UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Nov 9, 2020

2020001558 (P.T.A.B. Nov. 9, 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.
15/244,025 08/23/2016 Frederick M. Schwarz 94457US01;
67097-3430US1
8218
54549 7590 11/09/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
NG, HENRY
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
11/09/2020 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 2020-001558
Application 15/244,025
Technology Center 3700
Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
CARL M. DeFRANCO, Administrative Patent Judges.
BAHR, 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 1 and 14–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “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, formerly United Technologies Corporation. See
Update to Real Party in Interest letter submitted Apr. 23, 2020; Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a heat exchanger for providing
cooling air in a gas turbine engine.” Spec. ¶ 1. Claim 1, reproduced below,
is illustrative of the claimed subject matter.
1. A gas turbine engine comprising:
a compressor section including a lower pressure
compressor and a higher pressure compressor, and a turbine
section;
a core engine housing surrounding said compressor
section and said turbine section, and
an outer intermediate housing having a wall defining an
internal chamber between said core housing and said outer
intermediate housing;
a fan rotor and a fan casing surrounding said fan rotor to
define a bypass duct between said fan case and said outer
intermediate housing, and a heat exchanger mounted in said
internal chamber and receiving high pressure air for cooling
said high pressure air and delivering said high pressure air into
said core engine housing to be utilized as cooling air for a
component;
air from said lower pressure compressor being utilized to
cool the higher pressure air in said heat exchanger;
wherein a valve is selectively opened and closed to bleed
air from said lower pressure compressor, and said valve being
opened to provide air across said heat exchanger for cooling
said higher pressure air;
wherein said valve is controlled to be at least partially
open at a takeoff condition;
wherein said valve is controlled to be moved towards a
closed position at lower power operation but at least partially
open at idle; and
wherein said valve is a bleed valve controlled to lower a
load on said compressor section.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wallace US 5,269,133 Dec. 14, 1993
Correia US 5,358,374 Oct. 25, 1994
Hazel US 2007/0071996 A1 Mar. 29, 2007
Borcea US 7,555,905 B2 July 7, 2009
Lo US 2013/0186102 A1 July 25, 2013
Rambo US 2016/0281532 A1 Sept. 29, 2016
REJECTIONS
Claims 1 and 14–20 stand rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
Claims 1 and 14–20 stand rejected under 35 U.S.C. § 112(a) as failing
to comply with the enablement requirement.
Claims 1 and 14 stand rejected under 35 U.S.C. § 103 as unpatentable
over Lo, Correia, and Borcea.
Claims 15–17 stand rejected under 35 U.S.C. § 103 as unpatentable
over Lo, Correia, Borcea, and Wallace.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lo, Correia, Borcea, Wallace, and Rambo.
Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over
Lo, Correia, Borcea, Wallace, Rambo, and Hazel.
OPINION
Written Description—Claims 1 and 14–20
The basis of the Examiner’s rejection of claims 1 and 14–20 as failing
to comply with the written description requirement is that Appellant’s
“Figures 1–3 fail to depict the location and emplacement details of how the
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heat exchanger is placed and connected with other components within the
gas turbine engine.” Final Act. 4. The Examiner critiques Figures 2 and 3
as being “simply block diagrams of the inventive concept, and not a visually
detailed representation of the invention as used within the gas turbine
engine.” Id. The Examiner also notes that “details of the actuator and the
valve,” as well as “details of piping arrangements that connect the valve to
the heat exchanger are lacking.” Id. Thus, the Examiner finds that
Appellant’s “figures do not provide enough detail to conclude that the
inventor had possession of the claimed invention.” Id.
Appellant argues that, as with prior art bleed valves as shown in
Borcea, there is no “‘piping’ that connects the valve to the heat exchanger”;
rather, in both Borcea and in Appellant’s invention, “[t]he air flows freely
over the heat exchanger.” Appeal Br. 3. Similarly, Appellant points out,
Lo’s “valve 216 selectively allows air from a bypass chamber 122 to flow
over the heat exchanger.” Id. at 4. Appellant contends that, “[i]n sum, a
worker of skill in this art would recognize the ‘location and emplacement’
details of all the claimed elements.” Id.
