Ex Parte Schwarz et al

Patent Trial and Appeal Board

Sep 27, 2017

14107273 (P.T.A.B. Sep. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/107,273 12/16/2013 Frederick M. Schwarz 75074US01; 6090
67097-2742PUS1
54549 7590 09/29/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
DAVIS, JASON GREGORY
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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 FREDERICK M. SCHWARZ and GABRIEL L. SUCIU
Appeal 2015-003304
Application 14/107,273
Technology Center 3700
Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frederick M. Schwarz and Gabriel L. Suciu (“Appellants”)1 appeal
under 35U.S.C. § 134 from the Examiner’s decision rejecting claims 1—6
and 8—242 in this application. The Board has jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 United Technologies Corporation is an applicant as provided in 37 C.F.R.
§ 1.46. The Appeal Brief identifies United Technologies Corporation as the
real party in interest. Appeal Br. 1.
2 Claim 7 has been canceled. See Amendment (dated May 12, 2014,
hereafter “Amendment”), 4.
Appeal 2015-003304
Application 14/107,273
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and, according to the
electronic records for this application, it recites:
1. A gas turbine engine comprising:
a fan for delivering air into a bypass duct as bypass flow
and into a core housing as core flow, with said core housing
containing an upstream compressor rotor and a downstream
compressor rotor, and an overall pressure ratio defined across
said upstream and downstream compressor rotors, and a bypass
ratio defined as a volume of air delivered as bypass flow
compared to a volume of air delivered into the core housing;
said overall pressure ratio is greater than or equal to about
45.0, and said bypass ratio is greater than or equal to about 11;
and
said gas turbine engine being designed for use on a long
range aircraft, with said long range aircraft being defined at least
by one of an aircraft with at least two passenger aisles, or an
aircraft with a flight length equal to, or greater than about
6.0 hours; and
a fan drive turbine driving said fan through a gear
reduction.
Amendment 3.3
REJECTIONS ON APPEAL4
Claims 1—6 and 8—24 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement.
3 See footnote 4, infra.
4 The Examiner has withdrawn a rejection of claims 1—6 and 8—24 as
indefinite under 35 U.S.C. § 112(b). See Final Act. 7—8 (rejection);
Ans. 11—12 (withdrawal). The stated reason is that “Appellants have]
amended the claims to remove the term ‘about’ prior to the values.”
Ans. 12. We are unable to find any such amendment in the record. The
claims considered in the Final Office Action included the term “about” in
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Application 14/107,273
Claim 18 stands rejected under 35 U.S.C. § 112(d) as an improper
dependent claim.
Claims 1—4, 6, 8—13, 16—19, and 22—24 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Suciu (US 2012/0233982 Al, pub. Sept. 20,
2012) and Boeing (“Boeing 787-8 Dreamliner Fact Sheet,” retrieved from
http://www.boeing.com/boeing/eommercial/787familv/787-8prod.page).
Claims 5, 14, 15, and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Suciu, Boeing, and Dev (US 6,647,707 B2, iss. Nov. 18,
2003).
Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over
Suciu, Boeing, and Lawrie (US 3,620,021, iss. Nov. 16, 1971).
ANALYSIS
A. § 112(a) Enablement (Claims 1—6 and 8—24)
The Examiner determines Appellants’ claims and Specification fail to
enable a person of ordinary skill in the art to make and use the claimed gas
turbine engine. Final Act. 2—3, 6—7. The Examiner determines “none of the
claimed structure is specific for generating” the overall pressure ratio range
reciting many values. See Amendment 3—5; Final Act. 7—8. We cannot
locate any amendment in the present record after the Final Office Action.
Thus, we consider the claims listed in the Amendment as the claims on
appeal. Nonetheless, the claims listed in the Claims Appendix entirely omit
the term “about.” Appeal Br. 6—8 (Claims App.). Appellants do not explain
this discrepancy, or address the merits of the indefmiteness rejection. See
Appeal Br. & Reply Br. As the absence or presence of the term “about” in
these claims does not affect our decision as to the remaining rejections
involved in this appeal, we leave it to the Examiner to resolve this
discrepancy upon return of jurisdiction of this application to the Examiner.
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and the bypass ratio range of claim 1, the tip speed ratio range of claim 5
(for example), and the gear ratio range of claim 8 (for example). Id. at 6.
The Examiner concludes the Specification fails to disclose: the type (axial or
radial) and rotation speed of the compressor rotors to obtain the claimed
overall pressure ratio and tip speed ratio values; how one might size and
shape the bypass duct and the core housing to obtain the claimed bypass
ratio values; and what type of gear system is used to obtain the claimed gear
ratio values. Id. at 2, 6. The Examiner concludes “it is unclear how
[Appellants are] achieving the claimed characteristic ranges,” so it would
require undue experimentation for a person of ordinary skill in the art to
make or use the claimed invention. Id. at 6; Ans. 12—13.
Appellants assert a person of ordinary skill in the art, armed with the
disclosure of their Specification, would recognize how to achieve the
claimed ratios. Appeal Br. 2—3. Appellants contend it was within the level
of ordinary skill to achieve the claimed overall pressure ratio values by
designing the size and speed of the two compressor sections; achieve the
claimed bypass ratio values by appropriate sizing of the fan rotor, the bypass
housing, and the core housing; achieve the claimed tip speed ratio values by
designing the respective speeds of the two compressor rotors; and achieve
the claimed gear ratio values with an appropriate gearing structure. Id. at 3.
The Examiner responds that Appellants have “not provided evidence”
that a person of ordinary skill in the art could make or use the claimed
invention in view of Appellants’ Specification. Ans. 13 (citing MPEP
§ 2145(1), stating “the arguments of counsel cannot take the place of
evidence in the record”).
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Application 14/107,273
When rejecting a claim for lack of enablement, the Examiner bears the
initial burden of setting forth a reasonable explanation as to why the scope of
the claim is not adequately enabled by the description provided in the
specification, including providing sufficient reasons for doubting any
assertions in the specification as to the scope of enablement. See In re
Wright, 999 F.2d 1557, 1561—62 (Fed. Cir. 1993). Only after the Examiner
has satisfied this initial burden does the burden shift to the applicant to prove
that the specification is enabling. Id.
We determine the Examiner has not set forth a reasonable explanation
to establish that a person of ordinary skill in the art would require undue
experimentation to make and use Appellants’ claimed invention.
“Enablement is not precluded by the necessity for some experimentation.”
In re Wands, 858 F.2d 731, 736—37 (Fed. Cir. 1988) (emphasis added).
“However, experimentation needed to practice the invention must not be
undue experimentation.” Id. at 737 (emphasis added). Whether undue
experimentation would be necessary is not a single, simple factual
determination, but rather is a conclusion reached by weighing many factual
considerations, such as: (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. Id.
The Examiner’s rejection fails to focus on the Wands factors and does
not explain sufficiently how the Specification lacks sufficient disclosure to
teach a person of ordinary skill in the art to make and use the claimed
invention without undue experimentation. We appreciate Appellants’
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Specification in this case is sparse, and Appellants’ figures are highly
schematic (Wands factors (1)—(3)), thus requiring some amount of
experimentation to implement the claimed invention. Nonetheless, “a patent
need not teach, and preferably omits, what is well known in the art” (Wands
factors (5)-(7)). Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1384 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrikv.
American Hoist & Derrick, 730 F.2d 1452, 1463 (Fed. Cir. 1984)). The
evidence of record in this case reflects that bypass flow gas turbine engines
with two compressors have been known since at least the early 1970’s
(Lawrie), and the state of the art in November of 2014 when the present
application was filed was very advanced (Suciu and Dev).
In particular, Suciu discloses a prior art gas turbine engine having “an
overall pressure ratio . . . above or equal to about 50”; a “bypass ratio . . .
greater than about six (6) to ten (10)” or “greater than about ten (10:1)”; and
a gear train having “a gear reduction ratio of greater than about 2.3” or
“greater than about 2.5:1.” Suciu 42-43. Further, according to the
Examiner’s unchallenged finding, Dev discloses a tip speed ratio between
two compressors of between 1.01 and 1.20. Final Act. 15; Appeal Br. 5.
