Ex Parte Schwarz et al

Patent Trial and Appeal Board

Sep 28, 2017

13406748 (P.T.A.B. Sep. 28, 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.
13/406,748 02/28/2012 Frederick M. Schwarz PA20932U; 8627
67097-1709US1
54549 7590 10/02/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
FLORES, JUAN G
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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
DANIEL BERNARD KUPRATIS
Appeal 2016-005774
Application 13/406,748
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frederick M. Schwarz and Daniel Bernard Kupratis (Appellants)1
appeal under 35U.S.C. § 134 from the Examiner’s decision rejecting claims
1—33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is United Technologies
Corporation. Appeal Br. 1.
Appeal 2016-005774
Application 13/406,748
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A gas turbine engine comprising:
a shaft;
a turbine configured to drive the shaft, the turbine
including at least one stage comprising a plurality of turbine
vanes adjacent a plurality of turbine blades; and
wherein the plurality of vanes includes at least one
variable vane movable between a closed position to reduce
gaspath flow and an open position to increase gaspath flow, and
wherein movement of the at least one variable vane is controlled
based on at least one engine limiting condition wherein the at
least one engine limiting condition comprises at least a takeoff
condition.
REJECTIONS
I. Claims 25—31 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
II. Claims 1, 2, 4—6, and 25—27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cooker (US 2007/0214795 Al,
pub. Sept. 20, 2007).
III. Claims 3, 29, 30, and 33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cooker and Winter
(US 2011/0004388 Al, pub. Jan. 6, 2011).
IV. Claims 7 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cooker and Rowe (US 2010/0021285 Al,
pub. Jan. 28, 2010).
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V. Claims 8—12 and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cooker and Kupratis (US 2012/0304660 Al,
pub. Dec. 6, 2012).
VI. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Cooker, Kupratis, and Sheridan
(US 2010/0105516 Al, pub. Apr. 29, 2010).
VII. Claims 14, 15, 17—21, 23, 24, and 32 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Winter and Cooker.
VIII. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Winter, Cooker, and Rowe.
IX. Claim 22 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Winter, Cooker, and Kupratis.
DISCUSSION
Rejection I
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citingMayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294
(2012)). Under that framework, we first “determine whether the claims at
issue are directed to one of those patent-ineligible concepts”—i.e., a law of
nature, a natural phenomenon, or an abstract idea. Id. If so, we secondly
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
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132 S. Ct. at 1298, 1297). The Supreme Court has described the second part
of the analysis as “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.”’ Id. (alteration in original) (quoting Mayo, 132 S. Ct. at
1294).
Claim 25:
The Examiner determines that independent claim 25 is “directed to the
abstract idea of a method for controlling a gas turbine engine.” Final Act. 4.
The Examiner also determines that “[t]he additional element(s) or
combination of elements in the claim(s) other than the abstract idea per se
amount(s) to no more than[] mere instructions to implement the idea on a
computer.” Id. at 4—5. According to the Examiner, the claimed steps of
“identifying” and “generating” do not involve any structure and “do not
account [sic] to significantly more than performing well-understood, routine
and conventional activities” and “are not a technical improvement to the
variable vane control field.” Ans. 22.
Appellants argue “that claim 25 as a whole amounts to significantly
more than an abstract idea.” Appeal Br. 4. In particular, Appellants assert
that “the Examiner has not identified any examples in which the court has
identified operations analogous to the claimed operations as being an
‘abstract idea.’” Reply Br. 2. According to Appellants, “the Examiner has
not provided support for the assertion that the claimed equation is an abstract
idea.” Id. at 4. This argument is not persuasive of error.
The Federal Circuit has described the first step as a determination of
the “basic character of the claimed subject matter.” Internet Patents Corp. v.
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Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273—74
(Fed. Cir. 2012)). The Federal Circuit has also indicated that this step
should determine whether a claimed method “recites an abstraction—an
idea, having no particular concrete or tangible form.” Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also Alice, 134 S. Ct. at
2355 (“The ‘abstract ideas’ category embodies ‘the longstanding rule that
“[a]n idea of itself is not patentable.”’” (quoting Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (further quotations and citations omitted)).
We agree with the Examiner that, under the first step of the analysis,
claim 25 is directed to an abstract idea. See Final Act. 4. Namely, the claim
is directed to identifying a condition and generating a control signal based
on the condition. Such activity amounts to receiving information (i.e.,
indicating the condition) and generating additional information (i.e.,
conveyed by the control signal) using an algorithm.2 Our reviewing courts
have held claims ineligible under § 101 when directed to manipulating
existing information, such as by using algorithms, to generate additional
information. See Parker v. Flook, 437 U.S. 584, 585, 594-96 (1978)
(rejecting as aims to (1) measuring the current value for
a variable in a catalytic conversion process, (2) using an algorithm to
calculate an updated “alarm-limit value” for that variable, and (3) updating
2 Although claim 25 recites the algorithm in words rather than as a
mathematical formula, the claim nevertheless recites an algorithm. See In
re Grams, 888 F.2d 835, 837 n.l (Fed. Cir. 1989) (“It is of no moment that
the algorithm is not expressed in terms of a mathematical formula. Words
used in a claim operating on data to solve a problem can serve the same
purpose as a formula.”).
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the limit with the new value); Benson, 409 U.S. at 71—72 (rejecting as
ineligible claims directed to an algorithm for converting binary-coded
decimal numerals into pure binary form); Elec. Power Grp. v. Alstom S.A.,
830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (discussing how “collecting
information” and “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more” are abstract ideas);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (“Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.”).
