Ex Parte Norris et al

Patent Trial and Appeal Board

Aug 25, 2014

12131280 (P.T.A.B. Aug. 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.
12/131,280 06/02/2008 James W. Norris PA-0007842U;
67097-1069
5535
54549 7590 08/26/2014
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
SUTHERLAND, STEVEN M
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
08/26/2014 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 JAMES W. NORRIS and JAMES D. HILL
____________

Appeal 2012-007381
Application 12/131,280
Technology Center 3700
____________

Before ANNETTE R. REIMERS, THOMAS F. SMEGAL and
LISA M. GUIJT, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James W. Norris et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1–20, the only claims
pending in the application on appeal. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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Application 12/131,280

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CLAIMED SUBJECT MATTER
An understanding of the invention can be derived from a reading of
independent claim 1, which is reproduced below.
1. A gas turbine engine comprising:
a compressor section for delivering compressed air into a
combustion section, and a turbine section for receiving products
of combustion from the combustion section to cause rotation of
rotors in the turbine section, and to drive the compressor section
to rotate;
a flow path for passing cooling air from said compressor
section and into said turbine section while bypassing the
combustion section;
a tap for tapping a portion of cooling air, and
communicating said cooling air through a first heat exchanger,
a second fluid in said first heat exchanger for cooling the
cooling air in said first heat exchanger, and said second fluid
then being utilized to generate electricity; and
said second fluid being circulated in a closed loop from
said first heat exchanger across a turbine, into a condenser at
which the refrigerant is cooled, and then to a pump, and back
into said first heat exchanger.
App, Appeal Br. 7.

REJECTIONS ON APPEAL
The following Examiner’s rejections are before us for review.
1. Claims 1–20 are rejected under 35 U.S.C. 112, second paragraph,
as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the
invention.
2. Claims 1–4, 8–10 and 13–17 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Yamanaka (US 6,644,035 B1, issued
Nov. 11, 2003) and Mangan (US 3,150,487, issued Sept. 29, 1964).
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3. Claims 7 and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Yamanaka and Mangan .
4. Claims 5, 6, 11, 12, 18 and 19 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Yamanaka, Mangan and
Thatcher (US 7,784,288 B2, issued Aug. 31, 2010).

FINDINGS OF FACT
We find that the following enumerated Finding of Fact (FF) to be
supported by a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office). Additional facts may appear in
the analysis.
Fact relating to Appellants’ disclosure
FF1. Appellants acknowledge that the term “vapor cycle driven
generator” as illustrated in Figure 2 “is generally known in the prior art as
the Pure Cycle® system, and is available from UTC-Power of South
Windsor, CT.” Spec. 3, para. 12.

ANALYSIS
Indefiniteness Rejection
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claims 1−20 under 35 U.S.C. §112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which Applicant regards as the invention. Appellants argue in the
Reply Brief at page 1 that “the term ‘the refrigerant’ as utilized in the
independent claims would be understandable to a worker of ordinary skill in
the art.”
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The Examiner contends that “[t]here is insufficient antecedent basis
for this limitation in the claim[s].” Ans. 4. However, the Examiner
acknowledges that “[i]n figure 2 of [Appellants’] disclosure, fluid line 52
carries the second fluid, which is disclosed as ‘a refrigerant, or any other
appropriate fluid that has good heat transfer characteristics’ (Page 1,
paragraph [0011] of the instant application).” See Ans. 9. In other words,
the Examiner understands with reasonable clarity what is being claimed,
when viewed in light of the specification. Definiteness under 35 U.S.C. §
112, second paragraph, requires that “a patent’s claims, viewed in light of
the specification and prosecution history, inform those skilled in the art
about the scope of the invention with reasonable clarity.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S.Ct. 2120, 2129 (2014).
We further note that if the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite.
Energizer Holdings Inc. v. Int’l Trade Comm’n, 435 F.3d 1366 (Fed. Cir.
2006) (holding that “anode gel” provided by implication the antecedent basis
for “zinc anode”); Ex parte Porter, 25 USPQ2d 1144, 1145 (BPAI 1992)
(“controlled stream of fluid” provided reasonable antecedent basis for “the
controlled fluid”). For these reasons, we reverse the rejection of claims
1−20 under 35 U.S.C. §112, second paragraph.

