Ex Parte Spangler et al

Patent Trial and Appeal Board

Mar 23, 2017

11679958 (P.T.A.B. Mar. 23, 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.
11/679,958 02/28/2007 Brandon W. Spangler 67097-763PUS 1 ;0003746 4429
54549 7590 03/27/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
DAVIS, JASON GREGORY
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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 BRANDON W. SPANGLER,
CORNEIL S. PAAUWE, and DOMINIC J. MONGILLO
Appeal 2015-001066
Application 11/679,958
Technology Center 3700
Before JENNIFER D. BAHR, HYUN J. JUNG, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brandon W. Spangler et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1, 3, 4, 10, 12—15,
and 20-26, which are the only claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is United Technologies
Corporation. Appeal Br. 1.
Appeal 2015-001066
Application 11/679,958
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A featherseal for engagement with a turbine engine
component comprising:
a featherseal having a linear longitudinal side opposite to
and parallel to a tab side which define a longitudinal axis
therebetween, said featherseal having a first lateral tab which
extends from said tab side transverse to said longitudinal axis and
a second lateral tab which extends from said tab side transverse
to said longitudinal axis, said first lateral tab spaced from
said second lateral tab, said first lateral tab having a different
length, relative to said longitudinal axis, than said second lateral
tab.
REJECTIONS
I. Claims 1,3,4, 10, 12—15, and 20—26 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
II. Claims 1,3,4, 10, 12—15, 20-22, 25, and 26 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sandy (US 4,573,866,
iss. Mar. 4, 1986) and Stec (US 6,171,058 Bl, iss. Jan. 9, 2001).
III. Claims 1,3,4, 10, 12—15, and 20—26 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Worley (US 5,609,469,
iss. Mar. 11, 1997) and Stec.
DISCUSSION
Rejection I—Written Description
The Examiner finds that the limitation that the first lateral tab has a
different length than the second lateral tab in independent claims 1,10, and
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14, and the limitation in claim 26 that the first opening has a different length
than the second opening, lack written description support in the present
application because “[t]he claimed limitation is broader than the subject
matter taught by the original disclosure” and, thus, “includes embodiments
not originally disclosed.” Ans. 2—3.
The Examiner acknowledges that Figure 3, which forms part of the
original application on its filing date, discloses the forward tab (tab 80)
having a smaller length than the aft tab (tab 82), but finds no disclosure of
the forward tab having a larger length than the aft tab, which is also
encompassed by “the broad limitation of a ‘different length.’” Ans. 3,13.
Appellants contend that the disclosure of Figure 3 properly supports
“at least one embodiment that is consistent with the claimed combination”
and “[t]he fact that the Examiner can come up with another, undisclosed
arrangement that would fit within the scope of the claims is irrelevant.”
Reply Br. 1—2.
We agree with Appellants that, in this case, the disclosure of one
embodiment wherein the forward tab has a different (i.e., smaller) length
than the aft tab and wherein the forward slot opening has a different (i.e.,
smaller) length than the aft slot opening is sufficient to provide support for
the claim limitations in question, notwithstanding that the claim limitations
that the first and second tabs and the first and second openings have different
lengths also cover another embodiment (i.e., the forward tab having a larger
length than the aft tab and the forward opening having a larger length than
the aft opening) not specifically disclosed in the application. The
Specification does not specifically address the relative lengths of the first
and second tabs or the first and second openings and, in particular, gives no
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indication that the specific arrangement illustrated (i.e., the forward tab and
opening having shorter lengths than the aft tab and opening) is critical to the
invention or is the only possible arrangement for the tabs and openings.
Thus, unlike the patent disclosure in, for example, Gentry Gallery, Inc. v.
Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1988) (“the original
disclosure clearly identifies the console as the only possible location for the
controls” and the claims did not limit the location of the controls to the
console), the original disclosure in the present application does not restrict
the scope of the invention to the forward tab and opening having smaller
lengths than the aft tab and opening.
We do not sustain the rejection of claims 1,3,4, 10, 12—15, and 20-26
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Rejections II and III—Obviousness
We discuss these rejections together because Appellants argue both of
these rejections together, grouping together all of the claims subject to each
ground of rejection. Appeal Br. 3—6. We select claim 1 as representative for
each of these rejections, and the remaining claims subject to each rejection
under 35 U.S.C. § 103(a) stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants argue that Stec teaches away from the Examiner’s
proposed further modification of the featherseal of Sandy or Worley (either
as modified by Stec) to resize one of the tabs to have a different length than
the other tab. Appeal Br. 4—5; see Ans. 6 (explaining the rationale for the
proposed modification). Appellants additionally contend that this proposed
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Application 11/679,958
“modification would render Stec unsatisfactory for its intended purpose (of
providing two correct installations).” Appeal Br. 5.
The disclosure of Stec cited by Appellants as teaching away from
providing tabs of different lengths reads as follows: “The damper is
preferably symmetrical end-to-end for permitting two correct installation
orientations, with two Murphy-proofed incorrect installation orientations
which prevent assembly.” Stec 6:54—57. Along these same lines, Stec also
states:
In the preferred embodiment illustrated in FIG. 2, the
damper body 28 is symmetrical across the neck 50 from forward-
end-to-aft-end of the damper along the longitudinal axis 38.
Correspondingly, the damper is nonsymmetrical side-to-side
across the longitudinal axis 38 in the circumferential direction.
In this way, of the four possible orientations of installing the
damper 28 in it[s] corresponding pocket 26, two of the
orientations are correct, with two orientations being incorrect and
not achievable in view of the nonsymmetry of the side notches
34,48.
Id. 5:34-43.
Thus, Stec expresses a preference for asymmetry across the
longitudinal axis and symmetry along the longitudinal axis to provide two
correct installation orientations and two incorrect installation orientations.
This preference for symmetry over asymmetry along the longitudinal axis
does not constitute a teaching away from providing tabs of different lengths.
A reference does not teach away if it merely expresses a general preference
for an alternative invention from amongst options available to the ordinarily
skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“mere disclosure of alternative designs does not teach
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Application 11/679,958
away”). A person having ordinary skill in the art would have readily
appreciated that Stec’s damper may be shaped so as to provide one, two, or
four possible correct installation orientations, depending on whether the
shape is asymmetrical both along and across the longitudinal axis,
symmetrical both along and across the longitudinal axis, symmetrical along
the longitudinal axis and asymmetrical across the longitudinal axis, or
asymmetrical along the longitudinal axis and symmetrical across the
longitudinal axis. Stec expresses a preference for two possible correct
installation orientations by providing symmetry along the longitudinal axis
and asymmetry across the longitudinal axis, but does not discredit or
discourage selection of one of the other alternatives. In fact, as the
Examiner points out (Ans. 15), Stec expressly teaches that while certain
embodiments considered to be “preferred and exemplary embodiments”
have been disclosed, other modifications falling “within the true spirit and
scope of the invention” may be apparent to those of ordinary skill in the art.
Stec 6:64—7:3.
We also agree with the Examiner that providing tabs of different
lengths would not render Stec’s damper unsatisfactory for its intended
purpose, as Appellants contend. Ans. 15—16. A damper/featherseal
provided with tabs of different lengths, thereby being asymmetrical along its
longitudinal axis, would have only one correct installation orientation
(assuming asymmetry across its longitudinal axis, as taught by Stec), rather
than the two correct installation orientations preferred by Stec, but would
still function satisfactorily as a damper/featherseal with means for axial
retention. See Stec 2:11—14 (stating a desire “to provide an improved
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turbine blade vibration damper having sufficient damping mass with self
retention for preventing damage and liberation thereof during operation”).
For the above reasons, Appellants’ arguments do not apprise us of
error in the rejections of claim 1 under 35 U.S.C. § 103(a). Accordingly, we
sustain the rejection of claims 1,3,4, 10, 12—15, 20—22, 25, and 26 as
unpatentable over Sandy and Stec, and the rejection of claims 1, 3, 4, 10,
12—15, and 20-26 as unpatentable over Worley and Stec.
DECISION
The Examiner’s decision rejecting claims 1, 3, 4, 10, 12—15, and 20-
26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement is REVERSED.
The Examiner’s decision rejecting claims 1, 3, 4, 10, 12—15, 20—22,
25, and 26 under 35 U.S.C. § 103(a) as unpatentable over Sandy and Stec is
AFFIRMED.
The Examiner’s decision rejecting claims 1, 3, 4, 10, 12—15, and 20-
26 under 35 U.S.C. § 103(a) as unpatentable over Worley and Stec 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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