Ex Parte Kohlenberg et al

Patent Trial and Appeal Board

Jun 6, 2018

13340787 (P.T.A.B. Jun. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/340,787 12/30/2011 Gregory A. Kohlenberg
54549 7590 06/08/2018
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.
50640US04;
67097-901PUS4
CONFIRMATION NO.
8997
EXAMINER
BREAZEAL, WILLIAM LEE
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
06/08/2018 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 GREGORY A. KOHLENBERG, SEAN P. ZAMORA, and
FREDERICK M. SCHWARZ
Appeal2017-008222
Application 13/340,787
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gregory A. Kohlenberg et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-7, 9-12, and
14--20, which are all the pending claims. Appeal Br. 2. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
According to Appellants, the real party in interest is United
Technologies Corporation. Appeal Br. 1.
Appeal2017-008222
Application 13/340,787
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to a gas turbine engine."
Spec. i-f 2. Claims 1 and 15 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A nacelle assembly for a high-bypass gas turbine engine
compnsmg:
a core nacelle defined about an engine centerline axis;
a fan nacelle mounted at least partially around said core
nacelle to define a fan bypass flow path for a fan bypass
airflow;
a fan variable area nozzle movable relative said fan
nacelle to vary a fan nozzle exit area, wherein the fan variable
area nozzle includes a first section and a second section
movable axially relative to the first section and an auxiliary port
between the first section and the second section for changing
the effective area of the fan nozzle, wherein the auxiliary port
provides an opening through the fan nacelle forward of the fan
nozzle exit area; and
a controller operable to control said fan variable area
nozzle to vary the fan nozzle exit area and adjust a fan pressure
ratio of the fan bypass airflow to reduce a fan instability during
engine operation.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Chamay us 3,779,010 Dec. 18, 1973
Orlando us 6,158,210 Dec. 12, 2000
Seda US 6,619,030 Bl Sept. 16, 2003
Becquerelle US 6,622,473 B2 Sept. 23, 2003
Webster US 2005/0229585 Al Oct. 20, 2005
2
Appeal2017-008222
Application 13/340,787
S. Boggia and K. Riid, Intercooled Recuperated Gas Turbine Engine
Concept, American Institute of Aeronautics and Astronautics (2005),
41st AIAA/ASME/SAE/ASEE Joint Propulsion Conference &
Exhibit, July 10th-13th, 2005, AIAA 2005-4192 ("Boggia").
REJECTIONS
The following rejections are before us for review:
I. Claims 9-12 and 14 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Final Act. 4--5.
II. Claims 9-12 and 14 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement
requirement. Id. at 5-6.
III. Claims 9-12 and 14 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Id. at 6-7.
IV. Claims 1-5, 15, 17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Becquerelle, Chamay, and
Webster. Id. at 8-12.
V. Claims 6, 7, 16, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Becquerelle, Chamay, Webster, and
Seda. Id. at 12-13.
VI. Claims 9, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Becquerelle, Chamay, Webster, and
Boggia. Id. at 13-14.
VII. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Becquerelle, Chamay, Webster, and
Orlando. Id. at 14--15.
3
Appeal2017-008222
Application 13/340,787
ANALYSIS
Rejection I- Claims 9-12 and 14 as failing to comply with the
written description requirement
The Examiner found that there is insufficient written description
support for the open-ended limitations recited in each of claims 9-12 and 14.
See Final Act. 4--5. For example, claim 9 recites that the "core engine
includes ... a low pressure turbine pressure ratio that is greater than
five (5)." Appeal Br. 12, Claims App. The Examiner explained that "[o]ne
of ordinary skill in the art at the time of the invention would have recognized
that a low pressure turbine pressure ratio of 100 falls within the scope of
claim 9," but the "[S]pecification fails to describe a low pressure turbine
pressure ratio of 100 nor does it reasonably convey to one skilled in the art
that a low pressure turbine pressure ratio of 100 was contemplated at the
time [of] filing." Final Act. 4. The Examiner relied on a similar basis in
rejecting claims 10-12 and 14. See id. at 4--5.
The fundamental factual inquiry for sufficient written description is
whether Appellants' Specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, Appellants were in
possession of the invention as presently claimed. See Ariad Pharm., Inc., v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane); Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1562---64 (Fed. Cir. 1991).
