Ex Parte Otto

Patent Trial and Appeal Board

May 26, 2016

13484878 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/484,878 05/31/2012 John R. Otto
54549 7590 05/31/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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.
PA0022579U;67097-1897PUS1 1779
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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 JOHN R. OTT01
Appeal2014-003730
Application 13/484,878
Technology Center 3700
Before JENNIFER D. BAHR, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John R. Otto ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 18-22 and 24--31.2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the Real Party in Interest is United Technologies
Corporation. Appeal Br. 1.
2 The Examiner indicates that claim 23 would be allowable if rewritten to
overcome the rejection under 35 U.S.C. § 112 i-f 2 and to include all
limitations of the base claim and any intervening claims. Final Act. 22.
Appeal2014-003730
Application 13/484,878
CLAIMED SUBJECT MATTER
The invention concerns a gear assembly support for a gas turbine
engine. Spec., Abstract. Claim 18, the only independent claim, is
illustrative of the subject matter on appeal, and recites:
1. A method of servicing a gas turbine engine that includes a
fan that is rotatable about an axis, a geared architecture for
rotating the fan about the axis, and a support member that
supports the geared architecture within the gas turbine engine,
the method comprising:
accessing a plurality of removal features on the support
member from a position in front of the gas turbine engine; and
exerting a pulling force on at least some of the removal
features in a direction parallel to the axis from the position in
front of the gas turbine engine, each of the removal features
having a plurality of engaging surfaces oriented relative to each
other to resist any bending moment on the support member
responsive to the pulling force.
Appeal Br. 12, Claims App. (emphasis added).
REJECTIONS3
The claims stand rejected as follows:
I. Claims 18 and 29 under 35 U.S.C. § 112 i-f 2 as indefinite.
II. Claims 18-22, 24, 25, and 29-31 under 35 U.S.C. § 103(a) as
unpatentable over Moniz (US 7,490,460 B2, iss. Feb. 17, 2009),
Mancuso (Jon R. Mancuso & Roger Jones, Coupling Interface
3 In the Answer, the Examiner withdraws a provisional nonstatutory double
patenting rejection. Ans. 2. Additionally, the Examiner's objection to the
drawings is reviewable by petition under 3 7 C.F .R. § 1.181, not by appeal to
the Board. See Appeal Br. 9-1 O; see Ex Parte Frye, 94 USPQ2d 1072,
1075-76 (BPAI 2010).
2
Appeal2014-003730
Application 13/484,878
Connection, Proceedings of the 30th Turbomachinery
Symposium), Cornwell (US 1,858,238, iss. May 17, 1932), and
Sawaya (US 6,581,265 B2, iss. June 24, 2003).
VI. Claims 26-28 under 35 U.S.C. § 103(a) as unpatentable over
Moniz, Mancuso, Cornwell, Sawaya, and Lewis (US 5,230,540,
iss. July 27, 1993).
Claim 18
ANALYSIS
Indefiniteness under 3 5 U.S. C. § 112 f 2
The Examiner finds that claim 18 is "incomplete for omitting essential
steps, such omission amounting to a gap between the necessary structural
connections." Final Act. 4. The Examiner finds the omitted steps to be:
providing a plurality of removal features each having a stem and
an arcuate cross member located at a distal end of said stem, said
stem protruding from said outer portion parallel to said
longitudinal axis and towards a front portion of said housing, said
arcuate cross member including a first tab and a second tab, said
first tab protruding from a side of the stem facing radially inward
towards said longitudinal axis and said second tab protruding
from a side of the stem facing radially outward away from said
longitudinal axis; and providing a plurality of engaging surfaces
located on a side of said arcuate cross member facing away from
said front portion of said housing, said plurality of engaging
surfaces including a first planar surface and a second planar
surface, said first planar surface oriented perpendicular to said
longitudinal axis and located on said first tab, said second planar
surface oriented perpendicular to said longitudinal axis and
located on said second tab; equivalently dividing said pulling
force into a plurality of individual pulling forces applied at
individual removal features of said at least some of the removal
features, each of said plurality of individual pulling forces further
3
Appeal2014-003730
Application 13/484,878
divided into a first pulling force and a second pulling force, said
first pulling force applied to said first planar surface resulting in
a first bending moment around said distal end of said stem, said
second pulling force applied to said second planar surface
resulting in a second bending moment around said distal end of
said stem; and resisting any bending moment on the support
member responsive to the individual pulling forces by applying
said first pulling force and said second pulling force so that the
first bending moment and the second bending moment are equal
in magnitude but opposite in direction.
