Ex Parte Pent et al

Patent Trial and Appeal Board

Nov 30, 2018

14132007 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/132,007 12/18/2013
28524 7590 12/04/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
Jared M. Pent
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.
2013Pl4212US 1551
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARED M. PENT JUAN,
JUAN ENRIQUE PORTILLO BILBAO,
PERRY L. JOHNSON, ESAM ABU-IRSHAID,
WALTERR. LASTER, SCOTT M. MARTIN, and
RAFIK N. ROF AIL
Appeal2018-002694
Application 14/132,007
Technology Center 3700
Before: CHARLES N. GREENHUT, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2018-002694
Application 14/132,007
CLAIMED SUBJECT MATTER
The claims are directed to an axial stage injection dual frequency
resonator for a combustor and gas turbine engine. Claim 1, reproduced
below, with emphasis added, is illustrative of the claimed subject matter:
1. A gas turbine engine comprising:
a combustor;
a casing enclosing the combustor and defining a volume
containing air; and
a secondary fuel stage for delivering a mixture of fuel and
air to the combustor at a location downstream from a main
combustion zone of the combustor;
wherein the secondary fuel stage comprises a nozzle that
defines a cavity in fluid communication with the volume defined
by the casing;
wherein the cavity defined by the nozzle is configured to
dampen a frequency corresponding to a resonant transverse
mode of the combustor;
wherein the cavity defined by the nozzle and the volume of
the casing comprise a cavity combination configured to dampen
a frequency corresponding to a resonant longitudinal mode of
the combustor; and
wherein the cavity defined by the nozzle and the cavity
combination respectively form a resonator arrangement effective
to simultaneously dampen the resonant transverse mode and the
resonant longitudinal mode of the combustor.
REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement. Non-Final Act. 6-17.
Claims 1-20 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the enablement requirement. Non-Final Act. 17-23.
Claims 1, 12, 18, and 20 are rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Kashihara (US 8,172,568 B2; May 8, 2012) or, in the
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alternative, under 35 U.S.C. § 103 as unpatentable over Kashihara in view of
Gulati (US 5,644,918; July 8, 1997). Non-Final Act. 24--27.
Claims 2, 3, 5-8, 10, 11, 13-16, 18, and 19 are rejected under 35
U.S.C. § 103 as being unpatentable over Kashihara and Gulati. Non-Final
Act. 3 8--44.
Claims 4, 9, and 17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kashihara, Gulati and Venkataraman (US PG Pub
2010/0170216 Al; July 8, 2010). Non-Final Act. 45--48.
OPINION
§112(a)
It has been held that the first paragraph, now paragraph (a), of§ 112
contains two separate and distinct requirements for written description and
enablement. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991). The Examiner provides a separate analysis regarding each
requirement. See Non-Final Act 6-23. Indeed, each requirement of§ 112(a)
may form a separate and distinct "ground" for rejecting claims under that
paragraph of the statute 1 which imposes a requirement for separate briefing
under 37 C.F.R. § 4I.37(c)(l)(iv)("The arguments shall explain why the
examiner erred as to each ground of rejection contested by appellant. .. Each
ground of rejection contested by appellant must be argued under a separate
heading, and each heading shall reasonably identify the ground of rejection
being contested."). Appellants, however, have provided only a single general
1 See, e.g., Hyattv. Dudas, 551 F. 3d 1307, 1312 (Fed. Cir. 2008) ("[A]
"ground of rejection" for purposes of [now 37 C.F.R. § 4I.37(c)(l)(iv)] is
not merely the statutory requirement for patentability that a claim fails to
meet but also the precise reason why the claim fails that requirement.")
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discussion in response to the Examiner's rejections under§ 112(a). App. Br.
11-13.). "Filing a Board appeal does not, unto itself, entitle an appellant to
de nova review of all aspects of a rejection." See Ex Parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (citations omitted). Only issues and
findings of fact contested by the Appellant will be addressed. Id.
