Ex Parte Slayter et al

Patent Trial and Appeal Board

Sep 11, 2017

13792567 (P.T.A.B. Sep. 11, 2017)

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).
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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.
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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
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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.
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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
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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.
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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.
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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,”
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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
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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.
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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.
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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
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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.
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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
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