UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Jan 3, 2022

2020003050 (P.T.A.B. Jan. 3, 2022)

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. 14/959,542 12/04/2015 Matthew R. Feulner 61452US03; 67097-1763PUS2 3444 54549 7590 01/03/2022 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER MEADE, LORNE EDWARD ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 01/03/2022 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 MATTHEW R. FEULNER and SHENGFANG LIAO ____________ Appeal 2020-003050 Application 14/959,5421 Technology Center 3700 ____________ Before EDWARD A. BROWN, BRETT C. MARTIN, and GEORGE R. HOSKINS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant2 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-5, 8, 11, 13-15, 21, and 22, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 Appellant identifies US Application No. 13/366,419 (Appeal 2013-010469, decided Oct. 23, 2015) as being related (parent) to the present application. Appeal Br. 1. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies United Technologies Corporation as the real party in interest. Appeal Br. 1. Appeal 2020-003050 Application 14/959,542 2 CLAIMS Appellant’s disclosure “relates to a gas turbine engine, wherein the size and number of core inlet stator vanes at an upstream end of a compressor section are positioned to minimize icing concerns.” Spec. ¶ 2. Claims 1-5, 8, 11, and 13-15 are directed to a gas turbine engine, and claims 21 and 22 are directed to a compressor module. Claims 1, 13, and 21 are independent. Appeal Br. 11-13 (Claims App.). Claim 1, reproduced below, illustrates the claimed subject matter. 1. A gas turbine engine comprising: a fan; a turbine operatively connected to the fan; an inner core housing having an inner periphery; a splitter housing defining a bypass duct and having an outer periphery, the inner periphery of the inner core housing and the outer periphery of the splitter housing defining a core path; a plurality of inlet stator vanes located in the core path and each having a leading edge and a trailing edge; wherein the inner periphery of the inner core housing, the outer periphery of the splitter housing and the leading edge of adjacent ones of the plurality of inlet stator vanes define a flow area having a hydraulic diameter, the hydraulic diameter of the flow area being greater than or equal to 1.5 inches (3.8 centimeters). REJECTIONS Claims 13-15 are rejected under 35 U.S.C. § 101 as claiming the same invention as that of claims 1-3 of Feulner et al. (“Feulner”) (US Patent No. 9,291,064 B2, issued Mar. 22, 2016). Final Act. 2. Appeal 2020-003050 Application 14/959,542 3 Claims 1-5 and 13-15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-3 of Feulner. Final Act. 5, 8. Claims 21 and 22 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 and 2 of Feulner. Final Act. 10. Claims 21 and 22 are rejected under 35 U.S.C. § 102(b)3 as being anticipated by G.L. Shires and G.E. Munns (“The Icing of Compressor Blades and their Protection by Surface Heating,” Aeronautical Research Council Reports and Memoranda, R&M No. 3041, London, 1958) (“Shires”), as evidenced by Lindell et al. (US 3,986,798, issued Oct. 19, 1976) (“Lindell”). Final Act. 13. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Shires, as evidenced by Lindell, in view of Bob Robichaud and John Mullock (“The Weather of Atlantic Canada and Eastern Quebec, Graphic Area Forecast 34,” Nav Canada, Jan. 2002) (“Robichaud”), and the “Continuity Equation.” Final Act. 13. Claims 1-5, 8, 11, 13-15, 21, 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Coplin (US 4,827,712, issued May 9, 1989), as evidenced by Lindell, in view of Shires, Robichaud, and the Continuity Equation. Final Act. 20. 3 We treat this rejection as being under 35 U.S.C. § 102(b) (Final Act. 12), not “pre-AIA 35 U.S.C. [§] 102(a)(1),” as in the rejection heading (id. at 13). Appeal 2020-003050 Application 14/959,542 4 ANALYSIS Statutory Double Patenting of Claims 13-15 The Examiner rejects claims 13-15 under 35 U.S.C. § 101 as claiming the same invention as claims 1-3 of Feulner. Final Act. 2. In analyzing “same invention” type double patenting, the applicable test is whether “a claim to one invention could be literally infringed without literally infringing a claim to the other.” See In re Hallman, 655 F.2d 212, 216 (CCPA 1981); In re Vogel, 422 F.2d 438, 441 (CCPA 1970). This infringement test is a two-way test in that the claims of a patent are compared to the claims of an application (or another patent), and vice versa. The Examiner provides a table comparing claims 13-15 to claims 1-3 of Feulner. Id. at 3-4. Appellant contends, “at least the features identified on page 4 of the Office Action regarding the hydraulic diameters recited in claims 13 and 14 of the instant application as compared to claims 1 and 2 of [Feulner] directly