Karl L. Hasel et al.

Patent Trials and Appeals Board

Apr 30, 2020

14592043 - (D) (P.T.A.B. Apr. 30, 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.
14/592,043 01/08/2015 Karl L. Hasel 61065US02;
67097-1704US2
5843
54549 7590 04/30/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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 KARL L. HASEL, PETER G. SMITH, and
STUART S. OCHS
____________

Appeal 2018-005072
Application 14/592,043
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–20. 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 United
Technologies Corporation. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to a gas turbine engine having an
improved fuel consumption based upon a combination of operational
parameters.” Spec. ¶ 2.
Claims 1, 11, and 17 are independent claims. Claim 1 illustrates the
claimed subject matter.
1. A gas turbine engine comprising:
a core section defined about an axis, a fan section
delivering a first portion of air into the core section, and a
second portion of air into a bypass duct, a bypass ratio being
defined as the ratio of the second portion compared to the first
portion, and said bypass ratio being greater than or equal to
about 8.0, fan exit guide vanes each including a pivotable
portion able to pivot and slide relative a fixed portion; and
the air delivered into the core section being delivered into
a low pressure compressor, and then into a high pressure
compressor, air from the high pressure compressor being
delivered into a combustion section where it is mixed with fuel
and ignited, and products of the combustion from the
combustion section passing downstream over a high pressure
turbine section and then a low pressure turbine section, and an
expansion ratio across the low pressure turbine section being
greater than or equal to about 5.0, said low pressure turbine
section driving said low pressure compressor section, and
driving said fan section through a gear reduction, with said gear
reduction having a gear ratio greater than or equal to about 2.4.
Appeal Br. 14 (Claims App.).

REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 34.
Claims 1–20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 4.
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Claims 1–20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Final Act. 16.
Claims 1–16 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Smith (US 2009/0097967 A1, published Apr. 16, 2009). Final Act. 42.
Claims 1–16 are rejected under 35 U.S.C. § 103 as unpatentable over
Wendus, et al., “Follow-On Technology Requirement Study for Advanced
Subsonic Transport,” NASA/CR-2003-212467, Aug. 2003 (hereinafter,
“Wendus”) and Snow (US 4,292,802, issued Oct. 6, 1981). Final Act. 48.

ANALYSIS
Indefiniteness
“Bypass ratio”
The Examiner determines that claims 1, 5, 10, 11, 15, and 17, and
claims 2–4, 6–9, 12–14, 16, and 18–20 depending directly or ultimately from
claim 1 or 11, are indefinite because the numerical value of the recited
“bypass ratio” is known to change significantly depending upon the
operating conditions. Final Act. 34–35 (citing C. A. Anderson and D.
Crichton, “Engine Design Studios for a Silent Aircraft,” J. Turbomachinery
vol. 129, pp. 479–87, July 2007) (hereafter “Anderson”) (noting Anderson
discloses that the bypass ratio (BPR) changed from 19.0, 15.5, and 16.8 for
the sideline, top-of-climb, and cruise operating conditions, respectively)
(citing id. p. 482, Table 2)). According to the Examiner, Appellant has
failed to give potential infringers notice as to what specific operating
condition is represented by the claimed gas turbine bypass ratio. Id.

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“Bypass ratio,” “expansion ratio,” and “gear ratio” have open-ended ranges
The Examiner determines that claims 1–20 also are indefinite because
the recited ranges of the bypass ratio, expansion ratio, and gear ratio are
unbounded (open-ended). First, for the bypass ratio, the Examiner finds that
the limitation “said bypass ratio being greater than or equal to about 8.0” in
claim 1 is indefinite because the combination of “greater than” and “about”
makes both the upper limit and the lower limit of the bypass ratio range
unbounded. Final Act. 35–36. Dependent claims 2–4 and 6–9 include this
same limitation.
The Examiner further determines that claims 5, 10, 11, 15, and 17,
which each recite a bypass ratio that is either “greater than” or “greater than
or equal to” a numerical value, are indefinite because the bypass ratio’s
upper limit is unbounded. Final Act. 37–38. Claims 12–14, 16, and 18–20
depend from claim 11 or 17 and also include one of these limitations.
Second, for the expansion ratio, claim 1 recites “an expansion
ratio across the low pressure turbine section being greater than or equal to
about 5.0.” Appeal Br. 14 (Claims App.) (emphasis added). Dependent
claims 2, 3, 5–8, and 10 also include this limitation. Claim 4 similarly
recites “said expansion ratio is greater than or equal to about 5.7.” The
Examiner finds that the combination of “greater than” and “about” makes
the expansion ratio limitation unbounded at both its upper and lower limits,
and thus, indefinite. Final Act. 36. The Examiner further determines that
claims 9, 11, 14, and 17 each recite an expansion ratio that is either “greater
than” or “greater than or equal to” a numerical value. Final Act. 38–39. The
Examiner determines that claims 9, 11, 14, and 17, and claims 12, 13, 16,
and 18–20 which depend from claim 11 or 17, are indefinite because the
upper limit of the expansion ratio is unbounded. Id.
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Third, for the gear ratio, claim 1 recites “said gear reduction having a
gear ratio greater than or equal to about 2.4.” Appeal Br. (Claims App.)
(emphasis added). Claims 2 and 4–6 also recite the combination of “greater
than” and “about” for the gear ratio. Id. Claim 3 recites “said gear ratio is
less than or equal to about 4.2.” The Examiner finds that the combination of
“greater than” or “less than” and “about” makes the gear ratio limitation
unbounded at both its upper and lower limits. Final Act. 37. The Examiner
also determines that claims 7, 8, 11–13, and 17 each recite a gear ratio that is
either “greater than,” “greater than or equal to,” or “less than or equal to” a
numerical value. Final Act. 39. The Examiner determines that claims 7, 8,
11–13, and 17, and claims 9, 10, 14–16, and 18–20 depending directly or
ultimately from claim 7, 8, 11–13, or 17, are indefinite because the upper
limit of the gear ratio is not bounded. Id.
Claims 1–10
Appellant filed an Amendment After Final Rejection to address the
rejection of claims 1, 2, 4, and 5 based on reciting the combination of
“greater than” and “about” in regard to values of the bypass ratio, expansion
ratio, and gear ratio, and the rejection of claim 3 for reciting “less than” and
“about” in regard to the value of the gear ratio, but the proposed claim
amendments were not entered by the Examiner. Appeal Br. 3; Advisory
Act. 2.2 The Examiner notes that Appellant does not contest these rejections
in the Appeal Brief. Ans. 84–85. Thus, we sustain the rejection of claims
1–5, and claims 6–10, which depend directly or ultimately from claim 1 and
incorporate by reference at least one limitation in claim 1 that includes the

