United Technologies Corporation

Patent Trials and Appeals Board

Feb 26, 2020

14793119 - (D) (P.T.A.B. Feb. 26, 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.
14/793,119 07/07/2015 Frederick M. Schwarz 81845US1;
67097-3240PUS1
5446
54549 7590 02/26/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
AMAR, MARC J
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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 FREDERICK M. SCHWARZ and PAUL W. DUESLER
____________

Appeal 2019-003484
Application 14/793,119
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–22. We have jurisdiction over this appeal under
35 U.S.C. § 6(b). We AFFIRM IN PART.
In explaining our Decision, we refer to the Specification filed July 7,
2015 (“Spec.”), the Final Office Action mailed January 12, 2018 (“Final
Act.”), the Supplementary Appeal Brief filed October 1, 2018 (“Appeal

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies United Technologies Corp. as the real party-in-
interest. Appeal Br. 1.
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Br.”), the Examiner’s Answer mailed February 4, 2019 (“Ans.”), and the
Reply Brief filed March 29, 2019 (“Reply Br.”).
SUMMARY OF THE INVENTION
Appellant’s claimed invention relates to turbofan engines. Spec. ¶ 1.
Claims 1 and 18 are independent. Claim 1, reproduced below from page 9
(Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject
matter:
1. A gas turbine engine comprising:
a fan bypass duct defined between a fan nacelle and core
cowl of an engine core;
the engine core including a cooled cooling air system
configured to receive cooling air from a primary flowpath bleed
within the engine core and configured to provide cooled cooling
air to at least one component within the engine core, the cooled
cooling air system further including a cold air modulator having
a first position, a second position, and at least one intermediate
position between the first and second positions;
the cooled cooling air system including an air-air heat
exchanger; and
a controller controllably connected to the cold air
modulator and configured to control a position of said cold air
modulator based on at least one engine operating condition.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Vermejan US 5,269,135 Dec. 14, 1993
Nichols US 2004/0107702 A1 June 10, 2004
Mowill US 2006/0021354 A1 Feb. 2, 2006
Schwarz US 2008/0028763 A1 Feb. 7, 2008
Richards US 2008/0253881 A1 Oct. 16, 2008
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Porte US 2009/0007567 A1 Jan. 8, 2009
Lo US 2013/0145744 A1 June 13, 2013
Suciu US 2013/0192263 A1 Aug. 1, 2013
Fletcher US 2014/0341704 A1 Nov. 20, 2014
REJECTIONS2
I. Claims 4–10, 19, and 20 stand rejected under 35 U.S.C. § 112(b) as
being indefinite.
II. Claims 1, 4, and 8 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Fletcher.
III. Claims 9 and 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fletcher and Mowill.
IV. Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Fletcher and Nichols.
V. Claim 22 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Fletcher and Schwarz.
VI. Claims 1–8, 12, 17, and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lo and Fletcher.
VII. Claims 13 and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lo, Fletcher, and Vermejan.
VIII. Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lo, Fletcher, Vermejan, and Richards.
IX. Claim 16 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lo, Fletcher, and Suciu.

