Ex Parte Floyd et al

Patent Trial and Appeal Board

Aug 24, 2016

12833569 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/833,569
82438 7590
GE Power & Water
Fletcher Yoder PC
FILING DATE
07/09/2010
08/25/2016
P.O. Box 692289
Houston, TX 77269-2289
FIRST NAMED INVENTOR
Donald Earl Floyd II
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.
241875-1 (GETH:0054) 6758
EXAMINER
BEEBE, JOSHUA R
ART UNIT PAPER NUMBER
3745
MAILDATE DELIVERY MODE
08/25/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD EARL FLOYD II and KENNETH DAMON BLACK
Appeal2014-008682 1
Application 12/833,5692
Technology Center 3700
Before JAMES A. WORTH, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-22. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Mar. 28, 2014) and Reply Brief ("Reply Br.," filed Aug. 6, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Nov. 7, 2013) and
Answer ("Ans.," mailed June 6, 2014).
2 According to Appellants, the real party in interest is General Electric
Company. (Appeal Br. 2).
Appeal2014-008682
Application 12/833,569
Introduction
Appellants' disclosure relates to "turbine engines and, more
specifically, to assembly, support, and alignment of components of the
turbine engines." (Spec. i-f 1 ).
Claims 1, 7, and 14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A system, comprising:
a turbine engine comprising an outer turbine shell;
a support assembly configured to support the turbine engine
external to the turbine engine, wherein the support assembly
comprises:
a keyway defined by at least first and second protrusions;
a gib extending from the outer turbine shell and
configured to mate with the keyway; and
a first shim disposed between the gib and the first
protrusion, wherein the first shim comprises a metal foam.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
1. Claims 1, 4--7, 12-16, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Carr (US 3,837,164, iss. Sept.
24, 1974), Golinkin (US 2008/0317591 Al, pub. Dec. 25, 2008),
and Oishi (US 2009/0068008 Al, pub. Mar. 12, 2009).
2. Claims 2, 3, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carr, Golinkin, Oishi, and Bryant (US
2009/0042012 Al, pub. Feb. 12, 2009).
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Application 12/833,569
3. Claims 8, 10, 11, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Carr, Golinkin, Oishi, and
Florin (US 6,402,468 B 1, iss. June 11, 2002).
4. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carr, Golinkin, Oishi, Florin, and Kidder (US
2009/0101788 Al, pub. Apr. 23, 2009).
ANALYSIS
Independent claims 1, 7, and 14
Appellants argue independent claims 1, 7, and 14 together. We select
independent claim 1 as representative, such that independent claims 7 and 14
stand or fall with independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
We are unpersuaded by Appellants' argument that the prior art relied
on by the Examiner fails to disclose a shim "external to the turbine" or that
the "shim comprises a metal foam," as recited by independent claim 1
(Appeal Br. 12-13). One cannot show non-obviousness by attacking
references individually when the rejection is based on a combination of
references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The proposed combination is based on external turbine support of
Carr, as modified by the shim structure of Golinkin, and the shim
composition of Oishi (Final Act. 4, 5).
We are unpersuaded by Appellants' argument that the Examiner's
proposed combination of Golinkin and Carr is improper because, according
to Appellants, Golinkin teaches a principle of operation of internal features
of turbine shells that is different than the principle of operation of the
external supports of Carr (Appeal Br. 7-11). In particular, Appellants assert
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Application 12/833,569
that Golinkin's support member 60 (which is bound between inner casing
and the outer casing with shim member 40) lacks freedom of movement in a
rotational, vertical, or horizontal direction (Appeal Br. 9-10).
However, the Examiner correctly finds that, although Carr does not
disclose a shim, Carr and Golinkin both disclose interfaces that limit
movement about an axis in a radial direction and permit movement in the
longitudinal direction (Ans. 4 (citing Golinkin i-f 15; Carr, col. 1, 1. 61---col. 2,
1. 26)). For example, Golinkin's support member 60 is free to move along
its longitudinal axis, and Carr's central locating means 22 limits the radial
movement of casing 16 but has tongue 23 which is moveable in slot 23a
(id.). Further, we agree with the Examiner that the principle of operation of
a shim, which serves to control the alignment between two elements, is not
changed by its location of being internal or external (Ans. 5). In this
connection, we agree with the Examiner that the shim of Golinkin would
operate in the same manner, i.e., to limit movement, when used to modify
the external support structure of Carr, as it would separately (Ans. 4). As
such, we do not agree with Appellants that the Examiner's proposal to
modify Carr with the shim of Golinkin would change the principle of
operation of either Golinkin or Carr, and we do not agree with Appellants
that the principle of operation of Golinkin' s shim differs from than that
which is recited.
To the extent that Appellants are arguing that Golinkin teaches away
from external use of a shim (see Appeal Br. 6), we do not agree with
Appellants that the internal use of Golinkin constitutes a teaching away from
external use. Indeed, we agree with the Examiner that nothing in Golinkin
discourages or discredits the use of a shim external to a turbine (see Ans. 4).
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Application 12/833,569
We are unpersuaded by Appellants' argument that the Examiner's
proposed combination of Golinkin and Carr is based on improper hindsight
(Appeal Br. 11-12). Appellants argue that it was hindsight for the Examiner
to have proposed using Golinkin's shim in an external connection (id.).
However, the Examiner reasons that the proposed modification of Golinkin
and Carr is not improper under KSR because it is combining prior art
elements according to known methods to yield predictable results, it is the
simple substitution of one known element for another to yield predictable
results, it is the use of a known technique to improve similar devices in the
same way, and it is applying a known technique to a known device ready for
improvement to yield predictable results (Ans. 7-9 (citing KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007))). Further, the Examiner reasons that a
person of ordinary skill would have been motivated to use the shim of
Golinkin to support the keyway in Carr for the purpose of providing a more
precise alignment while avoiding the dangers of bolting (Final Act. 5). We
agree with the Examiner that a person of ordinary skill would have modified
Carr with Golinkin's shim for the reasons stated by the Examiner. See KSR,
550 U.S. at 416-18.
We, therefore, sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claims 1, 7, and 14.
Dependent claims 2, 3, and 20
Appellants argue that Bryant fails to cure the argued deficiency in the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 1 and
14 (Appeal Br. 13-14). Having found no deficiency therein, we sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claims 2, 3, and 20, for
similar reasons as independent claims 1 and 14, from which they depend.
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Application 12/833,569
Dependent claims 8, 10, and 11
Appellants argue that Florin fails to cure the argued deficiency in the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claim 7
(Appeal Br. 14--15). Having found no deficiency therein, we sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claims 8, 10, and 11, for
similar reasons as independent claim 7, from which they each depend.
Dependent claim 18
Appellants argue that Florin teaches a different principle of operation
than Carr because Florin's wear pad is internal between shell components
rather than external (Appeal Br. 15-16). We are unpersuaded by this
argument for similar reasons as for Appellants' argument with respect to
independent claim 1 that Golinkin teaches a different principle of operation
(see supra).
Appellants also argue that Golinkin teaches away from the use of a
wear pad, as taught by Florin, because Golinkin teaches "maintaining a gap
114 above the uppermost surface of the support member under all
conditions" (Appeal Br. 17 (quoting Golinkin i-f 19)). However, we agree
with the Examiner, that Golinkin's gap 114 is a specific gap between the
inner and outer casing of Golinkin to accommodate thermal expansion
between the inner and outer casing of Golinkin (Ans. 13 (citing Golinkin i-f
20)). As such, we find that Golinkin does not discredit or discourage the use
of a wear pad in a different location (see id.). In any event, we agree with
the Examiner's reasoning that the Examiner's proposed modification, i.e., to
use the wear pad of Florin, is a modification of the keyway attachment of
Carr-not of Golinkin, which is intended to prevent wear, as taught by
Florin (see Ans. 13 (discussing Florin, col. 3, 11. 57---63)).
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Application 12/833,569
As to Appellants' argument that the Examiner has not made a prima
facie case of obviousness with respect to claim 18, or in particular, with
respect to a "shim external to the turbine," we are unpersuaded by this
argument for similar reasons as set forth above with respect to independent
claims 1 and 14. Thus, we sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of claim 18, for similar reasons as for independent claims 1 and 14.
Dependent claims 17 and 19
Appellants' arguments with respect to dependent claims 1 7 and 19 are
similar to Appellants' arguments with respect to dependent claim 18. We,
therefore, sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
claims 17 and 19, for similar reasons as for claim 18.
Dependent claim 9
Appellants argue that Kidder fails to cure the argued deficiency in the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claim 7.
(Appeal Br. 19). Having found no deficiency therein, we sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of claim 9, for similar
reasons as independent claim 7, from which it depends.
Dependentclaims4-6, 12, 13, 15, 16, 21, and22
Appellants do not argue the Examiner's rejection of claims 4---6, 12,
13, 15, 16, 21, and 22 separately from claims 1, 7, and 14, from which they
each depend. We, therefore, sustain the Examiner's rejection under 35
U.S.C. § 103(a) of claims 4---6, 12, 13, 15, 16, 21, and 22, for similar reasons
as for independent claims 1, 7, and 14.
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Application 12/833,569
DECISION
The Examiner's decision to reject claims 1-22 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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