UNITED TECHNOLOGIES CORPORATIONDownload PDFPatent Trials and Appeals BoardMar 27, 202015038594 - (D) (P.T.A.B. Mar. 27, 2020) 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. 15/038,594 05/23/2016 Crystal LaBoudy 73803US02; 67097-2729PUS1 9682 54549 7590 03/27/2020 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER PETERS, BRIAN O ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 03/27/2020 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 PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CRYSTAL LABOUDY, MARK R. WOOD, and BRITTANY TRAVIS ____________ Appeal 2019-005058 Application 15/038,594 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and SEAN P. O’HANLON, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as United Technologies Corporation. Appeal Br. 1. Appeal 2019-005058 Application 15/038,594 2 THE CLAIMED SUBJECT MATTER Claims 1 and 11 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A variable vane assembly comprising: an upstream vane stage including an airfoil coupled with an upstream vane stem and an upstream vane arm and configured to drive said upstream vane stem to rotate, with said upstream vane stem supported in an upstream housing boss, and a downstream vane stage including an airfoil coupled with a downstream vane stem and a downstream vane arm and configured to drive said downstream vane stem to rotate, with said downstream vane stem supported in a downstream housing boss; and a first clearance defined between a radially inner end of said upstream vane arm and a radially outer end of said upstream housing boss, and a second clearance defined between a radially inner end of said downstream vane arm and a radially outer end of said downstream housing boss, with a clearance ratio of said second clearance to said first clearance being greater than or equal to 10. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Hansen US 4,834,613 May 30, 1989 Wheeler US 4,995,786 Feb. 26, 1991 THE REJECTIONS I. Claims 1–5, 9, 11–15, and 19 stand rejected under 35 U.S.C. § 103 as unpatentable over Wheeler. Final Act. 4–8. II. Claims 6–8, 10, 16–18, and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over Wheeler and Hansen. Id. at 8–10. Appeal 2019-005058 Application 15/038,594 3 OPINION Rejection I – Obviousness based on Wheeler In contesting this rejection, Appellant references certain limitations recited in independent claims 1 and 11, but otherwise presents arguments without regard to any particular claim. See Appeal Br. 2–5; Reply Br. 1–2. Thus, we select independent claim 1 as representative of the claims subject to this rejection, with claims 2–5, 9, 11–15, and 19 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Referring to an annotated reproduction of Wheeler’s Figure 1 on page 5 of the Final Action, the Examiner finds that Wheeler teaches, in relevant part, a first clearance (see annotated Fig. 1 . . .) defined between a radially inner end of said upstream vane arm (40) and a radially outer end of said upstream housing boss, and a second clearance (see annotated Fig. 1 . . .) defined between a radially inner end of said downstream vane arm and a radially outer end of said downstream housing boss (Fig. 1). Final Act. 4. The Examiner finds that, although “[t]he figure clearly shows that the first clearance is smaller than the second clearance” (Ans. 5), “Wheeler does not teach a particular ratio of said second clearance to said first clearance being greater than or equal to 10” (Final Act. 5). However, the Examiner explains that [A]pplicant has not disclosed that having a ratio of the second to first clearance being greater than or equal to 10 solves any stated problem or is for any particular purpose above the fact that the length of the downstream vane stem (i.e. the second clearance distance) is determined so as to avoid a compressor housing split flange [0042] and it appears that the rotatable vane of Wheeler would perform equally well with a second to first clearance ratio of 10 or more as claimed . . . . Appeal 2019-005058 Application 15/038,594 4 Id. at 5–6. The Examiner determines that “it would have been an obvious matter of design choice, before the filing of the claimed invention, to modify the clearance of Wheeler by utilizing the ratio as claimed for the purpose of avoiding any component that would interfere with the vanes[’] rotation.” Id. at 6 (citing Gardner v. TEC Sys., Inc., 725 F.2d 1338 (Fed. Cir. 1984)). Appellant argues that the identified second clearance in Wheeler is not greater than the identified first clearance. Appeal Br. 4 (citing Wheeler, Fig. 1). In particular, Appellant asserts that “vane 22 does not have a greater clearance, in that there would appear to be structure extending radially outwardly of the housing and up into contact with the arm. The same is true with regard to the vane 24.” Id. According to