These ratio value ranges disclosed in the prior art closely overlap the ratio
value ranges claimed by Appellants. Given this state of the art, the
Examiner does not explain sufficiently why it would have required undue
experimentation for a person of ordinary skill in the art to make and use a
gas turbine engine having the various value ranges claimed by Appellants
(Wands factors (5) and (7)). This is particularly true when viewed from the
perspective of a person of ordinary skill in the art of gas turbine engine
design (Wands factor (6)).
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For the foregoing reasons, we do not sustain the rejection of claims 1—
6 and 8—24 as failing to comply with the enablement requirement.
B. § 112(d) Dependency (Claim 18)
The Examiner concludes claim 18 is an improper dependent claim
because it fails to further limit its parent claim 1. Final Act. 8—9. Appellants
do not address this rejection. See Appeal Br. & Reply Br. We, therefore,
summarily sustain the rejection. See 37 C.F.R. § 41.37(c)(l)(iv); In re
BaxterInt’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (argument waived
when not timely presented in briefing to the Board, absent exceptional
circumstances); MPEP § 1215.03 (9th Ed,, Rev. 07.2015, Nov. 2015) (“An
appellant may, of course, choose not to present arguments or rely upon
particular evidence as to certain claim rejections; however, such arguments
and evidence are waived for purposes of the appeal and the Board may
summarily sustain any grounds of rejections not argued.”).
C. §103 Obviousness over Suciu and Boeing
(Claims 1—4, 6, 8—13, 16—19, and 22—24)
Appellants argue for the patentability of claims 1—4, 6, 8—13, 16—19,
and 22—24 as a group, without arguing separately any one claim from the
others. Appeal Br. 3—5. We, therefore, select claim 1 to decide the appeal
of the rejection of these claims as having been obvious over Suciu and
Boeing, with the other claims standing or falling with claim 1. See
37 C.F.R. §41.37(c)(l)(iv).
The Examiner finds Suciu’s Figure 1A illustrates a gas turbine engine
having all the engine components recited in claim 1. Final Act. 10—11. That
is, the Examiner finds Suciu’s engine 10 includes fan 20 for delivering air
into bypass duct F and core housing C; upstream compressor 16 and
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downstream compressor 26; and fan drive turbine 18 driving fan 20 through
gear reduction 25. Id.
The Examiner finds Suciu’s engine 10 has an overall pressure ratio
greater than or equal to 50, anticipating the claimed range of greater than or
equal to about 45.0. Id.', see Suciu 142 (“In most embodiments, the overall
pressure ratio is above or equal to about 50, although it may be below that
pressure ratio in some combinations.”). The Examiner also finds Suciu’s
engine 10 has a bypass ratio of greater than 6 to 10, anticipating the claimed
range of greater than or equal to about 11. Final Act. 10-11; see Suciu 143
(in one embodiment “the engine 10 bypass ratio is greater than about six (6)
to ten (10),” and in another embodiment “the engine 10 bypass ratio is
greater than about ten (10:1)”). The Examiner cites MPEP § 2131.03
(“Anticipation of Ranges”) in support of these findings. Final Act. 11. In
short, the Examiner finds Suciu’s engine 10 satisfies each and every
limitation of claim 1 directed to the structural configuration and operation of
an engine. Final Act. 4, 10—11.
The Examiner determines Suciu indicates its engine 10 “is designed
for an aircraft,” but Suciu fails to disclose the engine being “designed for use
on a long range aircraft.” Id. at 11 (citing Suciu 139). The Examiner finds
Boeing discloses an aircraft meeting the “long range” requirements of
claim 1, and determines it would have been obvious to use Suciu’s engine 10
“in a long range aircraft as taught by Boeing for the purpose of powering the
aircraft.” Id.
Appellants argue they have “disclosed a synergistic combination of
features, which has particular benefit in long range aircraft” and is not
disclosed in Suciu or Boeing. Appeal Br. 3^4 (citing Spec. 36, 40).
