Ex Parte Burd

Patent Trial and Appeal Board

Oct 31, 2012

11246842 (P.T.A.B. Oct. 31, 2012)

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.
11/246,842 10/07/2005 Steven W. Burd PA085.11241US;67097-927PU 6791
54549 7590 10/31/2012
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
KIM, TAE JUN
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
10/31/2012 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 STEVEN W. BURD
____________

Appeal 2010-004090
Application 11/246,842
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS and
STEFAN STAICOVICI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2010-004090
Application 11/246,842

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STATEMENT OF THE CASE
Steven W. Burd (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s final rejection of claims 1 and 3-13. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

THE INVENTION
The Appellant’s invention is directed to a section panel assembly for a
bulkhead of a gas turbine combustor. Independent claim 1 is illustrative:
1. A section panel assembly for a bulkhead of a
gas turbine combustor, comprising a section panel
defining a rear or cold side and defining a front or
hot side, the panel having a circumferential inner
edge, a circumferential outer edge and radially
extending first and second side edges each
extending from the inner edge to the outer edge
such that the inner and outer edges subtend a
predetermined arc, the panel defining at least one
opening extending from the rear side to the front
side for receiving cooling air, the rear side
including:

a central lip extending about a periphery of the at
least one opening;

a circumferential rail spaced radially outwardly of
and extending about the at least one opening for
defining a cavity region including the at least one
opening on the rear side of the section panel; and

a peripheral rail spaced from each of the first and
second side edges.

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THE REJECTIONS
The Examiner has rejected:
(i) claims 12 and 13 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter regarded as the invention;
(ii) claims 1, 3, 4, 10, 12 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Pacheco-Tougas (US 6,751,961 B2, issued Jun. 22, 2004);
(iii) claims 1, 3, 4, 10, 12 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Stastny (US 6,497,105 B1, issued Dec. 24,
2002)(hereinafter “Stastny ‘105”) in view of Pacheco-Tougas;
(iv) claims 5, 7-9, and 11-131 under 35 U.S.C. § 103(a) as being
unpatentable over Stastny ‘105 in view of Stastny (US 2006/0042257 A1,
published Mar. 2, 2006)(hereinafter “Stastny ‘257”);
(v) claims 1 and 3-13 under 35 U.S.C. § 103(a) as being unpatentable
over Stastny ‘105 in view of Stastny ‘257 and further in view of Pacheco-
Tougas; and
(vi) claims 1 and 3-13 under 35 U.S.C. § 103(a) as being unpatentable
over Pacheco-Tougas in view of Stastny ‘257.

ANALYSIS
Indefiniteness--Claims 12 and 13
The Appellant does not argue the rejection of claims 12 and 13 as
being indefinite, other than stating that “the meaning and intent was clear
such that the Examiner was able to examine these claims.” Appeal Br. 6.
The Appellant otherwise indicates a willingness to amend claims 12 and 13

1 The Examiner withdrew a rejection of claim 6 on this ground. Ans. 4.
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as indicated in the unentered Amendment dated March 2, 2009. The
rejection of claims 12 and 13 as being indefinite is summarily sustained.

Obviousness--Claims 1, 3, 4, 10, 12 and 13--Pacheco-Tougas
With respect to claim 1, the Examiner maintains that the Pacheco-
Tougas reference discloses all limitations of the claimed invention with the
exception of peripheral rails spaced from the side edges. Ans. 5-6. The
Examiner notes that Pacheco-Tougas teaches rails 51 and 53 spaced from
inner border 44 and outer border 46 (but not from side edges 40 and 42), and
takes the position that “using a similar spacing for the peripheral rails/ribs
would be within the ordinary skill in the art as using a conventional
construction technique or spacing for the ribs used about the periphery.”
Ans. 6; Pacheco, Fig. 2. The Examiner further states that the Appellant has
not disclosed that the spacing of the peripheral rails from the side edges
solves any specific problem, and, as such, the spacing “can almost be
regarded as a matter of design choice.” Ans. 6.
The Examiner’s apparent reliance upon design choice as a basis to
modify Pacheco-Tougas is in error. Design choice may be an acceptable
rationale for an obviousness rejection when a claimed device merely
arranges known elements in a configuration recognized as functionally
equivalent to a known configuration. See In re Kuhle, 526 F.2d 553, 555
(CCPA 1975). However, as is the case here, the Examiner has not provided
evidence that a peripheral rail spaced from the side edge as recited in claim 1
is a known alternative to a peripheral rail spaced from the inner or outer
edge as shown in Pacheco-Tougas.
With respect to the Examiner’s position that the modification would
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have been obvious as a conventional construction technique or spacing for
the ribs, the Appellant points out that spacing Pacheco-Tougas’ peripheral
rails 50 from edges 40 and 42 as contemplated by the Examiner “divides the
back side 34 of the bulk head assembly 18 into more than two distinct
pressurized cavity regions, which would destroy Pacheco-Tougas’
advantageously optimum air distribution.” App. Br. 7. The Examiner
counters that “the modification of Pacheco does not necessitate the side
peripheral rails be spaced far from the side edges,” and that “[t]his would
leave the existing cavity regions and cooling air distribution virtually
unchanged.” Ans. 14. However, even if the peripheral rails are not spaced
far from the side edge as proposed by the Examiner, the modification still
results in more than “two distinct pressurized cavity regions” as disclosed by
Pacheco-Tougas. Pacheco-Tougas, col. 3, ll. 22-26. While the modification
may or may not “destroy” the optimum air distribution as asserted by the
Appellant, the Examiner’s position that the cooling air distribution would be
virtually unchanged is not supported by Pacheco-Tougas and is instead
based on speculation.
Accordingly, the Examiner’s rejection fails to adequately demonstrate
that the subject matter of claim 1 would have been obvious over Pacheco-
Tougas. The rejection of this claim, as well as of claims 3, 4, 10, 12 and 13
depending therefrom, is not sustained.

Obviousness--Claims 1, 3, 4, 10, 12 and 13—Stastny ‘105/Pacheco-Tougas
The rejection of claims 1, 3, 4, 10, 12 and 13 as being unpatentable
over Stastny ‘105 in view of the teachings of Pacheco is premised on the
Examiner’s erroneous conclusion, discussed with respect to claim 1 above,
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that it would have been obvious to modify Pacheco-Tougas to have “a
peripheral rail spaced from each of the first and second side edges.”
Accordingly, we do not sustain this rejection.

Obviousness--Claims 5, 7-9, and 11-13—Stastny ‘105/Stastny ‘257
The Appellant argues claims 5, 7, 8, and 11 as a group. We will take
claim 5 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims
9, 12 and 13 are separately argued. App. Br. 10-11.
The Examiner takes the position that Stastny ‘105 discloses all
limitations of the claimed invention with the exception of the panel having a
two-hole construction, with claim 5 calling for “defining first and second
openings spaced relative to one another along the arc and extending from the
rear side to the front side for receiving cooling air.” Ans. 9; App. Br.,
Claims Appendix. Stastny ‘105 discloses a panel with only a first opening.
Stastny ‘105, Fig. 3. The Examiner cites to the Stastny ‘257 reference as
teaching a panel having first and second openings. Ans. 9. The Appellant
argues that modifying Stastny ‘105 to include a panel having a two-hole
construction as taught by Stastny ‘257 “contradicts a goal of the Stastny
‘105 disclosure” by increasing costs, and complicates assembly by requiring
the alignment of two collars at the same time, instead of one, onto the panel
having the two-hole construction. App. Br. 10-11.
We are not persuaded of Examiner error by either argument. The
Appellant provides no evidence that a panel with a two-hole construction
would increase costs. Id. To the contrary, even assuming, arguendo, that
manufacturing a panel with a two-hole construction would result in some
increase in manufacturing cost over a panel with a single hole, doing so
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would also appear to decrease assembly costs by requiring fewer parts in
forming a ring of such panels. In addition, the purported complication of
having to simultaneously align two tab collars within recesses on the panel is
not seen as being something beyond the skill level of those of ordinary skill
in the art. The rejection of claim 5, and of dependent claims 7, 8, and 11
grouped therewith, as being unpatentable over Stastny ‘105 in view of
Stastny ‘257 is sustained.
With respect to claims 9, 12 and 13, the Appellant merely argues that
neither Stastny ‘105 nor Stastny ‘257 teaches a “central rail.” App. Br. 11.
However, differences between the claimed subject matter and the cited
references do not imply patentability where the claimed subject matter
would have been obvious from the combined teaching of the prior art. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We agree with
the Examiner that the limitation directed to “a central rail disposed between
the first and second openings” is formed “upon modification . . . by the
adjoining of a previous side rail.” Ans. 10. Stated another way, the
Examiner’s position is that, once the Stastny ‘105 device is modified to
combine two of the one-hole panels into an integral two-hole panel, the
former side edge rails located at the edges joined together in making the
integral two-hole panel will form a central rail.
The Appellant has not apprised us of error in the Examiner’s position
that the subject matter of claims 9, 12 and 13 would have been obvious over
Stastny ‘105 and Stastny ‘257. The rejection of these claims is sustained.

