Ex Parte Suciu et al

Patent Trial and Appeal Board

Mar 6, 2014

11719812 (P.T.A.B. Mar. 6, 2014)

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.
11/719,812 05/21/2007 Gabriel L. Suciu PA08511201A;67097-106PUS1 1634
54549 7590 03/06/2014
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
PRAGER, JESSE M
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
03/06/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte GABRIEL L. SUCIU, JAMES W. NORRIS,
CRAIG A. NORDEEN, and BRIAN MERRY
________________

Appeal 2012-000451
Application 11/719,812
Technology Center 3700
________________

Before MICHAEL L. HOELTER, JAMES P. CALVE and
PATRICK R. SCANLON, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-000451
Application 11/719,812

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-12 and 14-20. App. Br. 1. Claim 13 has been
cancelled. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to turbine engines, and more
particularly to a jet flap inlet guide vane for a compressor for a tip turbine
engine.” Spec. 1:7-8. Independent claim 1 is illustrative of the claims on
appeal and is reproduced below:
1. A turbine engine comprising:
a fan having a plurality of fan blades generating a fan
exhaust flowing through a fan exhaust air flow path through the
turbine engine, at least one of the fan blades defines a
compressor chamber extending radially therein;
a turbine at an outer circumference of the fan;
a compressor having a plurality of radially extending
compressor blades disposed radially inward of the fan exhaust
air flow path, the compressor blades compressing core airflow
that is sent to the compressor chamber; and
a compressor inlet guide vane (IGV) mounted upstream
of the plurality of compressor blades, the IGV including a fluid
outlet, the fluid outlet positioned on the IGV such that fluid
flow through the fluid outlet redirects air flow into the
compressor.

EVIDENCE RELIED ON BY THE EXAMINER
Freeman US 5,275,528 Jan. 4, 1994
Becquerelle US 6,622 473 B2 Sep. 23, 2003
Wadia US 2003/0035719 A1 Feb. 20, 2003
Paul US 2004/0025490 A1 Feb. 12, 2004
Weiler DE 3333437 A1 Apr. 11, 1985
Acton GB 2191606 A Dec. 16, 1987
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Application 11/719,812

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THE REJECTIONS ON APPEAL
1. Claims 1, 4-8, 10-12, 14, 16, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Paul and Acton. Ans. 4.
2. Claims 2, 3, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Paul, Acton, and Freeman. Ans. 8.
3. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Paul, Acton, and Becquerelle. Ans. 10.
4. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Paul, Acton, and Wadia. Ans. 10.
5. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Paul, Acton, and Weiler. Ans. 11.
ANALYSIS
The rejection of claims 1, 4-8, 10-12, 14, 16, 19, and 20
as being unpatentable over Paul and Acton
Appellants present separate arguments for independent claims 1 and 8.
App. Br. 5-8. We address each such claim separately with the remaining
claims, i.e., claims 4-7, 10-12, 14, 16, 19, and 20, standing or falling with
their respective parent claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1
The Examiner relies primarily on Paul as disclosing the limitations of
claim 1, including the disclosure of “a compressor inlet guide vane (IGV,
93a).” Ans. 4-5. However, the Examiner acknowledges that “Paul does not
disclose the IGV including a fluid outlet, the fluid outlet positioned on the
IGV such that fluid flow through the fluid outlet redirects air flow into the
compressor.” Ans. 5. For this, the Examiner relies on the disclosure in
Acton of “a compressor IGV (1214) including a fluid outlet (1215), the fluid
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outlet positioned on the IGV such that fluid flow through the fluid outlet
redirects air flow into the compressor.” Ans. 5. The Examiner concludes
that it would have been obvious to modify Paul’s turbine engine “by having
the IGV include a fluid outlet, the fluid outlet positioned on the IGV” in the
manner taught by Acton so as to “prevent flutter in a compressor.” Ans. 5
referencing Acton 22:55 to 23:1 (“the [introduced] pertubations being
controlled to act counter to the perturbations associated with the flutter” in
the compressor).
Appellants contend that Paul’s item 93a “is an ‘axial compressor fixed
blade’ (Paul. par. 84)” and as such it cannot be the IGV of claim 1 which
requires an IGV “such that fluid flow through the fluid outlet redirects air
flow into the compressor.” App. Br. 5. More succinctly, Appellants
contend that Paul’s “compressor blade 93a is in the compressor and
therefore would be unable to redirect air flow into the compressor.” App.
Br. 5 (emphases added); see also Reply Br. 2.
The Examiner finds that Appellants’ focus on the teachings of Paul to
the exclusion of the teachings of Acton, is indicative that Appellants are
arguing “the references individually.” Ans. 12. This appears to be the case.
The Examiner also notes that the features which Paul does not disclose (i.e.,
fluid outlets on the IGV that redirect flow into the compressor) “is taught by
Action [sic].” Ans. 12. This also appears to be the case. We further note
that the claim term “into” is not expressly defined by Appellants but has an
ordinary and customary meaning of “in the direction of.”1 As such,
Appellants do not explain how the ejected air of Paul as modified by Acton