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Obviousness of claims 1–4, 8–10 and 13–17 based on Yamanaka and
Mangan.
Claims 1, 8 and 14
Appellants argue claims 1, 8 and 14 as a group (Appeal Br. 4–5,
Reply Br. 2). We select claim 1 as the representative claim for this group
such that the remaining claims stand or fall with claim 1. 37 C.F.R. §
41.37(c) (1) (vii) (2011).
While acknowledging that “Yamanaka discloses a system wherein a
heat exchanger 4 is provided on a compressed air tap line”, Appellants
contend that “[t]he entire focus of the heat exchanger in Yamanaka is to
ensure the temperature of the air is safe when the air reaches a boost
compressor 6 (see col. 3, line 58 to col. 4, line 36)” while also arguing that
“[t]he claims require a closed loop, and Yamanaka does not circulate its
water in a closed loop.” Appeal Br. 4.
Appellants further acknowledge that Mangan discloses “a ‘closed
loop’ steam turbine section shown to the left of the main gas turbine in
Figure 1” and that “[t]he steam turbine does include a heat exchanger
wherein steam is heated by products of combustion downstream of a turbine
5”, but argue that “Yamanaka, et al. is directed entirely to protecting its
boost compressor 6. Thus the provision of a closed loop system to replace
the heat exchanger 4, wherein that closed loop system is provided by a
second fluid then being utilized to generate electricity, would simply not be
part of the Yamanaka system” and that “Yamanaka must also be capable of
heating the air in the heat exchanger 4, and the closed loop system of
Mangan, et al. would not be capable of providing this function.” Appeal Br.
4–5.
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Appellants are attacking Yamanaka in isolation rather than as
combined with the teachings of Mangan, nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
"The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted).
As the Examiner first points out, “Mangan teaches a closed loop
system (closed loop when valve 27 is closed), with fluid first circulated
through a heat exchanger (17), then across a steam turbine (1), then into a
condenser (18), through a pump (P in figure 1) and eventually back to the
first heat exchanger (17)” and that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to combine the
teaching of a closed loop system with a heat exchanger, turbine, condenser,
and pump, as taught by Mangan, to the engine disclosed by Yamanaka, in
order to prevent the need for a constant supply of fluid to be supplied to the
system.” Ans. 6.
The Examiner is not proposing to replace the heat exchanger of
Yamanaka with the closed loop system of Mangan, as Appellants propose
(see Appeal Br. 4), rather, the Examiner is proposing to modify Yamanaka’s
system to include a closed loop system, as taught by Mangan. See Ans. 5
(“Yamanaka only teaches that feedwater is sent into heat exchanger 15,
heated, then sent out to steam turbine 18, Col. 7, II. 52-56, but not that the
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fluid is recirculated from the steam turbine back to the feedwater inlet as a
closed loop”). Both the Examiner and Appellants acknowledge that Mangan
discloses a “closed loop” system (see Ans. 6; Appeal Br. 4). Appellants
have not provided any persuasive evidence or argument regarding why
Yamanaka’s system would not function if modified to include a closed loop
system, as taught by Mangan, such that fluid is recirculated from the steam
turbine of Yamanaka back to the feedwater inlet in a closed loop, as
proposed by the Examiner. See Ans. 5–6; Appeal Br. 5. An attorney’s
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974).
For the foregoing reasons, we sustain the rejection of claims 1, 8 and
14 as unpatentable over Yamanaka and Mangan.
Claims 2−4, 9, 10 and 15−171
Appellants contend at page 5 of the Appeal Brief that claims 2−4, 9,
10 and 15−17 are separately improperly rejected because they “all require
that the second fluid is part of a vapor cycle driven generator. At best
Yamanaka, et al. and Mangan, et al disclose steam as the ‘second fluid’” and
further that “[t]here is no disclosure of a vapor cycle driven generator in
either of these references”. Furthermore, Appellants argue that “[w]hat is
meant by a ‘vapor cycle’ would be known to a worker in this art, and steam
would not be included.” Reply Br. 2.

