Rohit ChouhanDownload PDFPatent Trials and Appeals BoardJul 31, 201913691478 - (D) (P.T.A.B. Jul. 31, 2019) 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. 13/691,478 11/30/2012 Rohit CHOUHAN JHN-839-2407 2579 30024 7590 07/31/2019 NIXON & VANDERHYE, P.C. 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER BROWN, ADAM WAYNE ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 07/31/2019 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 ROHIT CHOUHAN ____________________ Appeal 2018-003847 Application 13/691,478 Technology Center 3700 ____________________ Before JOHN C. KERINS, ANNETTE R. REIMERS, and LISA J. GUIJT, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action dated April 19, 2017 (“Final Act.”), rejecting claims 1 and 4–22, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies General Electric Company as the real party in interest. Appeal Br. 3. Appeal 2018-003847 Application 13/691,478 2 THE INVENTION Appellant’s invention relates to a rotatable turbine blade for a gas turbine, having a part-span shroud disposed on each of the pressure side and suction side of the blade. Claims 1, 11, 17, and 21 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A rotatable turbine blade for a gas turbine comprising: an airfoil portion having a leading edge and a trailing edge, a radially-inner end and a radially-outer end; a root section affixed to the radially-inner end of the airfoil portion; and a substantially tear-drop shaped part-span shroud located on a pressure side of the airfoil portion between the root section and the radially outer end, wherein said part-span shroud is provided with a cross-sectional shape having a maximum thickness located within 20 to 40% of a chord length extending from a leading edge of said part-span shroud to a trailing edge of said part-span shroud, as measured from said leading edge of said part-span shroud and wherein the tear-drop shaped part- span shroud has a profile in cross section defined by the X-Y coordinates set forth in any one of Tables I, II and III, or by geometric scaling of the x-y coordinates in any one of Tables I, II and III. THE REJECTIONS The Examiner rejects: (i) claims 11–20 and 22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement set forth therein; Appeal 2018-003847 Application 13/691,478 3 (ii) claims 1, 4–16, 18, and 22 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention; (iii) claim 21 under 35 U.S.C. § 102(b) as being anticipated by Shibukawa (US 2011/0158810 A1, published June 30, 2011); (iv) claims 1, 4–8, 10–20, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Shibukawa;2 and (v) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Shibukawa in view of Ortolano (US 5,257,908, issued Nov. 2, 1993). DISCUSSION Claims 11–20 and 22--Lack of Written Description Claim 11 recites that “the tear-drop cross-sectional shape on each of part-span shrouds has a maximum thickness to chord length ratio of at least 0.275.” Appeal Br. 22–23 (Claims Appendix). Claim 17 recites that “the tear-drop cross-sectional shape of the part-span shrouds has a maximum thickness to chord length ratio in a range of 0.275 to 0.360.” Id. at 24. The Examiner rejects both claims, as well as the claims depending therefrom, on the basis that the application as originally filed does not evidence that Appellant had possession of the subject matter of claims 11 and 17, in particular, the limitations identified above. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means 2 The stated ground of rejection also erroneously identifies claim 3 as being subject to this rejection. Final Act. 9. Claim 3 is, however, canceled, and the error is seen as being ministerial in nature. Appeal 2018-003847 Application 13/691,478 4 as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). That a person skilled in the art might realize from reading the disclosure that such a feature is possible is not a sufficient indication that the feature is a part of the invention. Application of Barker, 559 F.2d 588 (CCPA 1977). An applicant need not “describe exactly the subject matter claimed,” but “the description must clearly allow persons of ordinary skill in the art to recognize that [the applicant] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989); see also Barker, 559 F.2d at 589, 591. The Examiner explains that the original disclosure fails to describe a maximum thickness to chord ratio at all, and that the values present in the claims are calculated or derived from the coordinates presented in Tables I– III in the Specification, which correspond to three specific cross-sectional shapes illustrated in Figures 8–10. Final Act. 5–6. According to the Examiner, “[t]he scope of the claims include any profile whose coordinates result in the claimed ratios,” and that “the disclosure of three species does not support claiming any possible blade profile with the same maximum blade thickness to chord length ratio.” Id. at 6. Appellant maintains that the maximum thickness values present in the claims are easily calculated from Tables I–III, that the ratios and their calculation were included in an amendment to paragraph 35 of the Specification, and that the amendment was entered subsequent to overcoming a new matter rejection. Appeal Br. 11. This establishes only that the particular values 0.275 and 0.360 for a blade thickness to chord length ratio