Ex Parte Perez et al

Patent Trial and Appeal Board

Jun 20, 2018

13618178 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/618,178 09/14/2012 Rafael A. Perez
54549 7590 06/22/2018
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.
67097-1999PUS1;62815US01 2440
EXAMINER
SEABE, JUSTIN D
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RAFAEL A. PEREZ, EDWARD F. PIETRASZKIEWICZ,
JEFFREY R. LEVINE, and DOMINIC J. MONGILLO
Appeal2016-003694
Application 13/618,178 1
Technology Center 3700
Before BART A. GERSTENBLITH, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rafael A. Perez et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-18. We have jurisdiction
under 35 U.S.C. § 6(b ).
1 Appellants identify "UNITED TECHNOLOGIES CORPORATION" as
the real party in interest. Appeal Br. 1.
Appeal2016-003694
Application 13/618,178
Claimed Subject Matter
Claims 1 and 12, the independent claims on appeal, are illustrative of
the claimed subject matter and are reproduced below.
1. A gas turbine engine component comprising:
a structure having a cooling passage providing upstream
and downstream portions separated from one another by an
inner wall and fluidly connected by a bend, the downstream
portion included an outer wall opposite the inner wall to
provide a downstream region extending between the inner and
outer walls; and
a turbulence promoter extending from the outer wall
adjacent to the bend in the downstream portion, the turbulence
promoter absent from a stagnation region adjoining the inner
wall adjacent to the bend in the downstream portion, wherein
the bend is free from obstructions.
12. A gas turbine engine comprising:
a compressor section and a turbine section, and a
combustor section arranged between the compressor and
turbine sections;
one of the compressor and turbine sections comprising an
airfoil, the airfoil including:
pressure and suction walls spaced apart from one another
and joined at leading and trailing edges extending in a radial
direction, the airfoil has a cooling passage arranged between the
pressure and suction walls that extends toward a tip of the
airfoil, the cooling passage providing upstream and downstream
portions separated from one another by an inner wall and
fluidly connected by a bend, the downstream portion includes
an outer wall opposite the inner wall to provide a downstream
region extending between the inner and outer walls; and
a turbulence promoter extending from the outer wall
adjacent to the bend in the downstream portion, but the
turbulence promoter absent from a stagnation region adjoining
the inner wall adjacent to the bend in the downstream portion,
wherein the bend is free from obstructions.
Appeal Br. 9-10, Claims App.
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Application 13/618,178
Rejections
Appellants seek review of the following rejections:
I. Claims 1-18 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement;
II. Claims 1-5, 9-16, and 18 are rejected under 35 U.S.C. § I02(b)
as anticipated by Liang (US 6,939,102 B2, iss. Sept. 6, 2005);
III. Claims 1-5 and 8-11 are rejected under 35 U.S.C. § I02(b) as
anticipated by Halfmann (US 6,974,308 B2, iss. Dec. 13,
2005)2;
IV. Claims 6 and 7 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Halfmann and Abdel-Messeh
(US 2009/0104035 Al, pub. Apr. 23, 2009);
V. Claims 12-16 and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Halfmann and Liang;
VI. Claims 6-8 and 17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Liang and Abdel-Messeh;
VII. Claim 17 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Halfmann, Liang, and Abdel-Messeh;
VIII. Claims 1-5 and 8-11 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Papple (US 6,257,831 B 1, iss. July 10, 2001)
and Halfmann;
2 The Examiner's heading for this rejection omits mention of claim 8. Final
Act. 4. Claim 8, however, is identified in the body of the rejection and the
limitations thereof are mapped to Halfmann. See id. at 5.
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Application 13/618,178
IX. Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Papple, Halfmann, and Abdel-Messeh;
X. Claims 12-16 and 18 are rejected as unpatentable under
35 U.S.C. § 103(a) over Papple, Halfmann, and Liang; and
XI. Claim 17 is rejected as unpatentable under 35 U.S.C. § 103(a)
over Papple, Halfmann, and Abdel-Messeh.
