Ex Parte Beers et al

Patent Trial and Appeal Board

Feb 13, 2018

13869048 (P.T.A.B. Feb. 13, 2018)

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.
13/869,048 04/24/2013 Craig M. Beers 71105US01;
67010-487PUS1
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26096 7590 02/15/2018
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EXAMINER
400 WEST MAPLE ROAD
SUITE 350
NGUYEN, NINH H
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
02/15/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG M. BEERS and CHRISTOPHER MCAULIFFE
Appeal 2017-004034
Application 13/869,0481
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 6, 7, 12, 13, and 18. Final Office
Action (April 4, 2016) (hereinafter “Final Act.”). We have jurisdiction
under 35 U.S.C. § 6(b).
1 Hamilton Sundstrand Corporation (“Appellant”), which is owned by
United Technologies Corporation, is the applicant as provided for under
37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal
Brief 1 (September 6, 2016) (hereinafter “Appeal Br.”).
Appeal 2017-004034
Application 13/869,048
The claims relate to a turbine nozzle for use in an air cycle machine.
Air cycle machines condition air for use in an aircraft cabin air conditioning
and temperature control system. The Examiner found that two prior art
patents directed to air cycle machines disclose the claimed nozzle except for
specific design parameters of the vanes. The Examiner found that other
prior art patents show that these design parameters were known result-
effective variables. The Examiner thus determined that the claimed subject
matter would have been obvious to one having ordinary skill in the art as a
matter of routine optimization. Appellant challenges the Examiner’s
determination based on optimization. For the reasons explained in the
decision, we find that the Examiner failed to set forth adequate reasoning to
support a determination of obviousness. As such, we REVERSE the
rejections under 35 U.S.C. § 103.
The Examiner also made a provisional double patenting rejection of
some claims over claims of co-pending applications in combination with
prior art. Appellant does not contest this rejection. As explained in the
decision, we do not reach this provisional rejection.
CLAIMED SUBJECT MATTER
Claims 1, 7, and 13 are the independent claims. Claim 1 is illustrative
of the subject matter on appeal and is reproduced below.
1. A nozzle for use in an air cycle machine comprising:
a plate;
a plurality of vanes extending away from said plate, with
said plurality of vanes extending for a height away from said
plate and a width being defined as the closest distance between
two adjacent vanes, with a ratio of said height to said width being
between 3.253 and 3.800;
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Application 13/869,048
wherein there are 17 circumferentially spaced ones of said
vanes; and
wherein a total flow area is defined between all 17 of said
vanes and said total flow area being between 5.508 and 6.434
square inches (35.535^11.509 square centimeters).
Appeal Br. 7 (Claims Appendix).
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Smolinski US 5,142,778 Sept. 1, 1992
Merritt US 5,249,934 Oct. 5, 1993
Nenov US 5,460,003 Oct. 24, 1995
Rowe US 5,522,134 June 4, 1996
Marques US 6,789,315 B2 Sept. 14, 2004
Barril US 8,113,787 B2 Feb. 14, 2012
Colson US 2012/0156028 A1 June 21, 2012
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1 and 6 stand rejected under the doctrine of obviousness-
type double patenting over various claims of U.S. Application Nos.
13/869,045, 13/869,050, 13/869,051, and 13/869,053 in view of
Marques.
2. Claims 1,7, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Colson and Marques.
3. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over Colson, Marques, Merritt, and Barril.
4. Claims 1,7, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Merritt and Marques.
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Application 13/869,048
5. Claims 12 and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Merritt, Marques, and Barril.
ISSUE
The issue presented by this appeal is whether the Examiner has
articulated adequate reasoning to explain why one having ordinary skill in
the art would have modified the air cycle machine of either Colson or
Merritt to have the number of vanes, the ratio of vane height to vane width,
and total flow area as claimed.
RELATED APPEALS
This appeal is related to three other appeals pending at the Board. See
Appeal 2017-004029 (Appl. No. 13/869,045); Appeal 2017-004050 (Appl.
No. 13/869,050); and Appeal 2017-004053 (Appl. No. 13/869,053). These
appeals involve similar subject matter, overlapping prior art, and
substantially the same rejections and arguments over the prior art.
ANALYSIS
First Ground of Rejection: Obviousness-type Double Patenting
The Examiner provisionally rejected claims 1 and 6 on the basis of
obviousness-type double patenting in view of claims of the ’045 application,
the ’050 application, the ’051 application, or the ’053 application in view of
Marques. Final Act. 5-7. Appellant does not contest this rejection. Appeal
Br. 3.