conflict with the Examiner’s assertion that the same invention is being claimed.” Appeal Br. 9. The Examiner compares present claim 15, which depends from claim 13, to claim 1 of Feulner. Final Act. 3-4. The Examiner submits that “dependent Claim 15 incorporating the limitations of independent Claim 13 of the instant application recites almost the exact same limitations as Claim 1 of [Feulner]. The minor differences in claim language does not add any new structure or change the structure of the claimed invention.” Ans. 3 (boldface omitted, emphasis added). The Examiner determines that a potential infringer literally infringing any one of claims 13-15 would also infringe respective claims 1-3 of Feulner. Id. Appeal 2020-003050 Application 14/959,542 5 We disagree with the Examiner. Claim 13 recites “said hydraulic diameter is greater than 1.5 inches (3.8 centimeters).” Appeal Br. 12 (Claims App.) (emphasis added). In contrast, claim 1 of Feulner recites “said hydraulic diameter is greater than or equal to about 1.5 inches (3.8 cm).” Feulner, col. 5, l. 19-col. 6, l. 21 (emphasis added). The claim term “about” “avoids a strict numerical boundary for the specified parameter.” Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995). As acknowledged by the Examiner, “the word ‘about’ can reasonably be interpreted as meaning more or less than the stated value.” Ans. 4. Consistent with this meaning of “about,” claim 1 of Feulner encompasses a hydraulic diameter of from less than 1.5 inches to greater than 1.5 inches. Id. Applying the infringement test, a gas turbine engine having a hydraulic diameter of less than 1.5 inches could literally infringe claim 1 of Feulner without infringing claim 15. Thus, claim 15 does not recite the same invention as claim 1 of Feulner. The Examiner compares present claim 14, which depends directly from claim 15, to claim 2 of Feulner. Final Act. 4. Claim 14 recites, “said hydraulic diameter is greater than 1.7 [inches],” whereas claim 2 of Feulner recites “said hydraulic diameter is greater than or equal to about 1.7 inches.” Id. (emphasis added); Appeal Br. 12 (Claims App.) (emphasis added); Feulner, col. 6, ll. 22-24. Accordingly, a gas turbine engine having a hydraulic diameter of less than 1.7 inches could literally infringe claim 2 of Feulner without infringing claim 14. Thus, claim 14 does not recite the same invention as claim 2 of Feulner. Thus, we do not sustain this rejection of claims 13-15 under 35 U.S.C. § 101 as claiming the same invention as in claims 1-3 of Feulner. Appeal 2020-003050 Application 14/959,542 6 Non-Statutory Double Patenting of Claims 1-5, 13-15, 21, and 22 Appellant does not contest the non-statutory double patenting rejections of claims 1-5 and 13-15 over claims 1-3 of Feulner, and claims 21 and 22 over claims 1 and 2 of Feulner. See Appeal Br. 9. Accordingly, we sustain both rejections. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). Claims 21 and 22 as Anticipated by Shires as Evidenced by Lindell Claim 21 The Examiner finds that Shires, as evidenced by Lindell, discloses all limitations of claim 21. Final Act. 13-15 (see Examiner’s annotated versions of Figures 2 and 22(a) of Shires). Annotated Figure 2 labels the “Leading Edge” of two adjacent stator vanes and the “Flow Area” between them. Id. at 13. Annotated Figure 22(a) shows the location of the “Stator vanes” in the “Core flow path.” Id. at 14. The Examiner finds that Figure 2 of Shires discloses that each leading edge has a length of 3.0 inch and the distance between the stator vanes is 0.975 inch. Id. (citing Shires 2, sec. “2.2 The Cascades,” Fig. 2). The Examiner relies on Lindell as teaching that the hydraulic diameter is given by the equation: Dh = 4A/O, where “Dh” is the hydraulic diameter, “A” is the cross-sectional area, and “O” is the circumference (perimeter) of the cross sectional area. Final Act. 15 (citing Lindell, col. 2, ll. 31-37). The Examiner uses the separation distance and leading edge length values of Appeal 2020-003050 Application 14/959,542 7 adjacent stator vanes disclosed in Shires in this equation to calculate “a hydraulic diameter of 1.47 inches [(4 x (3 x 0.975)) / (3 + 0.975 + 3 + 0.975) = 1.47 inches].” Id. at 14-15. The Examiner determines that this calculated value “reads on greater than or equal to 1.5 inches, since rounding 1.47 up to the tenths place yields 1.5, which reads on ‘equal to . . . 