Ex Parte Whitehurst et al

Patent Trial and Appeal Board

Feb 8, 2018

13459748 (P.T.A.B. Feb. 8, 2018)

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.
13/459,748 04/30/2012 Sean A. Whitehurst 61675US01; 6912
67097-1851 PUS 1
54549 7590 02/12/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
MIKUS, JASON
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/12/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN A. WHITEHURST,
CHRISTOPHER S. MCKAVENEY, and
PATRICK JAMES MCCOMB
Appeal 2017-001534
Application 13/459,748
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sean A. Whitehurst et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from a rejection of claims 1,10, and 16.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellants submit the real party in interest is United Technologies
Corporation. Appeal Br. 1.
Appeal 2017-001534
Application 13/459,748
CLAIMED SUBJECT MATTER
The claims are directed to a blade dovetail bottom. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A blade comprising:
an airfoil extending radially outwardly of a dovetail, said
dovetail having edges that will be at circumferential sides of the
blade when the blade is mounted within a rotor;
a bottom surface of the dovetail that will be radially
inward when the blade is mounted in a rotor, and said bottom
surface being formed such that a circumferentially central
portion of said bottom surface is radially thicker than are
circumferential edges;
said dovetail being formed of a material that is less strong
than the rotor which will receive said blade;
wherein said dovetail merges directly into the airfoil
without an intermediate platform; and
the bottom surface merging into radially outwardly
extending surfaces, and then inwardly extending surfaces.
REJECTIONS
1) Claims 1, 10, and 162 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.3
2) Claims 1 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brioude et al. (US 5,161,949, issued Nov. 10, 1992,
2 Although the Final Action rejects claims 29—31 under this heading, the
June 28, 2016 Amendment, adds the subject matter of claims 29—31 to claim
1,10, and 16 so that the rejection applies to claims 1,10, and 16. See
Advisory Act. 2; see also Ans. 3.
3 The Examiner rejected claims 29—31 under 35 U.S.C. § 112, second
paragraph as indefinite. Final Act. 4. An Amendment After Final Rejection
was filed on June 28, 2016 (“June 28, 2016 Amd.”) cancelling claims 29—31,
and was entered by the Examiner (see Advisory Action mailed July 14, 2016
(“Advisory Act.”)). Entry of the Amendment obviates the rejection of
claims 29—31 under 35 U.S.C. § 112, second paragraph.
2
Appeal 2017-001534
Application 13/459,748
hereinafter “Brioude”), Cai et al. (US 6,132,175, issued Oct. 17, 2000,
hereinafter “Cai”), and Connor et al. (US 2012/0251328 Al, published Oct.
4, 2012, hereinafter “Connor”).
3) Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Brioude, Cai, Connor and Schwarz et al. (US 2013/0195624 Al,
published Aug. 1, 2013, hereinafter “Schwarz”).
ANALYSIS
Rejection 1
The Examiner finds that claims 1,10, and 16 fail to comply with the
written description requirement, because the claimed “a bottom surface of
the dovetail merging into radially outwardly extending surfaces and then
inwardly extending surfaces . . . encompass a broader range of surfaces than
what was originally disclosed.” Ans. 3. According to the Examiner, one of
ordinary skill in the art would not understand “that Applicant was in
possession of all surfaces now covered by the claims.” Id.
Appellants argue that the drawings support the claimed feature.
Appeal Br. 3 (citing Fig. 4). According to Appellants, the Examiner’s
reason for the rejection, i.e., the claims encompass a broader range of
surfaces than disclosed, “is not a proper rejection under the written
description requirement.” Id.
The Examiner responds that Appellants’ Figure 4 “provides one
limiting example of’ the bottom surface of the dovetail as recited in claims
1,10, and 16. Ans. 3. However, the Examiner asserts that although Figure 4
shows various surfaces, because the Specification as filed is “silent
regarding the features of outwardly or inwardly extending surfaces,” it is not
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Application 13/459,748
apparent that “Appellant was in possession of all surface orientations of the
dovetail that are claimed.” Ans. 10(emphasis added).
Appellants reply that because Figure 4 illustrates one solution and
because “there is no requirement that every embodiment that could be
covered by a broad claim be specifically disclosed and illustrated . . .
Appellant is entitled to draft claims that are broader than the specific
disclosure.” Reply Br. 2. For the following reasons, we do not sustain this
rejection.
In order to comply with the written description requirement, the
Specification “must describe the invention sufficiently to convey to a person
of skill in the art that the patentee had possession of the claimed invention at
the time of the application, i.e., that the patentee invented what is claimed.”
