Ex Parte Rauch et al

Patent Trial and Appeal Board

Aug 15, 2017

13178788 (P.T.A.B. Aug. 15, 2017)

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.
13/178,788 07/08/2011 Marc RAUCH 1033275-000607 9091
117185 7590
ALSTOM
C/O Buchanan Ingersoll & Rooney PC
1737 King Street, Suite 500
Alexandria, VA 22314
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC RAUCH, HELMAR WUNDERLE,
PETER BALDISCHWEILER, and AI LING CHIN
Appeal 2015-007036
Application 13/178,788
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
GORDON D. KINDER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Marc Rauch et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—19, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Alstom Technology
LTD. Br. 1.
Appeal 2015-007036
Application 13/178,788
THE CLAIMED SUBJECT MATTER
Claims 1 and 3 are independent. Claim 1 is reproduced below and is
illustrative of the claimed subject matter on appeal.
1. A gas turbine arrangement comprising:
a compressor, a combustion chamber and a turbine
connected to one another; and
a casing housing the compressor,
wherein the casing includes flanges, the flanges being,
connected to pipes to provide secondary air from the compressor
to at least one of the combustion chamber and the turbine,
wherein the flanges define passages, each of the passages
having an oval cross section.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Oppenheimer
Cohen
Daguet
Waldherr
Fischer
Charon
Koganezawa
Snecma
Rose
US 2,848,156
US 3,750,397
US 4,870,826
US 6,311,471 B1
US 6,581,679 B2
US 6,782,702 B2
US 7,320,175 B2
FR 2907166 A1
US 2009/0274556 A1
Aug. 19, 1958
Aug. 7, 1973
Oct. 3, 1989
Nov. 6, 2001
June 24, 2003
Aug. 31,2004
Jan. 22, 2008
April 18, 2008
Nov. 5, 2009
THE REJECTIONS
I. Claims 3,11, and 16—19 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement. Final Act. 5—7.
II. Claims 11 and 16—19 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the enablement requirement. Id.
at 7-12.
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III. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Snecma. Id. at 13—16.
IV. Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Charon. Id. at 16—17.
V. Claims 16—19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Snecma and Waldherr. Id. at 17—18.
VI. Claims 3, 4, 10, and 12—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Daguet, Charon, Fischer, Cohen, and Koganezawa.
Id. at 18—25.
VII. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Daguet, Charon, Fischer, Cohen, Koganezawa, and
Rose. Id. at 25—26.
VIII. Claims 7—9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Daguet, Charon, Fischer, Cohen, Koganezawa, Oppenheimer,
and Rose. Id. at 26—28.
IX. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Daguet, Charon, Fischer, Cohen, Koganezawa, and Waldherr.
Id. at 28—29.
OPINION
Rejection I
Claim 3
Claim 3 recites “a casing housing the compressor . . . having at least
one flange . . ., the at least one flange being connected to at least one pipe
for providing secondary air to at least one of the combustion chamber and
the turbine.” Br. 34 (Claims App’x.). The Examiner determines the
broadest reasonable interpretation of this claim “is a plurality, i.e., two or
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more, of flanges with each single flange connected to a plurality of pipes.”
Ans. 2. The Examiner then determines that Appellants failed to show a
plurality of pipes connected to a single flange. Final Act. 6. Appellants
respond that the Specification describes and illustrates “one or more multiple
pipes 17 connected to one or more multiple flanges 16.” Br. 9 (citing Spec.,
Figs. 3^1; 1111-12, 19-30).
The initial burden of establishing unpatentability, on any ground, rests
with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
In a rejection based on the written description requirement of the first
paragraph of 35 U.S.C. § 112, the Examiner can meet this burden by
establishing that the claimed subject matter in question is completely outside
the scope of any embodiments in the original disclosure. See In re Alton, 76
F.3d 1168, 1175 (Fed. Cir. 1996). Then the burden of proof is shifted to
Appellants to show by evidence, reasoning, or argument that the original
disclosure reasonably conveyed to one of ordinary skill in the art that
Appellants were in possession of the subject matter in question. See id.
The Examiner has established that claim 3 reads on a flange that is
connected to more than one pipe. Appellants have shown only that the
original disclosure reasonably conveyed to one of ordinary skill in the art
that Appellants were in possession of one or more flanges, each flange
connected to a single corresponding pipe. Thus, a flange that is connected to
more than one pipe is outside of the written description of the application as
filed, which is all that is necessary to establish non-compliance with
35 U.S.C. § 112, first paragraph, written description requirement. See, e.g.,
Alton, 76 F.3d at 1175—76; see also In re Wertheim, 541 F.2d 257, 263—64
(CCPA 1976).
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Accordingly, we sustain the rejection of claim 3 under 35 U.S.C.
§112, first paragraph as failing to comply with the written description
requirement.
Claims 11 and 16—19
Claims 11 and 16 recite that the pipes are connected to the gas turbine
arrangement or configured “such that secondary air is passable from the
compressor to the second outlet end of each replacement pipe to feed the
secondary air to a burner connected to the combustion chamber.” Br. 36
(Claims App’x.). The Examiner finds that “[wjhile [Appellants’] disclosure,
as originally filed, disclosed second flanges providing the secondary air to
the combustion chamber, [Appellants’] disclosure, as originally filed, failed
to disclose providing the secondary air to a burner connected to the
combustion chamber.” Final Act. 7. The Examiner, thus, determines that
claims 11 and 16, and claims 17—19, which depend therefrom, fail to
reasonably convey to one of ordinary skill in the art that Appellants had
possession of the claimed invention.
