Ex Parte McMahon et al

Patent Trial and Appeal Board

Apr 6, 2018

14202342 (P.T.A.B. Apr. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/202,342 03/10/2014 Shawn M. McMahon
54549 7590 04/10/2018
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.
71202US02;
67097-2442PUS1
CONFIRMATION NO.
1048
EXAMINER
CIGNA, JACOB JAMES
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
04/10/2018 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 SHAWN M. MCMAHON, STEVEN M. MILLER,
DEBORA F. KEHRET, RUSSELL P. PARRISH,
SEAN P. ZAMORA, and NICHOLAS JAMES BEHLMAN
Appeal2017-007352
Application 14/202,342
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 5-10 and 14--16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, United Technologies Corporation, which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal2017-007352
Application 14/202,342
THE CLAIMED SUBJECT MATTER
Claim 5, reproduced below, is illustrative of the claimed subject
matter.
5. A gas turbine engine comprising:
a core engine section;
an exhaust nozzle including an exhaust liner downstream
of the core engine;
a cooling air flow ejector for cooling said exhaust nozzle,
wherein said cooling airflow ejector includes a primary nozzle
positioned to entrain air from a secondary nozzle and provide
mixed air into a passage to be directed to the exhaust liner and a
variable area device including a variable orifice for controlling a
volume of air passing through the primary nozzle;
a control for controlling the variable area device to vary
the size of the variable orifice to control the volume of air
reaching the exhaust liner;
said control moving said variable area device towards a
position to reduce air flow to the primary nozzle when a cooling
requirement on the exhaust liner is reduced and increased when
the cooling requirement is increased;
said control moving said variable area device to reduce air
flow to the primary nozzle when an associated aircraft is
operating at a cruise condition at a higher altitude; and
wherein said control moving said variable area device
towards a more open position when an associated aircraft is at
one of a take-off condition and at high Mach number operation
at lower altitudes.
REJECTIONS
I. Claims 5-10 and 14--16 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
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II. Claims 5-10 and 14--16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Appellant's Admitted Prior Art2
("AAP A"), Mortzheim et al. (US 6,550,253 B2, iss. Apr. 22,
2003) (hereinafter "Mortzheim"), and Chir et al.
(US 2011/0162387 Al, pub. July 7, 2011) (hereinafter "Chir").
DISCUSSION
Rejection I
The stated basis for this rejection is that the recitations "higher
altitude " "lower altitude " "high Mach number " and "more open position "
' ' ' '
as recited in independent claims 5 and 14, are "relative term[ s] which
render[] the claim[s] indefinite." Final Act. 3. The Examiner explains that
the terms are "not defined by the claim[s], the [S]pecification does not
provide a standard for ascertaining the requisite degree, and one of ordinary
skill in the art would not be reasonably apprised of the scope of the
invention." Id.
Appellant argues that the claims are not indefinite because the
meaning of the terms would be clear to one of ordinary skill in the art. See
Appeal Br. 3; Reply Br. 1. According to Appellant, "a worker of ordinary
skill in the art would recognize the general conditions claimed." Appeal Br.
3 (emphasis added). This argument does not apprise us of error in the
Examiner's rejection.
2 In the Non-Final Action dated June 2, 2016, the Examiner identifies
paragraphs 2-5, 33, and 35, and Figures 1 and 2 of the instant application as
Appellant's Admitted Prior Art. See Non-Final Act. 4--5.
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Application 14/202,342
With respect to the terms "lower altitude" and "higher altitude," we
agree with the Examiner that it is unclear what value would distinguish
between "lower" and '"higher" altitudes. See Ans. 11 (explaining that "[ i ]t is
unclear where the crossover between 'low[ er]' and 'high[ er]' altitudes might
be"). Although we appreciate Appellant's position that "higher and lower
are clearly relative to each other" (Appeal Br. 3), such that a "higher
altitude" value would be greater than a "lower altitude" value, the
Specification and claims do not provide a standard that would allow one of
ordinary skill in the art to determine when a particular altitude value
constitutes a "lower altitude" or a "higher altitude" as conditions for
controlling the variable area device, as required by claims 5 and 14. Further,
Appellant does not provide any evidence to support the contention that the
meaning of the disputed terms would be clear to one of ordinary skill in the
art. See Appeal Br. 3; Reply Br. 1.
With respect to the term "high Mach number," we agree with the
Examiner that it is unclear what Mach number values would be considered
"high." See Ans. 11 ("it is unclear what an artisan might consider ...
'high"'). The Specification does not provide any objective standard for
determining what constitutes a "high l\1ach number." As such, the particular
'fvfach number value at which the control must move the variable area device
to a more open position, as required by claims 5 and 14, would not be
readily apparent to one of ordinary skill in the art.
In contrast to the terms discussed above, we discern no indefiniteness
with respect to the term "more open." We understand that "moving said
variable area device towards a more open position," as recited in claims 5
and 14, denotes a direction of movement of the variable area device from an
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Application 14/202,342
already-open position to a position that is more open. Stated differently, the
limitation requires further opening the variable area device. Thus, this basis
for the Examiner's indefiniteness rejection is untenable. However, as
discussed above, claims 5 and 14 are indefinite because the meaning of other
terms in the claims is unclear. Dependent claims 6-10, 15, and 16
incorporate these limitations and, thus, are likewise indefinite.
Accordingly, we sustain the rejection of claims 5-10 and 14--16 under
35 U.S.C. § 112, second paragraph, as indefinite.
Normally, when substantial confusion exists as to the interpretation of
a claim, and no reasonably definite meaning can be ascribed to the terms in a
claim, a determination as to compliance with 35 U.S.C. § 103 is not made.
See In re Steele, 305 F.2d 859, 862---63 (CCP A 1962) (holding that the Board
erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a),
because the rejection was based on speculative assumptions as to the
meaning of the claims). However, in this instance, we consider it to be
desirable to address the rejection under 35 U.S.C. § 103(a) to avoid the
inefficiency of piecemeal appellate review. See Ex parte Ionescu, 222
USPQ 537, 540 (Bd. App. 1984) (expressing the view that, where a claim is
subject to more than one interpretation, one of which would render the
claims unpatentable over the prior art, the USPTO should enter simultaneous
rejections under 35 U.S.C. § 112, second paragraph, and under 35 U.S.C.
§ 102 or 103, to avoid piecemeal appellate review). As discussed in more
detail below, Appellant's arguments are directed to other aspects of the
claims and the rejection under 35 U.S.C. § 103(a), and, thus, we need not
speculate about the meaning of the indefinite language to consider the merits
of the disputed aspects of the rejection. Therefore, we make a determination
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Application 14/202,342
below as to patentability under 35 U.S.C. § 103(a) of the appealed claims in
the interest of administrative economy.
Rejection II
In contesting this rejection, Appellant argues for patentability of
independent claims 5 and 14 together as a group, and does not assert any
separate arguments for dependent claims 6-10, 15, and 16. See Appeal Br.
3-5. Thus, we decide the appeal of this rejection on the basis of claim 5,
with claims 6-10 and 14--16 standing or falling with claim 5. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that AAP A discloses a gas turbine engine
including, in relevant part,
a cooling air flow ejector (ejector system 60 in AAP A Figure 2)
for cooling said exhaust nozzle (as taught in AAP A Paragraph
0033), wherein said cooling airflow ejector includes a primary
nozzle (primary nozzle 64) positioned to entrain air from a
secondary nozzle ("The primary nozzle 64 acts as a venture
nozzle and entrains additional air from a chamber 68 which is
exposed to aircraft bay air ... the bay air is drawn through a
secondary nozzle 66" (AAPA Paragraph 0033)) and provide[s]
mixed air into a passage to be directed to the exhaust liner (as
shown in AAP A Figure 2).
Final Act. 4--5 (boldface omitted) (citing Spec. i-f 33, Fig. 2). The Examiner
acknowledges that "AAPA does not teach a variable area device," but finds
that Mortzheim provides evidence that "ejectors used for cooling air in
turbine[s] are well known in the art to have variable area devices." Id. at 5.
In particular, the Examiner finds that Mortzheim discloses "that the inlet to
the primary nozzle has a throttle valve 172 controlled by a controller 174,"
and "the controller controls the valve based on 'flow characteristics' to
provide for better cooling." Id. (citing Mortzheim, col. 5, 11. 50-65; Fig. 3).
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The Examiner determines that it would have been obvious "to have provided
for a variable area device before the primary nozzle of an ejector used in
cooling portions of a turbine as taught by M[ ortzheim] since the valve would
have been known to improve the cooling characteristics of the ejector." Id.
The Examiner also acknowledges that Mortzheim does not disclose
"the specifics of the controller 174 except ... that the controller controls the
valve, which controls the flow and ultimately the cooling of the liner based
on 'flow characteristics."' Id. at 6. In other words, the Examiner
acknowledges that Mortzheim does not disclose "that the controller move[ s]
the variable area device under [the] particular circumstances" recited in the
claim, but finds that "the particular circumstances claimed are well known in
the art to affect the required cooling of a gas turbine." Id. (citing Chir i-f 43).
In particular, the Examiner finds that Chir discloses "a gas turbine engine
cooling apparatus and method which greatly mirrors the ejector cooling of
M[ortzheim]." Id. (citing Chir, Fig. 4); see also id. at 7 (explaining that
"[t]he reduction of cooling is taught by C[hir] to be useful at cruise operating
conditions," and "[t ]he increase of cooling is taught by C[hir] to be useful at
take off conditions"). The Examiner determines that it would have been
obvious "to have provided the controller of M[ ortzheim] with the
programming to provide more cooling at take off and to provide less cooling
at cruise operating conditions, as these are the expected cooling conditions
well known in the art." Id. at 6.
Appellant argues that "none of these references disclose a claimed
control for a variable area device associated with the claimed environment."
Appeal Br. 4. In particular, Appellant asserts that Mortzheim's "valve is not
controlled to deliver air to a liner." Id. (citing Mortzheim, Fig. 3); see also
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id. (asserting that "[ n Jo where in this art is a control shown for controlling the
volume of air passing into an ejector structure for delivering cooling air to a
liner"). Appellant also asserts that Chir "does not disclose anything with
regard to a variable area device, nor anything with regard to cooling an
exhaust liner." Id. at 4--5. These arguments do not identify error in the
Examiner's rejection because they attack the references individually, rather
than as combined by the Examiner. "Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., 800 F .2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981) ). As discussed above, the Examiner does not rely on Mortzheim or
Chir for teaching an exhaust liner, and does not rely on Chir for teaching a
variable area device. Rather, as discussed above, the Examiner relies on
AAP A for teaching an ejector for cooling a gas turbine engine exhaust liner,
on Mortzheim for teaching a controller and a variable area device for an
ejector primary nozzle, and on Chir for teaching that takeoff conditions have
higher cooling requirements and cruise conditions have lower cooling
requirements. See Final Act. 4--7. Thus, the rejection is based on the
combined teachings of AAP A, l\1ortzheirn, and Chir.
Appellant argues that Mortzheim fails to disclose that the controller is
programmed to perform the operations recited in the claim. See Appeal Br.
4; Reply Br. 1-2. Appellant also asserts that "nothing in Chir ... would
suggest modifying AAP A combined with Mortzheim." Appeal Br. 5.
According to Appellant, the Examiner's rejection is based upon
impermissible hindsight reconstruction. See id.
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Appellant's arguments are unavailing for two reasons. First, the
arguments are not responsive to the rejection presented by the Examiner. As
discussed above, the Examiner acknowledges that Mortzheim does not
disclose that the controller is programmed to move the variable area device
for takeoff and cruise conditions. See Final Act. 6. However, the Examiner
finds that Chir provides evidence that the cooling requirements for takeoff
and cruise conditions were known in the art at the time of the invention,
which Appellant does not specifically contest. See id. at 6-7; see also Chir
i-f 43 (disclosing that, "[g]enerally, at take-off engine operating conditions,
the turbine cooling requirement is at a maximum, whereas at cruise
operating conditions, the cooling requirement is reduced"). The Examiner
determines that it would have been obvious to program the variable area
device controller of Mortzheim, as combined with AAPA's engine exhaust
liner cooling ejector, to provide more cooling at takeoff and less cooling at
cruise operation. See Final Act. 6 (explaining that "the controller 17 4 of
M[ ortzheim] opens and closes the valve 172 according to cooling
requirements, those cooling requirements being identified by C[hir ]").
Second, to the extent that Appellant appears to insist on an explicit teaching,
suggestion, or motivation in the prior art to establish obviousness, such an
argument has been foreclosed by the Supreme Court. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating that a rigid insistence
on teaching, suggestion, or motivation is incompatible with its precedent
concerning obviousness). The Court noted that an obviousness analysis
"need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for [an examiner] can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
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Id. at 418. Instead, the relevant inquiry is whether the Examiner has set
forth "some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988
(Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Here, as
discussed above, the Examiner articulates adequate reasoning based on
rational underpinnings as to why the combined teachings of AAP A,
Mortzheim, and Chir render obvious the claimed subject matter. In this
regard, Appellant does not specifically address the Examiner's articulated
reasoning or explain why the reasoning is in error.
In addition, Appellant does not identify, nor do we discern, any
knowledge relied upon by the Examiner that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971) ("Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from [Appellant's] disclosure, such a reconstruction
is proper."). Thus, we do not agree with Appellant's contention that the
Examiner's rejection "is driven solely by hindsight." Appeal Br. 5.
For the above reasons, Appellant does not apprise us of error in the
Examiner's determination that the subject matter of claim 5 would have been
obvious. Accordingly, we sustain the rejection of claim 5, and claims 6-10
and 14--16 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over
AAP A, Mortzheim, and Chir.
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DECISION
The Examiner's decision rejecting claims 5-10 and 14--16 under
35 U.S.C. § 112, second paragraph, as indefinite is affirmed.
The Examiner's decision rejecting claims 5-10 and 14--16 under
35 U.S.C. § 103(a) as unpatentable over AAP A, Mortzheim, and Chir 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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