Ex Parte Merry et al

Patent Trial and Appeal Board

Aug 23, 2017

13340909 (P.T.A.B. Aug. 23, 2017)

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.
13/340,909 12/30/2011 Brian Merry 45939US04;67097-077PUS4 1090
54549 7590 08/25/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
SUNG, GERALD LUTHER
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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 BRIAN MERRY, GABRIEL L. SUCIU, JAMES W. NORRIS,
STEVEN J. SIRICA, and FREDERICK M. SCHWARZ
Appeal 2015-0072511
Application 13/340,9092
Technology Center 3700
Before ANTON W. FETTING, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—6, 8, 10, 14—18, 20, and 22, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed Mar.
23, 2015) and Reply Brief (“Reply Br.,” filed July 27, 2015), and the
Examiner’s Answer (“Ans.,” mailed June 25, 2015) and Final Office Action
(“Final Act.,” mailed Nov. 26, 2014).
2 Appellants identify United Technologies Corporation as the real party in
interest. App. Br. 1.
Appeal 2015-007251
Application 13/340,909
STATEMENT OF THE CASE
The Appellants’ invention relates to a gas turbine engine. Spec. 11.
Claims 1,11, and 17 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A turbine engine comprising:
a compressor section;
a combustor arranged in fluid-receiving communication
with the compressor section;
a turbine section arranged in fluid-receiving
communication with the combustor; and
a gearbox assembly coupled to be driven by the turbine
section and configured to provide a speed decrease with a
reduction ratio greater than or equal to about 3.34:1, the
gearbox assembly being located at an axial position that is aft of
the compressor section, wherein the turbine engine has a bypass
ratio greater than about ten (10).
REJECTIONS3
Claims 1—8, 10, 14—18, 20, and 22 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as the invention.
Ans. 2.
Claims 1—6, 8, 10, 14—18, 20, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Adamson (US 4,916,894, iss. Apr. 17,
1990) and McCune (US 2004/0128978 Al, pub. July 8, 2004). Ans. 2.
3 In the event of further prosecution, the Examiner and Appellants should be
aware that claim 8 depends from canceled claim 7, claims 15—18 and 22
depend from canceled claim 11, and claim 20 depends from canceled claim
19.
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Application 13/340,909
ANALYSIS
Indefiniteness
In rejecting claims 1—8, 10, 14—18, 20, and 22 under 35 U.S.C. § 112,
second paragraph, the Examiner takes the position that the term “about,” as
used in claims 1, 8, 14, and 20, is “a relative term [that] requires sufficient
explanation in the [Specification so as to enable an ordinary worker in the
art to understand and identify the exact scope of ‘about 3.34:1Ans. 2.
The Examiner finds that “Appellant provides no explanation of the term
‘about’ anywhere in the [Specification other than a nominal recitation
identical to that of the claimed language.” Id. at 3 (citing Amgen, Inc. v.
Chugai Pharmaceutical Co., 927 F.2d 1200 (Fed. Cir. 1991)).
Appellants argue that they are “not legally obligated to define the
exact tolerance when using the term ‘about’ in association with a value.”
App. Br. 3. Appellants assert that the term “about” is “not necessarily
indefinite for being variable.” Id. (citing MPEP § 2173.05(b)). Appellants
further assert that case law “acknowledges [that] use of the term ‘about’
without a specific definition is proper.” Id. (citing OrthoMcNeil
Pharmaceutical, Inc. v. Kali Laboratories, Inc., 482 F.Supp. 2d 478 (D.N.J.
2007). And Appellants charge that “the Examiner provides no basis or
evidence supporting that a person of ordinary skill in the art would not have
known what the limit of the term ‘about’ is.” Id.
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
“when it contains words or phrases whose meaning is unclear.” In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e)).
If an examiner “has initially issued a well-grounded rejection that identifies
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Application 13/340,909
ways in which language in a claim is ambiguous, vague, incoherent, opaque,
or otherwise unclear in describing and defining the claimed invention, and
thereafter the applicant fails to provide a satisfactory response,” the
examiner “can properly reject the claim as failing to meet the statutory
requirements of § 112(b),” the successor to § 112, second paragraph. Id. at
1311.