2 Appellant proposed amending claims 1–4 to delete all occurrences of the
term “about.” See Amendment filed June 28, 2017.
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combination of “greater than” and “about,” under 35 U.S.C. § 112(b) as
being indefinite.
Claims 11–20
Appellant contends that the lack of a specific recitation of an upper
bound for the values of the bypass ratio, expansion ratio, and gear ratio does
not render the corresponding claims indefinite. Appeal Br. 4–6. First,
Appellant contends that case law permits reciting quantities in an open-
ended manner. Id. at 4. Appellant cites In re Fisher, 427 F.2d 833 (CCPA
1970), as contradicting the Examiner’s position that a numerical range
having no upper limit is indefinite on its face. Id. Appellant states, “the
[Fisher] court found that the recitation of an open-ended ratio of ‘at least 1
International Unit of ACTH per milligram’ was definite . . . The court
‘fail[ed] to see anything indefinite in such as recitation.’” Id. (citing Fisher,
427 F.2d at 838).
The Examiner responds that the portion of Fisher cited by Appellant
was not about whether open-ended claims are definite, but rather, was about
the terms “International Unit” and “International Standard.” Ans. 72–73
(quoting Fisher, 427 F.2d at 837–38). Ans. 72–73. Accordingly, the
Examiner submits that the cited portion does not support the definiteness of
open-ended claims. Id. at 74.
We agree with the Examiner that the passage in Fisher quoted by
Appellant does not hold that open-ended claims are definite. Fisher
addressed whether the limitation of “at least 1 International Unit of ACTH
per milligram” was sufficiently enabled by the disclosure. Fisher, 427 F.2d
at 839. The court described this claim language as “a so-called ‘open-ended’
recitation” having “a lower limit but no upper limit.” Id. The court
determined that this limitation was not sufficiently enabled. Id.
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Appellant also contends that each of the claimed numerical ranges that
the Examiner found to be indefinite is fixed by a lower limit, and the
Examiner does not dispute that the lower bounds are clear. Appeal Br. 5.
Appellant contends that the absence of a limitation does not render the
claims indefinite where “each recited limitation is definite.” Id.; see
Fisher, 427 F.2d at 838.
Fisher discusses that the court had previously “considered an
indefiniteness rejection involving the absence of a limitation. We reversed
the rejection, stating: ‘The scope of the claim is still definite, however,
because each recited limitation is definite.’” Fisher, 427 F.2d at 838
(emphasis added). As pointed out by Appellant, the Examiner does not
determine that the lower limit of the bypass ratio, expansion ratio, or gear
ratio recited in claims 11–20 is indefinite. In accordance with Fisher, the
absence of a recited limitation for the upper limit of these ratios does not
make the scope of claims 11–20 indefinite. Accordingly, Fisher supports
Appellant’s argument. Ans. 74.
Appellant also cites Exxon Research and Eng’g Co. v. U.S., 265
F.3d 1371, 1382 (Fed. Cir. 2001), abrogated on other grounds, 134 S. Ct.
2120 (2014), as supporting the position that a claim is not unclear simply
because an upper boundary of a recited range is not specified (i.e., the range
is open-ended), and thus, it is permissible to recite the claimed numerical
ranges in an open-ended manner. Appeal Br. 4. In Exxon, the court
considered whether the claim limitation “particles of average diameter,
dp % 5 µm” was indefinite because it did not recite any limit on the particle
size. Exxon, 265 F.3d at 1382. The court determined that this term was not
indefinite:
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The claims do not contain any limitation on maximum
particle size, and no limitation is required as a matter of
definiteness. Thus, the claims expressly reach any composition
with catalyst particles having an average diameter greater than
five microns, no matter how large the particles may be; as such,
there is no indefiniteness as to the scope of that limitation. The
government’s real objection to the claims as written is that they
may include some inoperable embodiments, such as one in
which the particles have an average diameter greater than 100
microns. However, that is an issue of enablement, and not
indefiniteness.
Id. (emphasis added). Appellant explains that Exxon was only partially
abrogated by Nautilus, and that Nautilus does not discuss open-ended
ranges. Appeal Br. 4. Appellant contends that the Examiner does not show
“that the standard specific to open-ended ranges has changed in view of
Nautilus.” Id. at 5.
Appellant’s position regarding Exxon is persuasive. The Examiner
appears to acknowledge that Exxon recognizes that “an unbounded upper
limit of particle average diameter would have been an issue of enablement,”
not indefiniteness. Ans. 75. We agree with Appellant that, under Exxon, the
recited ranges of the bypass ratio, expansion ratio, and gear ratio are not
indefinite on account of their lacking explicit numerical upper bounds.
The Examiner also quotes the following passage in Scripps Clinic &
Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1572 (Fed. Cir.
1991):
Open-ended claims are not inherently improper, as for all
claims, their appropriateness depends on the particular facts of
the invention, the disclosure, and the prior art. They may be
supported if there is an inherent, albeit not precisely known,
upper limit and the specification enables one of skill in the art
to approach that limit.
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Ans. 76 (emphasis omitted)). The Examiner states that the claims fail
both prongs of Scripps. Id.
However, we read the above passage in Scripps as pertaining to
whether the claimed subject matter was enabled, not to whether that subject
matter was indefinite. See Scripps, 927 F.2d at 1571–72. Appellant notes
correctly that non-enablement and indefiniteness are separate and distinct
bases for rejection. Reply Br. 3. The Examiner does not show persuasively
that Appellant is required to establish an inherent upper limit for the bypass
ratio, expansion ratio, or gear ratio, or to show that the Specification enables
a skilled artisan to approach those limits, to overcome the rejections based
on indefiniteness.
The Examiner also states, “Appellant’s alleged inherent upper limits
of the claimed figures of merit do not and cannot exist because the upper
limits of the claimed figures of merit changed over the years as technology
advance[d].” Ans. 76–77 (emphasis added). However, the Examiner cites
no persuasive authority to support the position that the bypass ratio,
expansion ratio, and/or gear ratio changing in the future renders the
presently claimed ratios indefinite. In that regard, the ordinary meaning of a
claim term at the time of the invention controls. See SAS Institute, Inc. v.
ComplementSoft, LLC, 825 F.3d 1341, 1347 (Fed. Cir. 2016) (“Claim
construction seeks to ascribe the meaning to claim terms as a person of
ordinary skill in the art at the time of invention would have understood
them.”).
Appellant addresses the Examiner’s position that the bypass ratio may
change over changing operating conditions by stating that “one would
understand that the limitation is met when an engine operates at the recited
bypass ratio, regardless of operating conditions.” Appeal Br. 5–6.
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The Examiner responds:
So taking Appellant’s argument to the logical extreme would
mean that a gas turbine engine could potentially both infringe
and not infringe Appellant’s claimed BPR depending on the
particular operating condition of said gas turbine engine.
Clearly, the metes and bounds of Appellant’s claimed invention
is unclear and therefore indefinite.
Ans. 84. The Examiner does not, however, explain persuasively why a
potential infringer would not be able to determine whether they are operating
at the claimed bypass ratio and potentially infringing the claimed subject
matter. Accordingly, we disagree with the Examiner’s apparent position that
the claims are indefinite simply based on their recitation of any value for the
bypass ratio.
Thus, we do not sustain the rejection of claims 11–20 under 35 U.S.C.
§ 112(b).

