Ex Parte Norris et alDownload PDFPatent Trial and Appeal BoardAug 25, 201412131280 (P.T.A.B. Aug. 25, 2014) Copy Citation 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. Appeal 2012-007381 Application 12/131,280 2 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). Appeal 2012-007381 Application 12/131,280 3 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.” Appeal 2012-007381 Application 12/131,280 4 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. Appeal 2012-007381 Application 12/131,280 5 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. Appeal 2012-007381 Application 12/131,280 6 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 Appeal 2012-007381 Application 12/131,280 7 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. Appeal 2012-007381 Application 12/131,280 8 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. Appeal 2012-007381 Application 12/131,280 9 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 Appeal 2012-007381 Application 12/131,280 10 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 Klh Copy with citationCopy as parenthetical citation