UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Apr 20, 2020

14904621 - (D) (P.T.A.B. Apr. 20, 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.
14/904,621 01/12/2016 Dmitrity A. Romanov 67097-2565PUS1;72913US02 1013
54549 7590 04/20/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
SUTHERLAND, STEVEN M
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/20/2020 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 DMITRITY A. ROMANOV and BRIAN DUGUAY
____________

Appeal 2019-005237
Application 14/904,621
Technology Center 3700
____________

Before NATHAN A. ENGELS, ERIC C. JESCHKE, and
FREDERICK C. LANEY, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review, under 35 U.S.C. § 134(a), of the Examiner’s
decision, as set forth in the Final Office Action dated December 5, 2018,
rejecting claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

BACKGROUND
The disclosed subject matter “relates to controlling the radial position
of a structure supported by the case during thermal transients.” Spec. ¶ 3.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies United Technologies Corporation as
the real party in interest. Appeal Br. 1.
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Claims 1 and 11 are independent. Claim 1 is reproduced below, with
emphasis added:
1. A radial position control assembly for a gas
turbine engine comprising:
a case structure;
a support structure operatively supported by
the case structure respectively with first and second
splines engaging one another, the support structure
including an annular recess;
a support ring received in the annular recess,
the support structure and the support ring having
different coefficients of thermal expansion; and
an axial biasing member urging the first and
second splines into engagement with one another.

REJECTIONS
1. Claims 1–19 stand rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
2. Claims 1–19 stand rejected under 35 U.S.C. § 112(b) as failing
to particularly point out and distinctly claim the subject matter regarded as
the invention.

DISCUSSION
Rejection 1 – Written Description
A. Summary of Rejection
The Examiner rejected independent claims 1 and 11, finding that
those claims lack adequate written description in the Specification. See
Final Act. 7–8. More specifically, the Examiner found that “the limitation
‘an axial biasing member’ [in both independent claims] invokes section
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112(f) without disclosing adequate structure for performing the recited
function.” Id. at 8. According to the Examiner, “[t]he disclosure recites that
the axial biasing member is component 122 in figures 5 and 8; however, the
specification is silent to the structure of the component, such that it cannot
be determined that applicant possessed the claimed invention at the time of
disclosure.” Id. The Examiner further found that “[t]he figures do not
provide enough detail to determine the form of component 122, which is
shown as amorphous, and extends between 124 and 126.” Id.
Dependent claims 2–10 and 12–19 are rejected under this ground
based solely on their dependence from either claim 1 or 11. Appellant
argues the patentability of the independent claims as a group. See generally
Appeal Br.; Reply Br. We address the independent claims together, with the
dependent claims standing or falling with the independent claims. See
37 C.F.R. § 41.37(c)(1)(iv) (2018).
B. The Applicability of 35 U.S.C. § 112(f)
We first address the Examiner’s conclusion that the phrase “axial
biasing member” in claims 1 and 11 invokes 35 U.S.C. § 112(f). In the
Office Action, the Examiner stated that “axial biasing member” invokes
§ 112(f) “because it uses . . . a generic placeholder ‘member’ coupled with
functional language ‘axial biasing’ . . . without reciting sufficient structure to
achieve the function.” Final Act. 5.2 According to the Examiner, “the

2 The Examiner also concluded that the phrase “radial biasing member” in
claims 10 and 19 invokes § 112(f), but the Examiner does not presently
reject any claims based on that phrase. We thus do not address the
Examiner’s conclusion as to the phrase “radial biasing member.”
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generic placeholder [(i.e., ‘member’)] is not preceded by a structural
modifier.” Id.
Appellant argues that “axial biasing member” does not invoke
§ 112(f) because “MPEP 2181 . . . recognizes an example (‘reciprocating
member’), much like the axial and radial biasing members, for which § 112,
¶ 6[3] does not apply.” Appeal Br. 4 (quoting MPEP § 2181.I.A).
Appellant also argues that “[a]nother skilled worker, Michael
McCaffrey, inventor of now issued [U.S.] patent 9,200,530 used th[is] same
term[]” and that “[t]his fact alone rebuts the Examiner’s § 112, ¶¶ l, 2 and 6
arguments since a skilled worker is the basis for rejections based on each of
these paragraphs.” Appeal Br. 4. Appellant states that “the Examiner has
offered no evidence concerning a skilled worker.” Id.
The Federal Circuit has “stated that the use of the word ‘means’ in a
claim element creates a rebuttable presumption that § 112, para. 6 applies”
and that “the failure to use the word ‘means’ also creates a rebuttable
presumption—this time that § 112, para. 6 does not apply.” Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in
relevant part) (internal citations omitted). Because “axial biasing member”
does not include the word “means,” we start from the presumption that
§ 112(f) does not apply.

3 The Leahy-Smith America Invents Act (“AIA”) re-designated 35 U.S.C.
§ 112 ¶ 6 as 35 U.S.C. § 112(f) and included revisions to that section that
became effective on September 16, 2012. Pub. L. No. 112-29, § 4(c), 4(e),
125 Stat. 284, 296–97 (2011). Because the application before us was filed
after that date, we apply the AIA version of the statute. See Pub. L. No. 112-
29, § 4(e), 125 Stat. at 297. The same analysis would apply, however, even
under the pre-AIA version of the statute.
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This presumption, however, is not “strong” and can be overcome “if
the challenger demonstrates that the claim term fails to ‘recite sufficiently
definite structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’” Id. at 1349 (quoting Watts v. XL
Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Here, we agree with the
Examiner that the term “member” in the limitation at issue acts as a “generic
placeholder” (Final Act. 5; Ans. 3)—i.e., a nonce word, similar to
“mechanism,” “means,” “device,” and “element”—which “typically do[es]
not connote sufficiently definite structure.” Mass. Inst. of Tech. v. Abacus
Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (“MIT”), cited in
Williamson, 792 F.3d at 1350. And we also agree with the Examiner that the
modifying phrase “axial biasing” in the limitation at issue merely provides a
functional description of the generic “member.” See Final Act. 5 (stating
that “axial biasing” provides “functional language . . . without reciting
sufficient structure to achieve the function”); Ans. 3 (stating that “axial
biasing” “describe[s] the function of the member[] . . . and not the
mechanical structure of the member[]”).
When addressing similar claim limitations—i.e., ones reciting a
functional descriptor combined with a generic placeholder—the Federal
Circuit has consistently determined that the predecessor to § 112(f) applied.
For example, in MIT, the court determined that “colorant selection
mechanism” did not connote sufficient structure to one of ordinary skill in
the art and that § 112 ¶ 6 applied. See MIT, 462 F.3d at 1354. Specifically,
the court viewed “mechanism” as not alone connoting sufficient structure
and determined that “colorant selection” was not defined in the specification
or otherwise understood to one of ordinary skill in the art. Id. at 1353–54.
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As another example, in Mas-Hamilton Group v. LaGard, Inc., 156
F.3d 1206, 1214, 1215 (Fed. Cir. 1998), the court held that the district court
was correct to apply § 112 ¶ 6 to the recited “lever moving element” because
that limitation was “described in terms of its function not its mechanical
structure” and was correct to apply § 112 ¶ 6 to the recited “moveable link
member” (emphasis added) because that phrase does not “provide any
structure as necessary to remove th[e] limitation from the ambit of section
112, ¶ 6.” See also Williamson, 792 F.3d at 1349–51 (holding that § 112 ¶ 6
applied to “distributed learning control module” because “‘[m]odule’ is a
well-known nonce word that can operate as a substitute for ‘means’ in the
context of § 112, para. 6” and “[t]he prefix ‘distributed learning control’
does not impart structure into the term ‘module’”).
In contrast, for example, in Lighting World, Inc. v. Birchwood
Lighting, Inc., the court determined that “connector assembly” recited
sufficient structure (such that § 112 ¶ 6 did not apply), but the court based
the analysis on evidence that “connector”—rather than “assembly”—would
have been understood by one of skill in the art to denote structure. 382 F.3d
1354, 1359–63 (Fed. Cir. 2004), overruled by Williamson, 792 F.3d at 1349
(“expressly overul[ing] the characterization of th[e] presumption [based on
the absence of ‘means’] as ‘strong’”). Here, in line with the Examiner’s
position, we view the “axial biasing member” limitation as more similar to
the language in MIT and Mas-Hamilton, and less similar to the language in
Lighting World.
Further supporting the application of § 112(f) here, the balance of the
claim language in the clauses reciting “axial biasing member” merely
provide additional description of the function(s) performed rather than
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description of the relevant structure. See Appeal Br. 8 (Claims App.) (claim
1 – reciting “an axial biasing member urging the first and second splines into
engagement with one another”), 10 (claim 11 – reciting “an axial biasing
