Ex Parte Hasel

Patent Trial and Appeal Board

Nov 26, 2018

13716253 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/716,253 12/17/2012 Karl L. Hase!
54549 7590 11/28/2018
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.
63967US02;
67097-2259PUS1
CONFIRMATION NO.
7712
EXAMINER
BURKE, THOMAS P
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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 KARL L. HASEL
Appeal2017-009971
Application 13/716,25 3
Technology Center 3700
Before MICHAEL L. HOELTER, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1 and 3-14. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM, and we designate our affirmance of the Examiner's
rejection of claims 1 and 3-14, under 35 U.S.C. § 112, first paragraph, for
1 Appellant identifies the real party of interest as United Technologies
Corporation. Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated August 16, 2016, as
supplemented by the Advisory Action dated November 9, 2016.
Appeal2017-009971
Application 13/716,253
failing to comply with the enablement requirement, as a NEW GROUNDS
OF REJECTION, pursuant to our authority under 37 C.F.R. § 4I.50(b ). We
enter a NEW GROUNDS OF REJECTION of claims 1 and 3-14 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement, pursuant to our authority under 37 C.F.R.
§ 4I.50(b).
STATEMENT OF THE CASE
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal, with
disputed claim limitations italicized for emphasis.
1. A gas turbine engine comprising:
a fan rotor, a first compressor rotor and a second
compressor rotor, a first turbine rotor and a second turbine
rotor, said first compressor rotor configured for operating at a
lower pressure than said second compressor rotor and said
second turbine rotor configured for operating at a higher
pressure than said first turbine rotor, said first turbine rotor
configured to drive said first compressor rotor, and said second
turbine rotor configured to drive said second compressor rotor
and said first turbine rotor also configured to drive said fan
rotor through a gear reduction;
wherein a first number is defined as the total of blades
collectively associated with each of said fan rotor, said first and
second compressor rotors and said first and second turbine
rotors,
wherein a second number is defined as the total of static
vane members collectively associated with each of said fan
rotor, said first and second compressor rotors and said first and
second turbine rotors,
wherein a third number is defined as a sum of the first
number and the second number;
wherein a fourth number is defined as the total of stages
collectively associated with each of the fan rotor, the first and
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second compressor rotors and the first and second turbine
rotors;
wherein an overall pressure ratio from an inlet end of
said fan rotor to an outlet end of said second compressor rotor
is configured to be greater than 30 at 35,000 feet and operating
at . 80 MN cruise flight condition;
wherein said fan rotor is configured to deliver air into:
said first compressor rotor; and
a bypass duct as bypass propulsion air,
wherein a bypass ratio is defined as the quantity of air
delivered into the bypass duct divided by the quantity of air
delivered into the first compressor rotor,
wherein the bypass ratio is greater than about 8. O;
wherein a product is defined by the bypass ratio
multiplied by the overall pressure ratio, and
wherein a stage ratio is defined as said product divided
by said fourth number;
wherein an airfoil ratio is defined as said product divided
by said third number; and
wherein:
said aiifoil ratio is greater than or equal to .12; or
said stage ratio is greater than or equal to 22.
THE REJECTIONS
I. Claims 1 and 3-14 stand rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the enablement requirement.
II. Claims 1 and 3-14 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
III. Claims 1 and 3-14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Gray (Energy Efficient Engine Preliminary Design and
Integration Studies, by D. E. Gray, et al., Report No. NASA CR-135396,
November 1978).
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Application 13/716,253
IV. Claims 1 and 3-14 stand rejected under 35 U.S.C. § I03(a), as
unpatentable over Gray, Johnson '509 (US 2005/0081509 Al; published
Apr. 21, 2005), Daeubler (US 2009/0214824 Al; published Aug. 27, 2009),
Senoo (US 2004/0202545 Al; published Oct. 14, 2004), Johnson '650 (US
2008/0141650 Al; published June 19, 2008), Hyde (US 2010/0126178 Al;
published May 27, 2010), and Winter (US 2011/0004388 Al; published Jan.
6, 2011).
ANALYSIS
Rejection I
Regarding claims 1, 3, 4, 8, and 10-14, the Examiner determines that
the claim recitation of "greater than" is "not bounded at its upper limit," and
therefore, such ranges are not enabled by the Specification3 because they
extend to "infinity." Final Act. 3. In particular, the Examiner determines
that "the claimed quantities (bypass ratios, stage ratio, airfoil ratio) do not
have an inherent upper limit because the [ quantities are] engineering design
variable[s]." Id. at 5. See also Ans. 3 (determining that the Specification
"fails to enable one of ordinary skill in the art [how] to approach the claimed
infinite limits."). The Examiner rejects the remaining claims as failing to
cure the deficiencies with respect to independent claims 1 and 11. Id. at 5.
Appellant argues that "a claim and specification do not need to
'enable' everything above a claimed boundary."' Appeal Br. 4. Appellant
also argues that "there are clear limits upon the bypass ratio that are inherent
in the gas turbine engine art," for example, "for the gas turbine engine to
work, air must be delivered to the compressor" and "a fan diameter cannot
3 Specification filed on August 12, 2013.
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Application 13/716,253
be made so large that the engine would no longer fit in the packaging space
on an aircraft." Id. at 4--5. Appellant submits that "a worker of ordinary
skill in the art would recognize that a bypass ratio cannot be infinite." Id. at
5. Regarding the other claimed variables with similar ranges, Appellant
argues that
[ t ]he stage ratio and the airfoil ratio are enabled even
though there is no upper limit in that a worker of ordinary skill
in this art would recognize there is an inherent upper limit. For
example, the stage ratio is "said product divided by said fourth
number." The "product" is the bypass ratio multiplied by the
overall pressure ratio. As previously shown, the bypass ratio
cannot be infinite. An overall pressure ratio also cannot be
infinite. There are limits on what a compressor section can be
called upon to actually do in real-world situations. As the
pressure ratio increases, the temperatures and stresses from the
pressure mcrease.
Moreover, the "fourth number" is the total number of
stages associated with the engine. For the stage ratio to be
infinite, the fourth number would need to approach zero. It
would not be possible for a gas turbine engine to operate with no
stages in its fan rotor, first and second compressor rotors and first
and second turbine rotors. As such a worker of ordinary skill in
the art would recognize there is an upper limit to the stage ratio.
The airfoil ratio is defined as the product divided by the
third number. The third number is the total number of blades
across the fan rotor, first and second compressor rotors and first
and second turbine rotors plus the total number of static vanes
associated with each of the fan rotor, first and second compressor
rotors and first and second turbine rotors. For the airfoil ratio to
be infinite, the third number would have to approach zero. A gas
turbine engine cannot operate effectively with no blades, or
vanes. As such, a worker of ordinary skill in the art would
recognize there is an upper limit to the airfoil ratio.
Id. at 5---6; see also Reply Br. 2 (arguing that "limits on the claimed ranges
depend on the 'predictable scientific laws' of mechanical arts"). Appellant
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Application 13/716,253
concludes that "[a] person having skill in the art having read Appellant's
disclosure would know how to vary the claimed quantities all the way to
their practical limits." Reply Br. 2.
We are persuaded by Appellant's argument that the structural
limitations of the claimed gas turbine engine provide inherent upper
boundaries on the claimed "greater than" ranges. For example, as argued by
Appellant, the fan rotor must be configured to deliver air into a first
compressor rotor and a bypass duct, such that the BPR 4 cannot be infinity,
and the claims define structure (i.e., blades, static vane members, and stages)
having inherent physical limitations that also provide upper limits to the
claimed ranges.
Notwithstanding, we determine that the Specification fails to enable
the scope of independent claims 1 and 11, and claims 3-10 and 12-14
depending therefrom. The statutory basis for the enablement requirement is
found in 35 U.S.C. § 112, first paragraph, which provides, in relevant paii:
The specification shall contain a written description of the
invention, and of the manner and process of making and using it,
in such full, clear, concise, and exact tenns as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same ....
"Enablement serves the dual function in the patent systern of ensuring
adequate disclosure of the claimed invention and of preventing claims
broader than the disclosed invention." MagSil Corp. v. Hitachi Glob.
Storage Techs., Inc., 687 F.3d 1377, 1380-81 (Fed. Cir. 2012). \Vhen
rejecting a claim for lack of enablement, the USPTO bears an initial burden
of setting forth a reasonable explanation as to why it believes that the scope
4 Spec. ,r 28 ("bypass ratio (BPR)").
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Application 13/716,253
of protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification. In re Wright, 999
F.2d 1557, 1561-62 (Fed. Cir. 1993). If the USPTO meets this burden, the
burden then shifts to the applicant to provide suitable proofs indicating that
the specification is indeed enabling. Id. at 1562 ( citing In re Marzocchi, 439
F.2d 220, 223-24 (CCPA 1971).
Claim 1 recites, as set forth supra, in relevant part (paraphrased), a
gas turbine engine with a structure comprising a fan rotor, first (lower
pressure) and second (higher pressure) compressor rotors, first (lower
pressure) and second (higher pressure) turbine rotors, and gear reduction
between the first turbine rotor and fan rotor, wherein (i) the rotors
collectively have a total number of blades, static vanes members, and stages
associated therewith; (ii) ranges are recited for the BPR (i.e., greater than
about 8.0) and OPR5 (i.e., greater than 30 at 35,000, Mach .80 cruise
condition); and (iii) airfoil and stage ratios are both defined (as reproduced
below) and limited to "greater than or equal to 0.12" and "greater than or
equal to 22," respectively.
BPR x OPR
air{ oil ratio = -----------------
total rotor blades+ static vane members
5 Spec. ,r 4 ("an overall pressure ratio achieved across the fan and the two
compressor components") ,r 28 ("wherein an overall pressure ratio [is
defined] from an inlet end of said fan rotor to an outlet end of said second
compressor rotor"); cf Appeal Br. 13 (Claims App.) (claim 9: reciting "said
overall compression ratio").
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Application 13/716,253
BPR x OPR
stage ratio = --------
total rotor stages
We cannot find guidance in the Specification regarding an exemplary
number of blades, static vane members, or stages, other than their depiction
in the gas turbine engine of Figure 1. Figure 1 is reproduced below.
Figure 1 generically shows a schematic illustration of a non-limiting
embodiment of a high-bypass geared aircraft engine. Spec. ,r,r 16, 19, 23.