In response, the Examiner insists “it is not clear how the flow travels
from the compressor (94) to the valve (112), and finally to the heat
exchanger (112) because Figures 2 and 3 do not provide sufficient structural
details to visualize this flowpath.” Ans. 3. According to the Examiner:
The figures show schematically a concept, an idea, of a gas
turbine engine comprising a heat exchanger, but it is not clear
from the disclosure, taken as a whole, that at the time of the
filing, [Appellant] possessed the claimed gas turbine
incorporat[ing] the claimed heat exchanger, and how said gas

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turbine incorporated structurally said heat exchanger, in
particular since [Appellant] admits that no piping is used.
Id.
The fundamental factual inquiry for ascertaining compliance with the
written description requirement is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. See Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “This inquiry . . . is a question of fact,” and “the level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id. “[T]he specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id.
Appellant’s Specification describes, and Figures 2 and 3 illustrate, the
arrangement of elements recited in the claims, including the gas turbine
engine comprising core engine housing 90 surrounding a compressor section
and a turbine section, outer intermediate housing 86 having a wall outside of
core engine housing 90 and forming internal chamber 88 between core
engine housing 90 and outer intermediate housing 86, heat exchanger 108
mounted in internal chamber 88, and valve 112 controlled to be selectively
opened and closed to bleed air from lower pressure compressor 94. See
Spec. ¶¶ 37–42. As illustrated in Figures 2 and 3, actuator 114 controls
valve 112 to selectively open or close opening 116 in core engine housing 90
to permit air to flow into internal chamber 88 toward and across heat
exchanger 108. See Spec. ¶ 40. A person having ordinary skill in the art
would understand from Figures 2 and 3 and the corresponding description in
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the Specification that the location of valve 112 and opening 116 adjacent
heat exchanger 108 permits the air to flow across heat exchanger 108. It is
not apparent to us that any additional piping would be required to deliver air
from lower pressure compressor 94 to valve 112 or from valve 112 to heat
exchanger 108 as the Examiner insists. The Examiner does not present any
evidence or persuasive technical reasoning to indicate that mounting a heat
exchanger in internal chamber 88 or locating a bleed valve to provide bleed
air from lower pressure compressor 94 to the heat exchanger would have
been beyond the technical grasp of a person of ordinary skill in the art after
reading the disclosure in Appellant’s Specification and drawings.
The Examiner correctly notes that Appellant’s Specification does not
provide specific details of the valve or the actuator (Final Act. 4), but valves
and actuators for moving valves are well known. Further, the claims do not
recite the valve or actuator with more specificity than is disclosed in the
Specification and drawings, and the Examiner does not persuade us that
persons of ordinary skill in the art would have difficulty envisioning how
such valves and actuators could be embodied within Appellant’s disclosed
invention.
For the above reasons, the disclosure of the present application
reasonably conveys to those skilled in the art that the inventors had
possession of the claimed subject matter as of the filing date. Accordingly,
we do not sustain the rejection of claims 1 and 14–20 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement.
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Enablement—Claims 1 and 14–20
The Examiner’s basis for rejecting the claims as failing to comply
with the enablement requirement is substantially similar to that discussed
above in rejecting the claims as failing to comply with the written
description requirement. See Final Act. 4–5. The Examiner states that
Appellant “supplied block diagrams to disclose a concept, but” does not
provide “an actual mechanical description of the structure.” Id. at 4.
According to the Examiner,
[t]he nature of the work is cutting edge technology in terms of
inter-related technologies involving fluid flow, combustion,
high temperature heat-transfer and materials, high-speed
rotating machinery and controls; and the prior art does not seem
to indicate how the cool air will be delivered directly to the
high pressure turbine.
Id.
When rejecting a claim for lack of enablement, the PTO bears the
initial burden of setting forth a reasonable explanation as to why the scope of
the claim is not adequately enabled by the description provided in the
specification. In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
The Examiner’s analysis regarding delivering cool air directly to the
high pressure turbine is unsound because the claims do not recite or require
that the cool air be delivered directly to the high pressure turbine. As
discussed above, Appellant’s Specification describes, and Figures 2 and 3
illustrate, the arrangement of elements set forth in the claims. See Spec.
¶¶ 37–42.
Insofar as the enablement requirement is concerned, “[t]he dispositive
issue is whether an appellant’s disclosure, considering the level of ordinary
skill in the art as of the date of the appellant’s application, would have
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enabled a person of such skill to make and use the appellant’s invention
without undue experimentation.” In re Strahilevitz, 668 F.2d 1229, 1232,
(CCPA 1982). In calling into question the enablement of an applicant’s
disclosure, the examiner has the initial burden of advancing acceptable
reasoning inconsistent with enablement so as to shift the burden to the
appellant to show that one of ordinary skill in the art could have practiced
the claimed invention without undue experimentation. Id. Factors to be
considered in determining whether a disclosure would require undue
experimentation include (1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented, (3) the presence or
absence of working examples, (4) the nature of the invention, (5) the state of
the prior art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner briefly addresses several of the Wands factors,
including nature of the invention, the state of the prior art, level of skill in
the art, level of predictability in the art, amount of direction or guidance
presented, and presence or absence of working examples. Final Act. 4–5.
For the reasons discussed above, however, the Examiner’s analysis does not
establish a reasonable basis to doubt that a person having ordinary skill in
the art would have been able to make and/or use the claimed invention from
the disclosure in the present application without undue experimentation.
Accordingly, we do not sustain the Examiner’s rejection of claims 1
and 14–20 under 35 U.S.C. § 112(a) as failing to comply with the
enablement requirement.
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Obviousness—Claims 1 and 14
With respect to claim 1, the Examiner finds, in pertinent part, that
Lo does not teach said valve is controlled to be at least partially
open at a takeoff condition; wherein said bleed valve is
controlled to be moved towards a closed position at lower
power operation but at least partially open at idle; and wherein
said valve is a bleed valve controlled to lower a load on said
compressor section.
Final Act. 7. The Examiner also finds that Lo “does not teach said valve is a
bleed valve controlled to lower a load on said compressor section.” Id. at 8.
The Examiner finds that “Correia teaches a modulating valve (28) that
provides maximum bleed air to the vanes during high power operation of the
engine such as during takeoff” and “provides minimum bleed air to the
vanes during low power operation.” Final Act. 7 (citing Correia 3:36–43).
The Examiner determines it would have been obvious
to modify Lo by controlling the valve to be at least partially
open at a takeoff condition, and by moving the valve towards a
closed position at lower power operation but at least partially
open at idle, as taught by Correia, in order to cool the turbine
nozzles during a high power operation of the engine, thereby
preventing thermal distress and effecting a useful life during
operation (Col. 1, lines 23–28), and to reduce the flow of
cooling air, thereby increasing the efficiency of the engine (Col.
2, lines 25–28).
Id. at 7–8.
The Examiner also finds that Borcea teaches “a bleed valve (138)
controlled to lower a load on said compressor section.” Final Act. 8 (citing
Borcea 2:43–45). The Examiner determines it would have been obvious “to
modify Lo, in view of Correia, by using a bleed valve to lower a load on the
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compressor, as taught by Borcea, in order to drive the compressor during
start-up.” Id. (citing Correia 1:18–21).
Appellant argues that “Appellant has combined two functions into a
single valve” and that “[t]he prior art does not meet these claims.” Appeal
Br. 4. In particular, Appellant asserts that Appellant’s bleed valve is at least
partially open at idle, which Appellant characterizes as “the normal bleed
valve controls,” but “also is open at times when a bleed valve is typically
closed (at least partially open at a takeoff condition).” Id.
This argument fails to consider the combined teachings of the
references as a whole. Lo teaches controlling actuator 218 to move the
valve (door 216) to an open position when the temperature of the high
pressure air (relatively hot air 202) reaches or exceeds a first predetermined
temperature and to move the door to a closed position when the temperature
of relatively hot air 202 is at or below a second predetermined temperature.
Lo ¶ 30. Lo also teaches that actuator 218 can be controlled either to move
door 216 between the closed position and a single open position or to
modulate the position of door 216. Id. In other words, in the modulating
alternative, Lo teaches moving door 216 to a more open position when
relatively hot air 202 is at higher temperatures and to more closed positions
when relatively hot air 202 is at lower temperatures.
Correia teaches controlling a bleed valve (modulating valve 28) for
bleeding air from the compressor for use in cooling turbine nozzles to
provide maximum bleed air during high power operation of the engine, such
as at takeoff, and to provide minimum bleed air during low power operation,
such as during cruise when the cooling requirements are reduced.
Correia 1:23–30, 3:36–42.