2 A rejection of claim 22 under 35 U.S.C. § 112(b) was withdrawn by the
Examiner. Final Act. 3–4; Ans. 3.
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X. Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lo, Fletcher, and Mowill.
XI. Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Lo, Fletcher, and Nichols.
XII. Claims 1 and 11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Porte and Fletcher.
ANALYSIS
Rejection I – Indefiniteness
Claims 4–10
The Examiner determines that the recitation of “a cold air modulator”
in claim 4 renders the claim indefinite because “it is not clear if the
modulator of claim 4 refers to the cold air modulator of claim 1, or is a
second cold air modulator or different modulator [altogether].” Final Act. 3.
Appellant argues “that the claim is not unclear, and one of skill in the art,
having read the specification, would understand that the cold air modulator
of both claim 4 and of claim 1 is a singular component.” Appeal Br. 4. We
are not persuaded by this argument.
Claim 1, from which claim 4 depends, recites “the cooled cooling air
system further including a cold air modulator having a first position, a
second position, and at least one intermediate position between the first and
second positions.” Appeal Br. 9 (Claims App.). Claim 4 further recites that
“the cooled cooling air system includes a cold air modulator configured to
regulate a flow of cold air to the heat exchanger.” Id. We agree with the
Examiner that it is unclear if “a cold air modulator,” as recited in claim 4,
refers to the cold air modulator recited in base claim 1 or requires the gas
turbine engine to include a second cold air modulator. See Final Act. 3.
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Here, in apparent conflict with Appellant’s otherwise seemingly reasonable
assertion that “one of skill in the art, having read the specification, would
understand that the cold air modulator of both claim 4 and of claim 1 is a
singular component” (Appeal Br. 4), the use of the article “a” in claim 4,
rather than “the,” to precede “cold air modulator” implies that it is a separate
element from the cold air modulator recited in claim 1. We note that, where
a claim lists elements separately, the implication is that such elements
constitute distinct components. Becton, Dickinson & Co. v. Tyco Healthcare
Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair
Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)).
Accordingly, for the above reasons, we sustain the Examiner’s
indefiniteness rejection of claims 4–10.
Claims 19 and 20
Each of claims 19 and 20 recites, in relevant part, “the engine
controller.” Appeal Br. 11 (Claims App.). The Examiner determines that
“[t]here is insufficient antecedent basis for this limitation in the claim[s].”
Final Act. 3. The Examiner explains that “the only controller previously set
forth in the claims is a controller for the cold air modulator.” Ans. 4.
Appellant argues “that the claim is not indefinite because one of skill in the
art would have understood that the controller being reference[d] is the
previously referenced controller.” Appeal Br. 4. We are unpersuaded by
Appellant’s argument.
Independent claim 1, from which claims 19 and 20 indirectly depend,
recites “a controller controllably connected to the cold air modulator and
configured to control a position of said cold air modulator based on at least
one engine operating condition.” Appeal Br. 9 (Claims App.). Given that
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claims 19 and 20 use different terms (i.e., “engine controller”) than claim 1
(i.e., “controller”), the terms are presumed to have different meanings, and
Appellant has not set forth persuasive evidence to the contrary. See CAE
Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317
(Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must
presume that the use of . . . different terms in the claims connotes different
meanings.”). Moreover, the Examiner explains, “in the art, an ‘engine
controller’ controls numerous parts of the engine, such as fuel valves
supplying fuel between the fuel supply and the combustor, and inlet guide
vanes regulating air flow into the compressor.” Ans. 4. In other words, the
term “engine controller” recited in claims 19 and 20 appears to connote a
more comprehensive component than the cold air modulator “controller”
recited in claim 1. In short, “the engine controller” recited in claims 19 and
20 appears to refer to a separate “controller” than that recited in base claim
1, and, thus, we agree with the Examiner that claims 19 and 20 are
indefinite.
Accordingly, for the above reasons, we sustain the Examiner’s
indefiniteness rejection of claims 19 and 20.
Rejections II and IV–XII – Anticipation and Obviousness
Appellant does not present any arguments contesting the Examiner’s
rejections of claims 1–8, 10–20, and 22 under 35 U.S.C. §§ 102(b) and 103
(Rejections II and IV–XII). See Appeal Br. 4–7 (presenting arguments only
as to the rejection of claims 4–10, 19, and 20 under 35 U.S.C. § 112(b)
(Rejection I) and the rejection of claims 9 and 21 under 35 U.S.C. § 103
(Rejection III)). Accordingly, we summarily sustain Rejections II and IV–
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XII. 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 does not contest a ground of rejection); see
also 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office.”).
Rejection III – Obviousness based on Fletcher and Mowill