member urging the first and second splines into engagement with one
another while accommodating misalignment between the first and second
splines from non-uniform circumferential gaps between the segments”). See
MTD Prods. Inc. v. Iancu, 933 F.3d 1336, 1342 (Fed. Cir. 2019 (“In
assessing whether the claim limitation is in means-plus-function format, we
do not merely consider the introductory phrase (e.g., ‘mechanical control
assembly’) in isolation, but look to the entire passage including functions
performed by the introductory phrase.”).
Quoting the Federal Circuit’s decision in Williamson, 792 F.3d at
1349, Appellant states: “The standard is whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently
definite meaning as the name for structure.” Appeal Br. 4; see also id. at 3
(quoting a similar standard from MPEP § 2181(I)(A)). According to
Appellant, “[a] skilled worker would clearly understand that the
axial . . . biasing members are resilient, spring-like structures in at least a
partially compressed state.” Id. Although Appellant provides the applicable
standard, we agree with the Examiner that the stated understanding of one of
ordinary skill in the art is not supported by any record evidence, and is
instead mere attorney argument. See Ans. 3 (§ 2, ¶ 3); In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”).
As to Appellant’s reliance on “reciprocating member” being held to
not invoke § 112 ¶ 6 in the context of the Federal Circuit’s decision in CCS
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Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002) (Appeal
Br. 4 (discussing MPEP § 2181(I)(A)), we agree with the Examiner that the
decision there is distinguishable. As noted by the Examiner, in CCS Fitness,
the “reciprocating member” was determined not to invoke § 112 ¶ 6 because
it was “modified by sufficient structure in the claim.” Ans. 3 (citing CCS
Fitness, 288 F.3d at 1369–70); see CCS Fitness, 288 F.3d at 1370
(discussing how “the claims themselves describe the ‘member’ as having a
‘rear support and a front end’ with one end of this structure circulating
around a crankshaft and the other having wheels so that it can ‘rollably
engage the base portion’ of the claimed invention”). In contrast, the
recitations of “axial biasing member” in the claims here provide either its
function (claims 1 and 11, last clauses) or its location (claim 2), rather than
any structural description. In addition, the Federal Circuit determined there
that “member” “ha[d] an established meaning” in the context of the
invention at issue there. CCS Fitness, 288 F.3d at 1362. Here, in contrast,
we have no such evidence—only attorney argument (as discussed above).
Further, Appellant’s reliance on the presence of the phrase “axial
biasing member” in U.S. Patent No. 9,200,530 is misplaced. As noted by
the Examiner (and not contested by Appellant), the ’530 patent is not related
to the instant application. See Ans. 4 (“Invocation of section 112(f) does not
relate to the presence of the same claim limitations in an unrelated patent.”);
see also Reply Br. 2 (“The present application does not have to claim
priority or incorporate by reference the USPN 9,200,530; that is
irrelevant.”). Appellant contends that, regardless, “[t]he ’530 patent is
relevant for establishing what a skilled worker in the art understands with
regard to ‘axial biasing member’” and that “[t]he same term[ is] used by the
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same inventor (by definition, a skilled worker) in the same art area.” Reply
Br. 2. In neither brief, however, does Appellant address the Examiner’s
findings—stated in the Office Action and repeated in the Answer—that the
’530 patent uses “axial biasing member” in a different way than the instant
application. Specifically, the Examiner finds that the “axial biasing
member” in the ’530 patent “comprises a generally rectangular shape, which
is different from the shape disclosed in the drawings of the instant
application, and is also described as a seal in Col. 7, ll. 48–50” whereas,
“[i]n the instant application, axial biasing member 122 is not described as a
seal in the specification.” Final Act. 10; Ans. 4 (“The axial biasing member
(116) in [the ’530 patent] is structurally different than the axial biasing
member (122) shown in figure 5 of the instant application.”). We determine
that the disparate uses of “axial biasing means” further supports the
application of § 112(f) here. See MTD Prods., 933 F.3d at 1344
(determining that “mechanical control assembly” invokes § 112 ¶ 6 and
