Daniel G. Edwards

Patent Trials and Appeals Board

Dec 23, 2019

14734066 - (D) (P.T.A.B. Dec. 23, 2019)

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.
14/734,066 06/09/2015 Daniel G. Edwards 2349-0002 1017
28078 7590 12/23/2019
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
EXAMINER
NGUYEN, ANDREW H
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
12/23/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL G. EDWARDS
____________

Appeal 2018-007420
Application 14/734,066
Technology Center 3700
____________

Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–7, 9, 10, and 12–15.2 We have jurisdiction over
the appeal 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 Rolls-Royce North
American Technologies, Inc. Appeal Br. 2.
2 Claims 8 and 11 are cancelled. Appeal Br. 17, 19 (Claims App.).
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Application 14/734,066

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THE CLAIMED SUBJECT MATTER
Claims 1, 6, and 10 are independent. Claim 1 is reproduced below.
1. A turbofan engine comprising:
a fan mounted on a first shaft for rotation of the fan about
a first axis of rotation;
at least one internal gear mounted on the first shaft aft of
the fan;
a low pressure compressor located aft of the fan;
an air inlet for directing airflow into the low pressure
compressor, the air inlet located between the fan and the low
pressure compressor;
an engine core located aft of the low pressure compressor;
a low pressure turbine located aft of the engine core;
a second shaft for rotatably supporting the low pressure
turbine and low pressure compressor about a second axis of
rotation;
at least one second gear affixed to the second shaft forward
of the low pressure compressor;
wherein the at least one second gear meshes with the at
least one internal gear to drive the first shaft; and
wherein the first axis of rotation is parallel to and radially
off-set from the second axis of rotation and the air inlet is
asymmetrical to the first and second axis of rotation.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Morley US 3,121,526 Feb. 18, 1964
Marche US 2011/0314788 A1 Dec. 29, 2011

REJECTIONS
I. Claims 1–3, 6, 7, 10, 12, and 13 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Morley. Final Act. 2–3.
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II. Claims 1–7, 9, 10, and 12–15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Marche and Morley. Id. at 4–7.
OPINION
Rejection I
The Examiner finds that Morley discloses all of the limitations of
independent claims 1, 6, and 10. Final Act. 2–3. In particular, the Examiner
finds, among other things, that Morley discloses fan 14, low pressure
compressor 11, and air inlet duct 31 between fan 14 and low pressure
compressor 11. Id. at 2. The Examiner finds that “the air inlet is
asymmetrical to the first and second axis of rotation [24, 29].” Id. at 3.
The Examiner takes the position that Morley’s compressor 11 can be
considered a “low pressure compressor” because “[a] ‘low pressure
compressor’ is . . . simply a compressor that operates at a low pressure” and
“the compressor 11 of Morley may be considered a ‘low pressure
compressor’, relative to a different reference pressure (i.e.[,] some given
pressure higher than compressor 11’s operating pressure.”). Ans. 2. The
Examiner also states that “the claim does not define any other compressor to
provide a reference point for ‘low pressure’” and compressor 11 “receives
air from the fan [14] and the air inlet [31].” Final Act. 2.
The Examiner also takes the alternative position that “the
compressor 11 of Morley comprises a series of stages” and “[w]ith each
subsequent stage that the air passes, it is compressed to higher and higher
pressures” in which “[t]he first stage of compressor 11 operates at a lower
pressure than the subsequent stage, until the air reaches the last stage of
compressor 11, which operates at the highest pressure in the series of
stages.” Ans. 2. Thus, the Examiner finds that “one or more stages
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Application 14/734,066