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Considering the teachings of Lo and Correia together, one of ordinary
skill in the art would have understood that the temperature of relatively hot
air 202 would be high during high power operation of the engine, such as at
takeoff, and that the temperature of relatively hot air 202 would be lower
during low power operation, such as during cruise when the cooling
requirements are reduced. Thus, it would have been obvious to control Lo’s
door 216 to move to a more open position at takeoff providing more bleed
air for cooling and to move to a more closed position providing less bleed air
for reduced cooling during idle or cruise, when temperatures of relatively
hot air 202 would tend to be lower.
Regarding Correia’s teaching to provide “minimum” bleed air during
low power operation, such as during cruise (Correia 3:40–41), Appellant
argues that “there is no reason to suddenly open the Lo valve [at idle] based
upon the fact that Correia does not state absolutely the valve is closed at
idle.” Appeal Br. 5. This argument is not persuasive. Correia’s teaching of
“providing minimum bleed air” (rather than providing no bleed air) “during
cruise when the cooling requirement . . . is reduced” (rather than when no
cooling is required) suggests that the bleed valve should be controlled to
provide some minimal degree of bleed air at low power during cruise to
provide some, albeit reduced, cooling. Correia 3:37–42 (emphasis added).
Appellant contends that Correia’s modulating valve 28 controls
airflow to cool the turbine and, thus, is more akin to a valve on line 202 of
Lo, rather than valve 216. Appeal Br. 5. We appreciate that Correia’s
modulating valve 28 is used to provide bleed air from the compressor
directly to cool the turbine, rather than to provide bleed air to a heat
exchanger to cool a stream of air that is then used to cool components of the
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gas turbine engine, such as the turbine. The bleed air that Correia’s valve 28
releases from the compressor, nevertheless, is used as cooling air, and
Correia’s teachings with respect to controlling the bleed valve to provide
more bleed air when more cooling is needed and to provide less bleed air
when less, or reduced, cooling air is needed are, thus, applicable to the
control of Lo’s door 216.
Appellant argues that Lo’s valve (door 216) “is intended to provide
cooling air for a heat exchanger, but not intended to also reduce the load on
the compressor.” Appeal Br. 5. This argument is not persuasive. Whether
Lo recognizes this function of door 216, bleeding air from the compressor
inherently reduces the load on the compressor. Moreover, Borcea teaches
that a bleed valve reduces load on the compressor, and teaches placing the
bleed valve in the open position during start-up to reduce the load on the
compressor during start-up. Borcea 2:42–45. It would have been obvious to
a person having ordinary skill in the art to control Lo’s door 216 to be in an
open position during start-up in order to reduce the load on the compressor
during start-up, in view of Borcea’s teaching to do so.
Appellant also argues that Borcea’s teaching that known bleed valves
are “powered to a closed position after start-up has been completed”
(Borcea 1:21–25) “shows the impropriety of the several combinations the
Examiner must go through to get to the claims.” Appeal Br. 5. According
to Appellant, “[b]leed valves are closed at take-off.” Id. This argument is
not persuasive because it overlooks Borcea’s teaching that, although Borcea
focuses on the function of the bleed valve “solely as a start-up valve,” it can
also function in other situations, such as during ground idle, taxiing, take-
off, climbing, cruising, descent, etc., using a metering orifice. See
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Borcea 1:44–50. As discussed above, Lo and Correia teach additional
functions (i.e., providing cooling air as needed) of bleed valves for bleeding
air from the compressor during other times other than start-up.
For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1 as unpatentable over Lo, Correia, and Borcea.
Accordingly, we sustain the rejection of claim 1, as well as claim 14, for
which Appellant does not present any separate arguments for patentability
(see Appeal Br. 4–5), under 35 U.S.C. § 103 as unpatentable over Lo,
Correia, and Borcea.
Obviousness—Claims 15–19
In contesting the rejections of claims 15–19 under 35 U.S.C. § 103,
Appellant argues only that neither Wallace nor Rambo overcomes the
purported deficiencies of the combination of Lo, Correia, and Borcea.
Appeal Br. 5. For the reasons discussed above, Appellant fails to apprise us
of deficiencies in the combination of Lo, Correia, and Borcea in regard to
claim 1 and, likewise, fails to apprise us of error in the rejections of claims
15–19. Accordingly, we sustain the rejection of claims 15–17 under
35 U.S.C. § as unpatentable over Lo, Correia, Borcea, and Wallace. We also
sustain the rejection of claims 18 and 19 under 35 U.S.C. § 103 as
unpatentable over Lo, Correia, Borcea, Wallace, and Rambo.
Obviousness—Claim 20
Claim 20 depends from claim 19, which recites that the heat
exchanger is formed of a cast nickel alloy material, and further recites that
“said cast nickel alloy material includes more than 50-percent per volume
gamma-prime (Y1).” Appeal Br. 8 (Claims App.).
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The Examiner relies on Rambo for its teaching to make heat
exchangers from cast nickel alloy material. Final Act. 9–10; see Rambo
¶ 61 (teaching heat exchanger pipes made of nickel-based alloys), ¶ 64
(teaching making portions of the heat exchangers by casting). The Examiner
determines it would have been obvious to use cast nickel-based alloy
material to make Lo’s heat exchangers because the selection of a known
material based on its suitability for its intended use has been held to be
obvious. Final Act. 9–10 (citing In re Leshin, 277 F.2d 197 (CCPA 1960)).
The Examiner relies on Hazel’s teaching of a coating, used on
surfaces of gas turbine engine components, containing “at least 50 volume
percent of gamma-prime.” Final Act. 10 (citing Hazel ¶ 21, ll. 6–9). The
Examiner determines it would have been obvious to modify Lo (as already
modified in view of Correia, Borcea, Wallace, and Rambo) “by using a cast
nickel alloy material that includes more than 50-percent per volume
gamma-prime, as taught by Hazel, in order to protect the components of a
gas turbine engine from the high temperature and hostile thermal
environment within the gas turbine engine.” Id. (citing Hazel ¶ 2, ll. 2–4).
Appellant argues that claim 20 recites that “the ‘50-percent per
volume gamma-prime’ is a cast nickel alloy material,” but, in contrast, “[a]
coating as disclosed in Hazel would not be cast.” Appeal Br. 6; see also
Reply Br. 4 (asserting that “[t]here is no showing on this record of forming a
heat exchanger of cast nickel alloy material which is 50-percent per volume
gamma-prime”).
Appellant’s argument has merit. Hazel discloses coatings containing
at least 50 volume percent gamma-prime phase nickel aluminide to protect
components exposed to high temperature environments, such as gas turbine
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engines. Hazel ¶¶ 2, 21. According to Hazel, these teachings “are generally
applicable to any component on which a coating system may be used to
protect the component from its environment.” Id. ¶ 18. Hazel teaches
applying the coating containing gamma-prime to substrates, but does not
teach making the substrates themselves of nickel alloys containing gamma-
prime. Id. ¶ 19. In fact, Hazel specifically discloses a nickel-base
superalloy as a suitable substrate onto which the coating containing gamma-
prime may be applied. Id. Hazel does not teach incorporating gamma-prime
into the substrate material. Hazel teaches applying the coating containing
gamma-prime using techniques such as physical vapor deposition, directed
vapor deposition, and chemical vapor deposition. Id. ¶ 25. Hazel does not
teach or suggest forming the substrate (i.e., component) itself by casting an
alloy material containing gamma-prime, nor does Hazel teach or suggest
applying the coating onto a substrate using a casting technique.
The Examiner states that “[i]t is irrelevant whether or not Hazel’s
coating is cast” because “Hazel’s coating is being applied to Rambo, which
already teaches a cast nickel alloy material.” Ans. 6. This explanation is
unavailing because, as discussed above, claim 20 recites that “said cast
nickel alloy material includes more than 50-percent per volume gamma-
prime.” Appeal Br. 8 (Claims App.) (emphasis added). Applying a coating
of material containing gamma-prime onto a cast nickel alloy material would
not satisfy this limitation.
For the above reasons, we do not sustain the rejection of claim 20
under 35 U.S.C. § 103 as unpatentable over Lo, Correia, Borcea, Wallace,
Rambo, and Hazel.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 14–20 112(a) Written
Description
1, 14–20
1, 14–20 112(a) Enablement 1, 14–20
1, 14 103 Lo, Correia,
Borcea
1, 14
15–17 103 Lo, Correia,
Borcea, Wallace
15–17
18, 19 103 Lo, Correia,
Borcea, Wallace,
Rambo
18, 19
20 103 Lo, Correia,
Borcea, Wallace,
Rambo, Hazel
20
Overall
Outcome
1, 14–19 20
RESPONSE
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 IN PART