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Obviousness--Claims 1 and 3-13—Stastny ‘105/Stastny ‘257/Pacheco-
Tougas
The rejection of claims 1, 3, 4, 6 and 10, as being unpatentable over
Stastny ‘105 in view of the teachings of Stastny ‘257 and Pacheco-Tougas is
premised on the Examiner’s erroneous conclusion, discussed with respect to
claim 1 above, that it would have been obvious to modify Pacheco-Tougas
to have “a peripheral rail spaced from each of the first and second side
edges.” We do not sustain this rejection.
With respect to the rejection of remaining claims 5, 7-9, and 11-13
based on this combination, the Appellant expressly relies on arguments
advanced with respect to the Examiner’s combination of Stastny ‘105 and
Stastny ‘257 previously discussed above. App. Br. 12. For the reasons
stated above, the Appellant’s arguments do not apprise us of error in the
Examiner’s conclusion, and the rejection is sustained.

Obviousness--Claims 1 and 3-13—Pacheco/Stastny ‘257
The rejection of claims 1, 3, 4, 6 and 10 as being unpatentable over
Pacheco-Tougas in view of the teachings of Stastny ‘257 is premised on the
Examiner’s erroneous conclusion, discussed with respect to claim 1 above,
that it would have been obvious to modify Pacheco-Tougas to have “a
peripheral rail spaced from each of the first and second side edges.” We do
not sustain this rejection.
With respect to the rejection of remaining claims 5, 7-9, and 11-13
based on this combination, the Appellant argues that the proposed
modification to Pacheco-Tougas to provide a second opening is improper as
there is no motivation for the modification, and the modification would
result in increasing the number of cavities, allegedly directly contrary to the
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goals of Pacheco-Tougas. App. Br. 13. Essentially for the same reasons
stated above with respect to the combination of Stastny ‘105 and Stastny
‘257, the Appellant’s arguments do not apprise us of error in the Examiner’s
conclusion, and the rejection is sustained.

CONCLUSIONS
The Examiner did not err in rejecting claims 12 and 13 as being
indefinite.
The Examiner erred in concluding that the subject matter of claim 1
would have been obvious over Pacheco-Tougas.
The Examiner erred in concluding that the subject matter of claim 1
would have been obvious over Stastny ‘105 in view of Pacheco-Tougas.
The Examiner did not err in concluding that the subject matter of
claims 5 and 9 would have been obvious over Stastny ‘105 in view of
Stastny ‘257.
The Examiner erred in concluding that the subject matter of claim 1
would have been obvious over Stastny ‘105 in view of Stastny ‘257 and
further in view of Pacheco-Tougas. The Examiner did not err in concluding
that the subject matter of claim 5 would have been obvious over Stastny
‘105 in view of Stastny ‘257 and further in view of Pacheco-Tougas.
The Examiner erred in concluding that the subject matter of claim 1
would have been obvious over Pacheco-Tougas in view of Stastny ‘257.
The Examiner did not err in concluding that the subject matter of
claim 5 would have been obvious over Pacheco-Tougas in view of Stastny
‘257.

Appeal 2010-004090
Application 11/246,842

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DECISION
The rejection of claims 12 and 13 under the second paragraph of 35
U.S.C. § 112 is affirmed.
The rejection of claims 1, 3, 4, 10, 12 and 13 as being unpatentable
over Pacheco-Tougas is reversed.
The rejection of claims 1, 3, 4, 10, 12 and 13 as being unpatentable
over Stastny ‘105 and Pacheco-Tougas is reversed.
The rejection of claims 5, 7-9 and 11-13 as being unpatentable over
Stastny ‘105 and Stastny ‘257 is affirmed.
The rejection of claims 1, 3, 4, 6 and 10 as being unpatentable over
Stastny ‘105, Stastny ‘257, and Pacheco-Tougas is reversed.
The rejection of claims 5, 7-9, and 11-13 as being unpatentable over
Stastny ‘105, Stastny ‘257, and Pacheco-Tougas is affirmed.
The rejection of claims 1, 3, 4, 6 and 10 as being unpatentable over
Pacheco-Tougas and Stastny ‘257 is reversed.
The rejection of claims 5, 7-9, and 11-13 as being unpatentable over
Pacheco-Tougas and Stastny ‘257 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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