Ex Parte Norris

Patent Trial and Appeal Board

Apr 30, 2013

12052014 (P.T.A.B. Apr. 30, 2013)

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.
12/052,014 03/20/2008 James W. Norris PA-0007843U;
67097-1067
1637
54549 7590 04/30/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
AUNG, SAN M
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
04/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JAMES W. NORRIS
____________________

Appeal 2011-002529
Application 12/052,014
Technology Center 3600
____________________

Before STEVEN D.A. McCARTHY, EDWARD A. BROWN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002529
Application 12/052,014

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STATEMENT OF THE CASE
James W. Norris (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 2-12. App. Br. 2. Claim 1 was
cancelled. Id. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 6 and 12 are independent. Claim 12 is illustrative of the
claimed subject matter and reproduced below.
12. An oil supply system for use in a gas turbine
engine comprising:
a holding container having a flexible barrier
defining an oil side of said container, and a source
of pressurized fluid delivered to an opposed side of
said flexible barrier from said oil side, said flexible
container having an inlet for delivering oil into
said holding container, and an outlet leading from
said holding container; and
said outlet providing an inlet for oil to a
main pump.

Appeal 2011-002529
Application 12/052,014

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REJECTIONS
Appellant requests review of the following rejections:1
Claims 3, 5, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strayer (US 2,745,357; iss. May 15, 1956) and McCarty
(US 4,741,155; iss. May 3, 1988).
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Strayer, McCarty, and Howard (US 2002/0007982 A1; pub. Jan. 24, 2002).
Claims 6, 7, and 9-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strayer, Howard, and McCarty.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Strayer, McCarty, Howard, and O’Connor (US 2005/0279102 A1; pub. Dec.
22, 2005).

ANALYSIS
Claims 3, 5, and 12 – Strayer and McCarty
Regarding claim 12, the Examiner found that Strayer discloses a
pressurized hydraulic reservoir comprising a holding container 10 including
a barrier 29 defining an oil side 47 of the container. Ans. 3 (citing Strayer,
fig. 2). The Examiner found that Strayer does not disclose that the barrier is
flexible. Ans. 4.

1 Appellant states that the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Strayer, McCarty, and Mann (US 4,483,417; iss. Nov. 20,
1984) is not appealed. App. Br. 3. Ex Parte Ghuman, 88 USPQ2d 1478
(BPAI 2008) (precedential) applies. Accordingly, upon return of this
application to the Examiner, claim 4 may be canceled pursuant to MPEP
§ 1215.03. We do not address claim 4 in this appeal.

Appeal 2011-002529
Application 12/052,014

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The Examiner found that McCarty discloses a lubrication apparatus
comprising a holding container 34 with a flexible barrier 76, 78. Ans. 4
(citing McCarty, fig. 2). The Examiner stated that Strayer’s piston 29 “has
the same function as flexible barrier – to reduce the volume of the holding
container and discharge the fluid from the container,” and that McCarty
“teaches that this flexible barrier or container [is] operated with the
compressed air applied from the other side of the barrier to reduce the
volume of the barrier. This is similar in function as claimed invention.” Id.
at 8-9. The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to make Strayer’s barrier with flexible structure as
taught by McCarty. Id. at 4. The Examiner stated that the modification of
Strayer would “eliminate the piston (29) and also reduce the weight[,] and
applied pressure can [be] supplied from the other side which eliminate[s] the
middle portion which include[s] the piston rod (50) and pressurized cylinder
(49).” Id. The Examiner reasoned that the modification would “provide
simple, reliable and low cost construction and well endure storage for
[indeterminate] periods of time without deterioration or a loss of its ability to
function.” Id.
Appellant contends that Strayer discloses a rigid piston 29, which
receives pressurized fluid in a complex central piston 50, and uses complex
valving provided by rigid piston members acting in combination to control
the flow of pressurized air, and to position piston 29 relative to volume 47.
App. Br. 3. Appellant further contends that piston 29 includes a reservoir
piston 49 and is fixed with an air venting valve 30, and these components all
move as one to provide the flow control. Id. Appellant contends that
McCarty does not disclose a flexible structure that would operate as a piston
Appeal 2011-002529
Application 12/052,014

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on an ongoing basis and could substitute for Strayer’s complex structure
(Reply Br. 2), and that the modification of Strayer “would ruin the entire
operation of Strayer, as complex valving provided by the two connected
pistons 29 and 49, and valve 30 could not be provided without the rigid
structure” (App. Br. 3-4). These contentions are persuasive.
We understand that the Examiner’s modification of Strayer would
eliminate at least the reservoir piston 29, pressurizing cylinder 49, and piston
50, and substitute McCarty’s “flexible structure” for these elements. As
discussed infra, we agree with Appellant that the Examiner did not articulate
an adequate reason why one of ordinary skill in the art would have modified
Strayer’s pressurized hydraulic reservoir by making this substitution.
Figure 2 of Strayer shows that reservoir piston 29 and pressurizing
cylinder 49, and also the structure in which air venting valve 30 is received,
form a unitary structure. Figure 2 appears to show that this unitary structure
is made of metal.2 Strayer discloses that the reservoir piston 29 is
longitudinally movable in reservoir cylinder 27 (col. 2, ll. 59-61), and is
movable with pressurizing cylinder 49 (col. 3, ll. 1-2). As noted by
Appellant, air venting valve 30 also appears to be movable with the reservoir
piston 29 and pressurizing cylinder 49. Strayer discloses that the reservoir
10 is pressurized by fluid pressure acting upon pressurizing cylinder 49,
where the fluid is supplied through the bottom of reservoir 10 and enters the
pressurizing cylinder 49 via a piston rod 56, which connects to piston 50.
See col. 2, ll. 33-37, col. 3, 12-20, col. 5, ll. 17-26; figs. 2, 3. An

