Ex Parte Schwarz et al

Patent Trial and Appeal Board

Oct 22, 2018

14146758 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/146,758 01/03/2014 Frederick M. Schwarz
54549 7590 10/24/2018
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.
74496US02;
67097-2771US1
CONFIRMATION NO.
5304
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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
Ex parte FREDERICK M. SCHWARZ and JOSEPH BRENT STAUBACH
Appeal2018-000425
Application 14/146,758
Technology Center 3700
Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
Opinion for the Board filed by PLENZLER, Administrative Patent Judge
Opinion Concurring filed by CAPP, Administrative Patent Judge
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Decision rejecting claims 1 and 4--11. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appeal2018-000425
Application 14/146,758
CLAIMED SUBJECT MATTER
Claim 1 is independent, with claims 4--11 depending therefrom.
Claim 1 is reproduced below:
1. A gas turbine engine comprising:
a first turbine positioned upstream of a second
intermediate turbine and a third turbine being positioned
downstream of the first and second turbines;
a fan and three compressors, a first of said three
compressors being connected to rotate with said fan, and said
third turbine for driving said first compressor and said fan both
through a gear reduction, and a second intermediate compressor
of said three compressors, said second intermediate compressor
for being driven by said second intermediate turbine, and a third
compressor of said three compressors, said third compressor
being downstream of said first compressor and second
intermediate compressor and for being driven by said first
turbine;
said fan delivering air as bypass air between an inner
periphery of a nacelle and an outer periphery of a core housing,
and delivering air to said three compressors which are
positioned within a core housing;
a variable turbine vane being positioned upstream of said
first turbine to allow the selective control of an overall pressure
ratio; and
said variable turbine vane being controlled to reduce an
overall pressure ratio at take-off conditions.
REJECTIONS 1
1. Claims 10 and 11 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement.
1 Claims 12-19 have been cancelled. Advisory Act. 2. The rejection of
claims 7-11 under 35 U.S.C. § 112(a), as failing to comply with the written
2
Appeal2018-000425
Application 14/146,758
2. Claims 10 and 11 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the enablement requirement.
3. Claims 4--11 are rejected under 35 U.S.C. § 112(b) as being indefinite.
4. Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over
Jane's (Jane's Aero-Engines, Issue Seven, Jane's Information Group Inc.,
2000), Koff (US 4,080,785, issued Mar. 28, 1978), and Tuley (US
4,214,852, issued July 29, 1980).
5. Claims 4--11 are rejected under 35 U.S.C. § 103 as being unpatentable
over Jane's, Koff, Tuley, NASA (NASA/TM-2011-216883, "Refined
Exploration of Turbofan Design Options for an Advanced Single-Aisle
Transport," January 2011), and Nakhamkin (US 5,347,806, issued Sep. 20,
1994).
OPINION
Claim 1
The Examiner determines that claim 1 is unpatentable over the
combined teachings of Jane's, Koff, and Tuley. Final Act. 30-36.
Appellant does not dispute any of the Examiner's findings or rationale for
combining the teachings of Jane's, Koff, and Tuley. See Appeal Br. 8-9.
Rather, Appellant contends that the Examiner has dismissed the recitation in
claim 1 that "said variable turbine vane is controlled to reduce an overall
pressure ratio at take-off conditions." See id. at 9 ("This claimed control is a
structural limitation that must be given patentable weight."); see also Reply
description requirement, found on pages 4--6 (paragraph 7) of the Final
Office Action, has been withdrawn.
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Appeal2018-000425
Application 14/146,758
Br. 5 ("one would understand that this claim element requires modulation of
turbine vanes during take-off').
At best, claim 1 requires a variable vane capable o/"being controlled
to reduce an overall pressure ratio at take-off conditions. "2 We do not see,
nor does Appellant identify, anything in the claim that requires additional
structure for the recited "control." For example, the claim does not recite,
nor does Appellant allege that the claim requires, any component
programmed to carry out the recited control function. Not even the
Specification includes such structure in the embodiment described. See
Spec. ,r 36 (stating simply that "[a] control 41 is shown, and may change the
flow area of the variable turbine vane 40 to be open at takeoff and climb and
closed during cruise," without further explanation as to what that "control"
encompasses).
There is no dispute that the gas turbine engine resulting from the
combined teachings asserted by the Examiner is capable of being "controlled
to reduce an overall pressure ratio at take-off conditions." See, e.g., Appeal
Br. 9 (discussing Koffs control of variable vane position). Indeed, a
variable vane, by its very nature, is one that is controlled to produce a
desired condition, such as compressor pressure ratio. See, e.g., Jane's 10.
Because we are left with the Examiner's rejection effectively being
undisputed, we not apprised of Examiner error in the rejection of claim 1.
2 To the extent that Appellant believes the claim requires a user to "control
[the variable turbine vane] to reduce an overall pressure ratio at take-off
conditions," we caution Appellant that a single claim covering both an
apparatus and a method of use of that apparatus fails to meet the definiteness
requirement of§ 112. See IPXL Holdings, LLC v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005).
4
Appeal2018-000425
