United Technologies Corporation

Patent Trials and Appeals Board

Jul 30, 2021

2020006055 (P.T.A.B. Jul. 30, 2021)

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.
14/857,886 09/18/2015 Thomas J. Robertson JR. 77927US02;
67097-3031PUS1
2240
54549 7590 07/30/2021
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
BURKE, THOMAS P
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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 J. ROBERTSON JR.,
NATHAN F. CHAMPION, and STEVEN J. FEIGLESON

Appeal 2020-006055
Application 14/857,886
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 9–15, 21, and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

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 Raytheon
Technologies Corporation. Appeal Br. 1.
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Application 14/857,886

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BACKGROUND
The Specification “relates generally to fixed-variable vane shrouds,
and specifically to a radially fastened fixed-variable vane inner shroud.”
Spec. ¶ 1. Embodiments disclosed include gas turbine engines with a
plurality of fixed and variable vanes, a plurality of inner diameter boxes, and
a plurality of inner diameter shoes. See, e.g., id. ¶ 6.
CLAIMED SUBJECT MATTER
Claim 9 is the only independent claim on appeal and recites:
9. A split case assembly for a gas turbine engine comprising:
an outer diameter case defining a partial case structure for
a gas turbine engine;
a plurality of fixed-variable vanes attached to an inner
diameter surface of said outer diameter case each of said fixed-
variable vanes protruding radially inward from said outer
diameter case;
each fixed-variable vane in said plurality of fixed-variable
vanes being interfaced with one of a plurality of inner diameter
boxes at a radially inward end of the fixed-variable vane, such
that said inner diameter boxes define an inner diameter of a flow
path and the outer diameter case defines an outer diameter of the
flow path; and
each fixed-variable vane in the plurality of fixed-variable
vanes is interfaced with said one of said inner diameter boxes in
said plurality of inner diameter boxes through at least one inner
diameter shoe in a plurality of inner diameter shoes, wherein said
plurality of inner diameter shoes are disposed radially between
the plurality of inner diameter boxes and the plurality of fixed-
variable vanes;
each of said inner diameter shoes comprises a plurality of
clearance holes and a plurality of button holes, each button hole
in the plurality of button holes comprising a depth that varies
along a direction of fluid flow through a primary flowpath of the
gas turbine engine, the depth being the radial height of the button
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Application 14/857,886

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hole relative to a radius of the gas turbine engine, and each
button hole in said plurality of button holes comprises an
upstream edge having a first depth and a downstream edge
having a second depth, the first depth being zero; and
wherein the first depth is a depth parallel to a wall defining
the button hole.
Appeal Br. 7 (emphasis added).
REJECTIONS2
1. The Examiner rejects claims 9–12, 15, 21, and 22 under 35 U.S.C. § 103
as unpatentable over Capozzi3 in view of Bruce4 and Giaimo.5
2. The Examiner rejects claim 13 under 35 U.S.C. § 103 as unpatentable
over Capozzi in view of Bruce, Giaimo, Jarrett,6 and Cormier.7
3. The Examiner rejects claim 14 under 35 U.S.C. § 103 as unpatentable
over Capozzi in view of Bruce, Giaimo, and Wichmann.8
DISCUSSION
With respect to claim 9, the Examiner finds that Capozzi teaches a
split case assembly for a gas turbine engine including an outer diameter case
and a plurality of vanes as claimed, except that “Capozzi does not teach the
first depth [of the claimed button holes] being zero or the details of the
connection of the fixed-variable vanes.” Final Act. 5–6 (citing Capozzi

2 The Examiner has withdrawn the rejections under 35 U.S.C. §§ 112(a) and
(b).
3 Capozzi et al., US 2014/0140822 A1, pub. May 22, 2014.
4 Bruce et al., US 2005/0031238 A1, pub. Feb. 10, 2005.
5 Giaimo et al., US 7,901,178 B2, iss. Mar. 8, 2011.
6 Jarrett, Jr. et al., US 2015/0098813 A1, pub. Apr. 9, 2015.
7 Cormier et al., US 2005/0232763 A1, pub. Oct. 20, 2005.
8 Wichmann et al., US 2009/0041580 A1, pub. Feb. 12, 2009.
Appeal 2020-006055
Application 14/857,886

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Figs. 1–9). Regarding the details of the connection of the fixed-variable
vanes, the Examiner relies on Bruce and Giaimo. Id. at 6–7. Regarding the
claim element requiring that the first depth of the button hole is zero (as
emphasized in the claim quoted above), the Examiner acknowledges that
Capozzi teaches a first depth that is not zero, but the Examiner finds that
reducing the depth to zero would be an obvious omission of an element and
its function from Capozzi. Id. at 7 (citing MPEP § 2144.04 II (A)).
Specifically, the Examiner determines:
Thus, it would have been obvious to one having ordinary
skill in the art before the effective filing date of the claimed
invention to modify Capozzi in view of Bruce and Giaimo such
that the upstream lip of the button hole is removed resulting in a
first depth of the button hole is zero because the omission of an
element and its function is obvious if the function of the element
is not desired (in this case, the vanes as taught by Capozzi in view
of Bruce and Giaimo are secured regardless of the depth at the
upstream edge of the button hole due to the positioning of the
inner trunnion 45 – see Figure 4 and Paragraph 0036 of Capozzi).
Id.
The omission of a feature disclosed by the prior art along with its
attendant function or advantage may be an indication that such omission
would be obvious to one of ordinary skill in the art. See, e.g., In re
Thompson, 545 F.2d 1290, 1294 (CCPA 1976) (obvious to eliminate wax
pretreatment and its function); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975)
(deletion of switch member and its function was an obvious expedient); In re
Marzocchi, 456 F.2d 790, 793 (CCPA 1972) (omission of paraffin and its
function would not be an unobvious expedient). However, the omission of
an element and retention of its function may be an indication of
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Application 14/857,886

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nonobviousness. See In re Edge, 359 F.2d 896 (CCPA 1966); see also
MPEP § 2144.04 II.B.
As discussed below, we are persuaded of error in the rejection. The
Examiner’s reasoning appears to indicate that the rejection relies on
removing an element while retaining its function, which is an indicium of
nonobviousness as discussed above. Also, the Examiner has not identified
any other function that is served by this element that would be omitted when
the element is omitted, which would be an indication of obviousness.
Further, the Examiner does not otherwise explain why modification of the
structure of Capozzi’s button hole in the manner proposed would have been
obvious. Thus, we agree with Appellant that the Examiner has not set forth
an adequate reason to support the obviousness rejection.
The Examiner proposes to eliminate the upstream edge of Capozzi’s
pivot 38 which retains the button 42 of vanes 40 in Capozzi’s turbine. See
Final Act. 7. In the rejection, the Examiner finds that this upstream edge
serves the function of securing the button in place. Id. However, the
Examiner acknowledges that even if this upstream edge is removed, i.e.
given a depth of zero, the function of the element is retained in the modified
device because “Capozzi’s vanes, after assembly, are prevented from radial
movement by an inner spindle 45 seated within a pivot 38.” Ans. 5. Thus, it
appears that the Examiner agrees that the function served by the upstream
edge is not actually removed when the upstream edge is omitted. As noted,
this is indicative of nonobviousnes and cuts against the Examiner’s reliance
on the rationale provided in the rejection because the Examiner has not
actually established that omitting the element also omits its function.
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The Examiner also states that “Capozzi’s non-zero depth at the
upstream edge is not stated as serving any particular function.” Ans. 6. The
Examiner then reasons that because “Capozzi’s depth of the upstream edge
provides no identifiable purpose, the removal of the button hole’s upstream
edge such that a first depth of the button hole is zero would have been
obvious to one having ordinary skill in the art before the effective filing date
of the claimed invention.” Id. The Examiner asserts that “the omission of
the upstream edge depth would have been inconsequential to the vane
assembly, thereby having no affect [on] the function of the remaining
elements.” Id. The problem with this reasoning is that the Examiner only
speculates that the upstream edge has no function or that its removal would
been inconsequential to the vane assembly. The Examiner does not
adequately explain how one of ordinary skill in the art would understand its
removal to be inconsequential, without reference to Appellant’s disclosure.
Thus, the Examiner’s has not adequately established, by this reasoning, how
omitting the element would affect the function it provides, based on the art
of record and without the benefit of hindsight.
Based on the foregoing, we are persuaded of error in the rejection of
independent claim 9. Regarding the rejections of the dependent claims, the
Examiner does not provide any further evidence or analysis with respect to
these claims and the art of record that would cure the deficiency in the
rejection of claim 9. Thus, we are also persuaded of error in the rejections of
dependent claims 10–15, 21, and 22. Accordingly, we do not sustain the
rejections of claims 9–15, 21, and 22.
CONCLUSION
We REVERSE the rejections of claims 9–15, 21, and 22.
Appeal 2020-006055
Application 14/857,886

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In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
9–12, 15, 21,
22
103 Capozzi, Bruce,
Giaimo
9–12, 15,
21, 22
13 103 Capozzi, Bruce,
Giaimo, Jarrett,
Cormier
13
14 103 Capozzi, Bruce,
Giaimo,
Wichmann
14
Overall
Outcome
9–15, 21,
22

REVERSED