UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Jul 15, 2020

15030128 - (D) (P.T.A.B. Jul. 15, 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.
15/030,128 04/18/2016 Tuan David Vo 73322US02;
67097-2691PUS1
7184
54549 7590 07/15/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
HTAY, AYE SU MON
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
07/15/2020 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 TUAN DAVID VO and GEORGE E. ALLEN
____________

Appeal 2020-000654
Application 15/030,128
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Dec. 31, 2018, hereinafter “Final
Act.”) rejecting claims 1–21.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. United Technologies Corporation is identified as the real
party in interest in Appellant’s Appeal Brief (filed July 22, 2019, hereinafter
“Appeal Br.”). Appeal Br. 1.
2 The Examiner has withdrawn the rejection under 35 U.S.C. § 103 of claims
22 and 23 as unpatentable over Howard and Durocher (US 2013/0078080
A1, published Mar. 28, 2013). Examiner’s Answer (dated Oct. 4, 2019,
hereinafter “Ans.”) 3.
Appeal 2020-000654
Application 15/030,128
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SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).

INVENTION
Appellant’s invention relates to a structure and method for supporting
sensors in a gas turbine engine. Spec. para. 2.
Claims 1, 13, and 19 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An integrated support and sensor assembly, comprising:
a longitudinal member to support an inner duct
relative to an outer duct, wherein a radially outer end of
the longitudinal member is fixedly attached to the outer
duct; and
a sensor received within a bore of the longitudinal
member and configured to collect a measurement from a
flow path bounded by the inner duct.

REJECTIONS

I. The Examiner rejects claims 1–14 and 18–21 under 35 U.S.C.
§ 102(a)(1) as anticipated by Howard.3
II. The Examiner rejects claim 15 under 35 U.S.C. § 103 as being
unpatentable over Howard and Juh.4
III. The Examiner rejects claim 16 under 35 U.S.C. § 103 as being
unpatentable over Howard and Adamson.5

3 Howard et al., US 2005/0152433 A1, published July 14, 2005.
4 Juh, US 2012/0107095 A1, published May 3, 2012.
5 Adamson et al., US 4,936,748, issued June 26, 1990.
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Application 15/030,128
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IV. The Examiner rejects claim 17 under 35 U.S.C. § 103 as being
unpatentable over Howard and Smith.6

ANALYSIS
Rejection I
Each of independent claims 1 and 19 requires, inter alia, “a radially
outer end of the longitudinal member is fixedly attached to the outer duct.”
Appeal Br. 9, 11 (Claims App.). Similarly, independent claim 13 recites, “a
radially outer end of the longitudinal member is fixedly attached to the
engine case.” Id. at 10.
The Examiner finds that Howard discloses that “(radially outer
portion of the mounting probe assembly 80; 306, 330, 318) of the
longitudinal member (80, 130 adapter post, 300, 318, 330) is fixedly
attached to the outer duct [122].” Final Act. 3–4 (citing Howard, para. 18,
Fig. 3) (emphasis added). According to the Examiner, Howard’s
radially outer end of the instrument probe mounting assembly
80 (i.e. longitudinal member) is fixedly attached to the outer
duct [122 because] . . . it can be clearly seen in Figure 3 that
part 318 of the assembly is fixedly attached to the outer duct
(122, 126) via fasteners 336 and 358.
Advisory Action (dated Apr. 4, 2019, hereinafter “Adv. Act.”) 2.
Appellant argues that Howard fails to disclose the disputed limitations
noted above because Howard discloses “differential movement” between
adapter post 130 and seal-ring adapter plate 300 via surface 332 and seal
312, which maintain an “axially” and a “radially slidable” pressure seal
between fan duct 124 and probe head interior 334. See Appeal Br. 3–4
(citing Howard, paras, 18, 20, 21).

6 Smith et al., US 5,185,996, issued Feb. 16, 1993.
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Application 15/030,128
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In response, the Examiner takes the position that because “part 318 of
the assembly is fixedly attached to the outer duct (122, 126) via fasteners
336 and 358,” Howard discloses that “the radially outer end of the
instrument probe mounting assembly 80 (i.e. longitudinal member) is fixedly
attached to the outer duct (126, 122) . . . .” Ans. 5. The Examiner explains
that “the assembly as a whole is constrained or fixedly attached to the outer
duct [122] even if the internal portions such as 312 and 306 may be capable
of translating along the longitudinal axis 320.” Adv. Act. 2.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990) (alteration in original) (citing In re Sneed, 710 F.2d
1544, 1548 (Fed. Cir. 1983). This means that the words of the claim must be
given their plain meaning unless the plain meaning is inconsistent with the
specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). An
appropriate definition of “fixed,” in the context of the claim language
“fixedly attached,” is “securely placed or fastened : STATIONARY.”7 This
definition is consistent with Appellant’s Specification, which describes “[a]
radially outer end 126 of the longitudinal member 114 . . . secured to a boss
130 of the engine case 100” via “threaded area 134.” Spec. para. 52. As
such, in light of Appellant’s Specification and the customary and ordinary
meaning of the term “fixed,” we construe the phrase “fixedly attached” to

