Ex Parte Morris et al

Board of Patent Appeals and Interferences

Jan 29, 2009

10694645 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TIMOTHY M. MORRIS, WAYNE R. SPOCK,
PETER GERARD SMITH, MATTHEW J. SCHRYVER,
RONALD S. WALTHER, ROBERT L. GUKEISEN,
and EDWARD T. HAGAMAN
____________________

Appeal 2008-4331
Application 10/694,645
Technology Center 3600
____________________

Decided: January 29, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Timothy M. Morris et al. (Appellants) seek our review under
35 U.S.C. § 134 from the final rejection of claims 20 through 27 and 30
through 32. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2008-4331
Application 10/694,645

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellants’ claimed invention pertains to a system utilizing gas
turbine engine bleed air to generate power for aircraft accessories. (See
Spec. 2, ¶¶ [0008], [0011].) Claim 20, reproduced below, is representative
of the subject matter on appeal.
20. A system for generating accessory power from a gas
turbine engine, said system comprising:
means for monitoring at least one parameter which
provides information about an incipient change in power
demand;
means for supplying bleed air from said engine during a
transient state in response to said at least one monitored
parameter; and
a pneumatically operated means for receiving said bleed
air and for generating power to operate equipment onboard an
aircraft.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Wojciehowski US 4,175,701 Nov. 27, 1979
Schafer US 5,752,379 May 19, 1998
The Examiner also relies on Appellants’ Admitted Prior Art (AAPA), page
5, paragraph 0028 of the Specification.
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The following rejections are before us for review:
1. The Examiner rejected claims 20 through 25 and 32 under
35 U.S.C. § 103(a) as unpatentable over Wojciehowski and Schafer;
2. The Examiner rejected claims 26, 27, 30, and 31 under
35 U.S.C. § 103(a) as unpatentable over Wojciehowski, Schafer and AAPA.

ISSUES
The issues before us include whether the Appellants have shown that
the Examiner erred in rejecting claims 20-25 and 32 under 35 U.S.C.
§ 103(a) as unpatentable over Wojciehowski and Schafer; and whether the
Appellants have shown that the Examiner erred in rejecting claims 26, 27,
30, and 31 under 35 U.S.C. § 103(a) as unpatentable over Wojciehowski,
Schafer and AAPA. These issues turn on whether the cited references
disclose all of the limitations of the rejected claims and whether one of
ordinary skill in the art would have found it obvious to combine the
teachings of the references to arrive at the inventions defined by the rejected
claims.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. In the context of Appellants’ claimed invention, “the term
‘transient state’ refers to any change in power demand whether it be a
change in engine power demand due to a change in engine state or a change
in any mechanical or electrical power demand due to a change in any
accessory state.” (Spec. 4, ¶ [0024].)
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2. The Specification identifies “an inputted cockpit signal 34
which indicates aircraft power demand change” as an example of one of the
“methods of detection” that provides knowledge of gearbox generator power
demand to the control device 32. (Spec. 5, ¶ [0026].) Such a signal
“indicate[s] to the device 32 that an increase or decrease in power demand is
incipient and thus a transient state is about to occur or is occurring.” (Id.)
Therefore, Appellants’ Specification identifies an inputted cockpit signal as
one source of information about an incipient change in power demand.
3. Wojciehowski discloses an apparatus and method for spraying
liquid from an aircraft for spraying fields and for fire fighting.
(Wojciehowski, col. 1, ll. 5-8.)
4. Wojciehowski teaches a system that utilizes bleed air from a
gas turbine engine 12 to drive an air turbine-type motor 24. (Wojciehowski,
col. 2, ll. 23-30, 37-42.) “Motor 24 includes an axial flow turbine 26 driven
by the pressurized airflow.” (Id., col. 2, ll. 42-43.) Wojciehowski’s motor
drives a liquid pump 28 through a gear reduction transmission. (Id., col. 2,
ll. 45-48.) The motor, transmission, and pump are located on the aircraft.
(Id., col. 2, ll. 48-51.)
5. Wojciehowski’s motor is driven by a “parasitic flow of bleed
air from the working cycle of the engine.” (Wojciehowski, col. 4, ll. 40-41.)
Thus, Wojciehowski’s pneumatic motor has an effect on engine operation
and is not completely independent of engine operation.
6. Wojciehowski discloses a pneumatically operated poppet valve
46 that controls the flow of bleed air from the engine. (Wojciehowski, col.
2, l. 66 - col. 3, l. 5; see also App. Br. 8.)
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7. Wojciehowski’s valve 46 operates in response to inputs from
the manually operated switch 86 that indicates the initial demand for pump
power, and from actuator 76 that indicates the desired rate of liquid spray.
(See Wojciehowski, col. 3, ll. 37-46; col. 4, ll. 12-29; App. Br. 8-9.) The
valve also operates in response to pressure switch 88 that indicates a
depletion of liquid in the reservoir, thus signaling that the demand for pump
power is not longer needed. (Id., col. 4, ll. 33-41.)
8. Therefore, Wojciehowski’s valve 46 operates during a transient
state in that it responds to various inputs indicating an incipient change in
power demand.
9. The Examiner found that the operation of the Wojciehowski’s
pneumatically operated means inherently increases the stall margin available
to the high pressure compressor. (See Ans. 3, 6; see also Final Rej. 2, 4.)
The Examiner stated that “[w]hen the compressor bleed air (in
Wojciewhoskie [sic] et al’s system) is used to power the pneumatic means
during the transient state, the stall margin is increased.” (Final Rej. 4.)
10. Appellants’ Specification states:
By opening a compressor bleed during a transient state or at any
other operating point, the operating line can be lowered,
increasing the stall margin (point B in Figure 1). The bleed air
is directed to a pneumatically operated device which reduces
demand for mechanical shaft power from the high pressure
rotor of the gas turbine engine. Reducing mechanical power
demand lowers the compressor operating line, further allowing
a given transient excursion with improved stall margin as
shown by line 18 in FIG. 1.
(Spec. 4, ¶ [0024]; see also App. Br. 6 (reiterating the same).)
11. Therefore, the Examiner’s determination that the operation of
Wojciehowski’s pneumatically operated means inherently increases an
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amount of stall margin available to the compressor of the combined
references is reasonable.
12. Schafer discloses a system that utilizes a full authority digital
engine control (FADEC) to alert a pilot to non-recoverable surge conditions
and blow-out conditions of a gas turbine engine. (Schafer, col. 1, ll. 9,
32-35.)
13. Schafer teaches that the use in a gas turbine system of a
FADEC was well known in the art as of the filing date of Appellants’
application. (Schafer, col. 1, ll. 32-35; col. 2, ll. 25-31; Fig. 1; cf. Spec. 4,
¶ [0026] (Appellants’ control device 32 “may be any suitable FADEC
device known in the art.”).)
14. Schafer’s fuel control primarily responds to power requests
from a signal indicating the position of the power lever 16.1. (Schafer, col.
2, ll. 34-37.) The power lever is located in the cockpit. (See Schafer,
Fig. 1.)
15. Schafer discloses that “[t]he fuel control 12 receives engine
operating information over data lines 20, such as engine speed N2,
temperature TEMP, compressor pressure PB and exhaust gas temperature
EGT.” (Schafer, col. 2, ll. 37-40.)
16. Schafer’s Figure 1 depicts a two spool gas turbine engine 10
with a first compressor (a low pressure compressor having a rotor speed N1)
receiving air at ambient pressure and a second compressor (a compressor
having a rotor speed N2) receiving air compressed by the first compressor.
(See Schafer Fig. 1; col. 1, ll. 41-43 (indicating that N2 represents the engine
speed).) Thus, Schafer’s second compressor is a high pressure compressor.
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17. The Examiner found that Schafer’s FADEC system has
feedback loops (Ans. 3, 6), and Appellants do not dispute this finding (see
App. Br. 13).
18. Appellants’ Admitted Prior Art (AAPA) teaches that
pneumatically integrated generators that supply electrical or mechanical
power are well known in the art. (Spec. 5, ¶ [0028].)
19. Appellants’ Specification, describing the prior art, states:
Horsepower extraction from a gas turbine engine typically
incorporates a mechanical gearbox that is driven by a power
takeoff shaft that is directly connected to one of the main drive
shafts in the engine. The gearbox is mounted in such a way as
to facilitate the subsequent attachment of all of the
engine-driven accessories such as a fuel pump, an oil pump, a
hydraulic pump, electrical generators, etc.
(Spec. 1, ¶ [0002].)
20. Concerning the rejection of claims 26, 27, 30 and 31,
Appellants concede that “the Examiner has shown … that certain individual
claimed features by themselves are old in the art.” (App. Br. 15.)
21. The prior art of record indicates that the person of ordinary skill
in the art of gas turbine engines has a high level of skill. (See, e.g., Schafer,
col. 1, ll. 14-29.)
22. One of ordinary skill in the art would know how to utilize an
electronic control system, like a FADEC, to monitor a parameter providing
information about an incipient change in power demand and to open or
modulate a bleed air control valve in response to that monitored parameter.
23. The person of ordinary skill hoping to improve Wojciehowski’s
accessory power generation system would not ignore Schafer’s teaching of
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digital controls simply because Schafer was directed to improving surge
detection.