Addressing the second step of the Alice framework, Appellants argue
“that claim 25 is directed to significantly more than the alleged judicial
exception.” Reply Br. 5. In particular, Appellants assert that the steps of
identifying a takeoff condition and generating a control signal “provide [] a
technical improvement in that a control is used to move a variable vane to a
desired position dependent upon a specific engine limiting condition, which
includes at least a takeoff condition.” Id. at 5—6. Appellants assert that the
claim “limitations impose meaningful limits that apply to particular engine
limiting condition variables, such as a take-off condition, to improve an
existing technological field of controlling a gas turbine engine.” Id. at 6
(citing Diamond v. Diehr, 450 U.S. 175 (1981)). According to Appellants,
“[t]he control is a structural limitation that is required to move the variable
vane structure in response to an identification of a takeoff engine limiting
condition.” Id.
Appellants’ argument is not persuasive because the broadest
reasonable interpretation of claim 25 does not require moving the variable
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vane. Instead, the claim recites “generating a control signal to actuate a
control to move a variable turbine vane to a desired vane position.” Appeal
Br. 23 (Claims App.) (emphasis added). Although the generated control
signal may be for the purpose of actuating a control to move the vane, the
claim does not recite a step of moving the vane. In this regard, Appellants’
reliance on Diehr is unavailing. The claims at issue in Diehr recited a
method that included automatically opening a press based on the
calculations and comparisons. See Diehr, 450 U.S. at 187 (explaining that
the claimed method requires “installing rubber in a press, closing the mold,
constantly determining the temperature of the mold, constantly recalculating
the appropriate cure time through the use of the formula and a digital
computer, and automatically opening the press at the proper time”). In
contrast, Appellants’ claim 25 only requires generating a control signal, and
does not require moving the vane, or any other physical step.
Moreover, the claimed steps of “identifying” a takeoff condition and
“generating” a control signal can be performed using well-understood,
routine, and conventional functions of a general purpose computer, and
Appellants do not provide adequate evidence to the contrary. The
Specification supports this view by discussing only generic elements used in
performing the steps. See Spec. 142. In particular, the Specification
describes that “control unit 80 receives temperature data from one or more
temperature sensors 82 and determines whether or not the variable vane
should be in the open or closed position.” Id. “Alternatively, the control
unit 80 can control the vane position in response to any parameters that
might be correlated to a turbine temperature.” Id. There is no further
description, in the claims or the Specification, of any particular technology
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for performing the steps recited in the claims other than generic computer
components (i.e., “control unit”) used in their ordinary capacity. See Enflsh,
LLCv. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (examining
whether the focus of the claim is on a “specific asserted improvement in
computer capabilities” or “on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool” and determining that the
claims in that case focus on “an improvement to [the] computer functionality
itself, not on economic or other tasks for which a computer is used in its
ordinary capacity”); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”) (citing Alice, 134 S.Ct. at 2358)). In
short, the recitations in claim 25 directed to “identifying at least one engine
limiting condition” and “generating a control signal” amount to nothing
more than “appending conventional steps, specified at a high level of
generality,” and, thus are “not ‘enough’ to supply an ‘inventive
concept.”’ Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300,
1297, 1294).
For the above reasons, Appellants fail to apprise us of error in the
Examiner’s determination that claim 25 is directed to patent-ineligible
subject matter. Accordingly, we sustain the rejection of claim 25 under
35U.S.C. § 101.
Claims 26 and 27:
Appellants present arguments for claims 26 and 27, which depend
from claim 25, under separate headings, but make contentions analogous to
those discussed above wit t to the rejection of claim 25. In
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particular, Appellants assert that these claims recite additional steps that
provide a technical improvement and are similar to those of Diamond v.
Diehr because the steps specifically relate to particular variables that are
used to modify the control to move the vane. See Reply Br. 6—8. For the
above reasons, these arguments are unpersuasive, and we find nothing in the
additional limitations recited in claims 26 and 27 to be sufficiently
transformative to render the claims patent eligible. For this reason,
Appellants do not apprise us of error in the Examiner’s determination that
claims 26 and 27 are directed to patent-ineligible subject matter.
Accordingly, we sustain the rejection of claims 26 and 27 under 35 U.S.C.
§101.
Claim 28:
Appellants argue that dependent claim 28 includes “a limitation that is
unconventional and transformative.” Appeal Br. 5. In particular, Appellants
assert that “fan rotor speed must be determined, a temperature must be
identified to provide a temperature correction factor, and the fan rotor speed
is then corrected based on the correction factor to control the position of the
variable vane.” Id. According to Appellants, “[t]he improvement solves the
problem of increased temperatures during takeoff by controlling vane
position as a function of a corrected fan rotor speed.” Id. This argument is
impersuasive because it is not commensurate with the scope of claim 28,
which does not require controlling vane position. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (noting that it is well established that limitations
not appearing in the claims cannot be relied upon for patentability). Instead,
claim 28 only recites “controlling the variable vane as a function of
corrected fan rotor speed that comprises actual fan rotor speed modified by a
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temperature correction factor.” Appeal Br. 24 (Claims App.). In other
words, controlling the variable vane does not necessarily require moving (or
changing the position of) the vane. Accordingly, we sustain the rejection of
claim 28 under 35 U.S.C. § 101.
Claim 29:
Dependent claim 29 recites “moving the variable vane to be in an open
position during the take-off condition when the temperature exceeds a
predetermined temperature level that is based on a maximum allowable
temperature level at a rear stage of a high pressure compressor.” Appeal Br.
24 (Claims App.) (emphasis added). Appellants argue that “[t]his is a
limitation that is unconventional and transformative,” and “provides a
technical improvement in that[,] when an excessive compressor temperature
is identified during takeoff, the control is used to move the variable to be in
an open position during take-off.” Id. at 5. Claim 29 is distinct from claims
25—28 in that it requires moving the variable vane structure based on the
take-off condition and temperature level, rather than simply generating a
control signal intended to actuate a control to move the vane. See id. at 24
(Claims App.). In this regard, similar to the claims in Diamond v. Diehr,
which included a step of automatically opening a press based on
calculations, the variable vane moving step recited in claim 29 goes beyond
the generic operations recited in Appellants’ claims 25—28, and amounts to
significantly more than the abstract idea itself. For this reason, we do not
sustain the rejection of claim 29 under 35 U.S.C. § 101.
Claims 30 and 31:
For the reasons discussed below in our entry of a new ground of
rejection with respect to claims 30 and 31, these claims are indefinite
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because the meaning of the limitation “positioning the variable turbine vane”
is unclear. In particular, it is unclear whether “positioning” the vane
requires moving the variable vane (i.e., between open and closed positions),
similar to the limitation in claim 29, discussed above, or simply locating the
turbine vane structure in a particular area of the engine. Given that the
meaning of this limitation is required to assess whether the claim elements
amount to significantly more than an abstract idea, we cannot reach a
determination as to the correctness of the Examiner’s conclusion that the
claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101.
Cf. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (One is not in a position
to determine whether a claim is enabled under the first paragraph of
35 U.S.C. § 112 until the metes and bounds of that claim are determined
under the second paragraph of this section of the statute.). Accordingly, we
reverse the rejection of claims 30 and 31 under 35 U.S.C. § 101. However,
we emphasize that our decision in this regard is based solely on the
indefmiteness of the claimed subject matter.
Rejection II
Claim 1:
The Examiner finds that Cooker discloses a gas turbine engine
including “at least one variable vane movable between a closed position to
reduce gas path flow and an open position to increase gas path flow (121,
sentences 2-5), and wherein movement of the at least one variable vane is
controlled based on at least one engine limiting condition (120).” Final Act.
5—6. The Examiner acknowledges that “Cooker does not teach the at least
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one engine limiting condition comprising at least a take-off condition,” but
finds:
It is common practice for engineers in the art of gas turbine
engine controls to predetermine multiple engine operational
conditions, e.g. take-off, since it is a condition that every gas
turbine engine goes through during a flight cycle and includes
the highest operating temperatures many of its components
experience during operation to produce a required thrust for take­
off. Cooker discloses multiple parameters, including high
pressure and low pressure turbine flow areas by a variable vane
system (121), that are used to control gas temperatures along the
engine while maintaining a desired engine thrust output (127). It
is known in the gas turbine engine art that take-off[] conditions
demand the highest thrust output of an engine throughout its
operation, as a consequence, the amount of air flow is at its
highest as well.
Id. at 6. The Examiner determines that it would have been obvious to
modify Cooker to control the variable vane based on a take-off condition “as
an engineering expedient for the purpose of allowing a maximum flow area
through the turbine in accordance with the maximum thrust requirements of
a take-off operating condition.” Id.
Appellants argue that “[tjhere is no disclosure or teaching in Cooker
to suggest that a variable vane within a turbine be adjusted based on take-off
conditions,” and “Cooker makes no mention of take-off conditions in
relation to variable vane control.” Appeal Br. 7. Appellants assert that
“Cooker only teaches control during flight in relation to temperature,” and
“[tjhere is nothing to suggest that [the] vane position is controlled simply
based on a take-off condition by itself.” Id. at 8. According to Appellants,
“[t]he [EJxaminer recognizes [that] Cooker does not mention take-off
conditions but argues that by varying the vanes, the airflow is controlled and
that it would be inherent to do so during take-off.” Id. at 7.
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These arguments are not persuasive of error because they are not
responsive to the rejection as presented by the Examiner. As discussed
above, the Examiner acknowledges that Cooker does not disclose that the
engine limiting condition comprises a take-off condition. See Final Act. 6.
The Examiner does not find that controlling the vanes during take-off would
be an inherent feature. Rather, the Examiner finds that “it is inherently
taught that the gas turbine engine goes through a take-off condition, cruise,
landing, and other possible conditions which require different amounts of air
flow, fuel and rotational speeds of the engine rotors to provide the required
thrust during each cycle condition.” Id. at 3 (emphasis added). In other
words, take-off, cruise, landing, and other conditions are inherent aspects of
gas turbine engine operation. The Examiner makes additional findings as to
practices and concepts that were known to one of ordinary skill in the art at
the time of the invention (i.e., the thrust and air flow demands on take-off),
which Appellants do not specifically contest, and, based on these findings,
the Examiner determines that it would have been obvious to modify Cooker
to control the variable vanes based on a take-off condition. See id. at 6; see
also id. at 3 (determining that “it would have been obvious to a person of
ordinary skills [sic] in the art to control the variable vanes and move them to
a predetermined position for a takeoff condition as well as for other cycle
stages that require different operating conditions”). In this regard,
Appellants do not specifically refute the Examiner’s findings or reasoning.
Moreover, to the extent that Appellants’ argument insists on an
explicit teaching, suggestion, or motivation in Cooker for the Examiner’s
proposed modification, such an argument has been foreclosed by the
Supreme Court. KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 415, 419
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(2007) (stating that a rigid insistence on teaching, suggestion, or motivation
(the TSM test) is incompatible with its precedent concerning obviousness).
The Court noted that an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
[an examiner] can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. Instead, the
relevant inquiry is whether the Examiner has set forth “some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418. Here, as discussed above, the Examiner
articulates adequate reasoning based on rational underpinnings as to why it
would have been obvious to one of ordinary skill in the art to modify the
system of Cooker, which controls variable vanes in a gas turbine engine
based on engine conditions, to control the vanes based on a take-off
condition. See Final Act. 3,6. Appellants do not address the Examiner’s
articulated reasoning or explain why the reasoning is in error.