Appellants respond that “[t]he Specification discloses that pipes 17
are connected to second flanges 16 to provide secondary air to a combustion
chamber 12 to facilitate combustion of material in the combustion chamber,
which occurs via burners.” Br. 10 (citing Spec. H 8—9, 19—30). To satisfy
the written description requirement, the Specification must describe the
claimed invention in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed subject
matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1562—63 (Fed. Cir. 1991). The issue of whether the written description
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requirement has been satisfied is a question of fact. Wang Labs, Inc. v.
Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).
The Specification makes clear that first flanges 15 on compressor
casing 14 are “for connecting burners that feed the combustion chamber 12.”
Spec. 121; see also id. 1 6 (“compressor casing . . . ha[s] . . . flanges ... for
connecting pipes feeding burners connected in turn to the combustion
chamber”). With respect to second flanges, the Specification states only that
second flanges 16 on compressor casing 14 “provid[e] secondary air to the
combustion chamber 12 and/or the turbine 13.” Id. 122. The Specification,
however, does not explicitly state that in a design in which secondary air is
supplied to a combustion chamber, air is fed to burners that are connected in
turn to the combustion chamber.
Appellants state that providing secondary air to the combustion
chamber “occurs via burners.” Br. 10. This is not described in the
Specification, nor does Appellants’ conclusory statement (without
accompanying evidence or reasoning) persuade us that one of ordinary skill
in the art would understand the provision of secondary air to the combustion
chamber to occur through burners that are connected in turn to the
combustion chamber. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(An attorney’s arguments in a brief cannot take the place of evidence.).
Without more, we are not persuaded that the Specification describes the
claimed invention in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession, in a design where
secondary air is supplied to a combustion chamber, of feeding secondary air
to burners connected in turn to the combustion chamber, as opposed to
feeding directly to the combustion chamber, for example.
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Accordingly, we sustain the rejection of claims 11 and 16—19 under
35U.S.C. § 112, first paragraph as failing to comply with the written
description requirement.
Rejection II
The enablement provision of 35 U.S.C. § 112, first paragraph,
requires the Specification of a patent application to describe the invention,
and the manner and process of making and using it, “in such full, clear,
concise, and exact terms as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to make and use the
same.” 35 U.S.C. § 112. “The enablement requirement ensures that the
public knowledge is enriched by the patent specification to a degree at least
commensurate with the scope of the claims.” Nat’l Recovery Techs., Inc. v.
Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195—96 (Fed. Cir. 1999).
Accordingly, the Specification must provide sufficient teaching such
that one skilled in the art could make and use the full scope of the invention
without undue experimentation. CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d
1333, 1338 (Fed. Cir. 2003); Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d
1361, 1365 (Fed. Cir. 1997); In re Wands, 858 F.2d 731, 736-37 (Fed. Cir.
1988). “The key word is ‘undue,’ not ‘experimentation.’” Wands, 858 F.2d
at 737 (quoting In re Angstadt, 537 F.2d 498, 504 (CCPA 1976)). That is,
the Specification need only teach those aspects of the invention that one
skilled in the art could not figure out without undue experimentation. See,
e.g., Nat’l Recovery Techs., 166 F.3d at 1196 (“The scope of enablement. . .
is that which is disclosed in the specification plus the scope of what would
be known to one of ordinary skill in the art without undue
experimentation. ”).
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Factors to be considered in determining whether a disclosure would
require undue experimentation include “(1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the
claims.” Wands, 858 F.2d at 737.
In calling into question the enablement of an applicant’s disclosure,
the Examiner has the initial burden of advancing acceptable reasoning
inconsistent with enablement so as to shift the burden to the applicant to
show that one of ordinary skill in the art could have practiced the claimed
invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229,
1232 (CCPA 1982).
The Examiner determines that the disclosure in the present application
is insufficient to enable one of ordinary skill in the art to make and/or use the
invention of claims 11 and 16—19 because “the compressor air pressure at
second flanges (16) would have been lower than the compressor air pressure
at first flanges (15). . . because second flanges (16) are disclosed as being
located downstream of the first flanges 15,” and moreover, “the pressure of
the secondary air at second flanges (16) would have decreased due to
frictional losses as the secondary air flowed from second flange (16),
through pipe (17), and into another pipe having a 180° bend to transport the
secondary air upstream ... to a burner/fuel injector secured to first flange
(15).” Final Act. 11. The Examiner, thus, determines that Appellants’ claim
would “require[] a fluid to flow from a lower pressure to a higher pressure
region which violates the second law of thermodynamics.” Id. With respect
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to the Wands factors, the Examiner points to the state of the prior art and
level of predictability and finds there to be “low predictability,” “requiring
extensive design and investment, validation and certification.” Id. at 12.
The Examiner also finds there to be insufficient “amount of direction
provided by the inventor” and that there has not been “an adequate
disclosure of a device [which] may require details of how complex
components are constructed and perform the desired function.” Id. (quoting
MPEP § 2164.06(a)).