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345
(Fed. Cir. 2005). The Federal Circuit has explained that:
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter, rather than
the presence or absence of literal support in the specification for the
claim language. . . . The content of the drawings may also be
considered in determining compliance with the written description
requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations
omitted).
The Examiner admits that Appellants’ Figure 4 is one example of the
bottom surface of the dovetail recited in claims 1,10, and 16. We note that
Appellants also describe the Figure 4 configuration in the Specification. See
Spec. H42 43. The Examiner does not adequately explain why the
example of a simple mechanical configuration shown in Appellants’ Figure
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4 is not sufficient for one of ordinary skill in the art to understand that
Appellants had possession of the claimed subject matter. We, thus, do not
sustain the rejection of claims 1,10, and 16 for failure to comply with the
written description requirement of 35 U.S.C. § 112, first paragraph.
Rejection 2
The Examiner finds that Brioude discloses most of the limitations of
claim 1, including a blade having a bottom surface of a dovetail that is
radially thicker than circumferential edges, but relies on Cai to teach that the
dovetail is formed of a material that is less strong than the rotor which will
receive the blade. Ans. 4. According to the Examiner, it would have been
obvious to modify Brioude’s blade/rotor disk combination “with the addition
of the ceramic/steel alloy blade and rotor properties of Cai, respectively” so
that the rotor is a stronger material than the blade with which it supports,
because the rotor “sees a larger majority of the stresses induced upon it
during operation.” Id. The Examiner makes similar findings for
independent claim 10. See Final Act. 5—7.
Appellants argue that Brioude does not “have the problem addressed
by Applicant’s disclosure.” Appeal Br. 3. According to Appellants, “there is
no showing that Brioude [] would be utilized in a rotor” with the materials of
Cai. Id.
The Examiner responds that “[i]t is prudent to form the disk of a
stronger material to better combat the operational stresses” because “the disk
bears the burden of supporting a larger majority of the stresses induced
during operation.” Ans. 10.
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Application 13/459,748
Appellants reply that the Examiner does not provide evidence to
support the rejection. Reply Br. 2. Appellants argue that Brioude does not
exhibit “any problem that might be addressed by the Cai et al. materials,”
and rather, based on the complexity of Cai, “one would assume that creating
the Brioude, et al. device from the materials of Cai, et al. would actually
raise potential problems.” Id. at 2—3.
Appellants have the better position here. Cai relates to the material
used in turbine blades which are subject to high gas temperatures. Cai,
1:15—17, 24—31. Cai uses different materials in the blade than the rotor in
order to withstand the high gas temperatures. See id. at 1:24—31. Brioude’s
blades are for a fan or compressor stage of a turboshaft engine, which are not
subject to hot gases. See Brioude, 1:8—12. The Examiner does not
adequately explain why it would have been obvious to one of ordinary skill
in the art to modify Brioude’s fan or compressor blades with Cai’s
steel/ceramic combination of materials used to withstand high temperature
gases passing through turbine blades. Moreover, we agree with Appellants
that the Examiner has not provided evidence or adequate technical reasoning
to support the position that the rotor should be formed from a stronger
material because the rotor “sees a larger majority of the stresses induced
upon it during operation.” Final Act. 6; see also Ans. 10. We, thus, do not
sustain the rejection of claims 1 and 10 because it is not supported by a
rational underpinning.
Rejection 3
Claim 16 contains the same limitation as claim 1, that the dovetail is
formed of a material that is less strong than a material forming the fan rotor.
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Application 13/459,748
Appeal Br. 6 (Claims App.). The Examiner rejects claim 16 based on
Brioude, Cai, Schwarz, and Connor and uses the same findings and
reasoning with respect to Brioude, Cai, and Connor, as for claim 1. Ans. 7—
9. The Examiner does not rely on Schwarz to cure the deficiencies in the
rejection of claim 1 based on Brioude, Cai, and Connor. We, therefore, do
not sustain the rejection of claim 16 for the same reasons stated above for
claim 1.
New Grounds of Rejection
We exercise our discretion under 37 C.F.R. § 41.50(b) and enter new
grounds of rejection against claims 1 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Appellants’ Figure 2B (“Figure 2B”), Figure 3 (“Figure
3”), and Appellants’ admitted prior art fan blades (“AAPA”) disclosed in
paragraphs 2—6 of the Specification, and against claim 16 under 35 U.S.C.
§ 103(a) as unpatentable over Figure 2B/Figure 3, in view of AAPA and
Schwarz. Figure 2B and Figure 3 are admitted prior art in that both are
labeled “Prior Art.” The Specification discloses that “Figure 2B is another
view of the (known rotor blade) Figure 2 A” and “Figure 3 shows a feature
with known dovetails 24 that can be improved.” Spec. 28—29, 41; Figs.
2B, and 3.
Claim 1
Figure 2B discloses a blade 20 comprising an airfoil 18 extending
radially outwardly of a dovetail 24, said dovetail having circumferential
edges 100, 101 that will be at circumferential sides of the blade when the
blade is mounted within a rotor 16. Spec. Tflf 38-40; Fig. 2B; see also Fig. 3.
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Application 13/459,748
Figure 2B also discloses a bottom surface of the dovetail that will be radially
inward when the blade is mounted in a rotor. Spec. 38-40; Fig. 2B.
Figure 2B also discloses that the bottom surface is formed such that a
circumferentially central portion of said bottom surface is radially thicker
than are circumferential edges 100, 101. Id.', see also Fig. 3.
Here, Appellants use the term “radially” to mean a direction that is
generally perpendicular to the axis of rotation of the rotor. That is, “radially
outwardly” and “radially inwardly” are directions away from and toward,
respectively, the axis of rotation of the rotor. Thus, the phrase “radially
thicker,” consistent with the Specification means that the bottom surface’s
“central portion extends further radially inwardly than do the circumferential
edges of the dovetail.” Spec. 143. The Specification discloses that “[t]he
circumferential edges 100 and 101 abut surfaces of the rotor 16 at the edges
of the slot 25.” Spec. 142. As seen in Figure 2B, reproduced below, the
central portion, i.e., the portion more towards the center (see 144) of the
bottom surface extends further radially inward (is radially thicker) than the
radially inward most point of the edges, where circumferential edges 100
and 101 abut surfaces of rotor 16.
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Application 13/459,748
Figure 2B is another view of the Figure 2A rotor blade.
Figure 2B also discloses wherein said dovetail merges directly into the
airfoil without an intermediate platform. See Fig. 2B (intermediate platform
not present).
Although the description of Figure 2B is silent with respect to
materials, it would have been obvious to one of ordinary skill in the art to
modify the blade of Figure 2B so that the dovetail is formed of a material
that is less strong than the rotor which will receive said blade, because this
arrangement is known in the art (see Spec. 1 5) and would predictably result
in an operative fan with the strength of component materials chosen in
accordance to the loads to which they are subjected. See KSR Int 7 Co. v
Teleflex Inc., 550 US 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Figure 2B also discloses the bottom surface merging into radially
outwardly extending surfaces, and then inwardly extending surfaces,
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Application 13/459,748
inasmuch as Figure 2B shows bottom surface (horizontal surface) merging
into a radially outwardly extending surface (near 101) that corresponds to
surface 30IF of Figure 4 and then a surface (near the lead line for 24) that
extends (axially) inwardly from the radially extending surface that
corresponds to surface 3011 of Figure 4. See Spec, at Fig. 4.
Claim 10
Figure 2B discloses fan comprising a fan rotor 16 having a plurality of
slots 25, with said slots each receiving a fan blade 20. See Spec. 38-40;
Fig. 2B. The blades of Figure 2B include an airfoil 18 extending radially
outwardly of a dovetail 24, said dovetail having edges 100, 101 at
circumferential sides of the blade, a bottom surface of the dovetail defined at
a radially inward location. Id. Figure 2B also discloses that the bottom
surface is formed such that a circumferentially central portion of the bottom
surface is radially thicker than are circumferential edges. As discussed
supra, the phrase “radially thicker” consistent with the Specification means
that the bottom surface’s “central portion extends further radially inwardly
than do the circumferential edges of the dovetail” (Spec. 143), and the
central portion of the bottom surface of Figure 2B extends further radially
inward (is radially thicker) than the radially inward most point of where
circumferential edges 100 and 101 abut surfaces of rotor 16.
Figure 2B also discloses wherein said dovetail merges directly into the
airfoil without an intermediate platform. See Fig. 2 (intermediate platform
not present).
Figure 2B also discloses the bottom surface merging into radially
outwardly extending surfaces, and then inwardly extending surfaces,
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Application 13/459,748
inasmuch as Figure 2B shows bottom surface (horizontal surface) merging
into a radially outwardly extending surface (near 101) that corresponds to
surface 30IF of Figure 4 and then a surface (near lead line for 24) that
extends (axially) inwardly from the radially extending surface that
corresponds to surface 3011 of Figure 4. See Spec, at Fig. 4.
Although the description of Figure 2B is silent with respect to
materials, we conclude that it would have been obvious to one of ordinary
skill in the art to modify the blade of Figure 2B so that the dovetail is formed
of a material that is less strong than the rotor which will receive said blade,
because this arrangement is known in the art (see Spec. 1 5) and would
predictably result in an operative fan with the strength of component
materials chosen in accordance to the loads to which they are subjected. See
KSR Int’l Co., 550USat416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
Claim 16
Figure 2B discloses a fan 16, 20 having a fan rotor 16 with a plurality
of slots 25, with said slots receiving a fan blade 20 and the blades including
an airfoil 18 extending radially outwardly of a dovetail 24. Spec. Tflf 38-40;
Fig. 2B. Figure 2B also discloses said dovetail having edges 100, 101 at
circumferential sides of the blade, a bottom surface of the dovetail defined at
an inward location, and said bottom surface being formed such that a
circumferentially central portion of said bottom surface is radially thicker
than are circumferential edges. Id. As discussed supra, the phrase “radially
thicker” consistent with the Specification means that the bottom surface’s
“central portion extends further radially inwardly than do the circumferential
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Application 13/459,748
edges of the dovetail” (Spec. 143), and the central portion of the bottom
surface of Figure 2B extends further radially inward (is radially thicker) than
the radially inward most point of where circumferential edges 100 and 101
abut surfaces of rotor 16.
Although the description of Figure 2B is silent with respect to
materials, we conclude that it would have been obvious to one of ordinary
skill in the art to modify the blade of Figure 2B so that the dovetail is formed
of a material that is less strong than the rotor which will receive said blade,
because this arrangement is known in the art (see Spec. 1 5) and would
predictably result in an operative fan with the strength of component
materials chosen in accordance to the loads to which they are subjected. See
KSR Int’l Co., 550USat416 (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.”).
Figure 2B also discloses the bottom surface merging into radially
outwardly extending surfaces, and then inwardly extending surfaces,
inasmuch as Figure 2B shows a bottom surface merging into a radially
outwardly extending surface (near 101) that corresponds to surface 30IF of
Figure 4 and then a surface (near lead line for 24) that extends (axially)
inwardly from the radially extending surface that corresponds to surface
3011 of Figure 4.
Figure 2B does not disclose that the fan is part of a gas turbine engine
that also comprises a compressor section, a combustion section, and a
turbine section, and that a turbine rotor in the turbine section drives the fan
through a gear reduction to deliver air into the compressor section.
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Application 13/459,748
However, the above elements are known, common gas turbine engine
components (see Spec. ]Hf 2—6), an example of which is, Schwarz, which
discloses a gas turbine engine 20 comprising a fan 42 configured to deliver
air (core airflow C) into a compressor section 24, a combustion section 26,
and a turbine section 28, wherein a turbine rotor 46 in the turbine section
drives the fan through a gear reduction 48. See Schwarz; || 32—35; Fig. 1.
Because both Figure 2B and Schwarz disclose known fan rotor/blade
arrangements for a gas turbine engine, it would have been obvious to one of
ordinary skill in the art to use the fan rotor/blade configuration of Figure 2B
in a gas turbine engine having the specific arrangement as disclosed by
Schwarz because the basic technique of driving air using a fan blade would
yield no more than the predictable outcome, which one of ordinary skill
would have expected to achieve with this common arrangement in the gas
turbine engine art and is therefore an obvious expedient. The combination
would include the gear reduction architecture as taught by Schwarz for the
purpose of rotating the fan at different speeds as compared to the low
pressure compressor to obtain the best efficiency possible during operation.
See Schwarz || 4—5.
Therefore, pursuant to 37 C.F.R. § 41.50(b), we enter New Grounds
of Rejection against claims 1, 10, and 16 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision rejecting claims 1,10, and 16 as failing to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph is reversed.
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Application 13/459,748
The Examiner’s decision rejecting claims 1 and 10 as unpatentable
over Brioude, Cai, and Connor is reversed.
The Examiner’s decision rejecting claim 16 as unpatentable over
Brioude, Cai, Schwarz, and Connor is reversed.
We enter New Grounds of Rejection against claims 1,10, and 16
under 35 U.S.C. § 103(a).
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the
appellants], 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. The new
ground of rejection is binding upon the examiner unless
an amendment or new Evidence not previously of Record
is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellants] may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
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Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED; 37 C.F.R, $ 41.50(b)
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