1.5.’” Id. at 15. Thus, the Examiner finds that Shires meets the limitation of the hydraulic diameter “being greater than or equal to 1.5 inches (3.8 centimeters).” Appellant contends that the Examiner “does not establish that rounding a quantity of 1.47 inches would equal 3.8 centimeters.” Appeal Br. 3. The Examiner responds, “[r]ounding 1.47 inches up to 1.5 inches and converting the units of 1.5 inches to centimeters still yields around 3.8 centimeters.” Ans. 4. The Examiner notes that Appellant’s original disclosure states that “‘[the] hydraulic diameter of the flow area is greater than or equal to about 1.5 inches (3.8 centimeters),’” and submits that “the hydraulic diameter could be more or less than 1.5 inches (3.8 centimeters) because the word ‘about’ can reasonably be interpreted as meaning more or less than the stated value.” Id. The Examiner acknowledges that original claim 21 recited the same language as the original disclosure, but that claim 21 was amended by deleting the term “about” (i.e., preceding “1.5 inches (3.8 centimeters)).” Id. The Examiner asserts, however, “there is no support for Appellant’s implied argument that rounding is not allowed because Appellant disclosed exactly 1.5000 inches or exactly 3.8000 centimeters or explicitly disclosed greater than 1.5000 inches or explicitly disclosed greater than 3.8000 centimeters.’” Id. at 4-5. The Examiner submits the Appellant interprets claim 21 overly narrowly in view of the Appeal 2020-003050 Application 14/959,542 8 Specification as prohibiting rounding of a hydraulic diameter of 1.47 inches up to 1.5 inches. Id. at 5-6. Appellant replies that because the Examiner is relying on rounding a calculated hydraulic diameter value of 1.47 inches, “the Examiner must admit that Shires fails to disclose a hydraulic diameter within the claimed range and therefore fails to anticipate[]” claim 21. Reply Br. 2. Additionally, Appellant contends that the Examiner also must admit that amending claim 21 to delete the term “about” “substantively changed the scope of the claims such that the pending claims do not read on values of less than 1.5.” Id. (emphasis added). Appellant’s contentions are unpersuasive. The Specification discloses: (a) “the hydraulic diameter of the flow area is greater than or equal to about 1.5 inches (3.8 centimeters)” and (b) “the hydraulic diameter is greater than or equal to about 1.5 inches (3.8 centimeters).” See Spec. ¶¶ 7, 19, 27, and 42. Original claim 21 recited the language (a). See Spec. 12. Deleting the term “about” changed the scope of claim 21.4 That the number 1.5 inches is not qualified by “about” indicates an intent for greater precision in this value. See Takeda Pharm. Co. Ltd. v. Zydus Pharm. USA Inc., 743 F.3d 1359, 63-64 (Fed. Cir. 2014). However, “during examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)); see also In re Am. Acad. of 4 We note original claims 1 and 13 were likewise amended to delete the term “about” as shown in the appealed claims. See Spec. 8, 10; Appeal Br. 11-12 (Claims App.). Appeal 2020-003050 Application 14/959,542 9 Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that the scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art). “The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998). Appellant’s Specification does not confirm clearly that Appellant intends this same precision in the claimed value. In the Specification, the term “about” is used to modify “1.5 inches” at every occurrence. As “about 1.5 inches” encompasses numbers both smaller and larger than 1.5, the Specification does not disclose or suggest that values of the hydraulic diameter smaller than 1.5 inches could not achieve the object of minimizing icing concerns in a gas turbine engine. To the contrary, the Specification discloses or implies the opposite. See, e.g., Spec. ¶¶ 2, 6. It is the Examiner’s position that the calculated hydraulic diameter value of 1.47 inches, rounded to one decimal place, equals 1.5 inches, and thus, Shires meets the claimed range of “greater than or equal to 1.5 inches.” We are not persuaded that the Examiner erred in making this finding. First, Appellant does not contend in the Appeal Brief that the calculation of the hydraulic diameter value of 1.47 inches is mathematically incorrect. Second, we are not persuaded by Appellant that it was improper for the Examiner to round up the calculated value of 1.47 inches. Although the scope of claim 21 was changed by deleting the term “about,” we are not persuaded that the resulting number “1.5 inches” should be construed to “not Appeal 2020-003050 Application 14/959,542 10 read on values of less than 1.5.” Reply Br. 2. Appellant does not contend, for example, that 1.5 inches can be determined with no measurement error, or that the recited components of the compressor module have zero engineering tolerances in either their physical dimensions or locations relative to each other. Nor does Appellant direct us to any disclosure that supports such mathematical precision. Third, Appellant does not contend that the Examiner’s rounding up of the calculated value of 1.47 inches to 1.5 inches is mathematically incorrect. Fourth, Appellant does not apprise us of error in the Examiner’s finding that “converting the units of 1.5 inches [i.e., the rounded value] to centimeters still yields around 