Ex Parte Ryan

Patent Trial and Appeal Board

Jun 27, 2016

12235866 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/235,866 09/23/2008
28524 7590 06/29/2016
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
FIRST NAMED INVENTOR
William R. Ryan
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.
2008Pl 724 lUS 6848
EXAMINER
RNERA, CARLOS A
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM R. RY AN
Appeal2013-007137
Application 12/235,8661
Technology Center 3700
Before KEN B. BARRETT, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 3-7, 9, 10, and 13-15. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellant, "[t]he real party in interest ... is the assignee
Siemens Energy Inc." Appeal Br. 1.
Appeal2013-007137
Application 12/235,866
Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A can annular gas turbine combustor for producing hot gas by
burning a fuel in compressed air comprising: a combustor central
axis, a plurality of main swirlers with respective swirler axes
disposed about, equidistant from, and parallel to the combustor
central axis, each main swirler configured to deliver an air fuel
mixture flowing therethrough about its swirler axis, wherein
tangential components of flow directions of meeting portions of
adjacent air fuel mixtures travel in the same direction; and a
central pilot swirler disposed on the central axis and delivering a
pilot air fuel mixture flowing therethrough.
Rejections
Claims 1, 3-7, 9, 10, and 13-15 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement.
Claims 1, 3-7, 9, 10, and 13-15 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Dawson (US 6,931,853 B2, iss. Aug. 23, 2005) and
Leduc (US 2,647,369, iss. Aug. 4, 1953).
ANALYSIS
Rejection under 35 U.S. C. § 112, first paragraph, as failing to comply with
the enablement requirement
The Examiner determines that "each [main] swirler configured to
deliver an air fuel mixture ... wherein tangential components of flow
directions of meeting portions ... travel in the same direction," as recited in
claim 1, and similar recitations of claims 6 and 10, fail to comply with the
enablement requirement of 35 U.S.C. § 112, first paragraph. See Final
Act. 3.
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Appeal2013-007137
Application 12/235,866
When rejecting claims for lack of enablement "the PTO bears an
initial burden of setting forth a reasonable explanation as to why it believes
that the scope of protection provided by that claim is not adequately enabled
by the description of the invention provided in the specification of the
application[.]" In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The test for
compliance with the enablement requirement is "whether one reasonably
skilled in the art could make or use the invention from the disclosures in the
patent [application] coupled with information known in the art without
undue experimentation." United States v. Telectronics, Inc., 857 F.2d 778,
785 (Fed. Cir. 1988). Determining whether any necessary experimentation
is undue involves considering relevant factors including, but not limited to:
(1) the quantity of experimentation necessary; (2) the amount of direction or
guidance presented; (3) the presence or absence of working examples; (4)
the nature of the invention; (5) the state of the prior art; (6) the relative skill
of those in the art; (7) the predictability or unpredictability of the art; and (8)
the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988);
see Manual of Patent Examining Procedure (MPEP) § 2164.0l(a) (9th ed.,
Mar. 2014). All of the factors need not be reviewed when determining
whether a disclosure is enabling. See Amgen, Inc. v. Chugai Pharm. Co.,
Ltd., 927 F.2d 1200, 1213 (Fed. Cir. 1991) (noting that the Wands factors
"are illustrative, not mandatory. What is relevant depends on the facts
.... "). Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir.
1999).
Although the Examiner understands that there are many factors,
including the breadth of the claims, when considering if a disclosure satisfies
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Appeal2013-007137
Application 12/235,866
the enablement requirement (Final Act. 3), the Examiner does not
adequately address any one factor. Rather, the Examiner appears to focus
solely on the disclosure in the Specification, and explains that the disclosure
is directed to the functionality of the claimed invention and lacks disclosure
concerning the structural elements of the claimed invention and "how said
elements differ from the prior art." Final Act. 3; see Final Act. 4.
The Appellant argues that the Examiner fails to consider properly the
Wands factors, in particular (5) the state of the prior art, (6) the relative skill
of those in the art, and (7) the predictability or unpredictability of the art.
See Appeal Br. 7-9. The Appellant asserts that the state of the art is mature
and, "once armed with the information presented only in Applicant's
disclosure ... all one would have to do is change the direction of the airfoils
in some of the existing swirlers." Appeal Br. 8. The Appellant also asserts
"that one of ordinary skill in the art who reads Applicant's specification
would readily understand how to create a combustor having pre-mix main
burners with alternating swirls, since it is known how to make swirl
structures in each of the two required directions." Appeal Br. 8. The
Examiner, in response, determines that the Appellant's assertion is
conclusory and lacks evidence to be supported. Ans. 8-9. The Appellant's
argument is persuasive.
We determine that the Examiner's rejection and response does not
suggest that the evidence and the Wands factors have been adequately
weighed by the Examiner. In particular, it is notable that the Examiner does
not address directly the amount of guidance or direction that is needed to
enable the invention based on the state of the art, the relative skill of those in
the art, and the predictability or unpredictability of the art.
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Application 12/235,866
Thus, the Examiner's rejection of claims 1, 3-7, 9, 10, and 13-15
under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement is not sustained.
Rejection under 35 U.S.C. § 103(a) as unpatentable over Dawson and Leduc
The Examiner finds that Dawson discloses substantially all of the
subject matter of appealed claims including can annular gas turbine
combustor ( combustor chamber) 40 having a plurality of main swirlers (pre-
mix burners) 12, 12', 12", 14, 14', 14" and a central pilot swirler (center pre-
mix burner) 68. See Final Act. 5-7. The Examiner also finds that Dawson
does not, but that Leduc does, disclose "tangential components of flow
directions of meeting portions of adjacent air fuel mixtures travel in the
same direction," as recited in independent claim 1, and the similar recitations
of independent claims 6 and 10. See Final Act. 6 (citing Leduc, Figs. 1, 3).
The Examiner concludes that "it would have been obvious to one of ordinary
skill in the art ... to use Leduc['s] teachings in the fuel injectors of Dawson
for the purpose of promoting a better mixture and efficient combustion (col.
1, 11. 25-38 of Leduc)." Final Act. 6 (emphasis added).
The Appellant argues that the Examiner's rejection is based on
impermissible hindsight reasoning. See, e.g., Reply Br. 5. The Appellant
asserts that Leduc' s teaching is particular to a diffusion flame based burner
and does not have the same or similar effect when applied to Dawson's pre-
mix burners. See Appeal Br. 5---6; Reply Br. 3-5. In response, the Examiner
explains that "[ o ]ne of ordinary skill in the art would understand the
advantages of Leduc' s teachings would take place at the outlet of the
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Appeal2013-007137
Application 12/235,866
premixer of Dawson, when the flows are actually adjacent each other."
Ans. 10.
The Appellant's argument is persuasive. The Examiner's response
fails to adequately explain how the inclusion of the advantages of Leduc' s
teaching, which are directed to a diffusion flame based burner, would result
in "a better mixture and efficient combustion" for Dawson's gas turbine
engine having pre-mix burners. As such, we determine that the Examiner's
rejection lacks articulated reasoning based on rational underpinning. See In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("rejections 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").
Thus, the Examiner's rejection of independent claims 1, 6 and 10, and
the claims that depend from these independent claims, under 35 U.S.C.
§ 103(a) is not sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 3-7, 9, 10,
and 13-15.
REVERSED
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