We agree with Appellants that the Specification provides adequate
support for the limitations in question sufficient to satisfy the written
description requirement. Although we appreciate the Examiner's
observation that the open-ended ranges recited in the claims are broad
enough to theoretically encompass numerical values for pressure ratio, gear
4
Appeal2017-008222
Application 13/340,787
reduction ratio, and bypass ratio that may be beyond current technological
capabilities (see Ans. 2), we agree with Appellants that one of ordinary skill
in the art would recognize that "the upper limit for each of the claimed
ranges is bounded by known practical structural and physical limits"
(Appeal Br. 4). Further, we note that each of the identified limitations
recited in claims 9-12 and 14 has explicit written description support in the
original disclosure of the Specification. See Spec. i-fi-f 13-16.
In short, we find that the disclosure of the Specification reasonably
conveys to those skilled in the art that Appellants were in possession of the
invention as recited in claims 9-12 and 14 at the time of filing.
Accordingly, we do not sustain the rejection of claims 9-12 and 14 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejection II - Claims 9-12 and 14 as failing to comply with the
enablement requirement
In rejecting claims 9-12 and 14 as failing to comply with the
enablement requirement, the Examiner determined that Appellants'
"disclosure does not teach how to make or use the invention." Final Act. 5.
In particular, again picking ratio values that would theoretically fall within
the open-ended limitations recited, the Examiner stated that the disclosure
"does not teach how to make a nacelle assembly for a high-bypass gas
turbine engine with a low pressure turbine pressure ratio of 100, a gear
system that defines a gear reduction ratio of 100[,] and a bypass ratio
[of] 100." Id. at 5---6.
5
Appeal2017-008222
Application 13/340,787
Appellants argue that "[t]he Examiner [improperly] bases this
rejection on the presumption that[,] because some theoretical upper limit is
not taught, ... the claims are not enabled." Appeal Br. 6; see also id.
(asserting that "[t]he Examiner bases the enablement rejection[] on a
theatrical [sic] value of 100 for the pressure ratio, gear ratio[,] and bypass
ratio without any support or evidence to support that such a value is practical
or possible"). According to Appellants, "one of ordinary skill in the art
would recognize that each of the claimed ratios has an inherent lower/upper
limit based on the practical physical limitations and basic architecture of a
bypass turbine engine." Id. at 7 (emphasis added). We find Appellants'
arguments persuasive.
Insofar as the substance of the enablement requirement is concerned,
the dispositive issue is whether Appellants' disclosure, considering the level
of ordinary skill in the art as of the date of the application, would have
enabled a person of such skill to make and use the claimed invention without
undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA
1982). Some factors to be considered in determining whether a disclosure
would require undue experimentation include (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Here, the Examiner's enablement rejection appears to rely on the
same basis as that relied upon in the written description rejection discussed
supra. Namely, the Examiner determined that the claims lack enablement
6
Appeal2017-008222
Application 13/340,787
because the recited ranges for low pressure turbine pressure ratio, gear
reduction ratio, and bypass ratio have unbounded upper limits. See Final
Act. 5---6. To the extent that this determination appears to relate to the
breadth of the claims, we recognize that the limitations in claims 9--12 and
14 are broad in that they do not expressly recite an upper boundary for the
recited low pressure turbine pressure ratio, gear reduction ratio, and bypass
ratio ranges.
However, the Examiner has not adequately explained how the breadth
of these limitations would relate to undue experimentation. The Examiner
stated that the claimed subject matter would "requir[ e] undue
experimentation in form of extensive design and investment, validation[,]
and certification" (id. at 5), but did not articulate any findings or analysis to
show that a person of ordinary skill in the art would have been unable to
make and use the claimed invention without undue experimentation. The
Examiner explains that "the span of the recited ranges expands with
advances in materials and design" (Ans. 3), but we do not see how this
relates to the issue of undue experimentation. In other words, we agree with
Appellants that the disclosure of the Specification is "sufficient to enable
one of ordinary skill in the art to achieve the claimed ratios between the
claimed limit and the inherent lower/upper limits." Appeal Br. 7.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing that claims 9--12 and 14 lack enablement. On this
basis, we do not sustain the rejection of claims 9-12 and 14 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
7
Appeal2017-008222
Application 13/340,787
Rejection III- Claims 9-12 and 14 as being indefinite
The Examiner's stated basis for the rejection of claims 9-12 and 14
under 35 U.S.C. § 112, second paragraph, is that each claim recites a range
that is "open[-]ended for its upper limit." Final Act. 6-7. The Examiner
explains that "the metes and bounds of the claims are indefinite, as the limits
of the claimed ranges are not definite but expand over time with advances in
technology." Ans. 2. According to the Examiner, "[ w ]hen a limit is subject
to drift in the face of unknown and unforeseeable technological advance, an
open[-]ended limit is indefinite." Id. Appellants argue that the Examiner's
rejection is untenable. See Appeal Br. 5-6; Reply Br. 2-3. We agree.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must provide clarity to those skilled in the art regarding the scope of the
subject matter which the claims encompass. See In re Hammack, 427 F.2d
1378 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second
paragraph, is "whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted).