happen to have written descriptive support as a result of Appeal 2018-003847 Application 13/691,478 5 manipulating data appearing in Tables I–III. Claims 11 and 17, which recite ranges of ratios, are substantially broader. Appellant additionally argues that, because original claim 1 includes limitations involving a maximum thickness of a part-span shroud, and a chord length extending from a leading to a trailing edge, and because there is no limitation in that claim as to any ratio of maximum thickness to chord length, a person of ordinary skill in the art “would have understood that the invention covers part span shrouds having various ratios of maximum thickness to chord length.” Appeal Br. 12. In the same vein, Appellant points to paragraph 38 of the Specification, which states that “the invention will include all embodiments falling within the scope of the appended claims;” and paragraph 32, which states that the disclosed embodiments are “exemplary.” Id. at 13. Further, Appellant maintains that “[t]he application does not indicate any criticality to the two disclosed ratios of maximum thickness to chord length. Id. Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis verbis in the original specification did not satisfy the written description requirement because it failed to support the scope of the genus claimed). That Appellant might be in a position to present a claim limitation involving the same two parameters in question, but in a relationship different to a ratio of one to the other and not including any limitation as to the ratio, does nothing to establish that Appellant was in Appeal 2018-003847 Application 13/691,478 6 possession of the particular ranges of ratios of one parameter to the other now claimed. Further, the absence of any discussion as to the criticality of, or even any significance of, the ratio of maximum thickness to chord length, weighs in favor of finding that the Specification fails to evidence that a ratio of 0.275 was seen by Appellant as being a potential minimum value (“at least 0.275” in claim 11), or that 0.275 and 0.360 were seen as being potential end points for a range of ratios (“in a range of 0.275 to 0.360” in claim 17). Appellant’s arguments and case citations presented in the Reply Brief have been considered as well, but do not apprise us of error in the rejection. Appellant attempts to analogize the present situation to situations in which the original disclosures specifically discussed ranges and possible limits, and to distinguish the present situation from one in which only a single example was asserted to provide written descriptive support for a claimed range. Reply Br. 2–5. As to the former, Appellant’s Specification is utterly devoid of any disclosure that any particular range is contemplated for the ratio of maximum thickness to chord length, and thus those cases are not instructive. As to the latter, Appellant maintains that “the present application discloses the end points of the range recited in claim 17 and an end point and second point of the range recited in claim 11.” Id. at 3. However, what Appellant appears to overlook is that the values recited in the claims were never disclosed as being endpoints or potential end points, or minima or maxima, and there is nothing in the Specification that would evidence to those of ordinary skill in the art that the values calculated for the ratios were regarded by Appellant as such. Appeal 2018-003847 Application 13/691,478 7 Accordingly, we sustain the rejection of claims 11 and 17, as well as that of claims 12–16, 18–20 and 22 depending therefrom, as failing to comply with the written description requirement appearing in the first paragraph of 35 U.S.C. § 112. Claims 1, 4–16, 18, and 22--Indefiniteness Claims 1, 4–10, and 18 Each of claims 1 and 18 contains a limitation requiring that the part- span shroud have a profile in cross-section that is “defined by the X-Y coordinates set forth in any one of Tables I, II, and III, or by geometric scaling of the x-y coordinates in any one of Tables I, II and III.” Appeal Br. 21, 25 (Claims Appendix). The Examiner takes the position that the metes and bounds of these claims cannot be determined, and the claims are therefore indefinite, because the range of profiles meeting the limitation is unlimited. Final Act. 6–7. Appellant responds that “the term geometric scaling is a well-known geometric function,” and provides a partial quote from a Wikipedia page (see Appeal Brief, Evidence Appendix, Exhibit A) purporting to explain that geometric scaling is essentially synonymous with uniform or isotropic scaling. Appeal Br. 14–15. Appellant further takes issue with the Examiner’s position that an unlimited or infinite number of profiles are encompassed by the “geometric scaling” limitation, arguing that the dimensions set forth in Tables I, II, and III define specific tear-drop cross- sectional shapes for a part span shroud, and that, even when geometrically scaled, the resulting cross-sections will have the same tear-drop shapes. Id. at 15. Appeal 2018-003847 Application 13/691,478 8 Appellant’s argument fails to acknowledge that its Exhibit A additionally includes, in discussing types of geometric scaling, an explanation of non-uniform or anisotropic scaling, in which separate scaling factors are used for each axis direction. Appeal Br., Evidence