The main issues raised by the Examiner regarding compliance with
the respective requirements of§ 112(a) are that the last three wherein
clauses of claim 1, emphasized above, and the similar clauses of independent
claims 12 and 18, involve the mere recitation of goals or desired results
without a supporting disclosure (1) demonstrating Appellants had actual or
constructive possession of a gas turbine engine or gas turbine engine
resonator configured to achieve those results (Non-Final Act. 13-14); and
(2) explaining how to make and use a gas turbine engine or resonator
configured to achieve those results without the need for undue
experimentation (Non-Final Act. 23 (concluding a discussion of the factors
discussed in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)).
The wherein clauses in question serve to define the configuration of
various cavities entirely by how they act to dampen certain frequencies. This
functional definition of the cavities' configuration renders the claim quite
broad, covering any and all embodiments which perform the recited
damping functions. See In re Swinehart, 439 F. 2d 210 (CCPA 1971).
"Legitimate concern often properly exists, therefore, as to whether the scope
of protection defined thereby is warranted by the scope of enablement
indicated and provided by the description contained in the specification." Id.
Similarly, the written description requirement serves to ensure "the inventor
actually invented the invention claimed." Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). "[T]he scope of the right to
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exclude must not overreach the scope of the inventor's contribution to the
field of art as described in the patent specification." Id. (citations and
internal quotations omitted). Thus, a rational starting point regarding both
inquiries is Appellants' Specification. Where the Examiner raises concerns
as to compliance with the requirements of§ 112(a), Appellants are in the
best position to direct the PTO' s attention to the precise portions of the
disclosure relied upon to provide support for the subject matter claimed.
This has not been done.
Appellants begin by arguing that they have disclosed a resonator
arrangement "effective to simultaneously dampen a resonant transverse
mode and a longitudinal mode of the combustor." App. Br. 11 (citing Spec.
p. 2). Appellants do correctly point out (Reply. Br. 2-3) that the proper focus
of the inquiry concerning the adequacy of the disclosure should not be on the
portion of the recitation involving the term "simultaneously," as the
Examiner repeatedly stresses in the Examiner's Answer (see Ans. 2-26).
Independent claim 12 does not use the term "simultaneously" but the
Examiner raises a similar issue with regard to the nozzle cavity's recited
dual functionality ( Ans. 10-13 ). The Specification does indicate that "[ e Jach
nozzle 217, by itself, is sized to be effective as a transverse resonator, to
dampen a transverse frequency corresponding to a resonant transverse mode
combustion-induced vibrations of the combustor 21 O" (Spec. 3) and "[ t ]he
combination of the nozzle 217 and the casing volume 214 (FIG. 3) are
effective as a longitudinal resonator" (Spec. 5 (emphasis added)). Reply. Br.
2-3. The exact nature of this "simultaneous" functionality is set forth most
clearly in claim 18, due to Appellants' use of the words "respective," and
"respectively." However, read in light of the Specification, the nature of this
"simultaneous" functionality is also clear with regard to claims 1 and 12.
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There does not appear to exist substantial or significant doubt that,
theoretically speaking, a nozzle cavity, or cavities, could, per se, serve the
dual function of providing damping itself, or themselves, while also being
part of a larger, Helmholz-type damper tuned to a different frequency.
However, the mere repetition or clearer explanation of this general goal in
the Specification is not necessarily sufficient to demonstrate possession of,
or teach others how to make and use, a gas turbine engine or gas turbine
engine resonator configured to achieve this goal.
The only portion of the Specification to which Appellants direct our
attention (p. 2, last paragraph) merely identifies the problem Appellants
sought to solve involving the need for additional resonator componentry, and
makes the assertion that Appellants solved it: "[T]he present inventors
developed a resonator using the existing components that direct and combust
fluid in the combustion chamber, and thus eliminated the need for additional
components." A naked assertion of possession in the Specification without
more does not necessarily amount to detail sufficient to demonstrate
possession or, for that matter, provide enablement. Appellants do not make
any further effort to apprise us of any supporting disclosure in Appellants'
Specification and instead tum to the knowledge generally available to the
skilled artisan as evidenced by the Gulati reference and the Portillo
declaration (Feb. 1, 2017). App. Br. 12-13.