Appellants maintain that “[t]he Specification discloses that pipes 17
are connected to second flanges 16 to provide secondary air to a combustion
chamber 12 to facilitate combustion of material in the combustion chamber,
which occurs via burners.” Br. 10 (citing Spec. H 8, 9, 19—30). We note
that “the [Specification need not disclose what is well known in the art.”
Lindemann Maschinenfabrik GmbHv. American Hoist and Derrick Co., 730
F.2d 1452, 1463 (Fed. Cir. 1984) (citing In re Myers, 410 F.2d420 (CCPA
1969)). All that is necessary is that one skilled in the art be able to practice
the claimed invention, given the level of knowledge and skill in the art. The
Examiner finds that a “‘burner’ was also known as a fuel injector that was
conventionally known to be connected to one end of a combustion chamber
to inject fuel into said combustion chamber to mix with air from a
compressor and combust producing hot combustion gases.” Final Act. 7—8.
When considering this level of knowledge and skill in the art, we determine
that one of ordinary skill in the art would be able to configure the pipes
connected to the second flanges so as to be able to pass secondary air from
the compressor to the end of the pipe to feed secondary air to a burner
connected to the combustion chamber, as called for by the claims. In
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particular, one of ordinary skill in the art would understand the burners to be
connected to the combustion chamber, not connected to first flanges on the
compressor. In this way, contrary to the premise of the basis for the
Examiner’s rejection, no 180° bend would be necessary.
Moreover, we are not persuaded that any lower pressure at second
flanges 16, as compared to first flanges 15 (due to second flanges 16 being
downstream of first flanges 15), would have been significant enough so as to
prevent a person of ordinary skill in the art from being able to pass
secondary air from the second flanges of the compressor to the end of the
pipes so as to feed secondary air to a burner connected to the combustion
chamber. Contrary to the Examiner’s conclusions, we are not persuaded that
the level of predictability in the gas turbine arrangement is low and/or that
the components of the gas turbine arrangement are sufficiently complex so
as require additional explanation than what is disclosed in the Specification.
In our view, the Examiner does not advance adequate reasoning to call
into question whether those of ordinary skill in the art would be able,
without undue experimentation, to feed secondary air to a burner connected
to the combustion chamber. In summary, the Examiner fails to discharge the
initial burden of advancing acceptable reasoning inconsistent with
enablement so as to shift the burden to Appellants to show that one of
ordinary skill in the art could have practiced the claimed invention without
undue experimentation. Accordingly, we do not sustain the rejection of
claims 11 and 16—19 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
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Rejection III
Claim 1
The Examiner finds that Snecma discloses all of the limitations of
independent claim 1, including, inter alia, flanges on a compressor casing,
the flanges being connected to pipes to provide secondary air from the
compressor to at least one of a combustion chamber and a turbine. Final
Act. 13—14. Although the Examiner finds that this limitation “is a statement
of intended use which has been given little patentable weight,” the Examiner
finds that Snecma “states that it was known to bleed compressor air, i.e.,
secondary air, from a gas turbine compressor for reuse in other parts of the
engine such as cooling the turbine.” Id. at 14 (citing Snecma, 1:25—2:6).
The Examiner also finds that Snecma discloses that the flanges on the
compressor casing define passages having an oval cross-section. Id. The
Examiner finds that “the opening cross-section of [Snecma’s] flange (12)
reads on oval cross section.” Id. The Examiner points to a broad
interpretation of “oval” as extending to the shape of “[a]n oval track, as for
horse racing or athletic events.” Id. (The American Heritage Dictionary,
Second Edition (1976)). The Examiner also points to the use of the term
“oval” in Fischer as evidentiary support for the finding that the shape of the
opening of Snecma’s flange 12 is considered an oval to those of ordinary
skill in the art. See id.
Appellants argue that “oval” is commonly understood to mean
“having the shape of an egg” or “broadly elliptical” (Br. 13 (citing Merriam
Webster Online Dictionary)), and Snecma fails to disclose such a shape {id.
at 14). More particularly, Appellants argue that the Examiner’s proffered
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definition fails to show how the “linearly long openings 12 that are in the
combustion chamber 10 in [Snecma] are oval shaped.” Id.
The PTO gives claims their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
Specification refers to “flanges 16 defm[ing] passages having an asymmetric
cross section, such as an oval cross section, for example.” Spec. 123; see
also id. 124 (“pipes 17 have an asymmetrical inlet cross section, such as an
oval inlet cross section”). Although the Specification describes an oval as
one example of an asymmetric cross section, the Specification does not
provide a definition of the claim term “oval.” If the Specification does not
assign or suggest a particular definition to a claim term, it is appropriate to
consult a general dictionary definition of the word for guidance in
determining the ordinary and customary meaning of the claim term as
viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). Here, an ordinary and
customary meaning of the word “oval” is “shaped like a circle that is longer
than it is wide.” Merriam-Webster Learner’s Dictionary, available at
www. leamersdictionary. com.
We find nothing in the Specification inconsistent with this ordinary
meaning. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of
the claim must be given their plain meaning unless the plain meaning is
inconsistent with the Specification). More particularly, we view the
Specification’s reference to an “oval” as an example of an “asymmetric”
cross-section as implicating an oval that is egg-shaped in accordance with
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one definition of “oval,” but not limiting the definition of “oval” in the
claims. The claims do not require that the passage cross-section be any
particular kind of oval, and we determine that the claimed “oval” can refer to
any kind of oval—asymmetric or otherwise. Because the claimed “oval”
can refer to any kind of oval, the claimed “oval” can encompass a symmetric
oval that is “shaped like a circle that is longer than it is wide,” just as it can
encompass a symmetric oval that is elliptical or an asymmetric oval.