2 The cross-hatching pattern (symbol) shown in Figure 2 of Strayer for the
unitary structure corresponds to the symbol that should be used in U.S.
patent applications to indicate metal. See MPEP § 608.02(IX).
Appeal 2011-002529
Application 12/052,014

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accumulator incorporated into reservoir piston 29 is charged with
compressed gas to cause reservoir piston 29 to retract during filling
operations. Id. at col. 4, ll. 33-60; fig. 3. The accumulator maintains a
uniform pressure on the fluid in reservoir 10. Id. at col. 5, ll. 35-37.
McCarty discloses a lubrication system for turbine engines comprising
a reservoir 34 including a housing 48 and a bladder 76. See col. 4, ll. 15-22;
fig. 2. Bladder 76 includes a flexible body portion 78 for containing a liquid
lubricant 80, and a diaphragm 90. See col. 4, ll. 42-49, 64-66; fig. 2. To
remove lubricant from the bladder 76, pressurized air is introduced into a
chamber 58 to cause diaphragm 90 to be punctured by contact with a lance
assembly 70, such that lubricant flows out of bladder 76 via conduit 36. See
col. 5, ll. 42-61; fig. 2.
The Examiner’s modification of Strayer would remove the piston and
valve system that functions to allow reservoir 10 to be filled with the liquid
and maintained at the desired pressure. Appellant correctly contends that
McCarty does not disclose that its flexible bladder 76 functions as piston.
Reply Br. 2. Rather, the bladder 76 functions as a sealed storage container
for lubricant, which can be punctured to allow the lubricant to be removed
therefrom. See McCarty, col. 4, ll. 42-49, 64-66; fig. 2. While the
modification of Strayer may result in a simpler construction, we do not agree
that it would be “without deterioration or a loss of its ability to function.”
Particularly, we do not see how the various functions provided by the
interaction of reservoir piston 29, pressurizing cylinder 49, piston 50, other
elements contained in pressurizing piston 49, as well as air vent valve 30,
would still be provided by replacing these elements with the “flexible
structure” disclosed by McCarty. While the Examiner did not indicate that
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Application 12/052,014

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the modification of Strayer would also remove piston rod 56, by removing
the pressurizing cylinder 49 and piston 50 in the reservoir 10, it is not
apparent to us why piston rod 56, which supplies pressurized fluid to piston
50, would then still be useful. The Examiner also did not explain how the
“flexible structure” in the modified Strayer device would be pressurized by a
source of pressurized fluid delivered to an opposed side of the flexible
barrier from the oil side.
In view of the above, we do not sustain the rejection of claim 12, and
its dependent claims 3 and 5, as unpatentable over Strayer and McCarty.

Claims 2, 6, 7, and 9-11 – Strayer, Howard, and McCarty
Claim 2 depends from claim 12. The Examiner relied on Howard for
disclosure regarding a deaerator pump. Ans. 5. Accordingly, the
Examiner’s application of Howard for claim 2 does not cure the deficiencies
of the Examiner’s rejection of claim 1, as discussed supra. We do not
sustain the rejection of claim 2 as unpatentable over Strayer, McCarty, and
Howard.
Claim 6 is directed to a gearbox and oil supply system for a gas
turbine engine comprising, inter alia, “a holding container having a flexible
barrier.” For reasons discussed supra, Strayer and McCarty fail to disclose
or suggest a holding container having a flexible barrier, as claimed. The
Examiner relied on Howard for disclosure regarding a deaerator pump.
Ans. 7. As such, the Examiner’s application of Howard does not cure the
deficiencies of Strayer and McCarty. We do not sustain the rejection of
claim 6, and its dependent claims 7 and 9-11 as unpatentable over Strayer,
McCarty, and Howard.
Appeal 2011-002529
Application 12/052,014

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Claim 8 – Strayer, McCarty, Howard, and O’Connor
Claim 8 depends from claim 6. The Examiner relied on O’Connor for
disclosure regarding a gear box driving a fan. Ans. 8. Accordingly, the
Examiner’s application of O’Connor for claim 8 does not cure the
deficiencies of the Examiner’s rejection of claim 6. We do not sustain the
rejection of claim 8 as unpatentable over Strayer, McCarty, Howard, and
O’Connor.

DECISION
The Examiner's decision rejecting claims 2, 3, and 5-12 is
REVERSED.

REVERSED

msc