Rohit Chouhan

Patent Trials and Appeals Board

Jul 31, 2019

13691478 - (D) (P.T.A.B. Jul. 31, 2019)

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.
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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;
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(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.
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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
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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
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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.
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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.
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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.
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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.
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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;

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(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
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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
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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.
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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.
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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