Ex Parte Webb

Patent Trial and Appeal Board

Jul 11, 2017

11521861 (P.T.A.B. Jul. 11, 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.
11/521,861 09/15/2006 Scot Webb 67097-1111; 11032 1989
54549 7590 07/13/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
AMIRI, NAHID
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
07/13/2017 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 SCOT WEBB
Appeal 2016-000838
Application 11/521,861
Technology Center 3600
Before JAMES P. CALVE, GEORGE R. HOSKINS, and
ANTHONY KNIGHT, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 9—11, 13—21, and 23—29.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 The Examiner withdrew the rejection of claim 22 under 35 U.S.C. § 103(a)
as unpatentable over Mackellar and Jee. See Ans. 7.
Appeal 2016-000838
Application 11/521,861
CLAIMED SUBJECT MATTER
Claims 9, 16, and 27 are independent.2 Claim 9 is reproduced below.
9. A rotating shaft coupling assembly comprising:
a first rotating shaft defining a step at a longitudinal end;
a second rotating shaft having a longitudinal end to be received
against the step of the first rotating shaft such that the first and second
rotating shafts form an overlapping portion;
a coupler sleeve fabricated from a shape memory alloy
contracted to a strong phase by heat and disposed about at least the
overlapping portion of the first and second rotating shafts to couple
the shafts together wherein the first rotating shaft defines a first hole
therethrough interiorly of said shape memory alloy coupler sleeve and
the second rotating shaft defines a second hole therethrough interiorly
of said shape memory alloy coupler sleeve such that the holes are
axially aligned with one another for receiving a connector pin through
the holes.
REJECTIONS
Claims 9—11, 13, 17, 18, 20, 21, 27, and 29 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Mackellar (US 5,665,187, iss.
Sept. 9, 1997) and Jee (US 6,637,110 B2, iss. Oct. 28, 2003).
Claims 14—16, 23, 24, and 26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mackellar, Jee, and Straghan (US 5,176,406, iss.
Jan. 5, 1993).
Claims 19, 25, and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mackellar, Jee, and Morioka (US 6,062,116, iss. May 16,
2000).
2 The Examiner authorized entry of Appellant’s Amendment, which was
filed on October 27, 2014, in response to the Final Action. Adv. Action 17.
The Amendment cancelled claims 1—8 and 12. See Amendment, filed Oct.
27, 2014, at 2-5.
2
Appeal 2016-000838
Application 11/521,861
ANALYSIS
Claims 9—11, 13, 17, 18, 20, 21, 27, and 29
as unpatentable over Mackellar and Jee
Claim 9
The Examiner found that Mackellar discloses a rotating shaft coupling
assembly as recited in claim 9, except for the coupler sleeve being made of a
shape memory alloy. Final Act. 2—3. The Examiner found that Jee teaches a
coupling assembly with coupler sleeve 2 made from a shape memory alloy.
Id. at 3. The Examiner determined that it would have been obvious to form
coupler sleeve 27 of Mackellar of a shape memory alloy, as taught by Jee, to
readily form a strong joint between the pipe members and coupler sleeve, as
taught by Jee. Id. The Examiner reasoned that it would have been obvious
thereby to replace one known connection for another so there is no need to
provide adhesive between a shaft and annular member. Id. at 10; Ans. 3.
Appellant argues that Mackellar’s Figures 2 and 4 fail to disclose first
and second shafts 10, 11 with holes “therethrough interiorly of said shape
memory coupler sleeve,” as claimed. Appeal Br. 7—8. This argument is not
persuasive because Mackellar discloses that rivets 23 are shown extending
through shaft 10 and member 11 in Figure 2, and pins/rivets 30 are inserted
through holes 29 in shaft 10 and member 11 in Figure 4. Mackellar, 3:25—
28, 3:45—49. Holes 29 in shafts 10, 11 in Figure 4 are disposed interiorly of
outer sleeve 27, which the Examiner proposes to form of a shape memory
alloy as taught by Jee. Final Act. 2-4. Holes in shafts 10, 11 in Figure 2 are
disposed interiorly of a shape memory alloy couple sleeve that the Examiner
proposes to add based on Jee’s teaching of such a coupler sleeve 2. See id.
In both cases the holes in the shafts are interior of the coupler sleeve.