1 We find it to be an oversight by Appellants in not including claim 4 in this
grouping because Appellants argue that “claims 2, 3, 9, 10, and 15-17 all
require that the second fluid is part of a vapor cycle driven generator” and
claim 4 which depends on claim 3 also meets such requirement. Appeal Br.
5.
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We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “‘. . . . their
broadest reasonable interpretation consistent with the specification . . . .’”
and “‘. . . . in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (citations omitted). It is the Appellants’ burden to
precisely define the invention, not the PTO’s. In re Morris, 127 F.3d 1048,
1056 (Fed. Cir. 1997). We agree with the Examiner that Appellants do not
claim or disclose “that a vapor cycle driven generator excludes using steam
as the vapor source.” Ans. 9. See also FF1.
For the foregoing reasons, we sustain the rejection of claims 2−4, 9,
10 and 15−17 as unpatentable over Yamanaka and Mangan.
Obviousness of claims 7, 13 and 20 based on Yamanaka and Mangan.
Appellants contend at page 5 of the Appeal Brief that claims 7, 13 and
20 are separately improperly rejected because they “require that there be a
boost pump positioned upstream of the first heat exchanger” 2 and further
that
the disclosure of the first three paragraphs of column 4, and the
paragraph bridging columns 4 and 5 of Yamanaka, et al. make
quite clear that the boost compressor could be damaged if not
for the heat exchanger removing mist. Given that such a main
function of the heat exchanger in Yamanaka, et al. is to protect
the boost compressor, surely it would ruin the goal of
Yamanaka, et al. to move the boost compressor to be upstream
of the heat exchanger. Simply, that rejection is based entirely on
hindsight.
Reply Br. 2.

2 Claim 13 is incorrectly argued in this group as it does not recite the
location of the boost pump in relation to the heat exchanger. Ans. 8.
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Appellants’ arguments are not persuasive. First, as discussed above,
we agree with the Examiner that “Appellant[s] do[ ] not cite where in
Yamanaka it is disclosed that the sole purpose of the heat exchanger is to
protect the boost compressor”. See Ans. 8. In addition, we note that
Yamanaka, at column 3, lines 29–38, discloses that heat exchanger 4 cools
air for cooling the high Temp section of the turbine. Furthermore, we agree
with the Examiner that “[p]lacing the heat exchanger downstream from the
boost compressor would still allow it to lower the temperature of the air for
the high temperature section of the turbine.” Ans. 8.
We find that the Examiner has set forth a reason supported by a
rational underpinning for the conclusion of obviousness, namely, that “[i]t
has been held that ‘rearranging parts of an invention involves only routine
skill in the art.” Ans. 7 (citing In re Japiske, 181 F.2d 1019 (1950).
Therefore, the Examiner did not rely on impermissible hindsight but rather
relied on the knowledge of one skilled in the art at the time of the invention.
See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellants have
not provided persuasive evidence or arguments to the contrary.
For the foregoing reasons, we sustain the rejection of claims 7, 13 and
20 as unpatentable over Yamanaka and Mangan.
Obviousness of claims 5, 6, 11, 12, 18 and 19 over Yamanaka,
Mangan and Thatcher.
While dependent claims 5, 6, 11, 12, 18 and 19 are argued separately
at page 5 of the Appeal Brief, Appellants provide no arguments that we did
not already address in sustaining the rejection of claims 1, 8 and 14 over
Yamanaka and Mangan, while failing to rebut the Examiner’s reliance on
Thatcher. Thus, for the reasons discussed above in sustaining the rejection
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of such claims, we sustain the rejection under 35 U.S.C. §103 of claims 5, 6,
11, 12, 18 and 19 as being unpatentable over the combined teachings of
Yamanaka, Mangan and Thatcher.

DECISION
We AFFIRM the rejection of claims 1–20.
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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