Ex Parte Slayter et alDownload PDFPatent Trial and Appeal BoardSep 11, 201713792567 (P.T.A.B. Sep. 11, 2017) Copy Citation 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. 13/792,567 03/11/2013 Matthew Slayter 67036-717 PUS 1 ;PA-0025770 1058 26096 7590 09/13/2017 TART SON OASKFY fr OT DS P C EXAMINER 400 WEST MAPLE ROAD SUITE 350 AMAR, MARC J BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 09/13/2017 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 cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW SLAYTER, JEFFREY M. MAKULEC, and JEFFREY A. STADLER Appeal 2016-000775 Application 13/792,567 Technology Center 3700 Before LISA M. GUIJT, JEFFREY A. STEPHENS, and GORDON D. KINDER, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action (“Final Act.”) rejecting claims 1, 7, 8, 10— 12, 17, 18, 20-22, and 24, which are all the claims pending in the application.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 The real party in interest is identified as Hamilton Sundstrand Corporation, owned by United Technologies Corporation. App. Br. 1. 2 At the time of the Final Action, claims 1—4, 7, 8, 10-14, 17, 18, and 20—24 were pending. Final Act. 1. Appellants cancelled claims 2-4, 13, 14, and 23 in amendments after the Final Action. Amendment After Final (filed Mar. 16, 2015); Amendment After Final (filed June 15, 2015); see Adv. Act. Appeal 2016-000775 Application 13/792,567 We affirm. Claimed Subject Matter Claims 1 and 12 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. A starter motor comprising: a housing including a starter motor and a plurality of locations to receive lubricant; a lubricant supply system for sharing a lubricant source with a main gas turbine engine to be started by said starter motor, and said lubricant supply system including a shutoff valve, said shutoff valve being opened when said starter motor is starting a main gas turbine engine, and said shutoff valve being generally closed once the main gas turbine engine is started; wherein said starter motor is provided with a clutch between a clutch shaft which is to be connected to drive a shaft in the main gas turbine engine and a starter motor shaft, and said clutch being positioned in one housing portion, and the starter motor shaft of the starter motor being housed in a second housing portion, and there being a transfer tube extending a lubricant supply line between the first and second housing portions; wherein said shutoff valve being received within said transfer tube; wherein an oil scupper is provided to gather oil to be delivered to an output bearing for the clutch shaft; and said gathered oil to be sent to said oil scupper is gathered from oil having passed into said transfer tube. mailed Apr. 6, 2015 (entering Mar. 16 amendment); Adv. Act. mailed June 25, 2015 (entering June 15 amendment). 2 Appeal 2016-000775 Application 13/792,567 Rejections3 I. Claims 1, 7, 8, 10-12, 17, 18, 20-22, and 24 stand rejected under 35U.S.C. § 112, second paragraph, as being indefinite. Final Act. 3.4 II. Claims 1, 7, 10-12, 17, 20-22, and 24 stand rejected under 35 U.S.C. § 102(b) as anticipated by Lane et al. (US 2003/0145602 Al, published Aug. 7, 2003) (“Lane”). Final Act. 5—10.5 III. Claims 8 and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lane, Carey (US 5,029,448, issued July 9, 1991), and DiBenedetto (US 2008/0107522 Al, published May 8, 2008). Final Act. 10-11. DISCUSSION Rejection I—Indefiniteness Claim 1 The Examiner determines that claim 1 is indefinite because “the phrase ‘ . . . clutch between a shaft which . . .’ is unclear.” Final Act. 3 (ellipses in original). The Examiner explains that “[t]he claim is interpreted as the clutch being between A and B where A is the clutch shaft,” and states “[i]t is not clear what structure B is.” Id. 3 We deem the rejection under 35 U.S.C. § 112, fourth paragraph, of claims 2-4, 13, and 14, Final Act. 4, withdrawn in view of the cancellation of these claims. 4 We understand the separate rejection of claim 17 as dependent on a cancelled claim, Final Act. 3, to be withdrawn in view of the amendment to claim 17, Amendment After Final 3 (filed Mar. 16, 2015) (amending claim 17 to depend from claim 12). 5 Although claims 7, 17, 21, and 22 are not included in the summary of the rejection, Final Act. 5, substantive explanations of the rejection of these claims are provided, Final Act. 9-10. 