Ex Parte MYHRE et al

Patent Trials and Appeals Board

Apr 25, 2019

13428330 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/428,330
61654 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
03/23/2012
04/29/2019
FIRST NAMED INVENTOR
Douglas C. MYHRE
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. CONFIRMATION NO.
1422911.199US1[70760US01] 1739
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/29/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS C. MYHRE, JOSEPH R. MICHEL,
JERRY L. GOEKE, TIMOTHY AADLAND, and
NICHOLAS R. OVERMAN 1
Appeal2017-008440
Application 13/428,330
Technology Center 3700
Before BENJAMIN D. M. WOOD, ERIC C. JESCHKE, and
FREDERICK C. LANEY, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Delavan and Rosemount Aerospace, owned by United
Technologies Corporation, as the real party in interest. App. Br. 1.
Appeal2017-008440
Application 13/428,330
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
13 and 25. Claims 14--24 have been withdrawn. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to an optical sensor for observing combustor
flames in a gas turbine engine. Of the appealed claims, claims 1 and 25 are
independent. Id. at 15, 19-20 (claims app'x). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A fuel injector for a gas turbine engine
compnsmg:
a) a nozzle body for issuing fuel and air into a
combustor;
b) an optical probe located within the nozzle
body for observing combustor flame
radiation, the optical probe including a
central optical fiber bundle and a plurality
of optical fiber bundles circumferentially
distributed about the central optical fiber
bundle, the fiber bundles extending to a
distal end of the probe; and
c) a shaped lens supported at the distal end of
the probe and configured to provide a
multi-directional field of view for the
optical fiber bundles to observe multiple
regions of the combustor,
wherein the circumferentially distributed
optical fiber bundles twist about the central
optical fiber within a tapered outer guide
tube to reduce an overall diameter of the
distal end of the probe.
2
Appea12017-008440
Application 13/428,330
McLachlan
Suzuki
Bottoms
Anderson
Richards
Myhre
REFERENCES
us 4,573,761
us 5,004,328
us 5,325,457
us 5,905,834
US 6,507,392 Bl
US 7,334,413 B2
REJECTION
Mar. 4, 1986
Apr. 2, 1991
June 28, 1994
May 18, 1999
Jan. 14,2003
Feb.26,2008
Claims 1-13 and 25 are rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Myhre, Richards, Suzuki, McLachlan, Anderson, and
Bottoms.
ANALYSIS
Appellants specifically argue the patentability of claim 1, and rely on
those arguments to support the patentability of claims 2-13 and 25. App.
Br. 11-13. Therefore, we decide the appeal of claims 1-13 and 25 on the
basis of claim I alone. 37 C.F.R. § 4I.37(c)(l)(iv). Having considered
Appellants' arguments and the evidence of record, we are not persuaded that
the Examiner erred in rejecting claim 1 as unpatentable over Myhre,
Richards, Suzuki, McLachlan, Anderson, and Bottoms. We address specific
arguments for emphasis in our analysis below.
Appellants argue that one of ordinary skill in the art would not have
combined Myhre with Richards because: (1) "gas turbine engine fuel
injectors are generally small"; (2) combining Myhre and Richards would
result in an optical sensor that would be "larger" than Myhre's optical
sensor; and 3) a larger optical sensor is "disadvantageous" because the
resulting fuel injector would be larger. App. Br. 7. Appellants make
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Appeal2017-008440
Application 13/428,330
identical arguments against the combination of Myhre with Suzuki and
McLachlan. Id. at 8-9.
We do not find these arguments persuasive. As the Examiner notes
(Ans. 3), Appellants do not provide evidentiary support for their assertions
that the proposed combination necessarily would have resulted in a larger
optical sensor, and that the allegedly resulting larger optical sensor would
have required a larger fuel injector to accommodate it. Thus, the assertions
are entitled to little weight. See In re Schulze, 346 F.2d 600, 602 (CCPA
1965) ("Argument in the brief does not take the place of evidence in the
record.") Even if these premises had been established, Appellants have not
persuaded us that one of ordinary skill in the art would have considered a
"larger" fuel injector to be "disadvantageous." For example, Appellants do
not dispute the Examiner's findings (Ans. 3--4) that "gas turbines were
available for sale in a range of sizes" and "gas turbine engines of different
sizes would have had differently sized fuel injectors," such that a larger fuel
injector would have been useful in at least some gas turbine engines. 2
2 In advancing the above arguments, Appellants take issue with the
Examiner's expression of "the real-world engineering fact that design
optimization involves making trade-offs between the advantages and
disadvantages of a particular modification." Reply Br. 12 (quoting Ans. 13).
Appellants argue that "there is no evidence in the record whatsoever"
establishing this "real-world engineering fact." Id. But the Examiner's
rejection does not rely on this statement, as the Examiner does not agree
with Appellants that the proposed modifications would have resulted in any
specific disadvantages. Ans. 3. In any event, we do not interpret this
statement as a finding of fact, but rather an expression of the well-
established principle that "a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine." Medichem v. Rolabo, 437 F.3d 1157, 1165 (Fed.
Cir. 2006); see Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
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Appeal2017-008440
Application 13/428,330
Appellants also dispute the Examiner's finding that one of ordinary
skill in the art would have twisted Myhre's fiber bundles as disclosed in
Anderson and Bottoms to protect the fiber bundles from axial tension. App.
Br. 10 (citing Final Act. 7). Appellants assert that the distal ends ofMyhre's
fiber bundles "float, i.e., [they are] not fixed, relative to the tube enclosing
the fiber bundles." Id. Appellants reason that "[s]ince the ends of the fiber
bundles float the fiber bundles are not in tension," so one of ordinary skill in
the art would not have had a reason to twist the bundles to relieve axial
tension, as the Examiner contends. Id.
This argument is not persuasive. First, we agree with the Examiner
(Ans. 14) that Appellants' contention that Myhre's fiber bundles are not
fixed is unsupported attorney argument. See Schulze, 346 F.2d at 602.
Second, Appellants do not rebut the Examiner's contrary finding that Myhre
teaches that its fiber ends are "fixed within the protective metal tube
enclosing the fibers." Id. at 15 (citing Myhre, 8:26-30).
Finally, Appellants argue that one of ordinary skill in the art would
not have modified Myhre with the inner guide tubes of Anderson because
they "are formed of a plastic material" that "would not survive the
temperatures expected within a gas turbine engine combustor." App. Br. 13;
Reply Br. 14--15. However, Anderson is not relied upon for the specific
materials used to make its inner guide tubes, so this argument does not
address the proposed rejection.
(Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another.").
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Appeal2017-008440
Application 13/428,330
DECISION
For the above reasons, the Examiner's rejection of claims 1-13 and 25
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)(l )(iv).
AFFIRMED
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