Ex Parte Fink et al

Patent Trials and Appeals Board

Mar 29, 2019

14599662 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/599,662 01/19/2015 Evan K. Fink
54549 7590 04/02/2019
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. CONFIRMATION NO.
79051US01;
67097-3115PUS1
3936
EXAMINER
LEE JR, WOODY A
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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 EV AN K. FINK and JOSEPH STEELE 1
Appeal2018-007396
Application 14/599,662
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject under 35 U.S.C. § 103 claims 1-20 as unpatentable over
Gupta (US 2010/0080708 Al, published Apr. 1, 2010) and Aubin (US
2009/0191049 Al, published July 30, 2009). We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 United Technologies Corporation ("Appellant") is the applicant as provided
under 3 7 C.F .R. § 1.46 and is identified as the real party in interest. Appeal
Brief 1 ("Appeal Br."), filed Dec. 19, 2017.
Appeal2018-007396
Application 14/599,662
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to an integrally bladed rotor
wherein the thickness of a blade is locally increased at a radially inner span
and at the trailing edge." Spec. ,r 1, Figs. 1, 3A, 3B. Claims 1 and 12 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. An integrally bladed fan rotor comprising:
a fan hub centered about an axis and having a plurality of
fan blades extending radially outwardly of said axis across a
span; and
each of said blades including an airfoil extending between
a leading edge and a trailing edge, and having a pressure side and
a suction side and said airfoil having a thicker portion at said
trailing edge, and at a radially inner portion of said span, and over
a limited percentage of said span, such that said thicker portion
does not extend beyond 50 percent of said span and an axial
distance defined between said trailing edge and said leading
edge, and said thicker portion extending for less than 50 percent
of said axial distance, and said thicker portion being on said
pressure side.
ANALYSIS
Claims 1-5, 7, 8, 10-15, and 17-20
Appellant does not offer arguments in favor of independent claim 12
or dependent claims 2-5, 7, 8, 10, 11, 13-15, and 17-20 separate from those
presented for independent claim 1. See Appeal Br. 2-3. We select claim 1
as the representative claim, and claims 2-5, 7, 8, 10-15, and 17-20 stand or
fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). We address claims 6, 9, and
16 separately below.
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Application 14/599,662
Appellant contends that "Gupta's teaching of particular structure is to
address flow considerations in a gas turbine engine turbine section. Such
considerations have no bearing on a fan section" and that "Gupta is
addressing concerns in a turbine section. There would be no reason to
randomly add weight into a fan blade to address turbine section flow issues."
Appeal Br. 3; see also Reply Br. 1 2 ("Gupta is intended to address a problem
in a turbine section. It would not suggest any modification to a fan.").
Appellant's arguments are not directed to the rejection as set forth by
the Examiner and are against Gupta individually, 3 where the rejection is
based on the combined teachings of Gupta and Aubin. See Final Act. 3; see
also Ans. 2-3. In addition, Appellant does not identify record evidence to
support the contention that modifications to Gupta's fan section would
"randomly add weight into [the] fan blade." See Appeal Br. 3; see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence.").
In this case, the Examiner finds that in paragraph 93 Gupta discloses
that the invention is usefully employed in similar applications, such as:
"pumps, blowers, turbines and the like" and that "[ w ]hile there is no direct
2 Reply Brief ("Reply Br."), filed July 13, 2018.
3 Appellant states that"[ e ]ven if Gupta said its simulation would be applicable
to all manner of airfoil, Gupta would still need to teach one to modify a fan
airfoil. There is nothing within Gupta's analysis of turbine flow
characteristics that would do so." Appeal Br. 3. However, the Examiner is
not proposing to modify Gupta in view of itself but in view of the teachings
of Aubin. See Final Office Action 3 ("Final Act."), dated July 14, 2017; see
also Examiner's Answer 2-3 ("Ans."), dated May 15, 2018. Appellant does
not apprise us of error in the Examiner's proposed reasoning for the combined
teachings of Gupta and Aubin. See Appeal Br. 2-3; see also Reply Br. 1.
