United Technologies Corporation

Patent Trials and Appeals Board

Jul 31, 2020

15039945 - (D) (P.T.A.B. Jul. 31, 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.
15/039,945 05/27/2016 Scott D. Lewis 67097-2777PUS1;
74364US02
1039
54549 7590 07/31/2020
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
07/31/2020 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 SCOTT D. LEWIS, ATUL KOHLI, and
THOMAS J. PRAISNER
Appeal 2020-001090
Application 15/039,945
Technology Center 3700
Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and
BRETT C. MARTIN, Administrative Patent Judges.
GREENHUT, 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, 2, 4–10, and 12–16. See Final Act. 1.
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. Appellant identifies the real party in interest as Raytheon
Technologies Corporation. Appeal Br. 1.
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Application 15/039,945
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CLAIMED SUBJECT MATTER
The claims are directed to gas turbine engine components and
mateface surfaces. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An array of components in a gas turbine engine, comprising:
first and second structures respectively include first and
second surfaces that are arranged adjacent to one another to
provide a gap, the first and second surfaces respectively have
first and second rounded edges at the gap that are arranged in
staggered relationship relative to one another; and
wherein the first and second surfaces are misaligned with
one another in the radial direction, the gap extends a generally
axial length, and the axial length includes first and second
lengths, the first and second lengths each in a range of 30-70%
of the axial length, the first rounded edge arranged along the first
length, and the second rounded edge arranged along the second
length.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Anderson US 6,261,053 B1 July 17, 2001
REJECTIONS
Claims 13–16 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 4.
Claims 13–16 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 5.
Claims 1, 2, 4–10, and 12–16 are rejected under 35 U.S.C. § 103 as
being unpatentable over Anderson. Final Act. 7.
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OPINION
§ 112
Appellant reproduces the text of claims 13 and 14 including non-
entered amendments. It is not clear whether Appellant is attempting to argue
the claims would satisfy the requirements of § 112 if the amendment were
entered. This is a matter on which we do not opine. See 37 C.F.R.
§ 41.50(a)(1) (“The Board, in its decision, may affirm or reverse the decision
of the examiner in whole or in part on the grounds and on the claims
specified by the examiner.”).
The basis for the Examiner’s § 112 rejections is the potential
inconsistency with the Specification if the language of representative claim
132 “each of the first and second structures is one of a blade outer air seal or
a platform” permits the first and second structures to be different ones of
each of the listed elements. Final Act. 4–6. Although such inconsistencies
are typically dealt with under the first paragraph of § 112 (see MPEP
§ 2163.01 (“If the examiner concludes that the claimed subject matter is not
supported [described] in an application as filed, this would result in a
rejection of the claim on the ground of a lack of written description . . . .”);
MPEP § 2174), it is not necessarily inappropriate to also reject claims under
the second paragraph of § 112 for such a defect (see MPEP § 2173.03 (citing
In re Cohn, 438 F.2d 989, 993 (CCPA 1971)) (“A claim, although clear on
its face, may also be indefinite when a conflict or inconsistency between the
claimed subject matter and the specification disclosure renders the scope of
the claim uncertain as inconsistency with the specification disclosure or

2 See 37 C.F.R. § 41.37(c)(1)(iv).
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Application 15/039,945
4
prior art teachings may make an otherwise definite claim take on an
unreasonable degree of uncertainty.”)).
Appellant argues that the language of the claim does not permit the
Examiner’s so-called “mix-or-match” scenario. Appeal Br. 3. However, in
making this assertion, Appellant does not direct our attention to any specific
language that precludes such an interpretation in the claims actually rejected,
as opposed to the claims of the non-entered amendment. Appellant does not
dispute that under the Examiner’s interpretation the claims encompass
subject matter inconsistent with the Specification. Appellant argues we
should limit the scope of possibilities presented by the express language of
the claim to those disclosed in Appellant’s Specification. Appeal Br. 3.
“‘[R]eading a claim in light of the specification,’ to thereby interpret
limitations explicitly recited in the claim, is a quite different thing from
‘reading limitations of the specification into a claim,’ to thereby narrow the
scope of the claim by implicitly adding disclosed limitations which have no
express basis in the claim.” In re Prater, 415 F.2d 1393, 1404 (CCPA 1969).
Appellant is proposing we do the latter and we must decline. Our reviewing
court has repeatedly “cautioned against reading limitations into a claim from
the preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification.” In re
American Academy of Science Tech Center, 367 F.3d 1359, 1369 (Fed. Cir.
2004). “That a device will only operate if certain elements are included is
not grounds to incorporate those elements into the construction of the
claims.” Markem-Imaje Corp. v. Zipher Ltd., 657 F.3d 1293, 1301 (Fed. Cir.
2011). This is even truer during prosecution of a pending application before
the PTO because the mode of claim construction differs from that of
litigation. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The process of
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Application 15/039,945
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patent prosecution is an interactive one, where claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed. Id. “An essential purpose of patent examination is
to fashion claims that are precise, clear, correct, and unambiguous. Only in
this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.” Id. at 322. In prosecution before the PTO
“it is the applicants’ burden to precisely define the invention, not the
PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Accordingly,
the Examiner was justified in requiring the Appellant to resolve this
ambiguity during prosecution while Appellant has the opportunity to do so.
See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008); accord In re
Packard, 751 F.3d 1307 (Fed. Cir. 2014). Thus, the rejections under 35
U.S.C. §§ 112(a) and (b) are affirmed.