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is Appellants’ burden to
precisely define the invention, not the United States Patent and Trademark
Office’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35
U.S.C. § 112, ¶ 2). Appellants have the opportunity to amend the claims
during prosecution, and broad interpretation by the Examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. Prater, 415 F.2d at 1404-05.
In construing a means-plus-function claim limitation in accordance
with 35 U.S.C. § 112, ¶ 6, one first identifies the function of the limitation
and then looks to the specification and identifies the corresponding structure
for that function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205, 1210 (Fed. Cir. 2003).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007) (quoting 35 U.S.C. § 103). The question of
obviousness is resolved on the basis of underlying factual determinations
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including: (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966); see
also KSR Int’l Co., 550 U.S. at ___,127 S. Ct. at 1734 (“While the sequence
of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”). The scope and content
of the prior art includes the explicit and inherent teachings of the prior art.
In re Zurko, 258 F.3d 1379, 1383-84 (Fed. Cir. 2001) (citing In re Napier,
55 F.3d 610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. In
particular, the Court pointed out that “the principles laid down in Graham
reaffirmed the ‘functional approach’ of Hotchkiss [v. Greenwood], 11 How.
248 [(1851)].” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739 (citing
Graham, 383 U.S. at 12). The Court reiterated that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at ___, 127 S. Ct. at
1739. The Court also noted that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” Id. at ___, 127 S. Ct. at 1740 (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)). The Court explained:
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at ___, 127 S. Ct. at 1740. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id. at ___,
127 S. Ct. at 1740.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted); see also In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the
inventions of the references be physically combinable to render obvious the
invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).

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ANALYSIS
The Rejection of Claims 20 through 25 and 32 Under 35 U.S.C. § 103(a) as
Unpatentable Over Wojciehowski and Schafer
Claim 20
As an initial matter, we note that many of Appellants’ assertions
concerning the patentability of claim 20 are directed to the purported
shortcomings of the individual references. (See, e.g., App. Br. 9, 11.)
Appellants’ assertions are misplaced as the Examiner’s rejection is based on
the combination of references. See In re Merck & Co., 800 F.2d at 1097.
Appellants appears to argue that “there is no basis for the combination
of references” because the Examiner did not find that Schafer’s control
system may be directly incorporated into Wojciehowski’s system. (App. Br.
10-11.) However, the structural features of a cited reference need not be
capable of being bodily incorporated into another reference to render the
claimed invention obvious. In re Keller, 642 F.2d at 425. The Examiner
considered what the combined teachings of the references would have
suggested to one of ordinary skill in the art (see, e.g., Final Rej. 3-4; Ans. 5),
and, thus, applied the proper analysis, In re Keller, 642 F.2d at 425.
Appellants contend that the combined references fail to disclose the
recited “means for monitoring at least one parameter which provides
information about an incipient change in power demand.” (App. Br. 10.)
This limitation is a means-plus-function limitation under the sixth paragraph
of 35 U.S.C. § 112. The claimed function is monitoring at least one
parameter which provides information about an incipient change in power
demand. The corresponding structure for that function includes control
device 32. (See Spec. 4-5, ¶ [0026]; see also App. Br. 2 (identifying item 32
as the monitoring means).) “[T]he control device 32 may be a full authority
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digital engine control device (FADEC)[.]” (Spec. 4, ¶ [0026].) Schafer
discloses the use of a FADEC in a gas turbine engine system. (Fact 12.)
Thus, the combination of references does contain a monitoring means.
Appellants assert that the Examiner’s statement that “[t]he claim calls
for a means for monitoring incipient change in power demand” (Ans. 4),
“mischaracterizes the limitations” and “is wrong” (Reply Br. 3). Appellants
point out that the claim recites a means for monitoring a parameter providing
information about an incipient change rather than a means for monitoring an
incipient change. (Reply Br. 3.) Although the Examiner did not quote the
entire limitation, the Examiner does not appear to have ignored any aspect of
that limitation. (See Ans. 5 (finding that Wojciehowski’s switch can provide
information about an incipient change in power demand).) We see no error
arising from the Examiner’s paraphrasing.
Appellants argue that Schafer’s FADEC system is not the claimed
monitoring means because Schafer’s FADEC is not monitoring a parameter
providing information about an incipient change in power demand. (App.
Br. 11.) Appellants assert that Schafer’s FADEC is “operating in response
to the input from the power level control” rather than monitoring a
parameter. (Id.) However, Appellants’ Specification identifies an inputted
cockpit signal as one source of information about an incipient change in
power demand. (Fact 2.) Schafer’s fuel control primarily responds to power
requests from a signal indicating the position of the power lever located in
the cockpit. (Fact 14.) Thus, Schafer’s FADEC monitors a parameter
providing information about an incipient power demand change. Further,
Schafer’s FADEC monitors various engine parameters (Fact 15), and one of
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ordinary skill in the art would have known how to apply a FADEC in the
manner recited in claim 20 (Fact 22).
Appellants also argue that the combined references lack the recited
“means for supplying bleed air from said engine during a transient state in
response to said at least one monitored parameter.” (App. Br. 10, 12.) This
limitation is also a means-plus-function limitation. The claimed function is
supplying bleed air from said engine during a transient state in response to
said at least one monitored parameter. The corresponding structure for that
function includes valve 38. (See Spec. 5, ¶ [0027]; see also App. Br. 2
(identifying item 38 as the bleed air supplying means).) Appellants concede
that Wojciehowski’s poppet valve 46 controls the supply of bleed air (see
App. Br. 8), but appear to argue that Wojciehowski’s valve does not do so in
response to a monitored parameter (see App. Br. 9).
Wojciehowski’s bleed air supply valve operates during a transient
state in response to various inputs indicating a change in power demand.
(Facts 7, 8.) One of ordinary skill in the art would know how to utilize a gas
turbine engine control system to operate a control valve in response to
monitored parameters. (Fact 22.) The recited means for supplying bleed air
in response to a monitored parameter does not impart patentability because it
is merely the predictable result of the combination of Wojciehowski’s
pneumatically controlled bleed air valve and Schafer’s digital engine control
system. See KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”)).
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Appellants assert that:
The present invention is directed to two key elements not
addressed in the Wojciehowski et al. reference. The first is the
hybrid nature of the design, simultaneously using engine
mechanical shaft and pneumatic power to drive a variety of
engine mounted parasitic load devices including fuel pumps, oil
pumps, hydraulic pumps, and electrical generators. … The
second important distinction is that the present invention makes
no claim of minimizing the parasitic load on either the engine
or the airframe.
(App. Br. 7-8.) Neither “key element” serves to patentably distinguish the
claimed invention over the combined references. As to the first “key
element,” claim 20 does not require “the hybrid nature.” Claim 20 requires a
pneumatically operated means, but not the simultaneous use of both a
pneumatically operated means and a means utilizing mechanical shaft
power. Appellants’ argument concerning the second element is unclear. It
appears that Appellants are restating the same unpersuasive argument
concerning the hybrid nature of the design. (See App. Br. 8 (asserting that
the present invention provides for mechanical shaft power extraction “as
opposed to the reference’s pneumatic only source.”).) Further, Appellants
do not point to any claim limitation that excludes the minimization of
parasitic load.
Appellants contend that claimed subject matter cannot be obvious
because “neither cited and applied reference is concerned with the problem
addressed by Appellants.” (Reply Br. 4.) This argument is unavailing as the
cited prior art need not be directed to the problem Appellants were trying to
solve. KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1741-42.
Appellants assert that the obviousness rejection fails because “there is
absolutely no reason why one of ordinary skill in the art would be motivated
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to include a FADEC such as Schafer et al.’s system in Wojciehowski et al.’s
system … [and] the prior [art] as a whole does not suggest the desirability of
the combination.” (App. Br. 10 (citing In re Beattie, 974 F.2d 1309, 1311
(Fed. Cir. 1992); see also App. Br. 11.) This argument is foreclosed by
KSR, in which the Court rejected the rigid requirement of a teaching,
suggestion or motivation to combine known elements in order to show
obviousness. KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1741.
Nonetheless, the desire to improve and update an older pneumatically
controlled system with a more modern electronic control system, like the
FADEC, provides a motivation to combine the references. See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (It
would have been obvious “to update [the prior art electro-mechanical
device] using modern electronic components in order to gain the commonly
understood benefits of such adaptation, such as decreased size, increased
reliability, simplified operation, and reduced cost.”).
Appellants also contend that “someone looking to improve a liquid
spraying system such as Wojciehowski et a1.’s would not look to Schafer
et al. and someone looking to improve a surge detection system such as
Schafer et al.’s would not look to Wojciehowski et al.” (App. Br. 12.) We
disagree. “Common sense teaches … that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.” KSR Int’l Co., 550 U.S. ___, 127 S.Ct at 1742. In this case,
both references pertain to the gas turbine arts. (See Facts 4, 12.) The person
of ordinary skill hoping to improve Wojciehowski’s accessory power
generation system would not ignore Schafer’s teaching of digital controls
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simply because Schafer was directed to improving surge detection.
(Fact 23.)
Wojciehowski discloses a system for generating accessory power
from a gas turbine engine with a pneumatically operated power generating
means and a bleed air supply valve. (Facts 4, 6.) Schafer discloses a more
modern digital gas turbine engine control system. (Fact 12.) Appellants do
not present any evidence that the adaptation of such a control system to
Wojciehowski’s accessory power generation system was beyond the abilities
of one of ordinary skill in the art or yields unexpected results. Appellants
have not shown that the Examiner erred in rejecting claim 20 as obvious.

Claim 21
Appellants assert that “Claim 21 is allowable because neither
Wojciehowski et al. nor Schafer et al. has a monitoring means comprising an
electronic engine control device which receives at least one input signal
about said incipient change in power demand.” (App. Br. 12.) Appellants
again argue that Schafer does not receive an input signal about the incipient
change in power demand. (Id.) We have addressed this argument in the
context of claim 20, and found it unpersuasive. Also, Appellants attack the
references individually, but fail to articulate why the combination does not
render the claimed subject matter obvious. Appellants have not shown that
the Examiner erred in rejecting claim 21.

Claim 22
Appellants assert that “Claim 22 is allowable for the same reasons as
claims 20 and 21,” and that Schafer’s “FADEC is used in a different manner
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for different purposes [than the FADEC recited in claim 22].” (App. Br. 13.)
These arguments are unavailing for the reasons set forth above. Appellants
have not shown that the Examiner erred in rejecting claim 22.

Claim 23
Dependent claim 23 recites “a control valve which is opened or
modulated by a signal from said electronic engine control device.”
Appellants again address the references individually, but fail to explain why
the claimed subject matter would not have been obvious over the
combination of Wojciehowski’s control valve and Schafer’s electronic
engine control device. (App. Br. 13.) Thus, Appellants have not shown that
the Examiner erred in rejecting claim 23.

Claim 24
Appellants appear to argue that claim 24 is patentable because neither
cited reference discloses bleed air from a high pressure compressor. (App.
Br. 13.) Appellants assert that “high pressure compressor … is a term that
has significance in the art.” (Id.) Thus, Appellants implicitly concede that
such compressors are well known in the art. Schafer discloses a high
pressure compressor. (Fact 16.) Appellants do not present any evidence that
the use of high pressure compressor bleed air in the system of the combined
references was beyond the capabilities of the ordinary artisan or yielded
unpredictable results. Further, the selection of the high pressure compressor
as the source of bleed air is an obvious design choice in that a person of
ordinary skill in the art wishing to power an air motor would gravitate
towards such a source of high pressure air. See KSR Int’l Co., 550 U.S. at
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___, 127 S. Ct. at 1742 (“When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp.”). Appellants have not shown that
the Examiner erred in rejecting claim 24 as obvious.

Claim 25
Appellants contend that “Claim 25 is allowable because neither
reference teaches or suggests a feedback loop for transmitting a signal to the
electronic control device representative of control valve position.” (App.
Br. 13.) Appellants do not dispute the Examiner’s finding that Schafer’s
FADEC system has feedback loops (Fact 17), but rather argue that the
references do not disclose a feedback loop transmitting a control valve
position signal. (App. Br. 13.) However, Appellants do not address the
combined teachings of the cited references, which is the focus of the
obviousness analysis. See In re Keller, 642 F.2d at 425. Appellants fail to
present evidence or argument that utilizing a feedback loop transmitting a
signal indicating the state of the controlled structure (the position of
Wojciehowski’s bleed air valve) to the controller (Schafer’s FADEC) is a
technique unknown to the ordinary artisan. Appellants have not shown that
the Examiner erred in rejecting claim 25.

Claim 32
Claim 32 depends from claim 20 and recites “wherein operation of
said pneumatically operated means increases an amount of stall margin
available to a high pressure compressor of said engine.” The Examiner
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found that the operation of the Wojciehowski’s pneumatically operated
means inherently increases the stall margin available to the high pressure
compressor. (Fact 9.)
Appellants assert that Wojciehowski’s pneumatic motor “is
completely independent of engine operation [and] has no effect on engine
operation.” (App. Br. 13.) However, Wojciehowski’s motor is driven by
parasitic bleed air extracted from the working cycle of the engine, and thus
has an effect on engine operation and is not “completely independent of
engine operation.” (Fact 5.)
Appellants also argue that Wojciehowski lacks a high pressure
compressor. (App. Br. 14.) As discussed above regarding claim 24, the use
of a high pressure compressor was obvious in light of the combined
teachings of the cited references.
Appellants argue that the Examiner has not established inherency of
the recited increased stall margin. (App. Br. 3; Reply Br. 2-3.) Where, as
here, the Patent Office has reason to believe that a functional limitation is an
inherent characteristic of the prior art, Appellants have the burden to show
that the prior art does not possess that characteristic. See In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210,
212-13 (CCPA 1971); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) (“when the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”). The Examiner’s determination of inherency is
reasonable in light of the Specification’s discussion of improving the stall
margin by opening a compressor bleed and by using a pneumatically
operated device rather than mechanical shaft power. (Facts 10, 11.)
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Appellants assert that the supply of bleed air during the operation of
Wojciehowski’s pneumatic motor “has no effect on the stall margin of the
engine.” (App. Br. 14.) However, Appellants do not offer any evidence to
support this assertion or to otherwise rebut the Examiner’s determination of
inherency. Appellants have not shown that the Examiner erred in rejecting
claim 32.

The Rejection of Claims 26, 27, 30, and 31 Under 35 U.S.C. § 103(a) as
Unpatentable Over Wojciehowski, Schafer and AAPA
Dependent claims 26, 27, 30, and 31 pertain to the configuration and
application of the “pneumatically operated means” recited in claim 20.
Appellants argue these claims as a group. (App. Br. 14-16.) We select
claim 26 as representative of the group in deciding the appeal with respect to
this rejection. 37 C.F.R. § 41.37(c)(1)(vii). Claim 26 recites: “wherein said
pneumatically operated means comprises a pneumatically integrated
generator for supplying electrical power to operate at least one accessory
selected from the group consisting of a generator, a starter/generator, a fuel
pump, a deoiler, a PMA, a lube pump, and a hydraulic pump.” Appellants
do not dispute that the features of claim 26 are well known in the art. (See
Fact 20; App. Br. 14-15.) Rather, Appellants argue that the rejection fails to
state a motivation to “add the features claimed” to Wojciehowski and
Schafer, and assert that there must be “a teaching, a suggestion, or
motivation which flows from the references.” (App. Br. 14, 15 (citation
omitted).) This argument is foreclosed by KSR, in which the Court rejected
the rigid requirement of a teaching, suggestion or motivation to combine
known elements in order to show obviousness. KSR Int’l Co., 550 U.S. at
___, 127 S. Ct. at 1741. The Court noted that an obviousness analysis “need
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Application 10/694,645

not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
Co., 550 U.S. at ___, 127 S. Ct. at 1741.
Appellants also argue that there is no motivation to combine the
references because the claimed features are not needed to operate or improve
Wojciehowski’s liquid spraying system. (App. Br. 15.) This contention
reflects an unduly restricted view of the obviousness analysis. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1742. Wojciehowski teaches a
system with an accessory pump driven by an air turbine-type motor utilizing
a gearbox. (Fact 4.) Other pneumatically integrated generators and driven
accessories were well known in the art. (Facts 18-20.) Each of the systems
defined by claims 26, 27, 30 and 31 is merely the substitution of one known
element for another that would yield a predicable result. See KSR Int’l Co.,
550 U.S. at ___, 127 S. Ct. at 1740. As such, Appellants have not shown
that the Examiner erred in rejecting those claims as obvious.

CONCLUSIONS
We conclude that the Appellants have failed to show that the
Examiner erred in rejecting claims 20-25 and 32 under 35 U.S.C. § 103(a) as
unpatentable over Wojciehowski and Schafer, and claims 26, 27, 30, and 31
under 35 U.S.C. § 103(a) as unpatentable over Wojciehowski, Schafer and
AAPA.

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Application 10/694,645

DECISION
The decision of the Examiner to reject claims 20 through 27 and 30
through 32 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

LV:

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