For the above reasons, Appellants do not apprise us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Cooker.
Claim 2:
The Examiner finds that “Cooker further teaches the engine limiting
condition comprising a temperature at a predetermined engine operational
condition (120).” Id. at 7. The Examiner clarifies that “Cooker discloses
measuring a temperature in the gas turbine engine flowpath continuously
during the operation of the engine and controlling the turbine flow areas”
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using the variable vanes, and “controlling the variable vane position based
on a predetermined engine operational condition.” Ans. 27 (citing Cooker
20-22, 27). According to the Examiner, “the variable vanes of Cooker
are controlled based on a temperature condition during predetermined engine
operational condition and said temperature condition occurs through all
stages of the engine’s operation which include takeoff.” Id.
Appellants argue that “there is no disclosure [in Cooker] of
controlling variable vane movement during take-off based on a temperature
at a predetermined engine operational condition.” Reply Br. 12. In
particular, Appellants assert that “Cooker makes no mention of take-off
conditions or any problems associated therewith,” and “[t]here certainly is
no teaching of controlling the variable vane based on a specified temperature
during a takeoff condition.” Id. This argument is not persuasive because it
does not specifically address or point out error in the Examiner’s findings or
reasoning as presented in the rejection and clarified in the Answer. Here,
Appellants do not apprise us of error in the Examiner’s findings as to the
disclosure of Cooker, which are supported by a preponderance of the
evidence. Accordingly, we sustain the rejection of claim 2 as unpatentable
over Cooker.
Claims 4 and 5:
The Examiner acknowledges that Cooker “does not teach the variable
vane being configured to be in a more closed position during a cruise
condition than in a take-off position.” Final Act. 7. However, the Examiner
finds that “[i]t is common practice for engineers in the art of gas turbine
engine controls to predetermine multiple engine operational conditions, e.g.
cruise, which requires less working flow than at take-off condition.” Id.
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The Examiner determines that it would have been obvious to configure
Cooker’s “variable vane to be in a more closed position during a cruise
condition than in a take-off position as an engineering expedient for the
purpose of controlling the amount of working flow the gas turbine engine
needs to produce thrust at a lower level than take-off.” Id. The Examiner
clarifies, in the Answer, that “[i]t is well known in the gas turbine engine art
that higher thrust require [s] more flow through a turbine than lower thrust,
and furthermore, that a takeoff condition requires more thrust than a cruise
condition.” Ans. 27—28. In particular, the Examiner explains that
takeoff and cruise conditions physically require different
amounts of flow that produce the respective required thrust and
this is possible by controlling the variable vanes to be more open
to allow more flow and produce more thrust or to be more closed
to allow less flow and produce less thrust as disclosed by Cooker
to maintain a desired engine thrust output.
Id. at 28—29.
Appellants do not specifically challenge these findings or assert that
this is not the case. Appellants argue that “[[t]here is nothing found in
Cooker that discloses or teaches varying vane position for take-off vs. cruise
conditions.” Appeal Br. 8. This argument is unpersuasive because it does
not specifically address or point out error in the Examiner’s findings with
respect to the knowledge of one of ordinary skill in the art at the time of the
invention, nor in the reasoning articulated in support of the proposed
modification of Cooker. Other than the bald assertion that “the [EJxaminer’s
argument of controlling the amount of working flow for the engine is a
generalized assumption” {id.), Appellants do not proffer any evidence or
persuasive technical reasoning to explain why the Examiner’s findings and
reasoning with respect to working flow in the engine are deficient. As
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discussed above, the Examiner articulates adequate reasoning based on
rational underpinnings as to why one of ordinary skill in the art would have
been led to modify the variable vane control system of Cooker such that the
variable vane is in a more closed position during a cruise condition than in a
take-off position (see Final Act. 7; Ans. 27—28), which Appellants do not
persuasively refute.
For these reasons, Appellants do not apprise us of error in the
rejection of claim 4. Accordingly, we sustain the rejection of claim 4, and
claim 5, for which Appellants rely on the same argument (see Appeal Br. 9),
as unpatentable over Cooker.
Claim 6:
In contesting the rejection of claim 6, Appellants argue that Cooker
does not disclose “immediate movement of the vane to an open position in
response to an increase in throttle.” Appeal Br. 9. Appellants assert that
“[t]he entire Cooker reference is directed to control based on a temperature
in the gas engine flowpath,” and “[tjhere is nothing found in Cooker to
suggest an immediate movement of the vanes to a more open position in
response to an increase in throttle for a take-off.” Reply Br. 13 (citing
Cooker, Abstract; Claims 1, 23). This argument against Cooker is
unpersuasive because it is not responsive to the rejection as presented.
Here, the Examiner acknowledges that Cooker “does not teach the
variable vane being initiated to immediately move to a more open position in
response to an increase in throttle for a take-off event or to move to a more
open position as engine power is moved from part power to claim power.”
Final Act. 8. However, the Examiner finds that “[i]t is common practice for
engineers in the art of gas turbine engine controls to immediately move
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variable vanes to more open or more closed positions based on the current
conditions during a flight cycle to provide the required thrust at each
condition.” Id. The Examiner determines:
It would have been obvious to one having ordinary skill in the
gas turbine engine control art at the time the invention was made
to modify the gas turbine of Cooker by initiating the variable
vane to immediately move to a more open position in response
to an increase in throttle for a take-off event or to move to a more
open position as engine power is moved from part power to claim
power as an engineering expedient for the purpose of providing
the required thrust at each operating condition.
