ANSALDO ENERGIA SWITZERLAND AG

Patent Trials and Appeals Board

Oct 1, 2021

2021000590 (P.T.A.B. Oct. 1, 2021)

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.
14/662,381 03/19/2015 Tobias Christoph HUBER 0087748-000282 6151
138462 7590 10/01/2021
ANSALDO/STUDIO TORTA
c/o BUCHANAN INGERSOLL & ROONEY PC
1737 King Street, Suite 500
ALEXANDRIA, VA 22314-2727
EXAMINER
ZAMORA ALVAREZ, ERIC J
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
10/01/2021 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):
ADIPDOC1@BIPC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOBIAS CHRISTOPH HUBER, GERARD FROIDEVAUX,
DANIEL SENG, and IVAN ROZMAN
Appeal 2021-000590
Application 14/662,381
Technology Center 3700
Before BENJAMIN D. M. WOOD, MICHAEL L. WOODS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–7.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies ALSTOM Technology Ltd as the real
party in interest. Appeal Br. 1.
2 Claim 4 has been cancelled. Claims App. 1.
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Application 14/662,381

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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a turbomachine, and a method of
disassembling a turbomachine, wherein the machine includes an inner casing
having upper and lower parts connected via a flange connection tightened by
threaded bolts and nuts. See Spec. 3:28–33.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A turbomachine configured to include an inner casing
mounted to an outer casing when fully assembled, wherein in a
state of disassembly the turbomachine comprising:
said inner casing having an upper part and a lower part
with a first flanged connection including a first through hole, the
upper part and lower part of the inner casing bearing a plurality
of vanes;
a guide ring having a second flanged connection with a
second through hole, wherein the first flanged connection of said
inner casing is connected to the second flanged connection of the
guide ring;
a plurality of bolts extending each through the first and
second through holes in said first and second flanged
connections, respectively, wherein each bolt has threaded
sections that protrude from the first and second flanged
connections on each end and a shank that fully extends through
said through holes such that the threaded sections protrude from
said through holes, wherein said bolts are provided with screw
heads at each end for rotationally fixing said bolts during
disassembly; and
a pair of nuts secure each bolt to the first and second
flanged connections via the threaded sections, wherein each nut
in combination with a respective screw head provides means for
disassembling the first and second flange connections, such that
a rotationally fixed screw head allows untightening of at least
one of the pair of nuts.
Claims App. 1.
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Application 14/662,381

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Knocke US 3,009,176 Nov. 21, 1961
Fleming US 2006/0104742 A1 May 18, 2006
Gossmann US 2011/0085904 A1 Apr. 14, 2011
Taneichi US 9,239,073 B2 Jan. 19, 2016
Alstom WO 2006/103152 A1 Oct. 5, 2006

REJECTIONS
I. Claims 1–3, 5, and 6 are rejected under 35 U.S.C. § 103 as
unpatentable over Alstom, Gossmann, Taneichi, and Fleming.
II. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Alstom, Gossmann, Taneichi, Fleming, and Knocke.

OPINION
Rejection I (Alstom, Gossmann, Taneichi, and Fleming)
“The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks — the
so-called ‘prima facie case.’” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992)). “The Board’s role in any [appeal from an Examiner’s rejection] is
to, ‘on written appeal of an applicant, review adverse decisions of examiners
upon applications for patents.’” Id. (emphasis omitted) (citing 35 U.S.C. §
6(b)). Thus, although the Board’s review relates to patentability, the
Board’s review is of the Examiner’s adverse decision, not necessarily the
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Application 14/662,381

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patentability of Appellant’s claims per se. Accordingly, a Board reversal of
an Examiner’s adverse decision is not a pronouncement that any particular
claim is patentable.
The Examiner finds that Alstom discloses a turbomachine including
many of the elements recited in claim 1, including an inner casing with a
lower part (3) that has a first flanged connection and a guide ring (3’) that
has a second flanged connection, but finds Alstom fails to disclose a
plurality of bolts provided with screw heads, a pair of nuts, and the
functional limitations in the last clause of the claim. See Final Act. 4–6.
The Examiner relies on Gossmann to disclose a plurality of bolts, tightened
by nuts, and which secure upper and lower flanges. 3 See id. at 6–7. The
Examiner reasons that it would have been obvious to modify Alstom’s
turbomachine to incorporate bolts as disclosed by Gossmann because, in
Figure 5c, Alstom discloses similar structure to that disclosed by Appellant
and “there must be a similar flanged connection to attach guide ring (3') or
the upper part (2) to the lower part (3) of the inner casing.” Id. at 7.
Additionally, the Examiner states “the same shank bolt taught in
Gossman[n] to fasten the upper and lower parts of the inner casing can be
used to analogously fasten the guide ring 3' onto the lower part since there
must be a similar connection interface between the two parts to be securely

3 The Examiner relies on Taneichi and Fleming for other elements recited in
claim 1. Final Act. 8–9. Specifically, the Examiner finds that the bolts
taught by Gossmann do not include screw head ends and relies on Taneichi
to remedy this deficiency. Id. at 8. The Examiner also finds that Alstom,
modified as proposed by the Examiner in light of the teachings of Gossmann
and Taneichi, “discloses all of the limitations of claim 1 . . . except such that
a rotationally fixed screw head allows untightening of at least one of the pair
of nuts,” and the Examiner relies on Fleming to remedy this deficit. Id. at 9.
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fastened.” Id. (emphasis added). The Examiner refers to Gossmann’s
discussion of high pressure gas, leakage reduction, and temperature
differences inside its casing as evidence that Gossmann’s housing is an
“inner” housing as recited in claim 1. Id. (citing Gossmann ¶¶ 4, 7, 9, 11).
In a related factual finding supporting the Examiner’s reasoning for the
proposed combination, the Examiner also states “[Gossmann] teaches that
the stud bolt disclosed in Fig. 8 is applicable to any turbomachine casing
that involves a parting joint.” Id. (citing Gossmann ¶¶ 2–3).
Appellant argues the Examiner erred in finding that Gossmann
discloses that its casing is an inner casing. See Appeal Br. 5–6. Appellant
contends that Gossmann’s discussion of high pressure gas, leakage
reduction, and temperature differences inside its casing falls short of
supporting the Examiner’s finding that the casing is an inner casing because
such conditions are not exclusive to inner casings. See id. at 6. Appellant
points out that Gossmann does not disclose guide vanes inside its casing,
which, according to Appellant, is an indication that Gossmann’s disclosed
casing is not an inner casing. See id. at 5. Appellant also asserts that
Gossmann’s disclosure (in particular, Figure 2) relates to an improvement in
retaining structure for a casing, and the improvement includes elements 19
and 20, which, if present on an inner casing, would interfere with the guide
blades contained in such inner casing. See id. at 5–6. According to
Appellant, because Gossmann’s improvement does not relate to an inner
casing, Gossmann’s prior art Figure (Figure 8), which is relied upon by the
Examiner in the rejection of claim 1, does not relate to an inner casing. See
id.
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In reply, the Examiner reiterates that the conditions under which
Gossmann’s casing operates indicate that its casing is an inner casing and
that “Gossmann teaches that the stud bolt disclosed in Fig. 8 is applicable to
any turbomachine casing that involves a parting joint.” See Ans. 10 (citing
Gossmann ¶¶ 2–4, 7, 9, 11). The Examiner also asserts that Gossmann’s
discussion of Figure 2 “is not relevant to the rejection because it is a
different embodiment and invention and is not applicable to prior art Fig. 8.”
Id.
The Examiner’s rationale for combining the teachings of Alstom and
Gossmann relies on the finding of fact that Gossmann depicts an inner
casing, or that it teaches that its connection applies to “any” type of casing.
See Final Act. 3, 7–8; Ans. 10. “The presence or absence of a motivation to
combine references in an obviousness determination is a pure question of
fact.” Alza Corp. v. Mylan Labs., 464 F.3d 1286 (Fed. Cir. 2006). Although
we appreciate the Examiner’s finding that Gossmann may teach certain
conditions or characteristics that apply to inner casings, findings of fact
supporting a rejection must be supported by a preponderance of the
evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (an examiner’s
burden of proving unpatentability is by a preponderance of the evidence).
On the record before us, at best, the issue of whether Gossmann relates to an
inner casing is in equipoise. Specifically, the Examiner does not
persuasively address Appellant’s contention that Gossmann’s improvement
depicted in Figure 2 precludes the use of guide blades (indicating that
Gossmann does not relate to an inner casing). Although the Examiner is, in
a sense, correct in stating that Gossmann’s Figure 2 depicts a “different
embodiment” from the one depicted in Figure 8 (see Ans. 10), Gossmann’s
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Figure 8 describes the prior art structure upon which Gossmann’s invention
improves. See Gossmann ¶¶ 3–12. Thus, contrary to the Examiner’s
finding, a person of ordinary skill in the art would understand Figure 8 of
Gossmann to depict the same type of casing as depicted in Figure 2, with the
difference between these Figures being an improved type of connection.
Similarly, we do not agree that Gossmann’s disclosure in paragraphs 2
and 3 regarding a “casing” is adequate to support the Examiner’s rationale.
Specifically, we do not agree that “[Gossmann] teaches that the stud bolt
disclosed in Fig. 8 is applicable to any turbomachine casing that involves a
parting joint.” Final Act. 3 (emphasis added). Rather, paragraphs 2 and 3
merely refer to a generic casing, and the lack of specificity in this disclosure
is detrimental, not beneficial, to the Examiner’s reasoning. Accordingly, we
do not sustain the Examiner’s rejection of claim 1, and claims 2, 3, and 6
depending therefrom, as unpatentable over Alstom, Gossmann, Taneichi,
and Fleming. Independent claim 5 requires substantially similar structure to
that discussed above regarding claim 1, and the Examiner relies on the same
findings of fact regarding Gossmann to support the rationale for modifying
Alstom’s turbomachine. See Final Act. 6–8, 11–12; Claims App. 1–2.
Accordingly, for the same reasons, we do not sustain the rejection of claim 5
as unpatentable over Alstom, Gossmann, Taneichi, and Fleming.
Rejection II (Alstom, Gossmann, Taneichi, Fleming, and Knocke)
The Examiner does not use the teachings of Knocke in any manner
that would remedy the deficiency discussed above regarding Rejection I.
Accordingly, for the same reasons, we do not sustain Rejection II.

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CONCLUSION
The Examiner’s rejections are reversed.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 5, 6 103 Alstom, Gossmann,
Taneichi, Fleming
1–3, 5, 6
7 103 Alstom, Gossmann,
Taneichi, Fleming,
Knocke
7
Overall
Outcome
1–3, 5–7

REVERSED