noting that the patent challenger in an inter partes review “did not dispute
[the patent owner’s] reliance on various prior patents and publications that
used ‘mechanical control assembly’ to describe a wide variety of structures
with varying functions”).
Finally, we are not persuaded of error by Appellant’s assertion that the
relied-upon disclosures in the Specification here (e.g., Spec. ¶¶ 65, 68, Fig.
5) “provide definition to a skilled worker as to what the axial . . . members
are” and thereby avoid application of § 112(f). Reply Br. 2; Appeal Br. 3
(stating, in a section on the applicability of § 112 ¶ 6, that “the ‘axial biasing
member’ [is] described in the specification”). This argument conflates the
determination of whether a claim term invokes § 112(f) with the subsequent
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review (if § 112(f) is invoked) of the specification to identify the structure
that performs the claimed function(s). See MTD Prods., 933 F.3d at 1344
(“[T]his view would seem to leave § 112, ¶ 6 without any application: any
means-plus-function limitation that met the statutory requirements, i.e.,
which includes having corresponding structure in the specification, would
end up not being a means-plus-function limitation at all.”). For these
reasons, Appellant has not shown error in the Examiner’s determination that
§ 112(f) applies to the phrase “axial biasing member.”
C. Analysis of Written Description
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Having determined that
§ 112(f) applies, we now look to whether the Specification discloses
sufficient structure that corresponds to the claimed function(s). See
Williamson, 792 F.3d at 1351. Addressing the Examiner’s determination
summarized above that the Specification did not disclose sufficient structure
corresponding to the “axial biasing member” to demonstrate possession of
the claimed invention (Final Act. 7–8), Appellant argues that “[t]he axial
biasing member is illustrated as element 122 in Figure 5 and described in
¶0069.” Appeal Br. 4. According to Appellant, “[t]his language, taken with
Figure 5, communicates that the axial biasing member is a resilient, spring-
like structure in at least a partially compressed state.” Id. at 4–5.
We are not apprised of error by this argument because, again, we
agree with the Examiner’s position that Appellant’s asserted understanding
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of one of ordinary skill in the art is not supported by any record evidence.
See Ans. 5 (first full paragraph); In re Pearson, 494 F.2d at 1405
(“Attorney’s argument in a brief cannot take the place of evidence.”). Here,
the record supports the Examiner’s position that, for example, paragraph 69
and Figure 5 (along with the claim language at issue) describe the function
and location of the “axial biasing member” but do not provide “sufficient
detail” as to its “structure.” Ans. 4 (emphasis omitted) (discussing MPEP
§ 2163(I)).
We are also not persuaded by Appellant’s argument that the Examiner
held the Specification here to an improperly high standard. See Reply Br. 2
(“[T]he Examiner essentially argues that since a blueprint of the axial
. . . biasing member[] is not provided then written description is not met.”).
For the reasons above, Appellant has not shown error in the Examiner’s
finding that the Specification does not disclose sufficient structure
corresponding to the “axial biasing member” to demonstrate possession of
the claimed invention. Thus, we sustain the rejection of claims 1 and 11
under § 112(a). Claims 2–10 and 12–19 fall with those claims.
Rejection 2 – Indefiniteness
The Examiner rejected claims 1 and 11, determining that those claims
are indefinite. See Final Act. 8–9. More specifically, the Examiner stated
that “the limitation ‘an axial biasing member’ invokes section 112(f) without
disclosing adequate structure for performing the recited function.” Id. at 8.
According to the Examiner, “[t]he disclosure only recites that the axial
biasing member is component 122 in figures 5 and 8; however, the
specification is silent to the structure of the component, such that it unclear
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what structure is use to carry out the function of axial biasing, rendering the
claims vague and indefinite.” Id. at 8–9.
Dependent claims 2–10 and 12–19 are rejected under this ground
based solely on their dependence from either claim 1 or 11. Appellant again
argues the patentability of the independent claims as a group. See generally
Appeal Br.; Reply Br. We address the independent claims together, with the
dependent claims standing or falling with the independent claims. See
37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that “MPEP 2181 sets for[th] guidelines as to
whether a §112, ¶2 rejection is proper where §112, ¶6 has been applied” and
that “[t]here, Examiners are reminded that if there is corresponding structure
in the specification (e.g., the drawings) then the claims are definite.” Appeal
Br. 5. Appellant argues that axial biasing member 122 is “shown in multiple
figures, such as Figure 5.” Id.
Appellant’s arguments do not apprise us of error. The passage from
MPEP § 2181 does not support Appellant’s assertion that “if there is
corresponding structure in the specification (e.g., the drawings) then the
claims are definite.” Appeal Br. 5. Instead, the passage provides that
“drawings may provide a written description of an invention as required by
35 U.S.C. 112” (MPEP § 2181(III) (emphasis added) (citing Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir 1991)), and the balance of that
section of the MPEP makes clear that the test here is one of sufficiency of
disclosure, not merely whether the feature at issue is depicted at all. See,
e.g., MPEP § 2181(III) (“A rejection under 35 U.S.C. 112(b) or pre-AIA 35
U.S.C. 112, second paragraph is appropriate if the written description fails to
link or associate the disclosed structure, material, or acts to the claimed
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function, or if there is no disclosure (or insufficient disclosure) of structure,
material, or acts for performing the claimed function.”) (emphasis added); In
re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc) (“[I]f one
employs means-plus-function language in a claim, one must set forth in the
specification an adequate disclosure showing what is meant by that
language. If an applicant fails to set forth an adequate disclosure, the
applicant has in effect failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112.”) (emphasis
added).
Appellant continues that “[t]here is no doubt that a designer of a gas
turbine engine from Figure 5 . . . and the accompany text in the disclosure
link the structure to the function of [the] ‘axial biasing’ . . . member 122.”
Appeal Br. 6. The issue here, however, is not a failure to link axial biasing
member 122 to the claimed function (cf. Appeal Br. 6); instead, the issue is
the lack of clarity as to the nature of the structure of the “axial biasing
member.” Here, the record supports the Examiner’s position that, even
though Figure 5 depicts an axial biasing member 122, and even considering
that Figure and the other relied-upon aspects of the Specification, “it is
unclear what type of structure is being used to [perform the recited function
of] bias[ing] the first and second splines into engagement.” Ans. 5.
Appellant also argues that the “inventor of the ’530 patent recognized
and understood the meaning of ‘axial biasing member.’” Appeal Br. 6. We
are not apprised of error based on the presence of the term “axial biasing
member” in the ’530 patent. In the context of this Rejection, Appellant has
again not addressed the Examiner’s findings that “axial biasing member”
was used in a different way in the ’530 patent, which supports a finding that
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there is no understood meaning of the term at issue. See Ans. 5–6 (stating
that “the axial biasing member (116) shown in patent 9,200,530 is a different
shape from the biasing member in the instant application, used for a different
purpose (compressing seal 114 opposite seal 116), and is described as a seal
in patent 9,200,530”).
For the reasons above, Appellant has not shown error in the
Examiner’s determination that the Specification did not disclose sufficient
structure corresponding to the “axial biasing member” to satisfy the
definiteness requirement. Thus, we sustain the rejection of claims 1 and 11
under § 112(b). Claims 2–10 and 12–19 fall with those claims.

CONCLUSION
We affirm the Examiner’s rejection of claims 1–19.
More specifically, we affirm the decision to reject claims 1–19 under
35 U.S.C. § 112(a) and we affirm the decision to reject claims 1–19 under
35 U.S.C. § 112(b).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 112(a) Written Description 1–19
1–19 112(b) Indefiniteness 1–19
Overall
Outcome
1–19

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TIME PERIOD FOR RESPONSE
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