Ex Parte PotterDownload PDFPatent Trial and Appeal BoardDec 18, 201814597553 (P.T.A.B. Dec. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/597,553 01/15/2015 Christopher L. Potter 54549 7590 12/20/2018 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. 67097-3117PUS1; 79235US01 CONFIRMATION NO. 3989 EXAMINER EASTMAN, AARON ROBERT ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 12/20/2018 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 Exparte CHRISTOPHERL. POTTER Appeal2018-005358 Application 14/597 ,553 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks review under 35 U.S.C. § 134 of the Examiner's decision, as set forth in the Final Office Action dated July 3, 2017 ("Final Act."), rejecting claims 1-6, 8-16, and 18-20, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 United Technologies Corporation ("Appellant") is the applicant, according to 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br. 1. Appeal2018-005358 Application 14/597,553 CLAIMED SUBJECT MATTER Claims 1 and 11 are independent. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A gas turbine engine rotor stack comprising: a rotor disk including: a web extending from a rim radially inward to a bore, and a spacer integral with and extending generally axially from the rim, the spacer including: a flow path surface adjacent to an end wall of the rim, an inner surface spaced radially inwardly from the flow path surface and extending between first and second axial locations, the flow path surface configured to seal relative to a fixed stage of vanes, a fillet interconnecting the inner surface and the web, the inner surface tangent to the fillet at the first axial location, and the second axial location axially aligning beneath the vanes and surrounded by the inner surface, the spacer having first and second radial thicknesses respectively disposed at the first and second axial locations, the first radial thickness smaller than the second radial thickness, and the spacer tapering axially from the first axial location to the second axial location. Appeal Br. 7 (Claims App.). 2 Appeal2018-005358 Application 14/597,553 REJECTIONS Claims 1-5, 8-12, 14--16, and 18-20 are rejected under 35 U.S.C. § 103 as unpatentable over Baumann (EP 1905952 A2, published Apr. 2, 2008). Claims 6 and 13 are rejected under 35 U.S.C. § 103 as unpatentable over Baumann and Addis (US 2011/0110783 Al, published May 12, 2011). ANALYSIS Claims 1-5, 8-12, 14-16, and 18-20 over Baumann Appellant argues for patentability of claims 1-5, 8-12, 14--16, and 18-20 as a group. Appeal Br. 3---6. We select claim 1 as the representative claim of the group, and claims 2-5, 8-12, 14--16, and 18-20 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Claim 1 recites, in pertinent part, a rotor disk including a spacer "having first and second radial thicknesses respectively disposed at the first and second axial locations, the first radial thickness smaller than the second radial thickness," and "the spacer tapering axially from the first axial location to the second axial location." Appeal Br. 7 (Claims App. (emphasis added)). The Examiner finds that Baumann discloses a spacer (interdisk spacer 62) including all claim limitations except for the first radial thickness at the first axial location being smaller than the second radial thickness at the second axial location. Final Act. 3 ( citing Baumann Fig. 2). The Examiner determines, however, that it would have been obvious to one of ordinary skill in the art to modify Baumann's spacer to have a first radial thickness at the first axial location that is smaller than the second radial thickness at the second axial location as a matter of design choice. Id. at 4. The Examiner 3 Appeal2018-005358 Application 14/597,553 notes that it appears Bamnann's apparatus would perform equally well with the spacer having these claimed relative sizes. Id. Appellant contends that, in Baumann, the spacer thickness decreases from the first axial location, which is opposite to the claimed relationship. Appeal Br. 4 (providing annotated version of Fig. 2 of Baumann). Appellant asserts that a design choice theory is inappropriate where the allegedly obvious feature achieves something different than the prior art. Reply Br. 1 (citing In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995); In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)). According to Appellant, the Specification explains the benefit of the claimed spacer thickness feature; namely, "[r]educing mass outboard of the part self-sustaining radius decreases the centrifugal loads on the bore and web 66, 68 thereby increasing the cycle life of the rotor disk 60." Appeal Br. 5 (citing Spec. ,r 42); see also Reply Br. 1. Appellant contends that the Examiner should instead show that the spacer radial thickness limitation is a result-effective variable that can be optimized. Appeal Br. 5 (citing Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (quoting In re Nouvel, 493 Fed. Appx. 85, 92 (Fed. Cir. 2012) ("[l]ike 'common sense,' an Examiner cannot merely recite 'design choice' to fill a void in a factual record to support a finding of obviousness.")). Appellant's contentions are unpersuasive. First, the contentions seem to conflate the principle of "design choice" with routine optimization. Appellant provides no persuasive authority to demonstrate that the Examiner is required to show that the claimed spacer radial thickness limitation is a "result-effective variable" that could be optimized before the Examiner can apply a design choice rationale, or instead of applying a design choice 4 Appeal2018-005358 Application 14/597,553 rationale. Second, Appellant's contention that the Examiner should show that the relative thickness limitation is a result effective variable