It appears to have been the Examiner that first introduced the Gulati
reference into the§ 112(a) analysis. See Non-Final Act. 11, 19. The
Examiner takes the position that the equation governing the frequency
response of Helmholtz resonators described in Gulati (col. 4, 11. 1--4) would
dictate in the present application and Appellants have not provided sufficient
detail so as to solve that equation. Final Act. 13, 19. However, as Appellants
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correctly point out (App. Br. 12), providing precise numerical values to
solve an equation is not necessarily a requirement to comply with§ 112(a).
Where there is a known governing equation, it would seem to suffice to
demonstrate actual or constructive possession by demonstrating,
respectively, that the applicant solved, or could solve the equation to arrive
at a working device. Similarly, it would seem to suffice to satisfy the
enablement requirement by showing that one skilled in the art could find a
solution without undue experimentation, even if some experimentation is
required to select values for multiple unknown variables. As Appellants
correctly point out (App. Br. 12), the patent disclosure is written for the
skilled artisan. However, we are not apprised of sufficiently good reasons for
either the Appellants or the Examiner to rely on the equation set forth in
Gulati in the first place.
Appellants' Specification, although mentioning, in a single instance,
that "[i]n an exemplary embodiment, the casing volume 214 acts as a cavity
and the nozzles 217 act as a neck of a Helmholtz resonator, for example"
(Spec. 5: 15-17), does not provide sufficient reason to believe that in all
embodiments covered by the claims before us, the equation disclosed in
Gulati is controlling with respect to the recited "cavity combination." For
example, none of the claims before us limit the claimed subject matter to the
exemplary arrangement described in the Specification where the cavity
combination acts as, and thus would be governed by the equations
concerning the frequency response of, a Helmholtz resonator. In Gulati, a
plurality of throats 50, of unspecified cross-sectional shape, specifically
designed to act in conjunction with respective portions of a cavity 56 to
create "independent" resonators that Gulati expressly indicates are governed
by the given Helmholtz resonator frequency equation. Gulati col. 3, 1. 45-
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col. 4, 1. 21 (cited at Final Act. 11, 13, 19, 20). This differs from Appellants'
disclosure which does not provide any indication that in order to be
"configured to dampen a frequency corresponding to a resonant longitudinal
mode of the combustor" according to claim language, the "cavity
combination" must be configured to act as a single Helmholtz resonator.
Gulati also teaches using these independent resonators to attenuate multiple
frequencies. In contrast, Appellants' Specification states, "[i]n an exemplary
embodiment, the longitudinal frequency dampened by the longitudinal
resonator may depend on a combination of the casing volume and the sum of
all of nozzles within each combustor," which suggests that the equation
referred to in Gulati for each independent Helmholtz resonator is not
necessarily controlling, or must at least be modified in some undisclosed
way, to be applicable to Appellants' claimed arrangement. Appellants also
do not apprise us of any disclosure in the Specification regarding the
governing equations and variables related to the damping characteristics of
the nozzle or nozzles themselves. Nor do Appellants explain why such is not
needed in the disclosure. 2 Appellants do not explain how the simulation of
2 We agree with the Appellants that it is contradictory for the Examiner to
regard something as generally known for the purposes of an obviousness
rejection while requiring an express disclosure of that same subject matter
for purposes of compliance with§ 112(a). However, it is also contradictory
for Appellants to argue that to comply with§ 112(a) of Appellants need not
make an express disclosure of the precise subject matter Appellants seek to
rely on to patentably distinguish their invention over the prior art. We agree
with the Examiner that the PTO' s advancement of seemingly contradictory
positions are sometimes necessary for purposes of compact prosecution.
Ans. 24. Patent prosecution is an interactive process during which it is
sometimes necessary for the PTO to take somewhat conflicting positions in
order to require an applicant to provide the best evidence or argument
available on which the PTO can base an ultimate decision. It is noted that we
reverse the Examiner's prior-art rejections below.
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Portillo could be performed to arrive at the claimed gas turbine engine or gas
turbine engine resonator without knowledge of the governing equations that
would be used by the simulation.
