UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Mar 29, 2021

2020002046 (P.T.A.B. Mar. 29, 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.
15/271,274 09/21/2016 Frederick M. Schwarz 94791US01;
67097-3445US1
8064
54549 7590 03/29/2021
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
HUNTER, JOHN S
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/29/2021 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 FEDERICK M. SCHWARZ and NATHAN SNAPE
Appeal 2020-002046
Application 15/271,274
Technology Center 3700
Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
CARL M. DEFRANCO, Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision in the Final Office Action rejecting claims 1–20. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as United
Technologies Corporation, now known as Raytheon Technologies
Corporation. Appeal Br. 1.
Appeal 2020-002046
Application 15/271,274

2
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to a system for monitoring the
condition of cooling air in a gas turbine engine. Spec. ¶¶ 1, 3. Claims 1
and 19 are independent.
Claim 1 is illustrative and reproduced below:
1. A gas turbine engine comprising:
a compressor section and a turbine section;
a cooling air system including a first fluid connection to tap
cooling air and pass the cooling air through a heat exchanger,
and a second fluid connection for returning air from the heat
exchanger back to at least one of the compressor section and the
turbine section for cooling; and
a first sensor for sensing a condition of the cooling air
downstream of the heat exchanger and
a control to compare the sensed condition of the cooling air
to an expected condition, and to identify a potential concern in
the cooling air system if the sensed condition differs from the
expected condition by more than a predetermined amount.
Appeal Br. 9 (Claims App.).

EXAMINER’S REJECTIONS2
1. Claims 12 and 18 stand rejected under 35 U.S.C. § 112(a) as
lacking written description. Ans. 3.
2. Claims 12–15 and 17–19 stand rejected under 35 U.S.C. § 112(b)
as being indefinite. Id.
3. Claims 1–20 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Mackin.3 Id.

