Ex Parte Mahle et al

Patent Trial and Appeal Board

Feb 6, 2018

13687789 (P.T.A.B. Feb. 6, 2018)

United States Patent and Trademark Office
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.
13/687,789 11/28/2012 Inga MAHLE 5038.1126 8351
23280 7590 02/08/2018
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
CORD AY, CAMERON A
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/08/2018 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INGA MAHLE, JOCHEN GIER, KAI KOERBER, and
MICHAEL ENGELKE
Appeal 2017-002823
Application 13/687,7891
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
NATHAN A. ENGELS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1-9 and 12-20. Final Office Action
(February 12, 2016) (hereinafter “Final Act.”). We have jurisdiction under
35 U.S.C. § 6(b). Appellant contests the Examiner’s finding of anticipation
1 MTU Aero Engines GmbH (“Appellant”) is the applicant as provided for
under 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal
Brief 2 (June 14, 2016) (hereinafter “Appeal Br.”).
Appeal 2017-002823
Application 13/687,789
of the turbomachine stage of independent claim 1. This finding is supported
by a turbomachine embodiment in the prior art. Appellant also contests the
anticipation rejection of dependent claims 2, 3, and 5-8. We agree with
Appellant that the rejection of these dependent claims is not sustainable
because it is based on a different embodiment than the embodiment used to
find anticipation of claim 1. But, we enter a new ground of rejection of
these claims as obvious over the prior art. Appellant also contests the
Examiner’s determination of obviousness of the subject matter of dependent
claims 4 and 9. For reasons discussed in detail in this opinion, we agree
with the Examiner’s determination. Accordingly, we AFFIRM-IN-PART
and enter NEW GROUNDS OF REJECTION as permitted under 37 C.F.R.
§ 41.50(b).
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to a turbomachine stage
including a guide vane cascade and a rotor blade cascade. Specification 12
(filed November 28, 2012) (hereinafter “Spec.”). The invention seeks to
improve the efficiency of the turbomachine by adding a contour to a gap
region of an airfoil platform of one or more cascades. Id. at || 8, 17.
Claim 1 is the sole independent claim and is reproduced below.
1. A turbomachine stage comprising:
guide vanes;
a radially outer guide vane airfoil platform defining with
the guide vanes a guide vane cascade, the radially outer guide
vane airfoil platform having a guide vane cascade region and a
guide vane gap region extending axially beyond the guide vane
cascade region;
rotor blades;
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a radially outer rotor blade airfoil platform defining with
the rotor blades a rotor blade cascade, the radially outer rotor
blade airfoil platform having a rotor blade cascade region and a
rotor blade gap region extending axially beyond the rotor blade
cascade region;
the rotor blade cascade being adjacent to the guide vane
cascade, the guide vane gap region and the rotor blade gap region
at least one of radially and axially defining an axial gap
extending axially between the guide vane cascade and the rotor
blade cascade;
a contour of at least one of the guide vane gap region and
the rotor blade gap region varying in at least one of the radial and
the axial direction around a circumference, and an at least one of
axially and radially opposite contour of the other of the guide
vane gap region and the rotor blade gap region varying around
the circumference;
wherein the contour varies axially and wherein an extreme
extent of the axially varying contour is circumferentially located
in the region of a respective airfoil edge; and wherein the extreme
extent is circumferentially spaced from the respective airfoil
edge by no more than 25% of the cascade pitch.
Appeal Br., Claims Appendix 1.
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-3, 5-8, and 12-16 stand rejected under 35 U.S.C.
pre-AIA § 102(b) as anticipated by Greim (US 7,320,574 B2,
issued January 22, 2008).
2. Claims 4 and 9 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Greim.
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3. Claims 17-20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Greim and Praisner (US 2011/0243749 Al,
published October 6, 2011).