3 Appeal 2016-000775 Application 13/792,567 Appellants point out that the full limitation recites “a clutch between a clutch shaft which is to be connected to drive a shaft in the main gas turbine engine and a starter motor shaft.” App. Br. 5 (emphasis omitted). Appellants assert that “a complete reading of the claim, particularly when taken with the specification, makes clear that the clutch is between a clutch shaft and a starter motor shaft.” Id. We agree with Appellants. One of ordinary skill in the art seeking to understand the language of the claim would appreciate that the clutch is between “a clutch shaft” and some other structure, and continue reading the claim to determine the other structure. Although additional commas in the claim surrounding the phrase “which is to be connected to drive a shaft in the main gas turbine engine” would help to show that this clause further limits the clutch shaft, the language that follows—“and a starter motor shaft”—most reasonably provides the structure on the other side of the clutch. Thus, the clutch is between “a clutch shaft,” which is to be connected to a drive shaft in the main gas turbine engine, “and a starter motor shaft.” Other interpretations of claim 1 presented by the Examiner in the Answer (p. 3) are not reasonable, particularly given the reasonableness of the interpretation discussed supra. For example, it is not reasonable to interpret “a clutch between a clutch shaft” to mean that the clutch is between two ends of a clutch shaft, Ans. 3, because that would involve adding words to the claim when it already recites two structures reasonably interpreted as the structures between which the clutch is situated. It is also not reasonable to interpret the phrase to mean the clutch is between a clutch shaft and an 4 Appeal 2016-000775 Application 13/792,567 unrecited structure, id., when there is a structure recited in the claim that reasonably fills that role.6 For the foregoing reasons, we do not sustain the Examiner’s rejection of claim 1 as indefinite, or the rejection of dependent claims 7, 8, 10, 11,21, and 22 on the same basis. Claim 12 Independent claim 12 recites, in part, “a clutch between a shaft which is connected to drive the drive shaft in, and said clutch being positioned in one housing portion, and the starter motor shaft of the starter motor being housed in a second housing portion.” The Examiner concludes that this phrase is unclear for the same reasons as claim 1, “as well as missing structure after the word ‘in’” that immediately precedes the first comma. See Final Act. 3. Appellants argue the claim “infers” that the clutch connects the starter motor shaft to the drive shaft. App. Br. 5. For similar reasons as claim 1, we do not agree with the Examiner that there are multiple, reasonable interpretations of claim 12 as to the structures the clutch is located “between.” Although the phrase is not exactly the same as claim 1, one of skill in the art would read the claim as stating the first structure the clutch is between, namely “a shaft,” followed by additional limitations relating to the shaft and clutch, and then reciting the other structure the clutch is “between,” namely “the starter motor shaft.” We also do not agree with the Examiner that the claim “does not provide the location of the drive shaft which appears to be missing after the 6 We note that we do not agree with Appellants’ suggestion in the Reply that the claims rejected as indefinite are broad enough to cover all of the Examiner’s interpretations. Reply Br. 1. The interpretations are conflicting, alternate ways of reading the claim, not simply a result of broad terms. 5 Appeal 2016-000775 Application 13/792,567 term ‘in.’” Ans. 3; see also Final Act. 3. The preposition “in” is followed by a comma, and a further limitation that the clutch is also positioned in, “one housing portion.” Thus, both the drive shaft and the clutch are positioned in “one housing portion.” Although a second comma after the second “in” recited in the phrase at issue would help the claim to flow better, the claim is reasonably clear without it. For the foregoing reasons, we do not sustain the Examiner’s rejection of claim 12 as indefinite, or the rejection of dependent claims 17, 18, 20, and 24 on the same basis. Claim 21 Claim 21 depends from claim 1 and recites “wherein oil delivered to said scupper is from a location upstream of said shutoff valve and in said transfer tube.” As a separate rejection for indefiniteness, the Examiner states “it is not clear what claim element is located ‘in said transfer tube.’” Final Act. 3. Appellants respond that it is clear from the language of the claim “that it is the ‘location’ from which oil is delivered which is in the transfer tube.” App. Br. 5. In the Answer, the Examiner determines claim 21 has more than one reasonable interpretation. Ans. 4. According to the first interpretation, the “oil” is “in said transfer tube,” which the Examiner understands to mean “the oil is delivered to the scupper 36 directly from the transfer tube 44, wherein the oil being delivered is also upstream from the shutoff valve.” Id. The Examiner considers the first interpretation to be consistent with Figure 2A of Appellants’ Specification. Id. Although we agree with the Examiner that, according only to the language of the claim, the object “in said transfer tube” might be understood 6 Appeal 2016-000775 Application 13/792,567 to refer back to the “oil,” this would mean that the delivered oil is both in the scupper and in the transfer tube. Such an interpretation is not supported by the Specification, which does not show the scupper in the transfer tube. According to the Examiner’s second interpretation, the “location” recited in claim 21 is “in said transfer tube.” This is consistent with Appellants’ arguments, and we agree that this is the only reasonable reading of claim 21. Such a configuration is illustrated in Figure 2 A of Appellants’ Specification. See also Spec para. 22 (“As shown in Figure 2A, the shut off valve 45 may include a restriction 164 delivering oil into the scupper 36 and, hence, the bearings 34 at a location which is upstream from a valve element 60.”). We note that we do not agree with the Examiner’s conclusion that the second interpretation is consistent with Figure 3 A of Appellants’ Specification. The Examiner understands the “location” being “in said transfer tube” to mean “the oil originates from a location that is in the transfer tube, the location also being upstream of the shutoff valve.” Ans. 4— 5. Figure 3A shows “a tap 152 from the output line 148 delivers the lubricant back through restrictor 164 into the scuppers 36.” Spec, para 29. Tap 152 is located downstream of shutoff valve 150. Spec. Fig. 3 A. Although the oil that eventually flows to the scupper in this figure may be considered to “originate^” from a location that is both upstream of the shutoff valve and in the transfer tube, the oil has already flowed downstream of the shutoff valve when it is delivered to the scupper. The claim term “upstream” would have no meaning in this context if the same oil is also delivered from a location that is downstream of the shutoff valve. 7 Appeal 2016-000775 Application 13/792,567 Thus, having considered the language of the claim and the Specification, it is clear from claim 21 that oil is delivered to the scupper from a location that is (1) upstream, and not downstream, of the shutoff valve, and (2) in the transfer tube. Accordingly, we do not sustain the Examiner’s rejection of claim 21 as indefinite on this basis. Rejection II—Anticipation Appellants argue the anticipation rejection on the basis of independent claims 1 and 12 for one group, and claims 10 and 20 for another group. App. Br. 6—7.7 We select claim 1 as representative of the first group, and claim 10 as representative of the second. 37 C.F.R. § 41.37(c)(l)(iv). Claims 1,7, If 12, 17, 21, 22, and24 Appellants argue Lane does not disclose “said clutch being positioned in one housing portion, and the starter motor shaft of the starter motor being housed in a second housing portion,” as recited in claim 1. See App. Br. 6. Appellants contend Lane’s clutch “is positioned in the same housing as the starter motor shaft.” Id. Claim 1 does not specify how the recited “one housing portion” and “second housing portion” are separated. Thus, Appellants’ argument that 7 Appellants identify claims 1, 9—12, 19, and 20 as rejected as anticipated. App. Br. 6. As noted above, we understand the anticipation rejection to apply to claims 1, 7, 10-12, 17, 20—22, and 24. Claims 9 and 19 are canceled. See App. Br. 9—10 (omitting claims 9 and 19 from Claims Appendix). Appellants omit any argument as to the anticipation rejection of claims 7, 17, 21, 22, and 24. See App. Br. 6—7. We deem Appellants’ arguments as to claims 1 and 12 to apply to the group of claims 1,7, 10—12, 17, 20-22, and 24, which are rejected as anticipated by Lane. 8 Appeal 2016-000775 Application 13/792,567 the clutch is positioned in the same “housing” as the starter motor shaft is not commensurate with the scope of claim 1, which recites two housing “portion[s].” Even under Appellants’ implicit interpretation that the two housing portions must be separate compartments of the housing, Lane’s disclosure supports the Examiner’s finding that Lane’s clutch is in a different housing portion than the starter motor shaft. The Examiner’s annotated Figure 1 of Lane, Ans. 7, shows the portion of the housing (labeled “B: First Housing Portion”) that contains clutch 60 is separate and isolated from another portion (labeled “C: second Housing Portion”) that contains shaft 24. Appellants argue the annotated figure does not show the two housing portions recited in claim 1 because “housing C receives a starter motor shaft.” Reply Br. 2. The Examiner agrees, as the portion of the housing labeled “C” by the Examiner is the portion that contains the starter motor shaft. Ans. 7; Lane Fig. 1. To the extent Appellants intend to argue that housing B also receives a starter motor shaft, because the starter shaft extends into housing B and into clutch 60, this does not