3.8 centimeters.” Ans. 4. Claim 21 and the Specification both recite that 1.5 inches corresponds to 3.8 centimeters. See, e.g., Spec. ¶ 42; Appeal Br. 13-14 (Claims App.). For these reasons, we are unpersuaded that the Examiner erred in finding Shires discloses the limitation “said hydraulic diameter is greater than 1.5 inches (3.8 centimeters).” In the Reply Brief, Appellant presents the new argument that there is a “fundamental fl[a]w in the Examiner’s calculated value based on Shires.” Reply Br. 3. More specifically, Appellant presents the new arguments: “[t]he Examiner fails to establish that the calculated hydraulic diameter for Fig. 2 of Shires is relative to the leading edges of the stator vanes”; “[t]he Examiner relies on . . . portions [i.e., sec. 2.2 and Fig. 2] of Shires for allegedly disclosing a distance (s) between adjacent vanes and vane length (L), which the Examiner utilizes to calculate the alleged hydraulic diameter of 1.47,” but that the Examiner “does not assert let alone establish that the distance (s) is disclosed at the alleged leading edges”; “[t]he inner and/or Appeal 2020-003050 Application 14/959,542 11 outer periphery values of Shires are also unknown”; “[a] position of the alleged vane length (L) is also unknown”; and “[t]here is simply insufficient evidence for the Examiner to calculate a hydraulic diameter as defined [by] Appellant for the alleged vanes based on the cited portions of Shires.” Id. at 3-5. But apart from specific exceptions, arguments that were not raised in the Appeal Brief, but raised for the first time in the Reply Brief, “will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” 37 C.F.R. § 41.41(b)(2). Here, Appellant does not show good cause. For the above reasons, we sustain the rejection of claim 21 as anticipated by Shires as evidenced by Lindell. Claim 22 Claim 22 depends from claim 21 and recites that “said hydraulic diameter is greater than or equal to 1.7 inches (4.3 centimeters).” Appeal Br. 13 (Claims App.). We agree with Appellant’s contention that “[t]he Examiner fails to provide any reasoning establishing that rounding a quantity of 1.47 inches for the hydraulic diameter allegedly disclosed by Figure 2 of Shires would meet this feature.” Reply Br. 3 (citing Ans. 3-7); see Final Act. 14-15. Thus, we do not sustain the rejection of claim 22 as anticipated by Shires as evidenced by Lindell. Claims 21 and 22 as Unpatentable over Shires, as Evidenced by Lindell, Robichaud, and the Continuity Equation Claims 21 and 22 - Optimization of Result-Effective Variable As for claim 21, the Examiner provides the alternative position that, “if one of ordinary skill would not have recognized that rounding 1.47 up to Appeal 2020-003050 Application 14/959,542 12 the tenths place yields 1.5 which reads on ‘a hydraulic diameter equal to . . . 1.5,’” the claim would have been obvious over Shires, Lindell, Robichaud, and the Continuity Equation. Final Act. 15 (emphasis added). In rejecting claim 21, the Examiner finds that Shires teaches that “the Critical Heat Quantity (He) was the minimum heat input necessary to keep the blade/stator vane free from ice,” and is proportional to the air flow velocity. Id. (citing Shires 6, sec. 5.2; 7; 16, sec. 7). The Examiner further finds that Shires teaches that the amount of heat required to keep the stator vanes free from ice at an air flow velocity of 400 ft/sec is greater than at an air flow velocity of 100 ft/sec, which means a greater amount of ice forms on the stator vanes at the higher than at the lower air flow velocity. Id. at 15-16. The Examiner finds Robichaud teaches that icing on aircraft surfaces is affected by air speed/velocity, where more icing accumulates on a vane/airfoil at higher air speed/velocity because water droplets have less chance to be diverted around the vane/airfoil as compared to lower air speed/velocity. Final Act. 16 (citing Robichaud 14-15, Fig. 2.5(b)). The Examiner takes Official Notice that the continuity equation was known in the art at the time of the invention. Final Act. 16-17. The Examiner finds that this equation is given by ṁ = ρVA, and for a constant mass flow rate (ṁ) and a constant air density (ρ), increasing the cross sectional flow area (A) requires a proportional decrease of V (air speed/velocity). Id. at 17. Therefore, the Examiner finds, increasing the hydraulic diameter of the cross-sectional flow area between adjacent stator vanes will decrease the velocity of air flowing though these stator vanes, which will decrease icing on the vanes as taught by Shires and Robichaud. Id. The Examiner submits that increasing the circumferential spacing Appeal 2020-003050 Application 14/959,542 13 between adjacent stator vanes (i.e., the claimed outer periphery and inner periphery) would reduce the total number of stator vanes between the splitter housing and inner core housing, which