SUMMARY OF DECISION
We AFFIRM.
ANALYSIS
Rejection I
The Examiner finds that the phrase "wherein the bend is free from
obstructions," recited in claims 1 and 12, fails to comply with the written
description requirement. Final Act. 3 (mailed Apr. 24, 2015). In particular,
the Examiner explains that the claims were amended to include the phrase,
which the Examiner finds is a negative limitation. Id. The Examiner finds:
While the drawings do not have obstructions, express negative
limitations require express support or suggestion in the
originally filed disclosure. The specification as filed does not
suggest, nor expressly state, that the serpentine path at the bend
is free from obstructions. The utilization of the word
"obstruction" is not utilized in the specification, nor is any
synonym or like-term.
Id. Thus, the Examiner finds that the claims contain new matter. Id.
Appellants raise essentially two arguments in response. First,
Appellants contend that the Examiner misapplied the law regarding negative
limitations, arguing that negative limitations are permitted and "require no
positive recitation in the text of the disclosure." Appeal Br. 3; see Reply
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Application 13/618,178
Br. 1. Second, Appellants assert that the language "wherein the bend is free
from obstructions" is supported by Appellants' drawings, as the Examiner
acknowledges. Appeal Br. 3; see Reply Br. 1-2.
"Negative limitations are adequately supported when the specification
describes a reason to exclude the relevant limitation." Inphi Corp. v. Netist,
Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015) (quoting Santarus, Inc. v. Par
Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012)). "The 'reason' required
by Santarus is provided, for instance, by properly describing alternative
features of the patented invention." Id. at 1356 (citing In re Johnson, 558
F.2d 1008, 1019 (CCPA 1977)); see MPEP § 2173.05(i) (explaining that
alternative features described in the specification may be explicitly excluded
in the claims).
Here, it is undisputed that the specification does not describe
alternative features of the bend and does not provide any reason to exclude
obstructions within the bend. In short, Appellants' argument distills to the
premise that the lack of a heretofore undescribed, unnamed feature in a
drawing provides adequate support for its exclusion in the claims. We
disagree. Such position essentially would eviscerate the written description
requirement and the relevant case law applying said requirement to negative
limitations. Although drawings alone can provide adequate written
description support, we find that Appellants' drawings do not do so here.
Accordingly, we sustain Rejection I.
Rejection II
The Examiner finds that Liang teaches each and every limitation of
claims 1-5, 9-16, and 18. Final Act. 3--4. In particular, the Examiner finds
that Liang teaches:
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Application 13/618,178
Id.
[A] cooling passage (18) ... providing upstream (26) and
downstream (36) portions separated from one another by an
inner wall (22) and fluidly connected by a bend (28, 30), the
downstream portion including an outer wall (24) opposite the
inner wall to provide a downstream region extending between
the inner and outer walls (Figure 2). A turbulence
promoter (104) extending from the outer wall (Figure 3)
adjacent to the bend in the downstream portion.
Appellants assert, inter alia, that "Liang' s turbulence promoters 104
are not 'in the downstream portion,' as required by the claims, but rather are
in the bend, which fluidly connects these portions." Appeal Br. 4.
Appellants include the following annotated version of Liang's Figure 3:
~-------
Liang' s Figure 3 is shown above, including annotations by Appellants
identifying the locations of the upstream and downstream portions of
Liang's passage. Id. at 5.
In response, the Examiner contends that Appellants define "upstream"
and "downstream" too narrowly. Ans. 14. The Examiner finds that "[a]ll
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that is required is the upstream and downstream portions be fluidly
connected by 'a bend,' which can be as far as right up against the end wall of
the flow path. Id.
Claims 1 and 12 are directed to gas turbine engine components
comprising, inter alia, a structure having a "cooling passage providing
upstream and downstream portions separated from one another by an inner
wall and fluidly connected by a bend" and "a turbulence promoter extending
from the outer wall adjacent to the bend in the downstream portion." Appeal
Br. 9--10, Claims App. Thus, with respect to the upstream and downstream
portions, the claims require, at a minimum, that the portions are separated by
an inner wall.
The Examiner identifies partition member 22 as the inner wall of
Liang. Final Act. 4. Therefore, we agree with Appellants' annotations to
Liang' s Figure 3, shown above, wherein the upstream and downstream
portions of the passage are separated by partition member (inner wall) 22.
As reflected in Figure 3, which is shown more clearly below, turbulence-
increasing structures 104 ( which, the Examiner finds, teach the recited
turbulence promoters) are not shown as "extending from the outer wall ...
in the downstream portion" as recited by claims 1 and 12. Rather, the three
structures 104 are shown in the area referred to in the claims as the "bend."
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FIG. 3
Liang' s Figure 3 is a close-up view of a cross-section, end view of a fluid
guide component. Liang, 2:42--45.
Accordingly, we do not sustain Rejection II because the Examiner has
not shown by a preponderance of the evidence that Liang teaches "a
turbulence promoter extending from the outer wall adjacent to the bend in
the downstream portion" as recited by independent claims 1 and 12.
Re} ection III
The Examiner finds that Halfmann discloses each and every limitation
of claims 1-5 and 8-11. Final Act. 4--5. In particular, the Examiner finds
that "[t]he bend is free from obstructions as the tum vane (53, 67) does not
impede (or 'obstruct') the flow, but rather enhances it." Id. at 5.
Appellants contend that Halfmann fails to teach a bend that is free
from obstructions because tum vane 53 obstructs the bend. Appeal Br. 5.
Appellants explain that Halfmann describes the tum vanes as turning or
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Application 13/618,178
bending the flow, which "could not be accomplished without the vanes
obstructing and impeding the incoming flow, otherwise the flow would not
tum or bend in this fashion." Id. at 6. Appellants assert that Halfmann's
description of the positive effects of the vanes is inapposite because it "does
nothing to change the fact that the vanes ... obstruct the flow." Id.
Claims 1 and 12 recite, "wherein the bend is free from obstructions."
Appeal Br. 9--10, Claims App. We interpret the claim language, where
necessary, by giving the claims their broadest reasonable interpretation in
light of the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). As explained in the context of the§ 112, first
paragraph, rejection, the claim language at issue is not recited in the written
description portion of the specification. Thus, our consideration of this issue
is focused entirely on the phrase as it appears in the claim. As we also
discussed above, the phrase "free from obstructions" is a negative limitation.
Based on the facts presented here, we consider the U.S. Court of Appeals for
the Federal Circuit's discussion in Google LLC v. Network-I Techs., Inc., of
particular relevance. No. 2016-2509, 2018 WL 1468370 (Fed. Cir. Mar. 26,
2018). In Google, the Federal Circuit considered the broadest reasonable
construction of the term "non-exhaustive" commenting that "[a]s the
construction for 'exhaustive' narrows ... the definition for 'non-exhaustive'
must broaden .... Thus, a narrower interpretation of 'exhaustive'
corresponds to a broader interpretation of 'non-exhaustive."' Id. at *4 n.4.
As applied here, a narrower construction of "obstruction" results in a
broader construction of "free from obstructions" ( e.g., unobstructed).
The ordinary and customary meaning of "obstruction" is "the state of
being obstructed; especially: a condition of being clogged or blocked." See
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Merriam-Webster, available at https://www.merriam-
webster.com/dictionary/obstruction (last visited June 14, 2018). Although
that definition appears to be the primary one, other definitions include
"something that blocks something else and makes it difficult for things to
move through," "the condition of being blocked so that things cannot move
through easily," "the act of making it difficult for something to happen or
move forward." Id. Thus, the ordinary and customary meaning of
"obstruction" appears to range from something that completely blocks
("condition of being clogged or blocked"), on the one hand, to something
that partially blocks (i.e., makes it difficult for things to move through), on
the other. In light of our consideration of Google, the narrower construction
of "obstruction" (i.e., something that completely blocks), results in a broader
construction of "free from obstructions" (i.e., free from things that
completely block). Thus, because we apply the broadest reasonable
construction of "free from obstructions," in light of the specification, we
construe "free from obstructions" to mean "free from things that completely
block."