Id. at 4--5. The Examiner finds that these steps are essential to performing
the claimed limitation of "exerting a pulling force on at least some of the
removal features in a direction parallel to the axis from the position in front
of the gas turbine engine, each of the removal features having a plurality of
engaging surfaces oriented relative to each other to resist any bending
moment on the support member responsive to the pulling force," because,
without these steps, a bending moment would be generated. Id. at 5-10.
Appellant argues that "the Examiner does not in any way establish a
basis for how the language quoted above fills in any alleged gap between the
steps." Appeal Br. 3. Appellant argues that the Specification does not
disclose these steps as critical and "there are a variety of ways to include a
removal feature that facilitates the method of Appellant's claims. The
particular language suggested by the Examiner might cover one particular
embodiment of such a support member. Appellant is not required, however,
to unnecessarily limit its claims to read solely on a particular embodiment."
Id. at 4--5.
We are persuaded by Appellant's argument. The Examiner has not
shown persuasively that these purportedly "essential" steps are critical to
4
Appeal2014-003730
Application 13/484,878
Appellant's method, rather than describing how that method may be
performed in a preferred embodiment. 4 Furthermore, the Examiner has not
shown that a person of ordinary skill in the art would not understand the
scope of the claim in the absence of these purportedly essential steps.
Therefore, we cannot sustain the Examiner's rejection.
Claim 29
The Examiner finds that "partially flexible," appearing in claim 29, is
a relative term that renders the claim indefinite, because the term is not
defined by the claim and the Specification does not provide a standard for
ascertaining the requisite degree. Final Act. 4.
Appellant contends that a person of ordinary skill in the art would
readily recognize what is meant by this language, especially in light of
paragraph 49 of the Specification, which states that "the support member 'is
at least partially flexible for supporting the geared architecture 48 within the
engine 20 in a manner that accommodates some limited relative movement
between the geared architecture 48 and the axis A resulting from forces
associated with operation of the engine.'" Appeal Br. 6.
We are persuaded by Appellant's argument. Appellant's
Specification provides a standard by which a person of ordinary skill in the
4 We are unpersuaded by the Examiner's argument that MPEP 2164.08(c),
cited by Appellant and discussing enablement, is inapplicable to the pending
indefiniteness rejection. Ans. 4. The Examiner's rejection cites MPEP
2172.01, which directs attention to MPEP 2164.08(c). Appellant's
discussion of this portion of the MPEP, therefore, is reasonable because the
issues presented by claims that allegedly omit essential steps are related to
both indefiniteness and enablement.
5
Appeal2014-003730
Application 13/484,878
art can ascertain the requisite degree of flexibility required by the claims. In
other words, "partial flexib[ility]" is described as sufficient flexibility to
permit "some, limited relative movement between the geared architecture 48
and the axis A." Spec. i-f 49; see also Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364, 1370-71 (Fed. Cir. 2014) ("Although absolute or
mathematical precision is not required ... [t]he claims, when read in light of
the specification and the prosecution history, must provide objective
boundaries for those of skill in the art."). Therefore, we cannot sustain the
Examiner's rejection.
Obviousness over Moniz, Mancuso, Cornwell, and Sawaya - Claims 18-22,
24, 25, and 29-31
The Examiner finds that Moniz discloses a gas turbine engine
comprising a support member (320) for supporting geared architecture
( 100), wherein the support member (3 20) includes a plurality of removal
features (390), each of which has a plurality of engaging surfaces (walls of
390). Final Act. 10-11. The Examiner finds that Moniz is silent regarding a
method of servicing the gas turbine engine comprising the claimed steps of
accessing a plurality of removal features from the front of the engine, and
exerting a pulling force on at least some of the removal features, each of the
removal features having engaging surfaces oriented relative to each other to
resist any bending moment on the support member responsive to the pulling
force. Id. at 11. The Examiner concludes that it would have been obvious to
a person of ordinary skill in the art to access removal features from the front
of the engine, due to the structure of the engine. Id. at 11-14.
The Examiner also finds that Mancuso teaches that it was known to
remove a gear housing from a shaft by using a wheel puller, and that gas
6
Appeal2014-003730
Application 13/484,878
turbines were known to include tight fitting couplings with which a puller
was used. Id. at 14. The Examiner finds that Cornwell and Sawaya teach
specific wheel pullers with circumferentially arranged pulling elements that
generate a pulling force. Id. at 14--15. The Examiner concludes that "it
would have been recognized" by a person of ordinary skill in the art to
"apply[] the known technique taught by Mancuso and using the known
wheel pullers taught by Cornwell and Sawaya to the geared architecture
(100) support member of Moniz[, which] would have yielded predictable
results and resulted in an improved system, namely, a system [having the
claimed orientation and functional capability]." Id. at 15. The Examiner
finds that the claimed method steps would have been performed by the
structure taught by the prior art. Id.
Appellant argues, inter alia, that Moniz' slots 390 cannot be
characterized as removal features having engaging surfaces, as claimed.
Appeal Br. 7. Appellant contends that "[t]here is nothing within the Moniz
reference that in any way indicates how the slots 390 would be used for
exerting a pulling force" and, therefore, a person of ordinary skill in the art
would have no reason to combine the references as claimed. Id. (emphasis
omitted); Reply Br. 4--5. "Appellant is attacking the Examiner's lack of an
articulated rationale for even beginning the proposed combination based on
the slots 390." Id.
We are persuaded by Appellant's arguments. The Examiner fails to
provide articulated reasoning with rational underpinning to support the
proposed combination of references. The Examiner concludes that a
"puller," to be used for removal of geared architecture 100, could be added
7
Appeal2014-003730
Application 13/484,878
to Moniz' slots 390. However, this combination disregards Moniz' explicit
disclosure that slots 390 absorb thrust load. Moniz 8:21-31. These slots are
not used for removal in any way. The Examiner fails to explain why a
person of ordinary skill in the art, faced with Moniz' thrust absorbing slots,
would have been motivated to add a wheel puller to that structure. 5 The
Examiner's conclusion that the proposed combination "would have yielded
predictable results and resulted in an improved system," is conclusory and
does not articulate reasonably why the combination would have been
obvious in the first place. "[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Therefore, we cannot sustain the Examiner's rejection of claim 18, or
claims 19-22, 24, 25, and 29-31, which depend therefrom.
Obviousness over Moniz, Mancuso, Cornwell, Sawaya, and Lewis -
Claims 26--28
The Examiner does not rely on Lewis to cure the above-noted
deficiencies in the Examiner's rejection of claim 18. Therefore, for the
5 We understand that claim terms are construed broadly during examination,
(see Ans. 12-13), however, the construction afforded to claim terms must be
reasonable. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
Cir. 2015) ("A construction that is 'unreasonably broad' and which does not
'reasonably reflect the plain language and disclosure' will not pass
muster."). Here, the Examiner's construction of "removal features" to
include thrust absorbing slots that are not used for removal, is unreasonable.
8
Appeal2014-003730
Application 13/484,878
reasons discussed above with respect to claim 18, we cannot sustain the
Examiner's rejection of claims 26-28.
DECISION
The rejections of claims 18-22 and 24--31 is REVERSED.
REVERSED
9