would “mean[] less icing because there would . . . [be] fewer stator vane surfaces on which ice could accumulate.” Id. at 17-18. Therefore, the Examiner determines the hydraulic diameter was recognized as a result-effective variable, i.e., a variable that achieves a recognized result. Id. at 18 (citing In re Antonie, 559 F.2d 618 (CCPA 1977)). The Examiner explains: the recognized result is that increasing the hydraulic diameter, i.e., increasing cross-sectional air flow area, reduced the number of stator vane surfaces on which ice could accumulate and reduced the speed/velocity of the air flowing through adjacent stator vanes which reduced icing on the stator vanes by increasing the chance that water droplets were diverted around the stator vane/airfoil, as taught by Shires, Robichaud, and [the] Continuity equation. Final Act. 18. The Examiner submits, “‘[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’” Id. at 19 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955); MPEP § 2144.05(II)(A)). The Examiner determines that the general conditions of the claim are disclosed by Shires (i.e., the hydraulic diameter of the flow area is greater than or equal to 1.5 inches (3.8 centimeters)), and thus, it was not inventive to discover the optimum range by routine experimentation. Id. at 18-19. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to make the hydraulic diameter of the flow area disclosed by Shires greater than or equal to 1.5 inches (3.8 centimeters), as claimed. Id. Appeal 2020-003050 Application 14/959,542 14 The Examiner submits that “[t]he hydraulic diameter equation takes a non-circular fluid conduit/pipe and generate[s] an equivalent diameter of a circular fluid conduit/pipe, i.e., the hydraulic diameter = Dh.” Ans. 8. The Examiner asserts that the hydraulic diameter is a result-effective variable that “facilitate[s] the use of the classical formulas to calculate the hydraulic characteristics of the fluid flowing in the non-circular pipe.” Id. at 9. Appellant contends that the Examiner fails to show that the claimed hydraulic diameter was known in the prior art as a result-effective variable, or “that it was known to arrange inlet stator vanes in a splitter housing while keeping the hydraulic diameter within the claimed range.” Appeal Br. 4; Reply Br. 5. Appellants asserts, “support for a prima facie case of obviousness based on optimization of a known result-effective variable requires first that the variable be recognized in the prior art (MPEP § 2144.05), which would require at least one of the cited references to make the recognition.” Reply Br. 5. Appellant contends that none of the cited references recognizes the claimed hydraulic diameter to be result-effective. Id. Appellant’s contentions are persuasive. The above-noted rule in Aller is limited to cases where the optimized variable is a result-effective variable. Final Act. 19; see Antonie, 559 F.2d at 620. As stated in In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012): While the absence of any disclosure regarding the relationship between the variable and the affected property may preclude a finding that the variable is result-effective, the prior art need not provide the exact method of optimization for the variable to be result-effective. A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective. Appeal 2020-003050 Application 14/959,542 15 Appellant’s Specification discloses that the hydraulic diameter is defined as 4 times the total flow area, A, divided by the perimeter, which equals the sum of the sum of four peripheries. As the hydraulic diameter is defined as a ratio of certain values, the routine optimization doctrine requires that this ratio must have been known to be result-effective in order for a person of ordinary skill in the art to reach the claimed value. See Applied Materials, 692 F.3d at 1295; Antonie, 559 F.2d at 620. Shires does not describe that the blade arrangement shown in Figure 2 defines a hydraulic diameter. The Examiner determines, however, that the length (L) and pitch (s) values disclosed in Shires for the depicted blade arrangement correspond to a certain hydraulic diameter value, based on the equation disclosed in Lindell. However, the Examiner does not identify any disclosure in Shires regarding the relationship between the length and pitch values and an affected property. We agree with Appellant that the Examiner does not identify any evidence that Shires is concerned with “keeping [a] hydraulic diameter within any particular range for adjacent vanes.” Appeal Br. 8. In the Answer, the Examiner submits that Lindell and Figure 22(b) of Shires “showed that the hydraulic diameter for heating fluid flow inside the compressor inlet guide vane (IGV) was calculated to be 1.5 x 10-2 feet.” Ans. 7; see Shires 41, Fig. 22(b). Appellant contends that this disclosure is insufficient to establish that Shires recognized hydraulic diameter to be result effective. Reply Br. 8. Appellant submits that “[d]isclosure of a single value is insufficient to establish that a variable was known to be result effective.” Id. (citing Antonie, 559 F.2d at 619). Appellant also points out that the hydraulic diameter value in Figure 22(b) of Shires is 0.18 inches, Appeal 2020-003050 Application 14/959,542 16 which is much less than the claimed lower limit. Id. Appellant contends that this lower value suggests that one would have selected a value outside of the claimed range. Id. Appellant further contends that “[i]t is also unknown at what location along the alleged vanes that the hydraulic diameter allegedly disclosed by Fig. 22(b) of Shires corresponds to (e.g., leading edge, trailing edge or some other location).” Id. We agree with Appellant that the disclosure of a hydraulic diameter value in Shires is insufficient, by itself, to establish that Shires recognized the hydraulic diameter to be result effective. Reply Br. 8. Further, the value of the hydraulic diameter disclosed in Shires does not support the Examiner’s position that optimizing the hydraulic diameter in Shires would have resulted in the substantially-higher claimed value of the hydraulic diameter. We further agree that Lindell is concerned with an air-cooled piston compressor and not with adjacent stator airfoils adjacent to a compressor rotor in a gas turbine engine, and thus, does not define the hydraulic diameter relative to adjacent stator airfoils. Appeal Br. 6. Appellant makes a substantially similar contention with respect to Robichaud, which is concerned with weather forecasting, as made for Shires. Id. at 8-9. We agree with that contention also. Appellant also contends that the Continuity Equation does not teach “a relationship between hydraulic diameter and ice accumulation,” and “the Examiner does not point to any objective evidence that one would have been motivated to hold mass flow rate constant while increasing the hydraulic diameter of adjacent vanes.” Id. at 7-8 (citing Final Act. 17). We agree with these contentions as well. Further, without holding both mass flow rate and density constant, increasing A would appear to Appeal 2020-003050 Application 14/959,542 17 require a corresponding increase in the ratio ṁ/ρV, not simply a “proportional decrease” in V. As noted, the Examiner submits that the recognized result of increasing the hydraulic diameter, “i.e., increasing cross-sectional air flow area,” is to reduce the number of stator vane surfaces on which ice can accumulate and to reduce the speed/velocity of air flowing through adjacent stator vanes, which reduces icing on the stator vanes. Final Act. 18. As also discussed above, the Examiner submits that increasing the hydraulic diameter by increasing the circumferential spacing between adjacent stator vanes would reduce the total number of stator vanes between the splitter housing and inner core housing, which would reduce icing. Id. at 17-18. We understand the Examiner’s position is that it would have been obvious to optimize the hydraulic diameter of the blade arrangement disclosed in Shires to meet the claimed value by changing the flow area between the adjacent blades. We further understand that the Examiner proposes changing the flow area by increasing the circumferential spacing between the adjacent vanes. Increasing this spacing would appear to change the size of the flow area between the blades shown in Figure 2 of Shires. However, this increased spacing would also appear to change the perimeter of the flow area. The Examiner does not show with evidence that a person of ordinary skill in the art would have recognized that the ratio of 4 times the total flow area, A, divided by the perimeter was recognized to be a result- effective parameter, even if the numerator or the denominator was known separately to be a result-effective variable. We also agree with Appellant that “the rejection does not point to any portion of the cited references being concerned with reducing or otherwise varying a total number of stator vanes, Appeal 2020-003050 Application 14/959,542 18 contrary to the Examiner’s suggestion.” Appeal Br. 9 (citing Final Act. 17- 18). Appellant also asserts, “[s]peculation about how the alleged vanes of Shires might or might not be altered to achieve a particular air flow velocity is insufficient to establish that Shires recognized hydraulic diameter to be result-effective.” Reply Br. 9. We agree. And, as noted by Appellant, the Examiner pointed out that “Shires teaches other techniques such as ‘using electricity to heat the inlet stator vanes.’” Id. (citing Ans. 31). This disclosure in Shires appears to weigh against the Examiner’s proposed modification of Shires. Accordingly, we agree with Appellant that the Examiner has not established that it would have been obvious to make the hydraulic diameter of the flow area disclosed by Shires greater than or equal to 1.5 inches (3.8 centimeters), as recited in claim 21. As for claim 22, the Examiner concludes that it would have been obvious to optimize the hydraulic diameter of the flow area disclosed by Shires to be greater than or equal to 1.7 inches (4.3 centimeters), as recited in claim 22. Final Act. 18-19. For the same reasons discussed for claim 21, the Examiner has not established that it would have been obvious to make the hydraulic diameter of the flow area disclosed by Shires to meet this limitation in claim 22. For the foregoing reasons, we do not sustain the rejection of claims 21 and 22 as unpatentable over Shires as evidence by Lindell, Robichaud, and the Continuity Equation based on the Examiner’s routine optimization rationale. Appeal 2020-003050 Application 14/959,542 19 Claim 21 - Closeness of Claimed and Prior Art Ranges The Examiner presents a second obviousness rejection of claim 21 over Shires and Lindell, premised on the assumption that 1.47 would not have been rounded up to 1.5. Ans. 6-7. The Examiner submits that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” Id. at 6 (citing Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (emphasis omitted)). The Examiner determines that claim 21 is prima facie obvious because the claimed hydraulic diameter and the hydraulic diameter of Shires are “‘merely close.’” Id. at 6-7. Appellant asserts that “[t]he Federal Circuit has distinguished Titanium Metals under similar circumstances.” Reply Br. 2 (citing In re Patel, 566 Fed. Appx. 1005 (Fed. Circ. 2014) (non-precedential)). According to Appellant: “Titanium Metals is thus a case much like the range cases where the claimed amount falls directly within the established prior art range. Here, unlike in Titanium Metals, the claimed range unquestionably falls outside the range disclosed by the prior art.” Id. at 3 (quoting Patel, at 1100). Appellant asserts: Here, the Examiner relies on a single calculated value based Fig. 2 of Shires. The Examiner has not pointed to any values above Appellant’s claimed lower limit of hydraulic diameter in the cited prior art, only an alleged value that the Examiner admits falls below it. Id. We understand Appellant’s essential position is that Titanium Metals does not support the rejection because the Examiner does not find that Shires Appeal 2020-003050 Application 14/959,542 20 discloses a value of the hydraulic diameter below the claimed value of 1.5 and a value above the claimed value. We disagree with Appellant’s reliance on Patel. First, in In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018), the court addressed the argument “that an examiner can only find a prima facie case of obviousness if there is an overlap between the claimed range and prior art range, relying on our nonprecedential decision in [Patel].” Emphasis added. The court disagreed, stating “[t]he nonbinding holding in Patel, however, does not stand for the proposition . . . that a claimed range and prior art range must overlap for an examiner to find a prima facie case.” Id. (emphasis added). In Brandt, the claim at issue recited a range of “less than 6 pounds per cubic feet,” whereas the prior art range was “between 6 lbs/ft3 and 25 lbs/ft3.” Brandt, 886 F.3d at 1177. The court determined that “[t]his is a simple case in the predictable arts that does not require expertise to find that the claimed range . . . and the prior art range . . . are so mathematically close that the examiner properly rejected the claims as prima facie obvious.” Id. (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). According to Peterson, “a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties.” Peterson, 315 F.3d at 1329 (citing Titanium Metals, 778 F.2d at 783); see also MPEP § 2144.05(I) (“a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”) (citing Titanium Metals, 778 F.2d at 783). Here, the claimed range of “greater than or equal to 1.5 inches (3.8 centimeters)” and the calculated value of 1.47 inches (without rounding) are Appeal 2020-003050 Application 14/959,542 21 close but do not overlap. “‘[W]hen the difference between the claimed invention and the prior art is the range or value of a particular variable,’ then a patent should not issue if ‘the difference in range or value is minor.’” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1321 (Fed. Cir. 2004) (citing Haynes Int’l v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993)). In cases “where the difference between the claimed invention and the prior art is some range or other variable within [a claim],” “the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellant does not establish with persuasive argument or evidence that a person skilled in the art would not have expected the calculated value of 1.47 inches to provide the same properties as the claimed range, e.g., a value of 1.5 inches. In the Appeal Brief, Appellant does not explain persuasively what properties would be provided by the claimed range. The Examiner submits that Appellant’s disclosure does not describe how the claimed hydraulic diameter range minimizes icing concerns or reduces the likelihood of icing. Ans. 13-14. We agree with the Examiner that the disclosure does not show a difference in properties, much less criticality of the claimed range. For the above reasons, Appellant does not apprise us of error in the Examiner’s second alternative obviousness rejection of claim 21 over Shires as evidenced by Lindell. Thus, we sustain this rejection. Appeal 2020-003050 Application 14/959,542 22 Claims 1-5, 8, 11, 13-15, 21, and 22 as Unpatentable over Coplin as Evidenced by Lindell, Shires, Robichaud, and the Continuity Equation Claims 1-5, 8, 11, 13-15, 21, and 22 - Optimization of Result-Effective Variable In rejecting claim 1, the Examiner finds that Coplin discloses, in part, an inner core housing, a splitter housing, and a plurality of stator vanes (radially extending vanes 90). Final Act. 20-22 (see Examiner’s annotated versions of Figs. 1 and 2 of Coplin). Relying on Lindell’s equation, the Examiner finds that these elements define a flow area (“open space between adjacent stator vanes”) having a hydraulic diameter. Id. at 21. The Examiner concedes that Coplin is “silent on said hydraulic diameter of the flow area being (Claim 1) greater than or equal to 1.5 inches (3.8 centimeters) and (Claim 2) greater than or equal to 1.7 inches (4.3 centimeters).” Id. at 22. The Examiner makes similar findings for claims 13 and 14 (id. at 28-30) and claims 21 and 22 (id. at 34-35). To address the deficiencies of Coplin and Lindell as to claims 1, 2, 13, 14, 21, and 22, the Examiner again relies on the combination of Shires, Lindell, Robichaud, and the Continuity Equation to modify Coplin, as discussed above for the rejection of claims 21 and 22 over Shires as evidenced by Lindell, Robichaud, and the Continuity Equation based on the routine optimization rationale. Id. at 22-27, 30-34, and 35-39. The Examiner concludes that it would have been obvious to optimize the hydraulic diameter of the flow area disclosed by Coplin to meet the values recited in claims 1, 2, 13, 14, 21, and 22. For the same reasons as discussed above, the Examiner has not established with sufficient evidence that it would have been obvious to Appeal 2020-003050 Application 14/959,542 23 optimize the hydraulic diameter of the flow area disclosed by Coplin to meet the limitations recited in claims 1, 13, and 21. Thus, we do not sustain the rejection of claims 1, 13, and 21, and claims 2-5, 8, 11, 14, 15, and 22 depending from claim 1, 13, or 21, as unpatentable over Coplin as evidenced by Lindell, Shires, Robichaud, and the Continuity Equation based on the Examiner’s routine optimization rationale. Claims 1 and 21 - Closeness of Claimed and Prior Art Ranges The Examiner presents a second obviousness rejection of claims 1 and 21 premised on the assumption that 1.47 would not have been rounded up to 1.5. Ans. 6-7. Particularly, the Examiner points out that claim 1, like claim 21, recites that “‘[the] hydraulic diameter of the flow area being greater than or equal to 1.5 inches (3.8 centimeters).’” Id. at 6. The Examiner explains that, in contrast, “[c]laim 13 was amended to recite ‘hydraulic diameter is greater than 1.5 inches (3.8 centimeters).’” Id. We understand that the rejection of claims 1 and 21 applies the combination of Coplin as evidenced by Lindell, Shires, Robichaud, and the Continuity Equation, and is based on the closeness of the claimed and prior art values.5 In the Reply Brief, Appellant does not apprise us of error in the rejection. Thus, we sustain the rejection of claims 1 and 21 over Coplin as evidenced by Lindell, Shires, Robichaud, and the Continuity Equation based on the closeness of values rationale, for the reasons discussed above for the rejection of claim 21 over Shires as evidenced by Lindell, Robichaud, and the Continuity Equation based on this same rationale. 5 The Examiner does not indicate clearly whether this rejection applies to claims 2-5, 8, 11, and 22, which depend from claim 1 or 21. Appeal 2020-003050 Application 14/959,542 24 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13-15 101 Statutory Double Patenting (Feulner) 13-15 1-5, 13-15 Non-Statutory Double Patenting (Feulner) 1-5, 13-15 21, 22 Non-Statutory Double Patenting (Feulner) 21, 22 21, 22 102(b) Shires, Lindell 21 22 21, 22 103(a) Shires, Lindell, Robichaud, Continuity Equation 21 22 1-5, 8, 11, 13-15, 21, 22 103(a) Coplin, Lindell, Shires, Robichaud, Continuity Equation 1, 21 2-5, 8, 11, 13-15, 22 Overall Outcome 1-5, 13-15, 21, 22 8, 11 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 IN PART