2 The Examiner withdrew rejections of claims 1 and 19 under 35 U.S.C.
§ 112(a), as well as numerous rejections under 35 U.S.C. § 112(b) that
included claims 1, 4, 6, 9, 10, 14, 15, 16, 17, 19, and 20. See Ans. 3–4.
3 U.S. Patent No. 8,955,794 B2, iss. Feb. 17, 2015 (“Mackin”).
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ANALYSIS
A. Lack of Written Description—Claims 12 and 18
The Examiner rejects dependent claims 12 and 18 as lacking written
description support for the claim limitation “artificially determined reference
pressure.” Final Act. 10. According to the Examiner, Appellant’s
Specification does not disclose “how the inventor or a joint inventor . . .
artificially determined a reference pressure.” Id. (emphasis omitted); see
also Ans. 5. Appellant responds that a skilled artisan would know from
reading paragraphs 50 and 52 of the Specification that “artificially
determined” is an alternative to actual sensing, in other words, a preset limit
that is determined by computer modeling or theoretically based upon certain
engine operating conditions. See Appeal Br. 5; Reply Br. 1–2.
We find that the record more persuasively supports Appellant’s
position. The Specification discusses two ways of determining the pressure,
namely, an actual pressure that is sensed in real time by sensors 114, 115
(see paragraphs 45–47) and a “preset or predetermined limit [that] could be
based upon engine operating conditions” (see paragraph 50). In turn,
paragraph 52 of the Specification describes a “preset limit” as also being a
“limit determined artificially.” That the Specification describes “artificially
determined” in terms of a preset limit derived from an engine’s operating
conditions provides sufficient and meaningful clarity for a skilled artisan to
immediately appreciate and understand the scope of the disputed limitation.
Thus, we reverse the Examiner’s rejection of claims 12 and 18 under 35
U.S.C. § 112(a).
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A. Indefiniteness—Claims 12–15 and 17–19
The Examiner finds myriad terms of the claims to be indefinite. Final
Act. 11–16; Ans. 6–10. For instance, in rejecting dependent claims 12
and 18 as indefinite, the Examiner again takes issue with their recitation of
“artificially determined reference pressure.” Final Act. 12, 14; Ans. 6, 9.
The Examiner also rejects other dependent claims as reciting indefinite
terms, such as claim 13’s recitation of “varying levels of indicated
maintenance,” claim 14’s recitation of “a second greater amount,”
claim 15’s recitation of “may be,” and claim 19’s recitation of “a potential
concern.” Final Act. 13–14; Ans. 7–10.
1. “artificially determined”
As for the recitation of “artificially determined” in claims 12 and 18,
the Examiner finds that it “is not described in the specification and it is
unknown what structural/functional limitations are imparted by the phrase.”
Ans. 7; see also Final Act. 12, 14 (essentially same). Appellant points to
paragraphs 50 and 52 of the Specification as providing sufficient clarity of
the term’s meaning. Appeal Br. 5; Reply 1–2. For the reasons discussed
above, we agree with Appellant that the Specification provides adequate
clarity for a skilled artisan to understand that “artificially determined” means
a preset or predetermined limit derived from an engine’s operating
conditions. Thus, we do not sustain the indefiniteness rejection of claims 12
and 18.
2. “varying levels of indicated maintenance”
The Examiner contends that the recitation of “varying levels of
indicated maintenance” in claim 13 is indefinite because a skilled artisan
“would potentially come to very different conclusions as to the metes and
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bounds of the cited limitation as the cited limitation is not described in the
specification and it is unknown what structural/functional limitations are
imparted by the cited limitation.” Ans. 7; see also Final Act. 13 (same).
Appellant responds that paragraph 47 of the Specification makes clear that
this limitation means that different levels of responsive maintenance may be
indicated depending on the difference in sensed pressure and expected
pressure. Appeal Br. 5.
We agree with Appellant. A skilled artisan would understand from
the Specification that the limitation encompasses a range of corrective steps
or potential repairs that gets more drastic as the difference between a sensed
pressure and an expected pressure increases by more than a predetermined
amount, for instance, a small difference would indicate a minor repair that
“may be set within a period of time” in the course of routine maintenance,
while a greater difference would indicate an emergency requiring immediate
response and “power reduction.” Spec. ¶ 47. That disclosure is indicative of
well-known and conventional warning displays provided in the cockpit of
many, if not all, jet engine aircraft. Thus, we do not sustain the Examiner’s
indefiniteness rejection of claim 13.
3. “a second greater amount”
The Examiner indicates that claim 14’s recitation of “a second greater
amount” is indefinite because “it is unclear . . . as to what ‘a second greater
amount’ is greater in comparison [to].” Ans. 8. We disagree. As Appellant
notes, a skilled artisan would understand from reading paragraph 47 of the
Specification that the claimed “second greater amount” is a difference that is
greater in comparison to the claimed “first amount,” both of which result
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Application 15/271,274

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from a comparison of sensed pressures to expected pressures. See Reply
Br. 2. Thus, we do not sustain the indefiniteness rejection of claim 14.
4. “may be”
The Examiner contends that claim 15’s use of the term “may be”
renders the claim indefinite because “it is unknown if the cited limitation is
or is not required by the claim.” Final Act. 13; Ans. 8. The term “may be”
denotes simply that the limitation is optional, without necessarily rendering
the claim indefinite.4 Thus, we do not sustain the indefiniteness rejection of
claim 15. Rather, for purpose of this decision, we construe claim 15 as an
optional limitation that renders it of the same scope as the claim from which
it depends, i.e., claim 14.
5. “said sensed cooling air condition”
The Examiner asserts that claim 17’s recitation of “said sensed
cooling air condition” lacks antecedent basis. Final Act. 14. We disagree.
Claim 17 depends from claim 1, and claim 1 expressly recites “a first sensor
for sensing a condition of the cooling air” and later recites “the sensed
condition of the cooling air.” Those recitations provide a clear introduction
for claim 17’s later recitation of “said sensed cooling air condition.” Thus,
we see error in the Examiner’s indefiniteness rejection of claim 17.
6. “potential concern”
The Examiner rejects claim 19 because the term “potential concern” is
unclear “to what degree an issue or concern or problem would or would not
fall within the [term’s] metes and bounds” and “the specification does not
provide an explicit definition for the cited limitation, nor does the

4 Indeed, claim 15 more appropriately should have been rejected under 35
U.S.C. § 112(d) for failing to further limit the claim from which it depends.
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specification provide guidance to one of ordinary skill in the art as to how
one could come to the determination of what is ‘a potential concern.’”
Ans. 9. Appellant responds that the term “is clearly related to the
identification of a need for some level of maintenance,” and that the
comparison of the sensed condition to the expected condition, as called for
by claim 19, is what “leads to the indication of a potential need for
maintenance.” Reply Br. 3. Consistent with the Specification, we agree
with Appellant that a skilled artisan would understand that a potential
concern is an indication or warning that a particular level of maintenance or
corrective action may be warranted. See Spec. ¶ 47. As such, we do not
sustain the indefiniteness rejection of claim 19.
7. “should”
The Examiner also rejects claim 19 as indefinite, asserting that the
term “should” is confusing as to whether the claimed “identifying” step “is
or is not a required step of the claim.” Ans. 9–10. We disagree that the term
“should,” as used in the context of the claim, is indefinite. As Appellant
correctly explains, the claimed “identifying” step reciting the “should” term
follows “sensing” and “comparing” steps that result in one of two possible
outcomes—the sensed condition being either above or below an expected
condition by a predetermined amount. Reply Br. 3. In that context, the term
“should” has a meaning no different than the term “if,” and clearly indicates
that, if the result of the comparison exceeds a predefined threshold, then a
potential concern will be identified. That usage of the term “should” places
meaningful limits on the scope of the claim. As such, we disagree with the
Examiner that the term “should” lacks clarity in the context of claim 19.
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B. Anticipation—Claims 1–20
The Examiner rejects claims 1–20 as anticipated by Mackin. Final
Act. 16–23. Appellant argues claims 1, 2, 6, 9, 12, 13–15, 18, and 19
separately. Appeal Br. 6–8. We understand Appellant’s silence with respect
to dependent claims 3–5, 7, 8, 10, 11, 16, and 17 as meaning that those
dependent claims stand or fall with independent claim 1. Likewise,
dependent claim 20 stands or falls with independent claim 19.
1. Claim 1
The Examiner finds that Mackin discloses all the limitations of
claim 1, including “a control” that compares the sensed condition of the
cooling air to an expected condition and identifies “a potential concern” if
the sensed condition exceeds the expected condition “by a predetermined
amount.” Final Act. 16–17 (citing Mackin 13:17–60, 15:62–16:36,
Figs. 1–12). Appellant responds that the anticipation rejection is “improper”
because the Examiner has “dismissed” the control limitations of the claim as
purely functional, and thus, “fail[ed] to find the recited control function” is
met by Mackin. Appeal Br. 6. We disagree.
Although true that the Examiner stated that the control limitations “are
considered functional language,” the Examiner nonetheless proceeded to
find that “the functional language is disclosed” by Mackin. Final Act. 17
(citing Mackin, Fig. 8, 13:17–60, 15:62–16:36); see also Ans. 10. Indeed,
the following disclosure in Mackin fully supports the Examiner’s finding—
The bleed air system 604 of the illustrated example employs a
sensor 616 (e.g., a temperature sensor) downstream from
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Application 15/271,274

