Ex Parte Ollivau

Patent Trial and Appeal Board

Mar 27, 2018

13546135 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/546, 135 07 /11/2012
226 7590
General Electric Company
Global Patent Operation
901 Main Avenue
3rd Floor
Norwalk, CT 06851
03/29/2018
FIRST NAMED INVENTOR
Eric Ollivau
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.
305488-3 us 2720
EXAMINER
EASTMAN, AARON ROBERT
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
gpo.mail@ge.com
Janey.Bruno@ge.com
Lori.Rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC OLLIV AU
Appeal2017-006988
Application 13/546, 13 5
Technology Center 3700
Before STEFAN STAICOVICI, ARTHURM. PESLAK, and
SEAN P. O'HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Eric Ollivau ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision in the Final Action (dated Nov. 2, 2015, hereinafter
"Final Act.") rejecting claims 1-9. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
1 Alstom Technology Ltd. is identified as the real party in interest in
Appellant's Appeal Brief (filed Apr. 26, 2016, hereinafter "Br."), at page 2.
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Application 13/546, 135
INVENTION
Appellant's invention relates to "casings for steam turbines." Spec.
para. 2
Claims 1, 8, and 9 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A casing for a turbine configured to provide power to a
public power grid, the casing comprising:
a front section;
a middle section; and
an end section wherein the front section, middle section,
and end section being cast together to form the casing, and the
front section and the end section are configured to be usable in
turbines using a plurality of rotational speeds and the middle
section is configured to form a turbine for a predetermined
rotational speed to adapt the turbine to a different power grid
frequency.
Br. (Claims Appendix 1 ).
REJECTIONS 2
I. The Examiner rejects claims 1--4 and 6-9 under 35 U.S.C. § 102(b) as
being anticipated by Bruckhoff et al. (US 3,914,842, iss. Oct. 28,
197 5, hereinafter "Bruckhoff'). 3
2 The rejection of claims 1-7 and 9 under 35 U.S.C. § 112, second
paragraph, as being indefinite is withdrawn by the Examiner.
Examiner's Answer 2 (dated Sept. 23, 2016, hereinafter "Ans.").
3 Although the Examiner mentions claim 10, but omits claim 9 from
the heading of this rejection, because claim 10 has been canceled and
claim 9 is mentioned in the body of the rejection, we consider this to
be a typographical error, and so, we consider claim 9 to be part of this
rejection. See Final Act. 4, 10. Claim 10 is not part of the instant
appeal.
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Application 13/546, 135
II. The Examiner rejects claims 1, 3, 4, 8, and 9 under 3 5 U.S. C. § 1 02 (b)
as being anticipated by Roy et al. (US 4,948,331, issued Aug. 14,
1990, hereinafter "Roy").
III. The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Bruckhoff.
IV. The Examiner rejects claims 5-7 under 35 U.S.C. § 103(a) as being
unpatentable over Roy.
ANALYSIS
Rejection I
The Examiner finds that Bruckhoff discloses a turbine casing
including a front section 50, 51, a middle section 70-74, 80-85, and an end
section 60-66. Final Act. 5. The Examiner further finds that "each section,
the front, middle and end are configured to form a turbine for a
predetermined rotational speed and that the casing is designed to be used for
a specific power grid frequency." Id. Furthermore, according to the
Examiner, the phrase "configured to" is "treated as a product-by-process
limitation." Id. at 6.
In response, Appellant argues that although Bruckhoff discloses
"casting a turbine using an assembled front mold, middle mold and end mold
section," Bruckhoff fails to disclose that "the front and end sections are
configured to be usable in turbines using a plurality of rotational speeds."
Br. 5---6. Appellant further asserts that it is not inherent in Bruckhoff "that
the front section and the end section are configured to be useable in turbines
using a plurality of rotational speeds." Id. at 7. Appellant also contends that
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Application 13/546, 135
"the Examiner's interpretation of 'configured to' as being a product-by-
process limitation is incorrect." Id. at 8.
The Examiner responds that because "[ e ]very turbine ... must go
through a plurality of rotational speeds in order to reach its operating speed"
"the front and end sections ... [are] configured to be useable in turbines
using a plurality of rotational speeds." Ans. 17.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this
case, Appellant's Specification states that the objective of the claimed
invention is to provide a turbine casing with a design that is adaptable "to a
change in rotational speed or different power grid frequency ... between a
50 Hz grid frequency and a 60 Hz grid frequency." Spec., para. 18. The
Specification further describes "adapt[ing] a given type of turbine to
different frequencies of the electric power grid" as adapting "to different
rotational speeds." Id., para. 7. Furthermore, a person of ordinary skill in
the art of turbines would readily understand that the frequency of the power
grid is directly related to the operating speed of the turbine. After all, an
artisan must be presumed to know something about the art apart from what
the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Hence, as the frequency of the power grid can be either 50 or 60 Hz,
in light of Appellant's Specification and the understanding of the skilled
artisan, the limitations of a "plurality" or "different" rotational speeds refers
to the operating rotational speeds of the turbine and not on a ramping speed
between zero and the operational speed of the turbine. As such, the