To the extent Appellants contend that the Examiner failed to set forth
a prima facie case, we disagree. See, e.g., Appeal Br. 3 (arguing that the
Examiner’s “analysis is conclusory and does not support the rejection”).
The Office establishes a prima facie case of indefmiteness by adequately
explaining why the metes and bounds of a pending claim are not clear,
thereby providing an applicant proper notice and the ability to respond. See
Packard, 751 F.3d at 1312; see also MPEP § 2173.02(III)(B) (“The Office
action must set forth the specific term or phrase that is indefinite and why
the metes and bounds are unclear. Since a rejection requires the applicant to
respond by explaining why claim language would be recognized by a person
of ordinary skill in the art as definite or by amending the claim, the Office
action should provide enough information for the applicant to prepare a
meaningful response.”). Here, the Examiner clearly identified the language
at issue and adequately explained the perceived lack of clarity. See Final
Act. 2; see also Ans. 3.
A “satisfactory response” to a rejection under 35 U.S.C. § 112, second
paragraph, “can take the form of a modification of the language identified as
unclear, a separate definition of the unclear language, or, in an appropriate
case, a persuasive explanation for the record of why the language at issue is
not actually unclear.” Packard, 751 F.3d at 1311. Here, Appellants did not
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Application 13/340,909
modify or define the term “about,” and, for the reasons below, did not
persuasively explain why the term is not unclear.
As an initial matter, we agree with Appellants and the Examiner that
the term “about” does not necessarily render a claim indefinite. App. Br. 3;
see also MPEP § 2173.05(b)(1) (“[t]erms of degree are not necessarily
indefinite”). Ans. 3. We also agree with Appellants that they are “not
legally obligated to define the exact tolerance.” App. Br. 3. A claim “is not
indefinite if the [Specification provides examples or teachings that can be
used to measure a degree even without a precise numerical measurement
(e.g., a figure that provides a standard for measuring the meaning of the term
of degree).” MPEP § 2173.05(b)(1) (citations omitted).
Appellants have not, however, identified any aspect of the
Specification (i.e., the claims or written description) or any other evidence of
record to rebut the Examiner’s finding that one having ordinary skill in the
art, in view of Appellants’ Specification, would be unable to discern the
meaning of the term “about.” See Ans. 3 (“Appellant provides no
explanation of the term ‘about’ anywhere in the [Specification^] other than
a nominal recitation identical to that of the claimed language. The Examiner
agrees that the term ‘about’ may be used in a definite manner, but [] this
record provides no adequate basis for determining the scope of ‘about.’”);
see also Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1218 (Fed. Cir.
1991) (affirming a determination that “at least about” rendered claims
indefinite when the claim language, written description, prosecution history,
and prior art did not indicate what range of specific activity is covered by the
term “about”).
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We agree with the Examiner’s finding that the Specification provides
no standard for understanding the term “about.” Compare Spec. 15—16,
19-20, 27-28, 31-32, 46, and 55 with MPEP § 2173.05(b)(1) (“[W]hen a
term of degree is used in the claim, the [Ejxaminer should determine
whether the [Specification provides some standard for measuring that
degree.”). Therefore, we sustain the rejection of the claims on this basis.
The Examiner also objects to the phrase “greater than,” as recited in
independent claims 1 and 14, because the upper limit of the range is
unbound. Ans. 2. However, as the Appellants point out, the upper limit
being open-ended relates to breadth, and does not render the claim language
indefinite. App. Br. 4. See In re Miller, 441 F.2d 689,693 (CCPA 1971)
(“[Bjreadth is not to be equated with indefmiteness.”). Here, we find that a
person of ordinary skill in the art would understand the meaning of the claim
language “greater than,” even though its meaning is broad, i.e., without an
upper limit. Therefore, we do not sustain the rejection of the claims on this
basis.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1—8, 10, 14—18, 20, and 22 under 35 U.S.C. § 112, second paragraph
as indefinite, because the meaning of the term “about,” as recited in claims
1,8, 14, and 20, is unclear.