Because this rejection is provisional, we decline to reach it. We leave
it to the Examiner to determine at the time when any claims of this
application are otherwise in condition for allowance whether the
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Application 13/869,048
obviousness-type double patenting rejection remains proper. See Ex parte
Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential). The Manual of
Patent Examining Procedure (MPEP) § 804(I)(B)(l)(b) (9th ed., January
2018 [R-08.2017]) provides guidance to examiners as to the handling of
provisional nonstatutory double patenting rejections.
Second Ground of Rejection: Obviousness over Colson and Marques
The Examiner found that Colson discloses a nozzle and shroud
substantially as recited in independent claims 1, 7, and 13, except that
Colson does not disclose 17 vanes, a ratio of height to width of 3.253 -
3.800, and a total flow area of 5.508 - 6.434 square inches.2 Final Act. 7-8.
The Examiner found Marques teaches that total throat area of a turbine
nozzle is a design parameter that determines the performance for the turbine.
Id. at 8 (finding Marques defines total throat area as the vane length L times
the throat width D0 summed for all of the throat areas between adjacent
vanes in the nozzle); id. at 2-3 (quoting Marques, col. 1,11. 35^47,
discussing that total throat area determines the turbine flow function).3
Based on these teachings in the art, the Examiner found that the parameters
of total number of vanes, ratio of height to width, and total flow area were
known result-effective variables. Final Act. 8. The Examiner determined
2 The Examiner found that Colson discloses a ratio of width to height of
0.745 - 0.769. Final Act. 7. Colson’s ratio, when inverted, results in a
height-to-width ratio of 1.3 - 1.3415.
3 The Examiner additionally cited Nenov and Rowe as evidence that total
flow area of a nozzle was known in the art to be a result-effective variable,
and Smolinski as evidence that the total number of vanes and the height-to-
width ratio of a nozzle were known in the art to be result-effective variables.
Id. at 3—4.
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Application 13/869,048
that it would have been obvious to make the nozzle and shroud of Colson
with the claimed parameters “to satisfy a design requirement” as a matter of
routine optimization. Id.
We agree with the Examiner that the claimed parameters are result-
effective variables. For example, Colson teaches that the ratio of vane width
to vane height facilitates directional control characteristics of the turbine
flow into the rotor (Colson 118), and Marques teaches total flow area
through the nozzle determines the turbine flow function (Marques, col. 1,
11. 35-42). But, these facts alone are not enough for a prima face case of
obviousness in this case. See In re Stepan Co., 868 F.3d 1342, 1346 (Fed.
Cir. 2017) (reversing a rejection based on a rationale of routine optimization
because the rejection failed to explain why it would have been routine
optimization to arrive at the claimed invention). Here, the Examiner’s
explanation that one having ordinary skill in the art would have arrived at
the claimed parameters “to satisfy a design requirement” is insufficient.
This reasoning simply repackages “routine optimization” using different
wording and fails to provide some rational underpinning explaining why a
person of ordinary skill would have arrived at the claimed invention through
routine optimization.
The Examiner relies in In re Boesch, 617 F.2d 272 (CCPA 1980) to
support the rejection. Final Act. 8. In Boesch, the court held that a prima
facie case of obviousness is established when the claimed ranges overlap
ranges disclosed in the prior art. 617 F.2d at 275-76. See also In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A prima facie case of
obviousness typically exists when the ranges of a claimed composition
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overlap the ranges disclosed in the prior art.”) and In re Applied Materials
Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (“Such overlap itself provides
sufficient motivation to optimize the ranges.”)
Unlike the situation presented in Boesch, in this case the Examiner
does not point to evidence that the claimed ranges are within or overlap with
the ranges taught in the prior art. See Stepan, 868F.3dat 1348 (holding that
if the claimed range is not within or does not overlap the prior art range, it is
the PTO’s burden to show that the claimed range would have been obvious
to a person of ordinary skill in the art). In fact, the nozzle of Colson’s air
cycle machine has parameters that differ, in some cases by a significant
degree, from the claimed parameters.
Colson teaches a nozzle and shroud for an air cycle machine
comprising 23 vanes and a ratio of vane width to vane height of 0.745 -
0.769. Colson H 16, 18. This disclosed range, when inverted, represents a
ratio of height to width of 1.3004 to 1.3423. In one specific embodiment,
Colson discloses that the vanes have a throat width of 0.092 inches and a
vane height of 0.120 inches. Id. 118. In this embodiment, the ratio of the
width to height is 0.767, which, when inverted, represents a ratio of height to
width of 1.3043. Colson teaches that the ratio of width to height “facilitates
directional control characteristics of the turbine flow into the turbine rotor.”
