Ex Parte Geisner

Patent Trial and Appeal Board

Mar 27, 2018

13698317 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/698,317 11/16/2012
22116 7590 03/29/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Jtirgen Geisner
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.
2010P07467WOUS 3791
EXAMINER
LEGENDRE, CHRISTOPHER RY AN
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
IPDadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN GEISNER
Appeal2017-006103
Application 13/698,317 1
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jurgen Geisner (Appellant) seeks review under 35 U.S.C. § 134(a) of
the Examiner's decision, as set forth in the Final Office Action dated April
5, 2016 ("Final Act."), rejecting claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Hagen (US 2,476,191, issued July 12, 1949), Watson (US
2,578,617, issued Dec. 11, 1951), and Hubbard (US 6,962,479 B2, issued
Nov. 8, 2005). We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies Siemens Aktiengesellschaft as the real party in
interest. Appeal Br. 3 (filed Sept. 6, 2016).
Appeal2017-006103
Application 13/698,317
CLAIMED SUBJECT MATTER
Claim 3, reproduced below, is representative of the claimed subject
matter:
3. An apparatus comprising:
a centrifugal compressor for compressmg a fluid, the
centrifugal compressor comprising:
a housing which has a part joint plane which extends
parallel to or along a machine axis,
a shaft which extends along the machine axis and
has a first shaft end and a second shaft end,
at least one impeller which is mounted on the shaft,
a collector helix which is arranged downstream of
the at least one impeller and collects the compressed fluid
prior to an outflow into a following machine module,
wherein the collector helix is arranged at the first shaft
end, and
a drive which is arranged on the first shaft end,
wherein an axial intake at an overhang stage of the
centrifugal compressor is provided on the shaft on the
second shaft end,
wherein the collector helix is realized as a single
piece in the circumferential direction and is flanged to the
housing of the centrifugal compressor.
Appeal Br. (Claims App.).
ANALYSIS
For claim 3, the Examiner finds that Hagen discloses an apparatus
comprising a compressor including a housing (casing 22) and a collector
helix (scroll outlet 21). Final Act. 4 (citing Hagen, Fig. 1). The Examiner
finds that Hagen does not disclose that the compressor is a centrifugal
compressor or the housing "has a part joint plane which extends parallel to
or along a machine axis," as claimed. Id. at 5. The Examiner finds that
Watson discloses a multistage centrifugal compressor comprising a housing
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having a part joint plane extending parallel to or along a machine axis to
permit flexibility of assembly. Id. (citing Watson, col. 1, 11. 35-38). The
Examiner finds Hubbard discloses that "it is known to use a centrifugal
compressor in place of an axial compressor for the purpose of simplifying
the design and minimizing weight." Id. (citing Hubbard, col. 1, 11. 20-25).
The Examiner reasons that it would have been obvious to one of
ordinary skill in the art to modify the compressor of Hagen to replace the
axial compressor stages with centrifugal compressor stages, as suggested by
Hubbard, to simplify the design and/or minimize weight. Id. at 5-6.
Additionally, the Examiner reasons that it would have been obvious to
further modify the housing in Hagen to include a part joint plane, which
extends parallel to or along a machine axis, to permit flexibility of assembly.
Id. at 6.
Appellant contends that Hubbard "supports the fact that one of
ordinary skill in the art would consider an axial compressor to be a different
type of compressor than a centrifugal compressor." Appeal Br. 8 (citing
Hubbard, col. 1, 11. 20-25).
Hubbard discloses:
Present technology for gas turbines is an axial flow
compressor, comprising many individual parts and having great
complexity and weight. Alternatively a centrifugal compressor
can be employed, which is much simpler and lighter than an axial
flow compressor, but has a much lower pressure ratio.
Hubbard, col. 1, 11. 20-25 (emphasis added). Appellant acknowledges
Hubbard discloses that a centrifugal compressor may be employed, but
Appellant contends that Hubbard does not mention "a simple switch of
compressor stages," or imply that just replacing compressor stages will
complete such a transformation. Appeal Br. 9.
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Application 13/698,317
The Examiner responds that Appellant provides no evidence to
demonstrate that "the structural configuration of Hagen necessarily cannot
be modified to embody the rotor section in a centrifugal-flow design." Ans.
6. The Examiner states that, in the compressor of Hagen, the clear axial
demarcation of the rotor section from the inlet section and outlet section
renders the rotor section conducive to the proposed modification. Id. (see
Examiner's annotated version of Figure 1 of Hagen, identifying the "inlet
section," "rotor section," and "outlet section"). Appellant's contentions do
not apprise us of any error in these findings of the Examiner.
Appellant also contends that Hubbard discloses disadvantages of a
centrifugal compressor due to having much lower pressure ratios. Appeal
Br. 9. The Examiner responds that trade-offs do not necessarily disqualify a
modification from being obvious, especially where an advantage of the
modification is also present. Ans. 7.
We agree with the Examiner. Although Hubbard discloses that a
centrifugal compressor has "a much lower pressure ratio" than an axial
compressor, even assuming this is a disadvantage, Hubbard also discloses
centrifugal compressors are known to provide advantages, including
simplicity and lighter weight. Hubbard, col. 1, 11. 20-25. One of ordinary
skill in the art would thus be aware of such advantages. "The fact that the
motivating benefit comes at the expense of another benefit ... should not
nullify its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another." Winner Int'! Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Appellant's contention focuses only
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Application 13/698,317
on a lower pressure ratio and fails to weigh this effect versus the advantages
of centrifugal compressors also disclosed by Hubbard.
Appellant also contends that centrifugal compressors will change the
flow direction of a gas, and, therefore, a change from an axial compressor to
a centrifugal compressor is not obvious. Appeal Br. 9.
The Examiner responds that the resulting combination of flow
directions (i.e., "generally, an axial flow inlet, a centrifugal flow rotor
section, and a centrifugal/radial flow outlet") resulting from modifying
Hagen in view of Watson and Hubbard are disclosed by Watson. Ans. 7, 8
(Appellant's annotated version of Watson Fig. 3). Appellant's contentions
do not apprise us of any error in the Examiner's findings.
Appellant further contends that both Watson and Hubbard explicitly
state that the components are meant for a centrifugal compressor, further
confirming the differences between the types of compressors. Appeal Br. 9.
Appellant also contends that there is no suggestion to change an axial
compressor just because a centrifugal compressor configuration exists.
Reply Br. 6.
The Examiner responds, stating insofar as Appellant's argument is
intended to imply there is no reasonable expectation of success for the
proposed modification of Hagen to incorporate centrifugal-flow compressor
stages, the Examiner disagrees in view of the teachings of Watson. Ans. 9.
Furthermore, the Examiner has determined that known advantages of
centrifugal compressors provide a motivation for making the proposed
modification of Hagen.
Appellant also contends that both Hagen and Watson fail to teach or
suggest how Watson's split housing including an upper half 2 and a lower
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Application 13/698,317
half 3 could be modified and placed within an axial compressor. Appeal Br.
9.
But "it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); In re Keller, 642 F.2d 413,
425 (CCP A 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... "). Rather, the test for obviousness is "what the
combined teachings of the references would have suggested to those of
ordinary skill in the art." In re Keller, 642 F.2d at 425. We also note that
"[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Here,
the Examiner points out that Hagen's casing 22 and Watson's housing 1 are
both annular and define a cylindrical shape enveloping compressor rotors
therein. Ans. 10. The Examiner maintains that one of ordinary skill in the
art would be apprised of the structural configuration required to adapt
Hagen's casing 22 to have an axial/longitudinal split line as in Watsons'
housing 1. Id. Appellant has not provided persuasive argument or evidence
to show that the Examiner's proposed modification of Hagen's housing
would have been beyond the level of skill of a person of ordinary skill in the
art.
Appellant also contends that the applied references do not provide an
apparent reason to combine features of Watson's housing with that of
Hagen's axial compressor. Appeal Br. 10. In response, the Examiner
explains that the proposed modification of Hagen to provide a split-
casing/housing, as in Watson, would inherently permit ease/flexibility of
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assembly/installation of the compressor components into the casing/housing.
Ans. 11. The Examiner also explains that, in regard to the proposed
modification of replacing the axial-flow compressor stages of Hagen with a
centrifugal-flow design, the advantages (i.e., simplifying design and/or
minimizing weight) serving as the basis for the modification are explicitly
disclosed by Hubbard. Id. Appellant's contentions do not apprise us of any
error in the Examiner's findings or reasoning.
Appellant also contends that the applied references do not disclose or
suggest "a collector helix that collects the compressed fluid prior to an
outflow into a following machine module" and which "is realized as a single
piece in the circumferential direction and is flanged to the housing of the
centrifugal compressor," as recited in claim 3. Appeal Br. 7-8. Appellant
submits it is known that a collector helix has a helical chamber. Id. at 11
(citing Spec. 1, 11. 27-31 ). Appellant contends that outlet 21 in Hagen has
an opening 94, which provides an additional passage for the fluid (id. (citing
Hagen, col. 5, 11. 24--26)) and a "circumferential split" along outlet 21
(Reply Br. 8). Appellant contends that because outlet 21 includes additional
openings within wall 93, outlet 21 cannot then be considered an equivalent
to the claimed collector helix. Id.; see Hagen, Fig. 1. According to
Appellant, Hagen discloses a part joint that "opens up" to release pressure by
providing a passage for air. Reply Br. 8 (citing Hagen, col. 5, 11. 24--27).
Appellant also contends that Hagen fails to disclose a collector helix as a
single piece, as claimed. Id.
These contentions are not persuasive. Regarding Appellant's
contention that a collector helix is known to have a helical chamber (Appeal
Br. 11), Appellant's Specification states, "[a]s a rule, such a collector helix
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is an annular chamber realized in a slightly helical manner .... " Spec. 1, 11.
27-31. We first note, however, that this description is found only in the
Background of Invention section of the application. To the extent it is
Appellant's position that this description provides a "definition of the
collector helix (CC)" shown in the Figure, we disagree. To act as his own
lexicographer, "the patentee must 'clearly express an intent' to redefine the
term." See Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012). The subject description in the background section does not
evidence a clear intent to define a "collector helix" as having a helical
chamber. Also, the Specification does not explicitly indicate that the
structure of collector helix (CC) is the same as that of the collector helix
described in the background section. Accordingly, Appellant's contention
that Hagen does not mention any complete geometry of outlet 21 "that
would match the definition of the collector helix (CC)" is not persuasive.
Appeal Br. 11.
Furthermore, the Examiner responds that outlet 21 of Hagen is of the
scroll-type, and, therefore, produces a centrifugal flow. Ans. 5 (citing
Hagen, col. 4, 11. 64---67). Appellant does not explain persuasively why
outlet 21 in Hagen cannot be considered to correspond to the claimed
collector helix. The Examiner also maintains that Figures 1 and 2 of Hagen
show the structural elements of the claimed collector helix. Id. at 13. In this
regard, the Examiner determines that Figure 1 does not provide any
indication that the structure/material defining outlet 21 is "split" in the
circumferential direction, and Figure 2 does not indicate that the
structure/material defining outlet 21 has a boundary defining a
circumferential split. Id.
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We agree with the Examiner. Although Hagen discloses that wall 93
of scroll outlet 21 has openings 94 for air flow (see Hagen, col. 5, 11. 24--25,
Fig. 1 ), Appellant does not explain persuasively why Hagen discloses a
"joint part," or why Hagen fails to disclose a collector helix in a single piece.
Appellant does not explain how the final wherein clause in claim 3 precludes
the presence of openings 94 in Hagen, or why Hagen's scroll outlet is not
"realized as a single piece in the circumferential direction" because it
includes openings 94.
Appellant also contests the Examiner's finding (see Final Act. 5) that
the bolt shown at the top right portion of casing 22 in Figure 1 of Hagen
shows that outlet 21 is flanged to casing 22. Appeal Br. 11. Rather,
Appellant contends, Hagen describes that tapped openings 84 shown in
Figure 1 are provided in casing 22. Id. (citing Hagen, col. 5, 11. 9-12).
Accordingly, Appellant contends, outlet 21 is a part of casing 22 and is not a
separate realized single piece, such as the recited collector helix. Id.
In response, the Examiner explains that Hagen is interpreted as
indicating that both the structure/material defining outlet 21 (hereafter
"scroll outlet 21 ") and the structure/material identified by the lead-line of
reference number 22 (hereafter "casing 22") "can be nominally referred to as
elements of casing." Ans. 11-12. The Examiner also determines that the
tapped openings are formed in scroll outlet 21, which is separate and distinct
from casing 22. Id.
Although we agree with Appellant that the text of Hagen appears to
describe that the casing includes the structure where tapped openings 84 are
formed, in Figure 1 of Hagen, that structure (scroll outlet 21) and casing 22
are represented with different cross-hatching patterns, thereby indicating that
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scroll outlet 21 and casing 22 are structurally different components. Hagen
is not required to also describe, textually, that scroll outlet 21 is not part of
the casing to support the Examiner's finding that casing 22 corresponds to
the claimed housing, and scroll outlet 21 corresponds to the claimed
collector helix. Although Hagen describes that tapped openings 84 are in the
casing, this description does not preclude the Examiner from considering the
structure including scroll outlet 21 as being flanged to casing 22. Indeed,
Figure 1 of Hagen appears to show that the fastener noted by the Examiner
(see Final Act. 5) does attach casing 22 to scroll outlet 21. Drawings can be
relied on for what they disclose to a person of ordinary skill in the art. See
In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (a drawing in a utility
patent can disclose claimed features even if a feature shown in the drawing
is unintended or unexplained in the specification).
For these reasons, we sustain the rejection of claim 3, and of claim 4
depending therefrom, as unpatentable over Hagen, Watson, and Hubbard.
DECISION
We affirm the Examiner's decision to reject claims 3 and 4.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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