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upstream of the last stage” of Morley’s compressor 11 can be considered a
low pressure compressor and the last stage can be considered a high pressure
compressor. Id. at 2–3.
Appellant argues that the Examiner’s reliance on Morley’s
compressor 11 as a low pressure compressor is in error, such that the
Examiner’s reliance on air inlet 31 as the claimed air inlet for directing
airflow into low pressure compressor 11 is also in error. Appeal Br. 8–10.
Appellant argues that a “low pressure compressor prepares the air for entry
into the high pressure compressor, where the air is further compressed
before introduction into the combustor” and “[t]he Examiner’s assertion that
item no. 11 in Morley is a ‘low pressure compressor’ flies in the face of that
understanding.” Id. at 8. Appellant also points out that “Morley specifically
identifies compressor 11 as the high pressure compressor, not the low
pressure compressor.” Id. at 9 (boldface omitted) (citing Morley 2:33–37;
3:3–7; Fig. 2). Appellant further argues that the recitation in the claims of
“an engine core located aft of the low pressure compressor” is indicative of
the presence of a high pressure compressor because “[i]t is . . . well known
in the art that an engine core includes a high pressure compressor.” Id. at 9–
10; see also Reply Br. 5 (“Because ‘core’ has been defined to include the
high pressure compressor, the independent claims that include ‘core’ also
include the limitation of a high pressure compressor.”).
Morley describes “[a] gas turbine engine 10 [that] comprises a high
pressure compressor 11 which is driven from a turbine 12 through a first
shaft 13,” wherein “[t]he shaft 13 is arranged to drive a low-pressure
compressor or fan 14 through a reduction gear 16.” Morley 2:28–32.
Morley further describes that “[a]ir compressed in the low pressure
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compressor or fan 14 is divided into two flow paths, one of which flows into
the high pressure compressor 11 where the air is further compressed before
passing into combustion equipment 15 where fuel is burned in the air.” Id.
at 2:33–37.
As pointed out by Appellant, Morley describes both low pressure
compressor or fan 14, as well as high pressure compressor 11. Appeal Br. 9.
Thus, Morley’s compressor 11 is considered high pressure relative to
compressor or fan 14. The Examiner’s position that compressor 11 may be
considered low pressure relative to some other given pressure that is higher
than compressor 11’s operating pressure (Final Act. 2; Ans. 2) is
unreasonable given Morley’s description of compressor 11 being high
pressure relative to fan 14. In other words, there is a reference point for
“low pressure” and “high pressure” in Morley, and Morley’s compressor 11
cannot reasonably be considered a “low pressure” compressor. As to the
Examiner’s alternative position in which the Examiner identifies Morley’s
compressor 11 as both a low pressure compressor and a high pressure
compressor by designating earlier stages of compressor 11 as a low pressure
compressor and at least one later stage of compressor 11 as a high pressure
compressor (Ans. 3), we find such a position to be unreasonable in light of
how one of ordinary skill in the art would characterize a single compressor
as either “low pressure” or “high pressure,” but not both.
Accordingly, the Examiner’s reliance on air inlet 31 as the claimed air
inlet for directing airflow into a low pressure compressor is in error.
Consequently, the Examiner has not adequately explained how Morley
discloses an air inlet for directing airflow into a low pressure compressor, in
which the air inlet is asymmetrical to the first and second axis of rotation.
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Application 14/734,066

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For the foregoing reasons, Appellant apprises us of error in the Examiner’s
determination that Morley anticipates independent claims 1, 6, and 10.
Accordingly, we do not sustain the rejection of claims 1, 6, and 10, and
claims 2, 3, 7, 12, and 13 depending therefrom, under 35 U.S.C. § 102(a)(1)
as anticipated by Morley.