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Appellants point out the long range aircraft of Boeing is not disclosed as
achieving the claimed overall pressure ratio values, or the claimed bypass
ratio values. Id. at 3. According to Appellants, “[w]hat the Examiner is
actually arguing is that the ratios are optimized,” without first making the
requisite showing that the optimized variables are recognized in the prior art
as being result-effective. Id. at 4. Appellants contend the present rejection
is similar to the rejection affirmed by the Board but reversed by the Court of
Customs and Patent Appeals in In re Antonie, 559 F.2d 618, 620 (CCPA
1977). Id. at 4—5; Reply Br. 1-2.
The Examiner responds that the rejection finds Suciu, not Boeing,
discloses the structural engine configuration recited in claim 1, including the
recited ratios. Ans. 14—15. The Examiner further responds that the rejection
does not rely on optimization of a result-effective variable, as was at issue in
In re Antonie. Id. at 15.
We sustain the rejection of claim 1 as having been obvious over Suciu
and Boeing. First, the Examiner’s finding that Suciu discloses each and
every limitation of claim 1 directed to the structural configuration and
operation of a gas turbine engine, including the recited ratios, is not
contested by Appellants. Appellants instead object that Boeing does not
disclose the claimed ratio values, but that is not indicative of Examiner error
in relying on Suciu for such disclosure. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures). Appellants’ discussion of In re
Antonie is not relevant to the Examiner’s rejection, which determines Suciu
expressly discloses the claimed ratio values, not that the claimed ratio values
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would have been obvious as a routine optimization of a result-effective
variable in light of Suciu. Final Act. 10—11; Ans. 14—15. Given Appellants’
failure to contest the Examiner’s findings concerning the Suciu engine
disclosure, we sustain those findings. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants’ contention that the combination of features recited in
claim 1 is synergistic and has particular benefit in a long range aircraft, even
if true, is not probative of Examiner error. “[T]he law does not require that
the references be combined for the reasons contemplated by the inventor.”
In re Beattie, 91A F.2d 1309, 1312 (Fed. Cir. 1992) (citing In re Kronig,
539 F.2d 1300, 1304 (CCPA 1976)). Appellants do not dispute that Suciu’s
engine 10 is designed for use on an aircraft (Suciu 139), although Suciu
does not indicate what size the aircraft might be. Thus, a person of ordinary
skill in the art seeking to make and use Suciu’s engine would need to place it
on an appropriately sized aircraft. The Examiner’s determination that
Suciu’s engine 10 would be appropriate for use on a “long range” aircraft, as
defined in claim 1 and as disclosed by Boeing, is not contradicted by
evidence in the record.
Further, the preamble of claim 1 recites “[a] gas turbine engine,” and
the body of claim 1 recites the “engine being designed for use on a long
range aircraft.” Appeal Br. 6 (emphasis added). Thus, the claim is directed
to an engine, not to an aircraft comprising the engine. See, e.g., Ans. 14—15.
A preponderance of the evidence indicates Suciu discloses the claimed
engine, as already discussed. As for the limitation that the engine be
designed for use on a long range aircraft, Appellants do not point to, nor do
we find, any indication in Appellants’ Specification of any additional
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structural feature(s), aside from the structure and ratios recited in claim 1,
required to satisfy this limitation.
For the foregoing reasons, we sustain the rejection of claims 1—4, 6,
8—13, 16—19, and 22—24 as having been obvious over Suciu and Boeing.
D. §103 Obviousness over Suciu, Boeing, and Dev
(Claims 5, 14, 15, and 21)
Claim 5 depends indirectly from claim 1, and recites a ratio of the
downstream compressor rotor tip speed to the upstream compressor rotor tip
speed is less than or equal to about 1.18 and greater than or equal to about
1.0. Amendment 3. The Examiner finds Suciu fails to teach such a tip
speed ratio, but Dev discloses a gas turbine engine having a tip speed ratio
ranging from 1.01 to 1.20. Final Act. 15. The Examiner determines:
It would have been obvious ... to modify the gas turbine engine
of Suciu as modified by Boeing by rotating the compressors to
create a tip speed ratio equal to or between 1.0 and 1.18 as taught
by Dev for the purpose of obtaining the desired gas turbine
characteristics, such as pressure ratio, since the pressure ratio
through the compressors is related to the rotation speed of the
compressor rotors.
Final Act. 15—16 (emphasis added).
Appellants argue “Dev discloses a very unique ‘nested’ gas turbine
engine” which, therefore, “cannot suggest any modification” of Suciu’s
engine “with regard to the relative operation of the two compressors.”
Appeal Br. 5; Reply Br. 2 (Dev discloses “an entirely different engine that
operates in an entirely different way” than Suciu’s engine). Appellants
contend the “Examiner is not allowed to ‘pick and choose’ portions of a
reference,” and “[t]he Dev speeds are limited to the Dev engine, and would
suggest no modification to Suciu.” Appeal Br. 5.
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The Examiner “acknowledges that the gas turbine of Dev is a ‘nested’
gas turbine whereas Suciu teaches an ‘axial’ gas turbine.” Ans. 16. The
Examiner nonetheless maintains the rejection, because it “is not relying upon
Dev to modify the structure of Suciu but rather the method of operation,
specifically by rotating the compressors at the desired speeds to obtain the
desired tip speed ratio.” Id. The Examiner determines this is appropriate
because both Suciu and Dev “perform the function of increasing the pressure
of the working fluid” by using two compressor sections. Id. at 16—17.
We determine the Examiner has not provided an articulated reasoning
with rational underpinning sufficient to support the legal conclusion of
obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) {cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The
Examiner finds Dev has upstream compressor 13 and downstream
compressor 14, with the ratio of the rotor tip speeds falling within the range
recited in claim 5. Final Act. 15 (citing Dev, Fig. 1, 3:66-4:34, 7:15—22,
9:15—27). However, Dev discloses upstream compressor 13 achieves “a
pressure ratio in the range of2.5:l to 3:1,” and downstream compressor 14
achieves “a pressure ratio in the range of 2.0:1 to 2.5:1.” Dev. 7:19-21,
9:15—26. Thus, the maximum pressure ratio achievable by the two
compressors is, respectively, 3:1 and 2.5:1. The Examiner does not explain
how such maximum pressure ratios might or could be used to achieve an
overall pressure ratio greater than or equal to about 45.0, as required by
claim 5 via its dependency from claim 1. That is, the present record does not
establish a rational relationship between the compressor tip speed ratios
disclosed by Dev and “obtaining the desired gas turbine characteristics, such
as pressure ratio” disclosed by Suciu and recited in claim 5. See Final
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Act. 15—16. Therefore, we do not sustain the rejection of claim 5 as having
been obvious over Suciu, Boeing, and Dev.
The Examiner’s additional consideration of claims 14, 15, and 21 does
not cure the noted deficiency as to claim 5. See Final Act. 15—16. We,
therefore, likewise do not sustain the rejection of these claims as having
been obvious over Suciu, Boeing, and Dev.
E. §103 Obviousness over Suciu, Boeing, andLawrie
(Claim 20)
Appellants do not address the rejection of claim 20. See Appeal Br. &
Reply Br. Appellants’ arguments as to the parent claims 1 and 18 are not
persuasive for the reasons provided above, so we sustain the rejection of
claim 20 as having been obvious over Suciu, Boeing, and Lawrie.
DECISION
The rejection of claims 1—6 and 8—24 under 35 U.S.C. § 112(a) as
failing to comply with the enablement requirement is reversed.
The rejection of claim 18 under 35 U.S.C. § 112(d) as an improper
dependent claim is affirmed.
The rejection of claims 1—4, 6, 8—13, 16—19, and 22—24 under
35 U.S.C. § 103 as unpatentable over Suciu and Boeing is affirmed.
The rejection of claims 5, 14, 15, and 21 under 35 U.S.C. § 103 as
unpatentable over Suciu, Boeing, and Dev, is reversed.
The rejection of claim 20 under 35 U.S.C. § 103 as unpatentable over
Suciu, Boeing, and Lawrie, is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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