Thomas B. Hyatt

Patent Trials and Appeals Board

Aug 10, 2020

2019002885 (P.T.A.B. Aug. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/760,783 07/14/2015 Thomas B. Hyatt 63707US02;
67097-2179PUS1
5332
54549 7590 08/10/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
PRAGER, JESSE M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
08/10/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS B. HYATT
____________

Appeal 2019-002885
Application 14/760,783
Technology Center 3700
____________

Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 5–7, and 12–15 under 35 U.S.C. § 112(b) as indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention, and claims 1, 5–7, and 9–16 as
unpatentable under 35 U.S.C. § 103 over Admitted Prior Art (“APA”),
Furseth (US 5,494,404, iss. Feb. 27, 1996), and Obrachta (US 7,575,702 B2,
iss. Aug. 18, 2009. 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(a). Appellant identifies United Technologies Corporation as
the applicant and real party in interest. Appeal Br. 1.
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THE INVENTION
Appellant’s invention relates to providing a smooth aerodynamic
surface in a gas turbine engine by filling gaps in the surface with a
thermoplastic material. Spec. ¶ 2. Claim 1, reproduced below, is illustrative
of the subject matter on appeal.
1. A gas turbine engine comprising:
a surface configured for being in a gas flow path, the
surface having at least one structural member defining a gap;
a thermoplastic deposited into said gap to smooth the
surface, whereby the surface is aerodynamically and
mechanically smoothly continuous over a gap area;
wherein the surface has at least two structural members
spaced in an area defining the gap;
wherein the gap is between a platform of a vane, and a
spaced housing; and
wherein said gap surrounds a head of a securement member.
OPINION
Indefiniteness
The Examiner expresses concern regarding the meaning and scope of
“gap” as it appears in claims 1, 5, 6, 12, 13, and 14. Final Act. 4–5. To
summarize, the Examiner notes that there is an ambiguity regarding whether
the claims require one or two different types of gaps. Id.
Claim 1
Appellant argues that Figure 3A shows a gap 100 in a recess around
bolt head 113. Appeal Br. 2. Appellant argues that Figure 4A shows a
gap 107 about bolt head 111. Id. at 3. Appellant argues that Figure 4B
shows materials 207 and 208 filling the gaps 107 and 108 shown in Figure
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4A. Id. Appellant further argues that the Application may extend to a gap
formed within a single structural member. Id. at 4.
In response, the Examiner reiterates that Appellant’s disclosure
identifies at least two different types of “gaps.” Ans. 3. The Examiner
points out that the Appeal Brief fails to explain and identify which of the
diverse types of gaps is meant by the term “gap” as recited in the claims. Id.
In reply, Appellant argues that a person of ordinary skill in the art
would understand that there are “two gaps” recited in the claim. Reply
Br. 1.
A claim is properly rejected as indefinite under 35 U.S.C. § 112
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard). The test for
definiteness under 35 U.S.C. § 112, is whether “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). “If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious – the claim becomes indefinite.” In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970).
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Section 112 places the burden of precise claim drafting on the
applicant. In re Morris, 127 F.3d 1048, 1056–57 (Fed. Cir. 1997). The
patent drafter is in the best position to resolve the ambiguity in the patent
claims, and it is highly desirable that patent examiners demand that
applicants do so in appropriate circumstances so that the patent can be
amended during prosecution rather than attempting to resolve the ambiguity
in litigation. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,
1255 (Fed. Cir. 2008). During patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed. In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989). Rigorous application of the statutory standard to particularly
point out and distinctly claim the subject matter regarded to be the invention
serve an important public notice function. Predicate Logic, Inc. v.
Distributive Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008).
Turning to the case at hand, the word “gap” appears six (6) times in
claim 1. Claims App. The first time it appears, it is preceded by the
indefinite article “a.” Id. The second, fourth, fifth, and sixth times that the
word “gap” appears, it is preceded by the definite articles “the” or “said.”
Id. The third time the word “gap” appears, it is used in the context of a
generic, unspecified area in which the gap is located. Id.
The Specification indicates that a gap of the invention may take place:
(1) in a bolt head recess (Spec. ¶ 39, Fig. 3A; and (2) where an inner
platform is spaced from a housing member (Spec. ¶ 40, Fig. 4A). The last
limitation in claim 1 recites: “said gap surrounds a head of a securement
member.” Claims App. The second to last limitation in the claim recites:
“the gap is between a platform of a vane, and a spaced housing.” Id. Both
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limitations appear to refer to the same recital of “a gap” in the first limitation
of the claim as antecedent basis. Id.
There is an ambiguity in the claim as to whether “said gap” in the last
limitation of the claims is the same gap as “the gap” in the next to last
limitation of the claim. Although Appellant argues that the claim refers to
two different gaps, Appellant does not explain how recital of a single
antecedent basis can relate to two different structural limitations (gaps).
Appellant provides no persuasive reasoning that points to error in the
Examiner’s construction and analysis.
We sustain the Examiner’s Section 112 indefiniteness rejection of
claim 1.
Claims 5–7 and 12–15
These claims present essentially the identical issue that we discussed
above in connection with the claim 1. Final Act. 3–6. The same result
should obtain here. Accordingly, we sustain the Examiner’s Section 112
indefiniteness rejection of claims 5–7 and 12–15.
Unpatentability of Claims 1, 5–7, 9–16
over APA, Furseth, and Obrachta
Appellant presents arguments with respect to claim 1 only. We will
treat claim 1 as representative with claims 5–7 and 9–16 standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that APA discloses gas turbine engines with gas
flow path surfaces that exhibit gaps. Final Act. 6. The Examiner refers to
paragraphs 3 through 6 of the Background of the Invention section of
Appellant’s Specification as acknowledging that it was known, in the prior
art, for bypass duct guide vanes to be bolted into an outer housing and
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spaced from other housings. Id. at 6–7. The Examiner refers to such
Background section as acknowledging that it was known that such gas flow
paths exhibit “gaps” and that it was known that such gaps can reduce the
efficiency of the engine. Id. The Examiner finds that APA shows that it was
known, in the prior art, to fill such gaps with vulcanizing material. Id.
The Examiner relies on Obrachta as teaching placing thermoplastic
material into a gap to smooth the surface to improve the aerodynamics of the
gas flow. Id. at 7. The Examiner relies on Furseth as teaching that it was
known to deposit thermoplastic material into a gap between the platform of a
guide vane and a housing structure. Id.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time the invention was made to modify the
gas turbine engine of the APA by filling gaps with thermoplastic material
and smoothing the surface to improve its aerodynamics. Id. According to
the Examiner, a person of ordinary skill in the art would have done this as a
matter of selecting a known, art recognized, suitable material for an intended
use.
Appellant argues that Furseth fails to identify a “gap” as surrounding
the head of a securement member. Appeal Br. 4. Instead, according to
Appellant, Furseth discloses a grommet that seals between structural
components. Id. Appellant argues that Obrachta “merely” replaces a prior
gap filling method. Id. Finally, Appellant argues that, since Furseth’s
grommets already have a desired shape, there is no motivation to turn to
Obrachta to modify such shape. Id.
In response, the Examiner points out that Appellant’s APA identifies a
“gap” as existing around the head of a securement member. Ans. 4. The
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Examiner reminds Appellant that the Background section of Appellant’s
Specification already admits that it was known to fill such gaps. Id. at 5.
The Examiner finds that Obrachta discloses a known process and known
material for filling such gaps. Id. The Examiner further reminds Appellant
that the selection of a known material and process for filling a gap based on
its suitability for its intended use is obvious. Id. (citing MPEP § 2144.07).
In reply, Appellant argues that the Examiner provides “no specific
reason” as to why Obrachta would provide an apparent benefit to the APA.
Reply Br. 2.
Having considered the arguments of Appellant and the findings and
reasoning of the Examiner, and having reviewed the art of record, we are not
apprised of Examiner error. APA acknowledges that it was known: (1) that
gaps exist; (2) that such gaps affect aerodynamic performance; and (3) that
such gaps can be filled. APA ¶¶ 3–6. The problems in the prior art that are
purportedly overcome by Appellant’s invention are: (1) filling gaps with
prior art vulcanizing materials takes a long time to set up and cure; and (2)
curing such vulcanizing materials releases volatile organic compounds into
the assembly location. Id. ¶ 6. The alleged solution to such problems is to
fill the gaps with thermoplastic materials. Id. ¶ 7.
Furseth discloses that stator vane gaps can be sealed with
thermoplastic grommets. Furseth, col. 3, ll. 22–44. Thus, it is known that
thermoplastic material can perform in the harsh environment inside of a jet
engine. Obrachta discloses that it is known in the aerospace industry to fill
gaps with thermoplastic material and smooth the surface thereof to improve
aerodynamic performance. Obrachta, col. 2, l. 57 – col. 4, l. 34. Appellant’s
“no specific reason” argument overlooks the Examiner’s explicit finding,
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which is not disputed by Appellant, that Obrachta’s material is suitable for
the intended use of filling the gaps identified in APA. The Examiner’s
finding rests on a well-established principle in obviousness jurisprudence.
[S]electing a known compound to meet known requirements is
no more ingenious than selecting the last piece to put into the
last opening in a jig-saw puzzle. It is not invention.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945).
In view of the foregoing discussion, we determine the Examiner's
findings of fact are supported by a preponderance of the evidence and that
the Examiner's legal conclusion of unpatentability is well-founded. We
sustain the Examiner's unpatentability rejection of claims 1, 5–7, and 9–16.

CONCLUSION
In summary:
Claims
Rejected
§ References/Basis Affirmed Reversed
1, 5-7, 12-15 112 Indefiniteness 1, 5-7, 12-15
1, 5-7, 9-16 103 APA, Furseth, Obrachta 1, 5-7, 9-16
Overall
Outcome
1, 5-7, 9-16

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