Ex Parte Snape et alDownload PDFPatent Trial and Appeal BoardAug 31, 201713541935 (P.T.A.B. Aug. 31, 2017) 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. 13/541,935 07/05/2012 Nathan Snape 61546US01; 67097-1865US1 2784 54549 7590 09/05/2017 TART SON OASKFY fr OT DS/PR ATT fr WHTTNFY EXAMINER 400 West Maple Road Suite 350 WOLCOTT, BRIAN P Birmingham, MI 48009 ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): ptodocket @ cgolaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NATHAN SNAPE, GABRIEL L. SUCIU, and SIMON PICKFORD Appeal 2016-005724 Application 13/541,935 Technology Center 3700 Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Nathan Snape et al. (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—7, 15—19, and 21—28.1,2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is United Technologies Corporation. Appeal Br. 1. 2 Claims 8—14 and 20 are objected to as being dependent upon a rejected base claim, but have been deemed allowable if rewritten in independent form including all limitations of the base claim and any i nterveni ng claims. Final Act. 2, 11. Appeal 2016-005724 Application 13/541,935 THE CLAIMED SUBJECT MATTER Claims 1 and 17 are independent. Claim 1 is reproduced below and is illustrative of the subject matter on appeal. 1. A gas turbine engine comprising: an engine core compartment; a fan case radially outwardly of the engine core compartment; a compressor section located within the engine core compartment, the compressor section including a front mount flange and an aft mount flange; an oil tank mounted to at least one of the fan case or the front and aft mount flanges, the oil tank having a cooling structure integrated into an outer surf ace such that the oil tank is subjected to cooling air flow from a plurality of air sources. EVIDENCE on the following evidence in rejecting the claims US 2008/0095611 A1 Apr. 24, 2008 US 2012/0114467 A1 May 10, 2012 REJECTIONS3 I. Claims 16 and 22 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 5—6. The Examiner relied on appeal: Storage Elder 3 Appellants include remarks directed to the Examiner’s objection to the drawings. See Appeal Br. 3^4; see also Final Act. 4. The propriety of the objection to the drawings under 37 C.F.R. § 1.83 is reviewable by petition under 37 C.F.R § 1.181 (MPEP § 1002.02(c)), rather than appealable to the Board. Ex Parte Frye, 94 UPSQ2d 1072, 1077-78 (BPAI 2010) (precedential); see MPEP § 1201 (the Board will not ordinarily hear a 2 Appeal 2016-005724 Application 13/541,935 II. Claim 6 stands 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. Id. at 6. III. Claims 1—4, 7, 15, 17, 19, 21, and 23—28 stand rejected under 35 U.S.C. § 102(e) as anticipated by Elder. Id. at 7—10. IV. Claims 5, 6, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Elder and Storage. Id. at 10-11. OPINION Written Description Rejection Claims 16 and 22 recite “a de-aerator feature that distributes oil along the integrated tank and cooler surface on a return path back to a main oil fill compartment in the oil tank.” Appeal Br. 11,12 (Claims App.). The Examiner finds that the “return path” lacks adequate written description support. Final Act. 5. Namely, the Examiner finds that the Specification does not describe the “structure detailing the return path.” Id. at 5—6 (citing Spec. 144).4 question that is reviewable by petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims). Accordingly, we do not specifically review the Examiner’s objection to the drawings. Nevertheless, to the extent that this objection turns on the same issues, or is premised on the same reasoning, as the written description rejection of the claims, our decision herein with respect to the written description rejection likewise is dispositive as to such aspect of the objection to the drawings. 4 The Examiner’s explanation that because the Specification and drawings 3 Appeal 2016-005724 Application 13/541,935 Appellants argue that paragraph 44 of the Specification provides adequate support for the return path recited in the claims. Appeal Br. 4. Appellants assert that “[t]he term ‘return path’ is a term of art that would certainly be understood by one of ordinary skill in the art.” Reply Br. 2. According to Appellants, “[a]s known, the oil which has increased in temperature due to operation of the engine components, is then returned back to the main tank where it is cooled back down via the cooling structure.” Id. “[T]he test for sufficiency [of the written description under 35 U.S.C. §112, first paragraph,] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Appellants’ Specification describes oil tank 44 having integrated surface air oil cooler 66 and main oil fill compartment 86. Spec. H 38, 41. Oil tank 44 is filled via main oil fill 94 to main oil compartment 86. Id. f 42, Fig. 2. The Specification also describes that “a de-aerator 100 is used to distribute oil along the tank/cooler surface on the return for cooling purposes.” Id. 144 (emphasis added). According to the Specification, “the de-aerator 100 assists with the cleaning of oil before it is returned back to the system.” Id. (emphasis added). In this regard, we agree with Appellants that the Specification provides support for the limitation in question sufficient to satisfy the written description requirement of 35 U.S.C. § 112, first impart no structure to the return path, they fail to teach how to make and use the invention without undue experimentation (Ans. 9), is directed not to the written description requirement, but to the enablement requirement. 4 Appeal 2016-005724 Application 13/541,935 paragraph. Namely, at least paragraph 44 of the Specification provides adequate disclosure to reasonably convey to a person of ordinary skill in the art that Appellants possessed the claimed subject matter of “a return path back to a main oil fill compartment in the oil tank,” as of the filing date. For the foregoing reasons, we do not sustain the rejection of claims 16 and 22 under 35U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Indefiniteness Rejection In determining whether a claim is definite under 35U.S.C. § 112, second paragraph, “[t]he USPTO, in examining an application, is obliged to test the claims for reasonable precision.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “[A] claim is indefinite when it contains words or phrases whose meaning is unclear.” Id. at 1322 (citing MPEP § 2173.05(e)). The Examiner determines that the recitation in claim 6 that “the plurality of air sources comprises fan air, core ventilation air, free stream air, and core bleed air” is indefinite because “it is unclear as to whether the claim requires all of the air sources to be present or only two of the air sources to be present.” Final Act. 6. We do not find the meaning of the recitation in claim 6 to be unclear. The plain language of independent claim 1, from which claim 6 depends, requires an oil tank that is subjected to cooling air flow from a plurality of air sources. Appeal Br. 11 (Claims App.). Claim 6 further requires that the plurality of air sources, to which the oil tank is subjected, includes at least “fan air, core ventilation air, free stream air, and core bleed air.” Id. The Examiner acknowledges that “[t]he broadest reasonable interpretation of instant claim limitation requires all of the plurality of air 5 Appeal 2016-005724 Application 13/541,935 sources to be present to cool the oil tank.” Ans. 9. Given that the Examiner is able to provide a reasonable construction of the plain language of claim 6, we agree with Appellants that the scope of the limitation in question is clear and, thus, not indefinite.5 For the foregoing reasons, we do not sustain the rejection of claim 6 under 35U.S.C. § 112, second paragraph, as indefinite.6 Anticipation Rejection Claims 1—4, 7, 15, and 26—28 Independent claim 1 recites, in relevant part, a “compressor section including a front mount flange and an aft mount flange.” Appeal Br. 11 (Claims App.). Appellants argue that “Elder does not disclose ... a front 5 Although Appellants assert that “[t]he broadest reasonable interpretation of claim 6 would be that at least one of the sources would be required” (Reply Br. 3), this interpretation is not consistent with the plain language of the claims. Claim 1 recites that “the oil tank is subjected to cooling air flow from a plurality of air sources”—i.e., more than one air source. Claim 6 requires the plurality of air sources to comprise at least four different air sources, rather than merely limit the air sources to any of four particular types of air sources, as may have been intended by Appellants. 6 Although we agree with the Examiner that the Specification lacks detail as to how the oil tank (i.e., a singular structure) would be subjected to each of the plurality of air sources as recited in claim 6 (Ans. 9), we find the meaning of the claim language to be clear. See id. (emphasis added) (Examiner stating that “[i]n view of Fig 3 of Appellants’] drawings it is unclear how all of the plurality of air sources can be present to cool the oil tank at either location presented in the figure.”); see also Spec., Fig. 3 (showing a first oil tank 44 mounted to the fan case and subject to fan air flow 70, ventilation air flow 74, and free stream air flow 76, and showing a second oil tank 44 subject to fan air flow 70 and core engine bleed air flow 72). 