Thus, according to an ordinary meaning of the word “oval,” claim 1
extends to a passage cross-section that is “shaped like a circle that is longer
than it is wide.” Given this interpretation of “oval,” we are not persuaded
that Snecma’s elongated circle cannot reasonably be considered an “oval”
under the broadest reasonable interpretation. We note that “[ajbsent an
express definition in their specification, the fact that appellants can point to
definitions or usages that conform to their interpretation does not make the
PTO’s definition unreasonable when the PTO can point to other sources that
support its interpretation.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997).
As to the Examiner’s finding that Snecma discloses flanges on a
compressor casing, Appellants argue that the long holes 12 relied upon by
the Examiner are formed in a casing of a combustion chamber, not in a
casing housing a compressor. Br. 15. The Examiner responds that one of
ordinary skill in the art would understand that Snecma’s recitation of
drawing air at the combustion chamber “does not make sense if interpreted
literally” considering that one of ordinary skill in the art would not draw
combustion/exhaust gases from a combustion chamber for pressurizing an
aircraft. Ans. 42 43. The Examiner also points out that the machine
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translation alternatively refers to housing 10 as a combustion chamber
housing and a compressor housing. Id. at 47. In particular, the Examiner
points to the statements in Snecma that “Figure 2 shows a cross section of a
compressor housing 10” and that “[t]here is shown in Figure 3 a perspective
view of a combustion chamber casing correspond[ing] to the diagram of
Figure 2.” Id. at 48.
The burden of proof with respect to the Examiner’s rejection is by a
preponderance of the evidence. In order to satisfy this standard, the
evidence must demonstrate that it is more likely than not that the alleged fact
is the case. See Bosies v. Benedict, 27 F.3d 539, 541—42 (Fed. Cir. 1994)
(the preponderance of the evidence standard requires the finder of fact to
believe that the existence of a fact is more probable than its nonexistence).
Although we acknowledge the references in the machine translation to
housing 10 being a combustion chamber, we are persuaded that it is more
likely than not that housing 10 is a compressor housing as also stated in the
machine translation for the reasons advanced by the Examiner, such that
holes 12 are formed in a compressor housing.
As to the Examiner’s finding that it was known to bleed compressor
air for reuse in cooling the turbine, Appellants argue that “holes 12 remove
air from a combustion chamber to pressurize cabin air temperature control,”
not to “provide air from a compressor to a combustion chamber.” Br. 16;
see also id. at 16—17 (“There is no drawing of air from a compressor for
feeding to a turbine or a combustion chamber disclosed in [Snecma].”). The
Examiner responds that Snecma discloses feeding compressor air to a
turbine, which is sufficient to meet the claim language of providing
secondary air from the compressor to at least one of the combustion
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chamber and the turbine. Ans. 44-45. We agree with the Examiner that
Appellants do not persuasively rebut the Examiner’s finding that Snecma
teaches feeding air to a turbine, which is all that is required for the claim.
See Snecma, 1 (emphasis added) (“For other applications, such as cabin air
pressurization or thermal control of the HP turbine control casing, air can
be drawn off from the combustion chamber.'1'’).
For the foregoing reasons, we do not find that the Examiner erred in
finding that Snecma discloses all of the limitations of independent claim 1,
and we sustain the rejection of independent claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Snecma.
Claim 2
Dependent claim 2 recites that a first inlet end of each pipe has an
oval cross section that corresponds to an oval cross section of a flange to
which it is attached, and also that a second outlet end of each pipe has an
opening defining an outlet that has a circular cross section. Br. 33 (Claims
App’x.). The Examiner finds that Snecma discloses the first inlet end of
each of pipes 14 having an oval opening matching the oval passage cross
section of the respective flange 12, and the second outlet end having an
opening defining an outlet of the passageway that has a circular cross
section. Final Act. 15—16.
Appellants argue again that Snecma does not disclose pipes 14
extending to a combustion chamber or gas turbine in that the sampling ports
are disclosed as being used for extracting air from a combustion chamber 10.
Br. 20—21. For the same reasons as described above in connection with
independent claim 1, we are not persuaded that Snecma fails to disclose
sampling ports in a compressor housing that bleed air to a turbine.
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Appellants also argue that Snecma fails to adequately disclose that the
opening of pipe 14 connected to sampling mouth 12 has a non-circular inlet
cross-section because there is no description or clear illustration of any such
non-circular inlet cross-section. Br. 21. The Examiner responds that
“[l]ogically, pipe (14) first inlet end passage opening cross section was
identical to the oval cross section passage opening in the compressor casing
flange to facilitate the required flow rate of the bleed/secondary air.” Ans.
61. The Examiner points to Snecma’s desire to ensure satisfactory operation
of the gas turbine engine, even under boundary conditions representing
extreme operating conditions, in which the mass flow rate is to be
determined by the compressor casing cross-section opening/flow area, and
not the pipe cross-section opening/flow area. Id. at 61—66. Under the
applicable preponderance of evidence standard, we are persuaded that the
Examiner has established that it is more likely than not that the inlet end of
the pipe of Snecma has an oval cross section that corresponds to the oval
cross section of the flange.
For the foregoing reasons, we do not find that the Examiner erred in
finding that Snecma discloses all of the limitations of claim 2, and we
sustain the rejection of claim 2 under 35 U.S.C. § 102(b) as anticipated by
Snecma.
Rejection IV
The Examiner finds that Charon discloses all of the limitations of
independent claim 1, including, inter alia, flanges on a compressor casing,
the flanges being connected to pipes to provide secondary air from the
compressor to at least one of a combustion chamber and a turbine. Final
Act. 16. The Examiner points to flanges 7, 8 defining passageways 20, 21.
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Id. (citing Charon, Fig. 3). The Examiner also finds that Charon discloses
that the flanges on the compressor casing define passages having an oval
cross-section. Id.
Appellants argue that “oval” is commonly understood to mean
“having the shape of an egg” or “broadly elliptical” (Br. 13 (citing Merriam
Webster Online Dictionary)), and Charon fails to disclose such a shape {id.
at 14). More particularly, Appellants argue that Charon merely discloses
long holes for use in aircraft engines, but not passages of a flange having an
oval cross section. Id. Given the broader interpretation of “oval” described
above, we are not persuaded that Charon’s elongated circle cannot
reasonably be considered an “oval” under the broadest reasonable
interpretation.
Appellants also argue that Charon “require[s] use of a thicker casing
wall near these openings,” whereas Appellants’ oval shaped passages
“permit[] use of smaller flanges due to the better stress distribution permitted
via the oval shaped passages.” Id. at 14—15. The claim merely recites that
the passages have an oval cross section and makes no recitations regarding
the necessary thickness of the casing wall. Appellants’ attempt to
distinguish the claimed subject matter from the prior art based on features
that are not in the claims is not persuasive. Unclaimed features cannot
impart patentability to claims. In reHiniker Co., 150 F.3d 1362, 1369 (Fed.
Cir. 1998). Arguments must be commensurate in scope with the actual
claim language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants further argue that Charon’s long holes 20, 21 “are draw off
holes used to draw off fluid to deposit that fluid in cavity 12” which is “a
cavity that separates lining 10 from outer skin 9 of the casing 8.” Br. 17.
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Appellants argue that there is no disclosure of a pipe connected to a flange to
supply air to a combustion unit or a turbine. Id. The Examiner responds that
Charon teaches that air passes through cavities 11, 12, with half of it leaving
through orifices 20, 21 to reach opening 7 and the other half leading to
opening 8. Ans. 49 (citing Charon, 3:1—4). The Examiner further responds
that Charon teaches that “[a] portion of the compressed air is drawn off from
the compressor for various purposes, including pressurization of the cabin,
de-icing and ventilation of the engine turbine to cool it.” Id. (quoting
Charon, 1:4—10) (emphasis omitted). The Examiner maintains that Charon
discloses feeding secondary air to a turbine. Id. at 50. Charon teaches that
ducts 5, 6 through which compressed air is drawn off from the compressor is
connected to the compressor casing 1 through openings 7, 8. Charon, 2:43—
47. We find that the Examiner has shown by a preponderance of the
evidence that Charon discloses a compressor casing having flanges
connected to pipes to provide secondary air from the compressor to a
turbine.
For the foregoing reasons, we do not find that the Examiner erred in
finding that Charon discloses all of the limitations of independent claim 1,
and we sustain the rejection of independent claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Charon.
Rejection V
The Examiner finds that Snecma teaches most of the limitations of
claims 16—19, except for the pipes being configured for feeding the
secondary air to a burner connected to the combustion chamber. Final Act.
17—18. The Examiner finds that Waldherr teaches “passing compressor
bleed air, i.e., secondary air, to a burner (30) connected to a combustion
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chamber (16) to cool the burner (30), i.e., fuel injector.” Id. at 18. The
Examiner concludes that it would have been obvious to modify Snecma
“with passing the secondary air from the compressor to the second outlet end
of the pipe to feed the secondary air to a burner connected to the combustion
chamber of Waldherr to provide cooling air to the burner, i.e., fuel injector.”
Id.
Appellants argue that Waldherr fails to teach or suggest any secondary
air that is passable from compressor to second outlet end of a pipe structured
to feed secondary air to a combustion chamber that has an opening with
circular cross section and that has an opening that has an oval shaped cross
section. Br. 23. This argument is not persuasive because it improperly
addresses Waldherr individually. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); see also Ans. 79—80 (stating the same). This argument is also
not persuasive because it fails to address the rejection as articulated by the
Examiner which is based on modification of Snecma (which has the oval
shaped cross section) with the teachings of Waldherr.
Appellants also argue that the Examiner’s articulated reasoning
regarding providing cooling air to the fuel injector “fails to account for the
different functional goals and features of the cited art, which is for the
principal references being relied upon, to remove gas from a combustion
chamber, not feed secondary air from a compressor to a combustion
chamber.” Br. 23. We find this argument unconvincing in that it is
premised on Snecma teaching removing gas from a combustion chamber.
As described above, we are persuaded that Snecma teaches providing bleed
air from a compressor to a turbine for cooling of the turbine under a
preponderance of the evidence standard. When properly considering the
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disclosure of Snecma, the Examiner’s reasoning to modify Snecma based on
the teachings of Waldherr—both providing cooling air from a compressor to
gas turbine components—has rational evidentiary underpinnings.
Appellants also argue that Snecma is non-analogous art because
Snecma is directed to an “aircraft system,” and is “not pertinent to gas
turbine design and [is] not directed to subject matter that would be
considered by a person of skill in the art.” Br. 25; see also id. at 28. The
established precedent of our reviewing Court sets up a two-fold test for
determining whether art is analogous: “[‘](1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.”’ In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)
(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Examiner
responds that Snecma is in Appellants’ field of endeavor—i.e., gas turbine
bleed/secondary air flow openings. Ans. 97—98. Appellants have not
persuasively presented arguments and evidence to refute that Snecma is in
Appellants’ field of endeavor, despite the gas sampling arrangement being
for use in an aircraft system. Moreover, to the extent that Appellants are
comparing the relevance of the references to each other, this is not the
required legal test and is not persuasive. Thus, Snecma is properly relied on
as analogous art.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claims 16—19 is unpatentable over
Snecma and Waldherr, and we sustain the rejection of claims 16—19 under
35 U.S.C. § 103(a) as unpatentable over Snecma and Waldherr.
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Rejection VI
Claim 3
Claim 3 recites “[a] method for retrofitting a gas turbine arrangement”
in which “[a] casing [housing the compressor] ha[s] at least one flange
defining a passage having a circular cross section, the at least one flange
being connected to at least one pipe for providing secondary air to at least
one of the combustion chamber and the turbine.” Br. 34 (Claims App’x.).
Claim 3 further recites the step of “replacing the at least one flange defining
the passage having the circular cross section with at least one replacement
flange defining a passage having an oval cross section.” Id.
The Examiner relies on Daguet for the gas turbine arrangement
including a compressor casing having a flange 16a defining a passage 16
having a circular cross-section. Final Act. 19. The Examiner acknowledges
that Daguet fails to teach providing secondary air to one of the combustion
chamber and turbine, or replacing the flange with a replacement flange
defining a passage having an oval cross section. Id. The Examiner turns to
Charon for teaching providing secondary air to cool a turbine through a
flange defining a passage having an oval cross section. Id. (citing Charon,
Figs. 1—3, 1:5—10). The Examiner also turns to Charon for teaching that
“secondary air flow could only be increased by increasing the cross sectional
area of the casing opening, i.e., flanged passage.” Id. (citing Charon, 1:26—
40). The Examiner turns to Fischer for teaching “using an oval opening to
increase the cross sectional area without exceeding the limited space
available in the particular design.” Id. The Examiner turns to Cohen for
teaching “that it was common in the gas turbine art to continuously strive for
improved versions ... of established engine designs by redesigning the
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turbine cooling mechanisms allowing increased operating temperature.” Id.
Finally, the Examiner turns to Koganezawa for teaching “that increased
combustion temperature require[s] increasing cooling air flow to suppress
turbine metal temperatures” and also teaching “increasing cooling air flow
rate by retrofitting cooling flow passages (dl and d2 — compare Fig. 22 to
Fig. 21) to increase the passage cross sectional area.” Id. at 20 (citing
Koganezawa, Figs. 21—22; 21:3—15, 35—41).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to
apply[] these known improvement techniques in the same
manner to the method of providing gas turbine secondary air of
Daguet, and the results would have been predictable and readily
recognized, that retrofitting the circular cross section passage(s),
of Daguet with the oval cross section passage(s) of Charon or
Fischer would have increased the passage cross sectional area
thereby increasing the flow rate of the secondary air, i.e., cooling
air. As taught by Cohen and Koganezawa, it was known that
increasing gas turbine efficiency by increasing combustion
temperature required retrofitting turbine cooling mechanisms to
increase the cooling air flow rate. Hence, it would have been
obvious to one of ordinary skill ... to replace the flange(s)
defining circular cross section passage(s) with flange(s) defining
oval cross section passage(s) to increase the cooling air flow rate
by increasing the passage cross sectional area without exceeding
the space limitations of the existing turbine design, . . . thereby
allowing increased gas turbine efficiency by increasing
combustion temperature.
Id. at 20—21.
Appellants argue that one of ordinary skill in the art would not be led
to replace a flange having a circular cross section with a flange defining a
passage having an oval cross section to increase cooling air flow rates
because Koganezawa “already suggests] using larger circular openings to
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increase a cooling flow rate.” Br. 24; see also id. (arguing that Fischer
similarly suggests use of a flange having a large circular opening and citing
Ex Parte Rinkevich, 2007 WL 1552288 *4 (BPA1 2007)); see also id. at 27—
28 (arguing same).
We find this argument unconvincing in that it fails to address the
rejection as articulated by the Examiner which is not based on modification
of Daguet with the teachings of Koganezawa alone, but with the further
teachings of Charon and/or Fischer. The Examiner has provided a reason
with rational underpinnings for modifying Daguet’s method of providing gas
turbine secondary air so as to provide a flange defining a passage having an
oval cross section as taught by Charon—namely, to increase the passage
cross sectional area and increase the flow rate of the cooling air. Final Act.
