Ex Parte Klinetob et al

Patent Trial and Appeal Board

Feb 28, 2019

14428749 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/428,749 03/17/2015 Carl Brian Klinetob
54549 7590 03/04/2019
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.
64362US02;
67097-2244US1
CONFIRMATION NO.
1066
EXAMINER
NEWTON, JASON TODD
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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 CARL BRIAN KLINETOB and NICHOLAS D. STILIN
Appeal2018-005867
Application 14/428,749
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 4---6, 8, 9, and 11-13. 2 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 United Technologies Corporation, the applicant as provided for under 37
C.F .R. § 1.46, is also identified as the real party in interest. Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated July 19, 2017.
Appeal2018-005867
Application 14/428,749
STATEMENT OF THE CASE
Claims 4 and 9 are the independent claims on appeal. Claim 4,
reproduced below with disputed limitations italicized for emphasis, is
exemplary of the subject matter on appeal.
4. A static guide vane for use m a gas turbine engme
compnsmg:
an airfoil extending between two radial platforms, a
section side and a pressure side common to both said airfoil and
said platforms;
a seal secured to a side of each of said platforms remote
from said airfoil, said seal having a strap secured to said side of
said platforms, and an enlarged bulb sitting outwardly of an edge
of said platform; and
wherein said bulb having a diameter, and a distance
defined between an end of said strap remote from said bulb to a
point on said bulb furthest spaced from said end, and a ratio of
said diameter to said distance being between 0.2 and 0.5.
THE REJECTI0NS 3
I. Claims 4---6, 8, 9, 12, and 13 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Stilin (US 2013/0333350 Al; published Dec. 19,
2013).
II. Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable
over Stilin and Suciu (US 2009/0074568 Al; published Mar. 19, 2009).
3 The Examiner's objections of claims 4 and 9 are petitionable, not
appealable, matters (Final Act. 3--4), and the Examiner's rejection of claims
4---6 and 8 under 35 U.S.C. § 112, second paragraph, has been withdrawn
(Ans. 2).
2
Appeal2018-005867
Application 14/428,749
ANALYSIS
Rejection I
Appellant argues claims 4--6, 8, 9, 12, and 13 as a group. Appeal Br.
2-3; Reply Br. 1. We select independent claim 4 as representative, and
claims 5, 6, 8, 9, 12, and 13 stand or fall with claim 4. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Regarding independent claim 4, the Examiner finds, and Appellant
does not dispute, that Stilin discloses the structure of the claimed static guide
vane, including, inter alia, an airfoil (i.e., airfoil body 40) extending between
two platforms (i.e., fittings 58a, 58b ); and a seal (i.e., seal member 90)
secured to a side of each of the platforms and having both a strap (i.e., 90')
secured to the side of the platforms and an enlarged bulb ( as depicted in
Figure 13) sitting outwardly of an edge of the platform. Final Act. 5---6
(citing Stilin, Figs. 2, 11-13); Appeal Br. 2-3; Reply Br. 1.
The Examiner reasons that it would have been obvious to select the
claimed ratio of the bulb's diameter to the distance between an end of the
strap remote from the bulb to a point on the bulb furthest spaced from the
end "as a matter of design choice." Final Act. 5---6; see also Ans. 6 (citing
MPEP § 2144.04 IV.A); In re Kuhle, 526 F.2d 553,555 (CCPA 1975) (use
of claimed feature that solves no stated problem and presents no unexpected
result "would be an obvious matter of design choice within the skill of the
art" (citations omitted)); In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995)
("design choice" is appropriate where an applicant fails to set forth any
reason why the differences between the claimed invention and the prior art
would result in a different function); In re Rice, 341 F.2d 309, 314 (CCPA
1965) (design choices that do not "result in a difference in function or give
3
Appeal2018-005867
Application 14/428,749
unexpected results ... are no more than obvious variations consistent with
the principles known in the art").
Appellant argues that the Examiner's "optimizing a ratio as a 'design
choice' is not the proper test"; rather, according to Appellant, the Examiner
must demonstrate that "[the] ratio or angle to be optimized is a result-
effective variable." Appeal Br. 2; see also Reply Br. 1 ("[T]he very logic
embedded in the rejection is optimization"). Appellant submits that "[t]he
claimed ratio is not supported or recognized in the prior art" and, therefore,
"there is no reason a worker would even consider, let alone optimize the
ratio." Appeal Br. 3.
The Examiner correctly responds that Appellant fails to address the
articulated rationale in support of the obviousness rejection: design choice. 4
Ans. 5. See 37 C.F.R. § 4I.37(c)(l)(iv) ("The arguments shall explain why
the examiner erred as to each ground of rejection contested by appellant.");
see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
("An appellant may attempt to overcome an examiner's obviousness
rejection on appeal to the Board by submitting arguments and/or evidence to
show that the examiner made an error."). Here, the Examiner relies on
design choice and not on optimization to conclude that the claimed range
4 Appellant's conclusory argument presented for the first time in the Reply
Brief that "the Examiner has failed to meet the requirements for a proper
design choice rejection" because "[t]here are clear functional differences that
would flow from the claimed ratio" is waived. Reply Br. 1; see Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner's rejections, but were
not.").
4
Appeal2018-005867
Application 14/428,749
would have been obvious to a person of ordinary skill in the art. Further, we
do not agree with Appellant that the Examiner is required to rely on
optimization rather than on design choice as an articulated rationale,
especially in view of the Specification's lack of any disclosure of a
difference in function between the claimed seal and the seal disclosed in
Stilin. See Spec. ,r 40 (merely disclosing that "[i]n embodiments, a ratio of
D to d was between 0.2 and 0.5").
Accordingly, we sustain the Examiner's rejection of independent
claim 4, and claims 5, 6, 8, 9, 12, and 13 fall therewith.
Rejection II
Appellant chose not to present separate arguments addressing the
patentability of dependent claim 11, and therefore, for essentially the same
reasons stated supra, we sustain the Examiner's rejection of claim 11.
Appeal Br. 2-3; Reply Br. 1.
DECISION
The Examiner's rejections of claims 4---6, 8, 9, and 11-13 are
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
5