Ex Parte McAuliffe et alDownload PDFPatent Trial and Appeal BoardSep 21, 201210980045 (P.T.A.B. Sep. 21, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHRISTOPHER MCAULIFFE, BRENT J. MERRITT, and CRAIG M. BEERS ____________________ Appeal 2010-004664 Application 10/980,045 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004664 Application 10/980,045 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 7-18. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Environmental control systems are utilized in aircraft to cycle air in order to cool various electronic components as well as the aircraft’s cabin. Spec., paras. [0018], [0025]; see also Zywiak, col. 1, ll. 11-20. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An Environmental Control System comprising: an air cycle machine housing assembly; a housing assembly having a first turbine housing portion, a second turbine housing portion, and a compressor housing portion; a shaft mounted for rotation about an axis of rotation; a hydrodynamic foil bearing which rotationally supports said shaft; a first turbine mounted to said shaft, said first turbine communicating with a first turbine outlet along said axis of rotation, said first turbine outlet define by said first turbine housing portion; a second turbine mounted to said shaft, said second turbine communicating with a second turbine outlet along said axis of rotation, said second turbine outlet axially opposite said first turbine, said first turbine outlet define by said first turbine housing portion; a compressor upstream of said first turbine and said second turbine, said compressor mounted to said shaft between said first turbine and said second turbine, said compressor in communication with a compressor inlet and a compressor outlet located between said first turbine outlet and said second turbine outlet, said compressor inlet and said compressor outlet directed in a radial direction Appeal 2010-004664 Application 10/980,045 3 an annular compressor shim between said first turbine housing portion and said compressor housing portion to provide a desired clearance for said compressor; an annular first turbine outlet shim between said first turbine housing portion and said first turbine outlet to provide a desired clearance for said first turbine; and an annular second turbine outlet shim between said second turbine housing portion and said second turbine outlet to provide a desired clearance for said second turbine. References The Examiner relies upon the following prior art references: Purvis Cronin Thomson Zywiak US 2,801,070 US 4,419,926 US 5,014,518 US 6,615,606 Jul. 30, 1957 Dec. 13, 1983 May 14, 1991 Sep. 9, 2003 Rejections The Examiner makes the following obviousness rejections under 35 U.S.C. § 103(a): I. Claims 1, 7, 13-17, and 18 over Zywiak and Purvis. II. Claims 1, 7, 9-12, and 191 over Zywiak, Thomson, and Purvis. III. Claims 1, 7, 9-11, and 13-18 over Thomson, Zywiak, and Purvis. IV. Claim 8 over Thomson, Zywiak, Purvis, and Cronin. SUMMARY OF DECISION We AFFIRM-IN-PART. 1 Claim 19 was previously canceled, and thus is not involved in this appeal. See Amendment received Nov. 13, 2008. We leave claim 19 listed here for accurate representation of the Examiner’s rejections but do not discuss it further in this decision. Appeal 2010-004664 Application 10/980,045 4 OPINION Rejection I – Zywiak and Purvis In relevant part, independent claim 1 requires shims between the compressor housing and first turbine housing, between the first turbine’s outlet and housing, and between the second turbine’s outlet and housing. The Examiner found that Zywiak’s figure 1 is similar to the configuration of Appellants’ figure 1. Ans. 5. While not explicit, it is implicit in this finding that the Examiner considers this to mean that there are housings and outlets in the appropriate locations in Zywiak for shims to be placed between. The Examiner found that Purvis teaches a shim between a turbine housing and outlet “for the purpose of creating a clearance and absorbing thrust. Id. Based on these findings, the Examiner concluded it would have been obvious to include shims in Zywiak, as taught by Purvis, “in order to create an axial clearance space and to absorb the thurst.” Id. Appellant argues that “the schematic nature of the disclosure of Zywiak in no way discloses or suggests the mechanical housing structure of the [device] claimed by Appellant.” App. Br. 6-7. This argument is persuasive. Notably, Zywiak’s figure 1 only schematically shows the location of various components as well as the airflow paths taken. While a device embodying the schematic illustration certainly would have housings and outlets, the Examiner’s finding that there would be particular housing/outlet interfaces as claimed is speculative. For example, one of the turbine outlets could be integral to the turbine housing. Outside of an admission in the Specification, technical reasoning on the part of the Examiner, or other evidence, there is no way to know whether the device embodying Zywiak would have the particular structural configuration shown Appeal 2010-004664 Application 10/980,045 5 in Appellants’ figure 1. Accordingly, we do not sustain the Examiner’s rejection of claim 1, or of claim 7, which depends therefrom. The scope of independent claim 13 is substantially different from claim 1 and, in particular, does not require shims. Appellants do not address the rejection of claim 13. Accordingly, Appellants have waived the opportunity to challenge the Examiner’s rejection of claims 13-18 in this appeal and we summarily sustain the rejection of claims 13-18. Rejection II – Zywiak, Thomson, Purvis Appellants’ arguments with respect to Rejection II are not commensurate with the actual rejection articulated by the Examiner. Notably, Appellants’ arguments are directed to the motivation statement found in Rejection III. See App. Br. 9-10; compare Ans. 8 (articulating why it would have been obvious to include a thrust bearing from Thomson into Zywiak’s system) with Ans. 10 (articulating why it would have been obvious to modify the compressor/turbine arrangement in Thomson in the manner taught in Zywiak). Nevertheless, it would be inconsistent with our determination of error in the Examiner’s rejection of claim 1 in view of Zywiak and Purvis to affirm the Examiner’s rejection of claim 1 in view of Zywiak, Thomson, and Purvis, because the Examiner’s reasoning with respect to the shims (Ans. 8- 9) is in error for the same reason. Accordingly, the rejection of claims 1, 7, and 9-12 as unpatentable over Zywiak, Thomson, and Purvis is in error for the reason identified above and we do not sustain Rejection II. Appeal 2010-004664 Application 10/980,045 6 Rejection III – Thomson, Zywiak, Purvis The Examiner found that Thomson describes the invention as claimed with the exception of the shims and the compressor being located upstream of the first and second turbine. Ans. 9-12. Notably, the Examiner found that it would have been obvious to modify the turbine/compressor arrangement in Thomson to locate the compressor upstream of the turbines (as shown in Zywiak) “in order to compressing and expanding of air in an efficient manner” [sic]. Ans. 10. Appellants argue that there is no evidence supporting the Examiner’s reasoning. App. Br. 10. The Examiner answers, “there is no fundamental difference in operation which undermines the proposed combination.” Ans. 15. Even if the Examiner is correct that there is no fundamental difference between Thomson and Zywiak to prevent their combination, a proper obviousness analysis requires a reasoned explanation as to why the claimed subject matter would have been obvious to a person of ordinary skill in the art. The Examiner’s statement merely states that such a combination is possible, not whether such a combination is obvious. As Appellants have pointed out, we do not find any underpinnings, be it evidence or technical explanation, to support the Examiner’s “efficiency” reasoning. Accordingly, Appellants’ argument apprises us of an error in the Examiner’s proposed combination of Thomson, Zywiak, and Purvis. We do not sustain Rejection III. Rejection IV – Thomson, Zywiak, Purvis, and Cronin Rejection IV builds on Rejection III. See Ans. 12. We do not sustain this rejection because we do not sustain Rejection III and Rejection IV does not cure the deficiency identified in Rejection III. Appeal 2010-004664 Application 10/980,045 7 DECISION I. We reverse the Examiner’s decision to reject claims 1 and 7 in Rejection I. II. We affirm the Examiner’s decision to reject claims 13-18 in Rejection I. III. We reverse the Examiner’s decision to reject claims 1, 7, 9-12, and 19 in Rejection II. IV. We reverse the Examiner’s decision to reject claims 1, 7, 9-11, and 13-18 in Rejection III. V. We reverse the Examiner’s decision to reject claim 8 in Rejection IV. 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 mls Copy with citationCopy as parenthetical citation