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intercooler5 outlet 608 to sense or detect the temperature of the
bleed air. The sensor 616 sends the signal corresponding to the
temperature of the bleed air at the intercooler outlet 608 to the
control system 280. The control system 280 determines if the
temperature value at the intercooler outlet 608 is at or within a
threshold value or range. For example, if the control system
280 determines (e.g., via the comparator) that the temperature
of the bleed air is greater than a threshold temperature value,
then the control system 280 instructs the valve controller 288 to
command the fan air valve 614 to allow more fan air flow into
the inlet 610. If the temperature of the bleed air at the
intercooler outlet 608 is less than the threshold value, then the
control system 280 commands the valve controller 288 to
reduce the amount of fan air flowing to the inlet 610. The fan
air exiting the outlet 612 is dumped overboard. In some
examples, the fan air exiting the outlet 612 of the intercooler
604 may be routed for use in other systems of the aircraft.
Mackin 13:41–60 (emphasis added); see also id. at 8:36–60, 13:3–16,
16:17–36 (disclosing a similar control system in terms of comparing a
sensed “pressure” with a “pre-determined pressure range”).
Mackin’s express disclosure of determining, via a comparator, if the
sensed temperature or pressure of the cooled air is greater than a predefined
threshold value or range clearly meets the “compare” and “identify”
limitations of claim 1. To the extent Appellant disputes Mackin’s disclosure
of the claimed “potential concern,” we consider this to be a new argument
not previously presented in Appellant’s opening brief. Compare Appeal
Br. 6 (arguing generally, and without further specificity, that the Examiner
“fail[s] to find the recited control function” in Mackin), with Reply Br. 4–5
(arguing anew that Mackin does “not identify[] a required maintenance or

5 Mackin discloses “intercooler 604” of Figure 6 as being “an air-to-air heat
exchanger” that may be employed in the exemplary systems of Figures 2–5
and 7. Mackin, 13:3–20.
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any concern”). Because Appellant does not show good cause for raising this
belated argument in its reply brief, thereby depriving the Examiner of an
opportunity to respond, we need not consider it. See 37 C.F.R. 41.41(b)(2).
In any event, Appellant’s Specification speaks to the broad nature of
the “potential concern” identified by the control if the sensed condition is
outside the predetermined range. As described, the claimed “potential
concern” covers “[v]arying degrees of flags,” including not only “a potential
need for maintenance,” but also “corrective steps” such as “a power
reduction.” Spec. ¶ 47. Indeed, Appellant relied repeatedly on this same
disclosure to overcome the Examiner’s indefiniteness rejection. With that in
mind, we view Mackin’s disclosure that the control system “commands” a
valve controller to “reduce” or “prevent” air flow in the event of an
excessive condition as effectively identifying a concern in need of corrective
action. Mackin, 13:49–60, 16:28–36. That being the case, we find no error
in the Examiner’s finding that Mackin meets the “identify a potential
concern” limitation of claim 1. And because Appellant does not dispute
Mackin’s disclosure of any other limitations of claim 1 (see Appeal Br. 6),
we sustain the Examiner’s prior art rejection of claim 1, as well as the claims
that fall therewith, i.e., claims 3–5, 7, 8, 10, 11, 16, and 17.
2. Dependent Claim 2
Appellant attempts to refute the Examiner’s rejection of claim 2 for
the same reason it argued against the rejection of claim 1. See Appeal Br. 7.
We find that argument no more persuasive with respect to claim 2 than we
did for claim 1. Thus, we sustain the Examiner’s rejection of claim 2.
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Application 15/271,274

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3. Dependent Claim 6
Claim 6 recites that the sensor is located in the vicinity of the diffuser
that is downstream of the compressor section. At the outset, we note that
Appellant does not dispute that Mackin meets the “diffuser” limitation
recited in claim 5, from which claim 6 depends. See Appeal Br. 7–8
(arguing separately only dependent claims 2, 6, 9, 12, 13–15, 18, and 19).
Instead, Appellant argues that the location of Mackin’s sensor 616, as
depicted in Figure 6, “is far removed from” the vicinity of the diffuser.
Appeal Br. 7. But Appellant’s argument is devoid of meaningful
explanation, let alone evidentiary support, for why Mackin’s sensor is “far
removed” from the diffuser’s location. See id. As such, Appellant’s
argument amounts to nothing more than conclusory attorney argument,
which cannot take the place of evidence. And to the extent Appellant
attempts to cure this deficiency in its Reply Brief, we reject it as improperly
raised new argument. See 37 C.F.R. 41.41(b)(2). In any event, we note that
Mackin depicts the sensor in various locations downstream of the heat
exchanger, including in the vicinity of the diffuser. See, e.g., Mackin, 9:30–
34, 10:19–24, 12:11–17, 12:51–56, 13:41–44, Figs. 4–6. Thus, we see no
error in the Examiner’s finding that Mackin meets the limitation of claim 6.
4. Dependent Claim 9
Claim 9 recites that the sensor “be line replaceable.” The Examiner
finds that Mackin’s sensor “is implicitly capable of being replaced.”
Ans. 13; see also Final Act. 20 (same). Appellant responds that, rather than
disclosing a replaceable sensor, “Mackin discloses simply a dot on a fluid
line.” Appeal Br. 7. We find the Examiner’s position more tenable.
Contrary to what Appellant may argue, the fact that Mackin depicts the
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Application 15/271,274

12
sensor as a dot says nothing of error in the Examiner’s finding that a skilled
artisan would see Mackin’s sensor as capable of replacement. Thus, without
meaningful explanation from Appellant, we agree with the Examiner that
Mackin’s sensor satisfies the limitation of claim 9.
5. Dependent Claims 12 and 18
Claims 12 and 18 recite that the expected condition is “artificially
determined.” Appellant merely argues, once again in conclusory fashion,
that “Mackin does not disclose any expected condition which is artificially
determined.” Appeal Br. 7. Once again, Appellant’s argument is nothing
more than conclusory. As discussed above, we agree with Appellant that
“artificially determined” means a preset limit defined by an engine’s
operating conditions. Mackin clearly discloses that the sensed pressure is
compared to “threshold values retrieved from a look-up table” and that those
threshold values can be “based on [] operating conditions of the aircraft.”
Mackin, 16:7–16; see also id. at 21:43–58 (essentially same). Mackin
further describes the threshold values as being “predetermined” or “pre-set.”
Id. at 8:47–53, 22:10–18. Those disclosures clearly support the Examiner’s
finding that Mackin satisfies the “artificially determined” limitation of
claims 12 and 18. Thus, we sustain the Examiner’s rejection of claims 12
and 18.
6. Dependent Claims 13–15
Claims 13–15 recite that the comparison results in “varying levels of
indicated maintenance,” including “routine maintenance” and “power
reduction.” Appellant argues, without meaningful explanation, that “Mackin
does not disclose any such variation.” Appeal Br. 8. We disagree. Mackin
discloses various levels of maintenance to the same degree as Appellant’s
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Specification. For instance, the Specification states that the comparison
results in “[v]arying degrees of flags,” ranging from “a potential need for
maintenance” to “more drastic corrective steps” such as “a power
reduction.” Spec. ¶ 47. Mackin similarly discloses that its comparison
results in “commands” to “reduce” or “prevent” air flow in the system.
Mackin, 13:49–60, 16:28–36. In our view, those disclosures indicate that
Mackin’s system includes the capability to raise warning flags that invoke
various levels of corrective measures falling within the scope of claims 13–
15. Thus, we are not persuaded of error in the Examiner’s finding that
Mackin discloses the limitations of claims 13–15.
7. Claims 19 and 20
Independent claim 19 recites a method that includes limitations
similar to apparatus claim 1. Appellant’s arguments with respect to this
method claim are no different than those made with respect to claim 1.
Compare Appeal Br. 6, with id. at 8. Thus, for the same reasons as we
sustained the rejection of claim 1, we likewise sustain the Examiner’s
rejection of claim 19, as well as claim 20 falling therewith.
CONCLUSION
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
12, 18 112(a) Lack of Written
Description
12, 18
12–15,
17–19
112(b) Indefiniteness 12–15,
17–19
1–20 102(a)(1) Mackin 1–20
Overall
Outcome
1–20

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Application 15/271,274

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TIME PERIOD FOR 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)(1)(iv).
AFFIRMED