Rejection II
Appellant presents arguments for independent claims 1, 6, and 10
together (Appeal Br. 11–14) and relies on the same arguments for dependent
claims 2–5, 7, 9, and 12–15 (id. at 14–15). We select claim 1 as
representative of the issues that Appellant presents in the appeal, and
claims 2–5, 7–9, and 12–15 stand or fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds, among other things, that Marche teaches “an air
inlet aft of the fan [9a] for directing airflow into the low pressure compressor
wherein . . . the air inlet is asymmetrical to the first and second axis of
rotation [la, La].” Final Act. 4. More specifically, the Examiner finds that
“nearly the entire air inlet duct is asymmetrical to both axes (the entire inner
wall of the air inlet aft of the fan have different curvatures above and below
the axes).” Id. at 7. The Examiner’s rejection indicates that “Marche is
silent as to the at least one second gear meshes with the at least one internal
gear to drive the first shaft,” but concludes that it would have been obvious
for the at least one second gear to mesh with the at least one internal gear to
drive the first shaft “as taught by Morley” because “combining . . . prior art
elements according to known methods to yield predictable results renders
the limitation obvious.” Id. at 5 (citing MPEP § 2141 (III)).
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Appellant argues that “the Examiner has failed to provide the
‘articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness,’ required by KSR and its progeny.” Appeal
Br. 11. We do not find Appellant’s argument persuasive in that it does not
address with any specificity the rationale set forth by the Examiner with
respect to the obviousness of having at least one second gear mesh with the
at least one internal gear to drive the first shaft.
Appellant also argues that “the air inlet 26 is specifically identified in
the application[] as the point when the air flow 18 begins to be directed and
received.” Appeal Br. 12 (citing Spec. ¶ 16, Fig. 1). Appellant argues that it
is error for the Examiner to “equat[e] the ‘entire air inlet duct’ [with] the air
inlet” such that it is error by the Examiner to rely on portions other than the
beginning of the air duct to show asymmetry. Id. at 13. Appellant asserts
that in “the Marche reference, the place where directing and receiving
engine core airflow is at the beginning of the air duct identified by the
Examiner” when “applying the definition of air inlet found in Applicant’s
disclosure.” Id. According to Appellant, to the extent the Examiner is
relying on the beginning of the air duct in Marche, “[i]t is clear that the
beginning of the air duct of Marche is symmetrical to Marche’s axis of
rotation ‘la.’” Id. at 14.
The Examiner responds that “the [S]pecification labels element 26 as
the air inlet,” “the drawings show element 26 as being an inlet duct between
the fan and low pressure compressor” and the lead line for reference number
26 “points to a center of the duct.” Ans. 4–5. The Examiner finds that “[a]n
‘air inlet’ may be a passage or a duct” and “[t]here is no support in the
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[S]pecification or drawings for Appellant’s assertion that the ‘air inlet’ must
be the beginning of the duct.” Id. at 5.
We agree with the Examiner that Appellant has not adequately
supported that the broadest reasonable interpretation of “air inlet” is limited
specifically to the beginning of the duct, and that the term “air inlet”
reasonably cannot refer to the entire duct. We have considered the
Specification, including paragraph 16 as specifically pointed out by
Appellant, but do not see where giving the claims the “broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art,”
would preclude the claimed “air inlet” from extending to the entire air duct.
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
When giving the term “air inlet” the broadest reasonable interpretation, the
Examiner’s finding that Marche teaches an air inlet duct that is asymmetrical
to the first and second axis of rotation (Final Act. 7; Ans. 5) is supported by
a preponderance of the evidence.
Moreover, the Examiner further responds that “even if for the sake of
argument the air inlet must be considered the beginning of the duct (which
Examiner does not concede), Marche still teaches the air inlet being
asymmetric to both the first and second axes, as the inner wall has a different
geometry at different circumferential points.” Ans. 6; see also id. at 7
(including the Examiner’s annotated version of a portion of Figure 2 of
Marche in which the Examiner indicates how even the beginning of the duct
“ha[s] different geometry at different circumferential points.”). Appellant
does not respond with sufficient particularity to this finding in the Answer to
persuade us of error.
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For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s determination that Marche and Morley render obvious the
subject matter of independent claim 1. Accordingly, we sustain the rejection
of claim 1, and claims 2–7, 9, 10, and 12–15 falling therewith, under
35 U.S.C. § 103 as unpatentable over Marche and Morley.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 7,
10, 12, 13
102(a)(1) Morley 1–3, 6, 7,
10, 12, 13
1–7, 9, 10,
12–15
103 Marche, Morley 1–7, 9, 10,
12–15

Overall
Outcome
1–7, 9, 10,
12–15

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