Id. at 8—9. The Examiner also finds that “Cooker discloses the main aircraft
controller (FADEC) receiving input from the pilot operated controls as well
as the engine and aircraft and based on these inputs and a temperature
condition monitoring the flow areas are controlled (126).” Ans. 29.
According to the Examiner, “an increase in throttle which is an input from a
pilot operated control, would cause a temperature condition increase, these
two parameters are monitored by Cooker’s FADEC and are used to control
the flow area.” Id. In this regard, Appellants’ arguments do not specifically
address the Examiner’s findings and reasoning, or explain why these
findings and reasoning are in error.
For the above reasons, Appellants do not apprise us of error in the
rejection of claim 6 as unpatentable over Cooker, which we, thus, sustain.
Claims 25—27:
Independent claim 25 includes limitations similar to the limitations in
independent claim 1 discussed above. Compare Appeal Br. 23 (Claims
App.), with id. at 20. In contesting the rejection of claim 25, Appellants
essentially rehash the arguments set forth with respect to claim 1, which are
unpersuasive with respect to claim 25 for the same reasons. See id. at 9—10
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(asserting that “there is no disclosure or teaching in Cooker to suggest that a
variable vane be adjusted based on a take-off condition as claimed,”
“Cooker makes no mention of take-off conditions in relation to variable vane
control,” and “Cooker only teaches control during flight in relation to
temperature”); Reply Br. 14 (asserting “that one of ordinary skill in the art
would not consider the engine operation control set forth in Cooker as
corresponding to the claimed variable vane control based on take-off
conditions”). Namely, Appellants’ arguments are not responsive to the
rejection as presented by the Examiner, and do not specifically address the
particular findings and reasoning presented in support of the conclusion of
obviousness. See Final Act. 9—10; Ans. 29—30.
For these reasons, Appellants do not apprise us of error in the
rejection of independent claim 25. Accordingly, we sustain the rejection of
claim 25, and its dependent claims 26 and 27, for which Appellants rely on
the same argument (see Appeal Br. 10), as unpatentable over Cooker.
Rejection III
Claims 3 and 29:
In contesting the rejection of claim 3, Appellants argue that “Winter
also does not disclose or teach controlling a variable area nozzle during take­
off in relation to a temperature of a compressor.” Appeal Br. 11. In
particular, Appellants assert that “Winter does not disclose or teach setting a
predetermined temperature level to be a maximum allowable temperature
level at a rear stage of a high pressure compressor.” Id. According to
Appellants, “Winter only teaches controlling temperature in relation to thrust
demands,” and “only mentions positioning a temperature sensor in the
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compressor section.” Id. (citing Winter 129). Appellants add that “there
... is no suggestion that the temperature sensor measure a temperature at the
rear stage of a high pressure compressor.” Reply Br. 15.
Appellants’ arguments with respect to Winter are not persuasive
because they essentially attack the reference individually, where the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642
F.2d 413, 425 (CCPA 1981)). Here, the Examiner’s rejection is based on the
combined teachings of Cooker and Winter. See Final Act. 11—12. Namely,
the Examiner finds that Winter discloses “the use of temperature sensors that
could be placed at multiple locations, including the high pressure
compressor, to monitor the temperature and transmit the values to a
controller.” Id. at 11. The Examiner also finds that “Winter discloses
monitoring the temperature where airfoils and other components are
susceptible to thermal damage due to peaking gas path temperatures (128—
29; note that the maximum temperature in the compressor of a gas turbine
engine are registered at the rear end of the high pressure compressor).” Id.
The Examiner also finds that Winter discloses “that peak temperatures are
controlled by a variable vane nozzle (125),” and that “it is well known that
peak temperatures in a gas turbine engine compressor occur at the rear stage
of the compressor.” Ans. 32. Appellants do not identify error in these
particular findings. The Examiner determines that it would have been
obvious to modify the gas turbine engine of Cooker to include “controlling
the variable vanes based on a maximum allowable temperature level at a rear
stage of a high pressure compressor as taught by Winter because this allows
protecting airfoils and other components that are susceptible to thermal
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damage due to peaking gas path temperatures.” Final Act. 12. In this
regard, Appellants do not specifically address the Examiner’s articulated
reasoning for the conclusion of obviousness. The Examiner articulates
adequate reasoning based on rational underpinnings for modifying the gas
turbine engine of Cooker, which Appellants do not persuasively refute.
For these reasons, Appellants fail to apprise us of error in the rejection
of claim 3. Accordingly, we sustain the rejection of claim 3, and of claim
29, for which Appellants rely on the same arguments (see Appeal Br. 11), as
unpatentable over Cooker and Winter.
Claim 30:
In contesting the rejection of claim 30, Appellants argue that “[tjhere
is no disclosure or teaching in Winter of controlling vane movement based
on temperature as Winter does not include the structure of variable vanes in
the turbine.” Id. at 12. Appellants assert that Winter does not disclose
“controlling movement of a structure during take-off in relation to an inlet
temperature to the high pressure turbine.” Id. According to Appellants,
“Winter discloses measuring a temperature within the turbine section itself
(see Figure 2 showing a temperature sensor 42 at the fourth stage of the high
pressure turbine 28).” Reply Br. 16. These arguments are unpersuasive for
the same reasons discussed above that Appellants’ analogous arguments
presented with respect to claim 3 are not persuasive. Namely, Appellants’
arguments attack Winter individually without addressing the combination of
teachings proposed by the Examiner in the rejection. See Final Act. 12; Ans.
