Kironn, Lexia et al.

Patent Trials and Appeals Board

Jan 15, 2020

14912117 - (D) (P.T.A.B. Jan. 15, 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.
14/912,117 02/15/2016 Lexia Kironn 71422US02(15-274) 7854
52237 7590 01/15/2020
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
BURKE, THOMAS P
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
01/15/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEXIA KIRONN, ROGER O. COFFEY,
WENDELL V. TWELVES, GARY A. SCHIRTZINGER, JOE OTT,
EVAN BUTCHER, and JOHN D. FRISH
____________

Appeal 2019-005054
Application 14/912,117
Technology Center 3700
____________

Before NATHAN A. ENGELS, ERIC C. JESCHKE, and
FREDERICK C. LANEY, Administrative Patent Judges.

JESCHKE, 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, as set forth in the Final Office Action dated August 6, 2018, and as
further explained in the Advisory Action dated November 8, 2018, rejecting
claims 1–3, 6, 7, 9, 12–16, and 18–20. Claims 4, 5, 8, 10, 11, and 17 have

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. United Technologies Corporation (“Appellant”) is the
applicant under 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Br. 2.
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been canceled. Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

BACKGROUND
The disclosed subject matter “relates to a gas turbine engine and, more
particularly, to a fuel injector system therefor and method of operation
thereof.” Spec. ¶ 2.2 Claims 1, 6, and 19 are independent. Claim 1 is
reproduced below, with emphasis added:
1. A fuel injector for a gas turbine engine,
comprising:
a strut;
a fuel conduit within said strut;
a cooling fluid circuit within said strut for
communicating airflow as a cooling fluid;
a diffuser case module;
a fuel injector in communication with said
fuel conduit; and
a support to mount said strut to said diffuser
case module to radially locate said fuel injector
within a combustion chamber, said support
comprising a cooling fluid inlet and a cooling fluid
outlet in communication with said cooling fluid
circuit, the cooling fluid inlet for receiving the
airflow and the cooling fluid outlet for discharging
the airflow.

2 Citations to the Specification refer to the version filed on February
15, 2016, as modified on May, 21, 2018.
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REFERENCES
Name Reference Date
Faulkner US 4,483,137 Issued Nov. 20, 1984
Hicks US 7,827,795 B2 Issued Nov. 9, 2010
Porte US 7,926,261 B2 Issued Apr. 19, 2011
Lavie US 2002/0073708 A1 Published June 20, 2002
Hebert US 2007/0193272 A1 Published Aug. 23, 2007
Urban US 2012/0070271 A1 Published Mar. 22, 2012
Lo US 2013/0186102 A1 Published July 25, 2013

REJECTIONS3
1. Claims 1–3 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lavie, Faulkner, and Hebert.
2. Claims 6, 9, 12–15, 19, and 20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Lavie, Hicks, and Lo.
3. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable
over Lavie, Hicks, Lo, and Faulkner.
4. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable
over Lavie, Hicks, Lo, and Urban.
5. Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable
over Lavie, Hicks, Lo, and Porte.