7 See https://www.merriam-webster.com/dictionary/fixed (last visited July 2,
2020).
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Application 15/030,128
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mean a securely fastened attachment, that is, a stationary (non-movable)
attachment.
We appreciate that Howard’s body 318 of seal-ring adapter plate 300
is “fixedly attached” to boss 126 of outer duct 122 via fasteners 336. See
Howard, para. 18, 20, Fig. 3. However, the Examiner does not rely only on
body 318 of seal-ring adapter plate 300 as the claimed “radially outer end of
the longitudinal member,” but rather relies on the combination of body 318
with extending cylindrical wall 330 of seal-ring adapter plate 300 and
wrench-flat portion 306. See Final Act. 3–4.
“[T]here is no anticipation ‘unless all of the same elements are found
in exactly the same situation and united in the same way ... in a single prior
art reference’.” Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888,
894 (Fed. Cir. 1984). In this case, Howard discloses that inner duct 92
(outer casing) and outer duct 122 (fan casing) “move relative to each other,”
wherein “such relative motion may be absorbed by surface 332 and seal
312” that form an “axially slidable” and a “radially slidable” pressure barrier
(seal) between fan duct 124 and interior 334 of probe head 134. Howard,
paras. 18, 20, 21, Fig. 3. As such, a person of ordinary skill in the art would
readily acknowledge that because seal 312 is installed within groove 310 of
adapter post 130, when seal 312 slides along surface 322, as discussed
supra, wrench-flat portion 306 of adapter 130 slides along surface 322 as
well. See Howard, Fig. 3; see also In re Jacoby, 309 F.2d 513, 516 (CCPA
1962) (An artisan must be presumed to know something about the art apart
from what the references disclose.). Hence, although body 318 with
extending cylindrical wall 330 of seal-ring adapter plate 300 is “fixedly
attached” to boss 126 of outer duct 122 via fasteners 336, wrench-flat
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Application 15/030,128
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portion 306 is not “fixedly attached” to outer duct 122, but is rather axially
slidable with respect thereto.
Accordingly, even though one element of Howard’s “radially outer
end of the longitudinal member [80],” i.e., body 318 with extending
cylindrical wall 330 of seal-ring adapter plate 300, is “fixedly attached” to
outer duct 122, another element, i.e., wrench-flat portion 306, is not. Hence,
not all elements which the Examiner finds constitute Howard’s “radially
outer end of the longitudinal member [80],” i.e., body 318 with extending
cylindrical wall 330 of seal-ring adapter plate 300 and wrench-flat portion
306, are arranged in the same way, i.e., “fixedly attached,” to an outer duct
(engine case), as required by independent claims 1, 13, and 19. Therefore,
we do not sustain the rejection under 35 U.S.C. § 102(a)(1) of independent
claims 1, 13, and 19, and their respective dependent claims 2–12, 14, 18, 20,
and 21, as anticipated by Howard.

Rejections II–IV
The Examiner’s use of the disclosures of Juh, Adamson, and Smith
does not remedy the deficiency of Howard discussed supra. See Final Act.
9–14. Therefore, for the same reasons discussed above we also do not
sustain Rejections II–IV.

NEW GROUND OF REJECTION
Claims 1, 13, and 19 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Howard.
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Howard discloses a gas turbine engine assembly including an outer
duct 122 (fan casing),8 i.e., engine case, an inner duct 92 (outer casing), i.e.,
intra-turbine duct, received within inner duct 92, a longitudinal member 80
(instrument probe mounting assembly) supporting inner duct 92 relative to
outer duct 122, and a sensor 136 inserted within bore 309 of longitudinal
member 80. Howard, paras. 12, 15, 16, 18, 19, Figs. 2, 3. Howard further
discloses that longitudinal member 80 has “a radially outer end” (adapter
plate 300) that is “fixedly attached” to boss 126 of outer duct 122 via
fasteners 336. See id., paras. 18, 19, 20, Fig. 3. Furthermore, Howard
discloses that sensor 136 measures a flow path bound by or radially inside
inner duct 92 (within outer flow channel 94), i.e., intra-turbine duct. See id.,
Fig. 2. Accordingly, we determine that Howard discloses all the limitations
of claims 1, 13, and 19, and thus, anticipates these claims.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.

8 Parenthetical nomenclature refers to Howard.
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Application 15/030,128
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CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed New
Ground
1–14,
18–21
102(a)(1) Howard 1–14,
18–21

15 103 Howard, Juh 15
16 103 Howard, Adamson 16
17 103 Howard, Smith 17
1, 13, 19 102(a)(1) Howard 1, 13, 19
Overall
Outcome
1–21 1, 13, 19

This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Section 41.50(b) also provides (emphasis added):
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
[E]xaminer, in which event the prosecution will be remanded to
the [E]xaminer. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
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Application 15/030,128
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[E]xaminer, overcomes the new ground of rejection designated
in the decision. Should the [E]xaminer reject the claims,
appellant may again appeal to the Board pursuant to this
subpart.

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and
state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th ed.
2018).
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).

REVERSED
37 C.F.R. § 41.50(b)