Obviousness
Appellants argue claims 1—6, 8, 10, 14—18, 20, and 22 as a group.
Appeal Br. 5—6. We select claim 1 as representative, and claims 2—6, 8, 10,
14—18, 20, and 22 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner
determines that Adamson discloses most of the limitations recited in claim 1,
but does not disclose, in part, that the gearbox assembly defines a reduction
ratio “greater than or equal to 3.34:1.” See Final Act. 4 (citing Adamson,
Fig. 1). The Examiner relies on McCune to cure the deficiency. See id. at
4—5. In this regard, the Examiner finds that McCune teaches that a reduction
ratio is a result effective variable that is determined by the ratio of diameters
of the ring gear to the sun gear. Final Act. 7; see also McCune 115 (the
rejection ratio “is determined by the ratio of diameters of the ring gear to the
sun gear”). The Examiner further finds that McCune teaches an exemplary
reduction ratio falls between 2:1 and 13:1, and that Appellants’ claimed
reduction ratio falls within this range. Final Act. 7 (citing McCune 115).
The Examiner determines that an ordinary skilled worker would understand
based on McCune that a reduction ratio of 3.34:1 would be an acceptable
reduction gear ratio in the gearbox assembly of Adamson. See id. at 5.
Appellants do not dispute that a reduction ratio is a result effective
variable, or that one of ordinary skill would understand from McCune that a
reduction ratio of 3.34:1, as recited in claim 1, which is within the range of
exemplary reduction ratios described by McCune, would be acceptable as a
result-effective variable for McCune’s engine. App. Br. 5 (“the [reduction]
ratio is acceptable in McCune”). Instead, Appellants argue that the
Examiner has not established that a reduction ratio of 3.34:1 “would be
acceptable or suitable in the different engine architecture of Adamson.” Id.
at 5—6; see also Reply Br. 3. Appellants argue that “[i]n Adamson, the gear
box 28 reduces the rotational speed delivered to the fan from the first/high
pressure turbine in order to match the rotational speed of the fan as driven
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by the secondHow pressure turbine[; whereas,] in McCune the fan is driven
through transmission 46 by the low turbine section.” App. Br. 6 (citing
Adamson col. 3,1. 27—col. 4,1. 29; and McCune 113, Fig. 1). Because of
these structural differences between the engines of McCune and Adamson,
Appellants charge that applying McCune’s reduction ratio of 3.34:1 in the
engine architecture of Adamson is not a combination with predictable
results, and the Examiner, thus, fails to establish a prima facie case of
obviousness. Id. at 5—6; see also Reply Br. 3. Appellants also charge that
the Examiner provides “no factual basis” for determining that “the benefits
associated with McCune would somehow be obtained if McCune’s
[reduction] ratio were used in the different engine architecture of Adamson.”
Id. at 6; see also Reply Br. 3.
We are not persuaded by Appellants’ arguments. Instead, we agree
with, and adopt, the Examiner’s findings and rational as set forth at pages 4—
5 and 7—8 of the Final Office Action, and at page 5 of the Answer.
We further note that the discovery of an optimum value of a result
effective variable is ordinarily within the skill of the art. See In re Boesch,
617 F.2d 272, 276 (CCPA 1980); In reAller, 220 F.2d 454, 456 (CCPA
1955). The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (collecting
cases). “These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.” Id. Here, Appellants do not allege, much less show, that
the particular claimed reduction ratio value is critical. Further, our review of
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the Specification does not support any such finding. See, e.g., Spec. 46
(describing only that “the embodiment shown . . . provides a speed increase
at a 3.34-to-one ratio”).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 and claims 2—6, 8, 10, 14—18, 20, and 22, which fall with claim 1,
under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1, 8, 14, and 20 under 35 U.S.C.
§112, second paragraph is affirmed.
The Examiner’s rejection of claims 1—6, 8, 10, 14—18, 20, and 22
under 35 U.S.C. § 103(a) is 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)(l)(iv).
AFFIRMED
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