Here, aside from identifying that the limitations recited in claims 9-12
and 14 do not include an upper boundary (see Final Act. 6-7; Ans. 2), the
Examiner does not point to anything about the claim language itself that is
unclear. However, a claim is not made unclear simply because an upper
boundary is not specified. See Exxon Research & Engineering Co. v. US.,
265 F.3d 1371, 1382 (Fed. Cir. 2001), abrogated on other grounds by
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). In Exxon
8
Appeal2017-008222
Application 13/340,787
Research, the Federal Circuit held that claims reciting a minimum particle
size, but no maximum particle size, did not result in any indefiniteness as to
the recitation because the claim scope, albeit broad, was clear. See id.
Similar to the form of the claims at issue in Exxon Research, instant
claims 9--12 and 14 expressly recite ranges covering values greater than a
recited minimum, no matter how large those values may be. Although,
within the context of the claimed invention, there may be practical upper
limits of the claimed ranges, such a fact does not impart any indefiniteness
as to the scope of the claims. For example, "[a] patent claim to a fishing
pole would not be invalid on indefiniteness grounds if it contained a
limitation requiring that the pole be 'at least three feet long,' even though a
50 foot long fishing pole would not be very practical." Exxon Research, 265
F.3d at 1382. Moreover, by not expressly reciting an upper limit to the
ratios of recited in claims 9--12 and 14, the claims may be broad, but a broad
claim is not necessarily indefinite. See In re Johnson, 558 F.2d 1008, 1016
n.17 (CCPA 1977). In other words, the Examiner has not sufficiently
explained why the scope of the identified claim language would be unclear
to one of skill in the art and, thus, has not established that claims 9--12 and
14 are indefinite.
Accordingly, we do not sustain the rejection of claims 9-12 and 14
under 35 U.S.C. § 112, second paragraph.
Rejections IV-VII - Claims 1-7, 9-12, and 14-20 as being
unpatentable over Becquerelle, Chamay, and one or more of
Webster, Seda, Boggia, and Orlando
In rejecting independent claims 1 and 15, the Examiner found that
Becquerelle discloses a nacelle assembly including a core nacelle ( 11) and a
9
Appeal2017-008222
Application 13/340,787
fan nacelle (14). See Final Act. 8 (citing Becquerelle, Fig. 1). The
Examiner acknowledged that "Becquerelle fails to teach a fan variable area
nozzle movable relative said fan nacelle to vary a fan nozzle exit area." Id.
However, the Examiner found that
Chamay teaches a fan variable area nozzle (FIG. 1, element 18)
movable relative a fan nacelle (FIG. 3, element 24) to vary a fan
nozzle exit area (FIG. 3, col. 5, 1. 50-col. 6, 1. 15), wherein the
fan variable area nozzle includes a first section (FIG. 3,
element 28) and a second section (FIG. 3, element 38) movable
axially relative to the first section and an auxiliary port (FIG. 3,
elements 62 and 90) between the first section and the second
section for changing the effective area of the fan nozzle[,]
wherein the auxiliary port provides an opening through the fan
nacelle forward of the fan nozzle exit area (FIG. 3). Chamay
further teaches that a variable nozzle throat is advantageous in
order to [ e ]nsure maximum engine efficiency (col. 5, 11. 42-49).
Id. at 9. The Examiner determined that it would have been obvious "to
modify the nacelle assembly of Becquerelle, in view of the teachings of
Chamay, in order to [e]nsure maximum engine efficiency." Id.