§ 103
Claim 1 is representative under 37 C.F.R. § 41.37(c)(1)(iv). Appellant
takes issue with the Examiner’s reliance on Anderson’s figures and In re
Aller (220 F.2d 454, 456 (CCPA 1955) (discussed in MPEP § 2144.05)) in
reaching the conclusion that the subject matter of claim 1, including that
defined by the “30–70% of the axial length” limitation regarding the
rounded lengths, would have been obvious.
Appellant contends that the Examiner has not shown that the length
parameter the Examiner concludes would have been obvious to optimize
was known to be a result-effective variable. Appeal Br. 4. This is plainly
incorrect. Anderson clearly indicates to the skilled artisan that the chosen
location and length of beveling or rounding depicted in figures 7 and 8 of
Anderson is a direct consequence of the flow trajectory illustrated in figure 3
Appeal 2020-001090
Application 15/039,945
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of Anderson. The lengths of beveled regions 70 and 74 are clearly chosen to
correspond to the lengths A–B and C–D respectively, because the bevels
improve the stability of the boundary layer within the flow trajectory, which,
in turn, decreases the thermal loading, and increases the service life of the
segments. Anderson col 1, l. 63–col. 2, l. 25; col. 7, l. 40–col. 8, l. 54. As the
Examiner correctly points out, Anderson clearly contemplated varying these
lengths accordingly. Ans. 5 (citing Anderson col. 2, ll. 15–17).
Appellant argues that the Examiner’s reliance on the figures was also
improper. Appeal Br. 5 (citing MPEP § 2125). As the Examiner correctly
points out, although precise dimensions or ratios typically cannot be
deduced from patent drawing alone because “[p]atent drawings are not
working drawings. . . [this does] not mean that things patent drawings show
clearly are to be disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA
1972). See Ans. 5 (citing MPEP § 2125; In re Aslanian, 590 F.2d 911
(CCPA 1979)). Both lengths of the beveled areas depicted in figures 7 and 8
of Anderson clearly fall within the broadly recited range of 30–70% of the
gap’s axial length. Precision measurement of Anderson’s figures is not
required to make this determination. It is plainly suggested to the skilled
artisan reviewing Anderson.
Appellant further argues that the recited range endpoints themselves
are not disclosed or suggested by Anderson. Typically, absent some
compelling reasons otherwise, a recitation of a range is considered satisfied
by a prior-art example falling within that range. See MPEP § 2131.03. If, as
here, Anderson depicts bevel lengths in the neighborhood of 40–50% of the
gap length, Appellant’s claim would cover Anderson’s device. “What
matters is the objective reach of the claim. If the claim extends to what is
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Application 15/039,945
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obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 419 (2007).
Lastly, Appellant argues “the Figures do not demonstrate that the
claimed length in relation to the overall axial length as a parameter to be
optimized in the prior art.” Reply Br. 1. In the context of analyzing the
obviousness of a machine or apparatus claim, like claim 1, under 35 U.S.C.
§ 103, the ultimate question is not the obviousness of the particular method
or technique used to arrive at the optimized subject matter. Nor is the
question the particular language chosen to define the claimed subject matter.
Again, “[w]hat matters is the objective reach of the claim.” KSR, 550 U.S. at
419. The Examiner, citing Anderson, demonstrates that it was known to
optimize the bevel length. That optimization does, or would more likely than
not, yield subject matter having rounded edges with lengths falling within
Appellant’s recited length ratios. Such findings and conclusions are not
undone simply because neither the Examiner nor Anderson chose to
expressly define the beveled or rounded lengths specifically in terms of a
ratio to the segments’ gap length.
For the foregoing reasons, we sustain the Examiner’s obviousness
rejection.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
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Application 15/039,945
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
13–16 112(a) Written
Description
13–16
13–16 112(b) Indefinite 13–16
1, 2, 4–10,
12–16
103 Anderson 1, 2, 4–10,
12–16

Overall
Outcome
1, 2, 4–10,
12–16

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