Halfmann explains that tum vane 53 is "placed to spread the flow of
air through the circuit in such a way as to prevent separation of the air from
the sidewalls." Halfmann, 6:6-9. Appellants do not contend, and we do not
find, that Halfmann's tum vane completely blocks air flow. Thus, the
Examiner has shown by a preponderance of the evidence that Halfmann's
bend (identified by the Examiner as "near 53") is "free from obstructions" as
recited by claims 1 and 12.
Appellants argue claims 1-5 and 9-11 as a group and do not raise any
other argument in response to this rejection and. Appeal Br. 5---6; Reply
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Br. 2. Accordingly, we sustain Rejection III. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Rejections IV, V, VII
The Examiner concludes that (1) claims 6 and 7 would have been
obvious based on Halfmann and Abdel-Messeh (Rejection IV) (Final Act. 4--
5); (2) claims 12-16 and 18 would have been obvious based on Halfmann
and Liang (Rejection V) (id. at 5---6); and (3) claim 17 would have been
obvious based on Halfmann, Liang, and Abdel-Messeh (Rejection VII) (id.
at 7). In each of these rejections, the Examiner relies upon Halfmann as
teaching the "turbulence promoter extending from the outer wall" and "bend
is free from obstructions" limitations of the claims. Final Act. 6-9.
Appellants contend that "[t]hese rejections are moot in view of the
arguments relative to claims 1 and 12 set forth above." Appeal Br. 6.
Because we do not find Appellants' argument regarding Halfmann
persuasive in the context of Rejection III, we disagree with Appellants'
characterization of Rejections IV, V, and VII as moot.
Additionally, Appellants contend that "there is no reason for a skilled
worker to modify either Liang or Halfmann to include the claimed 'bend [is]
free from obstruction[ s]. '" Id. Appellants' argument is based on the
premise that Halfmann fails to disclose the "bend is free from obstructions"
limitations of the claims, which we found unpersuasive above.
Appellants argue these rejections as a group and do not raise any other
argument. Appeal Br. 6-7; Reply Br. 2. Accordingly, we sustain
Rejections IV, V, and VII. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/618,178
Re} ection VI
The Examiner concludes that claims 6-8 and 17 would have been
obvious based on Liang and Abdel-Messeh. Claims 6-8 depend from
claim 1, and claim 17 depends from claim 12. The Examiner relies upon the
same findings discussed above in Rejection II with respect to Liang. Final
Act. 8. Accordingly, for the reasons explained in our discussion of
Rejection II, we do not sustain Rejection VI.
Rejections VIII and IX
The Examiner concludes that claims 1-5 and 8-11 would have been
obvious based on Papp le and Halfmann. Final Act. 7-9. The Examiner also
determines that claims 6 and 7 would have been obvious based on Papple,
Halfmann, and Abdel-Messeh. Id. at 9-10. The Examiner finds that most of
the elements of claim 1 are taught by Papp le, with the exception of "the
stagnation region not having turbulence promoters." Id. at 8. The Examiner
turns to Halfmann for teaching that limitation of the claim and determines
that
It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the cooling passage of
Papple such that the stagnation region does not have turbulence
promoters as taught by Halfmann for the purposes of preventing
separation around the bend in the sidewalls, thereby improving
the heat dissipation of the blade.
Id. at 9.
In addressing these claims, the Examiner: (1) does not make an
express finding that Papple teaches the "bend is free from obstructions"
language of the claims; (2) finds that Halfmann does teach this limitation;
(3) but, does not propose modifying Papple to include Halfmann's "bend is
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free from obstructions."3 Id. at 8-9. Thus, as these rejections stand, the
combination proposed by the Examiner fails to include the "bend is free
from obstructions" limitation of the claims. Accordingly, we do not sustain
Rejections VIII and IX.
