Ex Parte Duffy et al

Patent Trial and Appeal Board

Dec 17, 2018

14674234 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/674,234 03/31/2015 Kevin Duffy
54549 7590 12/19/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67097-2895 PUSl; 30832 2066
EXAMINER
KANG, EDWIN G
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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 KEVIN DUFFY and NASR A. SHUAIB
Appeal2018-004214
Application 14/674,234
Technology Center 3700
Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 4, 5, 7, 8, 10, 12-14, 16, and 18-24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 United Technologies Corporation is the Applicant and real party in interest.
Appeal Br. 1.
Appeal2018-004214
Application 14/674,234
THE INVENTION
Appellants' invention relates to lubricating seal plates in gas turbine
engines. Spec. ,r 1. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A gas turbine engine, comprising:
a compressor section, a combustor section, a turbine
section, and at least one rotatable shaft;
a bearing assembly including an inner race, an outer race,
and a plurality of rolling elements;
a seal assembly including a seal plate mounted for rotation
with the rotatable shaft, the seal plate establishing a first
boundary of a tortuous passageway and including a plurality of
radially spaced-apart projections, the projections of the seal
plate projecting from the seal plate
in a first axial direction substantially parallel to an engine
central longitudinal axis, the seal assembly further including a
baffle establishing a second boundary of the tortuous
passageway and including a plurality of radially spaced-apart
projections, the projections of the baffle
projecting in a second axial direction substantially parallel
to the engine central longitudinal axis and opposite the first
axial direction, the projections of the seal plate and the baffle
provided in an alternating arrangement; and
a source of cooling fluid, wherein the cooling fluid flows
through the tortuous passageway between adjacent projections
of the seal plate and the baffle in one of the first axial direction
and the second axial direction.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Dennison
Ullah
Nallam
LaPierre
us 2,990,202
us 5,639,096
US 014/0193243 Al
US 8,845,282 B2
2
June 27, 1961
June 17, 1997
July 10, 2014
Sept. 30, 2014
Appeal2018-004214
Application 14/674,234
The following rejections are before us for review:
1. Claims 21 and 22 are rejected under 35 U.S.C. § 112(a) for failure
to comply with the written description requirement.
2. Claims 4, 7, 8, and 16 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventors regard as the invention. 2
3. Claim 18 is rejected under 35 U.S.C. § 112(d) as being of improper
dependent form.
4. Claims 1, 4, 5, 7, 8, 10, 12-14, 16, 18, 19, 23, and 24 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Dennison and Nallam.
5. Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dennison, Nallam, and LaPierre.
6. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dennison, Nallam, and Ullah.
OPINION
35 US.C. § l 12(a) - Written Description
The Examiner finds that the Specification never states that the face
seal "S" cannot be cooled via the cooling fluid directly and, therefore, the
written description fails to demonstrate possession of an invention where the
face seal is cooled without directly interacting with the cooling fluid. Final
Action 4.
Appellants argue that the drawings depict face seal S that is indirectly
cooled by fluid F. Appeal Br. 4. Appellants direct our attention to
2 A Section 112(b) rejection of claims 23 and 24 has been withdrawn by the
Examiner. Ans. 2.
3
Appeal2018-004214
Application 14/674,234
paragraph 44 of the Specification as explaining that cooling of seal plate 7 4
reduces heat transfer to face seal S. Id., Spec. ,r 44.
The Examiner responds by pointing out that Figure 2 of Appellants'
disclosure depicts direct cooling contact between the cooling fluid and the
face seal. Ans. 4 (see Examiner's annotated version of Figure 2).
Appellants argue that the Examiner uses in incorrect claim
construction whereby the claim requires that the only cooling that the face
seal receives is through indirect contact with the cooling fluid. Reply Br. 1.
The dispute between the Examiner and Appellants is largely a matter
of claim construction. During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004 ). Under the broadest reasonable interpretation standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007). Construing claims broadly during prosecution is not unfair to the
applicant, because the applicant has the opportunity to amend the claims to
obtain more precise claim coverage. A cad. of Sci. Tech Center, 3 67 F .3d
at 1364. See, also In re Skvorecz, 580 F.3d 1262, 1267-68 (Fed. Cir. 2009)
("Applicant always has the opportunity to amend the claims during
prosecution, and broad interpretation by the examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is
justified." ( quoting Manual of Patent Examining Procedure § 2111 ).
In the instant case, the Examiner treats Appellants' claim language
"without directly interacting with the cooling fluid" essentially as a negative
4
Appeal2018-004214
Application 14/674,234
limitation that precludes direct contact between the cooling fluid and the
face seal. See e.g., Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351
(Fed. Cir. 2012). Figure 2 of Appellants' disclosure shows fluid Fin direct
contact with face seal S. Appellants do not direct our attention to any
embodiment of the invention that does not provide for direct contact
between cooling fluid F and face seal S. Having reviewed Appellants'
disclosure, including Figure 2, we are of the opinion that the Examiner's
construction of "without directly interacting with the cooling fluid'' is
reasonable in light of the Specification.
In evaluating rejections under the written description requirement, the
proper inquiry 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
bane). With the foregoing claim construction in mind, we agree with the
Examiner that there is no written description support for an invention where
the face seal is cooled without directly interacting with the cooling fluid.
Consequently we sustain the Examiner's Section 112(a) rejection of
claims 21 and 22.
3 5 US. C. § 112 (b) - Indefiniteness
The Examiner rejects each of claims 4, 7, and 16 because they each
recite "the contact face" without providing an antecedent basis. Final
Action 5. Appellants argue that the recital of "the" instead of "a" is a minor
typographical error which they tried to cure by amendment. Appeal Br. 4.
Appellants contend that a person of ordinary skill in the art would
understand the claims despite such a minor typographical error. Id. In
5
Appeal2018-004214
Application 14/674,234
response, the Examiner maintains that the rejection is proper, despite how
minor in nature the rejection may be. Ans. 5.
A claim lacking explicit antecedent basis is not necessarily indefinite
when the scope of the claim is reasonably certain to those of ordinary skill in
the art. Energizer Holdings, Inc. v. Int'! Trade Comm 'n, 435 F.3d 1366,
1370-71 (Fed. Cir. 2006); see also MPEP § 2173.05(e). In the instant case,
in each instance where "the contact face" is recited, it is in the context "of
the seal plate." Claims App. claims 4, 7, and 16. Under the circumstances,
the scope of the claims is reasonably certain to those of ordinary skill.
Consequently, we do not sustain the Examiner's Section 112(b)
rejection of claims 4, 7, and 16. 3
35 USC§ 112(d)-Improper Dependent Form
The Examiner rejects claim 18 as being of improper dependent form.
Final Action 5---6. This ground of rejection is not opposed and is, therefore,
summarily sustained. Appeal Br. 5.
Claim 1
Unpatentability of
Claims 1, 4, 5, 7, 8, 10, 12-14, 16, 18, 19, 23, and 24
over Dennison and Nallam
The Examiner finds that Dennison discloses the claimed invention
except for baffle projections projecting in a second axial direction, for which
the Examiner relies on Nallam. Final Action 8-10. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify Dennison with alternating
3 Nothing in our decision, however, should be construed as discouraging
Appellants from amending the claims as previously proposed.
6
Appeal2018-004214
Application 14/674,234
projections as taught by Nallam. Id. at 10-11. According to the Examiner, a
person of ordinary skill in the art would have done this to provide a more
efficient labyrinth seal. Id. at 11.
Appellants argue, in essence, that N allam is fundamentally
incompatible with Dennison and, therefore, would not have been combined
by a person of ordinary skill in the art in the manner proposed by the
Examiner. Appeal Br. 5. We agree.
Dennison is directed to providing a labyrinth passage for liquid
cooling fluid, such as oil, for cooling rotating frictionally-engaging members
that operate a hot environment. Dennison, col. 1, 11. 9--21; col. 2, 11. 44--46.
Nallam, in contrast, is directed to inhibiting the radial flow of the working
fluid in a turbine used for generating power. Nallam ,r,r 17-29, Fig. 1. This
results in improved axial flow of the working fluid along axial fluid flow
path 118. Id.
It strikes as highly unlikely that person of ordinary skill in the art
would look to a system for controlling gaseous working fluid flow through a
turbine in order to improve a cooling system that uses a liquid cooling fluid,
such as oil, to cool components that are heated through frictional
engagement. The presence or absence of a motivation to combine references
in an obviousness determination is a question of fact. Par Pharm., Inc. v.
TWI Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). The Examiner errs
in finding that a person of ordinary skill in the art would have had reason to
combine Dennison and Nallam in the manner proposed in the rejection.
Consequently, we do not sustain the Examiner's unpatentability
rejection of claim 1.
7
Appeal2018-004214
Application 14/674,234
Claims 4, 5, 7, 8, 10, 12-14, 16, 18, 19, 23, and 24
Claims 5 and 14, as with claim 1, contain limitations directed to
alternating projections defining a tortuous passageway. Claims App.
Claims 4, 7, 8, 10, 12, 13, 16, 18, 19, 23, and 24 depend, directly or
indirectly, from one of independent claims 1, 5, and 14. Id. The Examiner's
rejection of these claims suffers from the same infirmity that was identified
above with respect to claim 1. Thus, for essentially the same reason
expressed above in connection with claim 1, we do not sustain the rejection
of claims 4, 5, 7, 8, 10, 12-14, 16, 18, 19, 23, and 24.
Unpatentability of Claim 20-22
over Combinations Based on Dennison and Nallam
These claims depend, directly or indirectly, from either independent
claim 1 or claim 5. As such, the Examiner's rejections of these claims suffer
from the same infirmity that we have identified above with respect to the
rejection of claim 1 which infirmity is not cured by reliance on additional
prior art references recited in the rejections. Final Action 20-21.
Consequently, the Section 103 rejections of claims 20-22 are not sustained.
DECISION
The decision of the Examiner to reject claims 21 and 22 under
35 U.S.C. § 112(a) for failure to comply with the written description
requirement is AFFIRMED.
The decision of the Examiner to reject claims 4, 7, 8, and 16 under
35 U.S.C. § 112(b) as indefinite is REVERSED.
The decision of the Examiner to reject claim 18 under 35 U.S.C.
§ 112(d) as being of improper dependent form is AFFIRMED.
8
Appeal2018-004214
Application 14/674,234
The decision of the Examiner to reject claims 1, 4, 5, 7, 8, 10, 12-14,
16, 18, 19, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over
Dennison and Nallam is REVERSED.
The decision of the Examiner to reject claim 20 under 35 U.S.C.
§ 103(a) as unpatentable over Dennison, Nallam, and LaPierre is
REVERSED.
The decision of the Examiner to reject claims 21 and 22 under
35 U.S.C. § 103(a) as unpatentable over Dennison, Nallam, and Ullah is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
9