19—21. The Examiner has also provided a reason with rational
underpinnings to retrofit the gas turbine arrangement as taught by
Koganezawa because re-designing of gas turbine components is known (as
taught by Cohen) and allows for increased gas turbine efficiency by
increasing combustion temperature, due to increased cooling air flow rate
without exceeding space limitations of the existing turbine design. Id. In
other words, the Examiner held, and we agree, Koganezawa cannot be read
in isolation, but for what it fairly teaches when combined with Daguet as
already modified by Charon, Fischer, and Cohen as set forth in the
Examiner’s rejection.
Appellants also argue that the holes relied on by the Examiner bleed
fluid out of a combustion chamber, rather than to a combustion chamber or
turbine, and thus, the Examiner’s reasoning lacks rational underpinnings.
Br. 24, 28. For the same reasons discussed supra, we are not persuaded by
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this argument. Moreover, the Examiner points to Daguet as teaching
drawing bleed/secondary air from compressor 14 at an axial location
upstream from combustion chamber 20. Ans. 97 (citing Daguet, Figs. 1,3;
2:43—68, 3:1—5, 25^45).
Appellants also argue that Fischer and Charon are non-analogous art.
Br. 25, 26, 28. More particularly, Appellants argue that Fischer is directed
to a “vehicle evaporator design” and Charon is directed to an “aircraft
pressurization system,” and is “not pertinent to gas turbine design and [is]
not directed to subject matter that would be considered by a person of skill
in the art.” Id at 25. The Examiner responds to Appellants by explaining
that “Fischer was reasonably pertinent to the particular problem with which
Appellants] w[ere] concerned, i.e., increasing the cross-sectional flow area
of an opening while at the same time complying with space constraints.”
Ans. 85 (Examiner comparing Spec. 120 with Fischer, 5:5—15). The
Examiner also explains how Charon is concerned with drawing off a portion
of compressed air from the compressor for various purposes, including
ventilation of the engine turbine to cool it. Id. at 86. According to the
Examiner, Charon is in Appellants’ field of endeavor—i.e., gas turbine
bleed/secondary air flow openings. Id. at 98. With respect to both Fischer
and Charon, Appellants have not persuasively presented arguments and
evidence that refute both of the two tests for analogous art, merely because
they relate specifically to a vehicle evaporator and aircraft pressurization
system, respectively. Moreover, to the extent that Appellants are comparing
the relevance of the references to each other, this is not the required legal
test and is not persuasive. Thus, Fischer and Charon are properly relied on
as analogous art.
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To the extent Appellants are arguing that Charon, Fischer, Cohen, and
Koganezawa each fail to teach the claimed invention (Br. 26—27), we are not
persuaded in that Appellants’ argument merely attacks each reference
individually, rather than the combination of references as articulated by the
Examiner.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 3 is unpatentable over Daguet,
Charon, Fischer, Cohen, and Koganezawa, and we sustain the rejection of
claim 3 under 35 U.S.C. § 103(a) as unpatentable over Daguet, Charon,
Fischer, Cohen, and Koganezawa.
Claims 4, 10, and 12—15
Claim 4 recites the step of replacing the pipe with a replacement pipe
that has a first inlet end having an opening that has an oval cross section that
corresponds to the oval cross section of the replacement flange and a second
outlet end having an opening that has a circular cross section. Br. 34
(Claims App’x.). The Examiner finds that Fischer teaches pipe 54 having a
first inlet end having an oval cross section and a second outlet end having a
circular cross section. Final Act. 22. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art to “replac[e] the circular
pipe that was attached to the flange having a circular passage of Daguet with
the replacement pipe ... as taught by Fis[c]her, thereby avoiding the time
and expense required to replace the entire length of all of the secondary air,
i.e., bleed air, pipes.” Id.
Appellants argue that Fischer’s “element 54 is a ‘tube flange 54’ of a
heat exchanger,” and is not a “pipe for a compressor that would transport a
fluid to a gas turbine and/or a combustion chamber.” Br. 29 (citing Fischer,
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5:27—37). Appellants argue that “[t]ube flange 54 is part of a ‘connection-
flange component 50,[’] which has a tube flange 52 connected to the inlet
opening and ‘a tube flange 54’ that is connected to an outlet opening.” Id.
Appellants continue that a pipe is then connected to this flange, with the pipe
having “a circular cross-section throughout the entirety of that pipe for
transport of fluid away from the heat exchanger 40.” Id. (citing Fischer,
5:27-37).
The Examiner responds that “‘tube’ and ‘pipe’ are different names for
the same structure,” and that element 54 meets the requirements to be a pipe.
Ans. 98; see id. at 70 (defining “pipe” as “[a] hollow cylinder of metal,
wood, or other material, used for the conveyance of water, gas, steam,
petroleum, etc.”) (citing Webster’s Encyclopedic Unabridged Dictionary of
the English Language, Portland House (1989)). Considering the broad
interpretation of “pipe” proffered by the Examiner, which has not been
contested by Appellants, we are not persuaded that Fischer’s tube flange 54
cannot reasonably be considered a “pipe.” As to the alleged failure of
Fischer’s element 54 to transport fluid to a gas turbine and/or a combustion
chamber, we do not find this argument persuasive in that it attacks Fischer
individually, rather than addressing the rejection articulated by the Examiner
which is based on Fischer in combination with other references that teach
transporting fluid to a gas turbine and/or combustion chamber.
