Hamilton Sundstrand Corporation

Patent Trials and Appeals Board

Apr 17, 2020

14695073 - (D) (P.T.A.B. Apr. 17, 2020)

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.
14/695,073 04/24/2015 Richard A. Himmelmann 67036-797PUS1;
80223US01
1074
26096 7590 04/17/2020
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
RIVERA, CARLOS A
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/17/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD A. HIMMELMANN

Appeal 2019-005745
Application 14/695,073
Technology Center 3700
____________

Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and
BRANDON J. WARNER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Hamilton Sundstrand Corporation,1 appeals under
35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 3–
9, 11–14, and 16–23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification “relates to a turbine pump assembly, and more
particularly to a passive electrical proportional turbine speed control
system.” Spec. ¶1.
The Claims
Claims 1, 3–9, 11–14, and 16–23 are rejected. Final Act. 1. No other
claims are pending. Id. Claims 1 and 11 are independent. Appeal Br. 6–8
(Claims App.). Claim 1 is illustrative and reproduced below.
1. A turbine pump assembly, comprising:
a turbine configured to drive a centrifugal pump, wherein
the centrifugal pump and the turbine rotate about a common
shaft; and
a passive electrical speed control system configured to
limit a speed of the turbine, the passive electrical speed control
system having a generator and a valve control solenoid
receiving current from the generator.
Id. at 6.
The Examiner’s Rejections
The rejections before us are:
1. claims 1, 4–6, 8, 9, 11–14, 16, 19, 22, and 23 under 35 U.S.C.
§ 103 as unpatentable over Oprecht2 and Scheller3 (Final Act. 2);
2. claims 3 and 7 under 35 U.S.C. § 103 as unpatentable over
Oprecht, Scheller, and Corbett4 (id. at 4);

2 US 3,220,184, issued Nov. 30, 1965 (“Oprecht”).
3 US 4,697,416, issued Oct. 6, 1987 (“Scheller”).
4 US 2,971,097, issued Feb. 7, 1961 (“Corbett”).
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3. claims 17, 18, and 20 under 35 U.S.C. § 103 as unpatentable
over Oprecht, Scheller, and Crisafulli5 (id. at 6);
4. claim 21 under 35 U.S.C. § 103 as unpatentable over Oprecht,
Scheller, and Veres6 (id.);
5. claim 1, provisionally, for nonstatutory (obviousness-type)
double patenting over claims 1, 4, and 5 of copending U.S. Application No.
14/695,079 (id. at 8).
DISCUSSION
Rejection 1
The Examiner rejected claims 1, 4–6, 8, 9, 11–14, 16, 19, 22, and 23
as unpatentable over Oprecht and Scheller. Final Act. 2. Appellant argues
these claims together. Appeal Br. 2–3. We choose claim 1 as
representative. See 37 C.F.R. § 42.37(c)(1)(iv).
The Examiner found that Oprecht teaches all of the subject matter of
claim 1 except that Oprecht does not teach that its pump is a centrifugal
pump. Final Act. 2–3. The Examiner found that Scheller teaches turbine
pumps with centrifugal pumps. Id. at 3. The Examiner concluded:
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to use
[a] centrifugal pump in Oprecht, as suggested by Scheller, in
order to use the system of Oprecht in smaller compact gas
turbines and since it has been held that a simple substitution of
one known element (axial pump) for another (centrifugal pump)
to obtain predictable results (compress a flow of fluid) support[s]
a conclusion of obviousness.

5 US 7,468,564 B2, issued Dec. 23, 2008 (“Crisafulli”).
6 US 5,286,162, issued Feb. 15, 1994 (“Veres”).
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Id. at 3 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–421 (2007);
MPEP § 2143).
Appellant’s sole argument against the rejection of claim 1 is that,
contrary to the Examiner’s findings, Oprecht does not teach “a passive
electrical speed control system configured to limit a speed of the turbine,” as
recited in claim 1. Appeal Br. 3. The Examiner found that Oprecht’s
valve 12 meets this limitation (Final Act. 2), whereas Appellant argues that
Oprecht has “an actively controlled system.” Appeal Br. 3. Appellant
explains that Oprecht’s system is actively controlled because the “the valve
12 is adjustable ‘at will by means of rheostat 22, and can be interrupted
entirely by a switch 23.’” Id. (citing Oprecht 2:23–26, 3:1–3, Fig. 2).
Appellant, however, does not propose a construction for “a passive control
system.” Id. And, as the Examiner points out, the Specification neither
defines a passive control system nor lists requirements therefor. Ans. 8–9
(citing Spec. ¶¶17–19).
The Examiner construes “a passive control system” as “a system that
uses proportionality and is not ‘actively’ control[led] with an electronic
controller using logic and/or an algorithm.” Id. at 8. The Examiner’s
construction is consistent with, and adequately supported by, the
Specification. See Spec. ¶¶17–19. The Examiner explains that Oprecht
meets this limitation “because the output power of the turbine is proportional
to the mass flow rate of the fuel through the valve” and “[m]ovement of the
valve 12 does not rely [on] an electronic controller or processor.” Ans. 9.
The Examiner also correctly points out that Oprecht’s description of how its
valve 12 is controlled is similar to the Specification’s description of how
speed control valve 28 is controlled. Id. (citing Spec. ¶¶17–19; Oprecht 3:6–
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30). Finally, the Examiner explains that the rheostat and switch are not
evidence of active control, stating:
The addition of a rheostat to adjust the resistance “at will” and
interrupt the circuit with a switch in the system, as argued by
Applicant, is not evidence that the system uses an active control
to perform the adjustment and/or the interruption. Since Oprecht
does not disclose any algorithm/computer logic to adjust or
interrupt the circuit as function of speed and/or current, the
preponderance of evidence indicates that Oprecth’s [sic] valve
12 is passively proportionally controlled by the current from the
generator.
Id. at 10.
In reply, Appellant does not dispute the Examiner’s construction of “a
passive control system.” See Reply Br. 1–2. Rather, Appellant merely
repeats its inapposite arguments about Oprecht’s rheostat and switch and
then asserts that “the Examiner does not cite any part of Oprecht that
suggests it is passively controlled.” Id. at 2.
Appellant’s arguments do not apprise us of error. The Examiner
specifically quoted Oprecht as teaching:
Let us assume that turbine 1 delivers the desired amount of power
revolving at a speed corresponding to this power output. The
quantity of fuel conveyed by fuel pump 9 and entering, through
conduit 11, the housing 25, is properly adjusted for this power
output by means of the regulating valve 12, and more particularly
a corresponding adjustment of the position of control piston 16
in relation to control face 17. The quantity of fuel thus adjusted
to prevailing requirements, leaves housing 25 through conduit
13. When, for example, the number of revolutions, or speed, of
turbine 1 rises, the number of revolutions or speed of generator
10 increases correspondingly, thus increasing the current passing
through field coil 15 and in consequence, also increasing the
electromagnetic force exerted by the field coil. The increased
force of the field coil effects a displacement of armature 20
overcoming the force of spring 21, i.e. toward the left in FIG. 3,
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and a corresponding displacement of control piston 16 which
reduces the spacing between this piston and control face 17 thus
causing a 25 corresponding reduction in the fuel supply to
conduit 13. This reduction of fuel supplied to conduit 13 and
combustion chamber 6, results in a corresponding reduction in
the number of revolutions, or speed, of turbine 1 which thus are
restored to their desired value.
Ans. 9 (quoting Oprecht 3:6–30). This is remarkably similar to the instant
Specification’s only described embodiment of a passive control system. See
Spec. ¶¶17–19.
For the foregoing reasons, we affirm the rejection of claim 1, as well
as that of claims 4–6, 8, 9, 11–14, 16, 19, 22, and 23, which fall therewith.
See 37 C.F.R. § 42.37(c)(1)(iv).
Rejection 2
The Examiner rejected claims 3 and 7 as unpatentable over Oprecht,
Scheller, and Corbett. Final Act. 4.
Claim 3
Claim 3 depends from claim 1 and recites “wherein the generator is
arranged along the shaft between the centrifugal pump and the turbine.”
Appeal Br. 6. The Examiner found that Corbett teaches a generator 10 on
the same shaft 12 as, and between, a centrifugal pump 11 and a turbine 13.
Final Act. 5 (citing Corbett’s sole figure). The Examiner concluded:
It would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to
have the generator of Oprecht [in view of] Scheller between the
pump an[d] the turbine, as suggested by Corbett, in order to use
a more compact design and since it has been held that that
choosing from a finite number of identified, predictable solutions
(e.g., having the generator between the pump and turbine OR in
the turbine side OR in the compressor side), with a reasonable
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expectation of success, as discussed by Corbett, support[s] a
conclusion of obviousness.
Final Act. 5.
Appellant argues that this is not a prima facie case of obviousness for
three reasons. Appeal Br. 3–4. First, Appellant argues that a “finite number
of identified, predictable solutions” rationale requires an articulation of a
recognized need or problem. Id. at 3–4. Second, Appellant argues that, in
fact, there is not a finite number of identified, predictable solutions. Id. at 4.
Third, Appellant argues a lack of reasonable expectation of success. Id. As
explained below, these arguments do not apprise us of error.
Corbett teaches the precise relationship recited in claim 3, namely that
“the generator is arranged along the shaft between the centrifugal pump and
the turbine.” Final Act. 4–5 (citing Corbett’s sole figure); see also Corbett
1:64–68 (“Turning now to the drawing, there is shown an alternator, or
rotating electrical power generator 10 and a variable delivery hydraulic
pump 11 both mounted and connected to be driven by a common output
shaft 12 of a gas turbine 13.”). The Examiner provided two reasons for
modifying Oprecht/Scheller in view of this teaching by Corbett, only one of
which was the “finite number of identified, predictable solutions” rationale.
Final Act. 5. The other reason was to make the modification as explicitly
“suggested by Corbett, in order to use a more compact design.” Id. We find
this reason sufficient.
Accordingly we affirm the rejection of claim 3.
Claim 7
Claim 7 depends from claim 1. Appellant argues against the rejection
of claim 7 solely on the basis that “[t]he addition of the teachings of Corbett
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does not overcome the above noted deficiencies with respect to Oprecht and
Scheller and base claim 1.” Appeal Br. 3. As there are no such deficiencies,
we affirm the rejection of claim 7.
Rejection 3
The Examiner rejected claims 17, 18, and 20 as unpatentable over
Oprecht, Scheller, and Crisafulli. Final Act. 6. Appellant’s entire argument
against this rejection is: “The addition of the teachings of Crisafulli does not
overcome the above noted deficiencies with respect to Oprecht and Scheller
and base claim 1. The rejection should be withdrawn.” Appeal Br. 4. As
there are no such deficiencies, we affirm the rejection of claims 17, 18, and
20.7
Rejection 4
The Examiner rejected claim 21 as unpatentable over Oprecht,
Scheller, and Veres. Final Act. 6. Claim 21 depends from claim 1 and
recites “wherein the turbine and centrifugal pump are configured to have an
operating speed between 90,000 and 140,000 rpm.” Appeal Br. 8. The
Examiner found that Veres teaches it was known to design for rocket
hydrogen pumps to rotate at 100,000 rpm. Final Act. 7 (citing Veres 5:8–
25). The Examiner concluded it would have been obvious, in view of this
teaching, to have an operating speed within the claimed range. Id. (citing In
re Wertheim, 541 F.2d 257 (CCPA 1976); MPEP § 2144.05(I)).
Appellant argues that “[t]he Examiner has not identified any portion
of Oprecht, Scheller, or Veres that indicate[s] it would be possible to operate

7 Contrary to Appellant’s argument, claim 20 depends from independent
claim 11, not claim 1. Appeal Br. 8. This distinction does not affect our
analysis, however, as the rejection of claim 11 was also affirmed above.
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both a turbine and centrifugal pump at these speeds” because “Veres
discloses only a centrifugal compressor, and does not mention a turbine.”
Appeal Br. 5. The Examiner responds that the Veres pump is a turbopump,
which, by definition, includes both a turbine and a pump. Ans. 13 (citing
Veres 1:13–18). In reply, Appellant does not dispute the Examiner’s
response. Reply Br. 2.
We are not apprised of error in the rejection. The Examiner has
identified a prior art speed of 100,000 rpm for a pump that is used in
conjunction with a turbine. Final Act. 7; Ans. 13. Appellant does not
dispute this. Reply Br. 2. That the Veres pump can operate at such a speed
is an indication it would be possible to also operate the turbine at such a
speed.
Accordingly, we affirm the rejection of claim 21.
Rejection 5
The Examiner provisionally rejected claim 1 for nonstatutory
(obviousness-type) double patenting over claims 1, 4, and 5 of U.S.
Application No. 14/695,079. Final Act. 8. Appellant does not argue against
this provisional rejection. Appeal Br. 2. Accordingly, we summarily affirm
it.

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SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 4–6, 8, 9,
11–14, 16,
19, 22, 23
103 Oprecht, Scheller 1, 4–6, 8,
9, 11–14,
16, 19, 22,
23

3, 7 103 Oprecht, Scheller,
Corbett
3, 7
17, 18, 20 103 Oprecht, Scheller,
Crisafulli
17, 18, 20
21 103 Oprecht, Scheller,
Veres
21
1 Nonstatutory
double
patenting
U.S. Application
No. 14/695,079,
claims 1, 4, 5
1
Overall
Outcome
1, 3–9, 11–
14, 16–23

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)(1)(iv).

AFFIRMED