Ex Parte Jurek et al

Patent Trials and Appeals Board

Apr 17, 2019

14608304 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/608,304 01/29/2015 Renee J. Jurek
54549 7590 04/19/2019
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.
75038US02;
67097-2833PUS1
CONFIRMATION NO.
4353
EXAMINER
SUTHERLAND, STEVEN M
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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 RENEE J. JUREK and THOMAS J. PRAISNER
Appeal2018-006215
Application 14/608,304 1
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
JEREMY M. PLENZLER, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision in the Final Office Action ( dated Dec. 29, 201 7, hereinafter "Final
Act.") rejecting claims 1, 2, and 4--21. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 United Technologies Corporation is the applicant and is identified as the
real party in interest in Appellants' Appeal Brief (filed Mar. 13, 2018,
hereinafter "Appeal Br."). Appeal Br. 1.
Appeal2018-006215
Application 14/608,304
INVENTION
Appellants' invention is directed to "a mid-turbine vaned duct for a
gas turbine engine." Spec. para. 2.
Claims 1 and 13 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A duct, the duct being a mid-turbine vaned duct, the
duct comprising:
said duct having a duct upstream end to abut a
downstream end of an upstream turbine rotor, and a duct
downstream end to abut an upstream end of a downstream
turbine rotor;
said duct including a first gap extending between said
upstream turbine rotor and an upstream end of a vane
positioned within said duct, intermediate said duct upstream
and downstream ends, a second gap defined between a
downstream end of said vane and said downstream turbine
rotor;
said first gap extending for a first axial distance and said
second gap extending for a second axial distance, and a length
ratio of said first axial distance to said second axial distance
being less than or equal to 2.0; and
wherein there are no shaft bearings mounted within an
axial extent of said vane between said vane upstream and
downstream ends.
REJECTIONS
I. The Examiner rejects claims 1, 2, and 4--21 under 35 U.S.C.
§ 102( a)( 1) as being anticipated by Praisner et al. (US
2012/0275922 Al, pub. Nov. 1, 2012, hereinafter "Praisner").
II. The Examiner rejects claims 1, 2, and 4--21 under 35 U.S.C.
§ 103 as being unpatentable over Praisner.
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ANALYSIS
Rejection I
Claims 1, 2, 13, and 19-21
Appellants do not present arguments for the patentability of claims 13
and 19-21 apart from claim 1. See Appeal Br. 3-5. Therefore, in
accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 13 and 19-21 standing or falling with claim 1. See Appeal Br.
3-5.
The Examiner finds that Praisner discloses a mid-turbine duct 34
including, inter alia, a vaned duct 60 positioned between a first gap
extending between an upstream turbine rotor 36A and an upstream end of
vaned duct 60 and a second gap extending between a downstream end of
vaned duct 60 and a downstream turbine rotor 36B. Final Act. 2 (citing
Praisner, Fig. 3). The Examiner further finds that the ratio between the axial
distance of the first gap and the axial distance of the second gap "is
approximately 1.0." Id. at 2-3. The Examiner also finds that because "no
bearings are shown along either shaft [ of Praisner] between the upstream and
downstream ends of vane 34 in [F]igure 1," Praisner discloses that "there are
no shaft bearings mounted within an axial extent of said vane between said
upstream and downstream ends." Id. at 3. According to the Examiner,
Praisner discloses bearings supporting upstream turbine rotor 36A (i.e.,
supporting high pressure shaft 3 8 for connecting high pressure compressor
28 to high pressure turbine 30) and downstream turbine rotor 36B (i.e.,
supporting low pressure shaft 40 for connecting low pressure compressor 26
to low pressure turbine 32.). Id. at 8 (citing Praisner, Fig. 1).
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Appellants first argue that because Figure 1 of Praisner is a schematic
and "does not show mount details" including bearings, "[t]here is no reliable
disclosure ... in Praisner" of "no turbine shaft bearings mounted 'within an
axial extent between said vane upstream and downstream ends'" of
Praisner' s duct 34. Appeal Br. 4.
In response, the Examiner notes that Figure 1 of Praisner illustrates
"bearings supporting the upstream and downstream ends of the low and high
pressure shafts [40, 38]." Examiner Answer (dated May 7, 2018, hereinafter
"Ans.") 2. Thus, according to the Examiner, neither of Praisner's Figures 1
or 3 "shows bearings along the axial extent of the mid-turbine duct vane."
Id.