4. Claims 1, 3-8, 12, 13, and 16-20 stand provisionally rejected
under the judicially created doctrine of obviousness-type double
patenting as unpatentable over claims 1, 5, 8, 10, 11, and 13-21 of
Mahle (US Appl. No. 13/687,798, filed November 28, 2012) and
Greim.2 * 4
ISSUES
This appeal presents a single issue as to the rejection of claim 1. That
is, whether the Examiner erred in finding that Greim’s contours have an
extreme extent circumferentially located in the region of a respective airfoil
edge and circumferentially spaced from this airfoil edge by no more than
25% of the cascade pitch.
The appeal also presents three issues as to rejections of certain
dependent claims. First, as to the anticipation rejection of dependent claims
2, 3, and 5-8, the issue is whether the rejection, based on a combination of
two embodiments of Greim, is proper. Second, as to the obviousness
rejection of dependent claim 4, the issue is whether the Examiner erred in
determining that it would have been obvious to combine embodiments of
Greim to result in the claimed subject matter. Third, as to the obviousness
rejection of dependent claim 9, the issue is whether the Examiner erred in
2 The rejection purports to include claims 2, 10, and 11, but the explanation
of the rejection omits any reference to these claims. Final Act. 7-9. We
interpret the rejection as not including these claims.
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determining that one would have arrived at the claimed maximum variation
through routine optimization.
ANALYSIS
First Ground of Rejection: Anticipation by Greim
Appellant argues claims 1 and 12-16, subject to the first ground of
rejection, as a group. Appeal Br. 4-5. We select claim 1 as representative
of the group; claims 12-16 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv) (2016). Appellant presents additional arguments in support
of dependent claims 2, 3, and 5-8. Appeal Br. 4-5. We address these
arguments below.
Claims 1 and 12-16
The Examiner presented alternate anticipation rejections of claim 1
based on either the embodiment of Figures 2a and 2b of Greim or the
embodiment of Figures 3a and 3b of Greim. Final Act. 3—4. The
Examiner’s reliance on the embodiment of Figures 2a and 2b is misplaced
because, in addition to the limitation describing potentially optional features
of the claimed “contour,” claim 1 affirmatively defines the contour as
“wherein the contour varies axially,” which is not shown in this embodiment
of Greim. To be clear, claim 1 recites “a contour . . . varying in at least one
of the radial and the axial direction” to define a contour that may vary in the
radial direction, the axial direction, or both directions, but the “wherein”
clause of claim 1 separately and additionally requires that the contour
“varies axially.” The Examiner misinterpreted the wherein clause of claim 1
to apply only to an optional case in which the contour varies axially. Ans.
11. If that were the correct, the claim language would read, for example,
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“wherein, when the contour varies axially, . . We understand the
language in claim 1 to require a contour that varies in the axial direction,
although it does not exclude the possibility of a contour that also varies in
the radial direction. Thus, we focus our analysis on the rejection based on
the embodiment of Figures 3a and 3b.
Appellant contests the Examiner’s finding that Figure 3b of Greim
discloses the contour circumferentially located as recited in the “wherein”
clause of claim 1. Appeal Br. 4. Appellant argues that the depiction in
Figure 3b does not provide adequate evidence of the circumferential spacing
of the extreme extent of the contour relative to the respective airfoil edge.
Id. (Appellant arguing the Examiner erred in relying on Figure 3b because
the drawing is schematic in nature and there is no indication it is drawn to
scale). Appellant further protests that the Examiner failed to point to text in
Greim in support of the Examiner’s finding that Figure 3b shows the
“specific spatial relationships” claimed. Appellant unconvincingly
proclaims that there is no basis to conclude that the drawings show anything
more than “wave shaped” contouring arrangements. Id.
Rather than address the full substance of Greim’s disclosure,
Appellant presents a procedural argument about shortcomings in the
statement of the rejection. Appellant likens the Board to a horse wearing
blinders that is constrained to look straight ahead at Figure 3b and not be
distracted by the detailed teachings in Greim. We are not so constrained in
our review on appeal, and we recognize that the accompanying description
of Figure 3b in Greim provides pertinent details as to the circumferential
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spacing of the extreme extent of the contour relative to the respective airfoil
edge.
