UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Nov 24, 2020

2020003084 (P.T.A.B. Nov. 24, 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.
14/759,271 07/06/2015 Tracy A. PROPHETER-HINCKLEY 67097-2148PUS1;63835US01 1054
54549 7590 11/24/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
FOX, JOHN C
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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 TRACY A. PROPHETER-HINCKLEY,
SAN QUACH, and MATTHEW A. DEVORE
Appeal 2020-003084
Application 14/759,271
Technology Center 3700
Before JEREMY M. PLENZLER, BRANDON J. WARNER, and
NATHAN A. ENGELS, Administrative Patent Judges.
PLENZLER, 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, 5, 8, 9, 11, 12, and 26–36. 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(a). Appellant identifies the real party in interest as United
Technologies Corporation. Appeal Br. 2.
Appeal 2020-003084
Application 14/759,271

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CLAIMED SUBJECT MATTER
The claims are directed to a gas turbine engine component. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A component for a gas turbine engine, comprising:
a body portion that includes a first wall spaced apart from
a second wall and disposed about a centerline axis;
a first cavity extending from said first wall to said second
wall;
a second cavity extending from said first wall to said
second wall and in direct communication with a trailing edge exit
cavity;
at least one rib that extends between said first wall and said
second wall and separates said first cavity from said second
cavity; and
at least one impingement hole that extends through said at
least one rib, wherein said at least one rib extends along a rib axis
that is transversely angled relative to said centerline axis such
that said impingement hole is oriented toward said second wall,
wherein said rib axis is a central axis through a cross-sectional
view of said rib and extends from said first wall to said second
wall.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Winstanley US 5,246,340 Sept. 21, 1993
Dailey US 6,837,683 B2 Jan. 4, 2005
Liang US 7,690,892 B1 Apr. 6, 2010
REJECTIONS
Claims 1, 5, 8, 9, 11, 12, and 26–32 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
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Application 14/759,271

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Claims 1, 5, 8, 9, 11, 12, and 26–32 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Claims 1, 5, 9, 11, 12, and 26–36 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Dailey.
Claims 11, 35, and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dailey and Liang.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dailey and Winstanley.
OPINION
Written Description
The Examiner’s rejection of the claims as lacking written description
consists of two sentences. Specifically, the Examiner’s basis for the
rejection is that “[t]here is no original written description of the rib axis
being a central axis” because “[t]he word ‘central’ does not appear in the
original disclosure or claims.” Final Act. 3.
“The test for the sufficiency of the written description ‘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.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). There is no requirement that
the Specification includes the exact words of the claim to provide written
description support. Ariad, 598 F.3d at 1352.
The Examiner has the initial burden of presenting evidence or reasons
why persons skilled in the art would not recognize, in the disclosure, a
description of the invention defined by the claims, and that burden is met
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Application 14/759,271

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when the Examiner points out that the claim reads on embodiments outside
the scope of the original written description. In re Wertheim, 541 F.2d 257,
263 (CCPA 1976). Although that burden is met when the Examiner points
out that the claim reads on embodiments outside the scope of the original
written description (id.), when the original written description describes
something within the scope of the claim, the Examiner must do more than
point out the difference in scope (see In re Rasmussen, 650 F.2d 1212, 1215
(CCPA 1981)).
The Examiner must consider the specific facts of the case and provide
supporting reasoning. In re Smythe, 480 F.2d 1376, 1382 (CCPA
1973). The Examiner can meet his burden by analyzing factors such as the
knowledge of one skilled in the art and the level of predictability in the field
(see Bilstad v. Wakalopulos, 386 F.3d 1116, 1124–26 (Fed. Cir. 2004)), or
by demonstrating that the Specification reflects that the invention is no
broader than what is disclosed in the Specification, such as distinguishing
over the broader disclosure (see Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159
(Fed. Cir. 1998)).
In the present case, the Examiner’s rejection fails to provide sufficient
explanation to establish a lack of written description support. The Examiner
offers no explanation as to why the claim reads on embodiments outside the
scope of the original written description, nor does the Examiner provide any
other reasoned explanation supporting the rejection. Rather, as noted above,
the sole basis for the Examiner’s rejection is that “[t]he word ‘central’ does
not appear in the original disclosure or claims” (Final Act. 3), which is
insufficient to support a rejection of the claims as lacking written
description.
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Application 14/759,271

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Indefiniteness
The Examiner additionally rejects the claims as indefinite because
“there is no disclosure of a central rib axis and the meaning of the claims
cannot be determined.” Final Act. 3. The Examiner’s rejection amounts to
nothing more than a single sentence conclusion with no accompanying
explanation. The Examiner provides no basis for us to affirm the rejection.
Anticipation
Appellant argues claims 1, 5, 9, 11, 12, and 26–36 as a group. Appeal
Br. 7–10. We select claim 1 as representative. Claims 5, 9, 11, 12, and 26–
36 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Dailey’s “ribs are read as transversely angled
to the centerline axis in view of the drawings” and “include[] impingement
holes 54, 56, 58, 60, 62, 64, 63, 65 as recited in the claims.” Final Act. 4.
Appellant does not dispute these findings.
The sole dispute before us is whether Dailey’s rib axis is “a central
axis through a cross-sectional view of said rib [that] extends from said first
wall to said second wall.” See Appeal Br. 7–10. Appellant contends that
“the Examiner appears to just pick arbitrary lines through Dailey’s ribs as rib
axes without consideration of all words in the claim,” but Appellant does not
identify any particular structure missing from Dailey. Id. at 8. Although
Appellant contends that “in light of Appellant’s Specification, one of
ordinary skill in the art would interpret the term ‘rib axis’ to have a central
rib axis connotation” and “Appellant’s . . . rib axes RA are central axes
through the respective ribs when viewed in the cross sections through the
ribs,” again, Appellant identifies no particular structure missing from Dailey.
Id. at 9.
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Application 14/759,271

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As seen, for example, in the Examiner’s annotated portion of Dailey’s
Figure 3 provided on page 5 of the Final Action, Dailey’s ribs have “a
central axis through a cross-sectional view of said rib [that] extends from
said first wall to said second wall,” as recited in claim 1. Appellant does not
identify any structure missing from that Figure, and we agree with the
Examiner’s findings that the cited portions of Dailey satisfy claim 1.
Accordingly, we are not apprised of error in the Examiner’s decision
to reject claims 1, 5, 9, 11, 12, and 26–36.
Obviousness
Appellant relies on the unpersuasive contentions presented in
connection with claim 1 for the patentability of claims 8, 11, 35, and 36.
CONCLUSION
The Examiner’s rejections under 35 U.S.C. § 112, first and second
paragraphs, are reversed. The Examiner’s rejections under 35 U.S.C.
§ 102(b) and § 103(a) are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 5, 8, 9,
11, 12, 26–
32
112, ¶ 1 Written
Description
1, 5, 8, 9,
11, 12, 26–
32
1, 5, 8, 9,
11, 12, 26–
32
112, ¶ 2 Indefiniteness 1, 5, 8, 9,
11, 12, 26–
32
1, 5, 9, 11,
12, 26–36
102(b) Dailey 1, 5, 9, 11,
12, 26–36

11, 35, 36 103(a) Dailey, Liang 11, 35, 36
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Application 14/759,271

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8 103(a) Dailey, Winstanley 8
Overall
Outcome
1, 5, 8, 9, 11,
12, 26–36

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED