Hanrahan, Paul R. et al.

Patent Trials and Appeals Board

Jan 10, 2020

15011762 - (D) (P.T.A.B. Jan. 10, 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.
15/011,762 02/01/2016 Paul R. Hanrahan 92468US01;
67097-3326US1
1680
54549 7590 01/10/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
CHENG, STEPHANIE S
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL R. HANRAHAN and GABRIEL L. SUCIU
Appeal 2019-003955
Application 15/011,762
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–8. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the assignee of the
entire right in this application, United Technologies Corporation. Appeal
Br. 1.
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Application 15/011,762

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to providing cooling air from a
compressor section to a turbine section in a gas turbine engine. Sole
independent claim 1, reproduced below, is illustrative:
1. A gas turbine engine comprising:
a main compressor section;
a turbine section having a variable vane positioned
upstream of a rotor blade, and said variable vane being provided
with an actuator operable to control an orientation of said
variable vane;
a tap line tapping air from said main compressor section,
and passing said tapped air through a cooling compressor, said
cooling compressor being a fixed flow compressor, and air
downstream of said cooling compressor being delivered into said
turbine section;
wherein when said variable vane is moved towards a
closed position, an expansion ratio across the turbine section
increases such that a pressure at a downstream location in the
turbine section decreases; and
wherein when said fixed flow compressor provides an
increased flow volume, as a pressure of the flow downstream of
said fixed flow compressor decreases.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Johnston US 5,039,281 Aug. 13, 1991
Saito US 2016/0237910 A1 Aug. 18, 2016
REJECTIONS
1. Claims 1–8 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
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2. Claims 1–8 are rejected under 35 U.S.C. § 103 as unpatentable
over Saito and Appellant’s Admitted Prior Art (AAPA).2
3. Claims 1–8 are rejected under 35 U.S.C. § 103 as unpatentable
over Saito, AAPA, and Johnston.3
ANALYSIS
Rejection 1 – Indefiniteness
The Examiner considers that claim 1 is indefinite because “a pressure”
is recited in line 10 and line 12 of claim 1, and the Examiner states that it is
unclear whether this refers to the same or different pressures. Final Act. 3.
The Examiner also considers that claim 1 is indefinite because “it is
unclear which condition is the cause and which condition is the effect,” in
the claim 1 limitation “wherein when said fixed flow compressor provides
an increased flow volume, as a pressure of the flow downstream of said
fixed flow compressor decreases.” Id. at 4.
Appellant argues that a person of ordinary skill in the art would
“recognize what is meant by the claims as presently pending.” Appeal Br. 2.
We agree with Appellant as to the recitation of “a pressure,” but agree with
the Examiner that the last “wherein” clause is unclear.
Claim 1 recites 1) “a pressure at a downstream location in the turbine
section decreases,” and 2) “wherein when said fixed flow compressor
provides an increased flow volume, as a pressure of the flow downstream of
said fixed flow compressor decreases.” Because “a pressure” in 1) is “in the

2 The Examiner’s discussion of the rejection also relies on Admitted Prior
Art disclosure. See Final Act. 5–6.
3 Although the Examiner lists rejections 2 and 3 under the same heading as
alternatives, these rejections are two distinct rejections.
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turbine section,” this recitation corresponds to a pressure in the turbine
section. As to “a pressure” in 2), this is “a pressure of the flow downstream
of said fixed flow compressor,” and, thus, is a compressor pressure.
Although we appreciate the Examiner’s position that the pressure
downstream of the turbine is also downstream of the compressor (see Final
Act. 3), the Specification, distinguishes between these pressures by
disclosing that “[i]n a fixed flow fluid moving device, as the volume
delivered increases the pressure decreases. Thus, the pressure at the turbine
section, even though it may be lower, will resist the lower pressure flow
from the fixed flow fluid moving device 148.” Spec. ¶ 65. Here, the fixed
flow device is a compressor. Id. Thus, one of ordinary skill in the art would
understand that “a pressure of the flow downstream of said fixed flow
compressor decreases,” is a pressure of the flow from or in the compressor,
which is distinct from “a pressure” in or at the turbine. Accordingly, “a
pressure” as recited in claim 1 is not unclear because one of ordinary skill in
the art, after reviewing the Specification, would reasonably understand its
scope.
However, the “wherein” clause is unclear for the following reasons.
The limitation “wherein when said fixed flow compressor provides an
increased flow volume, as a pressure of the flow downstream of said fixed
flow compressor decreases,” is a conditional statement. See Final Act. 4.
That is, if (or when, or as) “A” occurs (when said fixed flow compressor
provides an increased flow volume), “B” results. However, inclusion of
“as” in the second part of the statement (“as a pressure of the flow
downstream of said fixed flow compressor decreases”) makes it unclear
whether the second part of the statement is a result of “A” occurring, causes
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“A” to result, or is also required to occur before something else results. We
agree with the Examiner that claim 1 is indefinite for failing to particularly
point out and distinctly claim the subject matter that the inventor regards as
the invention, because it is unclear whether when the pressure of the fixed
flow compressor decreases, an increased flow volume necessarily results.
Therefore, we sustain the rejection of claims 1–8 under 35 U.S.C. § 112(b)
for failure to particularly point out and distinctly claim the subject matter
that the inventor regards as the invention.

Rejection 2 – Obviousness Based on Saito
Appellant argues claims 1–8 as a group. Appeal Br. 3. Pursuant to 37
C.F.R. § 41.37(c)(1)(iv), we select claim 1 as representative and claims 2–8
stand or fall with claim 1.
The Examiner finds that Saito discloses most of the limitations of
claim 1 including a turbine section and a cooling compressor, but does not
disclose the turbine section having a variable vane positioned upstream of a
rotor blade, and that the cooling compressor is a fixed flow compressor.
Final Act. 5. As to the fixed flow compressor, the Examiner considers that
operating Saito’s boost compressor 35 “at choked flow results in constant
volumetric flow rate regardless of a decrease in back pressure.” Id. For the
variable vane, the Examiner relies on Appellant’s disclosure in the
“Background” section of the Specification as disclosing that gas turbine
engines having a variable vane positioned upstream of a turbine rotor to
control the volume of products of combustion reaching the turbine rotor are
known. Id. (citing Spec. ¶¶ 4–5). The Examiner considers that it would
have been obvious to use known variable turbine vanes in the system of
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Saito “to provide ‘additional flexibility to achieved desired flow
conditions.’” Id. at 6 (citing Spec. ¶ 6).
Appellant argues that the Examiner attempts to broadly read out any
difference between the recited fixed flow cooling compressor and the boost
compressor of Saito. Appeal Br. 3. Specifically, Appellant argues
“[h]owever, the claim goes on to recite a function that flows from the use of
the fixed flow compressor, and this is not at all clear that such would be the
result of the Saito compressor.” Id. As to the Examiner’s reliance on the
disclosure in the “Background,” Appellant asserts the description “relat[ing]
to such a gas turbine engine; for aircraft use . . . for changing operation
between ‘takeoff’ and ‘cruise’ has no application in Saito,” because Saito is
a ground based power gas turbine engine. Id. at 4 (citing Saito ¶ 28).
Appellant’s arguments are not persuasive for the following reasons.
The Examiner found that Saito discloses a fixed flow compressor
because operating Saito’s boost compressor 35 “at choked flow results in
constant volumetric flow rate regardless of a decrease in back pressure.”
Final Act. 5. Specifically, the Examiner found that Saito operates in a
manner consistent with the Specification, which discloses that “the fixed
flow cooling compressor may be a positive displacement pump/compressor,
or a vane pump/compressor that may be operated near choked conditions
such that reducing back pressure does not result in substantially more flow.”
Id. (citing Spec. ¶ 66). Appellant does not contest this finding. The
Examiner also finds that “[t]o the extent that the instant application and the
applied prior art were identical in structure, as discussed above, the two
would have functioned identically under identical operating conditions.” Id.
at 6. Because the Examiner finds that Saito discloses the recited structure
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and would function the same, Appellant’s unsupported attorney argument
that it is unclear that the claimed function “would be the result of the Saito
compressor,” does not apprise us of Examiner error. That is, Appellant does
not explain sufficiently why the structure is different or why Saito would not
function as claimed.
Appellant contends in the Reply Brief (and for the first time in this
Appeal), that the disclosure of “Saito directly contradicts the Examiner’s
assertions,” because Saito discloses an Inlet Guide Vane (IGV) having an
opening degree that varies the flow rate of boost compressor 35 of Saito,
such that Saito cannot be a “fixed flow compressor.” Reply Br. 2–3. We
note that as discussed above, in the Final Office Action, the Examiner found
that Saito discloses a fixed flow compressor and Appellant did not dispute
that finding in the Appeal Brief. This argument is, thus, untimely and
Appellant does not present any evidence or explanation to show good cause
why it should be considered by the Board at this time. See 37 C.F.R.
§ 41.41(b)(2) (“Any argument raised in the reply brief which was not raised
in the appeal brief, or is not responsive to an argument raised in the
examiner's answer . . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”).
Appellant’s argument that the Examiner’s reliance on the
“Background” is not applicable to Saito’s engine also is not persuasive. The
Examiner relies on paragraphs 4 and 5 of the Specification, reproduced
below.
[0004] One feature which has been incorporated into gas
turbine engines is a variable area turbine. In such systems, a
variable vane is positioned upstream of a turbine rotor. An
actuator rotates the position of the vane to control the volume of
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products of combustion reaching the turbine rotor. Such systems
are known, and provide a gas turbine engine design with
additional flexibility to achieve desired flow conditions.

