UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Mar 27, 2020

15038594 - (D) (P.T.A.B. Mar. 27, 2020)

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.
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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.
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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 . . . .
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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.
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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-
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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,
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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
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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,
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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.
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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