Claims 1–20 – Written Description
Open-ended ranges
Regarding the ranges of the “bypass ratio” recited in claims 1–20, the
Examiner acknowledges that the Specification describes the claim language,
but determines that the Specification provides no additional details. Final
Act. 5. The Examiner also determines that claims 1–20 define the bypass
ratio using functional language that specifies a desired result, but the
disclosure does not identify sufficiently how the result is achieved. Id.
at 5–6.
The Examiner describes teachings of “Rauch,” “Warwick,” “Coy,”
and Bill Read3 pertaining to bypass ratio values in gas turbine engines. Final

3 Bill Read, “Powerplant Revolution,” AeroSpace, May 2014, pp. 28–31.
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Act. 6–7. The Examiner submits that Bill Read provides evidence that the
technology for a bypass ratio value of about 15 did not even exist in the art
as of the effective filing date of the present application. Id. at 7.
Accordingly, the Examiner submits, a skilled artisan at that time would not
have recognized Appellant was in possession of the claimed invention, that
is, “bypass ratios ranging from 15 . . . [to] 250 and greater,” in view of
Appellant’s disclosure. Id.
Similarly, the Examiner acknowledges that the Specification describes
the values of the “expansion ratio” recited in claims 1–20, but without
providing any additional details. Final Act. 8. The Examiner also
determines that these claims define the expansion ratio using functional
language that specifies a desired result, but the disclosure does not
sufficiently identify how the result is achieved. Id. at 8–9.
The Examiner describes teachings of Wilfert,4 Warwick,5 and “Coy”
relating to expansion ratio values in gas turbine engines. Final Act. 9–10.
The Examiner determines that these teachings show that a skilled artisan at
the effective filing date of the application would not have recognized
Appellant was in possession of “a low pressure turbine pressure ratio that is
greater than five (5) ranging from 20 . . . 2000 and greater,” in view of
Appellant’s disclosure. Id. at 10.
The Examiner also acknowledges that the Specification describes the
numerical values of the “gear ratio” recited in claims 1–20, but determines

4 Gunter Wilfert, “Geared Fan, Aero-Engine Design: From State of the Art
Turbofans Towards Innovative Architectures,” van Karman Institute for
Fluid Dynamics, Belgium, March 3–7, 2008.
5 G. Warwick, “Civil Engines: Pratt & Whitney gears up for the future with
GTF,” Flight International, Nov. 2007.
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that the Specification provides no additional details. Final Act. 11. The
Examiner also determines that claims 1–20 define the expansion ratio using
functional language that specifies a desired result, but the disclosure does
not sufficiently identify how the result is achieved. Id. at 11–12.
The Examiner describes teachings of “Rauch,”6 “Jane’s Aero-
Engines,”7 and “Warwick” that pertain to values of gear ratios in gas turbine
engines. Final Act. 12–13. According to the Examiner, these teachings
evidence that a skilled artisan at the effective filing date of the application
would not have recognized that Appellant was in possession of “gear
reduction ratios ranging from 5.0 . . . [to] 2000 and greater,” in view of
Appellant’s disclosure. Id. at 13.
The test for sufficiency under the written description requirement of
35 U.S.C. § 112 “is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). To have “possession,” “the specification must . . . show that the
inventor actually invented the invention claimed.” Id. The purpose of the
written description requirement is to prevent an applicant from later
asserting that he invented that which he did not; the applicant for a patent is
therefore required to recount his invention in such detail that his future
claims can be determined to be encompassed within his original creation.

6 D. Rauch, “Design Study of an Air Pump and Integral Lift Engine ALF-
504 Using the Lycoming 502 Core,” NASA Report CR-120992, NASA
Lewis Research Center, Cleveland, Ohio, 1972.
7 Jane’s Aero-Engines, Issue Seven, Bill Gunston Ed., Jane’s Information
Group Inc., Alexandria, VA, 2000.

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Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir.
2003) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir.
1991)).
Appellant argues that the Examiner does not contend that the
Specification fails to disclose the claimed numerical ranges, or that
Appellant lacked possession of quantities within those ranges. Appeal
Br. 11. Appellant also contends that “the Examiner has not cited any legal
basis that Appellant must demonstrate possession of theoretical and
unachievable numerical values to meet the written description requirement,
especially where inherent limitations exist.” Id. (emphasis added).
According to Appellant, the “[S]pecification discloses a unique engine
arrangement which would allow for bypass ratios, expansion ratios, and gear
ratios between a claimed lower limit and an inherent upper limit.” Id.
The Examiner responds that Appellant has not cited factual evidence
in the record to establish numerical values for the alleged inherent upper
limits of the claimed values of the bypass ratio, expansion ratio, and gear
ratio. Ans. 20. Indeed, the Examiner submits, Appellant cannot provide this
factual evidence because the upper limits “have changed as technology has
advanced over time. Therefore, by definition the claimed figures of merit do
not have and cannot have an inherent upper limit because their respective
upper limit numerical value changed over time and will continue to change
over time.” Id. at 30.
Appellant replies that “Scripps instructs that unbounded ranges ‘may
be supported if there is an inherent, albeit not precisely known, upper limit.”
Reply Br. 5 (citing Scripps, 927 F.2d at 1572 (emphasis added)). Appellant
contends that the increase in the maximum achieved bypass ratios and sizes
of aircrafts in service does not support the Examiner’s position that inherent
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limits do not exist. Id. Appellant also contends that the Examiner’s research
indicates that improvements in gas turbine engine technology occur in small
predictable increments over a long period of time, which supports
Appellant’s position that workers would understand that inherent limits
exist. Id. (citing Final Act. 23–27). Appellant points out that, as noted by
the Examiner, “‘Pratt & Whitney spent $1 billion over a 20 year research
and development history and spending of at least $100 million per year in
continuing research and development in each year after 2007 for a bypass
ratio of 10 to 12.’” Id. (citing Final Act. 6). According to Appellant, this
indicates:
gas turbine engine design is a mature field of art, where
marginal advancements come at great cost and effort. A worker
would understand that at some point these improvements would
stagnate due to material and stress limitations. Accordingly,
one would understand that inherent, practical limitations exist
for bypass ratios, gear ratios, and expansion ratios in the
context of a gas turbine engine, and this is all that is required to
meet the first prong of Scripps.
Id.
First, the passage in Scripps quoted by the Examiner is in the context
of an enablement rejection of “open-ended claims.” Ans. 21 (citing Scripps,
927 F.2d at 1572). We do not read this passage as a requirement of open-
ended claims under the written description requirement.
Second, we agree with Appellant that the information cited by the
Examiner as evidence to show that a skilled artisan would not have
recognized Appellant was in possession of bypass ratio, expansion ratio, or
gear ratio values substantially higher than the claimed values (Final Act. 5–
14), shows that certain advances in gas turbine engine technology have
“come at great cost and effort.” We also agree that the Examiner does not
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provide a persuasive legal basis to require Appellant to demonstrate
possession of unachievable numerical values to meet the written description
requirement. Appeal Br. 11.
However, we agree with the Examiner that Appellant’s disclosure
does not reasonably convey to those skilled in the art that the inventors had
possession of the claimed subject matter as of the effective filing date.
Appellant argues that paragraphs 40–43 and 55 of the Specification and
Figure 1A support Appellant’s position that the claimed bypass ratio,
expansion ratio, and gear ratio have inherent, practical limits. Reply Br. 6–
7. Paragraph 41 of the Specification discloses “a high-bypass geared
turbofan aircraft engine in which the engine 10 bypass ratio is greater than
(10) . . . the low pressure turbine 18 has a pressure, or expansion, ratio
greater than five (5) . . . [and] a gear reduction ratio of greater than 2.5.”
Paragraph 53 discloses an expansion ratio “greater than or equal to about
5.7,” and a gear reduction ratio “greater than or equal to about 2.4 and less
than or equal to about 4.2.” These values of the bypass ratio, expansion
ratio, and gear ratio appear to be the highest values disclosed in the
Specification. However, these highest values are not substantially greater
than the numerical values recited in claims 1 and 11, that is, the lower values
of the ranges.
Appellant points out that, under Scripps, the inherent upper limit need
not be “precisely known.” Reply Br. 6. However, the disclosure cited by
Appellant does not describe any numerical value of an inherent, practical
