Ex Parte Jain

Patent Trial and Appeal Board

Sep 25, 2014

11938975 (P.T.A.B. Sep. 25, 2014)

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.
11/938,975 11/13/2007 Ashok K. Jain 67097-899PUS1;PA0004577U 5097
54549 7590 09/26/2014
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
SANDERSON, JOSEPH W
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
09/26/2014 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 ASHOK K. JAIN
____________________

Appeal 2012-006304
Application 11/938,975
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, MICHAEL L. HOELTER, and
THOMAS F. SMEGAL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ashok K. Jain (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 3–15, 21, 22, and 28–31.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 The Examiner withdrew the rejection of claims 1, 3–15, and 21–31 under
35 U.S.C. § 112, second paragraph. Answer 4. Thus, there is no pending
rejection of claims 23–27. Claims 2 and 16–20 have been canceled.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A nacelle assembly for a turbine engine, comprising:
a cowl for the turbine engine, said cowl extending along
an axis wherein at least a portion of said cowl is axially forward
of a fan of the turbine engine, said cowl having a first surface
spaced from a second surface, said second surface configured to
define a bypass flow passage radially inward of said second
surface;
a flow volume spaced between said first surface and said
second surface; and
a plurality of holes disposed on said first surface and said
second surface of the cowl and arranged to communicate air
outside the nacelle assembly into said flow volume, each of said
plurality of holes configured to alter local air pressure about one
of said first surface and said second surface of said cowl, said
plurality of holes in communication with said flow volume, and
said plurality of holes extending between said flow volume and
an exterior of the nacelle assembly.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Lahti
Parente
Tindell
US 4,993,663
US 5,841,079
US 5,934,611
Feb. 19, 1991
Nov. 24, 1998
Aug. 10, 1999

REJECTIONS
Claims 1, 3–6, 8–14, 22, and 28–31 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Lahti.
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Claims 1, 3–7, 9–14, 21, and 29–31 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Parente or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Parente and Lahti.
Claims 1, 3–5, and 12–15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tindell and Lahti.