Appellants also argue that the Examiner’s articulated reasoning to
replace Daguet’s circular pipe with Fischer’s pipe (i.e., tubular flange 54)—
i.e., to avoid the time/expense to replace the entire length of the secondary
air pipes—is conclusory and based on a misconstruction of what Fischer’s
tube flange 54 is. Br. 30. Appellants maintain that “[n]o one of skill in the
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art would modify Fischer ... or read Fischer ... to utilize pipes that do not
have fully circular cross sections.” Id. We do not find Appellants’ argument
persuasive in that it ignores that Fischer’s tubular flange 54 is considered the
pipe. Appellants also argue that modifying Fischer’s flange connector
element would “render its principle of operation of facilitating use of a
circular passaged pipes inoperable.” Id. We do not find this argument
persuasive in that the Examiner’s rejection is based on modification of
Daguet with the teachings of Fischer, not modification of Fischer. See Ans.
101.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 4 is unpatentable over Daguet,
Charon, Fischer, Cohen, and Koganezawa, and we sustain the rejection of
claim 4 under 35 U.S.C. § 103(a) as unpatentable over Daguet, Charon,
Fischer, Cohen, and Koganezawa. We also sustain the rejection of claims
10, and 12—15, which depend therefrom, and for which Appellants advance
no additional arguments in support of patentability. See Br. 28—31.
Rejections VII VIII
Claims 5—9 depend, directly or indirectly, from independent claim 3.
Br. 34—35 (Claims App’x.). Appellants appear to rely on the same
arguments and reasoning we found unpersuasive in connection with
independent claim 3. See Br. 25—30. Accordingly, we sustain the rejections,
under 35 U.S.C. § 103(a), of: claims 5 and 6 as unpatentable over Daguet,
Charon, Fischer, Cohen, Koganezawa, and Rose; and claims 7—9 as
unpatentable over Daguet, Charon, Fischer, Cohen, Koganezawa,
Oppenheimer, and Rose.
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Rejection IX
The Examiner finds that the combination of Daguet, Charon, Fischer,
Cohen, and Koganezawa teach most of the limitations of claim 11, as
described in detail above, except for the pipes being configured for feeding
the secondary air to a burner connected to the combustion chamber. Final
Act. 29. The Examiner finds that Waldherr teaches “passing compressor
bleed air, i.e., secondary air, to a burner (30) connected to a combustion
chamber (16) to cool the burner (30), i.e., fuel injector.” Id. The Examiner
concludes that it would have been obvious to modify the combination of
Daguet, Charon, Fischer, Cohen, and Koganezawa
with connecting the second outlet end [of] each replacement pipe
to the gas turbine arrangement in order to facilitate the secondary
air to flow from the compressor to the second outlet end of each
replacement pipe to feed the secondary air to a burner connected
to the combustion chamber of Waldherr to provide cooling air to
the burner, i.e., fuel injector.
Id.
To the extent Appellants are arguing that Charon, Fischer, Cohen, and
Koganezawa each fail to teach the claimed invention (Br. 31), we are not
persuaded in that Appellants’ argument merely attacks each reference
individually, rather than the combination of references as articulated by the
Examiner. Appellants also argue that Fischer, Charon, and Snecma are non-
analogous art. Id. For the same reasons discussed above, we are not
persuaded by this argument.
Appellants also argue that the Examiner relies on impermissible
hindsight reasoning in combining the prior art for rejecting claim 11. Id.
We are not persuaded by this argument in that it fails to explain why the
Examiner’s articulated reasoning for combining the various references lacks
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rational evidentiary underpinnings. Moreover, Appellants do not identify
any knowledge relied upon by the Examiner that was gleaned only from
Appellants’ 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); see also Ans. 103. We also note that the number
of references applied is not relevant to the propriety of the combination of
references. In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991); see also Ans.
102.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the subject matter of claim 11 is unpatentable over Daguet,
Charon, Fischer, Cohen, Koganezawa, and Waldherr, and we sustain the
rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Daguet,
Charon, Fischer, Cohen, Koganezawa, and Waldherr.
DECISION
The Examiner’s rejection of claim 3 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement is
affirmed.
The Examiner’s rejection of claims 11 and 16—19 under 35 U.S.C.
§112, first paragraph as failing to comply with the written description
requirement is affirmed.
The Examiner’s rejection of claims 11 and 16—19 under 35 U.S.C.
§112, first paragraph as failing to comply with the enablement requirement
is reversed.
The Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b)
as anticipated by Snecma is affirmed.
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The Examiner’s rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Charon is affirmed.
The Examiner’s rejection of claims 16—19 under 35 U.S.C. § 103(a) as
unpatentable over Snecma and Waldherr is affirmed.
The Examiner’s rejection of claims 3, 4, 10, and 12—15 under
35 U.S.C. § 103(a) as unpatentable over Daguet, Charon, Fischer, Cohen,
and Koganezawa is affirmed.
The Examiner’s rejection of claims 5 and 6 under 35 U.S.C. § 103(a)
as unpatentable over Daguet, Charon, Fischer, Cohen, Koganezawa, and
Rose is affirmed.
The Examiner’s rejection of claims 7—9 under 35 U.S.C. § 103(a) as
unpatentable over Daguet, Charon, Fischer, Cohen, Koganezawa,
Oppenheimer, and Rose is affirmed.
The Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Daguet, Charon, Fischer, Cohen, Koganezawa, and
Waldherr 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)(l)(iv).
AFFIRMED
30