The Examiner also acknowledged that the combination of Becquerelle
and Chamay lacks "a controller operable to control said fan variable area
nozzle to vary the fan nozzle exit area and adjust a fan pressure ratio of the
fan bypass airflow to reduce a fan instability during engine operation," but
found that Webster discloses this feature. See id. (citing Webster, Fig. 1,
i-fi-f 125-26). The Examiner determined that it would have been obvious "to
modify the nacelle assembly of Becquerelle [and] Chamay, in view of the
teachings of Webster, to reduce the fan instability (i.e. fan flutter) of the
engine." Id. at 10.
10
Appeal2017-008222
Application 13/340,787
Claims 1-7. 9-12. 14. 19. and 20
In contesting the rejection of independent claim 1, Appellants argue
that Chamay, as relied upon in the rejection, fails to disclose varying a fan
nozzle exit area. See Appeal Br. 7-8; Reply Br. 4---6. In particular,
Appellants assert that Chamay's "intermediate portion 38 is movable to
open ... passageway 90, but does not cause movement of ... fixed
portion 30," and, thus, "the fan [nozzle] exit area, or throat 36, does not
vary." Appeal Br. 7. We agree with Appellants.
Chamay discloses "an apparatus having the combined capability of
reversing thrust and varying effective nozzle throat area through either the
exhaust nozzle of a gas turbine engine or the fan cowling of a turbofan
engine." Chamay, col. 1, 11. 10-12 (emphasis added). Chamay discloses
that "[b ]locker flaps 70 ... translate rearwardly with intermediate
cowling 38 so as to open up a passageway 90 between cone member 42 and
flared surface 78." Id., col. 5, 11. 56-59 (boldface omitted). According to
Chamay, "[p ]assageway 90 between cone member 42 and flared surface 78
... is in flow communication with bypass duct 26, and receives a portion of
the airflow through bypass duct 26[,] thereby increasing the effective nozzle
throat area of the duct." Id., 11. 59---63 (boldface omitted; emphasis added).
In this regard, Appellants persuasively assert that, although "Chamay may
disclose opening of a passage, it does not disclose variation or changing of
the fan nozzle exit area." Reply Br. 5 (emphasis added).
Although we agree with the Examiner "that the motion of
[intermediate cowling] (38) increases the effective nozzle throat area
(see also col. 5 11. 42--49), making the fan nozzle taught in Chamay a ...
variable area fan nozzle" (Ans. 3 (emphasis added)), the Examiner's
11
Appeal2017-008222
Application 13/340,787
rejection does not establish that Chamay teaches varying the fan nozzle exit
area, as specifically recited in the claim. As discussed supra, the Examiner
relies on Chamay's passageway 90 as corresponding to the recited auxiliary
port for changing the effective area of the fan nozzle (see Final Act. 9), and
appears to consider the combination of passageway 90 and throat 3 6 as
corresponding to the fan nozzle exit area recited in claim 1 (i.e., such that
opening and closing passageway 90 varies the fan nozzle exit area).
However, we do not see how passageway 90 (i.e., the auxiliary port) can be
considered part of the fan nozzle exit area, and also be forward of the fan
nozzle exit area, 2 as required by the claim. In other words, although opening
Chamay's passageway 90 (i.e., the auxiliary port) varies the effective nozzle
throat area (see, e.g., Chamay, col. 5, 11. 59---63), the Examiner does not
identify, nor do we discern, any evidence in Chamay that throat 36 (i.e., the
fan nozzle exit area) also varies.
Thus, the Examiner has not sufficiently established that the cited
references, particularly Chamay as relied upon, discloses the disputed
limitation as claimed. This unsupported finding from Chamay pervades all
the rejections of claims 1-7, 9-12, 14, 19, and 20 under 35 U.S.C. § 103(a).
See Final Act. 8-15. In the 35 U.S.C. § 103(a) rejections of claims 6, 7,
9-12, and 14, which depend from claim 1, the Examiner relied on Webster,
2 We understand the effective area of the fan nozzle to include the
opening in the nacelle provided by the auxiliary port. However, because the
claim specifies that the auxiliary port is forward of the fan nozzle exit area
(see Appeal Br. 11, Claims App.), the fan nozzle exit area does not include
the opening provided by the auxiliary port. Thus, we understand the claimed
fan nozzle exit area to be limited to the area at the aft-most portion of the
nozzle through which fan air exits.
