United Technologies Corporation

Patent Trials and Appeals Board

Jul 31, 2020

2019006680 (P.T.A.B. Jul. 31, 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.
14/325,071 07/07/2014 Todd A. Davis 67097-1428PUS8;58123US08 1526
54549 7590 07/31/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
FORD, RENE D
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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 TODD A. DAVIS and BRIAN P. CIGAL

Appeal 2019-006680
Application 14/325,071
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
JAMES P. CALVE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13–22, which constitute all the claims
pending in this application. 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. Appellant identifies the real party in interest as “United
Technologies Corporation.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a gas turbine engine, and in
particular, to a case structure therefor.” Spec. ¶ 2. Method claims 13 and 18
are independent. Claim 13 is illustrative of the claims on appeal and is
reproduced below.
13. A method for servicing a gas turbine engine comprising:
disassembling a bearing compartment that includes a
bearing package and a gearbox arranged within the bearing
compartment, the bearing package arranged on an aft side of the
gearbox, wherein disassembling the bearing compartment
includes disassembling a front wall from a front center body
support;
providing access from a forward side of the gas turbine
engine to the gearbox contained within said bearing
compartment, wherein the gas turbine engine provides a core
flow path extending from the forward side aftward in a core
flow direction;
servicing a component located within said bearing
compartment; and
disassembling the bearing package from the front center
body support without removing the front center body support
from the engine.
EVIDENCE
Name Reference Date
Davis et al. (“Davis”) US 2012/0263578 A1 Oct. 18, 2012
REJECTIONS
Claims 13–22 are rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
Claims 13–22 are rejected under pre-AIA 35 U.S.C. § 102(b) as being
anticipated by Davis.
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ANALYSIS
The rejection of claims 13–22
as failing to comply with the written description requirement
Appellant’s Specification states that the present application “is a
divisional of United States Patent Application No. 13/087,579 filed April 15,
2011.”2 The Examiner acknowledges Appellant’s priority claim above to a
“divisional” designation, but determines “the instant application claims
contain new matter without support in the original disclosure of ‘579.” Non-
Final Act. 3. Appellant contends, “the drawings and accompanying text of
USSN 13/087,579 discloses the inherent function, theory and advantage of
the pending claims.” Appeal Br. 4. Appellant also submitted an Affidavit
(hereinafter “Affidavit”) by a named inventor regarding this matter, but the
Examiner found these challenges to the written description rejection “not
persuasive.” Non-Final Act. 3.
The determination of whether the parent ‘579 application provides
written description support is important to Appellant because Appellant
argues that “the pending claims [are] entitled to the priority date of April 15,
2011” (the date of the ‘579 filing).3 Appeal Br. 13. If this is the case, then
Davis (the reference relied on by the Examiner for the anticipation rejection)
“cannot be used as prior art against the pending claims, and the
[anticipation] rejection must be withdrawn.” Appeal Br. 13. We thus
investigate the content of the ‘579 application filed on April 15, 2011, and