In rejecting claim 21, which depends from independent claim 1, the
Examiner finds that Fletcher “teaches the controller 52 is configured to
modulate the flow of cold air (from fan duct 32) to the heat exchanger 42.”
Final Act. 7. The Examiner also finds that “Fletcher fails to explicitly teach
the at least one operating condition is one of an engine power and a
combination of engine rotor speed and ambient temperature.” Id. (boldface
omitted). However, the Examiner finds that “Mowill teaches that it is well
known in the art to control air valves associated with gas turbine bleed air
systems based on an engine operating condition of engine power level.” Id.
(citing Mowill ¶ 30). According to the Examiner, “Mowill teaches the
claimed engine power parameter and further teaches a relationship between
engine power and engine operating temperature,” namely “that ‘engine
controller 40 is programmed to control valve 46 to divert part of the
compressed air flow to bypass combustor 16 and turbine 18 . . . during low
power operations.’” Ans. 5 (quoting Mowill ¶ 26) (alteration in original).
The Examiner determines that it would have been obvious
that [the] controller of Fletcher is capable of controlling the
valve 48 (i.e., for controller 52 to modulate valve 48 in order to
control the flow of cold fan air from duct 32 into heat
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exchanger 42) based on additional engine operating parameters
such as engine power level for the purpose of providing [the]
proper amount of cooling air from Fletcher[’s] fan duct to
thereby provide the correct temperature of cooling air to
Fletcher[’s] heat exchanger, thereby preventing damage to the
engine components, and increasing their operating life.
Final Act. 7–8 (citing Fletcher ¶ 3). The Examiner rejects claim 9 in a
similar manner. Id. at 6–7.
Appellant argues that Mowill fails to teach or suggest modulating the
flow of cold air to the heat exchanger as a function of engine power. Appeal
Br. 5–6. In particular, Appellant asserts that
the air control being discussed in Mowill is directed toward air
valves controlling the mixture of air and fuel in the combustor.
Mowill includes no teaching related to the provision of air to a
cooled cooling air system, much less one that would suggest to
one of skill in the art that it would be beneficial to control an air
modulator for providing air to a heat exchanger based on at
least one engine operating condition.
Id. at 5 (footnote omitted). We agree that the Examiner has not set forth a
sustainable case of obviousness.
Mowill teaches, with reference to Figure 1A, that “engine
controller 40 is programmed to control valve 46 to divert part of the
compressed air flow to bypass combustor 16 and turbine 18, such as directly
to the atmosphere during certain engine operating conditions, usually during
low power operations.” Mowill ¶ 26. Mowill teaches that “[e]ngine
controller 40 also is programmed to control bleed valve 46 in accordance
with the engine power level, and possibly other conditions, to regulate the
occurrence and the amount of bleed air diverted from the dilution air flow,
as one skilled in the art would understand.” Id. ¶ 30. Mowill also discloses
that “combustor 16 . . . is configured to receive a separate or second portion
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of compressed air at combustor exit region 16a for diluting and cooling the
combustion gases prior to admission to turbine 18.” Id. ¶ 20. “[S]ome or all
of this dilution air may be used to convectively cool a portion or all of the
exterior walls of combustor 16 prior to entering combustor exit 16a.” Id.
¶ 21.
The Examiner takes the position that a “relationship between engine
power and engine operating temperature is supported by Mowill’s teaching
. . . of diverting cooling air away from the combustor at low power settings
when less cooling is required.” Ans. 6. However, the Examiner does not
point to, nor do we discern, adequate disclosure in Mowill that engine
controller 40 controls valve 46 to divert cooling air when less cooling is
required. In this regard, Appellant persuasively asserts that Mowill’s
“diversion at low power is to prevent pressure drops (See Mowill, paragraph
27), not because of a decreased magnitude of cooling required.” Reply
Br. 3. In other words, the Examiner’s finding as to the disclosure of Mowill
lacks adequate evidentiary support, and the Examiner’s conclusion of
obviousness is based on this inadequately supported finding. See Ans. 5–7.
For the above reasons, we do not sustain the rejection of claim 21 as
unpatentable over Fletcher and Mowill. Because the Examiner relies on the
same deficient findings in rejecting claim 9 (see Final Act. 6–7), we also do
not sustain the rejection of claim 9 as unpatentable over Fletcher and
Mowill.
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CONCLUSION
In summary,
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4–10, 19, 20 112(b) Indefiniteness 4–10, 19, 20
1, 4, 8 102(a)(1) Fletcher 1, 4, 8
9, 21 103 Fletcher, Mowill 9, 21
10 103 Fletcher, Nichols 10
22 103 Fletcher, Schwarz 22
1–8, 12, 17,
18
103 Lo, Fletcher 1–8, 12, 17,
18

13, 15 103 Lo, Fletcher, Vermejan 13, 15
14 103 Lo, Fletcher,
Vermejan, Richards
14
16 103 Lo, Fletcher, Suciu 16
19 103 Lo, Fletcher, Mowill 19
20 103 Lo, Fletcher, Nichols 20
1, 11 103 Porte, Fletcher 1, 11
Overall Outcome 1–20, 22 21
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