Ex Parte Morgenstern et al

Patent Trial and Appeal Board

Apr 11, 2013

10585162 (P.T.A.B. Apr. 11, 2013)

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.
10/585,162 06/30/2006 Stefan Morgenstern 5038.1030 8326
23280 7590 04/11/2013
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
PRAGER, JESSE M
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
04/11/2013 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 STEFAN MORGENSTERN and RUDOLF STANKA
____________________

Appeal 2011-000121
Application 10/585,162
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
CARL M. DeFRANCO, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000121
Application 10/585,162
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11-221. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to a device for suspending guide blades.
Claim 11, reproduced below, is illustrative of the claimed subject matter:
11. A device for suspending gas channel elements on a
housing of a gas turbine, comprising a plurality of first plate-
shaped elements connected to a plurality of second plate-shaped
elements, the first plate-shaped elements and the second plate-
shaped elements being connected to one another only by web-
like elements, each web-like element extending approximately
perpendicularly to the first and second plate shaped elements to
which it is connected and forming a crenelated profile
extending in a circumferential direction of the housing, a length
of the housing in the circumferential direction being greater, by
a multiple greater than one, than a length of the web-like
element in an axial direction.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tanrikut
Roth
Jourdain
Hayton
US 4,361,010
US 4,832,568
US 5,069,034
US 6,041,590
Nov. 30, 1982
May 23, 1989
Dec. 3, 1991
Mar. 28, 2000
Rogers US 2002/0197153 A1 Dec. 26, 2002

1 The Examiner has withdrawn the rejection of claim 21. Ans. 3.
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Application 10/585,162
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REJECTIONS
Claims 11-17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hayton, Jourdain, and Tanrikut. Ans. 3.
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hayton, Jourdain, Tanrikut, and Roth. Ans. 6.
Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hayton, Jourdain, Tanrikut, and Rogers. Ans. 7.

OPINION
Appellants argue claims 11-20 and 22 as a group. App Br. 4-7. We
select claim 11 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner made the following findings of fact that Appellants do
not dispute: Hayton discloses the claimed invention except for the length of
the housing in the circumferential direction being greater, by a multiple
greater than one, than a length of the web-like elements in the axial
direction; and, each web-like element extending approximately
perpendicularly from the first and second plate shaped elements. Ans. 3-5.
Jourdain teaches first and second plates connected by web elements where
the length in the circumferential direction is greater, by a multiple greater
than one, than a length of the web-like elements in the axial direction. Ans.
4, citing Fig. 5. Tanrikut teaches web-like elements extending
perpendicularly from the first plate shaped elements to the second plate
shaped elements. Ans. 4-5, citing Fig. 5.
Appellants first argue that the combination of Hayton and Tanrikut
would not have been obvious because they allege that Hayton teaches away
from modifying the A-frame construction disclosed. App. Br. 6. Appellants
correctly recognize that Hayton discloses a preferred embodiment having the
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Application 10/585,162
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A-frame construction and a secondary, alternative construction having
perpendicular walls, as shown in Figure 7. Id. However, finding that a
reference finds one solution to be “a preferred embodiment” over another
solution cannot, on its own, support a finding that the reference teaches
away from all other solutions. In re Susi, 440 F.2d 442, 446 n.3 (CCPA
1971). “A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to some other
product for the same use.” In re Gurley, 27 F.3d 551, 554 (Fed. Cir. 1994).
Here, Hayton does disclose the A-frame as a preferred embodiment, as noted
by the Appellants; however, merely discussing a preferred embodiment does
not indicate that Hayton has taught away from other known structures. In
fact, Hayton itself discloses alternative embodiments, Figures 5-8b, one of
which discusses the use of perpendicular web like elements. See Fig. 7.
Further, Hayton does not expressly, or inherently, disavow the use of
arrangements other than those shown in the preferred embodiment of
Figures 1-4. “The prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed….” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Appellants have failed to apprise us of where Hayton does more than find
the A-frame embodiment to be a preferred embodiment. The fact that
Hayton has expressed a benefit of the preferred A-frame embodiment does
not teach away from the substitution of perpendicular web-like elements, as
taught by Tanrikut.
Appellants argue that the Examiner lacked motivation for the
combination because Hayton indicates that the A-frame structure disclosed
in Figure 3 provides the benefit that “differential thermal expansion
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Application 10/585,162
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between the hottest and coldest parts of the panels is virtually totally
eliminated.” App. Br. 6, citing col. 4, ll. 27-29. Appellants reason that
because the same problem is solved by Hayton’s arrangement that is solved
by Tanrikut, one of ordinary skill in the art would not need to look to
Tanrikut to modify the arrangement. Id. The Examiner found that Tanrikut
teaches the use of perpendicular web-like elements, specifically made of
Finwall® material. See Fig. 5, cols. 1-2. The Examiner found such
substitution would provide the benefit of “achiev[ing] a parallel and counter
flow for attaining substantially reduced axial and radial temperature gradient
over the panels.” Ans. 4, 9, citing Abstr.
We agree with the Examiner that it would have been obvious to one
having ordinary skill in the art to use the perpendicular web-like
arrangement of Tanrikut in place of Hayton’s A-frame as it is a matter of
simply choosing between two known alternatives. See e.g., In re Bozek, 416
F.2d 1385, 1388 (CCPA 1969); In re May, 312 F.2d 478, 479 (CCPA 1963).
“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citing U.S. v. Adams,
383 U.S. 39, 40 (1966)). Here, both Hayton and Tanrikut are concerned with
the problem of reducing thermal stresses and temperature gradients over a
gas turbine. Both Hayton and Tanrikut disclose means for resolving those
concerns and were available at the time of invention. Additionally, “[w]hen
a work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or a
different one.” KSR Int’l Co., 550 U.S. at 417. Here, Tanrikut discloses what
appears to be a readily commercially available material, Finwall, having the
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perpendicular web-like arrangement. One of ordinary skill in the art would
have found it obvious to select the Finwall product based on its availability
and reputation for having the predictable result of reducing temperature
gradients over the turbine. As such, one of ordinary skill in the art would
have found it obvious to substitute the perpendicular arrangement of the
Finwall material disclosed by Tanrikut for the A-frame arrangement of
Hayton as a matter of simple substitution with the predictable result of
reducing both thermal stresses and gradients.
Appellants additionally argue that the Examiner erred in finding that
the perpendicular arrangement of the web-like elements affords no other
benefit other than reducing stresses associated with thermal expansion,
which the Examiner relied on to conclude that modifying the angle of the
web-like elements is an obvious design choice (see Ans. 5). App. Br. 7.
Appellants argue that the claimed arrangement affords additional benefits
other than those indicated by the Examiner. Id. However, it is not necessary
for the prior art to serve the same purpose as that disclosed in Appellants’
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016
(CCPA 1972). Furthermore, the portions of the Specification that Appellants
direct our attention to fail to specifically attribute any benefit to the
perpendicular arrangement of the web-like elements. The Examiner found
that the cited portions of the Specification do not identify “the importance
associated with having the web-like elements be approximately
perpendicular.” Ans. 10. Appellants have not provided specific evidence of
the benefits of the perpendicular arrangement of the web-like elements.
Thus, the record before us does not demonstrate the criticality of the recited
range of angles (approximately 90o) for the web-like elements. In re
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Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). (“[T]he applicant must
show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.”)
Accordingly, we agree with the Examiner’s findings in this regard.

DECISION
The Examiner’s rejections of claims 11-20 and 22 are 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)(1)(iv).

AFFIRMED

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