2 Both parties often refer to this application as “‘579.” For consistency, we
do the same.
3 “[T]he pending claims do not introduce new matter such that filing of the
present application should be treated as a CIP application.” Appeal Br. 4.
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not the more recent Specification (with amendments) accompanying the
present application. We also address each independent claim separately.
Independent claim 13
Claims 13 recites “a bearing compartment that includes a bearing
package and a gearbox arranged within the bearing compartment.” See
Appeal Br. 15 (Claims App.). The Examiner finds that “‘579 only mentions
in para. 0020 that the bearing compartment surrounds the bearing package
66” and that Figure 2 of the ‘579 filing “does not define a bearing
compartment that includes a gearbox.” Non-Final Act. 11. Indeed,
paragraph 20 of the ‘579 filing addresses a “bearing compartment which
surrounds bearing package 66,” and is silent as to this compartment also
surrounding “geared architecture 48.” See ‘579 ¶ 12, Fig. 1. However, this
passage in the ‘579 filing does not preclude the compartment from
additionally surrounding “geared architecture 48” either. Claim 13
specifically recites a bearing compartment “that includes a bearing package
and a gearbox” and Appellant provides an annotation of Figure 2 of the ‘579
filing identifying a “Bearing Compartment,” consistent with this “includes”
language of claim 13. Appellant’s annotation is replicated below.
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The above (from the Affidavit) is Appellant’s annotation of Figure 2 of the
‘579 filing which identifies such items as “Bearing Compartment,”
“Gearbox,” and “Bearing Package.”
Appellant contends that the above “illustrates a common cavity within
which both the bearing package 66 and the gearbox (labeled 48 in Fig. 2) are
arranged.” Appeal Br. 6. The Examiner, on the other hand, states that
“[o]ne of ordinary skill could arbitrarily define a bearing compartment
within the figure . . . but ‘579 does not define the bounds of said bearing
compartment.” Non-Final Act. 12. More specifically, the Examiner states
that Appellant’s identification of the recited “bearing compartment” “relies
on structure which is not present in the Parent Fig. 2, e.g., the lower border
of the annotated cavity.” Ans. 8.
The Examiner does not explain how the “bounds of said bearing
compartment” (Non-Final Act. 12) are not disclosed above, or how the lack
of a “lower border of the annotated cavity” (Ans. 8) renders Appellant’s
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above identification meaningless. In other words, the Examiner does not
explain how Appellant’s annotation fails to disclose the boundaries of a
bearing compartment, or why the bearing compartment must have borders
on all sides (i.e., be fully enclosed). We are thus persuaded by Appellant
that the ‘579 filing demonstrates possession, by Appellant, of the recited
“bearing compartment that includes a bearing package and a gearbox
arranged within the bearing compartment.”
Claim 13 further recites “wherein disassembling the bearing
compartment included disassembling a front wall from a front center body
support.” Appeal Br. 15 (Claims App.). Addressing the disassembly of the
bearing compartment, the Examiner finds that “the ‘579 specification does
not mention disassembling a bearing compartment” and that “‘579 does not
provide basis for patent protection of a process of disassembling a
structurally undefined bearing compartment.” Non-Final Act. 11. As per
the Examiner, “Fig. 2 is not described anywhere within the specification of
‘579 as showing anything in [a] state of disassembly but is, rather, explained
as an enlarged view of a particular portion of the engine.” Non-Final Act.
11 (referencing ‘579 ¶ 8); see also Ans. 8 (“Appellant does not address the
fact that the bearing compartment is not depicted as disassembled or the fact
that a disassembling process is not discussed by the Parent.”). As such,
“there is a resultant lack of written description basis for . . . the
disassembling the bearing compartment step of the claimed process.” Non-
Final Act. 12.
Appellant contends, “[i]t is of no consequence that servicing is not
mentioned in the text of the ‘579 application, as it is evident to Mr. Davis
[the Affiant] as to how the disclosed engine would be assembled and
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disassembled for servicing, and it would also be evident to a person skilled
in the art.”4 Appeal Br. 4. Indeed, Figure 2 above depicts at least one
unlabeled bolted connection immediately above what Appellant identifies as
the “Gearbox,” which appears to secure the “Bearing Compartment”
enclosure together. However, the Examiner states that any disassembly of
the bearing compartment may not necessarily be required because, “[i]f a
component of a bearing compartment . . . is damaged[, then] the bearing
compartment as claimed could be replaced as a unit . . . as opposed to
servicing the [damaged internal] bearing.” Final Act. 12. In other words,
according to the Examiner, it is not readily clear from Figure 2 alone
whether the bearing compartment need be disassembled at all since it is
equally likely from this figure that the bearing compartment “could be
replaced as a unit.” Final Act. 12. Appellant does not challenge this
possibility, and, instead indicates acquiescence stating “[a] skilled worker
would not unnecessarily disassemble components of an engine during a
service procedure.” Appeal Br. 9; Affidavit ¶ 4.
Claim 13 further recites that disassembling the bearing compartment
“includes disassembling a front wall from a front center body support.”
Appeal Br. 15 (Claims App.). The Examiner states that “[t]he ‘579
specification does not mention . . . disassembling a front wall from a front
center body support” and that “‘579 does not provide [a] basis for patent
protection of a process of . . . disassembling an unmentioned front wall from

4 The Affidavit states, “[t]he various connections illustrated in Fig, 2 [above]
depict the function of the disassembly sequence to a worker of ordinary
skill.” Affidavit ¶ 4. The Affidavit identifies “[f]orward facing fasteners”
and “splined connections” as support. Affidavit ¶ 4.
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the front center body support.” Non-Final Act. 11; see also Ans. 9. Indeed,
the ‘579 filing is silent as to any “front wall,” or what this component is.
Appellant, on the other hand, provides guidance as to what the “front
wall” is by annotating Figure 1 of the ‘579 filing. This annotation is
replicated below.

The above (from the Affidavit) is Appellant’s annotation of Figure 1 of the
‘579 filing which identifies the “Front Wall.”
The Affidavit contrasts both replications above stating “[t]he front
wall is shown in the 2nd Annotated Figure (Fig. l, [above]), but is no longer
attached to the front center body support 62 in Fig. 2 (see 1st Annotated
Figure above).” Affidavit ¶ 3. Thus, according to Appellant, “the front wall
must be disassembled from the front center body support 62.” Affidavit ¶ 3;
see also Appeal Br. 8. As paraphrased by the Examiner, Appellant asserts
“that an open area corresponds to a missing front wall and that the missing
front wall provides support to the ‘disassembling a front wall from a front
center body support’ process step.” Non-Final Act. 11.
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As noted by the Examiner above, “Fig. 2 is not described anywhere
within the specification of ‘579 as showing anything in [a] state of
disassembly but is, rather, explained as an enlarged view of a particular
portion of the engine.” Non-Final Act. 11 (referencing ‘579 ¶ 8); see also
Ans. 8–10 (“Fig. 2 is not described anywhere within the specification of the
Parent as showing anything in [a] state of disassembly”).
The Examiner further states that “[a] wall has not necessarily been
removed, i.e. disassembled from the front center body support, but could just
not be shown in the enlarged view.”5 Non-Final Act. 11; see also Ans. 10
(“could just have been selectively omitted to focus on specific structure”).
The Examiner also states that “it is unclear what the missing wall has to do
with disassembling the annotated bearing compartment.” Non-Final Act. 11.
Hence, as per the Examiner, “there is a resultant lack of written description
basis for the ‘disassembling a front wall from a front center body support’
step.” Non-Final Act. 12.
Appellant disagrees stating, “[t]his is not how a person of ordinary
skill would interpret the drawings.” Appeal Br. 7. “In one figure the front
wall is shown, and in the subsequent figure the front wall is gone. A person
of skill would understand this is achieved by disassembly for reasons evident
from the figures.” Appeal Br. 7. Appellant continues identifying a
“forward-facing boss” stating, “[b]osses are designed to receive fasteners-a
conventional arrangement for attaching and removing components.” Appeal

5 “The fact that no wall is attached at reference character 60 in Fig. 2 does
not mean that it has been removed but selectively omitted from the figure.”
Non-Final Act. 5–6. This would occur “in order to focus on what the
inventor had originally envisaged as the invention.” Non-Final Act. 6.
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Br. 7. The Examiner does not dispute that bosses are conventional, or that
they can be used for “attaching and removing components” as asserted, or
that one might be disclosed in the figures. Instead, the Examiner states, “the
drawings are not conclusive as to proving the process is necessarily
performed.” Non-Final Act. 5. In other words, “[n]owhere within the
original disclosure is the figure described as showing a state of
disassembly.” Non-Final Act. 5; see also id. at 11.
The Examiner also addresses Appellant’s understanding that “the
front wall must be disassembled from the front center body support 62”
because it is absent in another view. Affidavit ¶ 3; see also Appeal Br. 8.
The Examiner notes that if this is the case, then in Figure 2 above, “center
body support 72 has been removed from the gas turbine engine 20 . . .
because the structure aft of assembly 24 is not shown in the figure.” Non-
Final Act. 7; see also Ans. 11. Thus, Appellant’s understanding of the
meaning of missing structure in a drawing (i.e., such structure “must be
disassembled”) runs afoul of Appellant’s own claim language of
disassembling a bearing package “without removing the front center body
support from the engine” (which has, instead, been understood to have been
removed or disassembled because it is not shown).6 In other words, as per
the Examiner, “there is no explicit, implicit, or inherent support for the