Appellant, “[t]he clearance between the two would appear to be effectively identical.” Id.; see also Reply Br. 1 (asserting that “the gaps between the bosses and the vane arms are equal for each stage”). We are not persuaded by Appellant’s argument. The Examiner responds in the Answer “that the apparent ‘structure’ associated with vane 22 is the 2nd bushing surrounding the vane stem that extends between the boss and the downstream vane arm.” Ans. 6. The Examiner points to another annotation of Wheeler’s Figure 1 on page 7 of the Answer, reproduced below. Appeal 2019-005058 Application 15/038,594 5 Wheeler’s Figure 1 depicts “a cross-sectional view of a portion of an axial flow gas turbine engine compressor having at least one row or stage of stator vanes.” Wheeler 1:62–64. Annotated Figure 1 of Wheeler, above, shows, among other things, the Examiner’s identified “2nd [b]ushing” surrounding the stem of vane 22 between the vane arm and housing boss. Ans. 7. Appellant asserts in the Reply Brief that “[t]he unnumbered structure surrounding the vane stem for the vane 22 is not described, nor is this ‘second bushing’ differentiated from the housing structure radially inward of this structure.” Reply Br. 1. However, we disagree with this interpretation of Wheeler’s Figure 1. Instead, we agree with the Examiner that “[t]he 2nd bushing is separate from the boss, not part of the boss as indicated by the hashing lines.” Ans. 6 (emphasis added). In other words, the structure identified by the Examiner as the “2nd [b]ushing” in Figure 1 of Wheeler is separate from the structure identified as the “boss” and the structure identified as the “1st [b]ushing” because of the distinct hatching used for each feature. Appellant does not explain adequately why the Examiner- Appeal 2019-005058 Application 15/038,594 6 identified bushings (id. at 7) must be considered to be part of the Examiner- identified boss for the purposes of determining the clearance between the boss and the vane arm, rather than being considered separate structure from the boss as supported by the distinct hatching. In short, Appellant does not persuasively refute the Examiner’s position that Figure 1 of Wheeler depicts a second clearance (i.e., between the vane arm and housing boss of upstream vane 24) that is greater than the first clearance (i.e., between the vane arm and housing boss of downstream vane 22). See Ans. 5 (explaining that “[t]he figure clearly shows that the first clearance is smaller than the second clearance”). We have also considered Appellant’s argument that “[t]he Examiner points to ‘clearance’ associated with a ring 42, and not the ring 50, both of which appear to be ‘associated’ with vane 24” and that “[t]he clearance ‘associated’ with the ring 50 appears to be much closer to that apparently associated with the vane 22.” Appeal Br. 4. We are not apprised of error by the Examiner in pointing to the clearance associated with ring 42 connected to drive arm 40 of vane 24, rather than the clearance associated with ring 50 connected to drive arm 48 of vane 24. The claim merely refers to an “upstream vane arm” and a “downstream vane arm,” and the Examiner’s finding that Wheeler’s arm 40 is an upstream vane arm and Wheeler’s arm associated with vane 22 (unnumbered) is a downstream vane arm (Final Act. 4) is supported by a preponderance of the evidence. Appellant argues that the Examiner’s design choice rationale is not properly supported. Appeal Br. 4. Appellant asserts that, “[l]ike ‘common sense,’ an Examiner cannot merely recite ‘design choice’ to fill a void in a factual record to support a finding of obviousness.” Id. (citing Plantronics, Appeal 2019-005058 Application 15/038,594 7 Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)); see also Reply Br. 2 (asserting that “Plantronics has the Federal Circuit making quite clear that it is the Examiner’s burden to present a[n] ‘articulated reason with some rational[] underpinning,’ that the ratio would be of interest. He has not.”). According to Appellant, the Examiner has not shown anyone looking to the clearances at the two stages, and no benefits at all to change the relative clearances [to] arrive at the claimed ratios. At best, the reference illustrates, but does not mention, clearances. Without some showing a worker would consider the clearance it is not a design choice. Appeal Br. 5. We are not persuaded by Appellant’s argument. The Plantronics case Appellant relies on in support of the arguments regarding design choice does not, in fact, involve design choice. See Plantronics, 724 F.3d at 1354 (discussing common sense). Design choice applies when alternative elements or configurations in the prior art perform the same function as the claimed aspects with no unexpected results. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that the use of the claimed feature “would be an obvious matter of design choice” when it “solves no stated problem” and “presents no novel or unexpected result” over the disclosed alternatives). In the context of a rejection based on design choice, the relevant issue is whether the alleged differences between the claimed invention and the prior art “result in a difference in function or give unexpected results.” See In re Rice, 341 F.2d 309, 314 (CCPA 1965); see also Gardner, 725 F.2d at 1349 (holding that, where the only difference between the prior art and claims was recitation of relative dimensions of the claimed device and a device having the claimed dimensions would not Appeal 2019-005058 Application 15/038,594 8 perform differently than the prior art device, the claimed device was not patentably distinct from prior art device). Here, the Examiner explains that the only difference between Wheeler and the claimed invention is the ratio of the two clearances. The ratio is a comparison between two relative dimensions. Thus the first element of Gardner v. TEC Syst., Inc. is met. The second element requires that another compressor having the claimed ratio would not perform differently than the compressor of Wheeler. The only modification being made to Wheeler is the height of the vane stem (the piece that connects the vane’s airfoil portion to the vane arm). The function of the vane stem is to transfer the rotational movement from the vane arm to the vane’s airfoil portion. That particular function is not dependent on the length of the vane stem. Thus the function of the vane would not change and neither would the overall function of the compressor. Ans. 6. Appellant further asserts in the Reply Brief that “Appellant’s unique structure is not shown, and would have benefits such as weight reduction. Further, the likelihood of breakage is reduced.” Reply Br. 1; see also id. at 2 (asserting that “there are assembly benefits and weight reduction”). However, Appellant does not provide any evidence to support the position that the clearance ratio recited in the claim (i.e., “a clearance ratio of said second clearance to said first clearance being greater than or equal to 10”) would yield the alleged benefits or that the particular claimed clearance ratio (10:1) would perform differently than any other clearance ratio in which one clearance is greater than the other clearance. Appellant’s unsupported assertions are mere attorney argument, which cannot take the place of evidence in the record. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In other words, Appellant has not set forth persuasive evidence that a clearance ratio being greater than or equal to 10, as recited in the claim, Appeal 2019-005058 Application 15/038,594 9 provides a different function or yields unexpected results. See Kuhle, 526 F.2d at 555; Rice, 341 F.2d at 314. We have also considered Appellant’s argument that “[w]ithout some showing a worker would consider the clearance[,] it is not a design choice.” Appeal Br. 5. We do not find such an argument persuasive in that the Examiner has made findings that (i) Wheeler discloses an unspecified ratio in which a downstream clearance is greater than an upstream clearance and (ii) the particular ratio of 10:1 solves no stated problem and provides no unexpected result relative to the unspecified ratio of Wheeler, thereby supporting a design choice rationale. We are also unpersuaded by Appellant’s suggestion that the Examiner’s conclusion of obviousness is based upon impermissible hindsight reconstruction. See Appeal Br. 5 (stating that “it is especially important to guard against the dangers of hindsight bias”). In particular, Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill in the art at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.”). Thus, Appellant’s assertion of improper hindsight is unsupported. For the foregoing reasons, Appellant does not apprise us of error in the Examiner’s conclusion of obviousness with respect to claim 1. Appeal 2019-005058 Application 15/038,594 10 Accordingly, we sustain the rejection of claim 1, and claims 2–5, 9, 11–15, and 19 falling therewith, under 35 U.S.C. § 103 as unpatentable over Wheeler. Rejection II – Obviousness based on Wheeler and Hansen Appellant does not present any separate arguments for patentability of claims 6–8, 10, 16–18, and 20, which depend directly or indirectly from one of independent claims 1 and 11. See Appeal Br. 2–5; Reply Br. 1–2. Accordingly, for the same reasons discussed above in the context of Rejection I, we also sustain the rejection of claims 6–8, 10, 16–18, and 20 under 35 U.S.C. § 103 as unpatentable over Wheeler and Hansen. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 9, 11–15, 19 103 Wheeler 1–5, 9, 11– 15, 19 6–8, 10, 16– 18, 20 103 Wheeler, Hansen 6–8, 10, 16–18, 20 Overall Outcome 1–20 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