Ex Parte St. Mary et al

Patent Trial and Appeal Board

Oct 3, 2016

12720749 (P.T.A.B. Oct. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121720,749 03/10/2010 Christopher St. Mary
54549 7590 10/05/2016
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
PA-8934U;
67097-1291US1
9730
EXAMINER
AMICK, JACOB M
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
10/05/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER ST. MARY, ROLAND R. BARNES,
CARL S. RICHARDSON, and DANIEL BENJAMIN
Appeal2014-009264
Application 12/720,749
Technology Center 3700
Before: LINDA E. HORNER, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-8 under 35 U.S.C. § 103(a) as unpatentable over Nastuk (US 5,537,814,
iss. July 23, 1996) and Debeneix (US 2005/0008477 Al, pub. Jan. 13,
2005). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-009264
Application 12/720,749
CLAIMED SUBJECT MATTER
The claims are directed to a gas turbine with a compressor section, tie
shaft coupling, and cantilever mounted vanes. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A compressor section to be mounted in a gas turbine engine
compnsmg:
a plurality of compressor rotors arranged from an
upstream location toward a downstream location;
upstream and downstream hubs that bound the compressor
rotor stack;
a tie shaft to apply a force at a downstream end of said
compressor section to a downstream one of said compressor
rotors; and
vane sections being mounted intermediate said
compressor rotors, said vane sections including at least some
variable vanes driven by actuators mounted at a radially outer
position, and at least some fixed vanes being cantilever mounted
from an outer housing, such that they are spaced from a
compressor rotor, but unsecured at a radially inner end.
OPINION
Claims 1 and 5 are independent. Claims 2--4 depend from claim 1 and
claims 6-8 depend from claim 5. Appellants argue all of the claims together
(Appeal Br. 3--4), thus they stand or fall together. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that N astuk teaches the features of claims 1 and 5
including "fixed vanes being cantilever mounted from an outer housing," but
does not teach "variable vanes driven by actuators mounted at a radially
outer position." Final Act. 4--5. Debeneix is relied on to teach a
turbomachine compressor with the claimed variable vanes and "that it is
known in the art to use such vanes to increase performance of a
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Application 12/720,749
turbomachine." Id. at 5. The Examiner explains that it would have been
obvious to modify Nastuk to include variable vanes because of this increased
performance. Id.
Appellants argue that the rejection is based on hindsight, because
Nastuk "may" not show the claimed cantilever mounted vanes. Appeal
Br. 3. Appellants argue that the vanes illustrated in the Figures are
"unnumbered and undiscussed structure ... which may simply be vanes
illustrated in a simplified manner." Id. In essence, Appellants are arguing
that there is not enough information to determine whether the vanes relied
on by the Examiner are cantilever mounted vanes or not.
In response, the Examiner provides a marked-up copy ofNastuk
Figure 1 identifying two different groups of stator vanes. Final Act. 3;
Answer 4. The Examiner's position is that the first group of upstream stator
vanes, labeled in the annotated Figure 1 as "First and Second Stators with
Fixed Inner Structure," are fixed at the inner periphery and have an inner
mounting structure that is identified by the Examiner. Id. Appellants
acknowledge that the Examiner's interpretation of this first group appears to
be correct. Reply Br. 1. The Examiner finds that the second group of
downstream stator vanes, labeled in the annotated Figure 1 as "Cantilevered
Stators with Fixed Inner Structure," are cantilevered, and the Examiner
identifies rotor inner structure where inner mounting structure would
otherwise be found. Final Act. 3; Answer 4.
Appellants point out that an inner line, darker than other lines, on the
stator vanes in the second group "may well be [] some inner mount
structure." Reply Br. 1. Appellants also reemphasize their argument that
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Application 12/720,749
there is not enough detail to determine whether any of the stator vanes in
Nastuk are cantilevered or not. Id.
We review patentability of the claims based on a preponderance of the
evidence. "After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of
argument." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Reviewing all of the evidence provided, we are not informed of error
in the Examiner's finding that "N atsuk (sic) discloses a combination of
cantilevered stator vanes and stator vanes with inner mount structure ... ,
meeting the limitation of 'at least some fixed vanes being cantilever
mounted from an outer housing."' Final Act. 2.
Appellants do not argue or provide evidence about what one of skill in
the art would understand from N astuk. Appellants also do not argue that
Nastuk does not show cantilever mounted vanes, but rather that the
illustrated vanes may not be cantilever mounted vanes as there is no written
discussion of the illustrated vanes in Nastuk. See In re Mraz, 455 F.2d 1069,
1072 (CCP A 1972) (holding that for purposes of anticipation, an invention
can be shown by patent drawings, even as to features unexplained by the
specification). Appellants do argue that it "is likely" the vanes are "standard
vanes," which presumably means that they are fixed on both ends. Appeal
Br. 3. But no evidence or explanation is provided in the Appeal Brief as to
why this is likely.
Further, the Examiner identifies a lack of inner mounting structure
with at least some of the vanes. Answer 4. In the Reply Brief it is argued
for the first time that thick dark lines on the vanes may represent mounting
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Application 12/720,749
structure on the vanes the Examiner found to be cantilevered. Reply Br. 1.
The Examiner's interpretation that the downstream vanes are cantilevered
because the Figure does not show an inner mounting structure seems more
likely. For these reasons we are not persuaded of error in the Examiner's
findings and reasoning.
Appellants also argue that "there is no reason [to combine the
references] to include variable vanes, despite the Examiner's contention that
doing so would 'increase performance.' In fact, what it would do is
complicate the mount structure ofNastuk et al." Appeal Br. 4. Appellants
explain that ifNastuk does show cantilevered stator vanes, these vanes
"have the benefit of not requiring structure at its radially inner end," while
variable vanes "would complicate and require inner mount structure." Id. at
3.
Appellants again do not identify error in the Examiner's rejection.
Appellants state that there is no reason to combine while acknowledging the
reason given by the Examiner. But, Appellants do not explain why the
combination would not increase performance, nor do they identify any other
errors in the Examiner's reasoning.
Appellants do identify that there may be tradeoffs in using variable
vanes in place of some of vanes in Nastuk. Although tradeoffs may be
required in balancing the benefits and drawbacks of the different types of
stator vanes5 such tradeoffs do not necessarily prevent the proposed
combination or negate the obviousness of the claimed subject matter. See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine"). The
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Application 12/720,749
Examiner has noted an advantage to modifying a gas turbine engine to
include variable vanes-------namely, increasing engine performance. The
possible disadvantage identified by Appellants-namely~ increased
complexity in the mount structure--does not necessarily outweigh the
advantage identified by the Exarniner. Appellants' argument is unpersuasive
in that it fails to point to evidence or provide sound technical reasoning
establishing that a person of ordinary skill in the art would recognize that the
identified possible disadvantage would outweigh the benefit identified by the
Examiner such that the proposed modification would not have been obvious.
For these reasons, we sustain the Examiner's decision rejecting
independent claims 1 and 5. As the remaining claims depend from claims 1
and 5 are not separately argued, they fall with claims 1 and 5.
DECISION
The Examiner's rejection of claims 1-8 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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