6 Appeal 2016-005724 Application 13/541,935 mount flange or an aft mount flange as claimed.” Appeal Br. 5. For the reasons that follow, we agree with Appellants. In rejecting claim 1, the Examiner finds that Elder discloses “a compressor section[ ](14) located within the engine core compartment, the compressor section including a front mount flange and an aft mount flange[ ](see annotated figure below).” Final Act. 7 (citing an annotated reproduction of Figure 1 of Elder on page 8 of the Final Action). The Examiner takes the position that “the rim of aperture 38 in Elder is a receiving flange to provide mounting/support for the oil tank mounting flange 56 as shown in Eider’s Fig 3A/3B.” Ans. 10 (asserting the “[bjroadest reasonable interpretation of the term ‘flange’ is by definition a ‘projecting disc-shaped collar or rim on an object for locating or strengthening it or for attaching it to another object.’”). According to the Examiner, “because the rim of aperture 38 comprises] a front portion and an aft portion[,] the rim also comprises a front mount flange and an aft mount flange as required by the claim.” Id. Appellants persuasively assert that “the structure identified by the Examiner in Elder does not meet the Examiner’s definition of ‘flange.’” Reply Br. 4 (citing Ans. 10). Namely, “[t]he core nacelle 20 simply has a hole 38,” and “[tjhere is no structure that ‘projects’ from the core nacelle to form a projecting collar or rim.” Id. In this regard, Elder discloses that “core nacelle 20 includes an aperture 38 within which a fluid heat exchanger 40 is mounted.” Elder 118; see also id. 119 (disclosing “mounting flange 56 for securing the heat exchanger 40 to the core nacelle 20 and within the aperture 38”). To the extent that heat exchanger 40 is mounted to aperture 7 Appeal 2016-005724 Application 13/541,935 38, we agree with Appellants that the edge of aperture 38 does not constitute a flange, as called for in claim 1. For at least the above reasons, we are persuaded that the Examiner erred in finding that Elder discloses all of the limitations of claim 1, and we do not sustain the rejection of claim 1, nor claims 2-4, 7, 15, and 26—28, which depend therefrom, under 35 U.S.C. § 102(b) as anticipated by Elder. Claims 17 and 21 The Examiner finds that Elder discloses all of the limitations of independent claim 17, including, inter alia, “an oil tank [58] mounted within the core compartment[](shown in Fig 1 and 3A) between a compressor mount flange[ ](see annotated figure) and a firewall[ ](see annotated figure).” Final Act. 8 (including annotated Figure 1 of Elder). Appellants argue that Elder’s “element 58 does not comprise an oil tank as would be understood by one of ordinary skill in the art,” but, “[ijnstead, element 58 comprises the oil flow path within a heat exchanger 40.” Appeal Br. 6 (citing Elder 119, Fig. 3A). According to Appellants, “[t]he subject oil flow path of Elder would necessarily be in fluid communication with an oil tank, which is not shown in Elder.” Id. This argument is not persuasive of error. Elder discloses that “the heat exchanger 40 includes first and second opposing sides 46, 48,” and “[a]n oil cavity 58 is provided between . . . first and second portions 52, 54 that are brazed to one another.” Elder 119; see also id., Fig. 3A. The Examiner takes the position that “an ‘oil cavity’ ... is meant for holding oil and there is no structural difference between the tank of Elder and Appellants’] tank.” Ans. 10—11. Here, the Examiner’s reading of the claimed oil tank on Elder’s oil cavity 58 is consistent with Appellants’ 8 Appeal 2016-005724 Application 13/541,935 Specification, which does not provide any special definition for the term “tank,” and Appellants do not persuade us that the Examiner’s position is unreasonable. In other words, we are not convinced of a meaningful distinction between the structure of Elder’s oil cavity 58, which holds at least some quantity of oil, and the “oil tank,” recited in claim 17. Moreover, we agree with the Examiner in that “there is no evidence in Elder to support Appellants’] assertion that there must be another oil tank to which element 58 is connected.” Ans. 11. Elder is silent as to whether cooling circuit 42 includes any element other than heat exchanger 40 and heat load 44. See id. (the Examiner finding that Figure 2 of Elder depicts that “the oil cooling circuit 42 is a closed loop consisting of only element 40[,] which comprises the oil tank 58[,] and the load 44”). Appellants’ position that Elder’s oil circuit necessarily includes a separate oil tank other than oil cavity 58 is speculative, and does not persuade us of Examiner error. We have also considered Appellants’ argument that “Elder does not disclose or teach a compressor mount flange” because Elder’s “heat exchanger 40 simply rests on an outer surface of the core nacelle 20.” Appeal Br. 6. We are not persuaded of error by the Examiner because this argument merely reiterates that the outer surface area of the core nacelle surrounding aperture 38 is not a flange, but the Examiner does not rely on that erroneous finding in connection with independent claim 17. See Final Act. 8 (the Examiner identifying, in annotated Figure 1 of Elder, structure that the Examiner considers to correspond to the claimed “compressor mount flange” and “firewall” that is different than the previously identified structure for the “front mount flange” and “aft mount flange”). Appellants 9 Appeal 2016-005724 Application 13/541,935 do not point out any errors in the Examiner’s findings as presented in the rejection. For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s finding that Elder discloses all of the limitations of claim 17. Accordingly, we sustain the rejection of claim 17, and of claim 21, for which Appellants do not present separate patentability arguments (Appeal Br. 6), under 35 U.S.C. § 102(b) as anticipated by Elder. Claim 19 Claim 19, which depends from independent claim 17, recites, inter alia, that “the compressor includes an aft compressor mount flange.” Appeal Br. 12 (Claims App.). The Examiner relies on the “aft mount flange” of annotated Figure 1 on page 8 of the Final Action that was previously identified in connection with the rejection of independent claim 1. Final Act. 9. For the same reasons as described above in connection with the rejection of independent claim 1, we are persuaded that the Examiner erred in finding that the edge of Elder’s aperture 38 constitutes a flange. Accordingly, we do not sustain the rejection of claim 19 under 35 U.S.C. § 102(b) as anticipated by Elder. Claim 23 Claim 23 depends from independent claim 17, and recites, inter alia, “wherein the oil tank comprises a main oil fill compartment that provides a main supply of lubrication for engine components.” Appeal Br. 13 (Claims App.). The Examiner finds that “Elder discloses[ ](Fig 1—3A) [that] the oil tank comprises a main oil fill compartment[ ](cavity of 58) that provides a main supply of lubrication for engine components [] (oil supply is distributed 10 Appeal 2016-005724 Application 13/541,935 to other components such as an oil bearing compartment through manifold 50 and oil circuit 42.” Final Act. 9 (citing Elder || 18, 19). Besides reiterating the unpersuasive argument that Elder’s oil cavity does not constitute an oil tank, Appellants further argue that Elder’s “heat exchanger cavity 58 cannot reasonably be considered to comprise a main oil fill compartment that provides a main supply of lubrication for engine components” as further recited in claim 23. Appeal Br. 7. Appellants assert that “the main oil fill compartment is a structure that would be separate from the heat exchanger, and which would feed oil into the heat exchanger.” Id. This argument is also not persuasive. We do not discern any language in claim 23 requiring the main oil fill compartment to be structure separate from, or outside of, the heat exchanger. Elder discloses that “[t]he heat exchanger 40 may also support oil manifolds 50 that communicate oil between the heat load 44 and the cavity 58.” Elder 119. Elder also discloses that “heat exchanger 40 is part of an oil cooling circuit 42 that cools oil from a heat load 44, such as an oil bearing compartment.” Id. 118. Appellants do not persuasively refute the Examiner’s finding that Elder’s “oil tank must provide the main supply of oil to the system[,] as there are no other structures to provide the main supply of oil to the system.” Ans. 13.7 For the foregoing reasons, Appellants do not apprise us of error in the Examiner’s finding that Elder discloses all of the limitations of claim 23. Accordingly, we sustain the rejection of claim 23 under 35 U.S.C. § 102(b) as anticipated by Elder. 7 As discussed above with respect to the rejection of independent claim 17, Appellants’ argument that Elder’s oil circuit includes a separate oil tank structure is speculative, and not supported by the disclosure of Elder. 11 Appeal 2016-005724 Application 13/541,935 Claims 24 and 25 Claim 24 depends from claim 23 and recites, in relevant part, “the oil tank and integrally formed oil cooler are enclosed within the core compartment.” Appeal Br. 13 (Claims App.). Appellants argue that Elder fails to disclose such a feature. Appeal Br. 7—8. In particular, Appellants assert that Elder’s “Figure 1 clearly shows that the fins 66 extend outwardly of the core nacelle 2[0],” and, “[t]hus, the [Ejxaminer’s integrally formed oil cooler 66 is not enclosed within the core compartment.” Id. at 8. For the following reasons, Appellants’ argument is persuasive of Examiner error. In rejecting claim 23, from which claim 24 depends, the Examiner finds that Elder discloses “an oil cooler that is integrally formed in the outer surface of the oil tank[ ](cooling fins 66, 68 are mounted to the outer surface of oil tank 58).” Final Act. 9 (emphasis added). In rejecting claim 24, the Examiner finds that Elder discloses that “oil tank 58 and integral fin 68 are enclosed within the core compartment 28,” but does not make any finding regarding integral fin 66. Id. (citing Elder, Fig. 1). The Examiner takes the position that “Elder’s oil tank 58 and at least a portion of the integrally formed oil cooler[ ](68) is enclosed within core compartment 28.” Ans. 13 (emphasis added) (citing Elder, Fig. 1). In our view, having only a portion of the integrally formed oil cooler be enclosed within the core compartment is not encompassed by the claims in that the integrally formed oil cooler would not be closed in or surrounded by (i.e., “enclosed within,” as recited) the core compartment. Although Figure 1 of Elder shows fins 68 are enclosed within compartment 28, we agree with Appellants that fins 66 extend outward from core nacelle 20 and are not enclosed within compartment 28. See Reply Br. 7 (asserting that “the Examiner’s cooler 66, 12 Appeal 2016-005724 Application 13/541,935 68 is not shut in on all sides by the core nacelle”). As such, the Examiner’s finding that Elder discloses that the oil tank and cooler are enclosed within the core compartment is not supported by a preponderance of the evidence. For the foregoing reasons, we are persuaded that the Examiner erred in finding that Elder discloses all of the limitations of claim 24. Accordingly, we do not sustain the rejection of claim 24, or its dependent claim 25, under 35 U.S.C. § 102(b) as anticipated by Elder. Obviousness Rejection Claims 5 and 6 The Examiner’s rejection of dependent claims 5 and 6 relies on the same erroneous finding that the edge of Elder’s aperture 38 is a flange, as recited in claim 1, from which claims 5 and 6 depend. Final Act. 10—11. The Examiner does not explain how Storage cures this underlying deficiency. Accordingly, for the reasons discussed above, we do not sustain the rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Elder and Storage. Claim 18 Claim 18, which depends from independent claim 17, recites that “the plurality of air sources comprise at least fan air, core ventilation air, free stream air, and core bleed air.” Appeal Br. 12 (Claims App.). The Examiner acknowledges that “Elder is . . . silent regarding the plurality of air sources compris[ing][ fan air, core ventilation air, free stream air and core bleed air.” Final Act. 10. However, the Examiner finds that Storage teaches “the plurality of air sources comprises fan air, core ventilation air, free stream air, and core bleed air[ ](as shown in the figures, depending on the location of the oil tank it is subjected to a plurality of air sources comprising at least fan 13 Appeal 2016-005724 Application 13/541,935 air, free stream air and core/compartment ventilation air).” Id. at 11 (citing Storage, Figs. 8, 9). The Examiner concludes that it would have been obvious “to modify Elder to incorporate the teachings of Storage, to locate the oil tank in a position where it can be subjected to a plurality of cooling airflows to facilitate reducing an operational temperature of the lubrication fluid.” Id. (citing Storage Tflf 35, 36)). Appellants persuasively assert that “the [EJxaminer has offered no explanation as to how Elder would be modified to provide an oil tank configuration that would be cooled by fan air, core ventilation air, free stream air, and core bleed air.” Appeal Br. 9. Base claim 17 requires that the oil tank (i.e., singular) is subjected to a plurality of air flow sources, and claim 18 requires the plurality of air sources to comprise “at least fan air, core ventilation air, free stream air, and core bleed air.” Id. at 12 (Claims App.). Given the teachings of Elder and Storage, the Examiner has not sufficiently articulated a rational evidentiary underpinning to explain how or why an ordinary artisan would have located Elder’s heat exchanger in a particular position, or otherwise modified Elder’s heat exchanger, so as to enable it to be cooled by a plurality of air flow sources that includes fan air, core ventilation air, free stream air, and core bleed air. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007)). For the foregoing reasons, we are persuaded that the Examiner erred in concluding that the combination of Elder and Storage renders obvious the 14 Appeal 2016-005724 Application 13/541,935 subject matter of claim 18. Accordingly, we do not sustain the rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over Elder and Storage. DECISION The Examiner’s decision to reject claims 16 and 22 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement is reversed. The Examiner’s decision to reject claim 6 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 reversed. The Examiner’s decision to reject claims 1—4, 7, 15, 19, and 24—28 under 35 U.S.C. § 102(b) as anticipated by Elder is reversed. The Examiner’s decision to reject claims 17, 21, and 23, under 35 U.S.C. § 102(b) as anticipated by Elder is affirmed. The Examiner’s decision to reject claims 5, 6, and 18 under 35 U.S.C. § 103(a) as unpatentable over Elder and Storage is reversed. 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-IN-PART 15 Copy with citationCopy as parenthetical citation