Ex Parte Cunha

Patent Trial and Appeal Board

Dec 11, 2012

11447463 (P.T.A.B. Dec. 11, 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.
11/447,463 06/06/2006 Francisco J. Cunha 0001331-US (05-838) 4011
52237 7590 12/12/2012
BACHMAN & LAPOINTE, P.C.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
VERDIER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
12/12/2012 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 FRANCISCO J. CUNHA
____________

Appeal 2010-011714
Application 11/447,463
Technology Center 3700
____________

Before MEREDITH C. PETRAVICK, MICHAEL W. KIM, and PHILIP J.
HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011714
Application 11/447,463

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from rejections of claims 1-
211. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The rejected claims are directed to a turbine engine component, as
well as a cooling microcircuit for use in a turbine engine component.
Claims 1 and 14 are the sole independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A turbine engine component comprising:
at least one cooling circuit having a plurality of legs
through which a cooling fluid flows; and
a plurality of cooling devices in at least one of said legs,
each of said cooling devices having a heat transfer multiplier in
the range of from 1.8 to 2.4 and a reattachment length in the
range of from 1.9 to 2.5.

REJECTIONS
The Examiner rejects claims 1-21 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter Appellant regards as the invention. The

1 Our decision will make reference to Appellant’s Specification (“Spec.,”
filed Jun. 6, 2006), and Appeal Brief (“App. Br.,” filed Apr. 1, 2010), as
well as the Examiner’s Answer (“Ans.,” mailed Jun. 17, 2010). Although
Appellant filed a Reply Brief on August 17, 2010, entry of the Reply Brief
was denied on August 23, 2010, and Appellant’s subsequent Request for
Reconsideration of Non-Consideration of Reply Brief and Provisional
Petition, filed September 22, 2012, was dismissed in a Decision on Petition
mailed October 8, 2010.
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Application 11/447,463

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Examiner also rejects the claims as follows: claims 1-9 and 11-21 under 35
U.S.C. § 102(b) as anticipated by Lee (US 6,832,889 B1, iss. Dec. 21,
2004); claims 1-7, 9-17, 19, and 20 under 35 U.S.C. § 102(e) as anticipated
by Lee (US 2007/0128034 A1, pub. Jun. 7, 2007); and claims 1-21 under 35
U.S.C. § 102(b) as anticipated by Curbishley (US 4,587,700, iss. May 13,
1986).
ANALYSIS
Rejection under 35 U.S.C. § 112, Second Paragraph
We are persuaded of error in the Examiner’s rejection of claims 1-21
under 35 U.S.C. § 112, second paragraph, as being indefinite for the
recitations of “each of said cooling devices having a heat transfer multiplier
in the range of from 1.8 to 2.4” in each of independent claims 1 and 14.
Appellant’s Specification explains that the claimed “heat transfer multiplier”
is a ratio measured relative to a “flat plate heat transfer,” which provides
sufficient metes and bounds for the term “heat transfer multiplier” (Spec.,
paras. [0016] and [0017]). Thus, the Examiner’s rejection is in error.
We are not persuaded of error, however, in the Examiner’s rejection
of the claims under 35 U.S.C. § 112, second paragraph, as being indefinite
for the recitations of “each of said cooling devices having . . . a reattachment
length in the range of from 1.9 to 2.5,” as also recited in each of independent
claims 1 and 14. In response to the rejection in the final Office Action, the
Appeal Brief only states that
[w]ith regard to the Examiner's disagreement about what
constitutes the reattachment length, it is not clear what the
Examiner is disagreeing with. Appellant has explained that the
reattachment length is expressed as a dimensionless unit which
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Application 11/447,463

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is normal in the art. This can be easily confirmed by the
Examiner by conducting a search on the Internet
(App. Br. 8). The record, however, does not include any evidence regarding
the meaning of the claimed “reattachment length.” Further, while the
Specification states that “[e]ach of the cooling devices has . . . a
reattachment length in the range of from 1.9 to 2.5” (Spec., paras. [0005]
and [0006]), and that “[i]n accordance with the present invention, it is
desirable to use a cooling device having a reattachment length in the range
of 1.9 to 2.5” (Spec., para. [0017]), the Specification provides no further
guidance as to the meaning of the claimed “reattachment length.” Thus,
there is no evidence to counter the Examiner’s assertions in the Examiner’s
Answer that “[t]he scope of the claims is unclear because the claims . . . do
not specific what units the reattachment length is in” (Ans. 4), and we agree
with the Examiner that
[s]tandard practice is to specify the units that lengths are given
in. One of ordinary skill in the turbine engine art would not
understand what a length represents if the length does not have
any units. Without specifying the units that the length is
measured in, the reattachment length is meaningless. A length
cannot be a dimensionless number, because a length is a
comparison to a known unit of measure. Appellant’s
specification does not provide any units for the reattachment
length, and hence one of ordinary skill in the art would not
know what the reattachment length is
(Ans. 9).
A decision on whether a claim is indefinite under 35 U.S.C. § 112,
second paragraph requires a determination of whether those skilled in the art
would understand what is claimed when the claim is read in light of the
specification. See Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343,
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Application 11/447,463

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1350 (Fed. Cir. 2010); and Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565 (Fed. Cir. 1986). In this case, there is no evidence in the
record to support Appellant’s assertion that the recitations of “each of said
cooling devices having . . . a reattachment length in the range of from 1.9 to
2.5” are understood by one of ordinary skill in the art. Thus, the Examiner’s
rejection of the claims 1-21 under 35 U.S.C. § 112, second paragraph, is
sustained.
Rejections under 35 U.S.C. §§ 102(b) and (e)
We reverse pro forma the Examiner's rejections of the claims under
35 U.S.C. §§ 102(b) and (e) on the basis that these claims are indefinite. See
In re Steele, 305 F.2d 859, 862 (CCPA 1962). Specifically, we conclude
that the facts of Appellant’s failure to comply with the requirements of 35
U.S.C. § 112, second paragraph, concerning “reattachment length”
effectively preclude us from properly reaching a final conclusion of
anticipation by the prior art.
DECISION
The Examiner’s rejection of claims 1-21 under 35 U.S.C. § 112,
second paragraph is AFFIRMED. The Examiner’s rejections of claims 1-21
under 35 U.S.C. §§ 102(b) and (e) are REVERSED pro forma.
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

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