does not address the rejection, as stated. As the Examiner explains, "at no point in the rejection is an 'optimization rejection' ... ever made." Ans. 9. Third, Appellant's contentions do not apprise us of error in the Examiner's design choice position. In appropriate circumstances, a modification of prior art teachings may be a simple matter of design choice. E.g., ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (where the prior art consistently located two sensors in a shredder's feed, a skilled artisan faced two design choices of placing the thickness sensor above or below the presence sensor and each design choice was an obvious combination of prior art elements); In re Conte, 36 Fed. Appx. 446, 451 (Fed. Cir. 2002) (unpublished) (whether keyhole slot used to retain rubber band to front of gun barrel faced upwardly or downwardly was a fairly insignificant design choice as both slots retained rubber band); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (a spring-loaded electrical contact was an obvious matter of design choice within the skill in the art where placement of electrical contact provides no novel or unexpected result). According to Appellant, "[ a ]n Examiner must provide an explicit and clear explanation why an ordinary skilled artisan would have recognized the missing element was an available option for use in the claimed manner." Appeal Br. 5. To the extent it is Appellant's position that Baumann is required to explicitly disclose the claimed relative thickness limitation for the spacer, we disagree. As stated in KSR, "the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative 5 Appeal2018-005358 Application 14/597,553 steps that a person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). Here, the Examiner determines that Baumann' s apparatus would appear to perform equally well with the claimed relative sizes. Final Act. 4. Accordingly, the Examiner explains why the proposed modification of Baumann' s spacer would have been a matter of design choice, and thus, provides a reason why an ordinary skilled artisan would have modified the spacer of Baumann to have the claimed thicknesses. As to Appellant's contention that the Specification explains the benefit of the claimed spacer thickness feature, we note the Specification describes that the first thickness 96 and the second thickness 98 of the spacer 7 6 are different from one another such that "spacer 7 6 at least partially tapers axially between the first and second axial locations." Spec. ,r 40; see also Fig. 4. In one example, first thickness 96 is smaller than second thickness 98 such that spacer 7 6 tapers toward the web 66, whereas, in another example, second thickness 98 may be smaller than first thickness 96. Spec. ,r 40. This description does not indicate that the direction of tapering (i.e., from first thickness 96 to second thickness 98 or vice versa) due to differences of thickness in the spacer is critical. The Specification also describes, "[b ]y contouring the spacer 7 6, mass can be removed in areas where stresses are low. Reducing mass outboard of the part self-sustaining radius decreases the centrifugal loads on the bore and web 66, 68 thereby increasing the cycle life of the rotor disk 60." Spec. ,r 42. The Examiner interprets paragraph 42, as follows: this paragraph states ... that by contouring the spacer the cycle life of the rotor disk can be increased. This paragraph does not at all tell us the way in which to contour the spacer but only that 6 Appeal2018-005358 Application 14/597,553 increasing the cycle life of the rotor disk can be done by doing so. Neither this paragraph pointed out by Appellant, nor any part of the disclosure connects the specific tapering found in the claims to increasing the cycle life of the rotor disk and therefore Appellant has failed to explain any benefit of such a tapering. Ans. 9. We interpret paragraph 42 as suggesting that by contouring a spacer to remove mass, centrifugal loads on the bore are decreased and the life cycle of the rotor disk is increased. Stated differently, this paragraph discloses removing mass somewhere "outboard of the part self-sustaining radius" of the spacer, rather than any particular contouring ( or tapering). Baumann discloses an apparatus having spacers 62 that "are of a general concave-outward arcuate longitudinal cross-section in static condition but may tend to straighten due to centrifugal loading." Baumann ,r 14; see also id. at Fig. 2. Baumann describes, "[t]he simulation/ tests may be performed iteratively, varying parameters such as spacer thickness, spacer curvature or other shape parameters." Id. at ,r 20. Accordingly, Baumann teaches removal of mass from spacers and the effects of centrifugal loading on the spacers. Appellant has not provided persuasive argument or evidence to show that Baumann's apparatus having spacers 62 does not perform equally well as a rotor disk including a spacer having the thicknesses at the recited locations. Thus, we are not apprised of error in the Examiner's rationale for modifying the apparatus of Baumann. For the foregoing reasons, we sustain the rejection of claim 1, and of claims 2-5, 8-12, 14--16, and 18-20 which fall with claim 1, as unpatentable over Baumann. 7 Appeal2018-005358 Application 14/597,553 Re} ection JJ-Claims 6 and 13 For dependent claims 6 and 13, Appellant relies on the same arguments as those presented for respective parent claims 1 and 11. Appeal Br. 6. As Appellant does not apprise us of any error in the rejection of claim 1 or 11, we sustain the rejection of claims 6 and 13 over Baumann and Addis for the same reasons as for claims 1 and 11. DECISION We affirm the rejections of claims 1---6, 8-16, and 18-20 under 35 U.S.C. § 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation