Murdock, James R.

Patent Trials and Appeals Board

Jan 8, 2020

14646158 - (D) (P.T.A.B. Jan. 8, 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.
14/646,158 05/20/2015 James R. Murdock 64079US02;
67097-2437PUS1
1092
54549 7590 01/08/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
FOUNTAIN, JASON A
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
01/08/2020 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 JAMES R. MURDOCK
____________

Appeal 2019-004231
Application 14/646,158
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 6–8, 12, and 16–20. 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. Our decision references Appellant’s Specification (“Spec.,”
filed May 20, 2015), Appeal Brief (“Appeal Br.,” filed Nov. 9, 2018) and
Reply Brief (“Reply Br.,” filed May 7, 2019), and the Examiner’s Answer
(“Ans.,” mailed Mar. 7, 2019) and Final Office Action (“Final Act.,” mailed
May 25, 2018). Appellant identifies United Technologies Corporation as the
real party in interest. Appeal Br. 1.
Appeal 2019-004231
Application 14/646,158

2

CLAIMED INVENTION
Appellant’s claimed invention relates to an underblade spacer with a
hook removal feature. Spec. ¶ 3.
Claims 1, 12, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A rotor for use in a gas turbine engine comprising:
a plurality of rotor slots, each of said rotor slots receiving
a blade, said blades having an airfoil extending radially
outwardly of a dovetail, with the dovetail received within the
rotor slot;
a spacer positioned radially between a radially inner wall
of said dovetail and a radially outer wall of said slot, with said
spacer being formed with a removal slot;
wherein said removal slot has an axially extending
portion extending from an outer surface of said spacer to a
circumferentially extending ear spaced inwardly from said outer
surface;
wherein said spacer extends axially for a first distance
between between axial end surfaces, said axially extending
portion extends axially for a second distance away from an
outer one of said axial end surfaces, and a ratio of said first
distance to said second distance being between 15 and 40; and
wherein said circumferentially extending ear extends
circumferentially for a third distance from said axially
extending portion and a ratio of said second distance to said
third distance being between .4 and .8.

Appeal 2019-004231
Application 14/646,158

3
REJECTIONS
Claims 1, 6, 8, 12, 16, 18, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ward (US 8,616,850 B2, iss. Dec. 31, 2013).2
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ward and Cooper (US 3,653,781, iss. Apr. 4, 1972).
Claims 2 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Ward and Belmonte (US 8,529,209 B2, iss. Sept. 10, 2013).

ANALYSIS
Appellant argues the patentability of independent claims 1, 12, and 20
together, and does not separately argue any dependent claims. Appeal
Br. 3–4. Accordingly, we will address only claim 1, with the remaining
claims standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(1)(iv).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds that
Ward describes a rotor satisfying each limitation of claim 1 except “a ratio
of said first distance to said second distance being between 15 and 40” and
“a ratio of said second distance to said third distance being between .4
and .8.” Final Act. 2–3. However, the Examiner determines that, without
new and unexpected results, the claimed ratios require no more than “mere
routine changes in size and proportions.” Id. at 3. Therefore, the Examiner
concludes that the two claimed ratios would have been obvious design
choices to one of ordinary skill in the art at the time of the invention. Id.

2 We treat the Examiner’s identification of claims 2, 17, and 20 in the
rejection heading as inadvertent. These claims are rejected separately at
pages 6–8 of the Final Office Action.
Appeal 2019-004231
Application 14/646,158

4
Appellant argues that “the case law on what is required to support a
‘design choice’ rejection does not differ markedly from that previously
submitted with regard to an optimization rejection.” Appeal Br. 3 (citing
Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)).
However, the case Appellant relies on for its understanding of design choice
does not, in fact, involve optimization or design choice. See Plantronics,
724 F.3d at 1354 (discussing common sense).
Design choice applies when alternative elements or configurations in
the prior art perform the same function as the claimed aspects with no
unexpected results. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)
(finding that the use of the claimed feature “would be an obvious matter of
design choice” when it “solves no stated problem” and “presents no novel or
unexpected result” over the disclosed alternatives). In the context of a
rejection based on design choice, the relevant issue is whether the alleged
differences between the claimed invention and the prior art “result in a
difference in function or give unexpected results.” See In re Rice, 341 F.2d
309, 314 (CCPA 1965). Here, there is no evidence of unexpected results or
any difference in function by use of the claimed ratios. As a result, we are
not persuaded of Examiner error in the rejection of claim 1 under 35 U.S.C.
§ 103(a).3
For the foregoing reasons, we sustain the rejection of claims 1. We
also sustain the rejections of the remaining claims, which fall with claim 1.

3 In sustaining the rejection of claim 1, we do not rely on the Examiner’s
findings on page 3, line 22, to page 4, line 19, of the Answer. Consequently,
we need not address the citation of In re Rijckaert, 9 F.3d 1531, 1533 (Fed.
Cir. 1993), in the Reply Brief.

Appeal 2019-004231
Application 14/646,158

5
In particular, we sustain the rejection of claims 6, 8, 12, and 16–19 under 35
U.S.C. § 103(a) as unpatentable over Ward; the rejection of claim 20 under
35 U.S.C. § 103(a) as unpatentable over Ward and Cooper; and the rejection
of claims 2 and 7 under 35 U.S.C. § 103(a) as unpatentable over Ward and
Belmonte.
DECISION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6, 8,
12,
16–19
103(a) Ward 1, 6, 8,
12, 16–19

20 103(a) Ward, Cooper 20
2, 7 103(a) Ward, Belmonte 2, 7
Overall
Outcome
1, 2, 6–8,
12, 16–20

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