The declaration includes Exhibit A having Figure 1 depicting
simulation parameters that use what appears to be a narrow cylinder
representing the chamber of a nozzle and a wider cylinder representing the
chamber defined by the casing. 3 The frequency response output of this
simulation is depicted in Figure 2 which is essentially the same as Figure 8
of the present application. Adjacent the figures are bullet points stating:
• The FRF clearly shows the ability of this concept to resonate at
two frequencies that are an order of magnitude apart, applying to
a longitudinal and transverse mode simultaneously
• The magnitude of the frequency response function as well as the
target frequencies can be adjusted by changing the appropriate
design parameters
"[C]oncept" is an appropriate word choice by the declarant because, at most,
that is all the declaration and exhibit really attempt to establish. As observed
above, there does not appear to exist substantial or significant doubt that,
theoretically speaking, a nozzle cavity, or cavities, could, per se, serve the
dual function of providing damping itself, or themselves, while also being
part of a larger, Helmholtz-type damper tuned to a different frequency.
Whether Appellants' simple model of what appears to be a theoretical
Helmholtz resonator suffices to satisfy the requirements of§ 112(a) in a
manner that justifies granting Appellants exclusive rights to any and all gas
turbine engines, or gas turbine engine resonators, having actual nozzles and
casings that can, in practice, accomplish this task is a different issue.
3 The best available copy of Figure 1 attached to the declaration does not
appear to include complete labeling of P' 1 and P'2 .
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We find no discussion in the Specification or declaration as to why the
simulation model is appropriate, for both modeling a single "cavity
combination" arrangement in a gas turbine engine, and for modeling a
plurality of them (see, e.g., dependent claim 5). Said differently, it is not
clear why the simulation accurately represents even a single embodiment
falling within the scope of the claims, and even if it did, the functional
language of the independent claims would clearly cover significantly more
than just that embodiment purportedly demonstrated by the simulation.
Moreover, while the knowledge of the skilled artisan is considered in an
injury under§ 112(a) it is the Specification that must satisfy the
requirements of that statutory section. Ariad, 598 F.3d at 1352 ("A
description that merely renders the invention obvious does not satisfy the
written description requirement.").
We are looking for specific direction from Appellants to demonstrate
possession of the subject matter now claimed, or to refute specific points in
the Examiner's analysis under Wands, and we are finding none. Appellants
attempt to claim subject matter encompassing any and all gas turbine
engines or gas turbine engine resonators exhibiting the damping
characteristics recited based only on a single simulation involving two
perfect cylinders is an "attempt to preempt the future before it has arrived."
Ariad, 598 F.3d at 1353. Thus, on the record presently before us we agree
ultimately with the Examiner that a grant of exclusive rights to any and all
gas turbine engines, or gas turbine engine resonators, having nozzles and
casings that can accomplish the results recited would run afoul of the basic
quid pro quo of the patent grant:
Patents are not awarded for academic theories, no matter how
ground-breaking or necessary to the later patentable inventions
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of others. [A] patent is not a hunting license. It is not a reward
for the search, but compensation for its successful conclusion.
Requiring a written description of the invention limits patent
protection to those who actually perform the difficult work of
"invention" - that is, conceive of the complete and final
invention with all its claimed limitations - and disclose the
fruits of that effort to the public.
Ariad, 598 F. 3d at 1353 (citations and internal quotations omitted).
Accordingly, we sustain the Examiner's rejections under 35 U.S.C. § 112(a)
as failing to comply with the written description and enablement
requirements. 4
Prior-art rejections
In rejecting the independent claims as anticipated by Kashihara, the
Examiner states, with respect to the wherein clauses emphasized above, that
they are "statement[s] of intended use" and "given little patentable weight."
Final Act. 25. The concept of affording or not affording limitations
"patentable weight" stems from the question of whether those limitations
can, or do, distinguish over the prior art. See, e.g., In re Schreiber 128 F.3d
1473, 1477-79 (Fed. Cir. 1997). When functional limitations such as those
before us are at issue, contrary to the Examiner's analysis (Ans. 32), the
4 We recognize we have disagreed with certain aspects of the Examiner's
analysis as discussed above. As we have only departed from the Examiner's
analysis by not relying on certain aspects of it, as opposed to supplementing
it, we believe Appellants have been afforded a fair opportunity to respond to
the merits of the Examiner's§ 112(a) rejections for purposes of this appeal.
Should Appellants disagree, Appellants are reminded of the requirement to
explain why pursuant to 37 C.F.R. § 4I.50(c). Appellants are also reminded
of the limitations on rehearing requests discussed in 37 C.F.R. § 41.52 and
Ex Parte Janakiraman (BP AI 2009) (Informative) ( available at
http://www.uspto.gov/ip/boards/bpai/decisions/inform/rh080998.pdf)
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inquiry involves the question of inherency. See id.; see also MPEP § 2114. It
is true that if Kashihara's device can reasonably be regarded by the skilled
artisan as configured to perform the recited function, even if Kashihara itself
does not contain an express disclosure indicating that it does so, Kashihara's
device could be regarded as anticipatory. Stated differently, the recitation of
latent functional characteristics of a known device does not permit the
granting of a new patent covering that known device. Where functional
limitations serve to distinguish over the prior-art device they do so by
implying something about the structure of the claimed device that
distinguishes it from the prior art. If those limitations do not create such a
distinction an anticipation rejection is proper.
In re Swinehart, supra, and its progeny indicate that where an
examiner has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, the examiner possesses the
authority to require an applicant to prove that the subject matter shown to be
in the prior art does not possess the characteristic relied on. Nevertheless,
before an applicant can be put to this burdensome task, the examiner must
provide sufficient evidence or scientific reasoning to establish there is a
sound basis for the examiner's belief that the functional limitation is an
inherent characteristic of the prior art. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990). The fact that a certain result or characteristic may occur or
be present in the prior art is not sufficient to establish the inherency of that
result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993).
Inherency 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). In relying
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upon the theory of inherency, the examiner must provide a basis in fact
and/or technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990); see
also MPEP § 2112.
We are mindful of the difficulties pointed out by the Examiner (Ans.
26-31) in this case in analyzing Kashihara to determine if there exists any
structural distinction between the claimed subject matter and Kashihara's
structure when we are not apprised of even one specific structural
arrangement falling within the scope of the claimed subject matter as
discussed above with regard to the rejections under§ 112(a). However, as
the Examiner acknowledges (id.), this difficulty relates more to clarity of
scope issues arising under § 112(b )5 rather than showing a sound basis for an
anticipation rejection predicated on inherency under§ 102(a)(l). As the
Examiner has not presented sufficient evidence or technical reasoning to
explain why a skilled artisan would regard the Kashihara structures relied on
by the Examiner as necessarily configured to perform the recited damping
functions, we do not sustain the Examiner's anticipation rejection.
Turning to Gulati, Gulati, as discussed above, discloses essentially no
more than independent and dedicated Helmholtz-type resonators used with
gas turbine combustors. This is similar to the admitted prior art upon which
Appellants' Specification indicates an intention to improve upon as
discussed above. The only disclosure of record relating to Gulati' s dedicated
throats 58 to Kashihara's nozzles is found in Appellants' own Specification.
5 No such rejection is presently before us for review. Although the Board is
authorized to reject claims under 37 C.F.R. § 4I.50(b), no inference should
be drawn when the Board elects not to do so. See MPEP § 1213.02.
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It is improper to base a conclusion of obviousness upon facts gleaned only
through Appellants' own Specification. To draw on hindsight knowledge of
the patented invention, when the prior art does not contain or suggest that
knowledge, is to use the invention as a template for its own reconstruction-
an illogical and inappropriate process by which to determine patentability.
Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)
(citing W.L. Gore &Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983)). Accordingly, we do not sustain the Examiner's obvious rejections
either.
DECISION
The Examiner's rejections under§ 112(a) are affirmed.
The Examiner's prior-art rejections are reversed.
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).
AFFIRMED2
6 "The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed" 37 C.F.R. § 4I.50(a).
14