limit of the bypass ratio, expansion ratio, or gear ratio of the claimed gas
turbine engine. For example, Appellant contends that “an infinite bypass
ratio is unachievable and impractical” and “[t]he minimum amount of
airflow required to operate the engine provides an inherent practical upper
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limitation to the claimed bypass ratio.” Id. at 7–8. Even if this generally-
stated airflow condition corresponds to the “practical upper limitation” of
the bypass ratio, Appellant’s discussion of this condition fails to demonstrate
that the inventors actually had possession of some numerical value
corresponding to the “practical upper limitation” of the bypass ratio as of the
effective filing date. In other words, it is one thing to say that an inherent,
but not precisely known, practical upper limit exists, but it is an entirely
different matter to demonstrate possession of an invention that encompasses
that upper limit. We agree with the Examiner that Appellant’s disclosure
does not show possession of an inherent upper value of the claimed bypass
ratio, expansion ratio, or gear ratio.
Appellant also does not persuasively show possession of a gas turbine
engine in which each of the bypass ratio, expansion ratio, and gear ratio has
its inherent upper limit, as broadly encompassed by the claim language.
Thus, we sustain the rejection of claims 1–20 under the written
description requirement of 35 U.S.C. § 112(a) based on reciting open-ended
ranges.
Fan exit guide vanes
Regarding claims 17–20, the Examiner acknowledges that paragraph
52 of the Specification describes “a multiple of fan exit guide vanes . . . each
of said multiple of fan exit guide vanes include a pivotable portion able to
pivot and slide relative a fixed portion, said pivotable portion includes a
leading edge flap,” as recited in claim 17. Final Act. 14. However, the
Examiner determines that the Specification and drawings “fail to show the
structural details of the mechanism(s) required to pivot and slide the
pivotable portion including a leading edge flap relative to a fixed portion
where the multiple of fan exit guide vanes are independently and
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simultaneously rotatable about an axis of rotation.” Id. at 14–15 (citing
Spec. ¶ 52, Figs. 4A–4C).
Appellant contends that Figures 4A to 4C illustrate the pivot and slide
movement of the fan exit guide vanes, and paragraphs 21 and 50 of the
Specification support reciting independently and simultaneously rotating the
plurality of fan exit guide vanes. Appeal Br. 11.
The Examiner responds that claims 17–20 combine functions from
different embodiments, and the disclosure fails to sufficiently describe how
the various functions are performed by the claim 17 combination. Ans. 14–
15. First, for the embodiment shown in Figures 2A–2C, the Examiner
determines that the disclosure fails to disclose how the same fan exit guide
vanes are both independently rotatable and simultaneously rotatable as
recited in claim 17. Id. at 8–10. Second, for the embodiment shown in
Figures 3A–3C, the Examiner notes that paragraph 51 of the Specification
describes “[t]he pivoting airfoil portion 66P may include a leading edge flap
which is actuatable by an actuator system 62’ as described above to vary
both the throat area (FIG. 3B) and the projected area (FIG. 3C),” but the
Examiner finds that none of the drawing figures show “‘each of said
multiple of fan exit guide vanes include a pivotable portion able to pivot and
slide relative a fixed portion, said pivotable portion includes a leading edge
flap,’” as recited in claim 17. Third, for the embodiment shown in Figures
4A–4C, the Examiner finds that these figures and paragraph 52 of the
Specification fail to show or disclose the actuating mechanism(s) to achieve
the claimed function of the multiple of fan exit guide vanes being
independently rotatable and simultaneously rotatable. Ans. 14. The
Examiner determines that, because the Specification does not disclose how
the claimed functions are performed, claim 17 encompasses all known and
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unknown methods and devices for achieving the claimed functions.
Accordingly, the Examiner submits, the Specification fails to convey to
those skilled in the art that Appellant was in possession of the claimed
invention. Id. at 15.
Appellant replies that the Examiner acknowledges that each of the
limitations of claim 17 is disclosed in the Specification and drawings, and
further, there is no requirement that every claim feature must come from a
single embodiment. Reply Br. 2 (citing Final Act. 5).
The Specification is only required to describe the invention, as
claimed. Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1333
(Fed. Cir. 2003). Appellant points out that it “is not claiming a specific
actuation structure.” Reply Br. 3. In fact, claims 17–20 do not recite an
actuator. Accordingly, Appellant is not required to describe such specific
actuation structure to comply with the written description requirement.
Thus, we do not sustain the rejection of claims 17–20 under the
written description requirement of 35 U.S.C. § 112(a) based on the fan exit
guide vanes limitation recited in claim 17.8
Claims 1–20 – Enablement
Under 35 U.S.C. § 112(a), the specification must describe “the
manner and process of making and using [the claimed invention], in such
full, clear, concise, and exact terms as to enable any person skilled in the art
to which it pertains . . . to make and use the same.” To meet this
requirement, the as-filed disclosure must be sufficiently complete to enable a