3 The Examiner rejected claims 1–3 under 35 U.S.C. § 112 (b) as
failing to particularly point out and distinctly claim the subject matter
regarded as the invention. See Final Act. 2. In the Advisory Action, the
Examiner stated that this rejection has been overcome. See Adv. Act. 1.
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DISCUSSION
Rejection 1 – Claims 1–3
A. Claim 1
For independent claim 1, the Examiner relied on Lavie for certain
limitations but stated that “Lavie does not teach that the cooling fluid is an
airflow or mounting the strut to a diffuser case module” as generally
reflected in the claim language shown with emphasis above. Final Act. 3.
The Examiner found, however, that “Faulkner teaches (Figures 1–7) a
diffuser case module (34), wherein a strut (162) is mounted to the diffuser
case module (34) by a support (142).” Id. at 4. According to the Examiner,
it would have been obvious for one of ordinary skill in the art at the time of
the invention “to modify Lavie to include the connection of the strut and
case as taught by Faulkner in order to secure the injector in place and keep
compressor discharge air from escaping (Column 7, lines 1–6).” Id.
The Examiner stated that, “[a]lthough Lavie teaches (see Paragraph
0021) that the cooling fluid may be optionally independent and can include
oil, water, or any other suitable fluid, Lavie [in view of] Faulkner does not
teach that the cooling fluid is an airflow.” Final Act. 4. The Examiner
found, however, that “Hebert teaches (Figures 1–10) cooling a fuel injector
(10) using air (via 124) as the cooling medium (see Figure 1).” Id.
According to the Examiner, it would have been obvious for one of ordinary
skill in the art at the time of the invention “to modify Lavie [in view of]
Faulkner to include the cooling medium as taught by Hebert in order to
improve cooling of the heat shields (see abstract).” Id.
First, highlighting Figure 1 and paragraph 21 of Lavie, Appellant
argues that Lavie “teaches only a closed circuit cooling fluid[,] which under
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no proper interpretation could be an airflow as recited” in claim 1. Appeal
Br. 9. Appellant contends that “Lavie teaches that the cooling fluid is a
liquid such as oil or water[,] which further undermines the Examiner’s
proposed combination[,] which attempts to modify the teachings of both the
primary and the secondary references to a non-closed circuit non-liquid
cooling scheme.” Id. at 11.
As to the nature of the cooling medium in Lavie, the Examiner
responds by highlighting Lavie’s disclosure that the relied-upon cooling
circuit “is fed from feed source 10 by a cooling fluid which is optionally
independent (such as oil, water, or any other suitable fluid).” Lavie ¶ 21
(emphasis added), discussed at Ans. 4–5. According to the Examiner, the
“fluid” disclosed in Lavie “may be a liquid or a gas (such as air).” Ans. 5.
We are not apprised of error based on this aspect of Appellant’s first
argument. Although the Examiner provides certain evidence that the term
“fluid” as used in Lavie may encompass gases (see Ans. 5), in the rejection
here, the Examiner clearly relies on Hebert—not Lavie—as disclosing the
recited use of “airflow as a cooling fluid.” See Final Act. 4 (“Hebert teaches
(Figures 1–10) cooling a fuel injector (10) using air (via 124) as the cooling
medium (see Figure 1).”); Ans. 5 (“It is taught by Hebert that air (such as
compressor discharge air) may be used as the cooling medium for cooling a
fuel injector (see Figure 1 and Paragraph 0031 of Hebert).”). Thus, even if
Lavie teaches the use of only liquids as the cooling medium, that does not
undermine the rejection. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
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Moreover, again assuming that Lavie teaches the use of only liquids
as the cooling medium, we do not agree with Appellant’s argument that the
art “teach[es] away from airflow being used as a cooling fluid.” Appeal Br.
10. Instead, Lavie teaches (at most) alternatives to the use of airflow. See
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses
a general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention claimed.”
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004))); see also Ans.
5 (“It is incorrect to determine that Lavie teaches away from the use of a
gaseous cooling medium.”).
Second, we turn to another aspect of the proposed modification:
modifying Lavie from a closed-loop system4 (using “fluid” as the cooling
medium as discussed above) to an open-loop system (using air). See Ans. 6–
7 (discussing this aspect of the proposed modification). Appellant contends
that the proposed modification “would ruin the goal or function of not only
the base reference but also the secondary reference.” Appeal Br. 11.
The Examiner responds: “Lavie does not teach any particular
advantage of the cooling fluid being provided in a closed circuit or that it is
necessary for the operation of the system of Lavie. The modification of
Lavie to include air as the cooling fluid as suggested by Hebert would not

4 For example, Figure 1 of Lavie shows cooling circuit feed source 10
at both the beginning and the end of the cooling loop. See Ans. 6 (“Lavie
appears to show a closed-loop cooling circuit, with the cooling fluid exiting
the feed source to be sent to the fuel injectors and returning to the feed
source after cooling the fuel injectors.”).
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forego the benefits taught by Lavie.” Ans. 6. The Examiner also states that
because “it was recognized in the prior art that air would have been a
suitable fluid for cooling the fuel injectors, the use of air as the cooling fluid
would not render the prior art invention being modified unsatisfactory for its
intended purpose.” Id. at 5.
Where a proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification may not have been obvious. See In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984). Here, however, Appellant has not adequately
explained why the proposed modification would render Lavie unsatisfactory
for its intended purpose. See Ans. 5–6 (“Appellant has provided no
persuasive evidence that the use of an airflow as the cooling fluid would
result in a different outcome such as increasing coke formation at the fuel
injectors.”). Appellant has not shown error in the Examiner’s finding that
the modified device would continue to perform the intended purpose of
Lavie: reducing coke formation on the fuel injector. See Ans. 6 (stating that
“the intended purpose of Lavie to allow the injector to be used as high
temperatures without reduction to performance or lifetime by reducing coke
formation (see Paragraphs 0004–0005 and 0023)”), 5 (discussing disclosures
in the record—Hicks, 1:28–37, 3:61–65—which show that air-based cooling
systems reduce coking in fuel injectors).
Appellant also argues that that there is “simply no reason to modify”
Lavie “to utilize an airflow as the cooling fluid” (Appeal Br. 10–11) and that
there is “simply no motivation for anything but a closed circuit arrangement”
(id. at 10). See also Reply Br. 2 (“[T]he Examiner starts with the closed
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system, then suggests it is obvious to modify it into an open system, under
routine skill in the art. This simply cannot be sustained.”).
Although Appellant contends that the Examiner has failed to provide
sufficient articulated reasoning as to the proposed modification at issue and
engaged in hindsight reconstruction (Reply Br. 2), with this argument,
Appellant does not substantively address the reasoning provided by the
Examiner (Final Act. 4; Ans. 4–7). See Ans. 6–7 (discussing reasons to
modify a closed-loop cooling circuit to an open-loop cooling circuit). We
determine that the Examiner’s reasoning supports a prima facie case of
obviousness for claim 1. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). By not addressing the reasoning provided, Appellant has not shown
error in the relevant findings or the conclusion as to obviousness, which we
determine to be supported by rational underpinnings. See id. (discussing
how, if an examiner presents a prima facie case, “the burden of coming
forward with evidence or argument shifts to the applicant”); see also In re
Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an
“impermissible hindsight” argument as “essentially a repackaging of the
argument that there was insufficient evidence of a motivation to combine the
references”).
Third, Appellant contends that the Examiner’s articulated reason to
modify Lavie based on Faulkner “reinforces the closed circuit nature of
Lavie and not only undermines usage of airflow as a cooling fluid but, in
fact, teaches away from the cooling fluid being an airflow.” Appeal Br. 10.
This argument does not apprise us of error because Appellant does not
adequately explain how the disclosed benefit of the structural feature for
which Faulkner is cited—securing the injector in place and keeping
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compressor discharge air from escaping (see Final Act. 4 (citing Faulkner,
7:1–6))—would not be present in the modified device. As noted by the
Examiner, preventing discharge air from escaping does not necessarily
undermine the use of air as a cooling medium. See Ans. 5 (stating that
“although Faulkner teaches that the purpose of support 142 is to secure the
injector in place and keep compressor discharge air from escaping, this does
not teach away from the use of compressor discharge air as the cooling fluid
medium since Hebert shows a similar support (see the flange of the injector
at 15 and 120f of Figure 1 of Hebert) which would prevent the escape of
compressor discharge air to an outside of the engine casing C while at the
same time allowing the compressor discharge air to enter the fuel injector (at
124) for cooling purposes (see Paragraphs 0031–0032)”).
Fourth, Appellant argues that “neither the primary nor secondary
references disclose or suggest that the cooling fluid is an airflow.” Appeal
Br. 10. On the record here, however, Appellant has not shown error in the
finding that Hebert discloses the use of airflow as a cooling medium for a
fuel injector. See Final Act. 4 (discussing air inlet openings 124 shown in
Figure 1 of Hebert); Ans. 5 (“It is taught by Hebert that air (such as
compressor discharge air) may be used as the cooling medium for cooling a
fuel injector (see Figure 1 and Paragraph 0031 of Hebert).”); see also Hebert
¶¶ 31–32 (discussing how air from air inlet openings 124 improve cooling of
the heat shields). For these reasons, we sustain the rejection of claim 1.
B. Claim 2
For the additional limitations in claim 2, the Examiner relied on
Lavie, stating that it “further teaches (Figures 1–7) wherein the cooling fluid
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circuit (202, 204) at least partially surrounds (see Figure 2) the fuel conduit
(170).” Final Act. 4.
Referring to an annotated version of Figure 2 of Lavie provided by the
Examiner (see Final Act. 4), Appellant argues that “the Examiner is
apparently arbitrarily defining an exhaust plenum, an intake plenum, and a
barrier in Lavie[,] which simply has no support in the specification.” Appeal
Br. 11. Appellant asserts that “Lavie, as consistent with the closed circuit
arrangement, simply does not fairly disclose or suggest an exhaust or intake
plenum as purported by the Examiner.” Id. at 13 (reproducing Lavie ¶ 27).
The version of Figure 2 of Lavie provided by the Examiner includes
annotations identifying an “exhaust plenum,” “intake plenum,” and a
“barrier.” See Final Act. 4. These terms, however, are not recited in claim
2; instead they are recited in claim 6. Regardless, the text of the rejection
clearly identifies elements 202 and 204 in Lavie as the “cooling fluid
circuit” in claim 2 and element 170 as the “fuel conduit.” Id. Appellant has
not addressed, or shown error, in these mappings by the Examiner.
Further, for the reasons noted, we see no error in the Examiner’s
reliance on the figures, rather than the text, of Lavie as to these features. See
Ans. 7 (discussing In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (stating
that figures in prior art may be relied on for aspects shown with “great
particularity”); In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“[A]
drawing in a utility patent can be cited against the claims of a utility patent
application even though the feature shown in the drawing was unintended or
unexplained in the specification of the reference patent.”)). For these
reasons, we sustain the rejection of claim 2.

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C. Claim 3
For the additional limitations in claim 3, the Examiner relied on
Lavie, stating that it “further teaches (Figures 1–7) wherein the cooling fluid
circuit (202, 204) defines a helix (see Figure 1) around the fuel conduit
(170).” Final Act. 5.
Appellant reproduces paragraph 26 of Lavie and states that “Examiner
may be referring to helical channels 184[,] which form the primary swirler
148 but simply have nothing whatsoever to do with the cooling circuit as
discussed above.” Appeal Br. 14.
With this argument, Appellant does not address the rejection as
articulated. Here, the Examiner did not rely on element 184 as the recited
“helix”; rather, the Examiner cited Figure 1 (which does not even depict
element 184). See Ans. 9 (“It is unclear how Appellant could conclude from
the Examiner's statement that the helix is referring to element 184, since
element 184 is not shown in Figure 1 of Lavie.”). The record supports the
Examiner’s position that “the claimed helix feature is clearly shown in
Figure 1, where the helix extends around the fuel conduit (see the helical
shape of the circuit surrounding the fuel conduit from 144 shown in Figure
1).” Id. Moreover, for the same reasons discussed above (as to claim 2), we
see no error in relying on the figures, rather than the text, of Lavie. For
these reasons, we sustain the rejection of claim 3.
Rejection 2 – Claims 6, 9, 12–15, 19, and 20
A. Claim 6
For independent claim 6, the Examiner relied on Lavie for certain
limitations but stated that “Lavie does not teach that the cooling fluid is an
airflow” and “does not teach an inlet scoop to direct a portion of airflow into
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the inlet passage of the heat exchanger.” Final Act. 5. The Examiner found,
however, that “Hicks teaches (Figures 1–3) the use of bypass airflow to cool
a fuel injector assembly (see figure 3).” Id. According to the Examiner, it
would have been obvious for one of ordinary skill in the art at the time of the
invention “to modify Lavie to include the use of air as the cooling medium
as taught by Hicks in order to transfer thermal energy from the fuel injector
assembly to the nacelle air (Column 5, lines 15–25).” Id. at 5–6.
The Examiner also found that “Lo teaches (Figures 1–6) an inlet
scoop (214) to direct a portion of bypass airflow into the inlet passage of the
heat exchanger (see Figure 2).” Final Act. 6. According to the Examiner, it
would have been obvious for one of ordinary skill in the art at the time of the
invention “to modify Lavie [in view of] Hicks to include the source of the
cooling air as taught by Lo in order to selectively supply a fan air flow to a
heat exchanger (Paragraph 0024).” Id.
First, Appellant relies on the arguments provided as to Rejection 1.
See Appeal Br. 14. To the extent the arguments as to Rejection 1 can be
applied to Rejection 2, we are not apprised of error for the same reasons
discussed above.
Second, Appellant argues that “the numerous additional references
being utilized by the Examiner further supports Appellant’s contention that
the Examiner is utilizing improper hindsight reasoning in an attempt to
recreate Appellant’s device.” Appeal Br. 14–15. As noted by the Examiner,
“a large number of references in a rejection does not[,] without more, weigh
against the obviousness of the claimed invention.” Ans. 9 (citing In re
Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)).
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Third, Appellant contends that “there is simply no proper motivation
to combine Lo with the primary and secondary references other than that
disclosed by Appellant.” Appeal Br. 16. In support, Appellant highlights
that the relied-upon airflow in Lo “is directed to a heat exchanger[,] which is
completely separate from the combustor” such that “Lo has simply no
relationship whatsoever with regard to the fuel system.” Id. at 15–16.
Although Appellant is correct that Lo, alone, does not disclose the use
of airflow to cool “fuel injectors” as generally required by claim 6, the
Examiner relied on the combination of Lavie, Hicks, and Lo to address this
requirement. See Merck, 800 F.2d at 1097. As noted by the Examiner, with
this argument “Appellant appear[s] to be neglecting the teachings of Hicks”
relied on (Ans. 9)—i.e., disclosing “the use of a bypass airflow to cool a fuel
injector assembly (see figure 3)” (Final Act. 5). The record supports the
Examiner’s position that the combination of Lavie, Hicks, and Lo would
provide a “bypass airflow [that] can be used to cool the fuel.” Ans. 9.
Moreover, although Appellant contends that the Examiner has failed
to provide sufficient articulated reasoning with regard to Lo (Appeal Br. 16),
Appellant does not substantively address the reasoning provided by the
Examiner as to the proposed modification (Final Act. 5–6; Ans. 9). We
determine that the Examiner’s reasoning supports a prima facie case of
obviousness for claim 6. See Oetiker, 977 F.2d at 1445. By not addressing
the reasoning provided, Appellant has not shown error in the relevant
findings or the conclusion as to obviousness, which we determine to be
supported by rational underpinnings. See id. For these reasons, we sustain
the rejection of claim 6.
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B. Claims 95 and 12–15
Claim 9 recites that the “cooling fluid manifold is a circular internal
split manifold.” Appeal Br. 25 (Claims App.). For this additional
limitation, the Examiner relied on Lavie, stating that it “teaches (Figures 1–
7) wherein the cooling fluid manifold (see Figures 1–2) is a circular internal
split manifold (202 and 204 are annular ducts separated by tubular element
200 and the barrier annotated above).” Final Act. 6 (referring to the
annotated version of Figure 2 of Lavie on Final Act. 4).
Appellant argues that, with this finding, “[t]he Examiner appears to be
referencing the fuel injector itself”—i.e., a “single fuel injector.” Appeal Br.
16, 17. According to Appellant, “under no reasonable interpretation could
passages in [a] single fuel injector be considered a manifold as recited”
because “Appellant specifically recites that the cooling fluid manifold is in
communication with each of the multiple of fuel injectors, thus obviating
and refuting the Examiner’s proposed interpretation.” Id. at 17.
The Examiner provides a definition of “manifold” from
dictionary.com—“a chamber or pipe with a number of inlets or outlets used
to collect or distribute a fluid”—and takes the position that elements 202 and
204 within each injector in Lavie meets the claim language at issue because
those structures are “used to collect or distribute a fluid (collecting a fluid

5 Claim 9 currently depends from canceled claim 8. Prior to being
canceled, however, claim 8 depended from independent claim 6. See
Claims, at 17 (filed Feb. 15, 2016). For purposes of this Appeal and to
promote efficient prosecution, we treat claim 9 as depending from claim 6.
Upon return of this application to the Examining Corps, the Examiner and
Appellant should address the improper dependency of claim 9.
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from feed source 10 and distributing it through an outer surface of the fuel
injector, as shown in Figures 1–2).” Ans. 9–10.
The record does not support the Examiner’s position. The structures
identified as the “manifold” in claim 9 (elements 202 and 204) are features
within each individual fuel injector in Lavie. See Lavie ¶ 14 (describing
Figure 2 as “a detailed view on a very large scale of a terminal portion of a
main injector” (emphasis added)), ¶ 27 (discussing “first annular duct 202”
and “second annular duct 204” in tube 200). In contrast, as noted by
Appellant, claim 6, from which claim 9 depends, recites not only “a multiple
of fuel injectors in communication with said combustor” but also that the
required “cooling fluid manifold [is] in communication with each of said
multiple of fuel injectors.” Appeal Br. 24 (Claims App.) (emphasis added).
Even assuming that elements 202 and 204 in each injector did satisfy the
proposed construction for “manifold,” the Examiner has not adequately
explained how those structures—present in each fuel injector—are also “in
communication with” all of the other fuel injectors, as required by claim 6,
and thereby claim 9. For these reasons, we do not sustain the rejection of
claim 9, or the rejection of claims 12–156, which depend from claim 9.
D. Claim 19
For independent claim 19, the Examiner relied on Lavie for certain
limitations, but stated that “Lavie does not teach that the cooling fluid is an

6 Claim 13 currently depends from canceled claim 11. Prior to being
canceled, however, claim 11 depended from claim 9. See Claims, at 17
(filed Feb. 15, 2016). For purposes of this Appeal and to promote efficient
prosecution, we treat claim 13 as depending from claim 9. Upon return of
this application to the Examining Corps, the Examiner and Appellant should
address the improper dependency of claim 13.
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airflow that is discharged overboard after performing heat exchange with the
fuel injector.” Final Act. 8. The Examiner found, however, that “Hicks
teaches (Figures 1–3) the use of bypass airflow to cool a fuel injector
assembly (see figure 3).” Id. According to the Examiner, it would have
been obvious for one of ordinary skill in the art at the time of the invention
“to modify Lavie to include the use of air as the cooling medium as taught
by Hicks in order to transfer thermal energy from the fuel injector assembly
to the nacelle air (Column 5, lines 15–25).” Id.
The Examiner also found that “Lo teaches (Figures 1–6) an inlet
scoop (214) to direct a portion of bypass airflow into the inlet passage of the
heat exchanger (see Figure 2) and discharging the airflow overboard (via
122, see Figure 2) downstream of the heat exchanger (see Figure 2).” Final
Act. 8. According to the Examiner, it would have been obvious for one of
ordinary skill in the art at the time of the invention “to modify Lavie [in
view of] Hicks to include the source of the cooling air as taught by Lo in
order to selectively supply a fan air flow to a heat exchanger (Paragraph
0024).” Id.
Appellant argues that “none of the cited references disclose airflow to
and from a fuel injector, let alone from the strut.” Appeal Br. 18. According
to Appellant, Lo “does not correct this deficiency as Lo, as discussed above,
also does not provide a strut associated with a fuel injector, thus highlighting
the Examiner’s strained combination.” Id.
We are not apprised of error based on this argument for reasons
similar to those discussed in the context of Appellant’s third argument
addressing claim 6. Although Appellant is correct that Lo, alone, does not
disclose the airflow through “a strut of each of a multiple of fuel injectors”
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as required by claim 19, the Examiner relied on the combination of Lavie,
Hicks, and Lo to address this requirements. See Merck, 800 F.2d at 1097.
As discussed above, here, the Examiner relied on Lavie as to
“communicating a cooling fluid (via 202, 201) through a strut (160) of each
of a multiple of fuel injectors (14, 16)” and Hicks as to “the use of bypass
airflow to cool a fuel injector assembly (see figure 3).” Final Act. 8. The
record supports the Examiner’s position that the combination of Lavie,
Hicks, and Lo would satisfy the limitations at issue. For these reasons, we
sustain the rejection of claim 19.
E. Claim 20
For the additional limitation in claim 20, the Examiner relied on Lo,
stating that it “teaches (Figures 1–6) communicating bypass air (via 214; see
Paragraph 0024) as the cooling fluid (see Figure 2).” Final Act. 8.
Appellant argues that claim 20 “specifically recites bypass air as the
airflow[,] which is necessarily the airflow within a fan nacelle downstream
of a fan.” Appeal Br. 18. According to Appellant, “Lo simply does not
provide the architecture to correct the Examiner’s admitted deficiency of the
primary and secondary references.” Id. at 19.
This argument does not apprise us of error. In the paragraph cited by
the Examiner, Lo describes the relied-upon bypass airflow as coming from
“fan air bypass duct 122.” Lo ¶ 24; see also Lo, Fig. 2. Moreover, as shown
in cited Figures 1 and 2 of Lo, the identified bypass airflow is downstream
of fan 118 and within outer fan duct 124. See Lo ¶ 20 (describing these
features). Appellant has not adequately explained why the identified airflow
is not a “bypass airflow” as recited, even under Appellant’s own proposed
construction. For these reasons, we sustain the rejection of claim 20.
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Rejection 3 – Claim 7
For the additional limitations in claim 7, the Examiner relied on
Faulkner, stating that it “teaches (Figures 1–7) a support (142) operable to
mount the struts (162) of the multiple fuel injectors (114) to a diffuser case
module (34).” Final Act. 9. According to the Examiner, it would have been
obvious for one of ordinary skill in the art at the time of the invention “to
modify “Lavie [in view of] Hicks and Lo to include[] Faulkner’s supports
[to] attach the injectors to a diffuser case module in order to keep
compressor discharge air from escaping through the joint between the
combustor case and the mounting flange (Column 7, lines 1–6).” Id.
Appellant argues that “Faulkner, although directed to a gas turbine
engine, is not directed to an aerospace engine, but an industrial gas turbine.”
Appeal Br. 19. According to Appellant, “[a]side from this architectural
distinction, Faulkner simply does not disclose or suggest a diffuser case
module as typical of an aerospace engine and yet adds still another
architecture which in this case is utilized for introducing a liquid coolant into
a combustor of the engine.” Id. at 19–20. Appellant argues that “there is
simply no proper motivation to combine Faulkner other than the teachings of
Appellant’s invention.” Id. at 20.
We are not apprised of error based on this argument. Even assuming
that the preamble of claim 7 is limiting, that preamble recites a “gas turbine
engine,” which Appellant acknowledges Faulkner discloses. Appeal Br. 19.
Further, to the extent that Appellant is asserting that the identified features of
Faulkner would not or could not be used to modify Lavie in view of Hicks
and Lo, Appellant has not adequately explained why the alleged differences
undermine the factual findings or reasoning relied on to support the
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conclusion of obviousness, when considering the modified device as
proposed by the Examiner. See Final Act. 9; see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007) (“[F]amiliar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.”); see also Ans. 11 (“Appellant has not provided any evidence
that Faulkner would not be capable of being incorporated in the system of
Lavie aside from the engine of Lavie being directed for aerospace
applications and the engine of Faulkner being directed to industrial
applications.”). For these reasons, we sustain the rejection of claim 7.
Rejection 4 – Claim 16
Claim 16 depends from claim 9. Appeal Br. 26 (Claims App.). The
Examiner’s added reliance on Urban does not remedy the deficiencies in the
rejection based on Lavie, Hicks, and Lo, discussed above, regarding claim 9
(see supra Rejection 2, § B). Thus, for the same reasons discussed above,
we do not sustain the rejection of claim 16.
Rejection 5 – Claim 18
For the additional limitations of claim 18, the Examiner relied on
Porte, stating that it “teaches (Figure 4) an exhaust (at 26) from an exhaust
passage (25) located through a core nacelle (at 10) axially downstream of a
throat region (see Figure 4) between the core nacelle (at 10) and a fan
nacelle (at 4).” Final Act. 10. According to the Examiner, it would have
been obvious for one of ordinary skill in the art at the time of the invention
to modify Lavie, Hicks, and Lo “to include the source of the cooling air as
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taught by Porte in order to use the cold bypass stream to cool a fluid of the
core engine (Column 4, lines 49–60).” Id.
Appellant argues that “none of the cited references, either alone or in
combination, suggest th[e] specific location” recited. Appeal Br. 21.
According to Appellant, Porte instead discloses “that the exhaust 24 is from
a heat exchanger 18 and exhaust downstream of the fan nacelle 2. Thus, the
exhaust is simply not downstream of a throat region between said core
nacelle and a fan nacelle as recited . . . .” Id. (emphasis added).
We are not apprised of error based on this argument. Appellant
implicitly asserts that claim 18 does not encompass an “an exhaust from an
exhaust passage” located further downstream of the downstream end of the
fan nacelle. Under this proposed construction, Porte would not disclose the
additional limitations in claim 18 because the identified “exhaust” (at
element 26) emits downstream of the downstream end of the identified “fan
nacelle” (element 1).7
Under this view, Appellant implicitly proposes that “between said
core nacelle and a fan nacelle” in claim 18 describes the location of the
“exhaust from said exhaust passage.” We disagree with that view. Instead,
we understand that phrase to define the “throat region” that immediately
precedes it—i.e., as a “throat region between said core nacelle and a fan
nacelle.” This aligns with the description of throat region 206 in Figure 7
and with the Examiner’s definition of “throat region” in the Answer. See
Spec. ¶ 59; Ans. 12 (stating that “the throat region is an area where the

7 In the Answer, the Examiner identifies elements 1 and 4 as the “fan
nacelle. Porte identifies element 1 as a “hollow nacelle.” Porte, 3:10–16.
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cross-sectional distance between the fan nacelle and the core nacelle is at a
minimum”). Appellant did not address the Examiner’s definition in the
Reply Brief.
With this understanding of the phrase “between said core nacelle and
a fan nacelle,” claim 18 provides two requirements for the location of the
“exhaust from said exhaust passage”: (1) that it be located “through a core
nacelle” and (2) that it be located “axially downstream of a throat region
between said core nacelle and a fan nacelle.” Appellant does not challenge
the Examiner’s findings as to those two requirements (Final Act. 10; Ans.
12), which we determine to be supported by the record.
Although the additional feature argued by Appellant is shown in
Figures 5–7, it is not required by claim 18. See Anchor Wall Sys., Inc. v.
Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306–07 (Fed. Cir. 2003)
(stating that “the mere fact that the patent drawings depict a particular
embodiment of the patent does not operate to limit the claims to that specific
configuration”). For these reasons, we sustain the rejection of claim 18.

CONCLUSION
We affirm in part the Examiner’s rejection of claims 1–3, 6, 7, 9, 12–
16, and 18–20. Specifically, we (1) affirm the decision to reject claims 1–3,
6, 7, and 18–20 under 35 U.S.C. § 103(a) and (2) reverse the decision to
reject claims 9 and 12–16 under 35 U.S.C. § 103(a).

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1–3 103 Lavie, Faulkner,
Hebert
1–3
6, 9, 12–15,
19, 20
103 Lavie, Hicks, Lo 6, 19, 20 9, 12–15
7 103 Lavie, Hicks, Lo,
Faulkner
7
16 103 Lavie, Hicks, Lo,
Urban
16
18 103 Lavie, Hicks, Lo,
Porte
18
Overall Outcome 1–3, 6, 7,
18–20
9, 12–16

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-IN-PART