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Examiner's interpretation that the phrase "plurality of rotational speeds"
includes the ramping speed between zero and the operating rotational speed
is unreasonable. See Ans. 17.
We further note that "[i]nherency ... may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581
(Fed. Cir. 1991)). Here, Bruckhoff discloses forming a turbine casing by
combining various portions chosen among a plurality of turbine casing
portions, including two inlet portions 50, 51, seven exhaust portions 60-66,
and eleven intermediate portions 80-85 having diameter transition sections
70-74, based on input and output turbine requirements and turbine speed.
See Bruckhoff, col. 3, 11. 4--11, col. 6, 11. 7-17, Fig. 1. Although Bruckhoff
discloses choosing different front and end sections depending on the
operating rotational speed of the turbine, this does not mean that Bruckhoff
discloses using the same inlet portions 50, 51 and exhaust portions 60-66 for
turbines that function at different operational speeds (or different grid
frequencies). Rather, Bruckhoff discloses using unique and distinct inlet
portions 50, 51 and exhaust portions 60-66 for a specific operating
rotational speed. In other words, Bruckhoff does not necessarily disclose
using front (inlet portions 50, 51) and end (exhaust portions 60-66) portions
in turbines using a "plurality" (as per claim 1) or "different" operating
rotational speeds (as per claims 8 and 9).
Lastly, we do not agree with the Examiner that the phrase "configured
to" is a product-by-process limitation because there is a difference between
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Application 13/546, 135
how the device is capable of being used and the structure of the device. As
noted above, Bruckhoff' s inlet portions 50, 51 and exhaust portions 60-66
are not necessarily designed or constructed to be used in casings for turbines
using a "plurality" or "different" operating rotational speeds. See In re
Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of claims 1--4 and 6-9 as anticipated by
Bruckhoff.
Rejection II
The Examiner finds that Roy discloses
a front section;
a middle section; and
an end section wherein the front section, middle section, and
end section being cast together to form the casing, and the front
section and the end section are configured to be usable in
turbines using a plurality of rotational speeds and the middle
section is configured to form a turbine for a predetermined
rotational speed to adapt the turbine
to a different power grid frequency.
Final Act. 11. The Examiner further finds that "each section, the front,
middle and end are configured to form a turbine for a predetermined
rotational speed and that the casing is designed to be used for a specific
power grid frequency." Id. Furthermore, according to the Examiner, the
phrase "configured to" is "treated as a product-by-process limitation." Id. at
12.
In response, Appellant argues that Roy "do[ es] not divide its steam
turbine into a front section, a middle section and an end section, and do [es]
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Application 13/546, 135
not mention that the front and end sections are configured to be useable in
turbines using a plurality of rotational speeds." Br. 6. Moreover, Appellant
contends that it is not inherent in Roy "that the front section and the end
section are configured to be useable in turbines using a plurality of rotational
speeds." Id. at 7. Moreover, as noted above, Appellant asserts that "the
Examiner's interpretation of 'configured to' as being a product-by-process
limitation is incorrect." Id. at 8.
The Examiner responds that because "[ e ]very turbine ... must go
through a plurality of rotational speeds in order to reach its operating speed"
"the front and end sections ... [are] configured to be useable in turbines
using a plurality of rotational speeds." Ans. 17.
It is well settled that an anticipation rejection cannot be predicated on
an ambiguous reference. Rather, disclosures in a reference relied on to
prove anticipation must be so clear and explicit that those skilled in the art
will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d
893, 899, (CCPA 1962). In this case, the Examiner does not point to any
portion of Roy to support the finding that "the front section and the end
section are configured to be usable in turbines using a plurality [or different]
... rotational speeds," as called for by each of independent claims 1, 8, and
9. See Final Act. 11, 13, and 15. As discussed supra in Rejection I, we
construe the limitations of a "plurality" or "different" rotational speeds to
mean the operating rotational speed of the turbine and not the ramping speed
between zero and the operating rotational speed. See Ans. 17. Furthermore,
the Examiner also does not adequately explain where Roy necessarily
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Application 13/546, 135
discloses using front and end portions in turbines using a "plurality" (as per
claim 1) or "different" operating rotational speeds (as per claims 8 and 9).
In conclusion, for the foregoing reasons, we likewise do not sustain
the rejection under 35 U.S.C. § 102(b) of claims 1, 3, 4, 8, and 9 as
anticipated by Roy.
Re} ections III and IV
The Examiner's modification of either Bruckhoff or Roy does not
remedy the deficiency of these references as discussed above. See Final Act.
16-18.
Therefore, for the same reasons discussed above, we also do not
sustain the rejections under 35 U.S.C. § 103(a) of claim 5 as unpatentable
over Bruckhoff and of claims 5-7 as unpatentable over Roy.
SUMMARY
The Examiner's decision to reject claims 1-9 is reversed.
REVERSED
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