We appreciate Appellants' position that Praisner' s "Figure 1 is an
extremely schematic view" that cannot reasonably apprise a person of
ordinary skill in the art of whether "there are no shaft bearings mounted
within an axial extent" of duct 34. See Appeal Br. 4, 6. However, Praisner
also discloses that "[a]lternatively, vanes 34 are sized to accommodate
additional turbine hardware including tie rods, struts, bearing supports, oil
lines and electrical wires for sensors, actuators and controllers." Praisner,
para. 33 (emphasis added). "[A] prior art reference is relevant for all that it
teaches to those of ordinary skill in the art." See In re Fritch, 972 F.2d
1260, 1264 (Fed. Cir. 1992). Here, a person of ordinary skill in the art of
gas turbine engines would, thus, acknowledge that Praisner's mid-turbine
vane 34 is sized to include bearings mounted along its axial length or,
alternatively, to not include such bearings. 2 As such, we agree with the
2 We note that Appellants' Specification in the Background of the Invention
describes similar configurations as "typical." See Spec. paras. 6, 7 ("in the
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Examiner's finding that Praisner discloses that "there are no shaft bearings
mounted within an axial extent of said vane between said vane upstream and
downstream ends," as called for by claim 1.
Appellants further argue that because Praisner's "Figure 3 'is a
schematic side view"' and there is no "positive statement that the drawings
are drawn to scale," the Examiner's reliance on Praisner for
"measurement[ s] of the drawing features are of little value." Appeal Br. 3
(citingHockerson-Halberstadt, Inc. v. Avia Groupint'l, 222 F.3d 951,956
(Fed. Cir. 2000); MPEP § 2125)).
Although we appreciate Appellants' position that the drawings in
Praisner are not designated as being drawn to scale and, thus, cannot be
relied upon to define precise proportions of elements as Praisner' s disclosure
is completely silent on the issue, that does not mean, "that things patent
drawings show clearly are to be disregarded." In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972). A drawing teaches all that it reasonably discloses and
suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d
911,914 (CCPA 1979).
We do not find the Hockerson-Halberstadt decision to be closest on
point to the situation presented here. Hockerson-Halberstadt, which cites to
In re Wright, 569 F.2d 1124 (CCPA 1977), both stand for the proposition
that it is error to rely on that which is illustrated in the drawings as
disclosing precise proportions or particular sizes of elements so illustrated if
prior art ... a bearing for supporting a shaft is included axially within an
axial chord of the vane within the duct" via a "frame structure complex
assembly" and "[T]he bearings for supporting the shafts driven by the
turbine rotor are axially positioned outside ... [the] vaned duct."
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the Specification is completely silent as to such proportions or sizes. See
also Nystrom v. TREX Co., 424 F.3d 1136 (Fed. Cir. 2005). More
specifically, the Court in Wright cautioned that arguments based on
measurements obtained from patent drawings are regarded as having little
value where the patent does not disclose that the drawings are to scale and
absent any disclosure of quantitative values. Wright, 569 F.2d at 1127.
Rather, we find the Mraz and Aslanian decisions to be more on point.
In the Mraz case, the Court characterized the illustrations of the prior art
reference to Wilson as, "focus[ing] on the edge rolls, showing them with
great particularity and showing the grooves thereon to have an angularity
well within the range recited in appellant's claims." Mraz, 455 F.2d at 1072.
Similarly, in Aslanian, the Court relied on the drawings of the prior art
reference to La Barber to show that they anticipate "a longitudinally convex
portion ... having a height approximately corresponding to said first
convex portion." Aslanian, 590 F.2d at 912, 915 (emphasis added). In
effect, these cases stand for the proposition that a drawing teaches to a
person of ordinary skill in the art features that are clearly shown and do not
require a determination of precise proportions or particular sizes of
elements.
Here, the claim limitation at issue is directed to "a length ratio of said
first axial distance to said second axial distance being less than or equal to
2.0." Appeal Br. 6 (Claims App.) ( emphasis added). Simple observation of
Praisner' s Figure 3 clearly reveals to a skilled artisan a first gap 66
extending between an upstream turbine rotor 36A and an upstream end of
vaned duct 60 and a second gap 68 extending between a downstream end of
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vaned duct 60 and a downstream turbine rotor 36B. Shown below is
Praisner's Figure 3, as annotated by us:
CL-·-·-·-·-·-·-·-·-·-·---·-·-·-·-·-·-·-·-·-·-·---·-·-·-·-·-·-·-·-·-·-·---·-·-·--·-·-·-·-·-·-·-·-·-·-·-·
Praisner's Figure 3, as annotated by us, shows first axial length d1 of
first gap 66 and second axial length d2 of second gap 68.
