David Lee. Williamson et al.

Patent Trials and Appeals Board

Dec 19, 2019

14460410 - (D) (P.T.A.B. Dec. 19, 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.
14/460,410 08/15/2014 David Lee Williamson 276988 7003
7788 7590 12/19/2019
General Electric Company
Attn: Jim Pemrick
1 Research Circle
K1-3A64
Niskayuna, NY 12309
EXAMINER
NGUYEN, ANDREW H
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
12/19/2019 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):
charlotte.wilson@ge.com
gepower.mail@ge.com
shannon.cannizzaro@ge.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID LEE WILLIAMSON, CARLOS EDUARDO SILVA,
RAYMOND JOHN BANKERT, and JESSICA LEE PRINCE

Appeal 2018-008655
Application 14/460,410
Technology Center 3700
____________

Before JAMES A. WORTH, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7, 8, 13, 16, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as General
Electric Company and ExxonMobil Research and Engineering Company.
Appeal Br. 1–2.
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BACKGROUND
The Specification discloses that “[t]he present invention relates
generally to power train architectures and, more particularly, to gas turbines,
steam turbines, and generators used as part of a power train in a power-
generating plant with low viscosity fluid bearings.” Spec. ¶ 2.

ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A power train architecture comprising:
a first gas turbine comprising a compressor section, a
turbine section, and a combustor section operatively coupled to
the compressor section and the turbine section;
a first rotor shaft extending through the compressor
section and the turbine section of the first gas turbine;
a first generator, coupled to the first rotor shaft and driven
by the turbine section of the first gas turbine; and
a first plurality of bearings supporting the first rotor shaft
within the compressor section and the turbine section of the first
gas turbine and the first generator, wherein each of the bearings
of the first plurality of bearings is a low-loss bearing including a
low-loss lubricant, and wherein the low-loss lubricant is a
mineral oil-based lubricant having a viscosity grade between
VG8 and VG20, where VG represents the viscosity grade in
centistokes at 40 °C; and
wherein the compressor section, the turbine section, and
the generator each include a plurality of rotating components, at
least one of the rotating components in at least one of the
compressor section of the first gas turbine, the turbine section of
the first gas turbine, and the first generator including a low-
density material.
Appeal Br. 18.
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REJECTIONS
1. The Examiner rejects claims 1, 4, 7, and 8 under 35 U.S.C. § 103 as
unpatentable over Shibuya2 in view of Leonhardt,3 Baten,4 and Kelly.5
2. The Examiner rejects claims 2 and 3 under 35 U.S.C. § 103 as
unpatentable over Shibuya in view of Leonhardt, Baten, Kelly, Thiele,6
and Alvanos.7
3. The Examiner rejects claim 13 under 35 U.S.C. § 103 as unpatentable
over Shibuya in view of Leonhardt, Baten, Kelly, and Chillar.8
4. The Examiner rejects claims 16 and 17 under 35 U.S.C. § 103 as
unpatentable over Shibuya in view of Leonhardt, Baten, Kelly, Chillar,
Thiele, and Alvanos.
DISCUSSION
Claims 1, 4, 7, and 8
With respect to claim 1, the Examiner finds that Shibuya teaches a
power train architecture with a first gas turbine compressor, a turbine
section, a first rotor shaft, and a first generator. Final Act. 3. The Examiner
acknowledges that Shibuya does not teach support bearings, a low-loss
lubricant included in support bearings, or the use of low-density materials.
Id. However, the Examiner finds that Baten, Leonhardt, and Kelly cure
these deficiencies. Id. The Examiner concludes that it would have been

2 Shibuya et al., US 6,178,734 B1, iss. Jan. 30, 2001.
3 Leonhardt, US 6,165,951, iss. Dec. 26, 2000.
4 Baten, US 2010/0187180 A1, pub. July 29, 2010.
5 Kelly et al., US 2007/0274854 A1, pub. Nov. 29, 2007.
6 Thiele, US 6,240,730 B1, iss. June 5, 2001.
7 Alvanos et al., US 2009/0148271 A1, pub. June 11, 2009.
8 Chillar et al., US 2009/0301078 A1, pub. Dec. 10, 2009.
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obvious to combine these references, which provide evidence of well-known
facts in the art, by known methods that would yield predictable results. Id.
at 3–4. The Examiner further explains that the combination would have
been obvious in order to provide adequate support for the power train
architecture, to provide a lubricant with a desired effectiveness, and to
produce a turbine blade with predictable results. Ans. 3.
As discussed below, we are not persuaded of reversible error in the
rejection of claim 1.
Appellant first argues that the Examiner has not set forth proper
motivation to support the combination of references. Appeal Br. 9. In
support, Appellant asserts that the Examiner has not set forth evidence
showing “that would lead one of ordinary skill in the art to combine the
references to address” the problem solved by the claimed invention. Id. at
10 (citing In re Sponnoble, 405 F.2d 578 (CCPA 1969)).
We are not persuaded by this argument. Contrary to Appellant’s
assertion, the courts have held that the reason for a proposed combination of
art need not be the same as the motivation that inspired the inventor. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“[A]ny need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(“[T]he skilled artisan need not be motivated to combine [a prior art
reference] for the same reason contemplated by the [inventor]”); In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some motivation
or suggestion to combine the references is provided by the prior art taken as
a whole, the law does not require that the references be combined for the
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reasons contemplated by the inventor.”); In re Kronig, 539 F.2d 1300, 1304
(CCPA 1976). “[T]he problem motivating the patentee may be only one of
many addressed by the patent’s subject matter.” KSR, 550 U.S. at 420,
With respect to Sponnoble, the Federal Circuit has stated that it stands
“for the proposition that the discovery of an unknown problem can result in
a patentable invention, even if the solution would have been obvious once
the problem is identified.” In re Conrad, 759 F. App’x 982, 985 (Fed. Cir.
2019). However, the court noted that this case “did not address whether the
Board must consider the discovery of an unknown problem when there
exists an independent motivation to combine prior art references.” Id. Thus,
where the rejection lacks a specific reason for making a combination, the
inventor’s motivation may be relevant in making an obviousness
determination.
Here, we find that the Examiner has set forth an adequate reason for
the proposed combination of art and we are not persuaded that the claims are
nonetheless not obvious because the art does not recognize the particular
problem addressed by the inventor. In terms of the elements, the Examiner
finds that the use of bearings to support a shaft and generator was well
known in the art; that the use of low viscosity lubricants was known; and the
use of low-density materials was known. See Final Act. 3–4. Further, we
determine that the Examiner has set forth adequate reasoning with rational
underpinnings to support the conclusion that it would have been obvious to
provide these elements in Shibuya. Specifically, the Examiner determines
that it would have been obvious to provide low loss lubricant bearings as
claimed in order to effectively support the rotor and provide a desired
lubrication effectiveness. Ans. 3; Final Act. 3. The Examiner also
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determines that it would have been obvious to provide low-density
components as a simple substitution of known parts and “to provide a well-
known and predictable turbine blade.” Ans. 3; Final Act. 4.
Appellant does not specifically address the reasoning provided by the
Examiner, and we determine that the Examiner’s reasoning is supported on
the record before us. In particular, Baten teaches as background that
bearings are “used to support the rotating parts of a gas or steam turbine”
and are “often coupled to a lubrication system that provides a continuous
flow of oil that lubricates, cools, and removes debris from the bearings.”
Baten ¶ 2. We find that this supports the Examiner’s determination that it
would have been obvious to use bearings with a lubricant to support
Shibuya’s power train architecture.
Further, Leonhardt specifically teaches the use of low viscosity
lubricants in the claimed range for use in lubricating bearings. See
Leonhardt col. 1, ll. 14–17; col. 3, ll. 27–30. Leonhardt also indicates that
the properties, including viscosity, of the lubricants disclosed are related to
the lubricant’s effectiveness in providing adequate lubrication over long
periods of time. See id. at col. 1, ll. 21–51. Thus, Leonhardt supports the
Examiner’s reasoning that using a lubricant as taught by Leonhardt,
including a viscosity in the claimed range, would have been obvious in order
to provide a desired lubricant effectiveness.
Finally, Kelly teaches that the use of composite materials “may be
useful for light weight, high-strength, high-temperature capable components
for gas turbine engines.” Kelly ¶ 2. Kelly further discloses that suitable
turbine blades include titanium alloys such as Ti-6Al-4V. Id. at ¶ 20. The
Examiner finds that this is a low-density material as claimed, and Appellant
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does not contest this finding. See Final Act. 3; see also Appeal Br. 6–13.
We find that this evidence supports the Examiner’s reasoning that it would
have been obvious to substitute a low-density component into Shibuya’s
device, as required by claim 1.
Thus, we determine that the Examiner has set forth adequate
articulated reasoning with rational underpinnings to support the conclusion
that it would have been obvious to combine the art of record with respect to
claim 1. See KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d at 988).
We are also not persuaded of reversible error by Appellant’s other
arguments regarding the Examiner’s reliance on Leonhardt. First, Appellant
asserts that Leonhardt discloses a preferred viscosity range starting at the