12
Appeal2017-008222
Application 13/340,787
Seda, Boggia, and Orlando for teaching additional features, but not in any
way that would cure the deficiency discussed supra with respect to the
disclosure of Chamay as applied in the rejection of claim 1. Consequently,
the lack of evidentiary support from Chamay is fatal to the rejections of
claims 1-7, 9-12, 14, 19, and 20 under 35 U.S.C. § 103(a).
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case of obviousness. On this basis, we
do not sustain the rejections of claims 1-7, 9-12, 14, 19, and 20 under
35 U.S.C. § 103(a).
Claims 15-18
In rejecting independent claim 15, the Examiner relied on the same
findings and reasoning discussed supra in connection with independent
claim 1. See Final Act. 8-9. However, claim 15 is distinct from claim 1 in
that claim 15 only recites, in relevant part,
moving a second nacelle section axially relative to a first nacelle
section to define an auxiliary port between the first section and
the second section for changing the effective area of the fan
nozzle, wherein the auxiliary port provides an opening through
the fan nacelle forward of the fan nozzle exit area.
Appeal Br. 13, Claims App. (emphasis added). In other words, claim 15
only requires changing an effective area of the fan nozzle, but does not
necessarily require varying a fan nozzle exit area. Thus, Appellants'
argument that Chamay fails to disclose varying afan nozzle exit area (see
Appeal Br. 7-8; Reply Br. 4--6) is unpersuasive with respect to the rejection
of independent claim 15.
13
Appeal2017-008222
Application 13/340,787
Appellants additionally argue that "the Examiner has not provided
sufficient reasoning to support modification of Becquerelle with Chamay."
Appeal Br. 8. According to Appellants, "the Examiner has provided what
amounts to conclusory remarks without the requisite reasoning and
rationale." Id. This assertion is not persuasive.
Here, the Examiner articulated adequate reasoning based on rational
underpinnings for modifying Becquerelle's nacelle to include a movable
section for changing the effective area of the fan nozzle-namely, "in order
to [ e ]nsure maximum engine efficiency." Final Act. 9; see also Ans. 3--4
( explaining that Chamay "teaches [that] a specific advantage of adding
Chamay's teachings on fan variable area fan nozzle to a turbofan would be
[ e ]nsuring maximum engine efficiency during high engine power settings
such as takeoff and landing" (citing Chamay, col. 5, 11. 42--49)). 3 In this
regard, Appellants' arguments do not specifically address the Examiner's
articulated reasoning for the proposed combination of Becquerelle and
Chamay or explain why the reasoning is in error.
Appellants also contest the Examiner's findings with respect to the
disclosure of Webster. See Appeal Br. 8-9; Reply Br. 6-7. In particular,
Appellants assert that it is unreasonable to interpret Webster's shape
memory material (SMM) element 100 as a controller. See Appeal Br. 8
(explaining that "SM[M] element 100 expands or contracts responsive to
temperature or an electrical input," and that "[t]he expansion provides
3 The cited portion of Chamay discloses, in relevant part, "providing an
increased effective nozzle throat area during high engine power settings such
as at takeoff and landing approach ... in order to [ e ]nsure maximum engine
efficiency." Chamay, col. 5, 11. 44--49.
14
Appeal2017-008222
Application 13/340,787
movement of the tabs 82 of the Webster nozzle"). According to Appellants,
"the Examiner has not provided any reasoning to support how the Webster
SM[M] element 100 could be incorporated as a controller into Chamay." Id.
In response to Appellants' argument, the Examiner clarifies that
Webster teaches at [00124] "the SMM element 100 operates in
similar fashion as the temperature or electrically controlled SMM
material described hereinbefore" and at [0030] Webster teaches
the electrically controlled SMM material described hereinbefore
(the actuation mechanism discussed at [0030]) "comprises an
electrical circuit, the electrical circuit comprising [a] control
apparatus, an electric generating means and electrical contact
means, the electrical contact means arranged to deliver, in use,
an electrical signal, generated by the electrical generating means,
through the electrostrictive material, the control apparatus
operable to control the electrical signal". As such, one of
ordinary skill would have understood Webster as teaching
element (100) as implicitly comprising a controller.
Ans. 4 (emphasis added).
We are unpersuaded by Appellants' argument. The Examiner's
findings regarding Webster's disclosure, particularly as clarified in the
Answer, are supported by a preponderance of the evidence. In particular,
Webster discloses that the SMM element comprises an electrostrictive
material and an actuation mechanism having an electrical circuit and control
apparatus. See Webster i-fi-130, 124. In this regard, Appellants' arguments
do not specifically address or identify error in the Examiner's finding that
Webster's SMM element 100 implicitly includes a controller. See Ans. 4.
Regarding the Examiner's proposed modification of Becquerelle and
Chamay based on the disclosure of Webster, Appellants assert that "[t]he
Examiner has not explained how such a modification would be possible[,]
and made only a conclusory statement that such a modification would be
15
Appeal2017-008222
Application 13/340,787
obvious, but has not provided a supportable reason that one skilled in the art
would make such a modification." Appeal Br. 9. According to Appellants,
"the cited art does not provide any reason or motivation to one skilled in the
art for making the proposed modification." Id. This line of argument is
unpersuasive for two reasons. First, Appellants appear to urge us to apply a
strict teaching, suggestion, or motivation ("TSM") test for obviousness,
where rigid application of the TSM test was explicitly disavowed by the
Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415,
419 (2007). Second, the argument does not address the Examiner's
articulated reasoning for the conclusion of obviousness.
Here, as discussed supra, the Examiner articulated adequate reasoning
based on rational underpinnings for modifying the variable area fan nacelle
of the combination ofBecquerelle and Chamay to include a controller, as
taught by Webster-namely, "to reduce the fan instability (i.e. fan flutter) of
the engine." Final Act. 10; see also Ans. 5 (explaining that "Webster
teaches at [0126] that modification of a fan nozzle with Webster's teaching
would facilitate mitigating fan flutter[:] 'A large area is needed at take off in
order to avoid flutter of the fan or LP compressor"'). Appellants do not
specifically address the Examiner's reasoning or explain why it is deficient.
After careful consideration of all the evidence, Appellants' arguments
do not apprise us of error in the Examiner's findings or reasoning articulated
in support of the conclusion of obviousness with respect to independent
claim 15. Accordingly, we sustain the rejection of claim 15, and of its
dependent claim 1 7, for which Appellants do not present any separate
arguments, under 35 U.S.C. § 103(a) as being unpatentable over
Becquerelle, Chamay, and Webster.
16
Appeal2017-008222
Application 13/340,787
In contesting the rejection of claims 16 and 18, Appellants rely on the
same arguments presented for patentability of claim 15. See Appeal Br. 9.
For the same reasons that Appellants' arguments do not apprise us of error in
the rejection of claim 15, these arguments likewise do not apprise us of error
in the rejection of claims 16 and 18. Accordingly, we sustain the rejection
of claims 16 and 18 under 35 U.S.C. § 103(a) as being unpatentable over
Becquerelle, Chamay, Webster, and Seda.
DECISION
The Examiner's decision rejecting claims 9--12 and 14 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement is REVERSED.
The Examiner's decision rejecting claims 9--12 and 14 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement is REVERSED.
The Examiner's decision rejecting claims 9--12 and 14 under
35 U.S.C. § 112, second paragraph, as being indefinite is REVERSED.
The Examiner's decision rejecting claims 1-5, 15, 17, 19, and 20
under 35 U.S.C. § 103(a) as being unpatentable over Becquerelle, Chamay,
and Webster is REVERSED as to claims 1-5, 19, and 20, and is
AFFIRMED as to claims 15 and 1 7.
The Examiner's decision rejecting claims 6, 7, 16, and 18 under
35 U.S.C. § 103(a) as being unpatentable over Becquerelle, Chamay,
Webster, and Seda is REVERSED as to claims 6 and 7, and is AFFIRMED
as to claims 16 and 18.
17
Appeal2017-008222
Application 13/340,787
The Examiner's decision rejecting claims 9, 12, and 14 under
35 U.S.C. § 103(a) as being unpatentable over Becquerelle, Chamay,
Webster, and Boggia is REVERSED.
The Examiner's decision rejecting claims 10 and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Becquerelle, Chamay, Webster, and
Orlando is REVERSED.
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-IN-PART
18