Greim describes, with reference to Figure 3b, that each contour 20-23
has an undulation length LI equal to the distance between two adjacent
respective blades of the blading row located upstream or downstream, as
applicable, or equal to the total periphery of the cavity divided by the
number of blades. Greim, col. 5,11. 52-65. In particular, Greim discloses
that contour 20 is matched to blades 2a, contours 22 and 23 are matched to
blades 1, and contour 21 is matched to blades 2b. Id. Greim then reveals
that “[t]he maximum elevation of the undulations of all the contours are then
located level with the blades to which the contour is matched.” Id. at col. 5,
11. 65-67 (emphasis added). Greim explains, with reference to the
embodiment of Figures 2a and 2b, but with equal applicability to the
embodiment of Figure 3b, that the maximum elevations of the contouring
arrangement are positioned relative to the guide vanes “in order to optimize
the pressure equalization as far as possible.” Id. at col 5,11. 24-32 (Greim
noting that Figure 3b precisely shows the positioning of the maxima and
their amplitude).
The disclosure in Greim that the maximum elevations of the contours
are located “level with” the blades instructs as to the circumferential
placement of the extreme extent of the contour relative to the blade edge. In
particular, this teaching conveys that the extreme extent of the contour is
directly adjacent the blade edge, as shown in Figure 3b. For example, the
lines drawn in Figure 3b to indicate the measurement of undulation length
LI clearly show that the edge of uppermost guide vane 2a is level with the
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maximum elevation of the uppermost contour, and similarly for the next
guide vane and contour undulation pair directly below. See also Greim,
col. 5,11. 54-58. As such, we find adequate evidence in Greim to support
the Examiner’s determination that the contours are circumferentially located
and spaced as called for in claim 1.
For these reasons, we affirm the rejection of claims 1 and 12-16 as
anticipated by Greim. Because the Examiner found that “Greim does not
explicitly state the spatial relationship between the contour and the
respective airfoil edge” (Ans. 11), we designate our affirmance as a new
ground of rejection to provide Appellant a full opportunity to respond to the
thrust of this rejection.
Claims 2, 3, and 5-8
Our affirmance of the anticipation of claim 1 is based on the
embodiment of Figures 3a and 3b of Greim. As such, the rejection of claims
2, 3, and 5-8 based on features disclosed in the embodiment of Figures 2a
and 2b of Greim cannot stand.
We enter a new ground of rejection of claims 2, 3, and 5-8 under
35 U.S.C. § 103 as unpatentable over Greim. In entering this new ground of
rejection, we adopt the Examiner’s findings as set forth on pages 4-5 of the
Final Office Action as to the disclosure of the claimed subject matter in the
embodiment of Figures 2a and 2b.
We determine that it would have been obvious to one having ordinary
skill in the art at the time of the invention, based on the explicit suggestion
in Greim, to combine the embodiments of Figures 2a, 2b and Figures 3 a, 3b
resulting in a turbomachine stage having contouring arrangements varying in
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both the radial and axial directions around a circumference of the gap region,
Specifically, Greim teaches four embodiments and then suggests that
“[vjariants of the invention have arbitrary combinations of the four
embodiments mentioned, by which means the effect of the pressure
equalization is further increased.” Col. 3,11. 59-61. A person having
ordinary skill in the art would have been led by this teaching to combine the
embodiments of Figures 2a, 2b and Figures 3a, 3b to use axial and radial
contouring arrangements to achieve even better pressure equalization effect
than one could achieve with the use of one type of contouring arrangement.
The resulting combination would possess the features recited in claims 2, 3,
and 5-8.
Second Ground of Rejection: Unpatentability over Greim
Appellant argues that the second ground of rejection should be
reversed for the same reasons as claim 1. Appeal Br. 5. As explained
above, we disagree. Appellant then presents additional arguments for the
patentability of claims 4 and 9 over Greim. We address these arguments for
each claim below.
Claim 4
Claim 4 depends from claim 1 and recites “wherein the contour varies
both radially and axially.” Appeal Br., Claims Appendix 2. Appellant
asserts that there is no reason to combine the embodiments of Figures 2a, 2b
and Figures 3a, 3b. Appeal Br. 6. As discussed above, Greim contains an
explicit suggestion to combine the embodiments in order to increase the
effect of pressure equalization. Greim, col. 3,11. 59-61. The Examiner
pointed to this explicit suggestion as the basis for the rejection of claim 4.
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Ans. 12. Appellant’s arguments do not address this explicit teaching in
Greim or explain how the Examiner erred in relying on this suggestion in the
determination of obviousness. As such, we sustain the rejection of claim 4
as unpatentable over Greim.
Claim 9
Claim 9 depends from claim 8 and recites “wherein the maximum
variation is no more than 40%.”3 Appeal Br., Claims Appendix 2.
Appellant asserts that there is no reason to combine the embodiments of
Figures 2a, 2b and Figures 3a, 3b to meet this limitation. Appeal Br. 6. As
explained above, we agree with the Examiner that Greim suggests this
combination.
Appellant also asserts that the Examiner’s reliance on the Figures to
disclose this limitation is misplaced. Id. The Examiner did not rely on the
drawings in the determination of obviousness. Rather, the Examiner relied
on Greim’s teaching to select amplitude to generate appropriately strong
pressure gradients as motivation for an engineer, through routine
optimization, to look at the pressure field distribution and flow
characteristics of the turbomachine stage to arrive that the claimed
maximum variation. Final Act. 6. Appellant does not address this reasoning
or explain where the Examiner erred in drawing this conclusion. As such,
we sustain the rejection of claim 9 as unpatentable over Greim.
3 Claim 8 depends from claim 1 and recites “wherein the contour varies
radially and a maximum variation in the radial direction of the respective
guide vane or rotor blade gap region is no more than 50% of the pitch of the
respective guide vane or rotor blade cascade.” Appeal Br., Claims Appendix
2.
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Third Ground of Rejection: Unpatentability over Greim and Praisner
Appellant relies on arguments presented in support of claim 1 over
Greim as the basis for patentability of claims 17-20 over Greim and
Praisner. Appeal Br. 6. We sustain rejection of claims 17-20 for the same
reasons discussed above.
Fourth Ground of Rejection: Provisional Obviousness-Type Double
Patenting
The Final Office Action includes a provisional obviousness-type
double patenting rejection of claims 1, 3-8, 12, 13, and 16-20 as
unpatentable over claims 1, 5, 8, 10, 11, and 13-21 of Mahle in view of
Greim. Final Office Action 7-9. Since the Final Office Action, the
application claims of Mahle that form the basis of this double patenting
rejection have been canceled and/or amended; the PTO issued a patent to
Mahle on January 9, 2018 (US 9,863,251). We do not reach this provisional
rejection because the claims of Mahle on which the Examiner based the
provisional rejection have been canceled and/or amended, and we have no
analysis from the Examiner as to whether the now-issued claims of the ’251
patent raise an obviousness-type double patenting issue.
DECISION
The rejection of claims 1 and 12-16 under 35 U.S.C. § 102(b) is
affirmed. We designate our affirmance as a new ground of rejection.
The rejection of claims 2, 3, and 5-8 under 35 U.S.C. § 102(b) is
reversed. We enter a new ground of rejection of claims 2, 3, and 5-8 under
35 U.S.C. § 103(a) as unpatentable over Greim.
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The rejection of claims 4, 9, and 17-20 under 35 U.S.C. § 103(a) is
affirmed.
We do not reach the provisional rejection of claims 1, 3-8, 12, 13, and
16-20 based on obviousness-type double patenting.
This decision contains new grounds of rejection as permitted under
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(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
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.
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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; 37 C.F.R, $ 41.50(b)
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