OPINION
Anticipation based on Lahti
In contesting this rejection, Appellant argues claims 1 and 12 together,
and presents separate arguments for claims 3 and 14. Appeal Br. 6, 8, 9;
Reply Br. 2, 3. Thus, we decide the appeal of this rejection on the basis of
claims 1, 12, 3, and 14. Claims 6, 8–11, 13, 22, and 29–31 stand or fall with
claims 1 and 12; and claims 4, 5, and 28 stand or fall with claim 3.
37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant argues that Lahti’s air suction ports 46 and 48, on which the
Examiner reads the claimed plurality of holes, do not communicate air to a
flow volume, as called for in claims 1 and 12. Appeal Br. 7; Reply Br. 2.
According to Appellant, each hole 46 communicates to a single duct 52, and
holes 48 communicate to different ducts 54. Id. at 2.
Appellant’s argument does not identify error in the Examiner’s
rejection. The Examiner’s consideration of Lahti’s plurality of ducts 52 and
54 as together making up a “flow volume” is grounded upon a reasonable
claim construction, in light of Appellant’s Specification. Answer 5.
Specifically, Appellant’s Specification describes “flow volume 54” that “is
divided into first chamber 74 and second chamber 82 by wall 70.” Spec.
¶ 16. Chambers 74 and 82 are in communication with blowing device 90
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and suction device 94. Id.; Fig. 2. Thus, consistent with Appellant’s
Specification, a “flow volume” as claimed may comprise plural, independent
volumes separated by a wall. Lahti’s plurality of ducts 52 and 54 are
separated from one another by wall structure of outer cowl 34, but all of the
ducts communicate, via valve 58 or 60, with pump 56. Lahti, Fig. 2; col. 5,
ll. 36–65. The fact that Lahti’s ducts 52 and 54 are separated from one
another by a wall structure does not preclude the Examiner’s reading of the
claimed “flow volume” on these ducts.
Accordingly, Appellant does not apprise us of error in the rejection of
claims 1 and 12 as anticipated by Lahti. Thus, we sustain the rejection of
claims 1 and 12 and dependent claims 6, 8–11, 13, 22, and 29–31, which fall
with claims 1 and 12.
In contesting the rejection of claim 3, Appellant argues that claim 3
“recites, ‘a wall dividing said flow volume into a first chamber and a second
chamber such that air can be communicated between the chambers,’ such
that the chambers are part of the same flow volume.” Appeal Br. 8. That
argument is not commensurate with the scope of claim 3, and thus is not
convincing, because, as correctly pointed out by the Examiner, claim 3 does
not include the language “such that air can be communicated between the
chambers.” Answer 13. The Examiner denied entry of the Amendment,
filed July 11, 2011, which attempted to add that language to claim 3.
Advisory Action, mailed July 15, 2011.
Appellant clarifies that the argument “was directed towards the
feature of a flow volume divided into a first chamber and second chamber.”
Reply Br. 2. This argument also fails to apprise us of error in the rejection.
As pointed out above, Lahti’s plurality of ducts 52 and 54 are separated from
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one another by a wall structure of outer cowl 34, such that each duct is a
separate chamber.
For the above reasons, we sustain the rejection of claim 3 and claims
4, 5, and 28, which fall with claim 3, as anticipated by Lahti.
Claim 14 requires that the first chamber be configured to direct a first
air flow in a first direction and the second chamber be configured to direct a
second air flow in a second direction different from the first direction.
Appeal Br. 17, Claims App. Appellant asserts that the Examiner does not
identify the first air flow direction and second air flow direction. Id. at 9.
However, this is not correct. The Examiner addresses these limitations in
the Answer, in the paragraph bridging pages 5 and 6, and on page 14. We
agree with and adopt the Examiner’s findings and analysis. Appellant
reiterates the argument that the plural ducts would not be considered to be
part of the same flow volume. Reply Br. 3. This argument is not
convincing, for the reasons discussed above.
Thus, we sustain the rejection of claim 14 as anticipated by Lahti.
Anticipation based on Parente
Claim 1 requires, inter alia, a plurality of holes disposed on first and
second surfaces of the cowl and “arranged to communicate air outside the
nacelle assembly into said flow volume.” Appeal Br. 15, Claims App.
The Examiner sets forth two alternative positions, as explained on
page 15 of the Answer, to support the finding that Parente discloses these
limitations. For the reasons that follow, we find deficiencies in both
positions vis-à-vis the rejection of claim 1.
We understand the first position to be that the first and second
surfaces of claim 1 read on frontface skin 26 and backface skin 28 of
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Parente’s permeable acoustic layer 22, the claimed plurality of holes read on