As such, a person of ordinary skill in the art would readily observe in
Praisner' s Figure 3 that the ratio of the axial distance d1 of the first gap and
the axial distance d2 of the second gap, illustrated as substantially or
approximately the same length, "is less than 2.0." Such a determination is
not the result of measurements to determine precise proportions or
particular sizes of elements. Rather, it is based on what is illustrated in
Praisner' s Figure 3 to a person of ordinary skill in the art by mere viewing
and comparing two dimensions, that is, the length of the first axial distance
d1 to the length of the second axial distance d2. As discussed above, in a
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similar fashion, the Court in Aslanian compared two dimensions in the
drawings of the prior art reference to La Barber to show that the "height" of
a longitudinally convex portion is "approximately" that of a first convex
portion. Aslanian, 590 F.2d at 915 (emphasis added).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 102(a)(l) of claim 1 as anticipated by Praisner. Claims
13 and 19-21 fall with claim 1.
Claims 4-6, 9, 10, and 15-17
As Appellants argue the rejection of claims 4--6, 9, 10, and 15-17
together as a group (see Appeal Br. 4), we select claim 4 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 5, 6, 9, 10, and 15-17 standing or falling with claim 4.
Appellants' argument is that "[t]hese claims narrow the length ratio"
and, as such, "are separately allowable for this additional reason." Id.
We appreciate that the claimed length ratio of claim 4 of "less than or
equal to 1.5" is narrower than that of independent claim 1, from which claim
4 depends. See id. at 6 (Claims App.). However, for the same reasons
discussed above, a skilled artisan would readily acknowledge upon viewing
Praisner' s Figure 3 that the ratio of the first axial distance d1 to the second
axial distance d2 of Praisner' s vane 34 is less than 1.5, as called for by claim
4.
Furthermore, we note that Appellants' vague statements do not
constitute separate arguments for patentability of each of the dependent
claims pursuant to 37 C.F.R. § 4I.37(c)(l)(iv). See In re Lovin, 99 USPQ2d
1373, 1379 (Fed. Cir. 2011) (holding that the Board had reasonably
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interpreted 37 C.F.R. § 4I.37(c)(l)(vii) as requiring "more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art"). Appellants have waived any argument for separate patentability
of these dependent claims. See id.
In conclusion, for the foregoing reasons, we likewise sustain the
rejection of claim 4 as anticipated by Praisner. Claims 5, 6, 9, 10, and 15-17
fall with claim 4.
Claims 2 and 14
Each of claims 2 and 14 recites an aspect ratio of "less than or equal
to 0.5," where the aspect ratio is defined as (h1+h2)/(2*d3). See Appeal Br.
6, 8 (Claims App.); see also Appellants' Figure 3.
The Examiner finds that Praisner discloses first and second radial
heights Al, A2, a total duct length D, and an aspect ratio that is less than or
equal to 0.5 as shown in Figure 3. Final Act. 4, 9.
We appreciate that Praisner's Figure 3 discloses the parameters of the
claimed aspect ratio, namely, Al, A2, and D parameters that correspond to
the claimed h1, h2, d3, respectively. Compare Praisner, Fig. 3 with, Spec.
Fig. 3. Furthermore, we note that Praisner discloses a similar equation as
Appellants to calculate the aspect ratio. Compare Praisner, para. 41,
equation 2 with, Spec. paras. 11, 53. Nonetheless, we do not agree with the
Examiner's position that a person of ordinary skill in the art would view
Figure 3 of Praisner and reasonably determine that the aspect ratio is "less
than or equal to 0.5," as called for by each of claims 2 and 14. More
specifically, it is not clear how a skilled artisan would be able to merely
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view Praisner' s Figure 3 and determine the claimed range of the aspect ratio
without first measuring the length of the Al, A2, and D parameters (i.e., h1,
h2, d3) and then using such measurements to calculate the aspect ratio
employing Praisner' s disclosed equation.
As such, for the foregoing reasons, we do not sustain the rejection
under 35 U.S.C. § I02(a)(l) of claims 2 and 14 as anticipated by Praisner.
Claims 7, 8, 11, 12, and 18
Appellants' Specification describes an angle "A" determined by a line
drawn between a first point 138 at an upstream location of mid-turbine duct
124 and a second point 186 at a downstream location of mid-turbine duct
124, and a line X that is parallel to a center axis of the engine. See Spec.
para. 48, Fig. 3. As such, claims 7, 11, and 18 require angle A to be "greater
than or equal to 10°," whereas claims 8 and 12 require the angle to be
"greater than or equal to 15°." See Appeal Br. 6-8 (Claims App.).
