2020005103 (P.T.A.B. May. 26, 2021)

United Technologies Corporation

Patent Trials and Appeals BoardMay 26, 2021

2020005103 (P.T.A.B. May. 26, 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. 14/458,421 08/13/2014 William G. Sheridan 67097-2583PUS1;PA27717US 1097 54549 7590 05/26/2021 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER CHAU, ALAIN ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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 WILLIAM G. SHERIDAN Appeal 2020-005103 Application 14/458,421 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, 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 1–3, 6–17, and 21–24. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 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 Corp. Appeal Br. 1. Appeal 2020-005103 Application 14/458,421 2 BACKGROUND The Specification discloses that “[t]he present disclosure relates generally to gas turbine engines, and more specifically to an external core gas turbine engine assembly.” Spec. ¶ 1. CLAIMS Claims 1, 6, and 12 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A gas turbine engine comprising: a gas generator including a core inlet flowpath for receiving ambient air, and an exhaust outlet for directing therefrom combusted fuel; a propulsor assembly including a fan driven by a main shaft, a fan drive turbine, and a propulsor inlet flowpath for receiving ambient air, the propulsor assembly being out of line with the gas generator; wherein the core inlet flowpath is adjacently offset from, and aligned with, the propulsor inlet flowpath; wherein said exhaust outlet is fluidly connected to said fan drive turbine and drives said fan drive turbine; wherein said exhaust outlet is fluidly connected to said propulsor assembly via a duct connecting said exhaust outlet to a fluid inlet of said propulsor assembly, the duct providing structural support for at least one of the propulsor assembly and the gas generator; and wherein at least one of the propulsor assembly and the gas generator is configured to be embedded in a wing of an aircraft. Appeal Br. 8. Appeal 2020-005103 Application 14/458,421 3 REJECTIONS2 1. Claims 1–3, 6–17, and 21–24 are newly rejected under 35 U.S.C. § 112(b) as indefinite. 2. The Examiner rejects claims 1, 3, 6–8, 10,3 11, 22, and 23 under 35 U.S.C. § 102(a)(1) as anticipated by Snell.4 3. The Examiner rejects claims 2 and 9 under 35 U.S.C. § 103 as unpatentable over Snell in view of Kasmarik.5 4. The Examiner rejects claims 12–17, 21, and 24 under 35 U.S.C. § 103 as unpatentable over Snell in view of Wolf.6 DISCUSSION New Ground of Rejection We enter a new ground of rejection and reject claims 1–3, 6–17, and 21–24 under 35 U.S.C. § 112(b) as indefinite. Each of independent claims 1, 6, and 12 recites “wherein the core inlet flowpath is adjacently offset from, and aligned with, the propulsor inlet flowpath.” Appeal 2 We note that the Final Action includes a rejection under 35 U.S.C. § 112(b). Final Act. 2–3. The claims as amended on September 17, 2019 include the revisions suggested by the Examiner, and this amendment has been entered. See Adv. Act., mailed Oct. 24, 2019. Both Appellant and the Examiner indicate that no rejections under § 112 are on appeal. See Appeal Br. 4; see also Ans. 3–18 (listing the rejections “applicable to the appealed claims”). Thus, although we can find no explicit statement in the record, we consider the Examiner’s rejection under 35 U.S.C. § 112(b) to have been withdrawn. 3 Although not listed in the rejection heading, claim 10 is discussed as being anticipated by Snell in the body of the rejection. See Final Act. 4, 8. 4 Snell, US 4,193,262, iss. Mar. 18, 1980. 5 Kasmarik et al., US 3,792,586, iss. Feb. 19, 1974. 6 Wolf et al., US 3,054,577, iss. Sept. 18, 1962. Appeal 2020-005103 Application 14/458,421 4 Br. 8–10. We determine that it is not reasonably possible to interpret the specific relationship between the core inlet flowpath and the propulsor inlet flowpath, such that they are both “adjacently offset” and “aligned,” with sufficient clarity to satisfy 35 U.S.C. § 112(b). See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (per curiam). In particular, we determine that this claim language is internally inconsistent when interpreted according to the ordinary meaning of the terms and the Specification provides no further description giving clarity to their meaning such that the claim scope may be determined. We determine that one of ordinary skill in the art would understand the claim language to require that the core and propulsor inlet flowpaths are next to each other, i.e., adjacent; are placed out of line from each other, i.e., offset; and also arranged in a straight line, i.e., aligned. Thus, the claim language is internally inconsistent, requiring both that the flow paths are placed out of line but also arranged in a straight line. The written description portion of the Specification does not provide further clarity regarding this relationship. Rather, the Specification discloses only that these flowpaths are adjacently offset and does not describe them as being aligned. See, e.g., Spec. ¶ 16. In fact, we see no description of them being aligned or any other description of the relationship of these inlet flowpaths. Appellant asserts that “[t]his feature is illustrated in Figure 2 . . . with the flowpaths of each core being aligned with the flowpath of the propulsor.” Appeal Br. 5. But it is not readily apparent from this figure alone how the inlet flowpaths are aligned, and Appellant does not provide or explain what the appropriate understanding of this term should be in the context of this figure. At best, one of ordinary skill in the art would have to speculate as to Appeal 2020-005103 Application 14/458,421 5 what the relationship is between these inlet flowpaths that makes them “aligned with” each other. Based on the foregoing, we conclude that claims 1, 6, and 12 are indefinite under 35 U.S.C. § 112(b). We also conclude that dependent claims 2, 3, 7–11, 13–17, and 21–24 are indefinite for the same reasons. Anticipation and Obviousness Rejections In view of our determination that claims 1–3, 6–17, and 21–24 are indefinite, and because we find that an analysis of the Examiner’s rejections of these claims would necessarily be based on a speculative assumption as to the meaning of the claims, we do not sustain the rejections of claims 1–3, 6– 17, and 21–24 under 35 U.S.C. §§ 102, 103. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). However, it should be understood that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the Examiner’s analysis in rejecting the claims. CONCLUSION We REVERSE the rejections of claims 1–3, 6–17, and 21–24 under 35 U.S.C. §§ 102, 103. We enter a new ground of rejection as to claims 1–3, 6–17, and 21–24 under 35 U.S.C. § 112(b). In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 3, 6–8, 10, 11, 22, 23 102(a)(1) Snell 1, 3, 6–8, 10, 11, 22, 23 2, 9 103 Snell, Kasmarik 2, 9 12–17, 21, 24 103 Snell, Wolf 12–17, 21, 24 Appeal 2020-005103 Application 14/458,421 6 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–3, 6– 17, 21–24 112(b) Indefiniteness 1–3, 6– 17, 21– 24 Overall Outcome 1–3, 6– 17, 21– 24 1–3, 6– 17, 21– 24 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. REVERSED 37 C.F.R. § 41.50(b)