33—34. As the Examiner explains, the rejection proposes “modif[ying] the
arrangement of Cooker[,] which teaches varying variable vanes when
temperature exceeds a predetermined temperature level[,] by having this
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temperature level being measured at the inlet of the high pressure turbine as
disclosed by Winter.” Ans. 34. In this regard, Appellants do not specifically
address the Examiner’s findings or reasoning as presented in the rejection,
and, thus, do not apprise us of error in the rejection. Accordingly, we
sustain the rejection of claim 30 as unpatentable over Cooker and Winter.
We recognize the potential inconsistency implicit in our entry of a
new ground of rejection of claim 30, discussed below, under 35 U.S.C.
§112, second paragraph, as indefinite, with an affirmance of the Examiner’s
rejection of claim 30 under 35 U.S.C. § 103(a). Normally, when substantial
confusion exists as to the interpretation of a claim, and no reasonably
definite meaning can be ascribed to the terms in a claim, a determination as
to compliance with 35 U.S.C. § 112, first paragraph, and patentability under
35 U.S.C. § 102 or 103 and is not made. See In re Aoyama, 656 F.3d 1293,
1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an
anticipation rejection of indefinite claims). However, in this case, we can
reach a determination as to the propriety of the rejection under 35 U.S.C.
§ 103(a) without resolving the ambiguity addressed in the indefmiteness
rejection.
Claim 33:
In contesting the rejection of claim 33, Appellants argue that Cooker
and Winter do not disclose measuring temperature at the variable vane. See
Appeal Br. 12. Appellants assert that “Winter discloses using a temperature
sensor 42 in the flow path, [but not] . . . positioning the sensor at an inlet to
the high pressure turbine.” Reply Br. 17. According to Appellants, “there is
no disclosure or teaching found in either reference to suggest that a variable
vane is controlled based on a temperature measured at the vane itself.” Id.
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(emphasis added). These contentions are not responsive to the rejection as
articulated by the Examiner.
The Examiner finds that “Cooker[,] as modified by an engineering
expedient and Winter[,] further teach [sic] including a temperature sensor
positioned to measure a temperature at the variable vane, and wherein
movement of the variable vane is controlled based on a temperature
measured at the variable vane (Winter |28—29).” Final Act. 12. The
Examiner also finds that “Winter discloses measuring a temperature level
where components are susceptible to damage by peak temperature along the
core flow,” and “it is well known that maximum temperatures in a gas
turbine engine high pressure turbine section occur at the inlet of the turbine
right after the gas leaves the combustor section.” Ans. 34 (citing Winter
129). The Examiner finds that “Cooker discloses variable vanes being
located at the inlet of the high pressure turbine and these variable vanes
being controlled based on a temperature condition.” Id. at 34—35.
According to the Examiner, the proposed modification of Cooker involves
the “temperature level being measured at the inlet of the high pressure
turbine[,] as disclosed by Winter, where a peak temperature along the core
flow would occur in the high pressure turbine section[,] such as the variable
vanes of Cooker.” Id. at 35. In other words, the Examiner’s rejection relies
on the combined teachings of Cooker and Winter, and the knowledge of one
of ordinary skill in the art. See Final Act. 12; Ans. 34—35. Appellants’
arguments against Cooker and Winter essentially address the references in
isolation, rather than considering the combination of teachings as presented
in the rejection. See In re Merck & Co., 800 F.2d at 1097.
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Appellants also argue that “[t]he [EJxaminer is clearly engaging in a
hindsight reconstruction of the claimed invention, using [Appellants’]
structure as a template and selecting elements from the references to fill the
gaps.” Reply Br. 17. This argument is not persuasive because Appellants
do not identify any knowledge relied upon by the Examiner that was gleaned
only from Appellants’ disclosure and that was not otherwise within the level
of ordinary skill at the time of the invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971) (so long as a conclusion of obviousness is
based on a reconstruction that “takes into account only knowledge which
was within the level of ordinary skill at the time the claimed invention was
made and does not include knowledge gleaned only from [Appellants’]
disclosure, such a reconstruction is proper”).
As such, Appellants do not apprise us of error in the rejection of claim
33 as unpatentable over Cooker and Winter, which we, thus, sustain.
Rejection IV
In rejecting claim 7, the Examiner finds that Rowe discloses
a temperature sensor arranged to measure the temperature at the
inlet of the gas turbine engine, a second speed sensor arranged to
measure the rotational speed of a fan rotor and a calculator to
determine the temperature at the inlet of the gas turbine engine
multiplied by a function of a corrected non-dimensional speed of
rotation of the fan rotor (|9); this correction method allows
improving the system accuracy.
Final Act. 13. The Examiner determines that it would have been obvious “to
further modify the gas turbine of Cooker by controlling the variable vane as
a function of corrected fan rotor speed that comprises actual fan rotor speed
modified by a temperature correction factor as taught by Rowe because this
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allows improving the system accuracy.” Id. This temperature correction
factor is determined by dividing the measured fan rotational speed by the
square root of the ratio of measured engine inlet temperature to sea level ISA
temperature. Rowe 110.
Appellants argue that “Rowe discloses that the inlet temperature of the
engine is determined by a function of a corrected non-dimensional speed of
rotation of the fan rotor,” but “[t]here is no disclosure or teaching in Rowe of
controlling variable vane position as a function of corrected fan rotor speed.”
Appeal Br. 13 (citing Rowe 19). According to Appellants, “[i]nstead, Rowe
discloses controlling the variable vane arrangement based on a target
operating line 88 of an intermediate compressor 32 that is based on the
corrected outlet pressure and corrected speed of the intermediate compressor
32.” Id. (citing Rowe H 42-44, Fig. 4). We do not find this argument
against Rowe persuasive because it essentially attacks the reference in
isolation, rather than considering the combined teachings of the references as
presented in the rejection. See In re Merck & Co., 800 F.2d at 1097. As
discussed above, the Examiner relies on Cooker for disclosing a system that
controls variable turbine vanes based on engine operating conditions (i.e.,
differences between measured and target temperatures) (see Final Act. 6
(citing Cooker % 27), 13), and on Rowe only for disclosing an inlet
temperature sensor, tan speed sensor, and calculator to determine the inlet
temperature multiplied by a corrected fan rotor speed (see id. at 13 (citing
Rowe 19)). Appellants’ argument does not specifically address or point out
error in the Examiner’s findings with respect to Cooker and Rowe as
presented in the rejection, nor in the reasoning articulated in support of the
proposed modification of Cooker.
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For these reasons, Appellants do not apprise us of error in the
rejection of claim 7. Regarding claim 28, Appellants rely on the same
unpersuasive arguments presented for patentability of claim 7. See Appeal
Br. 13. Accordingly, we sustain the rejection of claims 7 and 28 as
unpatentable over Cooker and Winter.
Rejection V
Claims 8, 10, 11, and 31:
In contesting the rejection of dependent claims 8, 10, 11, and 31,
Appellants rely on the arguments set forth with respect to base claims 1 and
25, adding only that Kupratis does not remedy the asserted deficiency of
Cooker. See Appeal Br. 13—14. For the above reasons, Appellants’
arguments fail to apprise us of error in the rejection of independent claims 1
and 25, and, thus, likewise, do not apprise us of error in the rejection of
dependent claims 8, 10, 11, and 31. Accordingly, we sustain the rejection of
claims 8, 10, 11, and 31 as unpatentable over Cooker and Kupratis.3
Claims 9 and 12:
In rejecting claim 9, which depends from independent claim 1, the
Examiner finds that “Cooker as modified by an engineering expedient and
Kupratis further teach the second stage includes at least one variable vane
(Kupratis Fig.2, 66).” Final Act. 15. The Examiner explains that
“[Kupratis] clearly discloses vanes 66 could be varied similar to vanes 66a
(133).” Ans. 38.
3 As with claim 30, we are able to reach a determination as to the propriety
of the rejection under 35 U.S.C. § 103(a) without resolving the ambiguity
addressed in the indefmiteness rejection.
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Appellants argue that “Kupratis does not disclose or teach controlling
such a vane in a second stage for an engine limiting take-off condition.”
Appeal Br. 14. In particular, Appellants assert that “Kupratis discloses
pivoting vanes 66a in the first stage,” and “[t]here is no disclosure or
teaching of pivoting vanes in the second stage.” Id. According to
Appellants, Kupratis “simply states that one would know how to vary the
position of the vanes.” Reply Br. 19. This argument is not convincing.
Kupratis discloses that “vanes 66a in the first row are adjustable
vanes” that “can be pivoted, or otherwise actuated, to control flow through
the high-pressure turbine 34” (Kupratis 32), and that “[a] person having
skill in this art and the benefit of this disclosure would understand how to
vary the position of the vanes 66 and 66a to control flow through the high-
pressure turbine 34” {id. 133). Kupratis further discloses that, “[a] 1 though
only the high-pressure turbine 34 is described as having variable vanes 66a,
the intermediate-pressure turbine 36 and the low-pressure turbine 38 could
also include variable vanes.” Id. 134 (emphasis added); see id. (explaining
that “any area of the turbine section 18 could include variable vanes”). In
other words, Kupratis discloses providing variable vanes in a first stage (i.e.,
high-pressure turbine 34) and, additionally, including variable vanes in a
second stage (i.e., intermediate-pressure turbine 36 or low-pressure turbine
38). Appellants’ arguments do not identify a deficiency in the Examiner’s
findings as to the disclosure of Kupratis, which are supported by a
preponderance of the evidence.
For these reasons, Appellants do not apprise us of error in the
rejection of claim 9. Accordingly, we sustain the rejection of claim 9, and
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claim 12, for which Appellants rely on the same argument (see Appeal Br.
14—15), as unpatentable over Cooker and Kupratis.
Rejection VI
In contesting the rejection of claim 13, Appellants argue that “[tjhere
is nothing found in Cooker to indicate that there are problems with the tip
speed of the fan.” Appeal Br. 15. According to Appellants, “[t]he
[Ejxaminer’s proposed modification is clearly based on speculative and
conclusory reasoning.” Id. This argument is not persuasive because it
insists upon an explicit teaching, suggestion, or motivation in the prior art.
The Supreme Court has rejected such a rigid approach as being incompatible
with its precedent concerning obviousness. KSR, 550 U.S. at 415, 419.
As Appellants acknowledge (see Appeal Br. 15), rejections on
obviousness grounds must be supported by “some articulated reasoning with
some rational underpinning” to combine the known elements in the manner
required in the claim at issue (KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d
at 988)). Here, the Examiner articulates adequate reasoning based on
rational underpinnings as to why it would have been obvious to one of
ordinary skill in the art to modify the gas turbine engine of Cooker to
include a tan driven by a seared architecture, as taught bv Sheridan. See
Final Act. 17. In particular, the Examiner determines that it would have
been obvious “to further modify the gas turbine engine of Cooker by having
a fan driven by the second shaft via a geared architecture as taught by
Sheridan because this would avoid issues with the tip speed of the fan.” Id.
The Examiner “points out it is well known in the gas turbine engine art that
rotational speeds and radius of a fan blade are limited by the fan blade tip
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speed which can cause aerodynamic and structural problems when the tip
speed approache[s] the velocity of sound.” Ans. 39. According to the
Examiner, Sheridan uses “epicyclic gear trains to reduce the fan blade
rotational speed while the rotational speed of the compressor and turbine
sections remain unaffected, allowing to increase a thrust generation capacity
of the gas turbine engine without causing the aerodynamic and/or structural
problems to the fan blade section.” Id. In this regard, Appellants do not
offer any factual evidence or persuasive technical reasoning to refute the
Examiner’s position or explain why the Examiner’s articulated reasoning is
in error.
For these reasons, Appellants do not apprise us of error in the
rejection of claim 13 as unpatentable over Cooker, Kupratis, and Sheridan,
which we, thus, sustain.
Rejection VII
Claims 14, 15, 17—21, 23, and 32:
In contesting the rejection of claims 14, 15, 17—21, 23, and 32,
Appellants rely on the arguments presented for patentability of claims 1, 2,
3, and 9. See Appeal Br. 16, 18. For the reasons discussed above,
Appellants’ arguments do not apprise us of error in the rejections of claims
1, 2, 3, and 9, and likewise do not apprise us of error with respect to the
rejection of claims 14, 15, 17—21, 23, and 32 as unpatentable over Winter
and Cooker, which we, thus, sustain.
Claim 24:
Claim 24 recites, in relevant part, that “variable vane position is
controlled based on inputs comprising at least fuel flow.” Appeal Br. 23
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(Claims App.). Appellants argue that Winter, as relied on in the rejection,
fails to disclose “controlling vane position based on fuel flow.” Appeal Br.
17. We agree with Appellants.
The Examiner finds that “Winter as modified by Cooker and an
engineering expedient^] further teach [sic] variable vane position being
controlled based on inputs comprising at least fuel flow (Winter |44,
sentence 2).” Final Act. 21. The Examiner also finds that “Winter discloses
controlling a variable vane based on a thrust demand with inputs from a
throttle and other flight conditions (139).” Ans. 42. The Examiner takes the
position that “[a] throttle input is related to a fuel flow control, and Winter
further discloses increased fuel economy (144 sentence 2).” Id.
Appellants persuasively assert that the cited portions of Winter do not
disclose that the “variable structure is controlled based on a fuel flow input.”
Reply Br. 21 (emphasis added). In particular, Winter discloses that
“[Requesting thrust (step 52) comprises making a thrust demand on the
turbofan engine, based on input from a throttle, cockpit control system,
autopilot or other operator interface.” Winter 139. According to Winter,
“[t]he thrust demand also depends upon flight conditions including the
temperature, pressure and altitude, which limit the maximum or peak thrust
demand as described above.” Id. Winter also discloses that “[p]eak
temperature relief also enables higher pressure ratios and efficiency,
increasing fuel economy during high-demand takeoff and climb operations.”
Id. 144. In other words, although Winter’s throttle position may be related
to fuel flow, the Examiner does not point to, nor do we find, any teaching in
Winter of controlling vane position based on fuel flow. Thus, the Examiner
has not established by a preponderance of the evidence that any of the cited
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references, particularly Winter as relied upon, discloses the disputed
limitation as claimed.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that claim 24 is unpatentable based
on the cited references. On this basis, we do not sustain the rejection of
claim 24 as unpatentable over Winter and Cooker.
Rejections VIII and IX
In contesting the rejections of dependent claims 16 and 22, Appellants
rely on the arguments presented for patentability of claims 7, 12, and 14.
See Appeal Br. 18; Reply Br. 22—23. For the reasons discussed above,
Appellants’ arguments do not apprise us of error in the rejections of claims
7, 12, and 14, and likewise do not apprise us of error with respect to the
rejections of claims 16 and 22. Accordingly, we sustain the rejections of
claims 16 and 22 under 35 U.S.C. § 103(a).
New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 30 and 31 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claim 30 recites, in relevant part, “positioning the variable turbine
vane in a first stage of a high pressure turbine.” Appeal Br. 24 (Claims
App.). Claim 31 similarly recites “positioning the variable turbine vane in a
high pressure turbine that includes first and second stages.” Id.
Appellants’ Specification describes that “[t]he first stage 62 . . .
includes a plurality of first vanes 74 positioned adjacent the first blades 72.”
Spec. 140 (emphasis added); see also id. 146 (describing “a plurality of
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second vanes 94 positioned adjacent the second blades 92” (emphasis
added)). Given this description, the limitation “positioning the variable
turbine vane” could be reasonably interpreted as providing or locating the
variable turbine vane at a particular location in the engine (i.e., in the high
pressure turbine). However, the Specification also describes “[a]t least one
of the first vanes 74 is a variable vane 74a that is rotatable between an open
position to increase core air flow C and a closed/blocking position where
core air flow C is reduced.” Id. 141 (emphasis added); see also id. 142
(describing “movement of the at least one variable vane between the open
and closed position” (emphasis added)). In other words, given this
additional description in the Specification, the recited step of “positioning
the variable turbine vane” also could be reasonably interpreted as moving
(e.g., rotating) the variable vane, which is located in the high pressure
turbine, between open and closed positions.
As such, the limitation “positioning the variable turbine vane” in
claims 30 and 31 is amenable to more than one plausible construction,
rendering the metes and bounds of this limitation unclear. See Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“if a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under
35U.S.C. § 112, second paragraph, as indefinite”). Consequently, the
claims are indefinite because they do not reasonably apprise those of skill in
the art of the scope of the claimed invention.
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DECISION
The Examiner’s decision rejecting claims 25—31 under 35 U.S.C.
§ 101 is affirmed as to claims 25—28 and reversed as to claims 29—31.
The Examiner’s decision rejecting claims 1—23 and 25—33 under
35 U.S.C. § 103(a) is affirmed.
The Examiner’s decision rejecting claim 24 under 35 U.S.C. § 103(a)
is reversed.
We enter a new ground of rejection of claims 30 and 31 under
35 U.S.C. § 112, second paragraph, as being indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
34