6 Appellant further argues that “Figure 2 shows and labels the center body
support 72 [and that this] center body support 72 is still within the engine.”
Reply Br. 2. Indeed, item 72 is depicted in Figure 2, but Appellant does not
address the fact that the entire engine assembly aft thereof is not shown, and
thus, by Appellant’s logic, this entire engine assembly has been removed,
contrary to the claim recitation “without removing the front center body
support from the engine.”
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disassembly without removing the front center body support from the
engine.” Non-Final Act. 12.
The Examiner further provides an alternate method by which to
remove a bearing package “without removing the front center body support
from the engine” as recited. Non-Final Act. 13. The alternate method
employs the simultaneous removal of the bearing compartment with the
front center body support. See Non-Final Act. 13; Ans. 11. The Examiner
references “US 2009/0081039” as teaching this alternate methodology
noting that this document “has a remarkably similar construction to the
engine of the instant invention.” Non-Final Act. 13; Ans. 11. Hence,
disassembly could be via the method disclosed in this reference, and need
not necessarily be disassembled as expressed in the Affidavit. See Non-
Final Act. 13; Ans. 11 (both stating “the affidavit presents a sequence which
need not be followed”). In other words, as per the Examiner, the sequence
presented by Appellant “is only one of a number of options . . . [i]t is
improper to conclude that this is the only way to remove a bearing package.”
Ans. 11.
Regarding this ‘039 reference, Appellant seeks to differentiate it from
the ‘579 filing by stating that the corresponding center body support 100 in
the ‘039 reference “is shown attached to the gear train 22” whereas Figure 2
in the ‘579 filing “shows the front center body support removed from the
gearbox.” Reply Br. 2. This asserted distinction is not persuasive because it
focuses on the attachment/dis-attachment of the gearbox from the center
body support, whereas the Examiner relies on the ‘039 reference as an
indication of an alternate methodology of removing a bearing package
“without removing the front center body support from the engine” as recited.
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Non-Final Act. 13. In other words, the Examiner focuses on the removal of
the front center body support “from the engine,” and not whether a gearbox
is or is not attached to the center body support.
The Examiner addresses yet another example of a lack of written
description support, this time focusing on the claim language “disassembling
the bearing package from the front center body support” because “the
original disclosure does not define, or mention, a bearing package or
disassembling a bearing package.” Non-Final Act. 12. Indeed, the drawings
of the ‘579 filing are indicated as being “schematic” drawings (see ‘579 ¶ 7),
and it is not made clear how such drawings of an assembled engine would
inherently teach the specific method of disassembly now recited.7 See
Appeal Br. 6–9; Affidavit ¶¶ 3, 4.
We are instructed that when a written description cannot be found in
the specification, the only thing the PTO can reasonably be expected to do is
to point out its non-existence. Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed.
Cir. 2007). That is the situation here, the Examiner has identified several
instances where support for the claim language was not able to be found in
the ‘579 filing. Appellant’s attempt to extract certain disassembly processes
from these schematic drawings, and from text which is mostly silent in the
matter, in order to show inventor possession thereof, is problematic for the

7 At one point, Appellant addresses Figure 2 stating that due to the
arrangement disclosed, “adequate radial clearances for disassembly” is
provided. Appeal Br. 9. However, “patent drawings do not define the
precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000). There is no indication that these figures are drawn to scale.
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reasons addressed above. In other words, and based on the record presented,
we agree with the Examiner that “[t]he Parent does not reasonably convey
possession of an unmentioned disassembling process performed on an
unmentioned bearing compartment which includes a gearbox.” Ans. 8.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 13 due to a lack of written description support. We sustain the
Examiner’s rejection of claim 13, and its dependent claims 14–17.
Independent claim 18
Claim 18 includes similar limitations to those recited in claim 13, but
also includes additional limitations which the Examiner separately addresses
as also lacking written description support. See Non-Final Act. 14–15. For
example, claim 18 recites “servicing a component located within said
bearing compartment.” Appeal Br. 16 (Claims App.). Similar to the above
discussion of similar claim language, “‘579 does not mention servicing any
component within a bearing compartment or even providing access to a
component within a bearing compartment.” Non-Final Act. 14. As
previously stated by the Examiner, such servicing of the bearing
compartment could be accomplished by replacing the compartment “as a
unit.” Final Act. 12; see also Ans. 12 (replaced “as an assembly”). This is
likely to occur, according to Appellant, because “[a] skilled worker would
not unnecessarily disassemble components of an engine during a service
procedure.” Appeal Br. 9; Affidavit ¶ 4. Hence, Appellant is not persuasive
of Examiner error on this point.
Additionally, claim 18 recites, “wherein the access providing step
includes removing as a module the gearbox by displacing the gearbox
forward and away from said bearing compartment and said low spool
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thereby exposing the component.” Appeal Br. 16 (Claims App.). The
Examiner finds that the ‘579 filing “does not mention any displacement of a
gearbox or relative displacement with respect to a bearing compartment or
low spool.” Non-Final Act. 15; see also Ans. 12. Appellant contends, “the
gearbox 48 is removed from the front of the engine away from the bearing
package 66 and the low spool.” Appeal Br. 12. The Examiner responds,
“[t]he figures do not show a gearbox 48 removed from the low spool 30”
(Ans. 13), and the text of the ‘579 filing is silent on this point as well. Even
should Appellant be able to express support for Appellant’s contention, such
assertion is still based on conjecture in view of the schematic nature of the
drawings relied upon, as well as the silence of the ‘579 Specification on this
point. See, e.g., Ans. 12 (“the parent does not disclose the removing or how
the removing may be accomplished”).
A further limitation recited in claim 18 is a step of servicing a bearing
package “without removing the front center body support from the engine.”
Appeal Br. 16 (Claims App.). As with similar language recited in claim 13
above, the Examiner finds that the ‘579 filing “does not mention . . .
servicing of specified components under the specified condition of ‘without
removing’ another specified component.” Non-Final Act. 15. Appellant
contends that, as recited, “the front center body support 62 is not removed”
from the engine because “the drawings do not indicate means of removing
the front center body support from the engine.” This appears contradictory
to Appellant’s assertions above that repeatedly relied on fasteners and bosses
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in the drawings as evidence of removal, but now deems the engine is not
removable even though fasteners and bosses are likewise depicted.8
In view of the above, the Examiner concludes that “the Patent does
not reasonably convey ownership of the claimed invention.” Ans. 13. We
are in agreement with the Examiner and are not persuaded that Appellant
had possession of the limitations of claim 18 based solely on the disclosure
of the ‘579 filing. Consequently, we sustain the Examiner’s rejection of
claim 18, and dependent claims 19–22, as lacking written description
support.
The rejection of claims 13–22
as anticipated by Davis
In view of the analysis above, we further agree with the Examiner that
the “instant application claims . . . new matter without support in the original
disclosure of” the ‘579 filing.” Non-Final Act. 4. Hence, we disagree with
Appellant that the pending claims are “entitled to the priority date of April
15, 2011” based on the ‘579 filing. Appeal Br. 13. Appellant does not
otherwise contest the rejection of the pending claims in view of Davis, but
only asserts that Davis “cannot be used as prior art against the pending
claims.” Appeal Br. 13. We disagree for the reasons explained above.

8 Additionally, claim 18 recites “a bearing compartment aft of the front
center body assembly.” Appeal Br. 16 (Claims App.). The “front center
body assembly” in the ‘579 filing is identified via reference number 60.
This reference number is depicted in Figures 2 and 3 as being co-extensive
with that which Appellant has identified as the “bearing compartment.”
Appellant does not explain how, in view of Appellant’s identification of the
recited “bearing compartment” (see above), this bearing compartment is “aft
of the front center body assembly” as now recited.
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Accordingly, we sustain the Examiner’s rejection of claims 13–22 as being
anticipated by Davis.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–22 112, first
paragraph
Written Description 13–22
13–22 102(b) Davis 13–22
Overall
Outcome
13–22
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED