UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Jul 6, 2020

2019005595 (P.T.A.B. Jul. 6, 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.
15/138,491 04/26/2016 Frederick M. Schwarz 93374US01;
67097-3380US1
3359
54549 7590 07/06/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
BOGUE, JESSE SAMUEL
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
07/06/2020 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 FREDERICK M. SCHWARZ and
PAUL W. DUESLER
__________

Appeal 2019-005595
Application 15/138,491
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, 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 6–21.2 We have jurisdiction under
35 U.S.C. § 6(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 Corporation. Appeal Brief (“Appeal Br.”) 1, filed Feb. 5,
2019.
2 In the After-Final Response (“After-Final Resp.”), dated Nov. 9, 2018,
claims 1–5 were proposed to be canceled. See After-Final Resp. 3. Because
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We AFFIRM.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a heat exchanger for providing
cooling air in a gas turbine engine.” Spec. ¶ 1.
Claim 6, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
6. A gas turbine engine comprising:
a compressor section, a combustor section, a turbine
section;
a core housing containing said compressor section, said
combustor and said turbine section;
a first conduit for tapping hot compressed air to be cooled
and passing said air to a heat exchanger, said air being cooled in
said heat exchanger and returned to a return conduit, said return
conduit passing the cooled air to said turbine section; and
said heat exchanger including a plurality of
circumferentially spaced heat exchangers, and said
circumferentially spaced heat exchangers being formed of a cast
nickel alloy material including more than 50-percent by volume
gamma-prime intermetallic phase material.

the Examiner entered the proposed amendments of the After-Final
Response, claims 1–5 are considered canceled and not before us for review.
See Advisory Action (“Adv. Act.”) 1, dated Nov. 19, 2018.
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THE OBJECTION AND REJECTIONS
I. The Specification is objected to under 35 U.S.C. § 132(a) as
introducing new matter in an amendment.3
II. Claim 21 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
III. Claims 17, 19, and 21 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
IV. Claims 6–11, 13, 14, 17, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wallace (US 5,269,133, issued Dec. 14,
1993), Kissinger (US 5,413,752, issued May 9, 1995), and Yoshinaka (US
6,134,880, issued Oct. 24, 2000).
V. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wallace, Kissinger, Yoshinaka, and Johnson (US 4,064,692, issued
Dec. 27, 1977).
VI. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wallace, Kissinger, Yoshinaka, and Porte (US
2009/0007567 A1, published Jan. 8, 2009).

3 Objections are typically reserved for formal or procedural matter not within
the jurisdiction of the Board. See 37 C.F.R. § 1.181. Here, however, the
objection relates to the rejection of claim 21 under 35 U.S.C. § 112(a),
concerning the written description requirement (see infra). The review of
such “adverse decisions” falls within our 35 U.S.C. § 6 jurisdiction
regardless of whether termed “objection” or “rejection” by the
Examiner. See In re Haas 486 F.2d 1053, 1056 (CCPA 1973); In re
Searles, 422 F.2d 431, 434–35 (CCPA 1970); MPEP § 608.04(c).
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VII. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wallace, Kissinger, Yoshinaka, and Vermejan (US 5,269,135, issued
Dec. 14, 1993).
VIII. Claims 6 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Elovic (US 4,254,618, issued Mar. 10, 1981), Kissinger,
and Yoshinaka.
IX. Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wallace, Kissinger, Yoshinaka, and Elovic.

ANALYSIS
Objection I and Rejections II and III
New Matter, Written Description, and Indefiniteness
The Examiner determines that the Amendment filed July 18, 2018
“introduces new matter into the disclosure” because the added language
“location 104 is upstream of combustor 106,” to the Specification, is not
supported by the original disclosure. Final Act. 2.4 The Examiner further
states that the added language “valve 144” is not supported because the
reference number 144 is described in the original disclosure as a duct rather
than as a valve. Id. Consistent with the above-discussed objection, the
Examiner finds that claim 21’s recitation of “the first conduit is connected to
a tap upstream of the combustor” is not supported by the original disclosure.
Id. at 3.
Further, the Examiner determines that claims 17, 19, and 21 are
indefinite for the following reasons:

4 Final Office Action (“Final Act.”), dated Sept. 11, 2018.
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(1) in regard to claim 17, “[i]t is unclear if the ‘air downstream of the
heat exchanger’ is the bypass air or the hot air being cooled by the heat
exchanger”;
(2) in regard to claim 19, it is “unclear as to what nozzle is intended”
with respect to the recited “nozzle plane” and that it appears that “fan nozzle
plane” should be recited instead; and
(3) in regard to claim 21, the recitation “upstream of having passed” is
unclear and the limitation should be changed to “claim[] tapping air
upstream of the generator” instead. Id. at 3–4.
In the After-Final Response, amendments to the Specification and
claims 17, 19, and 21 were proposed to address these deficiencies. See
After-Final Resp. 2, 4–6. Although the Examiner entered these proposed
amendments (see Adv. Act. 1; see also Appeal Br. 5 (Claims App.)),5 the
Examiner did not indicate in the Advisory Action whether the above-
identified objection and rejections have been withdrawn. Further, in the
Answer and in the Briefs, both the Examiner and Appellant do not discuss
the objection and rejections. See Ans., passim; Appeal Br., passim; Reply
Br., passim.6 However, because the objection and rejections remain
outstanding and because the amendments––that are now entered––appear to
have remedied the above-described deficiencies (see After-Final Resp. 2, 4–
5; Appeal Br. 5 (Claims App.); Adv. Act. 1), we thus reverse the objection to
the Specification as introducing new matter in an amendment, the rejection

5 Appeal Brief (“Appeal Br.”), filed Feb. 5, 2019.
6 Reply Brief (“Reply Br.”), filed July 16, 2019.
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of claim 21 as failing to comply with the written description requirement,
and the rejection of claims 17, 19, and 21 as indefinite.

Rejections IV and VIII
Obviousness over Wallace, Kissinger, and Yoshinaka or Elovic, Kissinger,
and Yoshinaka
With respect to each rejection, Appellant appears to focus solely on
claim 6. See Appeal Br. 2–3. We thus select claim 6 for review, and note
those instances where a difference exists between the two rejections.7
Accordingly, the remaining claims (i.e., claims 7–11, 13, 14, 17, 19, and 21)
stand or fall with the respective rejections of claim 6. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 6 recites a gas turbine engine comprising a heat exchanger in
which the heat exchanger includes “a plurality of circumferentially spaced
heat exchangers.” Appeal Br. 4 (Claims App.). The plurality of
circumferentially spaced heat exchangers are “formed of a cast nickel alloy
material including more than 50-percent by volume gamma-prime
intermetallic phase material.” Id. The Examiner primarily relies on the
teachings of Wallace or Elovic (in their respective rejections) for a gas
turbine engine having a heat exchanger (Final Act. 4–5, 11), but
acknowledges that Wallace or Elovic do not disclose the claimed material
(id. at 5, 11). The Examiner relies on Kissinger for such teaching. See id.
(citing Kissinger 7:65–8:25). In each case, the Examiner concludes that it
would have been obvious to a skilled artisan to modify the heat exchanger

7 Appellant appears to argue Rejections IV and VIII together. See Appeal
Br. 2–3.
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material to be “cast of a nickel alloy material including more than 50-percent
by volume gamma-prime intermetallic phase material,” as taught by
Kissinger, “to provide heat exchangers that are capable of better
withstanding the corrosive high temperature region inside a turbine engine
and the gasses associated therewith.” Id. at 5, 11–12.8
Appellant contends that “Kissinger does not disclose the particular
alloy [as claimed] for use in heat exchangers.” Appeal Br. 2; see also Reply
Br. 1 (arguing that “[n]owhere does [Kissinger] mention heat exchangers”
and that Wallace’s material is “titanium aluminide”).
Appellant’s contention is unpersuasive in that it fails to account for
Wallace’s contributions to the combination of Wallace, Kissinger, and
Yoshinaka, or for Elovic’s contribution to the combination of Elovic,
Kissinger, and Yoshinaka. See In re Keller, 642 F.2d 413, 425 (CCPA
1981). Here, the Examiner relies on the teachings of Wallace or Elovic for
the gas turbine engine having the heat exchanger. See Final Act. 4–5, 11.
Further, as expressed above, the Examiner relies on Kissinger for disclosing
the recited material. See Kissinger 7:65–8:25.
Appellant argues that “[t]here is synergism that is not addressed by
the rejection and there is no reason, other than having read [Appellant’s]
disclosure, to utilize this alloy for a heat exchanger.” Appeal Br. 3; see also
Reply Br. 2 (arguing that “[t]here is no disclosure anywhere in this record of
a reason to move the Kissinger material, and its recognized problems, into a
heat exchanger structure”).

8 The Examiner relies on Yoshinaka for limitations other than those
discussed above. See Final Act. 5, 12.
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First, Appellant does not explain what the “synergism” is that is not
addressed by the Examiner. Stated differently, we find Appellant’s
argument, lacking supporting evidence, insufficient to rebut the express
teaching of Kissinger (as discussed below). See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (“[A]ttorney argument [is] not the kind of
factual evidence that is required to rebut a prima facie case of obviousness”).
Further, the Examiner correctly responds that:
[T]he Wallace reference teaches that the heat exchanger must be
“made from a high temperature material” (Col 3, Lines 47–49),
and that a concern in the system is the failure of the heat pipes
(Col 4, Line 55). Wallace also teaches that a portion of the heat
exchanger is disposed in a compressor vane (78). Kissinger
discloses that various components exposed to high temperature
turbine engine gases, such as those located in the compressor
section and other locations inclusive of compressor vanes can be
improved by constructing them out of cast nickel alloy material
including more than 50 percent by volume gamma prime
intermetallic phase material (Col 7, Lines 65–Col 8 Line 25).
Such a modification is intended to allow these components to
handle high temperature environments surrounding a turbine
engine system, and to improve strain resistance and fatigue
strength (Abs[.], Col[.] 1 Lines 5–15). As such it would have
been obvious at the time of invention considering the stated need
of Wallace for a resilient material capable of handling high
temperatures and considering the teachings of Kissinger of cast
nickel alloy material being used in an equivalent location and
under an equivalent thermal strain, to modify the [h]eat
[e]xchanger of Wallace to be made of the cast nickel alloy
material including more than 50 percent by volume gamma
prime intermetallic phase material taught in Kissinger. This
would result in the heat exchanger of Wallace being improved to
be both heat resilient, corrosion resistant, and fatigue resilient in
association with the gas turbine gasses used.
Ans. 3–4. The Examiner cites specific teachings in the references
themselves, not Appellant’s disclosure, in support of the Examiner’s
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articulated reasoning for combining the references as proposed in the
rejection. See id.; see also Final Act. 4–5, 11–12. As such, the Examiner’s
rejection is based on sound technical reasoning and evidence disclosed in the
cited prior art, rather than improper hindsight reconstruction.
In the Reply Brief, Appellant contends that “[t]he Examiner ignores
the over twenty years between the publication of the Kissinger patent
(1995), and the publication of the Wallace patent (1993) until Appellant’s
filing date of April 2016.” Reply Br. 1. Appellant further argues that
“Kissinger [is] related to a method for improving the formation of small
components such as fasteners (in particular bolts – see column 6, line 40+ as
an example).” Id.
We note, however, that these arguments were not raised in the Appeal
Brief, and do not appear to be responsive to any argument raised in the
Examiner’s Answer. As stated in 37 C.F.R. § 41.41(b)(2):
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the
present appeal, unless good cause is shown.
(Emphasis added). Accordingly, we need not consider these untimely
arguments in the present appeal. Nonetheless, we note that even if these
arguments were timely made, they are unpersuasive for the following
reasons.
First, Appellant appears to intimate that there is some long felt but
unresolved need and that there is a failure of others. See Reply Br. 1.
However, Appellant provides neither evidence nor persuasive argument
towards this end. “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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Second, our reviewing court has instructed us that “secondary
considerations of nonobviousness . . . simply cannot overcome a strong
prima facie case of obviousness” and that for obviousness under § 103, “all
that is required is a reasonable expectation of success” (Wyers v. Master
Lock Co., 616 F.3d 1231, 1242, 1246 (Fed. Cir. 2010)). Notably, Kissinger
discloses a “composition of the gamma prime precipitation strengthened
nickel-base superalloy may vary widely so as to include alloys of this type
having calculated volume fractions of gamma prime content, varying from
about 30 to about 65 volume percent” and “other processing techniques of
high volume fraction gamma prime superalloys, besides the powder
metallurgy and hot forging operations disclosed, may be employed, such as
using hot isostatically pressed powder, rapidly solidified materials, or fine
grain wrought materials.” Kissinger 7:68–8:12. Kissinger further discloses
that “[t]he teachings of this invention are advantageous in [] components,
such as fasteners and high pressure compressor blades and vanes” and that
“these teachings could be extended to other applications which require
enhanced properties at temperatures ranging from ambient up to about 1400°
F.” Id. at 8:12–25 (emphases added). Further, Appellant’s Specification
discloses that “[t]he use of [a cast nickel] alloy, which has been typically
reserved for use in the turbine, allows the heat exchanger to survive much
higher temperatures than with typical heat exchangers utilized in gas turbine
engines.” See Spec. ¶¶ 46, 47 (emphases added); see also Appeal Br. 3.
The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
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Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). As noted by the Court in
KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at 421. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 416. See also In re Geisler, 116 F.3d
at 1470. Nothing in the record here suggests that the Examiner’s proposed
combination of known prior art elements according to their known functions
would involve more than routine engineering efforts. As Kissinger
explicitly discloses that the claimed material can be used in turbine engines
(i.e., in compressor blades and vanes) to withstand high temperatures and the
Specification also discloses that it is known that the claimed material can be
used in a turbine, the use of the claimed material in a heat exchanger that is
located in a turbine engine, i.e., a high temperature environment, would
yield predictable results of withstanding high temperatures. Thus,
Appellant’s contentions do not apprise us of Examiner error.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 6 as unpatentable over
Wallace, Kissinger, and Yoshinaka or Elovic, Kissinger, and Yoshinaka.
Accordingly, we sustain the Examiner’s rejection of claims 6–11, 13, 14, 17,
and 21 as unpatentable over Wallace, Kissinger, and Yoshinaka and the
Examiner’s rejection of claims 6 and 19 as unpatentable over Elovic,
Kissinger, and Yoshinaka.

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Rejections V–VII and IX
Obviousness over Wallace, Kissinger, Yoshinaka, and any of
Johnson, Porte, Vermejan, or Elovic
For these rejections, Appellant appears to rely on arguments presented
for parent claim 6. See Appeal Br. 2–3. As we find no deficiencies in the
Examiner’s rejection of independent claim 6 as unpatentable over Wallace,
Kissinger, and Yoshinaka or Elovic, Kissinger, and Yoshinaka, for the
reasons discussed above, we likewise sustain the Examiner’s rejections of
claims 12, 15, 16, 18, and 20 as unpatentable over the variously indicated
combinations of cited art.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
21 132(a),
112, first
paragraph 
New Matter,
Written
Description
21
17, 19, 21 112,
second
paragraph
Indefiniteness 17, 19, 21
6–11, 13, 14,
17, 21
103(a) Wallace,
Kissinger,
Yoshinaka
6–11, 13,
14, 17, 21

12 103(a) Wallace,
Kissinger,
Yoshinaka,
Johnson
12
15, 16 103(a) Wallace,
Kissinger,
Yoshinaka, Porte
15, 16
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Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
18 103(a) Wallace,
Kissinger,
Yoshinaka,
Vermejan
18
6, 19 103(a) Elovic, Kissinger,
Yoshinaka
6, 19
20 103(a) Wallace,
Kissinger,
Yoshinaka, Elovic
20
Overall
Outcome
6–21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED