Ex Parte Sanchez et al

Patent Trial and Appeal Board

Mar 14, 2016

13360988 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/360,988 01/30/2012 Paul K. Sanchez
54549 7590 03/16/2016
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. CONFIRMATION NO.
P A20384U ;67097-1702PUS 1 3063
EXAMINER
MEADE, LORNE EDWARD
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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
Ex parte PAULK. SANCHEZ, JOHN S. TU,
KALPENDU J. PAREKH, and WILLIAM A. DANIELS
Appeal2014-002411
Application 13/360,988
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul K. Sanchez et al. (Appellants) 1 appeal under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 1-29. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is United Technologies
Corp. Br. 1.
Appeal 2014-002411
Application 13/360,988
THE CLAIMED SUBJECT MATTER
Claims 1, 13, and 19 are the independent claims on appeal. Claim 1 is
reproduced below and is illustrative of the claimed subject matter on appeal.
1. A turbine engine comprising:
a compressor section;
a combustor in fluid communication with the compressor
section;
a turbine in fluid communication with the combustor,
wherein said turbine comprises a first turbine section and a
second turbine section;
a mid-turbine frame having an outer mid-turbine frame
case connected to an inner mid-turbine frame case via a plurality
of support members; and
said inner mid-turbine frame case having and inner
manifold for distributing gas to at least one of said first turbine
section and said second turbine section.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Arraitz us 6, 163 ,959 Dec. 26, 2000
2
Appeal 2014-002411
Application 13/360,988
REJECTIONS
I. Claim 7 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. Final Act. 5; Ans.
4_2,3
II. Claims 9 and 25 stand 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. Final Act. 5; Ans. 4.
III. Claims 1-8, 10, 11, 13-24, and 26-29 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Arraitz. Final Act. 6-7; Ans. 5---6.
IV. Claims 9, 12, and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arraitz. Final Act. 7-8; Ans. 6-7.
2 Appellants have listed claim 7 in the Claims Appendix to the Brief as
cancelled. Br., Claims App. Although Appellants appear to have sought to
cancel claim 7 in an Amendment after the Final Office Action (Amendment
(Feb. 6, 2013)), the Examiner did not enter the proposed amendment
(Advisory Action (Feb. 19, 2013)). As such, claim 7 remains pending at the
time of this Decision and is on appeal. See 37 C.F.R. § 41.3 l(c)(2012) ("An
appeal, when taken, is presumed to be taken from the rejection of all claims
under rejection unless cancelled by an amendment filed by the applicant and
entered by the Office.").
3 We note that the Examiner's Answer indicates that claims 8 and 9, in
addition to claim 7, stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement. Ans. 4. We, however,
consider the reference to claims 8 and 9 to be a typographical error because
the Examiner provides no explanation as to how claims 8 and 9 (which
depend directly or indirectly from claim 6, not claim 7) are not enabled. Id.
3
Appeal 2014-002411
Application 13/360,988
OPfNION
Re} ections I and II
Appellants do not present any substantive arguments contesting the
Examiner's rejection of claim 7 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement, or of claims 9 and 25
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. See Br. 1-9. Consequently, Appellants have
waived any argument of error, and we summarily sustain the rejection of
claim 7 under 35 U.S.C. § 112, first paragraph, and the rejection of claims 9
and 25 under 35 U.S.C. § 112, second paragraph. See In re Berger, 279 F.3d
975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal).
Re} ection III
With respect to independent claims 1 and 19, the Examiner finds that
Arraitz discloses, inter alia, "a mid-turbine frame (3) having an outer
mid-turbine frame case connected to an inner mid-turbine frame case via a
plurality of support members (Figure 2) (5) are load bearing support
members (supports the load that's on top of 5)." Final Act. 6; Ans. 5. The
Examiner provides annotated versions of Figures 1 and 2 of Arraitz in
support of this finding. Ans. 7. Annotated Figure 2 of Arraitz is reproduced
below.
4
Appeal 2014-002411
Application 13/360,988
Annotated Figure 2 depicts a partial cross-sectional view of a distributor of a
high pressure turbine in accordance with the teachings of Arraitz, as
annotated by the Examiner to include arrows I, II, and III to purportedly
"show the points of structural support interaction, and hence of load
bearing." Arraitz, 2:4---6; Ans. 7.
Appellants argue that the Examiner's finding that top plate 5 in
Arraitz supports a load, so as to meet the limitation of "support members"
recited in independent claims 1 and 19, is "pure conjecture." Br. 5.
Appellants argue that there is no description in Arraitz "that the top plate 5 is
load bearing, or supporting, of any of the features of the illustrated
distributor 3." Id. at 6. Rather, Appellants point out that the only
description of top plate 5 is that it "is merely a cover that is 'positioned
5
Appeal 2014-002411
Application 13/360,988
between the hot channel and the cold channel ... '." Id. (citing Arraitz,
2: 16-21). 4 We agree with Appellants that there is no textual description in
Arraitz to support the Examiner's finding that top plate 5 bears a load on top
of it.
To the extent the Examiner's position is that the drawings support that
top plate 5 bears on a load on top of it, Appellants argue that the ends on
either side of top plate 5 are merely integral portions of the distributor or do
not interface with top plate 5. Br. 6-7. We agree with Appellants. The
locations at the ends of Examiner's arrows I and III in annotated Figure 2 of
Arraitz do not interface with top plate 5 at all, and the location at the end of
Examiner's arrow II in annotated Figure 2 of Arraitz is an integral portion of
distributor 3. None of these annotations alone establish how top plate 5
supports a load on top of it. In the absence of additional findings or
explanation by the Examiner, the Examiner's position appears to be based
on speculation and conjecture. The Examiner, therefore, has not established
by a preponderance of the evidence that top plate 5 of Arraitz supports a
load on top of it, such that Arraitz discloses "a plurality of support
members" that connect an outer mid-turbine frame case to an inner
mid-turbine frame case, as recited in independent claims 1 and 19.
Independent claim 13 is a method claim that recites the step of "piping
air from a mid-stage compressor to an inner manifold of a mid-turbine frame
(MTF)." With respect to independent claim 13, the Examiner finds that
Arraitz discloses, inter alia:
a mid stage compressor bleed (Figure 1 and also [ c ]ol. 2, 11.
10-27) of a high pressure compressor on a first end (implicitly
4 Arraitz further describes that liner 8 is fixed to top plate 5 by braze 9.
Arraitz, 2:34--36.
6
Appeal 2014-002411
Application 13/360,988
taught and will be arranged before combustion chamber 1 ), and
connected to said inner manifold on a second end (Figure 2), such
that air from said mid stage compressor bleed of said high
pressure compressor is directed to said inner manifold (Figures 1
and 2).
Final Act. 7.
Appellants argue that "no indication is provided either explicitly or
implicitly within the disclosure of Arraitz that the tu[r]b[in]e draws air from
a mid-stage compressor of the turbine engine [and] [i]ndeed, Arraitz
provides no indication at all as to the location from which the air is drawn."
Br. 8. We agree that Arraitz does not explicitly disclose a compressor from
which air is piped. To the extent that the Examiner may be relying on an
implicit or inherent disclosure of a compressor from which air would be
piped, the Examiner must provide a basis in fact and/or technical reasoning
to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.
See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). The Examiner has
merely indicated that a compressor is implicit without attempting to provide
evidence or additional explanation as to why it is clear that a compressor
would necessarily be present. The Examiner's statement alone is
insufficient to reasonably support that the turbine draws air from a
compressor so as to meet the Examiner's burden associated with establishing
an inherent disclosure.
For the foregoing reasons, the Examiner erred in finding that Arraitz
discloses all of the limitations of independent claims 1, 13, and 19, and we
do not sustain the rejection of independent claims 1, 13, and 19, and claims
2-8, 10, 11, 14--18, 20-24, and 26-29 which depend therefrom, under 35
U.S.C. § 102(b) as anticipated by Arraitz.
7
Appeal 2014-002411
Application 13/360,988
Re} ection IV
The Examiner rejects claims 9, 12, and 25 as being unpatentable over
Arraitz. Final Act. 7-8. Claims 9 and 12 depend from independent claim 1,
and claim 25 depends from independent claim 19. The rejection of these
claims relies on the Examiner's finding, erroneously based on speculation
and conjecture, that Arraitz discloses support members that connect an outer
mid-turbine frame case to an inner mid-turbine frame case. Id. at 7.
Accordingly, the Examiner has not made the factual findings required to
demonstrate a prima facie case of obviousness. See In re Warner, 379 F.2d
1011, 101 7 ( CCP A 196 7) (In making a rejection based on obviousness, the
Examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis). Accordingly, for the reasons discussed
supra, we do not sustain the Examiner's rejection, under 35 U.S.C. § 103(a),
of claims 9, 12, and 25 as unpatentable over Arraitz.
DECISION
The Examiner's decision to reject claim 7 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement, and to
reject claims 9 and 25 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 is summarily AFFIRMED.
The Examiner's decision to reject claims 1-8, 10, 11, 13-24, and 26-
29 under 35 U.S.C. § 102(b) as anticipated by Arraitz is REVERSED.
8
Appeal 2014-002411
Application 13/360,988
The Examiner's decision to reject claims 9, 12, and 25 under
35 U.S.C. § 103(a) as being unpatentable over Arraitz is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
9