[0005] As can be appreciated, turbine sections are
subjected to very extreme heat. As such, it is known to provide
cooling air to a turbine section. Typically, the cooling air has
been supplied from a compressor section, as mentioned above.
However, when the variable vane upstream of the turbine is
actuated, the pressures across the turbine section change. If the
variable vane is moved to a more closed position, then an
expansion ratio across the compressor section will increase, and
pressures at downstream locations will decrease. The pressures
in the turbine section tend to resist the entry of the cooling air,
and thus by lowering the pressures at the turbine section, that
resistance is lowered and additional cooling air flow to the
turbine section may be experienced. When this occurs,
undesirably high volumes of cooling air may enter the turbine
section. This is undesirable for any number of reasons.
Spec. ¶¶ 4 and 5. Neither of these paragraphs limit turbine cooling to
aircraft use. Nor is the use limited to changing between “takeoff” and
“cruise.” Indeed, paragraph 1 states “[t]his application relates to
improvements in providing cooling air from a compressor section to a
turbine section in a gas turbine engine.” Although the Specification
discloses an embodiment relating to aircraft, neither the Specification as a
whole nor claim 1 requires such a limited application.
Moreover, Appellant does not explain adequately why Saito’s known
“method of extracting some of the air compressed in a gas turbine
compressor, cooling the air by a cooler, boosting the air by a boost
compressor, and using the air as cooling air is known in order to cool high
temperature components,” would not benefit from the known use of variable
vane turbines as the Examiner suggests. Saito ¶ 3; see also Final Act. 6.
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We have considered all of Appellant’s timely arguments in support of
the patentability of claim 1, but find them unpersuasive. Accordingly, we
sustain the rejection of claim 1 as unpatentable over Saito and AAPA.
Claims 2–8 fall with claim 1.
Rejection 3 – Obviousness Based on Saito and Johnston
The Examiner finds that, to the extent that one of ordinary skill in the
art does not consider that Saito’s compressor 35 is “a fixed flow compressor,
Johnston teaches the substitutional equivalence of a positive displacement
compressor [(fixed flow compressor)] and a (dynamic displacement)
compressor for auxiliary processes for a gas turbine.” Final Act. 7 (citing
Johnston 6:59–62). The Examiner concludes that it would have been
obvious to replace Saito’s compressor with the positive displacement
compressor of Johnston, “[as] a simple substitution of one known element,
in this case, the positive displacement compressor of Johnston, for another,
in this case, the centrifugal compressor of Saito, to obtain predictable results,
in this case, a fixed volumetric flow rate of air to the turbine.” Id. (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–421 (2007)).
Appellant’s entire argument for the patentability of claim 1 over the
combination of Saito and Johnson is that the Examiner’s proposal to add
Johnston to show fixed flow compressors is improper, because “it is the
combination of elements in claim 1 which defines around the prior art, and a
piecemeal collection of various components from several references cannot
meet the claims.” Appeal Br. 3. This conclusory attorney argument without
citation to either Saito or Johnson or the actual language of claim 1 does not
apprise us of Examiner error for the following reasons.
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Johnston discloses that “although a high speed centrifugal compressor
has been discussed herein, the auxiliary compressor 64 could be a low speed
positive displacement compressor.” Johnston 6:59–62; see also Final Act. 7.
As such, Johnston discloses a system having a gas turbine engine and an
auxiliary compressor could use either a centrifugal compressor (variable
flow) or a positive displacement compressor (fixed flow). Appellant
provides no persuasive reason why a person of ordinary skill in the art could
not have substituted one for the other. Neither does Appellant provide any
persuasive reason why the results of the substitution would have been
unpredictable.
We agree with the Examiner that such a substitution would have been
obvious. Appellant, thus, fails to persuasively apprise us of error in the
Examiner’s factual findings or rationale, quoted above, for the combination
of Saito and Johnston, which we determine to be reasonable and supported
by the disclosure in the cited references. See KSR, 550 U.S. at 416. (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
Appellant contends in the Reply Brief (for the first time in this
Appeal), that a skilled artisan would not “have been motivated to modify
Saito in the manner proposed by the Examiner” because Saito’s boost
compressor 35 delivers “cooling . . . air to components in the combustor 12
and turbine 13 within the same gas turbine plant 1,” whereas Johnston’s
“auxiliary compressor 64 supplies compressed air to one or more auxiliary
systems external to the engine 12.” Reply Br. 3. According to Appellant,
the Examiner does not provide “evidence that one would utilize the auxiliary
compressor 64 of Johnston to deliver compressed air to a turbine section of
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an engine.” Id. This argument is untimely, has not been shown to be
responsive to an argument raised for the first time in the Examiner’s
Answer, and Appellant does not present any evidence or explanation to
show good cause why it should be considered by the Board at this time.
Nonetheless, Saito already discloses an auxiliary compressor that is
used to cool a turbine, and the Examiner relies on Johnston to teach that a
system having a gas turbine engine and an auxiliary compressor could use
either a centrifugal compressor (variable flow) or a positive displacement
compressor (fixed flow). As the Examiner correctly notes, “it is the general
concept of substitutionally equivalent compressors that is being applied to
Saito, not the specific compressor structure taught by Johnston.” Ans. 12.
Thus, even Appellant’s untimely contentions do not persuade us that a
person of ordinary skill in the art would not have substituted one for the
other. Neither does Appellant provide any persuasive reason why the results
of the substitution would have been unpredictable. Appellant, thus, fails to
persuasively apprise us of Examiner error on this point.
Appellant’s assertion for the first time in the Reply Brief that the
Examiner’s proposed modification “impermissibly changes the principle
operation of the boost compressor 35 of Saito” (see Reply Br. 4) does not
persuade us of Examiner error. One of ordinary skill in the art would
understand that Saito’s inlet guide vanes (IGV) are used in conjunction with
a centrifugal compressor to control flow, but would not be required when the
centrifugal compressor is replaced by Johnston’s fixed flow, positive
displacement compressor. See Spec. ¶ 66 (“the fixed flow cooling
compressor may be a positive displacement pump/compressor, or a vane
pump/compressor that may be operated near choked conditions such that
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reducing back pressure does not result in substantially more flow.”). Thus,
even if Appellant’s arguments in the Reply Brief as to Saito regarding the
IGV were timely (see Reply Br. 2–3), the Examiner does not propose a
bodily incorporation of Johnson’s compressor into Saito. Such an argument
does not persuade us of Examiner error. See In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (“It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”).
Appellant’s additional new contentions in the Reply Brief that the
references do not disclose the claim 1 flow/pressure relationship when the
variable vane is moved toward a closed position (see Reply Br. 4–5) are not
persuasive because they do not respond to the Examiner’s findings.
Specifically, the Examiner relies on McCaffrey to support the claimed
relationship (see Final Act. 6 (citing McCaffrey ¶¶ 25 and 26); see also Ans.
10–11), and Appellant does not explain why McCaffrey does not support the
Examiner’s findings.
We have considered all of Appellant’s arguments in support of the
patentability of claim 1, but find them unavailing. Appellant does not
separately argue for the patentability of claims 2–8. See Appeal Br. 2–3.
Accordingly, we sustain the rejection of claims 1–8 as unpatentable over
Saito, AAPA, and Johnston.

CONCLUSION
The Examiner’s rejections are affirmed.
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In summary:
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8 112(b) Indefiniteness 1–8
1–8 103 Saito 1–8
1–8 103 Saito, Johnston 1–8
Overall
Outcome:
1–8

TIME PERIOD FOR RESPONSE
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