1 See WEBSTER’S NEW COLLEGIATE DICTIONARY (1979) at 600.
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does not flow “in the direction of” the compressor. In view of the above,
Appellants’ contentions are not persuasive of Examiner error.
Appellants also contend that one of “ordinary skill in the art would not
identify the axial compressor fixed blade 93a as an inlet guide vane” (App.
Br. 6) but the Examiner finds that “the stationary blade 93a of Paul is a vane,
is located at the inlet and guides/redirects fluid into the compressor section,
and appears to be an inlet guide vane” (Ans. 12). Appellants’ contention
does not persuade us of error in the Examiner’s finding.
Appellants further contend that the proposed modification “is
improper because the Examiner has not shown” that such modification
“would reduce flutter in the compressor.” App. Br. 6. In reply, the
Examiner references In re Keller, 642 F.2d 413 (CCPA 1981) which
provides instruction that the test for obviousness “is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” Ans. 13. Appellants do not indicate how this understanding of
Keller is incorrect. In the present matter, the Examiner finds that Acton
“provides a clear motivation for incorporating fluid outlets into the IGV of
Paul,” i.e., “to prevent flutter in a compressor.” Ans. 13, 5. Accordingly,
based on Acton’s teachings, Appellants’ contention that there is no showing
that a modification “would reduce flutter in the compressor” (App. Br. 6) is
not persuasive.
Appellants further contend that “the Examiner has not shown” that
such modification would achieve the desired result of reduced flutter. Reply
Br. 2. Appellants’ contention to the effect that the Examiner has the burden
of actually showing that flutter would be reduced is misplaced. Our
reviewing court has recently provided guidance that “[t]he PTO bears the
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initial burden of showing a prima facie case of obviousness. In re Sullivan,
498 F.3d 1345, 1351 (Fed. Cir. 2007). When a prima facie case of
obviousness is made, the burden then shifts to the applicant to come forward
with evidence and/or argument supporting patentability. In re Glaug, 283
F.3d 1335, 1338 (Fed. Cir. 2002).” In re Raymond Giannelli, 739 F.3d
1375, 1379 (Fed. Cir. 2014). We are further instructed that “all that is
required of the office to meet its prima facie burden of production is to set
forth the statutory basis of the rejection and the reference or references relied
upon in a sufficiently articulate and informative manner as to meet the notice
requirement of [35 U.S.C.] § 132” In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011). Appellants do not show where the Examiner failed to set forth
the statutory basis of the rejection or identify the references relied upon in a
sufficiently articulated and informative manner. Instead, Appellants seek the
Examiner to go beyond that which is required and show that flutter would
“actually reduce.” Reply Br. 2. However, In re Best, 562 F.2d 1252, 1255
(CCPA 1977) explains the reason for this burden shift to Appellants stating
that
[w]hether the rejection is based on “inherency” under 35 U.S.C.
§ 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products
(emphasis added). Accordingly, Appellants’ contention that the Examiner
“has not shown” that flutter would be reduced is not persuasive.
Appellants further contend that the Examiner’s modification “is
improper because it is beyond the teachings of Acton, as Acton explicitly
discloses axial compressor blades 1204 downstream of the inlet guide vane
1214 without the fluid outlets.” App. Br. 7; see also Reply Br. 3.
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Appellants’ contention is not persuasive because Appellants fail to show
how the Examiner erred even in view of Acton’s downstream compressor
blade 1204 l that lacks fluid outlets. Appellants also contend that “Paul
discloses no such source of compressed air.” App. Br. 7; see also Reply Br.
3. Here, the Examiner again finds that Appellants are arguing “the
references individually” and that “[t]he compressed air directed into the
compressor blade is taught by Action [sic].” Ans. 14.
Appellants further contend that the Examiner’s proposed modification
“would change the principle of operation of Paul.” App. Br. 7. However, as
explained by the Examiner, Paul is directed to utilizing a compressor “to
increase the pressure of the air entering the combustion portion” of the
turbine and that by employing Acton to reduce flutter, such modification
“would not materially affect the principle operation of the tip turbine.” Ans.
15. Appellants do not explain how “the principle of operation of Paul”
would be changed by reducing flutter in the turbine. App. Br. 7.
Appellants also contend that “[n]either Paul nor Acton teach attaching
a valve to a compressor blade.” App. Br. 7. However, the incorporation of a
valve is not a limitation expressed in claim 1 (but is expressed in claim 2
which is discussed infra).
Accordingly, and based on the record presented, Appellants’
contentions are not persuasive and as such, we sustain the Examiner’s
rejection of claims 1, 4-7, 14, 16, 19, and 20.
Claim 8
Regarding independent claim 8, Appellants rely on the arguments
previously presented and more specifically because “attempting to modify
Paul to include the valve would be improper as it would change the principle
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of operation of Paul.” App. Br. 8. To be clear, claim 8 does not specifically
recite a valve but instead includes the limitation of “controlling a flow of the
fluid.” The Examiner relies on the reasons previously provided. Ans. 15.
Furthermore, the Examiner finds that “providing a valve” to reduce “the
flutter of the compressor blade” “does not change the principle operation of
the tip turbine of Paul.” Ans. 15. Appellants do not explain how the use of
a valve to control flutter would materially change Paul and it is not
otherwise self-evident from the record. Appellants’ contention is not
supported by objective evidence nor do Appellants present any affidavits or
declarations in support of this assertion. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s arguments in a brief cannot take the place
of evidence.”). Accordingly, and in view of the above, we do not find
Appellants’ contentions persuasive. We sustain the Examiner’s rejection of
claims 8 and 10-12.
The rejection of claims 2, 3, and 9
as being unpatentable over Paul, Acton, and Freeman
Appellants argue dependent claims 2, 3 and 9 together and Appellants
also present separate arguments for claim 2. App. Br. 8-9. We select claim
2 for review with claims 3 and 9 standing or falling with claim 2.
Claim 2 includes the limitation of “including a valve having an inlet
leading from an area aft of the compressor blades to selectively direct air to
the IGV.” The Examiner additionally relies on Freeman as disclosing “a
valve (14) having an inlet (20) leading from an area aft of the compressor
blades to selectively direct air to the IGV.” Ans. 9. Appellants dispute the
Examiner’s reliance on Freeman for such teaching and address Freeman’s
“inlets 8” for support. App. Br. 8. The Examiner does not rely on
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Freeman’s item 8 but instead on Freeman’s item 20. Ans. 9. Freeman
teaches that items 20 are “tappings” and are spaced around the downstream
high-pressure end of the compressor so as to “feed the ring main 16 with a
high-pressure air supply.” Freeman 6:1-4; see also Fig. 4. Freeman
continues stating that as disturbances in the turbine are detected, valve 14 is
triggered “to inject onto the first ring of [the] rotor blades the high pressure
flow bled from the outlet end of the compressor” (i.e., tappings 20).
Freeman 6:5-13. In view of the record presented, Appellants do not explain
how the Examiner erred in combining Freeman with Paul and Acton and
concluding that it would have been obvious to provide “a valve having an
inlet leading from an area aft of the compressor blade to selectively direct air
to the IGV.” Ans. 9. We sustain the Examiner’s rejection of claims 2, 3 and
9.
The rejection of (a) claim 15 as being unpatentable over
Paul, Acton, and Becquerelle; and, (b) claim 17 as being
unpatentable over Paul, Acton, and Wadia
For each rejection, Appellants do not present additional arguments but
instead contend that the additionally cited art (i.e., Becquerelle and Wadia)
“does not address the above-mentioned issues.” App. Br. 9. Appellants’
contentions are not persuasive and accordingly, we sustain the Examiner’s
rejection of claims 15 and 17.
The rejection of claim 18
as being unpatentable over Paul, Acton, and Weiler
Dependent claim 18 includes the additional limitation of “wherein at
least one of the plurality of nozzles is directed in a direction approximately
45 degrees relative to a surface of the compressor IGV.” The Examiner
relies on the additional teachings of Weiler for disclosing “at least one of the
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plurality of nozzles is directed in an angle relative to a surface of the
compressor IGV (Fig. 1).” Ans. 11. The Examiner acknowledges that
Weiler does not disclose the specific angle of 45 degrees as claimed but
finds that “[s]ince applicant has not disclosed that having the nozzle at this
specific angle solves any stated problem or is for any particular purpose,”
then such angle is “an obvious matter of design choice.” Ans. 11.
Appellants do not indicate that this angle is unique among other angles that
are possible, or that this claimed angle achieves unexpected results or
functions differently. Instead, Appellants address the Examiner’s rejection
stating that “rejections on obviousness cannot be sustained with mere
conclusory statements.” App. Br. 10; see also Reply Br. 4. More
specifically, Appellants contend that “[s]ince the Examiner has not found
this feature in the prior art references, the Examiner has not met his burden
establishing evidence of prima facie obviousness.” App. Br. 10.
We disagree with Appellants. In the present matter, the Examiner has
identified Weiler as disclosing a nozzle having an angle (which is not in
dispute) and, extrapolating from this angled teaching, the Examiner deems
the use of a 45 degree angle to be “an obvious matter of design choice.”
Ans. 11. In such cases, we are instructed that when “there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). Appellants do not indicate that angling the nozzle at
45 degrees is beyond the ability of one skilled in the art. Furthermore, in the
present matter, Appellants “failed to set forth any reason why the differences
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between the claimed invention and the prior art would result in a different
function or give unexpected results,” and as such, the Examiner’s reliance on
“design choice” is appropriate. See In re Chu, 66 F.3d 292, 299 (Fed. Cir.
1995). We sustain the Examiner’s rejection of claim 18.

DECISION
The Examiner’s rejections of claims 1-12 and 14-20 are 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)(1)(iv).

AFFIRMED

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