undermine the Examiner’s finding. In Appellants’ Specification, “clutch body 30 connects the shaft 28 through a shaft 43 of the air turbine starter 40.” Spec. para. 18. It is thus necessary for the first housing portion containing the clutch to receive the starter motor shaft to some extent so that the clutch can connect the starter motor shaft to the drive shaft. This is the same extent to which Lane’s housing portion containing the clutch receives the starter motor shaft. See Lane Fig. 1. Appellants also argue “the Examiner appears to be looking to structure of the gear box of Lane, et al. as meeting the housing limitation,” 9 Appeal 2016-000775 Application 13/792,567 and that this is improper. App. Br. 6. For the reasons given by the Examiner at pages 5—6 of the Answer, however, the Examiner’s rejection does not rely on the structure of the gear box as a portion of the housing. Although there is a valve 100 connecting the gear box and the portion of the housing identified by the Examiner as “B,” the Examiner’s annotated Figure 1 of Lane shows the Examiner is relying on a different valve 100 that connects housing portions B and C. Ans. 7. Thus, Appellants’ argument does not identify error in the rejection. Appellants further argue an “oil scupper” is a known term for an item that collects oil. App. Br. 6. Appellants contend “no worker of ordinary skill in the art would find [an empty spot in a chamber in Lane] would meet the definition of a ‘oil scupper.’” Id. Therefore, Appellants argue, Lane does not disclose “an oil scupper is provided to gather oil to be delivered to an output bearing for the clutch shaft.” See id. The Examiner interprets an oil scupper “as an oil collection location/chamber” and finds the chamber near the bearing identified with the label “D” is a scupper that collects oil for delivery to the bearing. Ans. 8; Final Act. 5. We note Appellants do not challenge the Examiner’s finding that Lane’s chamber near the bearing collects oil to lubricate the bearing. From Appellants’ Reply Brief, we understand Appellants’ argument to be that Lane’s chamber does not “deliver” oil to another location because “[a]ny oil in the housing chamber ... is already communicating with the bearing, not being delivered to the bearing.” Reply Br. 2. We do not agree, however, that all of the oil in Lane’s chamber “is already communicating” with the bearing, as one of ordinary skill in the art would understand that different 10 Appeal 2016-000775 Application 13/792,567 portions of the oil will come in contact with the bearing over time. Therefore, we agree with the Examiner that Lane teaches the chamber “H” identified by the Examiner gathers oil “to be delivered to an output bearing,” as recited by claim 1. Moreover, Appellants have not identified any structure of a scupper that is not met by Lane’s chamber “H,” nor provided a definition of a scupper that precludes Lane’s chamber “H” from constituting a scupper. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of representative claim 1 under 35 U.S.C. § 102(b) as anticipated by Lane. Thus, we sustain the rejection of claim 1, and, for the same reasons, the rejection of claims 7, 11, 12, 17, 21, 22, and 24, which are not argued separately. Claims 10 and 20 Claim 10 depends from claim 1 and recites, in part, “wherein a pressure on the lubricant supply line opposes the spring force such that at higher pressure operation, the spring force is overcome and the valve moves towards a closed position.” Appellants argue paragraph 29 of Lane “appears to describe a valve which operates in the opposite direction.” App. Br. 6. Appellants acknowledge the Examiner relies on the description of valve operation at paragraph 32 and figure 48 of Lane, but argue “it is still the function of the valve 100, which is described in both paragraphs, and the valve cannot meet the claims for the reasons set forth above [relating to paragraph 29].” Id. at 6—7. 8 We interpret Appellants’ reference to “figure 3” of Lane to be a typographical error, App. Br. 7, as the Examiner cites figure 4 in rejecting claim 10, final Act. 9. 11 Appeal 2016-000775 Application 13/792,567 Appellants’ argument does not identify error in the Examiner’s rejection. As an initial matter, Appellants’ briefs on appeal do not explain how Lane’s paragraph 29 “appears to describe a valve which operates in the opposite direction.” App. Br. 6. In addition, paragraph 29 of Lane describes operation of the valve that is consistent with the operation of the valve shown in Ligure 4 (and described in paragraphs 32 and 33), which Appellants do not challenge. In both instances, a pressure drop on the starter motor side of the valve causes the valve to close due to the higher pressure overcoming the spring force and closing the valve. Compare Lane para 29 (“The valve is normally open and designed to close at a relatively low pressure drop in the direction to the left for arrow 108 of air flow from the gearbox into the starter.”) with Lane para. 33 (“As the pressure differential from the second opening 124 to the first opening 122 [closer to the starter] increases sufficient to overcome the force of the spring 130, the ball 128 is forced against a valve seat 134 .. . .”). Thus, we agree with the Examiner that Lane discloses “wherein a pressure on the lubricant supply line opposes the spring force such that at higher pressure operation, the spring force is overcome and the valve moves towards a closed position.” See also Ans. 9— 10. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of representative claim 10 under 35 U.S.C. § 102(b) as anticipated by Lane. Thus, we sustain the rejection of claim 10, and, for the same reasons, the rejection of claim 20, which is not argued separately. 12 Appeal 2016-000775 Application 13/792,567 Rejection III— Obviousness Appellants argue claims 8 and 18 as a group. App. Br. 7. We select claim 8 as representative, with claim 18 standing or falling therewith. 37 C.F.R. §41.37(c)(l)(iv). Claim 8 depends from claim 7, and ultimately from claim 1, and recites “wherein an output of said shutoff valve is communicated to a U- shaped pipe, such that there is a vertically lower most location that will capture leakage oil, and to assist in providing a sufficient quantity of leakage oil to said scupper.” The Examiner finds Carey teaches a U-shaped conduit for trapping oil, and that one of ordinary skill in the art would have used Carey’s U- shaped tube in Lane “in order to capture and drain lubrication oil using the U-Shaped tube (Carey col. 5 lines 15—22) in order to facilitate improved oil management and prevent oil leakage from the starter oil cavity (DiBenedetto par. [0003]).” Final Act. 11 (brackets in original). Appellants contend “claim 8 requires that there be leakage oil across the shutoff valve even when the valve is in a closed position (from claim 7).” App. Br. 7. Appellants also argue “[t]here is simply no reason to include a u-shaped tube at the claimed location” in Lane. Id. In particular, Appellants argue Lane’s chamber, which the Examiner finds is the claimed scupper, “is downstream of the port and valve 100, and any leakage across the valve 100 would flow into the open housing downstream of the valve 100.” Id. The Examiner responds that claim 7 “specifies a condition of the valve that must take place when the valve is in the closed position,” but claim 8 does not require the valve to be closed. Ans. 10. The Examiner also finds that “[g]as turbine engines on airplanes are exposed to [a] variety of 13 Appeal 2016-000775 Application 13/792,567 orientations during flight,” and, therefore, “[i]t is reasonable for a person of ordinary skill in the art to incorporate Carey’s U-shaped tube into Lane’s starter in order to trap oil and keep it near the clutch shaft bearings.” Ans. 10-11. We agree with the Examiner that claim 7, which contains limitations regarding lubricant leaking across the shutoff valve “when said shutoff valve is in a closed position,” does not require the valve to be closed in considering claim 8’s limitations. Claim 8 does not relate its limitations to the conditional limitation recited in claim 7 as to leakage or delivery of oil “when said shutoff valve is in a closed position.” In any event, whether the valve is open or lubricant is leaking across the valve in a closed position, claim 8 requires that “an output of said shutoff valve is communicated to a U-shaped pipe.” As discussed supra, the Examiner has provided reasons why one of ordinary skill in the art would have used a U-shaped pipe as taught in Carey with Lane’s starter. Appellant does not persuasively challenge the Examiner’s finding that Carey’s U-shaped pipe would help to trap oil and keep it near the clutch shaft bearings when exposed to different orientations during flight. We agree with the Examiner’s findings and reasoning. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of representative claim 8 under 35 U.S.C. § 103(a) as obvious over Lane, Carey, and DiBenedetto. Thus, we sustain the rejection of claim 8, and, for the same reasons, the rejection of claim 18, which is not argued separately. 14 Appeal 2016-000775 Application 13/792,567 DECISION We reverse the Examiner’s rejections of claims 1, 7, 8, 10—12, 17, 18, 20-22, and 24 under 35 U.S.C. § 112, second paragraph, as being indefinite. We affirm the Examiner’s rejection of claims 1, 7, 10—12, 17, 20—22, and 24 under 35 U.S.C. § 102(b) as anticipated by Lane. We affirm the Examiner’s rejection of claims 8 and 18 under 35 U.S.C. § 103(a) as unpatentable over Lane, Carey, and DiBenedetto. 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)(l)(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation