UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Aug 16, 2021

2021000234 (P.T.A.B. Aug. 16, 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.
15/344,157 11/04/2016 Thomas Bruce Avis 95388US01 (U421068US) 7271
135291 7590 08/16/2021
Cantor Colburn LLP - Pratt & Whitney
20 Church Street
22 Floor
Hartford, CT 06103
EXAMINER
SOSNOWSKI, DAVID E
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
08/16/2021 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS BRUCE AVIS, MICHAEL DREHER,
and ERIK R. GRANSTRAND
____________

Appeal 2021-000234
Application 15/344,157
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, 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 1–6, 8, and 9 as unpatentable under 35 U.S.C. § 103 over
Durocher (US 2013/0189071 A1, pub. July 25, 2013), Hull (US 3,312,448,
iss. Apr. 4, 1967) and Burkholder (US 6,438,938 B1, iss. Aug. 27, 2002).
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 lubrication for bearing dampers used
on gas turbine engines. Spec. ¶ 1. Claim 1, reproduced below, is illustrative
of the subject matter on appeal.
1. A lubricant supply system for a bearing damper in an engine
bearing compartment of a gas turbine engine, the engine
bearing compartment rotatably supporting an engine component
and including a drain system for purging excess lubricant,
comprising:
a first interface;
a second interface spaced from the first interface along a
first axis;
a drain conduit fluidly coupled to the first interface and
extending from the first interface to the second interface, the
drain conduit receiving fluid including excess lubricant and
lubricant purging air from the first interface;
a supply conduit located within the drain conduit extending
between the interfaces, the supply conduit providing lubricant
to the bearing damper; and
fluid in the drain conduit is capable of insulating fluid in the
supply conduit from heat transferred through the interfaces; and
an outlet conduit fluidly coupled to the drain conduit at the
second interface at a first axial location, the outlet conduit
extending along a second axis that is substantially
perpendicular to the first axis;
an inlet conduit fluidly coupled to the supply conduit at the
second interface at a second axial location, the inlet conduit
extending along another axis that is substantially parallel to the
second axis;
an axial end of the supply conduit at the second interface
between the first axial location and the second axial location;
an axial groove formed at the axial end of the supply
conduit between the first axial location and the second axial
location; and a piloted O-ring disposed within the axial groove
to fluidly separate the supply conduit and the drain conduit, the
axial groove having an axial span that is larger than an axial
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span of the piloted O-ring to provide relative axial slippage
between the supply conduit and the drain conduit to reduce
thermal stress;
wherein:
a joint at the second interface includes a first conduit
forming the inlet conduit, a second conduit forming the outlet
conduit, and a third conduit through which the axial end of the
supply conduit extends so that at least a portion of the drain
conduit is formed between the third conduit of the joint and the
supply conduit; and
when the supply conduit slips axially relative to the drain
conduit, the supply conduit slips relative to the joint, thereby
slipping relative to the outlet conduit and the inlet conduit.
OPINION
Appellant argues independent claims 1, 5, and 9 together and does not
argue for the separate patentability of any of the claims that depend
therefrom. Appeal Br. 5–11. We select claim 1 as representative.
See 37 C.F.R. § 41.37(c)(1)(iv). All claims stand or fall with claim 1.
The Examiner finds that Durocher discloses the invention
substantially as claimed except for (1) the direction of the inlet and outlet
conduits, (2) the seal being a piloted O-ring, and (3) the axial groove span
being larger than the span of the O-ring as claimed. Final Act. 3–4. The
Examiner relies on Hull as disclosing the axial groove and O-ring
limitations. Id. at 4. The Examiner relies on Burkholder as disclosing the
conduit directional limitation. Id. at 5–6. 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 combine the teachings of Durocher, Hull, and
Burkholder to achieve the claimed invention. Id. According to the
Examiner, a person of ordinary skill in the art would have done this: (1) to
allow for axial slippage between the supply a conduit and drain conduit
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thereby reducing thermal stress and (2) to supply and drain lubricant from a
bearing compartment. Id.
Appellant argues that each of Durocher, Hull, and Burkholder teaches
away from the Examiner’s proposed combination. Appeal Br. 5
(Durocher); 8 (Hull); and 8 (Burkholder). Appellant argues that the
references cannot be combined in the manner proposed by the Examiner and
further argues that the Examiner’s reasoning underlying the proposed
combination is “insufficient.” Id. at 7–9. Finally, Appellant challenges the
Examiner’s reliance on MPEP § 2141. Id. at 10–11.
More particularly, with respect to “teaching away,” Appellant argues
that Durocher teaches away from the claimed configuration “by providing
another seal solution.” Appeal Br. 7. Appellant concludes that such
alternative seal solution teaches away from placing a piloted O-ring in an
axial groove formed at the axial end of the supply conduit. Id.
In response, the Examiner states that mere disclosure of an alternative
solution, even a desirable alternative, does not necessarily negate modifying
the prior art to arrive at the claimed invention. Ans. 5. “Thus, just because
Durocher teaches an alternative configuration for sealing does not mean one
of ordinary skill would consider Durocher as teaching that other
configurations would not work.” Id.
As between Appellant and the Examiner, the Examiner states the
correct position on the law regarding “teaching away.” It is well settled that
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. In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Thus, the “mere disclosure of alternative
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designs does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed.
Cir. 2012). Rather, teaching away requires “clear discouragement.” In re
Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“Although Tuch states
that a ‘bioabsorbable polymer is probably more desirable,’ this statement,
absent clear discouragement from use, does not compel a finding that Tuch
teaches away from using VDF:HFP as a stent coating.” (internal citation
omitted)).
Appellant’s “teaching away” argument with respect to Hull similarly
misses the mark. Appeal Br. 8. Appellant’s argument, which is comprised
of two short paragraphs, merely points out that there are differences between
the prior art and the claimed invention. Id. However, the obviousness
statute expressly contemplates that there may be differences between the
prior art the claimed invention and, yet, an invention may be unpatentable.
See 35 U.S.C. § 103. The specific differences that Appellant identifies in
Hull relate to the “O-ring” limitation. Appeal Br. 8. Appellant argues that
Hull’s O-rings are simply O-rings in grooves, but are not “piloted” O-rings.
Id. Appellant also argues that Hull’s grooves are not formed at an axial end
of a supply conduit as claimed. Id.
In response, the Examiner construes the adjective “piloted” in “piloted
O-rings” as simply providing a guide. Ans. 5. According to the Examiner,
Hull’s O-ring is a “piloted” O-ring because it resides in a groove, which
guides such O-ring. Id.
The dispute between Appellant and the Examiner over the meaning of
“piloted O-ring” is a matter of claim construction. During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. Acad. of Sci. Tech
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Application 15/344,157
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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under such standard, claim
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Appellant does not direct us to any language in the Specification
that would tend to impose a limit on the scope of the term “piloted.” See
generally Appeal Br., Spec.
It is our opinion that the Examiner’s proposed construction comports
with the broadest reasonable construction and that the Examiner is correct in
finding that Hull features “piloted O-rings” within the meaning of claim 1.
With respect to Appellant’s argument that Hull’s grooves are not
formed at an axial end of a supply conduit as claimed, we note that the
Examiner relies on Durocher, not Hull, for disclosure of the location of the
seal in a bearing damper lubricant supply system. Final Act. 3. Thus, the
teachings of Durocher and Hull, taken together, satisfy the limitation of
piloted O-rings being disposed at the axial end of a supply conduit.
Moreover, the Examiner points out that Hull supplies the requisite
motivation as to why a person of ordinary skill in the art would use axial
grooves and piloted O-rings. Ans. 6 (citing Hull col. 3, ll. 16–69).
Hull is directed to an insulated seal arrangement that prevents leakage
of lubricant for bearings in a gas turbine engine. Hull, col. 1, ll. 11–20. Hull
discloses the use of O-rings 42 that are disposed in annular channels 41. Id.
col. 3, ll. 16–20. Hull teaches that its O-ring seals are shielded both
externally and internally by relatively low temperature lubricant that cools
connector 44 and seals 42 and, in addition, insulates seals 42 from high
temperature fluid. Id. col. 3, ll. 54–60. As a result, seals 42 have a relatively
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long operating life. Id. col. 3, ll. 60–62. In view of the foregoing, the
Examiner’s finding that Hull provides the requisite motivation for a person
of ordinary skill in the art to combine the teachings of Durocher and Hull in
the proposed manner is supported by a preponderance of the evidence.
Turning to the Burkholder reference, Appellant, as with Durocher and
Hull, demonstrates a fundamental misunderstanding of what the “teaching
away” doctrine is and how it works. Appeal Br. 8. Contrary to Appellant’s
misapprehension of the law, “teaching an alternative” is not “teaching
away.” Fulton, 391 F.3d at 1201. Appellant acknowledges that the
Examiner only relies on Burkholder with respect to the directionality of inlet
conduit. Id. 8–9 (“Burkholder is only cited for teaching conduits extending
in different directions”). Nevertheless, Appellant focuses on Burkholder’s
connector 256 that connects air vent conduit 260 to air vent line 255. Id.
Appellant argues that the slipping features recited in claim 1 cannot be
accomplished with a connector such as element 256 of Burkholder. Id.
In response, the Examiner notes that Burkholder was cited as teaching
that conduits may extend along substantially parallel axes. Ans. 6. The
Examiner remarks that the fact Burkholder uses a different fastening
mechanism does not necessarily teach away from Burkholder’s teaching
being applicable or related to the teachings of Durocher. Id. As explained
by the Examiner:
[O]ne of ordinary skill in the art would recognize that
Burkholder provides a solution for inlet and outlet conduit
orientation in the same type of assembly as that taught by
Durocher, and recognize that the teachings of Burkholder
would prove reasonably useful and have a reasonable
expectation of success since Burkholder teaches that the
configuration works for its intended purpose of providing and
inlet and outlet conduit for fluids in a gas turbine engine.
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Id. 6–7.
Burkholder is directed to a vent system for the bearing compartment
of gas turbine engine. Burkholder, Abstract. Burkholder features oil feed
line 225 which acts as an inlet conduit. Burkholder, col. 6, ll. 12–14, Fig. 5
(“The lubricant is fed, as indicated by arrow “L,” to the lubricant feed
conduit 230 from oil feed line 225”). Burkholder also features air vent
line 255 which acts as an outlet conduit. Id. col. 5, l. 66 – col. 6, l. 19,
Fig. 5. As can be seen by viewing Figures 3 and 5, line 225 is substantially
parallel to line 255.
Having fully considered Appellant’s “teaching away” argument with
respect to Burkholder, we consider such argument to be decidedly
unpersuasive. First of all, it is well settled that teaching away requires “clear
discouragement” from implementing a technical feature. Ethicon, 844 F.3d
at 1351. Appellant does not direct us to any language in Burkholder that
would discourage implementation of substantially parallel inlet and outlet
conduits based on the type of joint or connector used at the axial end of a
supply conduit.
Appellant devotes a single paragraph bridging the bottom of page 9
and top of page 10 of the Appeal Brief to argue that the prior art cannot be
combined in the manner proposed by the Examiner. Appeal Br. 9–10. The
arguments presented in this paragraph are abbreviated and conclusory in
nature. Id. The arguments are substantially devoid of any substantive
analysis as to how or why achieving the claimed invention, in view of the
teachings of the prior art, requires more than ordinary skill. Id. When, as
here, a prima facie case of obviousness has been made by the Examiner, the
burden then shifts to Appellant to come forward with evidence and/or
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argument supporting patentability. In re Giannelli, 739 F.3d 1375, 1379
(Fed. Cir. 2014). An Appellant’s arguments should explain why the
Examiner erred. 37 C.F.R. § 41.37(c)(iv). In the instant case, Appellant
fails to apprise of Examiner error.
We have considered Appellant’s remaining arguments and find them
to be without merit. The Examiner’s findings of fact are supported by a
preponderance of the evidence and the Examiner’s legal conclusion of
unpatentability is well-founded. In view thereof, we sustain the Examiner’s
unpatentability rejection of claims 1–6, 8, and 9.
CONCLUSION
Claims
Rejected
35
U.S.C. §
References Affirmed Rev’d
1-6, 8, 9 103 Durocher, Hull, Burkholder 1-6, 8, 9

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