Id. As such, Colson teaches that the width and height dimensions of the
vanes, and specifically, the ratio of these two dimensions, is a result-
effective variable. That said, Colson’s range does not overlap with and is
considerably lower than the claimed range of 3.253 to 3.800.
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Further, in Colson’s embodiment, the total flow area, calculated by
multiplying the vane throat width (i.e., 0.092 inches) by the vane height (i.e.,
0.120 inches) by the total number of vanes (i.e., 23), equals 0.25392 square
inches. This total flow area is considerably lower than the claimed range of
5.508 to 6.434 square inches.
The Examiner has failed to explain why a person having ordinary skill
in the art would have been led to modify the air cycle machine of Colson to
decrease the number of vanes, increase the ratio of vane height to vane
width, and increase the total flow area to arrive at the claimed invention.
Marques does not provide such a reason. Marques uses “total throat
area” to refer to the width between adjacent vane pairs of a turbine nozzle
multiplied by the length (i.e., height) of the vanes multiplied by the number
of vane pairs. Marques, col. 4,1. 51 - col. 5,1. 13. Marques describes that
the “total throat area, a design parameter of the gas turbine engine,
determines the turbine flow function, which in turn sets the compressor
pressure ratio and operating line, and is an important parameter in
determining compressor stall margin.” Id. at col. 1,11. 35^47. Marques
teaches that the final total throat area target range is a parameter “selected by
engine designers to optimize the performance of the gas turbine engine.” Id.
at col. 5,11. 9-12. Marques, at most, provides a suggestion that total flow
area can be used to optimize turbine flow function.
We have no reason to believe that Colson did not optimize the
parameters for its disclosed nozzle design. Colson’s embodiment, as
explained above, results in a total flow area considerably lower than the
claimed range. Assuming that the teachings of Marques are applicable to the
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air cycle turbine of Colson, the Examiner does not identify any reason, based
on the teachings in Marques, to modify Colson to increase total flow area
through the nozzle.
In addition to reliance on routine optimization, the Examiner made a
statement nominally based on design choice. Final Act. 5 (stating that
because Appellant’s Specification does not disclose that the claimed number
of vanes, height to width ratio, and total flow area solve a stated problem or
are designed for a particular purpose, the limitations are considered a design
choice). We understand this statement to be an attempt by the Examiner to
bolster a routine optimization determination by pointing out that the
Specification does not show criticality of the claimed parameters. The
Examiner appears by this statement to have shifted the burden of proving
patentability to Appellant. Such a shift in the burden of production does not
occur until once the Examiner has set forth a prima facie case of
obviousness. As the Examiner failed to provide adequate reasoning to
support a determination of obviousness, the fact that Appellant did not
provide rebuttal evidence is not determinative of the outcome in this appeal.
In summary, the Examiner has failed to explain adequately why a
person having ordinary skill in the art would have been led to modify the air
cycle machine of Colson to decrease the number of vanes, increase the ratio
of vane height to vane width, and increase the total flow area to arrive at the
claimed invention. As such, we do not sustain the second ground of
rejection.
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Third Ground of Rejection: Obviousness over Colson, Marques, Merritt,
and Barril
This rejection of dependent claim 6 suffers from the same deficient
rationale for the proposed modification of Colson with the teachings of
Marques discussed above. Final Act. 9. The Examiner’s reliance on Merritt
and Barril for the base material and coating limitations of this dependent
claim does not cure this deficiency. Id. As such, we do not sustain the third
ground of rejection.
Fourth Ground of Rejection: Obviousness over Merritt and Marques
In this alternate rejection of claims 1,7, and 13, the Examiner relies
on the disclosure of an air cycle machine in Merritt combined with the
teachings of Marques to determine obviousness of the claimed subject
matter. Final Act. 10-12. Merritt generally discloses an air cycle machine,
but it contains no specific discussion about the design of the vanes of the
turbine nozzle. As such, this patent appears to provide even less support
than Colson to explain why one having ordinary skill in the art would have
arrived at the claimed number of vanes, ratio of vane height to vane width,
or total flow area recited in the claims. As such, we do not sustain the fourth
ground of rejection.
Fifth Ground of Rejection: Obviousness over Merritt, Marques, and Barril
This rejection of dependent claims 12 and 18 suffers from the same
deficient rationale for the proposed modification of Merritt with the
teachings of Marques discussed above. Final Act. 12-13. The Examiner’s
reliance on Barril for the coating limitations of these dependent claims does
not cure this deficiency. Id. As such, we do not sustain the fifth ground of
rejection.
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DECISION
The rejections of claims 1, 6, 7, 12, 13, and 18 under 35 U.S.C. § 103
are reversed.
We do not reach the provisional obviousness-type double patenting
rejection of claims 1 and 6.
REVERSED
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