The Examiner finds that Praisner' s duct angle 8 corresponds to the
claimed angle "A", wherein the value of the angle is "between 10 and 30
degrees." Final Act. 5---6, 11 ( citing Praisner, para. 48, Fig. 3). 3
Appellants argue that the Examiner "measure[s] Praisner's drawing,"
and, thus, the "rejection is ... improper." Appeal Br. 5.
With respect to the rejection of claims 11, 12, and 18, we are not
persuaded by Appellants' argument because it is not commensurate with the
Examiner's rejection. The Examiner is not relying on Praisner' s Figure 3 to
measure duct angle 8, but rather on Praisner's explicit disclosure that the
3 We note that Praisner's duct angle 8 is equal to Appellants' angle "A"
based on the principle of corresponding angles.
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duct angle is "between 10 and 30 degrees." See Final Act. 5---6 (citing
Praisner, para. 48). Therefore, for the foregoing reasons, we sustain the
rejection under 35 U.S.C. § 102(a)(l) of claims 11, 12, and 18 as anticipated
by Praisner.
In regards to the rejection of claims 7 and 8, although Praisner
discloses a duct angle of "between 10 and 30 degrees," nonetheless, because
claims 7 and 8 depend from claim 2, we do no sustain the anticipation
rejection of these claims.
Rejection II
Claims 1, 4-6, 9-13, and 15-21
As discussed supra, Praisner meets all the limitations of
independent claims 1 and 13, and their respective dependent claims 4--
6, 9-12, and 15-21.
A disclosure that anticipates under 35 U.S.C. § 102 also renders
the claim unpatentable under 35 U.S.C. § 103, for "anticipation is the
epitome of obviousness." In re McDaniel, 293 F.3d 1379, 1385 (Fed.
Cir. 2002). Hence, we sustain the rejection under 35 U.S.C. § 103 of
claims 1, 4---6, 9-13, and 15-21 as unpatentable over Praisner.
Claims 2 and 14
The Examiner determines that although Praisner does not disclose an
aspect ratio of "less than or equal to 0.5," nonetheless,
[I]t would have been an obvious matter of design choice to a
person of ordinary skill in the art to use the claimed aspect ratio
of less than or equal to 0.5 because applicant has not disclosed
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that the range of aspect ratios provides an advantage, are used
for a particular purpose, or solve a stated problem.
Final Act. 5, 10 ( emphasis added). According to the Examiner, a skilled
artisan "would have expected Praisner's duct, and applicant's duct, to
perform equally well because both ducts perform the same function of
guiding air from the high pressure turbine to the low pressure turbine." Id.
Appellants argue that "'[d]esign choice' is no better a rationale" in
this rejection. Appeal Br. 5. However, Appellants provide no persuasive
argument or explanation regarding the specific aspect ratio recited in the
claims.
As discussed supra, Praisner's Figure 3 discloses the parameters of
the claimed aspect ratio, namely, Al, A2, and D parameters that correspond
to the claimed h1, h2, d3, respectively. Compare Praisner, Fig. 3 with, Spec.
Fig. 3. Praisner further discloses a similar equation as Appellants to
calculate the aspect ratio. Compare Praisner, para. 41, equation 2 with,
Spec. paras. 11, 53.
In the context of a rejection based on design choice, the relevant issue
is whether the alleged differences between the claimed invention and the
prior art "result in a difference in function or give unexpected results." See
In re Rice, 341 F .2d 309, 314 (CCP A 1965). Here, in Appellants'
Specification, as the claimed aspect ratio of "less than 0.5" is recited without
any explanation of the function that such an aspect ratio performs, the reason
for its selection, or an advantage that it may provide, we are not persuaded
that the Examiner's design choice rationale is in error. See Spec. paras. 11,
23, 53-55.
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In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of claims 2 and 14 as unpatentable over Praisner.
Claims 7 and 8
In regards to the rejection of claims 7 and 8, as discussed above in the
anticipation rejection, Praisner discloses a duct angle of "between 10 and 30
degrees," as called for by each of these claims. See Praisner, para. 48.
Accordingly, as claims 7 and 8 depend from independent claim 1, via
dependence from claim 2, we also sustain the rejection of claims 7 and 8 as
unpatentable over Praisner.
SUMMARY
The Examiner's decision to reject claims 1, 2, and 4--21 under
35 U.S.C. § 102(a)(l) as anticipated by Praisner is affirmed as to claims 1,
4--6, 9-13, and 15-21 and reversed as to claims 2, 7, 8, and 14.
The Examiner's decision to reject claims 1, 2, and 4--21 under
35 U.S.C. § 103 as unpatentable over Praisner is affirmed.
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
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