pores 32 and 34, and the flow volume reads on each section 30 between the
frontface and backface skins. Answer 15. The Examiner relies on Parente’s
disclosure of injecting pressurized fluid using fluid injecting device 24 to
support the finding that pores 32 and 34 are arranged to communicate air
outside the nacelle assembly into the flow volume. Id. (citing Parente, col.
3, ll. 59–64).
Parente discloses that pressurized air supplied by pressurized fluid
injecting device 24 passes through permeable acoustic layer 22, and that
pores 34 are sized and configured to allow fluid to pass to acoustic core 30
and pores 32 are sized and configured to allow fluid to pass from acoustic
core 30 to the intake airflow. Parente, col. 5, ll. 3–7, 47–53. Parente’s
pressurized fluid injecting device 24 “is preferably formed to inject heated
air taken from the intake airflow from downstream of the inlet (e.g., from
within the engine).” Id. at col. 3, ll. 61–64. The Examiner asserts that this
air taken from the engine “is outside the nacelle assembly.” Answer 15. As
pointed out by Appellant, the air injected by fluid injecting device 24 is
taken from within the engine (and, thus, presumably, from within the nacelle
assembly), and the Examiner does not point to any disclosure in Parente that
air released from fluid injecting device 24 is from outside the nacelle
assembly. Reply Br. 4. Thus, the Examiner fails to establish by a
preponderance of the evidence that Parente’s pores 32 and 34 are arranged,
within the nacelle assembly of Parente, to communicate air outside the
nacelle assembly into the flow volume (i.e., acoustic core 30), as called for
in claim 1. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371
(Fed. Cir. 2008) stating that
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unless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the
thing claimed and, thus, cannot anticipate under 35 U.S.C. §
102.
The Examiner’s second position relies on either pores 32 or pores 34
as the claimed plurality of holes. Answer 15. The Examiner contends that
Parente’s disclosure of “unobstructed holes within the surfaces for the
passing of air . . . renders the holes ‘arranged’ to communicate air in either
direction.” Id. However, the Examiner’s contention overlooks the fact that
pores 32 and 34 are arranged in Parente’s nacelle assembly such that
pressurized air injected from pressurized fluid injecting device 24 passes
outwardly through the pores. It is not apparent how pores 32 or pores 34
would be capable of communicating air outside the nacelle assembly into the
flow volume, which is pressurized by the fluid injecting device 24, and the
Examiner does not explain adequately how this could occur. Therefore, the
Examiner fails to establish by a preponderance of the evidence that Parente’s
pores 32 and 34 are arranged, within the nacelle assembly of Parente, to
communicate air outside the nacelle assembly into the flow volume (defined
between the upper and lower surfaces of inlet liner 20), as called for in claim
1.
For the above reasons, we do not sustain the rejection of claim 1 and
claims 3–7, 9–11, 21, and 31, which depend from claim 1, as being
anticipated by Parente.
Unlike claim 1, independent claim 12 does not require that the
plurality of holes disposed on first and second surfaces of the cowl be
arranged to communicate air outside the nacelle assembly into said flow
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volume. Appeal Br. 16, Claims App. Thus, Appellant’s arguments directed
to that limitation are not germane to claim 12. In contesting the rejection of
claim 12, Appellant argues that “[t]he section 30 between holes 32 and 34
cannot be the claimed flow volume because holes 32 do not extend between
the flow volume and the exterior of the nacelle, as claimed.”2 Reply Br. 4.
This argument is not convincing, because it is not correct. Parente’s pores
32 are located on the exterior face of inlet liner 20, and thus extend between
acoustic core 30 and an exterior of the nacelle. Parente, Fig. 3.
In contesting the rejections of claims 12 and 14 as anticipated by
Parente, Appellant argues that the Examiner has not clearly identified the
structure in Parente corresponding to the claimed first and second surfaces.
Appeal Br. 10, 11. This is not correct. The Examiner explains that, for the
second position, in which the Examiner relies on either pores 32 or pores 34
as the holes, “the surfaces become the upper and lower surfaces.”
Answer 15. We understand the Examiner to be referring to the upper and
lower surfaces of inlet liner 20. Appellant asserts that, pursuant to this
second position, “the Examiner has not shown a plurality of holes disposed
on both said first surface and said second surface.” Reply Br. 4. This
argument does not apprise us of error in the rejection, because Parente’s
Figure 3 shows a plurality of pores 34 on the bottom surface of inlet liner 20
and a plurality of pores 34 on the portion of the upper surface of inlet liner
20 along which acoustic layer 22 extends.

2 We note that “the nacelle assembly” in claim 12 lacks antecedent basis in
the claim. For purposes of this appeal, we construe “the nacelle assembly”
in claim 12 consistent with Appellant’s Specification as including the fan
cowl and core cowl recited in claim 12. See Spec. ¶ 13 (“Nacelle assembly
38 includes fan cowl 42 and core cowl within fan cowl 42.”).
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In contesting the rejection of claim 14, Appellant additionally argues
that there is only one airflow direction through pores 32 and 34 in Parente.
Appeal Br. 12. This is not correct. The Examiner explains, in the paragraph
bridging pages 8 and 9 of the Answer, that “the walls between each 30,”
which we understand to be a reference to the walls dividing core 30 into
honeycomb cells 36, correspond to the claimed “dividing wall,” and that the
chambers (i.e., the cells) direct airflows in different directions. Appellant
does not identify with sufficient specificity the error in the Examiner’s
findings. The direction of flow through each cell is different, as shown by
arrows in Parente’s Figure 3.
Appellant argues that the Examiner’s proposed modification of
Parente in view of the teachings of Lahti is improper. Appeal Br. 10; Reply
Br. 5. This line of argument is not germane to the rejection of claims 12–14,
29, and 30 as anticipated by Parente. Appellant does not challenge with any
specificity the Examiner’s position that Parente discloses a fan. Answer 7
(stating that the claims are rejected under 35 U.S.C. § 102(b) as anticipated);
id. at 8 (pointing to Parente’s discussion of a fan).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s rejection of claims 12 and 14 as anticipated by Parente.
Appellant does not present any separate arguments for claims 13, 29, and 30.
Thus, they fall with claim 12. 37 C.F.R. § 41.37(c)(1)(vii) (2011). We
sustain the rejection of claims 12–14, 29, and 30 as anticipated by Parente.
Obviousness based on Parente and Lahti
In rejecting claim 1 as unpatentable over Parente and Lahti, the
Examiner proposes to modify Parente “to use a turbofan as taught by Lahti.”
Answer 8. In articulating this rejection, the Examiner does not point to any
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teachings in Lahti that would make up for the deficiency in Parente vis-à-vis
claim 1. Thus, we also do not sustain the rejection of claim 1 and claims 3–
7, 9–11, and 31, which depend from claim 1, as being unpatentable over
Parente and Lahti.
We need not reach a separate determination as to the propriety of the
rejection of claims 12–14, 29, and 30 under 35 U.S.C. § 103(a) as being
unpatentable over Parente and Lahti, because our affirmance of the rejection
of these claims as anticipated by Parente is dispositive.
Obviousness based on Tindell and Lahti
The Examiner’s rejection of claims 1, 3–5, and 12–15 is premised in
part on the Examiner’s determination that it would have been obvious to
modify Tindell “to use a turbofan as taught by Lahti as these are more
efficient for cruising than turbojet engines and operate at higher speeds than
turboprop engines.” Answer 11.
Appellant correctly observes that the Examiner does not point to any
evidence in the record to support the finding that turbofans are more
efficient for cruising than turbojet engines and operate at higher speed than
turboprop engines. Appeal Br. 12; Reply Br. 6. In response, the Examiner
states that “[m]otivation can be found in the general knowledge of one of
ordinary skill in the art.” Answer 17. Be that as it may, it still is incumbent
upon the examiner to establish a factual basis to support the legal conclusion
of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17 (1966), viz., (1) the scope and
content of the prior art; (2) the differences between the prior art and the
claims at issue; and (3) the level of ordinary skill in the art. A conclusion of
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obviousness must be supported by explicit findings and analysis establishing
an apparent reason to combine the known elements in the manner required in
the claim at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner asserts that:
Turbofan engines are the engine of choice for
commercial jet airplanes (the type implicitly depicted in Fig 1)
due to these cited characteristics, while turbofans are more
efficient at slower speeds (used in smaller craft or heavy lifters)
and turbojets at higher speeds (used in military fighters). This
is demonstrated in various charts of propulsive efficiency vs.
airspeed, available in numerous propulsion textbooks.
Answer 18.
However, this is an unsupported assertion. As noted by Appellant, the
Examiner does not proffer or point to any specific “charts of propulsive
efficiency vs. airspeed” or any specific one of the “numerous propulsion
textbooks” alluded to in the assertion. Reply Br. 6. Thus, in this case, the
Examiner fails to establish a factual basis that it was generally known in the
art that turbofans are more efficient for cruising than turbojet engines and
operate at higher speed than turboprop engines. Consequently, the Examiner
fails to establish a prima facie case of obviousness of the subject matter of
claims 1 and 12 and their dependent claims 3–5 and 13–15. We do not
sustain the rejection of claims 1, 3–5, and 12–15 as unpatentable over
Tindell and Lahti.

DECISION
The Examiner’s decision rejecting claims 1, 3–6, 8–14, 22, and 28–31
under 35 U.S.C. § 102(b) as anticipated by Lahti is affirmed.
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The Examiner’s decision rejecting claims 1, 3–7, 9–11, and 31 under
35 U.S.C. § 102(b) as anticipated by Parente is reversed.
The Examiner’s decision rejecting claims 1, 3–7, 9–11, 21, and 31
under 35 U.S.C. § 103(a) as unpatentable over Parente and Lahti is reversed.
The Examiner’s decision rejecting claims 12–14, 29, and 30 under
35 U.S.C. § 102(b) as anticipated by Parente is affirmed. Accordingly, we
do not reach a separate determination on the alternative rejection of these
claims under 35 U.S.C. § 103(a) as unpatentable over Parente and Lahti.
The Examiner’s decision rejecting claims 1, 3–5, and 12–15 under
35 U.S.C. § 103(a) as unpatentable over Tindell and Lahti is reversed.
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-IN-PART

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