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Application 11/521,861
Appellant also argues that expanding or deforming annular member
11 and shaft 10 of Mackellar with a shape memory alloy of Jee would not
work because there would be no annular portion to receive adhesive, and the
adhesive bond formed between those elements would be destroyed because
Mackellar teaches to keep the stress levels for the adhesive below the elastic
limit. Appeal Br. 5. Appellant also argues that eliminating adhesive from
Mackellar renders Mackellar unsatisfactory for its intended purpose and
changes its principle of operation of providing a strong joint. Id. at 6—7;
Reply Br. 1—2.
The Examiner’s reason for modifying Mackellar to include a coupler
sleeve made from a shape memory alloy to form a strong joint between the
pipes and coupler sleeve is supported by rational underpinnings. In this
regard, Jee expressly teaches that a shape memory alloy connector (joint 2)
forms a joint that strongly connects two pipes and provides defect tolerance
for pipes with different diameters. Jee, 1:14—56, 2:34—36; Final Act. 3.
Appellant’s arguments regarding the effects of the combination on the
adhesive connection (Appeal Br. 4—6) are not persuasive as the Examiner
proposes to replace Mackellar’s adhesive connection entirely with a shape
memory alloy connection of Jee. Ans. 3; Final Act. 10. Nor do we view the
modification as changing the principle of operation of Mackellar, because
Mackellar teaches the use of interference fits with shrink sleeves 22 or steel
or composite outer sleeves that secure composite shaft 10 to annular member
11 without adhesives. Mackellar, 2:57—3:34, Fig. 1. Jee teaches that shape
memory alloys provide strong bonds with tolerance for different pipe sizes.
Jee, 1:21—40, 2:30-36. Thus, we sustain the rejection of claim 9.
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Appeal 2016-000838
Application 11/521,861
Claim 10
Claim 10 depends from claim 9 and recites that “the first rotating shaft
is an integrated starter/generator shaft, and the second rotating shaft is a high
pressure compressor shaft.” The Examiner found that Mackellar discloses a
second rotating shaft 10 that is capable of being a high pressure compressor
shaft as claimed. Final Act. 4. Appellant argues that the Examiner lacks a
factual basis for finding that composite shafts can be used in high pressure
compressors. Appeal Br. 8; Reply Br. 2.
The Examiner had a sound basis for finding that Mackellar discloses a
rotating shaft (composite shaft 10) that is capable of being a high pressure
compressor shaft, and Appellant’s arguments do not persuade us otherwise.
Mackellar teaches that the composite drive shafts are suitable alternatives to
metal tubing drive shafts and provide reduced weight for equivalent strength.
Mackellar, 1:16—25. Appellant has not provided any evidence sufficient to
persuade us that composite drive shaft 10 is not capable of being used as a
high pressure compressor shaft. See In re Schreiber, 128 F.3d 1473, 1477—
79 (Fed. Cir. 1997). Thus, we sustain the rejection of claim 10.
Claim 13
The Examiner found that Mackellar discloses a coupler sleeve (outer
sleeve 27) that is configured to retain the connector pin (rivet 30) as recited
in claim 13. Final Act. 3. The Examiner also found that the pin is received
and retained within a hole of the coupler sleeve (annular portion 27). Ans. 5.
Appellant argues that annular portion 27 is not “configured to retain
the connector pin,” as claimed because the fastener (pin/rivet 30) is inserted
into a hole that is drilled through annular portion 27. Appeal Br. 8—9 (citing
Mackellar, Fig. 4); Reply Br. 3.
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Appeal 2016-000838
Application 11/521,861
Mackellar shows pin 30 retained in outer sleeve 27 in Figure 4, as the
Examiner found. Thus, outer sleeve 27 is configured to retain pin 30. Claim
13 requires no more. Appellant has not identified any other structure that is
“configured to retain the connector pin” and not disclosed in Mackellar.3
Reply Br. 3; Appeal Br. 8—9. Thus, we sustain the rejection of claim 13.
Claim 17
The Examiner found that Mackellar discloses a coupler sleeve that is
continuous across the entire area that is radially outside the first hole and the
second hole, as recited in claim 17. Final Act. 3; Ans. 5. Appellant argues
that Mackellar’s outer sleeve (annular portion 27) has a hole drilled through
it so fastener 30 can be inserted therethrough and therefore is not continuous
across the entire area that is radially outside the first hole because, if it were,
fastener 30 could not be inserted. Appeal Br. 9. We agree.