Appendix, Exhibit A. As such, Appellant is incorrect that the scope of claims 1 and 18 are limited to cross-sectional shapes having the same tear-drop shapes as those resulting from applying the coordinates in Tables I, II, and III of the application.3 The possible scaling factors for the x- and y-axes using non- uniform scaling are essentially limitless, such that no metes and bounds can readily be determined. Appellant’s argument instead attempts to have us equate geometric scaling with uniform or isotropic scaling, a position that is not supported by a preponderance of the evidence. The rejection of claims 1 and 18 as being indefinite is therefore sustained. The rejection is sustained as well for claims 4–10, which depend from claim 1. Claims 11–16 The limitation appearing in claim 11, requiring “a maximum thickness to chord length ratio of at least 0.275,” is deemed indefinite, in that there is no inherent upper limit on the ratio, and thus covers a substantially infinite number of different profiles. Final Act. 7. Appellant maintains that the basis for the rejection is in the nature of the claim being overly broad, and 3 We further note that the claim term requiring a “tear-drop shape” does not appear to be particularly limiting, as evidenced by, for example, the different shapes in Appellant’s Figure 9 as compared to Appellant’s Figures 8 and 10. Appellant provides no definition for, or explanation of, the term such that it could be regarded as somehow more precisely defining the type of geometric scaling falling within the scope of claims 1 and 18. Appeal 2018-003847 Application 13/691,478 9 notes that breadth of a claim is not to be equated with indefiniteness. Appeal Br. 15–16. That there appears to be no inherent upper limit on the ratio set forth in claim 11 does not, by itself, lead to a conclusion that the claim is indefinite. However, claim 11 additionally requires that the recited part- span shrouds have a tear-drop cross-sectional shape. As noted above, that term does not appear to be particularly limiting, as by definition or explanation in the Specification. It seems, however, at some ratio of maximum thickness to chord length, the part-span shroud would cease to be regarded by a person of ordinary skill in the art as having a tear-drop shape. On the record before us, that ratio is not susceptible of being determined. With regard to the second paragraph requirement for “‘particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention,’” it has been stated that the “essence of that requirement is that the language of the claims must make it clear what subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). This has been frequently stated in a shortened form as a requirement that the claims set forth the “metes and bounds” of their coverage. See, e.g., In re Venezia, 530 F.2d 956, 958 (CCPA 1976); In re Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re Watson, 517 F.2d 465, 477 (CCPA 1975); In re Knowlton, 481 F.2d 1357, 1366 (CCPA 1973). This requirement has usually been viewed from the perspective of a potential infringer, “so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance.” Hammack, 427 F.2d at 1382. Appeal 2018-003847 Application 13/691,478 10 Claim 11 is thus seen as failing to particularly point out and distinctly claim the subject matter regarded as the invention. The rejection of claim 11, and that of claims 12–16 depending therefrom, as being indefinite, is sustained. Claim 22 Claim 22 depends from claim 11, and includes a limitation, similar to that appearing in independent claim 17, that the ratio of maximum thickness to chord length is no greater than 0.360. The rationale employed in rejecting claim 11, and in the affirmance of the rejection herein, does not apply to claim 17. The rejection of claim 22 as being indefinite is therefore not sustained. Claim 21--Anticipation by Shibukawa The Appeal Brief advises that “Appellant does not contest the rejection of claim 21 as the claim currently stands.” Appeal Br. 16. The rejection is summarily sustained. Claims 1, 4–8, 10–20, and 22--Unpatentability over Shibukawa At issue with respect to independent claims 1, 11, and 17, is whether the limitations therein directed to particular tear-drop cross-sectional shapes of a part-span shroud would have been obvious in view of Shibukawa. The Examiner finds that Shibukawa discloses tear-drop shaped part-span shrouds, but acknowledges that Shibukawa does not expressly teach: (1) that the cross-sectional profile is defined by the X-Y coordinates in any one of Tables I, II, and II, or geometric scaled versions of those coordinates, as required by claim 1; Appeal 2018-003847 Application 13/691,478 11 (2) that the cross-sectional shape has a maximum thickness to chord ratio of at least 0.275, as required by claim 11; or (3) that the cross-sectional shape has a maximum thickness to chord ratio in the range of 0.275 to 0.360, as required by claim 17. Final Act. 10, 12, and 14. For each of these limitations, the Examiner takes the position that the Shibukawa evidences that the parameters were known to be result-effective variables, and that the claimed values would be arrived at through routine optimization. Id. at 14–15. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). A particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618 (CCPA 1977). “The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . . [i]n such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.1990). Claims 1, 4–8, and 10 For the reasons set forth above in affirming the rejection of claims 1, 4–8, and 10 as being indefinite, the prior art rejection of the claims as being unpatentable over Shibukawa must fall because it is necessarily based on a Appeal 2018-003847 Application 13/691,478 12 speculative assumption as to the meaning of the claim. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We therefore do not sustain the rejection of claims 1, 4–8, and 10 under 35 U.S.C. § 103(a). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. Claim 11–16 For the reasons set forth above in affirming the rejection of claims 11– 16 as being indefinite, the prior art rejection of the claims as being unpatentable over Shibukawa must fall because it is necessarily based on a speculative assumption as to the meaning of the claim. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We therefore do not sustain the rejection of claims 11–16 under 35 U.S.C. § 103(a). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. Claims 17–20 Independent claim 17, instead of reciting a particular cross-sectional profile for a part-span shroud as does claim 1, recites values for a ratio of maximum cross-sectional thickness to the chord length of the claimed part- span shroud, requiring the ratio to be in a range of 0.275 to 0.360. Appeal Br., Claims Appendix. The Examiner cites to paragraph 60 of Shibukawa as evidencing that a ratio of maximum shroud thickness to chord length was known to be a Appeal 2018-003847 Application 13/691,478 13 result-effective variable in reducing aerodynamic loss. Final Act. 14; Ans. 17–18. The Examiner concludes that the claimed range of values would have been obvious as a matter of routine optimization in which the thickness and chord length would be varied in order to arrive at shroud profiles that reduce aerodynamic loss and thereby increase performance of the blades. Final Act. at 14–15. Although paragraph 60 of Shibukawa does mention that “the thickness of the suction side connecting member 22 to the length of the suction side connecting member 22 in a direction along the flow is minimized,” there is no indication that the resulting profile, following this generic guideline in attempting to reduce aerodynamic losses, would fall within or render obvious the ratio range recited in claim 17. Stated another way, Shibukawa fails to evidence that a value or values within the claimed ratio range would result from determining an optimum or working range of the value of the property of interest in Shibukawa, namely reduction of aerodynamic losses. The Examiner further has not provided any sound technical reasoning as to why an exercise in routine optimization of this parameter would arrive at one or more values in the claimed range. The rejection of independent claim 17, as well as that of claims 18–20 depending therefrom, as being unpatentable over Shibukawa, is not sustained. Claim 22 Although depending from claim 11, claim 22 includes a limitation, similar to that appearing in independent claim 17, that the ratio of maximum thickness to chord length is no greater than 0.360. Appeal 2018-003847 Application 13/691,478 14 The Examiner cites to paragraph 60 of Shibukawa as evidencing that a ratio of maximum shroud thickness to chord length was known to be a result-effective variable in reducing aerodynamic loss. Final Act. 11–12; Ans. 17–18. However, as discussed above for claim 17, Shibukawa fails to evidence that a value or values within the claimed ratio range would result from determining an optimum or working range of the value of the property of interest in Shibukawa, namely reduction of aerodynamic losses. The Examiner further has not provided any sound technical reasoning as to why an exercise in routine optimization of this parameter would arrive at one or more values in the claimed range. The rejection of claim 22 as being unpatentable over Shibukawa, is not sustained. Claim 9--Unpatentability over Shibukawa and Ortolano For the same reason stated with respect to the prior art rejection of claim 1 as being unpatentable over Shibukawa, the rejection of claim 9 must fall because it is also necessarily based on a speculative assumption as to the meaning of the claim. In re Steele, 305 F.2d 859, 862 (CCPA 1962). We therefore do not sustain the rejection of claim 9 under 35 U.S.C. § 103(a). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. Appeal 2018-003847 Application 13/691,478 15 DECISION The rejection of claims 11–20 and 22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, is affirmed. The rejection of claims 1, 4–16, 18, and 22 under 35 U.S.C. § 112, second paragraph, as being indefinite, is affirmed as to claims 1 and 4–16, and 18, and is reversed as to claim 22. The rejection of claim 21 under 35 U.S.C. § 102(b) as being anticipated by Shibukawa is affirmed. The rejection of claims 1, 4–8, and 10–16 under 35 U.S.C. § 103(a) as being unpatentable over Shibukawa is reversed, pro forma. The rejection of claims 17–20 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Shibukawa is reversed. The rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Shibukawa in view of Ortolano is reversed, pro forma. 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation