Ex Parte Jain et al

Patent Trial and Appeal Board

Jul 30, 2013

11750398 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/750,398 05/18/2007 Ashok K. Jain 67097-799PUS1;PA0004115US 1023
54549 7590 07/30/2013
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
BENEDIK, JUSTIN M
ART UNIT PAPER NUMBER
3645
MAIL DATE DELIVERY MODE
07/30/2013 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 ASHOK K. JAIN
and MICHAEL WINTER
____________

Appeal 2011-008037
Application 11/750,398
Technology Center 3600
____________

Before JAMES P. CALVE, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-3, 6-13, and 16-22. App. Br. 2. Claims 4, 5, 14, and 15 are
cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2011-008037
Application 11/750,398

2
CLAIMED SUBJECT MATTER
Claims 1, 8, 16, and 22 are independent. Claim 1 is reproduced
below:
1. A nacelle assembly, comprising:
an inlet lip section having a highlight diameter and a
throat diameter, wherein one of said highlight diameter and said
throat diameter of said inlet lip section is fixed and the other of
said highlight diameter and said throat diameter is selectively
adjustable in each of a first direction and a second direction
relative to said inlet lip section to influence a contraction ratio
associated with said inlet lip section.

REJECTIONS
Claims 1, 3, 6-8, 11-13, and 21 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Gruensfelder (US 6,231,006 B1; iss. May 15, 2001).
Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gruensfelder.
Claims 9, 10, 16-20, and 22 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Gruensfelder and Kota (US 5,971,328; iss. October
26, 1999).
ANALYSIS
Claims 1, 3, 6-8, 11-13, and 21 as anticipated by Gruensfelder
Appellants argue claims 1, 6, 7, and 21 and claims 8 and 11-13 as
separate groups. App. Br. 4-5. We select claims 1 and 8 as representative
and address Appellants’ arguments for claim 3 separately.
Claims 1, 6, 7, and 21
The Examiner found that Gruensfelder discloses an inlet lip having a
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Appeal 2011-008037
Application 11/750,398

4
are not persuasive of error in the Examiner’s findings that Figures 10 and 11
disclose these features. Ans. 3-4, 10; Final. Rej. 9. Figures 9-11 disclose a
mission adaptive inlet 152 on a jet engine nacelle, while Figure 12 discloses
a different embodiment for a variable shape inlet 170. Col. 3, ll. 35-59.
Appellants also argue that the Examiner’s interpretation of the inlet lip
section in Figure 11 is overbroad because it includes a reinforced elastomer
panel and a downstream nacelle section. Reply Br. 2. This argument is not
persuasive as Appellants do not point to any claimed feature of the “inlet lip
section” that distinguishes over Gruensfelder. A reference does not have to
provide an ipsissimis verbis disclosure of a claimed feature. The Examiner’s
findings are consistent with Appellants’ Specification, which discloses that
an inlet lip section 38 is positioned near a forward segment 29 of a nacelle
assembly 26 and has a throat area TA and highlight area Ha. Spec. 4, paras.
[0023-24]; fig. 2. Appellants disclose that the “inlet lip section 38 of the
nacelle assembly 26 includes an outer skin comprised of a flexible material
that is adjustable to achieve the contraction ratio adjustment” and “[a] person
of ordinary skill in the art having the benefit of this disclosure would be able
to choose an appropriate material for the flexible outer skin.” Spec. 7, para.
[0032]; fig. 5. Appellants’ Figure 2 and Figure 5 are reproduced below:

Figure 2 above illustrates a nacelle assembly. Figure 5 illustrates an
inlet lip section with an internal linkage for adjusting the contraction ratio.
Appeal 2011-008037
Application 11/750,398

5
As such, we sustain the rejection of claims 1, 6, 7, and 21.
Claim 3
Claim 3 depends from claim 1 and recites that the nacelle assembly
has an internal linkage housed within the inlet lip section and selectively
adjustable to influence the contraction ratio of the inlet lip section. The
Examiner found that Gruensfelder discloses this feature in Figure 4. Ans. 4.
Appellants argue that the pivot 58 in Figure 4 is not housed in the inlet lip
section 56 but is housed downstream of the inlet lip 56 within the reinforced
elastomer system 48 and Figure 4 depicts a side panel of a mission adaptive
inlet 42 rather than an inlet lip of a nacelle assembly. App. Br. 5.
Appellants’ arguments are not persuasive as the Examiner has relied
on Figure 4 to illustrate a linkage mechanism that is used to pivot a lip panel
in all embodiments, including the embodiment of Figures 9-11. See Ans. 4;
see also Gruensfelder, col. 1, ll. 33-39. We sustain the rejection of claim 3.
Claims 8 and 11-13
Claim 8 recites a structural assembly comprising a nacelle assembly
and an inlet lip section with a mechanism having an adjustable shape that is
adjustable simultaneously in an axial and a radial direction. The Examiner
again relied on Figures 10 and 11 to disclose an inlet lip that moves radially
inward toward a center of the engine and is axially adjustable. Ans. 4-5, 11.
Appellants argue that the lip 176 is not simultaneously adjustable in
axial and radial directions but is pivoted so that the shape of the reinforced
elastomer panel 186 varies in shape from a thin lip to a blunter lip. App. Br.
6. Appellants’ arguments appear to be directed to the Figure 12 embodiment
and thus are not persuasive of error in the Examiner’s findings that Figures
Appeal 2011-008037
Application 11/750,398

6
10 and 11 disclose these features. As discussed supra for claim 1, we agree
with the Examiner. We sustain the rejection of claims 8 and 11-13.
Claim 2 as unpatentable over Gruensfelder
Claim 2 depends from claim 1 and recites a contraction ratio that is
selectively adjustable between about 1 to about 1.4. The Examiner found
that Gruensfelder does not disclose this range but reasoned that it would
have been obvious to make the contraction range of any reasonable value
because where the general conditions of a claim are disclosed in the prior
art, discovery of the optimum or workable ranges involves only routine skill
in the art. Ans. 5-6. The Examiner explained that changing the inlet lip of
an engine inherently changes the contraction ratio, and it would have been
obvious to change the inlet lip to achieve a desired optimal contraction ratio
where the general conditions of the claims are met in that the contraction
ratio is changed by pivoting the inlet lip. Ans. 12.
Appellants argue that Gruensfelder does not disclose the general
conditions of claim 1 such as a fixed throat diameter, a system capable of
radial adjustment, or a contraction ratio. App. Br. 6. Appellants assert that
Gruensfelder is completely silent as to any contraction ratio and thus the
Examiner’s obviousness determination lacks a rational underpinning. App.
Br. 6-7. Appellants also assert that Gruensfelder does not disclose that a
specific contraction ratio range between 1 and 1.4 is desired or achievable
even if it was obvious to create an optimal range. Reply Br. 3. We agree.
A particular parameter must first be recognized as a result-effective
variable that achieves a recognized result before a determination can be
made to optimize the variable through routine experimentation. See In re
Antonie, 559 F.2d 618, 620 (CCPA 1977) (prior art did not recognize that
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Application 11/750,398

7
treatment capacity is a function of tank volume or tank volume-to-contactor
area ratio such that it would have been obvious to experiment to determine
the tank volume ratio that will maximize treatment capacity); In re Applied
Materials, Inc., 692 F.3d 1289, 1295-97 (2012) (“A recognition in the prior
art that a property is affected by the variable is sufficient to find the variable
result-effective.”); see also Manual of Patent Examination Procedure
§ 2144.05 II.B. (8th ed., rev.9, Aug. 2012). The Examiner has not shown
that Gruensfelder or other prior art recognizes contraction ratio, highlight
diameter, or throat diameter as result-effective variable. See In re Huang,
100 F.3d 135, 138-39 (Fed. Cir. 1996) (claimed thickness ranges of a textile
and polyurethane layers of a tennis handle grip were obvious where the prior
art taught the use of multi-layer grips with textile and polyurethane layers
and also taught the use of a polyurethane layer to absorb shock so a skilled
artisan could logically infer that increasing the amount of shock-absorbing
polyurethane would increase the amount of shock absorption and would
have experimented with various thicknesses to obtain an optimum range
where Huang does not disclose unexpected results achieved by the increased
polyurethane layer thickness). We do not sustain the rejection of claim 2.
Claims 9, 10, 16-20, and 22 as unpatentable over Gruensfelder and Kota
Appellants argue claims 9, 10, and 16-19 as a group and separately
argue claims 20 and 22. We select claim 16 as representative and address
the arguments for claims 20 and 22 separately. Claim 16 recites adjusting
the highlight and throat diameter in axial and radial directions in response to
a detected operability condition. The Examiner relied on Kota to teach
selective adjustment. Ans. 6. Appellants argue that Gruensfelder does not
disclose a fixed throat or highlight diameter. App. Br. 7. This argument is
Appeal 2011-008037
Application 11/750,398

8
not persuasive for the reasons discussed supra for claim 1.
Appellants argue that the proposed combination requires substantial
reconstruction and redesign of Gruensfelder to incorporate Kota’s control 45
and sensors into an inlet lip section of a gas turbine engine and changes the
principle of operation of Gruensfelder. App. Br. 7; Reply Br. 4. These
arguments are not persuasive of error as the test for obviousness is what the
combined teachings of the references would suggest to a skilled artisan and
not whether features of a secondary reference can be physically incorporated
into a primary reference. See Ans. 13. Appellants have not adequately
explained how the combination would change the principle of operation of
Gruensfelder beyond a bare allegation or shown error in the Examiner’s
findings that Kota suggests the ability to use a controller to control a contour
by manipulating an edge of a body passing through a medium to change the
wind’s effect on the body and Gruensfelder already manipulates the edge of
the inlet lip for this purpose. Ans. 13.
Appellants further argue that the claimed contraction ratio of about 1
to about 1.4 in claims 20 and 22 is not taught by Gruensfelder. App. Br. 7-8.
We agree for the reasons discussed supra for claim 2.
We sustain the rejection of claims 9, 10, and 16-19. We do not
sustain the rejection of claims 20 and 22.
DECISION
We AFFIRM the rejection of claims 1, 3, 6-13, 16-19, and 21, and we
REVERSE the rejection of claims 2, 20, and 22.

Appeal 2011-008037
Application 11/750,398

9
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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