Application 14/146,758
Claims 4-11
Claim 4 depends from claim 1, and claims 5-11 each ultimately
depend from claim 4. Claim 4 recites that "an overall pressure ratio is
defined across the second and third compressors with said overall pressure
ratio across said second and third compressors being greater than or equal to
about 31.5 and less than or equal to about 64.0." Jane's explains that "[a]
compressor is characterised by its pressure ratio, which is the ratio of the
outlet pressure to the inlet pressure at any given operating condition; values
quoted are usually those obtained when the compressor is operating at its
design values of rotation speed and air flow." Jane's 10. The Examiner
determines that the specific pressure ratio range recited in claim 4 is obvious
as a matter of routine optimization. Final Act. 38--40. The Examiner finds,
for example, that "the compressor pressure ratios of the compressor was
recognized as a result-effective variable" and "the recognized result is ...
increasing gas turbine engine fuel efficiency." Id. at 38-39.
Appellant does not address the Examiner's rejection. 3 Rather,
Appellant alleges that "[ t ]here is no showing that any of the pressure ratios
disclosed in the several references would have any benefit in Janes Engines"
(Appeal Br. 9), but does not respond to the Examiner's findings that
compressor pressure ratios were recognized as a result-effective variable
3 Appellant discusses routine optimization for the first time in its Reply
Brief. Reply Br. 6. We decline to consider that new argument. "Since the
examiner's answer is deemed to incorporate all grounds in the Final Office
Action, an applicant's reply may not respond to grounds or arguments raised
in the examiner's answer if they were part of the Final Office Action and the
applicant did not address them in the initial appeal brief." In re Durance,
891 F.3d 991, 1002 (Fed. Cir. 2018).
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Appeal2018-000425
Application 14/146,758
(Final Act. 38-39). Appellant's contentions that "NASA does not disclose
three compressors" and "Nakhamkin only discloses an overall pressure ratio
across three compressors" (id. at 10) also fail to identify reversible error in
the Examiner's rejection. The Examiner finds, for example, that "Jane's
teaches ... three compressors arranged one after another" and "overall
pressure ratio (OPR) can reach 30 to 50 resulting in better fuel economy"
(Final Act. 37), which is not disputed by Appellant. The Examiner's
rejection based on routine optimization does not require that NASA
discloses three compressors or that Nakhamkin discloses a specific overall
pressure ratio range across less than three compressors. Appellant does not
provide separate argument for claims 5-11.
For at least these reasons we are not apprised of Examiner error in the
rejection of claims 4--11.
Additional Rejections
We do not reach the additional rejections presented by the Examiner
because we affirm the rejection of all claims under 35 U.S.C. § 103, which is
effectively undisputed as explained above.
DECISION
We AFFIRM the Examiner's decision to reject claims 1 and 4--11
under 35 U.S.C. § 103.
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
6
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK M. SCHWARZ and JOSEPH BRENT STAUBACH
Appeal2018-000425
Application 14/146,758
Technology Center 3700
Before BENJAMIN D. M. WOOD, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
CAPP, Administrative Patent Judge, concurring.
I concur in the result reached by the majority. However, I write
separately to express my concern regarding the final limitation of claim 1,
namely:
said variable turbine vane being controlled to reduce an
overall pressure ratio at take-off conditions.
Claims App. In my opinion, the claim term "being controlled" is a
functional limitation. However, the claim recites no identifiable structure
for performing this function.
Furthermore, the claim is not recited in means-plus-function format.
35 U.S.C. § l 12(f). There is no "means for" recited in the claim, neither is
there any recital of a recognizable "nonce" word that may substitute for a
"means" limitation. See Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1350 (Fed. Cir. 2015).
Appeal2018-000425
Application 14/146,758
Moreover, even if Appellants desired to avail themselves of
Section 112(±), I am not able to discern any disclosure of "corresponding
structure" in Appellants' Specification that serves as a means for performing
the claimed function. Id. In short, Appellants just claim a function without
claiming, or even disclosing, any means or other structure for performing the
function other than, perhaps, a black box. Prevailing case authority makes it
abundantly clear that, if structure for performing a function is not positively
recited in a claim, functional claiming requires invocation of Section 112(±)
and disclosure of corresponding structure in the specification that performs
the claimed function.
If the specification is not clear as to the structure that the
patentee intends to correspond to the claimed function, then the
patentee has not paid the price but is attempting to claim in
functional terms unbounded by any reference to structure in the
specification.
Medical Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1211 (Fed. Cir. 2003); see also Biomedino, LLC v. Waters Techs. Corp., 490
F.3d 946, 948 (Fed.Cir.2007) ("[I]n return for generic claiming ability, the
applicant must indicate in the specification what structure constitutes the
means.").
Thus, in my opinion, in addition to the reasoning of the majority with
which I am full agreement, Claim 1 should be rejected under one or more
provisions of Section 112 such as lack of written description to demonstrate
possession, lack of enablement, and/or indefiniteness.
2