the clearance is achieved, at
least in part, based on a surface area and/or volume of the interior passage
sized to cause the inner annular shell to achieve the faster thermal
expansion" as recited in claim 16, and the limitation "a cooling fluid passage
internal to the stator having an internal surface area and/or an internal
volume sized to cause the stator to expand radially at a faster rate than the
radial expansion of the rotor during a startup stage of the turbine," as recited
in claim 18. Appeal Br. 11.
Appellant explains even if the Examiner is correct in stating, in the
Answer, Bolms implicitly teaches passive clearance control and Nakamura
explicitly teaches turbomachine components can be specifically sized to
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affect thermal expansion, "Bohns and Nakamura do not disclose, suggest or
provide motivation to size an interior passage such that an annular shell,
during turbine startup, expands at a faster rate than the rotating rotor housed
in the annular shell." Reply Br. 5. According to Appellant, the Examiner
only establishes there is expansion of components in the turbines of Bolms
and Nakamura, without a comparison of the components as claimed (i.e.,
rates of thermal expansion). Stated differently, even if the Examiner is
correct in his findings with respect to the disclosures of Bolms and
Nakamura, the Examiner fails to establish the teachings of these references
would arrive at the claimed invention, namely causing an inner annular shell
or a stator to expand radially at a faster rate than the radial expansion of a
turbine wheel or a rotor during a startup stage of the turbine.
Based on the record presented, we thus are persuaded the Examiner
erred in rejecting independent claims 16 and 18 as being unpatentable over
Bolms and Nakamura. Accordingly, we do not sustain the Examiner's
rejection of claims 16 and 18, and claims 17, 19, and 20 depending
therefrom, as being unpatentable over Bolms and Nakamura.
DECISION
We REVERSE the decision of the Examiner to reject claims 8-11,
13-15, and 22 for indefiniteness.
We AFFIRM the decision of the Examiner to reject claims 1-11 and
13-15 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter and designate the affirmance as a NEW GROUND OF REJECTION.
We REVERSE the decision of the Examiner to reject claims 21 and
22 under§ 101, as being directed to patent-ineligible subject matter.
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We REVERSE the decision of the Examiner to reject claims 16-20 as
unpatentable over Bolms and Nakamura.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b ). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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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). See 37
C.F.R. § 41.50(±).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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