8 However, as discussed above, we are sustaining the rejection of claims 17–
20 (as well as claims 1–16) under the written description requirement for
other reasons.
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person of ordinary skill in the art at the time of the invention to make and
use the claimed invention without undue experimentation. Wands, 858 F.2d
at 737. When rejecting a claim for lack of enablement, the PTO has the
initial burden to provide “a reasonable explanation” of why it believes the
specification is not enabling. In re Wright, 999 F.2d 1557, 1561–62 (Fed.
Cir. 1993). An enablement rejection can be based on scope of enablement or
on total lack of enablement for any subject matter within the scope of the
claims. In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999). The
supporting disclosure must adequately apprise those skilled in the art, in
light of the knowledge of those ordinary artisans, how to make and to use the
claimed subject matter throughout the entire scope of the claim. AK Steel
Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003), cert denied, 124 S.Ct.
2390 (U.S. May 24, 2004) (“[T]he applicant’s specification must enable one
of ordinary skill in the art to practice the full scope of the claimed invention.
[citing Wright, 999 F.2d at 1561].”).
Open-ended ranges
For claims 1–20, the Examiner determines that the upper limit of each
of the bypass ratio, expansion ratio, and gear ratio is unbounded, and
therefore, the claims are not enabled. Final Act. 16–22. As for the written
description rejection discussed above, the Examiner submits that each of the
claimed bypass ratio, expansion ratio, and gear ratio encompasses values
substantially exceeding the claimed lower limit value. Id.
In support, the Examiner cites Fisher, 427 F.2d at 839, where the
Court determined that the claim limitation “hormone preparation containing
at least 1 International Unit of ACTH per milligram” was not enabled where
the specification disclosed potencies only from 1.11 to 2.3 International Unit
of ACTH activity per milligram. Final Act. 18–19. As noted by the
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Examiner, the court concluded that, “on the record before us, that appellant
has not enabled the preparation of ACTHs having potencies much greater
than 2.3.” Id. at 19.
The Examiner also cites MagSil Corp. v. Hitachi Global Storage
Technologies, Inc., 687 F.3d 1377 (Fed. Cir. 2012), in which the claim
recited a change in resistance by at least 10% at room temperature, but the
specification did not show that a person of ordinary skill in the art would
have been able to achieve resistive changes in values that greatly exceed
10% without undue experimentation. Final Act. 18 (citing MPEP
§§ 2161.0(III), 2164.06(a)).
The Examiner determines that Appellant’s Specification contains no
showing that a person of ordinary skill in the art at the effective filing date
would have been able to achieve the claimed open-ended bypass ratio, gear
reduction ratio, and low pressure turbine pressure ratio without undue
experimentation. Final Act. 22. The Examiner applies the “Wands factors”9
for the claimed bypass ratio (id. at 23–24), expansion ratio (id. at 25–26),
and gear ratio (id. at 26–27). The Examiner concludes that claims 1–20 are
not reasonably supported by the scope of enablement in the Specification.
Id. at 27.
The Examiner also determines that the claimed bypass ratio,
expansion ratio, and gear ratio do not have inherent upper limits, and the
Specification fails to enable one of skill in the art to approach the open-
ended upper limits of these ratios. Final Act. 29–30. Accordingly, the
Examiner determines that the claims fail both prongs of Scripps. Id.

9 See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); MPEP § 2164.01(a).
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Appellant contends that one of ordinary skill in the art would
recognize that each of the bypass ratio, expansion ratio, and gear ratio has an
existing inherent, practical upper limit based on the practical physical
limitations and basic architecture of a bypass turbine engine. Appeal Br. 7.
Appellant describes why these limits exist for the respective ratios. Id. at 7–
8; Reply Br. 6–7. Appellant contends that this meets the first prong of
Scripps. Id. at 8. Appellant further contends that, with respect to the second
prong of Scripps, the Specification “discloses unique fan, compressor and
turbine arrangements, among other structural features, sufficient to enable
[one] of ordinary skill in the art to achieve the claimed ratios between the
claimed limit and the inherent upper limits.” Id. at 9. According to
Appellant, these and other disclosed structural features are entitled to
“‘broad enablement.’” Id.
Appellant’s contentions are not persuasive. First, Appellant does not
address, and thus, does not apprise us of any error in the Examiner’s analysis
of the Wands factors. Second, Appellant’s disclosure does not indicate any
numerical value of an inherent, practical limit of the bypass ratio, expansion
ratio, or gear ratio of the claimed gas turbine engine. Third, Appellant does
not persuasively show that one of ordinary skill in the art would be able to
make and use a gas turbine engine in which each of the bypass ratio,
expansion ratio, and gear ratio has its inherent upper limit, as broadly
encompassed by the claim language. In that regard, Appellant does not
explain persuasively how the purported unique structures enable each of
these ratios to be at its inherent upper limit at the same time. Accordingly,
we are not persuaded by Appellant that the supporting disclosure adequately
apprises those skilled in the art, in light of the knowledge of those ordinary
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artisans, how to make and to use the claimed subject matter throughout the
entire scope of the claim. See AK Steel Corp., 344 F.3d at 1244.
Thus, we sustain the rejection of claims 1–20 under the enablement
requirement of 35 U.S.C. § 112(a) based on reciting open-ended ranges.
Fan exit guide vanes
For claims 17–20, the Examiner also determines that Appellant’s
drawings fail to show the structural details of the mechanism(s) required to
pivot and slide the pivotable portion including a leading edge flap relative to
a fixed portion in of the fan exit guide vanes, where the fan exit guide vanes
are independently and simultaneously rotatable about an axis of rotation, as
required by claim 17 and dependent claims 18–20. Final Act. 31.
Appellant contends that it is not claiming a specific actuation
structure. Appeal Br. 10. Appellant also contends that the Examiner admits
that Figures 4A to 4C illustrate the pivot and slide movement. Id. (citing
Final Act. 31). Appellant further contends that paragraphs 21 and 50 of the
Specification provide support for independently and simultaneously rotating
the plurality of fan exit guide vanes, and the Examiner has not provided any
evidence that one would not know how to pivot an engine component or
slide one component relative to another. Id.
Appellant’s contentions are persuasive. As noted above, the
supporting disclosure must adequately apprise those skilled in the art, in
light of the knowledge of those ordinary artisans, how to make and to use
the claimed subject matter. AK Steel Corp., 344 F.3d at 1244. Appellant’s
disclosure describes independently and simultaneously rotating multiple fan
exit guide vanes, and also depicts how for each guide vane the pivotable
portion can both slide and pivot relative to the fixed portion. See Spec. ¶ 52,
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Figs. 4A–4C. The Specification also describes an actuator system 62 as
depicted in Figure 1A for rotating each fan guide vane. See Spec. ¶ 48.
Appellant explains that, for example, “a hydraulic or pneumatic linear
actuator could accomplish the extension of the pivotable portion. As another
example, the guide vanes may have individual rotary actuators as well as a
unison ring to be both individually and simultaneously rotatable.” Reply
Br. 3. The Examiner has not explained adequately why it doubts that one of
ordinary skill in the art would not know how to operate the fan exit guide
vanes to pivot and slide one portion relative to another, or to independently
and simultaneously rotate a plurality of fan exit guide vanes, without
requiring undue experimentation.
Thus, we do not sustain the rejection of claims 17–20 under the
enablement requirement of 35 U.S.C. § 112(a) based on the recitation of the
guide vanes limitation in claim 17.10

Anticipation
The Examiner finds that Smith discloses all limitations of claims 1–
16. Final Act. 42–45 (citing Smith ¶¶ 21, 22, 32, Figs. 1–4C).
Appellant’s Specification indicates that the present application is a
continuation-in-part of U.S. Application No. 13/361,987, filed January 31,
2012, which is a continuation-in-part of U.S. Application No. 11/829,213,
filed July 17, 2007 (i.e., Smith). Spec. ¶ 1. Appellant contends that Smith is
a grandparent of the present application, the present application is entitled to

10 However, as discussed above, we are sustaining the rejection of claims
17–20 (as well as claims 1–16) under the enablement requirement for other
reasons.
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the priority date of common subject matter in Smith, and Smith cannot be
used as prior art for that common subject matter. Appeal Br. 12.
The Examiner determines that the subject matter of claims 1–16 is not
fully supported by Smith, and has an effective priority date of January 31,
2012. Final Act. 40–41.
Appellant does not identify any specific subject matter in Smith that is
purportedly “common” with the subject matter of any rejected claim. The
following passage includes the only description of numerical values for the
bypass ratio, pressure ratio, and gear reduction ratio described in Smith:
The engine 10 in the disclosed embodiment is a high-
bypass geared turbofan aircraft engine in which the engine 10
bypass ratio is greater than ten (10), the turbofan diameter is
significantly larger than that of the low pressure compressor 16,
and the low pressure turbine 18 has a pressure ratio greater
than five (5). The gear train 22 may be an epicycle gear train
such as a planetary gear system or other gear system with a
gear reduction ratio of greater than 2.5.
Smith ¶ 21 (emphasis added). This passage does not, however, describe a
“bypass ratio being greater than or equal to about 8.0,” “an expansion ratio .
. . greater than or equal to about 5.0,” or “a gear ratio greater than or equal
to about 2.4,” as recited in claim 1. Appeal Br. 14 (Claims App.) (emphasis
added). That is, the passage does not describe a bypass ratio as low as
about 8.0, an expansion ratio as low as about 5.0, or a gear ratio as low as
about 2.4. For similar reasons, Smith does not describe “a bypass ratio . . .
greater than or equal to 8.0,” “an expansion ratio greater than or equal to
5.0,” or a “gear reduction having a ratio of greater than or equal to 2.4,” as
recited in claim 11. Id. at 15 (Claims App.) (emphasis added). Because
Smith does not describe the numerical values for the bypass ratio, pressure
ratio, and gear reduction ratio recited in claims 1 and 11, Smith does not
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describe common subject matter, that is, the same subject matter recited in
these claims. Thus, claims 1 and 11 are not entitled to the priority date of
Smith, making Smith available as prior art against these claims. Further,
Smith does not describe the same numerical values of the bypass ratio,
pressure ratio, or gear reduction ratio as recited in dependent claims 2–5, 7–
10, and 12–15, and thus, Smith is also available as prior art against these
claims and claims 6, 9, and 16.
Although Smith does not describe the same ranges of the bypass ratio,
expansion ratio, and gear reduction ratio recited in claims 1 and 11, we agree
that Smith anticipates these claims. Particularly, the ranges of these ratios
recited in claims 1 and 11 clearly fall within, or overlap, the ranges of the
bypass ratio, expansion ratio, and gear ratio disclosed in Smith. See Smith
¶ 21. Appellant does not apprise us of any error in the Examiner’s findings
for claims 1 and 11, or dependent claims 2–10 and 12–16.
Thus, we sustain the rejection of claims 1–16 as anticipated by Smith.

Obviousness
In rejecting claims 1–16 as unpatentable over Wendus and Snow, the
Examiner finds that Wendus discloses all limitations of claims 1 and 11
except for “fan exit guide vanes each including a pivotable portion able to
pivot and slide relative a fixed portion.” Final Act. 47–56 (citing Wendus p.
6, § 3.2.2; p. 11, § 3.2.3.6; Figs. 4, 6). The Examiner relies on Snow as
teaching fan exit guide vanes, as claimed. Id. at 49–50, 54–55. The
Examiner provides an annotated Figure 2 of Snow in which the “fan exit
guide vane,” “pivotable portion,” and “fixed portion” are identified. Id. at
49. Regarding this annotated figure, the Examiner explains:
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As annotated in said figure, a dashed outline defined the fan
exit guide vane which had pivotable portions (31-lever arm)
and (44-fastener) while the fixed portions were the raised
areas, i.e., bosses, of the nacelle case (23) and core case (26)
where the shaft (37) and spindle (41), respectively, passed
through holes in said cases to be fastened to the pivotable lever
arm (31) by nut (39) and held in place by fastener (44). When
the fan exit guide vane of Snow pivoted about the axis defined
by shaft (37) an [sic] spindle (41) said pivotable portions
pivoted and slide where the lever arm (31) interfaced the boss
in nacelle case (23) and where the fastener interfaced the boss
in the core case (26).
Advisory Act. 4 (emphasis added); Ans. 87.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the fan exit guide vanes of Wendus with
the fan exit guide vanes taught by Snow. Final Act. 50 (citing Snow, col. 5,
ll. 4–15), 55.
Appellant disagrees with the Examiner that Snow discloses fan exit
guide vanes, as claimed. Appeal Br. 12–13. Appellant contends that the
claim language itself requires “a vane that has both a fixed portion and a
pivotable portion that ‘pivot[s] and slide[s] relative to’ the fixed portion.”
Id. (emphasis added). Appellant also contends that Figures 4A–4C and
paragraph 52 of the Specification “indicate that it is the actual vane that
pivots and slides.” Id. (emphasis added). Therefore, Appellant contends,
“one skilled in the art would not interpret the pivoting and sliding of the
associated vane structure as allegedly taught by Snow to meet this
limitation.” Id.
The Examiner responds that neither the claims nor the disclosure
supports Appellant’s interpretation of the claimed “pivotable portion” and
“fixed portion” to be the “actual vane.” Ans. 89. The Examiner submits that
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claims do not recite that “it is the actual vane that pivots and slides” (id.),
and the Specification fails to explicitly define the “pivotable portion” and
“fixed portion” to be the “actual vane” (id. at 88). The Examiner also
submits that Figures 4A–4C just show an “undisclosed” portion of the fan
exit guide vane, but not the rest of the fan exit guide vane. Id. at 89. The
Examiner interprets the “actual vane” to mean just the portion of the fan exit
guide vane defined between the radially outer surface of the core nacelle 12
and the radially inner surface of the fan nacelle 34, that is, only the portions
of the fan exit guide vanes directly exposed to the fan air in the bypass duct
40. Id. at 88–89 (citing Fig. 1). The Examiner determines that Snow
teaches the claimed function of pivoting and sliding under the broadest
reasonable interpretation of a fan exit guide vane as an assembly of different
parts, as shown in annotated Figure 2. Id. at 87; Final Act. 49.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. In re American Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claims 1 and 11 both
recite that the fan exit guide vanes “each includ[e] a pivotable portion able
to pivot and slide relative to a fixed portion.” Appeal Br. 14 (Claims App.)
(emphasis added). We construe this language to mean that each fan exit
guide vane includes a pivotable portion and a fixed portion, and that the
pivotable portion is able to pivot and slide relative to the fixed portion.
Our construction of the fan exit guide vane limitation is supported by
and consistent with the Specification. Particularly, paragraph 52 describes:
Referring to Figure 4A, another embodiment of the FEGV
system 36” includes a multiple of slotted fan exit guide vane
50” which each includes a fixed airfoil portion 68F and
pivoting and sliding airfoil portion 68P which pivots and slides
relative to the fixed airfoil portion 68F to create a slot 70 vary
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both the throat area (Figure 4B) and the projected area (Figure
4C) as generally described above.
(Emphasis added.) This passage describes clearly that the fan exit
guide vanes 50” (or airfoils) each include a fixed airfoil portion (i.e.,
fixed portion) 68F and a pivoting and sliding airfoil portion (i.e.,
pivotable portion) 68P which pivots and slides relative to the fixed
airfoil portion. Figure 4A shows airfoil portion 68P contiguous with
the fixed airfoil portion 68F before airfoil portion 68P is actuated to
pivot and slide relative to fixed airfoil portion 68F (represented by
solid line), and also shows the position of airfoil portion 68P after it
has been moved relative to fixed airfoil portion 68F to create slot 70.
We agree with Appellant that Figures 4A–4C and paragraph 52
“indicate that it is different portions of the vane that pivot and slide
relative to one another.” Reply Br. 9.
Figure 2 of Snow shows that the blocker door vane 29 is
arranged to rotate via the shaft 37 relative to the nacelle 23 and the
core casing 26. However, the nacelle 23 and core casing 26 are not
portions of the blocker door vane 29. Accordingly, we disagree with
the Examiner’s finding that the boss of nacelle 23 and the boss of core
casing 26 correspond to the claimed fixed portion of the fan exit guide
vanes. Ans. 87. Further, we are persuaded by Appellant that “the
‘pivot’ and ‘slide’ recitations are separate and distinct limitations that
must each be met.” Reply Br. 13. These two distinct movements
allow the position of the pivotable portion to be changed relative to
the fixed portion of the fan exit guide vane, as depicted in Figures
4A–4C. We agree with Appellant that the Examiner has not
established with evidence that Snow discloses or suggests a fan exit
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guide vane that includes both a fixed portion and a pivotable portion,
where the pivotable portion can both pivot and slide relative to the
fixed portion. Id. at 9.
Thus, we do not sustain the rejection of claims 1 and 11, and
dependent claims 2–10 and 12–16, as unpatentable over Wendus and
Snow.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(b) Indefiniteness 1–10 11–20
1–20 112(a) Written description 1–20
1–20 112(a) Enablement 1–20
1–16 102(b) Smith 1–16
1–16 103 Wendus and Snow 1–16
Overall
Outcome
1–20

FINALITY AND 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)(1)(iv).

AFFIRMED