The Examiner’s finding that Mackellar discloses a sleeve in Figure 4
that is continuous across the entire area that is radially outside the first hole
in the first rotating shaft and the second hole in the second rotating shaft is
not supported by a preponderance of evidence. Mackellar discloses outer
sleeve 27 with pre-drilled holes so pins/rivets 30 can be inserted through it
and through holes 29 in composite shaft 10, annular member 11. Mackellar,
3:37-49. Therefore, outer sleeve 27 is not continuous across an area that is
radially outside holes 29 in composite shaft 10 and annular member 11, as
required by claim 17. Thus, we do not sustain the rejection of claim 17.
3 Appellant discloses that coupler sleeve 122 is “used to retain pins 120
against centrifugal body forces caused by the rotation of the rotating shafts
102, 104.” Spec. ]fl6. Claim 13 is not so limited, however, and we decline
to read such features from the Specification into claim 13 when the language
of claim 13 is broader than that embodiment.
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Application 11/521,861
Claim 18
The Examiner found that Mackellar suggests that the first and second
rotating shafts 10, 11 each comprise a metallic material, as recited in claim
18. Final Act. 4. The Examiner also found that Figure 2 of Mackellar
illustrates each of shafts 10, 11 with metal cross-hatching. Ans. 5.
Appellant argues that Mackellar’s shaft 10 is a composite material and
therefore is not a metallic material. Appeal Br. 9—10. We agree. Mackellar
discloses the invention as coupling a composite drive shaft 10 to annular
member 11. Shaft 10 is disclosed as being formed of a composite material
such as carbon fibre. Mackellar, 1:7—21. Cross-hatching on shaft 10 is not
persuasive evidence because Mackellar discloses that shaft 10 in Figures 1—4
is a composite material. Id. at 2:57—60, 3:39-42, 4:24—26.
Thus, we do not sustain the rejection of claim 18.
Claim 20
The Examiner found that Mackellar discloses part of coupler sleeve
27 positioned radially outside of the connector pin, as recited in claim 20.
Final Act. 4. Appellant argues that Figure 4 of Mackellar shows fastener 30
extending radially through annular portion 27, which thus is not radially
outside fastener 30. Appeal Br. 10. We agree. For the reasons discussed
above for claim 17, Mackellar does not disclose a sleeve that is positioned
radially outside of a connector pin (rivet 23, 30). See Mackellar, Figs. 2-4.
Figure 2 does not illustrate this feature because annular portion 27 is not
depicted in Figure 2. In Figure 4, annular portion 27 has holes pre-drilled
through it so that pins/rivets 30 can be inserted through it and then through
holes 29 in shafts 10, 11, as depicted in Figure 4. Id. at 3:39-49.
Thus, we do not sustain the rejection of claim 20.
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Appeal 2016-000838
Application 11/521,861
Claim 21
Claim 21 depends from claim 9 and recites that “the connector pin is
received within the holes [of the first and second rotating shafts] such that a
radially innermost face of at least one of the first or second rotating shafts is
spaced radially from a radially innermost face of the connector pin.” The
Examiner found that Figures 2 and 4 of Mackellar shows rivets 23 in holes
so that a radially innermost face of one of the rotating shafts 10, 11 is spaced
radially inward from a radially innermost face of rivet 23, as recited in claim
21. Final Act. 5; Ans. 6.
Appellant argues that Figures 2 and 4 illustrate rivets 23, 30 extending
radially inward past an innermost face of shaft 10 and annular member 11 so
there is no innermost face of either shaft 10 or shaft 11 that is spaced radially
inward from a radially innermost face of rivet 23, which extends completely
through shaft 10 and shaft 11. Appeal Br. 10; Reply Br. 3^4. We agree.
Rivets 23, 30 extend completely through and beyond the radially innermost
faces of composite shaft 10 and annular member 11. Mackellar, Figs. 2, 4.
Thus, we do not sustain the rejection of claim 21.
Claim 29
Claim 29 depends from claim 27 and recites “the shape memory alloy
coupler sleeve is unapertured radially outside the first hole and the second
hole.” The Examiner relied on Jee to teach a shape memory alloy coupler
sleeve 2 that is unapertured radially outside the two shafts with the first and
second holes as recited in claim 29, and determined that it would have been
obvious to replace Mackellar’s coupler sleeve with the unapertured shape
memory coupler sleeve of Jee to form a strong joint between the pipes and
coupler sleeve. Final Act. 6 (citing Jee, 1:33—36, Fig. 1C); Ans. 6.
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Appeal 2016-000838
Application 11/521,861
Appellant’s argument that Mackellar’s annular portion 27 does not
teach this feature (Appeal Br. 10) is not persuasive of error because the
Examiner’s rejection replaces annular portion 27 with Jee’s unapertured
sleeve (shape memory alloy 2), as discussed above. Appellant’s argument
that a skilled artisan would not have been motivated to modify Mackellar to
include a coupler sleeve that covers holes (Reply Br. 4) does not persuade us
of error in the Examiner’s determination that a skilled artisan would have
been motivated to do so to form a strong joint between the rotating shafts 10,
11 of Mackellar, as occurs with the use of Jee’s unapertured shape memory
alloy sleeve 2, as taught by Jee. Jee, 1:21—39, Fig. 1C.
Thus, we sustain the rejection of claim 29.
Claims 11 and 27
Appellant argues that claim 11 is patentable because it depends from
claim 9. Appeal Br. 8. Appellant also argues that independent claim 27 is
patentable for the same reasons as independent claim 9. Id. at 10. Because
we sustain the rejection of claim 9, these arguments are not persuasive.
Thus, we sustain the rejection of claims 11 and 27.
Claims 14^16, 23, 24, and 26
as unpatentable over Mackellar, Jee, and Straghan
Claim 16
The Examiner relied on Mackellar to teach a rotating shaft coupling
assembly as recited in claim 16, Jee to teach a shape memory alloy, and
Straghan to teach a circumferential rib 28. Final Act. 7—8. The Examiner
determined that it would have been obvious to provide a circumferential rib
on Mackellar’s coupler sleeve to provide a quick snap connection thereby to
reduce the time and effort to assemble the connection. Id. at 8.
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Application 11/521,861
Appellant argues that the modification would complicate assembly by
requiring the rib to seat in a groove. Appeal Br. 11. This attorney argument
is not persuasive because Straghan teaches that circumferential rib 28 mates
with circumferential groove 36 with a simple snap engagement. Straghan,
2:53—56, 3:5—10, 3:31—38. Thus, the Examiner’s reasoning is supported by
the express teachings of Straghan as to the advantages of this connection.
Thus, we sustain the rejection of claim 16.
Claims 14, 15, 23, 24, and 26
Appellant argues that claims 14 and 15 are patentable because they
depend from independent claim 9, and claims 23, 24, and 26 are patentable
for the same reasons as claims 17, 18, and 20, respectively.4 Appeal Br. 11—
12. Because we sustain the rejection of claim 9, these arguments are not
persuasive as to claims 14 and 15. Because we do not sustain the rejection
of claims 17, 18, and 20, we also do not sustain the rejection of claims 23,
24, and 26 for the same reasons. Compare Final Act. 2-4 with id. at 8—9.
Claims 19, 25, and 28
as unpatentable over Mackellar, Jee, and Morioka
The Examiner found that Morioka discloses rotating shafts comprising
a nickel based alloy material, as recited in dependent claims 19, 25, and 28.
Final Act. 9. The Examiner determined it would have been obvious to form
each shaft of Mackellar from a nickel based alloy, as taught by Morioka, to
rotate the shafts at very high speeds such as for aircraft gas turbine shafts.
Id.', Ans. 7 (same).
4 Claims 23, 24, and 26 depend from claim 16 and recite similar features as
claims 17, 18, and 20, which depend from claim 9.
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Application 11/521,861
Appellant argues persuasively that the Examiner’s rejection lacks a
rational underpinning because Mackellar is directed to methods of securing a
composite shaft; therefore a skilled artisan would not have been motivated to
modify Mackellar’s method to connect a nickel based alloy shaft instead of a
composite shaft. Appeal Br. 12—13. We agree. The Examiner’s reasoning
that a skilled artisan would have done so in order to rotate the shafts at very
high speeds (Ans. 7) is not supported by any record evidence, particularly
where Mackellar discloses that composite drive shafts provide a number of
advantages over metal drive shafts to include lower weight for equivalent
strength. See Mackellar, 1:16—21.
Thus, we do not sustain the rejection of claims 19, 25, and 28.
DECISION
We affirm the rejections of claims 9—11, 13—16, 27, and 29, and we
reverse the rejection of claims 17—21, 23—26, and 28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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