3
Appeal2018-007396
Application 14/599,662
mention by Gupta of employing the airfoil/platform arrangement in a gas
turbine engine fan, Gupta nonetheless, recognizes the usefulness of the
invention in multiple embodiments not specifically presented." Ans. 2; see
also Final Act. 3; Gupta ,r 93; In re Lamberti, 545 F.2d 747, 750 (CCPA
197 6) (A reference disclosure is not limited only to its preferred
embodiments, but is available for all that it discloses and suggests to one of
ordinary skill in the art). 4 The Examiner also finds that Aubin "teaches that
it is known in the art to use airfoils having specifically contoured platforms
in the fan section of gas turbine engines (Fig. 3; and that such contouring can
lead to smaller aerodynamic losses i-f[0006])." Ans. 2; see also Final Act. 3;
Aubin ,r 6, Fig. 3. The Examiner reasons that "Aubin teaches that those in
the art have recognized that contouring the platform in the fan section is
useful, providing a specific use case for a structure analogous to Gupta's, but
in a fan section as required by Appellant's invention" and that a skilled
artisan "would be motivated by the teachings of Aubin to take the
generalized benefits of Gupta and apply them in the specific use-case of
Aubin, i.e. as a fan, as Aubin recognizes the use of such contouring in fan
platforms and Gupta teaches this will reduce horseshoe vortices." See Ans.
2; see also id. at 3; Final Act. 3. 5
4 Gupta discloses that "various embodiments can be employed in other similar
applications such as pumps, blowers, turbines and the like. Embodiments of
the invention are not limited in this regard." Gupta ,r 93 (emphasis added).
5 Appellant contends that "the fact that there may be similar flow patterns,
such as the Examiner's new reliance on horseshoe vortices is not controlling."
Reply Br. 1. However, Appellant does not apprise us of error in the
Examiner's finding that a skilled artisan would recognize that a reduction of
horseshoe vortex formation is not only applicable to a turbine section but is
also applicable to "a fan section of a gas turbine engine" and that the combined
4
Appeal2018-007396
Application 14/599,662
The Examiner's findings are reasonable and the Examiner's
conclusions therefrom are based on rational underpinnings. Appellant does
not provide persuasive evidence or argument apprising us of error in the
Examiner's reasoning for the combined teachings of Gupta and Aubin.
Additionally, we disagree with Appellant that "there is no showing of
any reason or benefit" to combine the teachings of Gupta and Aubin. See
Appeal Br. 2. As discussed above, Appellant does not apprise us of error in
the Examiner's finding that a skilled artisan would recognize that a reduction
of horseshoe vortex formation is not only applicable to a turbine section but
is also applicable to "a fan section of a gas turbine engine" and that the
combined teachings of Gupta and Aubin would "yield a beneficial and
predictable result of reducing vortices" in the fan section. See id.; see also
Reply Br. 1; Final Act. 3; Ans. 2-3.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as unpatentable over
Gupta and Aubin. Accordingly, we sustain the Examiner's rejection of
claim 1. We further sustain the rejection of claims 2-5, 7, 8, 10-15, and 17-
20, which fall with claim 1.
Claims 6, 9, and 16
Appellant does not offer arguments in favor of dependent claims 9
and 16 separate from those presented for dependent claim 6. See Appeal Br.
teachings of Gupta and Aubin would "yield a beneficial and predictable result
of reducing vortices" in the fan section. See id.; see also Final Act. 3; Ans.
2-3.
5
Appeal2018-007396
Application 14/599,662
3--4. We select claim 6 as the representative claim, and claims 9 and 16
stand or fall with claim 6. 37 C.F.R. § 4I.37(c)(l)(iv).
As an initial matter, Appellant states that "the Examiner misstates the
test for a proper design choice rejection." Appeal Br. 4. According to
Appellant, the Examiner "has failed to provide the necessary predicate to
show the claimed ratios are an obvious design choice" that "[l]ike 'common
sense,' an Examiner cannot merely recite 'design choice' to fill a void in a
factual record to support a finding of obviousness." Appeal Br. 3 ( citing
Plantronics, Inc. v. Aliph, Inc., 724 F3d, 1343, 1354 (Fed. Cir. 2013)
(quoting In re Nouvel, 493 F. App'x 85, 92 (Fed. Cir. 2012))).
First, Appellant's contentions appear to equate the principle of
"design choice" with routine optimization. See Reply Br. 1-2 ("[T]he
burden is on the Examiner to show that a worker in the art would consider
the claimed ratio as a variable for consideration.") (Emphasis added). We
understand Appellant's reference to "a variable for consideration" to mean
that Appellant argues that a "result-effective variable" must be recognized
when applying the design choice doctrine. Appellant provides no persuasive
authority to support the position that the Examiner is initially required to
show that the claimed thickness ratio limitation is a "result-effective
variable" that could be optimized before the Examiner can even apply a
design choice rationale. Thus, Appellant's contentions that the Examiner
should show that the claimed thickness ratio limitation is a result effective
variable does not address the rejection as stated by the Examiner. See
Appeal Br. 3--4; see also Reply Br. 1-2; Final Act. 2, 4, 6; Ans. 3--4.
Second, we acknowledge that Appellant appears to recognize,
correctly, that the cited portions of Plantronics address the issue of
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Appeal2018-007396
Application 14/599,662
"common sense." See Appeal Br. 3 ("Like 'common sense,' an Examiner
cannot merely recite 'design choice' to fill a void in a factual record to
support a finding of obviousness."); see Plantronics, 724 F.3d at 1354
("[T]he [district] court determined that common sense would motivate a
skilled artisan to combine the relevant references' teachings"). However, we
point out that the Examiner's rejection does not rely on a "common sense"
rationale, but, as recognized by Appellant (see Appeal Br. 3--4; see also
Reply Br. 1 ), the Examiner's rejection relies on a "design choice" rationale.
Third, the Examiner finds that Appellant "has merely asserted that the
thickened area may take th[ e] relative [ claimed] dimension, but has not
stated that such a ratio is of any particular importance or that it would
perform in any different or unexpected way from the prior art" and that
"Appellant provides no evidence of criticality, unexpected results, or
alteration in function by including the further narrowing ratio of claim[] 6."
See Final Act. 4; see also Ans. 3. The Examiner reasons that "[as] there is
no evidence that the relative dimension between these components [i.e., the
hub and thickened region] would alter the function of the prior art device," it
would have been obvious "to modify Gupta such that the relative dimensions
between the hub and thickened region are as claimed." See Final Act. 4; see
also Ans. 3.
Appellant's Specification discloses that "[i]n another embodiment
according to any of the previous embodiments, a ratio of the thickness of the
thicker portion at a radially innermost end to a diameter of an outer
periphery of the hub is less than .025" and that "[a] ratio of the thickness of
the thicker portion at a radially innermost end to a diameter of the hub 82 is
less than .025." See Spec. ,r,r 11, 14, 21, and 46.
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Appeal2018-007396
Application 14/599,662
Because the Specification gives no reasons or benefits for a ratio of
the thickness of the thicker portion at a radially innermost end to a diameter
of an outer periphery of the hub being less than .025, the Specification does
not impart any criticality to the claimed thickness ratio. In addition, as
pointed out by the Examiner, Appellant does not provided any objective
evidence of non-obviousness (i.e., secondary considerations), such as
unexpected results to support a finding of criticality of the claimed thickness
ratio. A claim feature that provides no novel or unexpected result is
generally considered to be "an obvious matter of design choice within the
skill of the art." In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); see In re
Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (holding that placement of
catalyst within a bag retainer is not merely "design choice" when it
overcomes a specific problem and the applicant(s) provided evidence of the
benefits of such placement, and distinguishing prior cases in which design
choice was properly relied upon because applicants "failed to set forth any
reasons why the differences between the claimed invention and the prior art
would result in a different function or give unexpected results"); see also In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("It is well settled that
unexpected results must be established by factual evidence."); Final Act. 2,
4; Ans. 3.
For these reasons, we are not informed of error in the Examiner's
rejection of claim 6 under the design choice rationale. Accordingly, we
sustain the Examiner's rejection of claim 6 as unpatentable over Gupta and
Aubin. We further sustain the rejection of claims 9 and 16, which fall with
claim 6.
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Appeal2018-007396
Application 14/599,662
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-20 as
unpatentable over Gupta and Aubin.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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