Ex Parte Bauer et al

Patent Trial and Appeal BoardMar 18, 2019

14593842 (P.T.A.B. Mar. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/593,842 01/09/2015 Steven J. Bauer 54549 7590 03/20/2019 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 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 ATTORNEY DOCKET NO. 67097-3114PUS1; 78869US01 CONFIRMATION NO. 8457 EXAMINER CHRISTENSEN, DANIELLE M ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 03/20/2019 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN J. BAUER, TIMOTHY DALE, CHRISTINA S. LIEBEL, and CONWAY CHUONG 1 Appeal2018-006750 Application 14/593,842 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's final rejection of claims 1-14, which constitute all the claims pending in this application. Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. Â§ 6(b). For the reasons explained below, 1 "United Technologies Corporation is the real party in interest of the present application." App. Br. 1. We thus proceed on the basis that, for purposes of this appeal, United Technologies Corporation is the "Appellant." Appeal2018-006750 Application 14/593,842 we do not find error in the Examiner's rejection of these claims. Accordingly, we AFFIRM the Examiner's rejection. CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a gas turbine engine mid- turbine frame tie rod arrangement." Spec. ,r 1. Claims 1 and 8 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. A gas turbine engine mid-turbine frame comprising: inner and outer cases arranged about an engine axis, a radial plane arranged normal to the engine axis, the inner and outer cases secured to one another by a tie rod that extends along a longitudinal axis, the longitudinal axis arranged at an acute angle relative to the radial plane, wherein the tie rod has a threaded portion that extends into the outer case, and the outer case includes a boss with a surface, a fastener is secured to the threaded portion and abuts the surface. Czachor et al. McCaffrey et al. REFERENCES us 5,357,744 US 2013/0094951 Al THE REJECTION ON APPEAL2 Oct. 25, 1994 Apr. 18, 2013 Claims 1-14 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over McCaffrey and Czachor. Final Act. 3. ANALYSIS 2 In the Final Office Action, claim 13 is objected to for informalities. See Final Act. 3. However, the objection is not within the jurisdiction of the Board. See 3 7 C.F .R. Â§ 1.181. 2 Appeal2018-006750 Application 14/593,842 Appellant argues claims 1-14 together. App. Br. 3--4. We select claim 1 for review, with claims 2-14 standing or falling therewith. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). The Examiner finds that McCaffrey discloses many of the limitations of claim 1, including "inner and outer cases (60, 62) secured to one another by a tie rod ( 66) that extends along a longitudinal axis." Final Act. 3 (referencing McCaffrey Figs. 1--4). The Examiner, however, relies on Czachor for teaching "a mid-turbine frame that is angled relative to the engine axis with a support structure that is also angled relative to the engine axis." Final Act. 4 (referencing Czachor Fig. 2). The Examiner concludes that it would have been obvious to modify McCaffrey's frame "by angling the support structure ... as taught by Czachor, since it is obvious to pursue the known options within the technical grasp of one having ordinary skill in the art. See KSR, MPEP 2143 IE." Final Act. 4; see also Ans. 7. The Examiner reasons that "[i]n this case, Czachor teaches that one well-known option is to angle the support within a mid-turbine frame." Final Act. 4; see also Ans. 8. Appellant understands the Examiner is arguing "that this [angled] feature would be a simple substitution of one well-known means of orienting the support structure for another" and, further, that the Examiner's reference to MPEP Â§ 2143 I. E. "is apparently an argument that the substitution would have been 'obvious to try."' App. Br. 3. Appellant explains that an "obvious to try" rationale involves "a finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem." MPEP Â§ 2143 I.E. (1); see also App. Br. 3. Appellant additionally contends, "[a]t a 3 Appeal2018-006750 Application 14/593,842 minimum, the Examiner provides no analysis or basis for [such a finding]; that is, [the] Examiner provides no motivation for why a skilled worker would modify McCaffrey with Czachor." App. Br. 3. "Instead, it is Applicant that identified unexpected results and explains at paragraph [0037], [that] canting the tie rod 70 reduces the rod bending load by trading this loading for more tensile loading when loaded axially." App. Br. 4; see also Reply Br. 1-3. Although Appellant seems to characterize the Examiner's rejection as being based on "simple substitution" of components (App. Br. 3), Appellant does not explain why a replacement of one support for another (the latter being angled) would not have been a simple substitution. The Supreme Court has provided guidance on this topic stating "that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Here, it is not disputed that McCaffrey and Czachor are in the same field, i.e., both address gas turbine frames. See McCaffrey and Czachor generally. Nor is it argued that Czachor's angled and radially extending strut 62 (see Czachor Fig. 2) would be unable to support McCaffrey' s inner and outer cases 60, 62. 3, 4 That is, Appellant does not show that the result of the Examiner's modification of McCaffrey would 3 It is noted that the Examiner refers to McCaffrey's tie rods 66, however, McCaffrey also discloses tie rod assemblies 80 which are canted. See McCaffrey Figs. 3, 4. 4 Because the overall structures as disclosed by Appellant, McCaffrey, and Czachor are similar, the loads to bear would also be similar and predictable. See Spec. Fig. 3; McCaffrey Figs. 3, 4; Czachor Fig. 2. 4 Appeal2018-006750 Application 14/593,842 be unpredictable. Hence, we are not persuaded by Appellant's contentions that the Examiner's reliance on "simple substitution" of the one component for the other was in error. To the extent Appellant is additionally addressing an "obvious to try" rationale, and the purported lack of requisite findings associated therewith (App. Br. 3), the Examiner addresses "the problem of joining the inner and outer cases of a mid-turbine frame together" stating that "there are only a finite number of ways in which the support structure can be positioned ... either perpendicular or angled relative [to the engine's] longitudinal axis." Ans. 7. Appellant contends "the recognized problem or need must be what is addressed by the claimed invention, not the prior art." Reply Br. 1-2. The Examiner explains, however, "the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Final Act. 2; see also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) ("[T]he motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness."). Accordingly, we are not persuaded the Examiner's reliance on an "obvious to try" rationale was in error. To the extent Appellant contends the Examiner erred by providing "no motivation" for McCaffrey's modification (App. Br. 3), we are instructed that evidence of a motivation to combine need not be found in the prior art references themselves. Instead, such motivation may be found in "the knowledge of one of ordinary skill in the art or, in some cases, from the nature of the problem to be solved." In re Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999)). Here, both McCaffrey and Czachor disclose a need to 5 Appeal2018-006750 Application 14/593,842 support inner and outer cases. See McCaffrey ,r,r 20, 32, Fig. 3; Czachor 8:4--13, Fig. 2. McCaffrey does so via tie rod 66, Czachor does so via strut 62. The Examiner states that "it is obvious to pursue the known options within the technical grasp of one" skilled in the art, and further states, "Czachor teaches that one well-known option is to angle the support within a mid-turbine frame." Final Act. 4; see also Ans. 7, 8. As such, Appellant's contention that the "Examiner provides no motivation for why a skilled worker would modify McCaffrey with Czachor" is unavailing. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claims 1-14 as being obvious over McCaffrey and Czachor. We sustain the rejection of claims 1-14. DECISION The Examiner's rejection of claims 1-14 is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 6