Rejections X and XI
The Examiner concludes that claims 12-16 and 18 would have been
obvious based on Papp le, Halfmann, and Liang. Final Act. 11-13. The
Examiner also concludes that claim 1 7 would have been obvious based on
Papple, Halfmann, Liang, and Abdel-Messeh. Id. at 13-14. Appellants raise
the same arguments noted above and additionally contend that Papple fails
to teach a bend free from obstructions. Appeal Br. 6-7; see Reply Br. 2.
The Examiner proposes the following reasons to modify/combine the
teachings of these references:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to utilize the blade of Papp le in a
gas turbine engine as taught by Liang for the purposes of
compressing fluid and/ or extracting power in the turbine stage,
thereby taking advantage of the increased heat dissipation of the
blades of Papp le in the gas turbine engine.
It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the cooling passage of
Papple such that the stagnation region does not have turbulence
promoters as taught by Halfmann for the purposes of preventing
separation around the bend in the sidewalls, thereby improving
the heat dissipation of the blade.
Id. at 13. As reflected above, the Examiner only relies upon Halfmann as
teaching a stagnation region without turbulence promoters. Id. at 13.
3 In other words, the Examiner does not find that it would have been obvious
to modify Papple to include Halfmann's teaching of a bend free from
obstructions. See Final Act. 8-9.
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Appellants contend that neither Liang nor Papple teaches a bend free
from obstructions. Appeal Br. 4--5, 7. Appellants point to the contoured
boundary member 32 and the presence of turbulence-increasing
structures 104 in Liang. Id. at 4--5. These elements are shown in Liang's
Figure 3, reproduced above in our discussion of Rejection II. Appellants
also point to a contoured structure in Papp le' s Figure 3, arguing that it is an
obstruction in the bend, as shown below:
Up~trcam portion
Papp le' s Figure 3 is shown above including annotations by Appellants
identifying the locations of the upstream and downstream portions of
Papple's passage as well as an alleged obstruction. Id. at 7.
Appellants' argument that neither Liang nor Papp le discloses a bend
free from obstructions is not persuasive in light of our construction of that
phrase, discussed in the context of Rejection III. In other words, the
contoured boundary member 32 and turbulence-increasing structures 104 of
Liang, as well as the contoured structure in Papp le' s Figure 3 are not alleged
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to--and we find that they do not----completely block the respective bends in
the passageways.
Appellants argue the claims subject to these rejections as a group and
do not raise any other argument in response to these rejections. Appeal
Br. 6-7; Reply Br. 2. Accordingly, we sustain Rejections X and XI. See
37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We AFFIRM the Examiner's decision:
(1) rejecting claims 1-18 under 35 U.S.C. § 112, first paragraph
(Rejection I);
(2) rejecting claims 1-5 and 8-11 under 35 U.S.C. § 102(b) as
anticipated by Halfmann (Rejection III);
(3) rejecting claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable
over Halfmann and Abdel-Messeh (Rejection IV);
(4) rejecting claims 12-16 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Halfmann and Liang (Rejection V);
(5) rejecting claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Halfmann, Liang, and Abdel-Messeh (Rejection VII);
(6) rejecting claims 12-16 and 18 under 35 U.S.C. § 103(a) over
Papple, Halfmann, and Liang (Rejection X); and
(7) rejecting claim 17 under 35 U.S.C. § 103(a) over Papple,
Halfmann, Liang, and Abdel-Messeh (Rejection XI).
We REVERSE the Examiner's decision:
(1) rejecting claims 1-5, 9-16, and 18 under 35 U.S.C. § 102(b) as
anticipated by Liang (Rejection II);
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(2) rejecting claims 6-8 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Liang and Abdel-Messeh (Rejection VI);
(3) rejecting claims 1-5 and 8-11 under 35 U.S.C. § 103(a) as
unpatentable over Papple and Halfmann (Rejection VIII); and
(4) rejecting claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable
over Papple, Halfmann, and Abdel-Messeh (Rejection IX).
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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