maximum of the claimed range, and thus, Leonhardt “favors viscosities that
the Appellants’ specification defines as ‘high viscosity.’” Appeal Br. 12.
Although Leonhardt suggests preferable viscosities on the higher end of the
range required by the claim, there can be no dispute that Leonhardt discloses
both preferable and more preferable viscosities within the claimed range.
See Leonhardt col. 3, ll. 27–29. We are not persuaded that one of ordinary
skill in the art would completely disregard this teaching in favor of using
higher viscosity lubricants. At worst, this language suggests that using
lower viscosity lubricants, within the range claimed, would provide some of
the benefits disclosed in Leonhardt.
Second, Appellant argues that the Examiner erred in finding that
viscosity is a result-effective variable and that the Examiner erred in
determining that the viscosity grade of the lubricant is an intended. See
Reply Br. 3–4. We are not persuaded of reversible error by these arguments.
As discussed above, the Examiner has cited to sufficient evidence to support
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the conclusion that it would have been obvious to use a lubricant as claimed
in order to provide an effective lubricant, as taught by Leonhardt, without
the need to rely on the Examiner’s alternative findings.
Third, Appellant argues that other evidence “refutes the teachings of
[Leonhardt], regarding the breadth of acceptable lubricant viscosities
recognized by persons of skill in the power train art at the time of the filing
of the present application.” Reply Br. 2–3. In support, Appellant refers to
evidence allegedly showing that “power-generating gas and steam turbines
could be supported only by bearings whose lubricants have a viscosity
greater than [VG26].” Id. Thus, Appellant asserts that there was no
reasonable expectation of success in using low viscosity lubricants. Id. at 3.
We are not persuaded of error by this argument. Although this evidence
may show that lubricants with higher viscosity are generally used, we find it
is insufficient to overcome the express teaching in Leonhardt that lubricants
with viscosities in the claimed range would have certain beneficial
properties disclosed in Leonhardt. Appellant has not explained adequately
why one of ordinary skill in the art would consider that this evidence shows
the differences in viscosity are so significant that one of ordinary skill in the
art would ignore the express teaching in Leonhardt of the use of a lubricant
with a viscosity in the claimed range.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1. Accordingly, we sustain the rejection of claim 1. We also
sustain the rejection of claims 4, 7, and 8 for the same reasons and because
Appellant does not provide separate arguments regarding these claims. See
Appeal Br. 9–13.
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Claims 2 and 3
Claim 2 recites four separate bearings at four separate locations. See
Appeal Br. 18. Claim 3 recites a fifth bearing located at a fifth location. Id.
The Examiner finds that Thiele and Alvanos teach the well-known use of
bearings at each of the locations required by these claims. Final Act. 5.
With respect to this rejection, Appellant argues only that Thiele
teaches away from the combination with Shibuya, Baten, Leonhardt, and
Kelly. Appeal Br. 13. In support, Appellant argues that Thiele is directed to
the use of oil-free bearings that avoid contamination issues related to oil
leakage from bearings. Id. Appellant asserts that Thiele identifies problems
associated with the use of oil-based lubricants and one of ordinary skill
“would not be motivated to consider [Thiele’s] teachings, when confronted
with the problem of reducing the viscous losses from the bearings of a power
plant, while maintaining power output.” Id. at 14.
We are not persuaded of error. The Examiner relies on Thiele and
Alvanos only insofar as they provide support that it was well known to place
the bearings in the positions claimed in order to support the respective
portions of the power train architecture claimed. Final Act. 5. Although
Thiele uses a water based lubricant and identifies disadvantages of using oil-
based lubricants, we agree with the Examiner that this evidence does not
teach away from the combination proposed. In particular, we agree with the
Examiner that Thiele’s teachings regarded the lubricant used “does not make
the placement of the bearings less obvious.” Ans. 6. More specifically,
although Thiele may teach the use of one type of lubricant over another,
Thiele’s teachings regarding the placement of bearings are applicable
regardless of the lubricant used. Thus, without further explanation from
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Appellant, we find that one of ordinary skill in the art would not be
discouraged from applying Thiele’s teachings regarding the placement of
bearings in Shibuya’s apparatus.
Based on the foregoing, we are not persuaded of reversible error, and
thus, we sustain the rejection of claim 2. Because Appellant does not
provide separate arguments regarding claim 3, we also sustain the rejection
of that claim for the reasons discussed.
Claim 13
With respect to the rejection of claim 13, Appellant argues that Chillar
also does not provide reasoning to support the proposed combination of
Shibuya, Baten, Leonhardt, and Kelly. Appeal Br. 15. However, as
discussed above, we find that the Examiner has adequately supported this
combination. Because Appellant does not otherwise explain why the
rejection with Chillar includes reversible error, we are not persuaded of error
here for the same reasons discussed above. Accordingly, we sustain this
rejection.
Claims 16 and 17
With respect to the rejection of claims 16 and 17, Appellant relies
only on the argument previously presented and discussed above. We find
those arguments unpersuasive here, and thus, we sustain the rejection of
claims 16 and 17 for the reason discussed above.
CONCLUSION
We AFFIRM the rejections of claims 1–4, 7, 8, 13, 16, and 17.
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)(l)(iv).
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Application 14/460,410

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 7, 8 103 Shibuya,
Leonhardt, Baten,
Kelly
1, 4, 7, 8
2, 3 103 Shibuya,
Leonhardt, Baten,
Kelly, Thiele,
Alvanos
2, 3
13 103 Shibuya,
Leonhardt, Baten,
Kelly, Chillar
13
16, 17 103 Shibuya,
Leonhardt, Baten,
Kelly, Chillar,
Thiele, Alvanos
16, 17
Overall
Outcome
1–4, 7, 8,
13, 16, 17

AFFIRMED