Ex Parte McMahon et alDownload PDFPatent Trial and Appeal BoardApr 6, 201814202342 (P.T.A.B. Apr. 6, 2018) Copy Citation 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. 2 Appeal2017-007352 Application 14/202,342 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. 3 Appeal2017-007352 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 4 Appeal2017-007352 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 5 Appeal2017-007352 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). 6 Appeal2017-007352 Application 14/202,342 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 7 Appeal2017-007352 Application 14/202,342 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. 8 Appeal2017-007352 Application 14/202,342 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." 9 Appeal2017-007352 Application 14/202,342 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. 10 Appeal2017-007352 Application 14/202,342 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 11 Copy with citationCopy as parenthetical citation