Regarding the number of blades/vanes and stages, the Specification
discloses, with reference to Figure 1, that
the fan rotor carries a plurality of fan blades and a single rotor
stage ... identified by Fb,r- Further, there is a row of fan vanes
Fv. There are a plurality of vanes and blades in the rows Fv and
Fb,r- Notably, the fan vanes Fv are only those which see the core
airflow C, and do not count fan vanes which may be positioned
in a bypass duct. In the compressor section 24 there are a number
of rows having vanes Cv where each of these have a plurality of
vanes. The compressor section also has a plurality of rotor
stages, each carrying a plurality of blades identified at Cb,r· In
the turbine section there are turbine rotors with stages carrying
turbine blades T b/r, and there are turbine vanes T v· In each of the
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Application 13/716,253
stages there are a plurality of vanes. The drawings identify some
of the stages and vane rows. A worker of ordinary skill in the
this art would recognize where each of [sic] these components
are in schematic Figure 1.
Collectively, the total number of airfoils could be counted
across a fan section 22, compressor section 24 and turbine
section 28. Similarly, the number of stages can be counted
collectively across the fan 22, compress 24 and turbine 26.
Spec. ,r 25, 26.
The Specification discloses, with reference to Figure 2, that one
of the goals of Appellant's invention is to "increase the [BPR] and
significantly decrease[] the number of stages." Spec. ,r 28. The
Specification explains that "[a]s such, Applicant is able to achieve
quantities equal to, or above 22 for the [stage] 6 ratio, even at overall
[OPRs] where the direct drive turbofan H7 were far below 22." Id.
Spec. ,r 28 ( emphasis added). Figure 2 of the Specification is
reproduced below.
6 Reference to the "BPR" ratio here appears to be a typographical error. Cf
claim 2, supra ("said stage ratio is greater than or equal to 22").
7 No details are provided in the Specification as to the components (i.e.,
numbers of stages or blades/vanes, or core components including the fan,
compressor, and turbine sections) of direct drive turbofan H. See, e.g., Spec.
,r 28 ("the direct drive turbofan H").
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Application 13/716,253
60---------------
50+----------------
40~--------------
35
-- ~------.--------
G
10+----------------
O+--------~-------W ~ ~ ~ W ~ ~ ~ W ~ m
CRUISE OPR
Spec. ,r 28. Figure 2 depicts "a plot showing a quantity for gear turbofans as
modified by Applicant compared to the same quantity for direct drive
turbofans and across a range of compression ratios," wherein the y-axis
represents the claimed stage ratio. Id. at ,r 17.
The Specification also discloses, with reference to Figure 3, that
Appellant's "disclosed embodiment reduces the number of airfoils, increases
the [BPR] and [OPR] and achieves quantities equal to or over .12" Id. ,r 29
(apparently referencing the airfoil ratio 8). Figure 3 is reproduced below.
8 cf Claim 1, supra ("said airfoil ratio is greater than or equal to O .12 ").
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Application 13/716,253
O..t.>;~, --------------
DA i
(L1.~ +-uu~-~~~~~~~~~~~~~~-~~~~~~~~~~u~-~~~~~~~~~~~~~~-~~~~~~~~~~~~~~
o.:~ 1 ............................................................................................................... .
I': I _ _ _ • ,.~~~~~~~~~~ ..... ~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~
f i G u
i [ G • PW GTF's .. _ ~-o. { ~: +~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~~- H • f.DtH':.·:: ~(./.:·_ :)f;: F~::,,
; .l2,
0., I·------·--\ --- ------ -•~-- -- -- .·.1; -- ··u-· -- -- --- ··•1r- -- -- .......................... .
i •:-i
C,l:~, r-·············································································································
n +-~~~~~~~~~"!'-~~~~~~~~~~~~~~~~~~~~~,-~~~~~~~~~~ .. ~~~~~~~~~~ .... ~~~~~~~~u~~~~~~~~~~~,-~~~~~~~~~~ .. ~~~~~~~~~~.,. ~~~~~~~~~ ..
W ~ E ~ W 0 ~ M W ~ ro
Figure 3 depicts "a plot showing a second quantity for gear turbofans as
modified by Applicant compared to the same quantity for direct drive
turbofans and across a range of compression ratios," wherein the y-axis
represents the claimed airfoil ratio Id. ,r 18. The Specification concludes
that "these improvements have been achieved by increasing the [BPR] and
[OPR] while significantly decreasing the number of airfoils." Id.
We cannot find details in the Specification relating to the geared
aircraft engine embodiment disclosed in Figure 1 and the "improvements"
discussed supra (i.e., an increased BPR and/or OPR, and a decreased
number of stages or blades/vanes). Although the following parameters are
disclosed in the Specification, we cannot find disclosures in the
Specification regarding the relationship between the parameters and the
improvements: (i) "a gear reduction ratio of greater than about 2.3"; (ii) a
LPT pressure ratio "greater than about 5"; (iii) a fan diameter significantly
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Application 13/716,253
larger than that of the LPC 9; and (v) a LPT pressure ratio "greater than 5: 1."
Spec. ,r 23. With respect to these parameters, the Specification discloses that
"[i]t should be understood, however, that the above parameters are only
exemplary of one embodiment of a geared architecture engine and that the
present invention is applicable to other gas turbine engine including direct
drive turbofans." Id. The Specification also discloses that "[a] low fan
pressure ratio ... is less than about 1.45" (id. ,r 24) and that "[l]ow corrected
fan tip speed" ... is less than about 1150 ft/ second." Id. To the extent
Appellant maintains that such parameters enable the scope of the claimed
airfoil and stage ratios, such evidence is not in the record before us.
It is also not evident to us from the Specification that the Specification
teaches how to increase the BPR, or the product ofBPR and OPR, to result
in the claimed airfoil and stage ratios. Notably, Provisional Application No.
61/710,465 ("Provisional App."), from which the present application claims
priority, discloses that
[a]ircraft engine design has always been challenged to achieve
low fuel consumption while keeping weight and costs low as
wen. Fuel efficiency can be achieved with a combination of high
bypass ratio and high compression system pressure ratio. These
efficient cycles however, typically require more turbo-machinery
stages (including stages in fans 42, compressors 44, 52, and
turbines 46, 54) higher airfoil counts of those stages driving cost
and weight higher.
By incorporating a speed reduction device between the fan
and low pressure turbine on the low shaft of a turbofan engine,
high bypass ratio cycles can be coupled 11vith high compression
ratio in the compressors and still keep low stage count and low
9 Cf Gray, p. 49 (with reference to gear reduction between the fan and LPT,
"[l]arger diameter ... fans were geared to two-stage, high speed LPC's and
three-stage ... LPTs").
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Application 13/716,253
total ailfoil counts. The invention couples the fan drive gear
system 48 of 2.4---4.2 gear ratio, high bypass ratio (BPR) of >8
and overall compression system pressure ratio ("OPR") of
greater than 30 (both quoted at 3500 FT i 0.80 1\t1n cruise power
flight condition) with characteristic parameters of (BPR x OPR)i
total stage count greater than 22 and (BPR x OPR)itotal airfoil
count greater than 0.12.
Provisional App. ~fi[ 13, 14 (emphasis added); cf Appeal Br. 13----14 (Claims
App.) (claims 7, 11: "wherein said gear reduction having a gear ratio of
between 2.4 to 4.2"). The Specification does not, however, disclose how
gear reduction alone, which is a known result-effective variable, 10 enables
the broad scope of the claims.
In comparison, the prior art discloses both the desirability to increase
the BPR for fuel savings, while maintaining a low nmnber of stages and
airfoils to minimize cost, as well as how to achieve it (i.e., increasing rotor
speeds), with respect to direct drive gas turbine engine having a fan, LPC,
HPC, LPT, and HPT. See, e.g., Gray, pp. 25----26, 33. For example, Gray
discloses: (i) with respect to the LPC, "incorporating controlled endwa11
loss concepts, low-loss airfoils, and increased aerodynamic loadings to
provide a large efficiency irnprovement and./ew numbers of airfidls, 1'vhile
producing more pressure ratio" (Gray, p. 26, "Low-Pressure Compressor")
( emphasis added); (ii) with respect to the HPC\ ''reduced nu,nber of stages
via higher tip speeds and increased aerodynamic loading levels," wherein
10 \Vith specific reference to geared engines, Gray discloses that gear
reduction between the fan and low pressure turbine is a know11 resuh-
effective variable, and that a gear reduction ratio of 2.5, which is within the
disclosed and claimed range, is known. See Gray, p. 49 (disclosing that "[a]
star gear system was used with a speed reduction ratio of 2.5").
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Application 13/716,253
"one-half the number ofai"rfoils and one less stage . .. produces a 40
percent greater pressure ratio" (id. at Gray, p. 26 ("High-Pressure
Compressor") (emphasis added).
In sum, we determine that the claimed invention is broader than the
disclosed invention. Independent claim 11 suffers from the same
deficiencies as discussed with respect to independent claim 1 supra, and the
dependent claims do not cure the deficiencies with respect to independent
claims 1 and 11.
Accordingly, we sustain the Examiner's rejection of claims 1 and 3-
14, under 35 U.S.C. § 112, first paragraph, for failing to comply with the
enablement requirement, albeit for the different reasons stated supra, and
thus, designate our affirmance as a NEW GROUNDS OF REJECTION to
give Appellant an opportunity to respond.
Rejection II
Indefiniteness is a question of law, subject to underlying facts. Akzo
Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir.
2016) ("Indefiniteness is a question of law that we review de novo, subject
to a determination of underlying facts.") (citations omitted). The USPTO
can properly reject a claim as indefinite if the claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014).
Indefiniteness: whether infringed
Regarding independent claims 1 and 11, which recite, in relevant part,
"wherein the bypass ratio is greater than about 8.0" (Appeal Br. 12, 14
(Claims App.)), the Examiner determines that "[i]t is unclear whether
infringement occurs when one operates said gas turbine at the bypass ratio(s)
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claimed, or when one constructs said gas turbine engine as structurally
claimed." Final Act. 6. In other words, the Examiner determines that "[a]
single claim which claims both an apparatus and the method steps of using
the apparatus is indefinite." Id. (citing In re Katz Interactive Call
Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011) (wherein the
CAFC held that the claim indefinite because "it is unclear here when
infringement would occur").
The Examiner does not demonstrate any ambiguity in the claims that
results in a question as to whether infringement occurs. The claims require
the recited structure (i.e., a fan rotor, first and second compressor rotors, first
and second turbine rotors, gear reduction), and clearly state operating
parameters and measurable variables. See In re Miller, 441 F.2d 689, 693
(CCPA 1971) ("[B]readth is not to be equated with indefiniteness.").
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 11, and claims 3-10 and 12-14 depending
therefrom, as being indefinite, pursuant to such a determination by the
Examiner.
Indefiniteness: "greater than"
Regarding claims 1, 3, 4, 8, and 10-14, the Examiner determines that
the "greater than" ranges, as recited in the claims, "are not bounded at the
upper limit and therefore the metes and bounds of the claimed ratios are
unclear." Final Act. 7.
Appellant argues that the structure of the claim inherently provides an
upper limit, and therefore, the claims are definite. Appeal Br. 6.
As discussed supra, the structure recited in claims 1 and 11 provide an
inherent limit to the "greater than" ranges, such that the range does not
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extend to infinity, and thus, the meaning of the claim is clear. See In re
Miller, 441 F.2d 689, 693 (CCPA 1971) ("breadth is not to be equated with
indefiniteness").
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1 and 11, and claims 3, 4, 8, 10, and 12-14 depending
therefrom, as being indefinite, pursuant to such a determination by the
Examiner.
Indefiniteness: "about"
Regarding independent claims 1 and 11, the Examiner determines that
the claim term "about," as in a bypass ratio "greater than about 8.0," is
indefinite. Final Act. 7 ( emphasis added) ( citing Hamilton Products, Inc. v.
O'Neal, 492 F.Supp.2d 1328 (M.D. Fla. 2007). The Examiner also
determines that claims 1 and 11 are "not even bounded at the lower limit, as
'greater than about 8' could read on 7. 0." Id. The Examiner makes a similar
determination regarding dependent claim 9. Id. (determining claim 9 is
indefinite for reciting "a pressure ratio across said fan less than or equal to
about 1.45," because "'less than about 1.45 could read on 1.5 "'); see Appeal
Br. 13 (Claims App.).
Appellant argues that "the use of 'about' does not automatically result
in a claim being indefinite," and that "Appellant is entitled to the ordinary
meaning of the term, which is 'approximately."' Appeal Br. 5---6. Appellant
submits that the Specification discloses that "the bypass ratio could be
greater than about 6 or greater than about 10, and elsewhere greater than
about 8, as claimed," and that "[a] worker of ordinary skill in the art would
recognize that 'about' should be looked at in combination with these
incremental changes." Id. at 6 (emphasis added). Regarding claim 9,
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Appellant argues that "a worker of ordinary skill in the art would recognize
what is meant by the term 'about."' Id. Appellant further argues that "the
lack of a lower limit to the fan pressure ratio does not render the claim
indefinite," because "[a] worker of ordinary skill in the art would recognize
there must be some pressure ratio across the fan." Id.
Regarding the limitations in independent claims 1 and 11 reciting
"wherein the bypass ratio is greater than about 8.0" (Appeal Br. 12, 14
(Claims App.) (emphasis added)), the Specification is silent. Although
Appellant argues, as set forth supra, that "elsewhere" in the Specification the
bypass ratio is disclosed as "greater than about 8," we disagree. Rather, the
Specification discloses that "[ t ]he bypass ratio is greater than 8" (Spec. ,r 6),
and also "the bypass ratio being greater than 8" (independent claim 1, as
originally filed). Cf id. ,r 14 ("a pressure ratio across the fan that is less than
or equal to about 1.45") ( emphasis added); ,r 24; at 8 ( claim 9 as originally
filed). Appellant is correct that the Specification discloses "the engine 20
bypass ratio is greater than about six ( 6), with an example embodiment
being greater than ten (10)," and also that "the engine 20 bypass ratio is
greater than about 10 (10: 1 )." Id. ,r 23 ( emphasis added). However, "about
six" and "about 1 O" is not the subject matter recited in claims 1 and 11. Nor
do such "incremental" disclosures, as argued by Appellant, provide any
guidance as to the meaning of the claim term "about 8.0." See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014)
( determining that if a claim term depends solely on the unrestrained,
subjective opinion of a particular person purportedly practicing the invention
without sufficient guidance in the specification to provide objective direction
to one of skill in the art, the term is indefinite). In sum, we determine that
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Appellant has not directed us to, nor can we find, sufficient guidance in the
Specification as to the meaning of the claim term "about," as recited in
claims 1, 9, and 11.
Accordingly, we sustain the Examiner's rejection of claims 1 and 3-
14, as being indefinite, pursuant to such a determination by the Examiner.
In addition, we enter a NEW GROUND OF REJECTION of
independent claims 1 and 11, and claims 3-10 and 12-14, under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement regarding the claim recitation "wherein the bypass ratio is
greater than about 8.0." Specifically, a bypass ratio of greater than about 8.0
was not disclosed in the Specification, as originally filed, but added by
amendment, and therefore, lacks written description support. 11
Indefiniteness: upper and lower boundaries
Regarding independent claim 11, and with reference to the claim
limitations stating "said stage ratio being greater than or equal to 22" and
"said stage ratio is less than 40," the Examiner determines that "[i]t is
unclear if the second limitation of the stage ratio range disregards the
previous recitation of the stage ratio range or if it is inclusive of the first
recitation of the stage ratio range." Final Act. 7. The Examiner makes the
same determination with respect to the recitations, in claim 11, that "said
airfoil ratio being greater than or equal to .12" and also that "said airfoil
ratio is less than 0.25." Id.
11 See the Preliminary Amendment dated August 12, 2013 ( amending claim
1 to recite "wherein arul the bypass ratio is being greater than about 8.0,"
and adding new claim 11); see also Provisional Application No. 61/710,465
( disclosing, in claim 1, "a bypass ratio greater than 8").
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We determine that claim 11 is not indefinite on this point, but includes
both upper and lower boundaries for the stage ratio and the airfoil ratio,
which are not in conflict. In other words, claim 11 requires the stage ratio to
be in the range of greater than or equal to 22 and less than 40, and the airfoil
ratio to be in the range of greater than or equal to 0.12 and less than 0.25.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 11, and claims 12-14 depending therefrom, as being
indefinite for this reason and pursuant to such a determination by the
Examiner.
Rejections 11112
Regarding independent claim 1, the Examiner relies on Figure 5 of
Gray, titled, "Preliminary Energy Efficient Engine," for disclosing the
structure of the claimed invention, including a fan rotor, a first compressor
rotor ( or LPC 13), a second compressor rotor ( or HPC 14), a first turbine rotor
(or LPT 15), and a second turbine rotor (or HPT 16), all configured as claimed,
with the exception that Gray's Preliminary Energy Efficient Engine is a
direct drive fan engine, without the claimed gear reduction relative to first
12 Appellant does not present a separate section with arguments directed to
the Examiner's rejection of claims 1 and 3-14 under 35 U.S.C. § 102(b) as
anticipated by Gray. However, we apply Appellant's arguments regarding
Gray to such a rejection. See Appeal Br. 7-10 ("4.2 The rejections under
35 US.C. § 103"); cf Reply Br. 3--4 ("The claims are neither anticipated nor
obvious over the prior art.").
13 Gray, p. 9 ("a low-pressure-compressor (LPC)").
14 Gray, p. 3 ("high pressure-compressor (HPC)").
15 Gray, p. 5 ("low-pressure turbine (LPT)").
16 Gray, p. 3 ("high pressure turbines (HPT)").
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turbine and fan rotors. 17 Final Act. 9 (citing Gray, p. 20). The Examiner
relies on Figure A-12 of Gray, titled, Candidate Gear Systems, for teaching a
first turbine rotor configured to drive a fan rotor through gear, as claimed.
Id. ( citing Gray, p. 88). The Examiner also finds that (i) Table IX of Gray,
titled, "Energy Efficient Engine Component Design Parameters and
Performance," teaches the first, second, third, and fourth numbers, as
claimed (id. at 9--10 (citing Gray, pp. 25-26)); (ii) Table B-XII of Gray,
titled, "Task II Engine Matrix," discloses "an overall pressure ratio ...
configured to be greater than 30 at 35,000 feet and operating at a .80 MN
cruise flight condition," 18 as claimed (id., at 10 ( citing Gray, p. 118
( disclosing that all of the geared engines had an overall pressure ratio of 38.6
at a cruise fight condition of "10,700 m (35,000), Mn= 0.8")); (iii) Table B-
XII of Gray also discloses, with reference to engine STF495-4, a bypass
ratio of "greater than about 8.0," as claimed (id. ( citing Gray, p. 118
(disclosing a bypass ratio for geared engine STF495-4 of 10.5)); and (iv)
17 Notably, the Specification also discloses that such a structure was known
in the art at the time of the invention, and further including gear reduction.
For example, the Specification discloses that "[i]n the prior art, there may be
any number of fan, compressor and turbine rotor stages," wherein "each of
the rotor stages carries a plurality of blades and there are typically static
vanes positioned intermediate the stages at each of the fan, compressor, and
turbine sections" (Spec. ,r 3), and that "it has been proposed to incorporate a
gear reduction between the fan and the lower pressure turbine" (id. ,r 5).
18 It is unclear how "an overall pressure ratio" which is a parameter (i.e., a
measurable factor) is able to be "configured" (i.e., put together in a
particular form), as claimed; however, claim 1 defines this parameter as "an
overall pressure ratio from an inlet end of said fan rotor to an outlet end of
said second compressor," and therefore, we construe claim 1 as inherently
requiring the configuration of the structures of the engine, as recited in claim
1, to achieve the recited overall pressure ratio.
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Tables IX and B-XII of Gray teaches "an airfoil ratio that is approximately
0.139," which is greater than 0.12, as claimed (id. citing Gray pp. 25-26,
118)).
Appellant correctly submits that Table IX of Gray, which discloses
parameters for the Energy Efficient Engine, "is not associated with a geared
turbofan," as required by claim 1, but rather Table IX discloses parameters
for "a direct drive engine." Appeal Br. 8. Noting that Gray discloses that
"the geared engines were configured with the same core components as the
direct-drive fan engines," Appellant argues that such a disclosure is
insufficient to conclude that "the Gray geared engines would have the
exactly same elements as the direct drive engine." Id. (citing Gray, p. 49).
Appellant maintains that the passages at page 49 of Gray do not support the
Examiner's interpretation that Gray's geared engines necessarily incorporate
the component design parameters disclosed in Table IX for Gray's direct
drive Energy Efficient Engine to result in the parameter values disclosed in
Table B-XII for geared engines.
Page 49 of Gray discloses ( emphasis added):
Geared Engines: The geared-fan engines were configured with
the same core components as the direct-drivejan engines. The
freedom to run the fan and the LPT at different rotor speeds
resulted in major changes to the engine cross-sections. Larger
diameter, 360 m/seconds (1175 ft/seconds) corrected tip speed
fans were geared to two-stage high speed LPC' s and three-stage
1.75 loading coefficients LPT's. A mid-engine bearing
compartment containing intershaft and high rotor shaft roller
bearings with a burner-diffuser support system became necessary
to force a high strain energy, low-rotor-shaft-excited critical
speed out of the engine running range.
21
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A preponderance of evidence from Gray supports the Examiner's
determination that the core components disclosed with respect to the Energy
Efficient Engine include the structures of a fan rotor, and LPC, HPC, LPT,
and LPH rotors, as required by claim 1, with the exception of gear reduction.
See Gray p. 18 ( disclosing in Section 4.2 the "Engine Description" for the
"Energy Efficient Engine"), pp. 24--28 (disclosing in Section 4.2.2 the
"Engine Components" including a fan, LPC, HPC, Combustor, HPT, and
LPT, with reference to Figure 5 and Table IX). A preponderance of
evidence from Gray also supports the Examiner's determination that Gray
discloses, with respect to a geared engine, an OPR greater than 30 (i.e., 33-
45: 1) and a BPR greater than about 8.0 (i.e., 7.8-10.7), as claimed. See
Gray p. 10, Table V. 19
Notwithstanding, regarding the Examiner's finding regarding the
claimed airfoil ratio, which is the BPR multiplied by the OPR, divided by
the sum of the total blades and static vane members of the fan, compressor,
and turbine rotors, we agree with Appellant that there is insufficient support
in Gray to conclude that the blade/vane numbers provided in Table IX for
direct drive engines are "core components," such that the blade/vane
numbers are also necessarily the same in the geared engines. See Gray p.
25-27, Table IX (disclosing "28/58" blades/vanes for the fan, 4 stages and
757 blades/vanes for the LPC, 10 stages and 1229 blades/vanes for the HPC,
1 stage and 78 blades/vanes for the LPT, and 4 stages and 759 blades/vanes
19 Appellant submits that this finding was disputed in the Appeal Brief
because of "Appellant's point that the anticipation rejection from Gray was
based on quantities taken from multiple tables referring to different fans."
Reply Br. 3.
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for the LPT20). Nor do we have a determination from the Examiner that it
would be obvious to include the stage and blade/vane numbers, as disclosed
in Gray's Table IX with respect to a direct drive engine, in the design of a
geared engine. Although the Examiner determines that "even if the airfoil
count and stage count were changed," from the parameters disclosed in
Table IX for direct drive engines to geared engines, which according to Gray
would have the same core components, "Gray shows ... that the number of
stages as well as the number of blades/vanes decreases in geared engines"
(Ans. 5 (citing Gray, Tables C-LVII and C-LXII)), we determine that the
Examiner's determination is too speculative to support a conclusion of
anticipation.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 3-10 depending therefrom, under 35 U.S.C.
§ 102(b ), as anticipated by Gray. Because the Examiner relies on the same
findings with respect to Gray in the rejection of independent claim 11, for
the same reasons stated supra, we also do not support the Examiner's
rejection of independent claim 11, and claims 12-14 depending therefrom,
under 35 U.S.C. § 102(b), as anticipated by Gray.
Rejection IV
Appellant argues claims 1 and claims 3-14 as a group. Appeal Br. 9-
10; Reply Br. 4. We select claim 1 as representative, with claims 3-14
standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Regarding independent claim 1, the Examiner relies on the same
findings with respect to Gray for disclosing the claimed rotors and gear
20 We understand Gray's representation of 759 stages and 4 blades/vanes for
the LPT to be a typographical error.
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reduction as relied upon in Rejection III, supra, and for the same reasons
stated supra, we are not apprised of error in the Examiner's findings. The
Examiner determines that, with respect to the claimed stage ratio, "the
number of stator vanes in the fan section, the number of nozzles or vanes in
the turbine, the number of compressor blades and stages, the number of
turbine blades, and the number of fan and turbine stages," as well as the
OPR and BPR, "are recognized as result-effective variables." Final Act. 10-
11. In support, the Examiner further relies on (i) Johnson '509 for teaching
"minimizing the stator vanes in the fan section and minimizing the number
of nozzles or vanes in the turbine in order to save weight and cost" (id. at 11
( citing Johnson ,r 41 ); (ii) Daeubler for teaching "reducing the number of
compressor blades and stages in order to minimize manufacturing and
maintenance costs" (id. ,r 3); (iii) Senoo for teaching "reducing the number
of blades in the turbine in order to reduce frictional loss and the trailing edge
loss to improve turbine efficiency" (id. ,r 35); (iv) Johnson '650 for teaching
"minimizing the number of fan and turbine stages in order to maintain low-
pressure turbine loads and weight" (id. ,r 39); (v) Hyde for teaching
"increasing the bypass ratio can act to considerably increase [in] fuel
efficiencies of jet engines during such period as take-off and climb" (id.
,r 101 ); and ( vi) Winter for teaching "a higher overall pressure ratio offers
increased efficiency and improved performance, including greater specific
thrust" (id. at ,r 24). See also Ans. 5---6.
Appellant argues that the Examiner has not met the burden of
establishing that "the references show the particular variable which is
allegedly a 'result-effective variable' is in fact analyzed by the prior art."
Appeal Br. 9. In particular, Appellant submits that the Examiner has not
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"point[ ed] to objective evidence disclosing or suggesting the claimed
relationship." Id. Appellant also argues that the claimed airfoil and stage
ratios are not recognized in the art. Id. at 10; see also Reply Br. 4 ("the
claimed ratios here were not known to be result effective").
Appellant does not dispute that the variables of the numerator of
Appellant's claimed airfoil and stage ratios (i.e., the BPR and OPR) are
result-effective variables. Gray discloses that the BPR and OPR "were
selected to maximum [thrust specific fuel consumption (TSFC)] and [direct
operating cost (DOC) benefits" (Gray, p. 5), wherein "Table V .... show[s]
the range of cycles considered," including a geared fan engine with a BPR of
between 7 to 11, and an OPR of between 33 to 45:1, at 35,000 ft Mach 0.8
(id. at 10, Table V). Thus, Gray expressly discloses that the BPR and OPR
are recognized as result-effective variables, and discloses ranges that overlap
the claimed ranges of "greater than about 8.0" and "greater than 30,"
respectively.
Moreover, Gray specifically teaches that
[h ]igher pressure ratio was shown to provide significant fuel
savings potential in the low energy consumption turbofan study.
The question became how to produce the additional pressure
with the same number of stages as the JT9D-7 A to hold down
cost. The straightforward solution was to use 25 percent higher
compressor average diffusion factor combined with 28 percent
higher compressor blade speds than the JT9D-7 A.
Gray, p. 33. Thus, Gray also expressly recognizes a relationship between
pressure ratio and the number of stages. Further, Gray discloses that, with
respect to the direct drive Energy Efficient Engine, "HPC ... represents a
balance between increased stage pressure ratio and lower airfoil count,"
wherein "[t]he lower compressor blade count can gave a 12 percent
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reduction in compressor module maintenance cost." Gray, p. 33. In sum, a
preponderance of evidence supports a finding that Gray recognizes
relationships between BPR, OPR, and stage and airfoil count. See also
Gray, p. 34, Figs. 13, 14 (further disclosing a known relationship between
the number of airfoils and pressure ratio).
Appellant's argument also does not apprise us of error in the
Examiner's reliance on Johnson '509, Daeubler, Senoo, and Johnson '650
for disclosing that minimizing or reducing the variables of the number of
blades/vanes and stages in a gas turbine engine results in effecting the
weight, manufacturing and maintenance costs, and frictional and trailing
edge loss to improve gas turbine engine efficiency, and that, specifically as
taught in Daeubler, "efforts are continually being made to reduce the number
of blades and stages." Johnson '509 ,r 41; see also Daeubler ,r 3; Senoo ,r
35; Johnson '650 ,r 39.
Appellant has constructed ratios from known geared engine
parameters, and by increasing the numerator (i.e., an OPR of greater than 30,
as claimed, and a BPR of greater than about 8.0, as claimed-ranges known
in the art) and decreasing the denominator (by a "significant" amount, as
explained in the Specification-as taught to be desirable by the prior art),
Appellant has produced "improved" ranges for Appellant's stage and airfoil
ratios. We agree with the Examiner that such an optimization of known
parameters, as applied to the ratios constructed by Appellant, is obvious in
view of the prior art.
Accordingly, we sustain the Examiner's rejection of independent
claim 1, and claims 3-14 fall therewith, under 35 U.S.C. § 103(a). To the
extent our affirmance relies on passages from the prior art not relied on by
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the Examiner, we designate our affirmance as a NEW GROUND OF
REJECTION, to provide Appellant an opportunity to respond.
DECISION
The Examiner's decision rejecting claims 1 and 3-14 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement requirement
is AFFIRMED, and we designate our affirmance as a NEW GROUND OF
REJECTION.
The Examiner's decision rejecting claims 1 and 3-14 under 35 U.S.C.
§ 112, second paragraph, as being indefinite is AFFIRMED.
The Examiner's decision rejecting claims 1 and 3-14 under 35 U.S.C.
§ 102(b) is REVERSED.
The Examiner's decision rejecting claims 1 and 3-14 under 35 U.S.C.
§ 103(a) is AFFIRMED.
We enter a NEW GROUND OF REJECTION of claims 1 and 3-14
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
FINALITY OF DECISION
This decision contains new grounds of rejection as permitted under
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same Record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(l )(iv).
AFFIRMED; 37 C.F.R. § 4I.50(b)
28