Ex Parte STEFFEN et al

Patent Trial and Appeal BoardAug 21, 2018

13929366 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/929,366 06/27/2013 135838 7590 08/23/2018 Studio Torta (RINGFENCE) c/o BUCHANAN INGERSOLL & ROONEY PC P.O. BOX 1404 ALEXANDRIA, VA 22313 Tobias STEFFEN 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. 0087748-000126 1076 EXAMINER LEGENDRE, CHRISTOPHER RY AN ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 08/23/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ADIPDOCl@BIPC.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOBIAS STEFFEN, MARC RAUCH, MAURO CORRADI, and BJOERN VEITH Appeal 2017-011470 Application 13/929,366 Technology Center 3700 Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and BRENT M. DOUGAL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 The real party in interest is the assignee of the present patent application, ANSALDO ENERGIA IP UK LIMITED. (App. Br. 1). We note that ALSTOM Technology Ltd is listed as the Applicant. (Bibliographic Data Sheet (Jan. 27, 2016)) Appeal 2017-011470 Application 13/929,366 CLAIMED SUBJECT MATTER The claims are directed to a compressor for a gas turbine and method for repairing and/or changing the geometry of and/or servicing the compressor. Claims 1 and 10, reproduced below, with emphasis added, are illustrative of the claimed subject matter: 1. A compressor for a gas turbine, said compressor compnsmg; a rotor rotating about an axis; a housing coaxially surrounding said rotor, thereby defining a flow channel between rotor and housing for a fluid to be compressed; alternating rows of vanes and blades arranged within the flow channel, the vanes being mounted in an inner wall of the housing, and the blades being mounted in an outer wall of the rotor; and intermediate rings provided in the inner wall of the housing between neighboring rows of vanes such that an outer wall of the flow channel is formed by said vanes and intermediate rmgs; wherein the intermediate rings are received in circumferential mounting grooves provided in the inner wall of the housing such that the intermediate rings are configured to be replaceably attachable to the inner wall of the housing such that the intermediate rings are removable from the inner wall of the housing to be abraded after removal from the inner wall such that the outer wall of the flow channel is enlargeable to define a larger flow channel via removal and abrading of the intermediate rings prior to reattachment of the intermediate rings to the inner wall of the housing via the circumferential mounting grooves. 2 Appeal 2017-011470 Application 13/929,366 10. A method for repairing and/or changing the geometry of and/or servicing of a compressor, the method comprising: removing intermediate rings from the compressor that at least partially define an outer wall of a flow channel of the compressor; processing the removed intermediate rings to remove material from the intermediate rings for enlarging a size of the flow channel; and positioning the processed intermediate rings back into the compressor. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Daunt Moree Minor Holmes Memmer us 3,053,694 US 2007/0237629 Al US 2010/0050408 Al US 2010/0263183 Al US 2011/0299977 Al REJECTIONS Sep. 11, 1962 Oct. 11, 2007 Mar. 4, 2010 Oct. 21, 2010 Dec. 8, 2011 Claims 1--4, 6, and 8 are rejected under 35 U.S.C. Â§ I02(b) as being anticipated by Memmer. Claims 1--4, 6, 8, and 9 are rejected under 35 U .S.C. Â§ I02(b) as being anticipated by Moree. Claims 5 and 7 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Moree and Daunt. 3 Appeal 2017-011470 Application 13/929,366 Claims 10-17 are rejected under 35 U .S.C. Â§ 103(a) as being unpatentable over Moree, Minor, and Applicant's Admitted Prior Art ("AP A"), as evidenced by Holmes. 2 Claims 18-20 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Moree and AP A, as evidenced by Holmes. OPINION The Examiner has provided a thorough and comprehensive analysis concerning the issues raised by this appeal. Ans. 3-14. We adopt the Examiner's analysis in this regard as our own3 and discuss the issues below only for emphasis. Anticipation and obviousness of the claimed apparatus Regarding the anticipation rejections of apparatus claims 1-9, we agree with the Examiner that the sole argued limitation of claim 1, emphasized above, pertains to an intended use or process for the intermediate rings. 4 Final Act. 4; Ans. 12-14. The pertinent question in such instances is what the recited use tells us about the structure of the claimed machine or apparatus. See, e.g., K-2 Corp. v. Salomon S.A., 191 2 Holmes is not cited by the Examiner for teaching any specific aspect of the claimed subject matter but as evidence there existed a known motivation to modify Moree's device and method-i.e., changing a shape or profile of compressor components. Final Act. 10-11; Ans. 5 (both citing Holmes para. 19). 3 See, e.g., In re Paulsen, 30 F. 3d 1475, 1478 n. 6 (Fed. Cir. 1994) accord In re Cree, No. 2015-1365 n. 2 (Fed. Cir. Mar. 21, 2016) 4 Although "[s]uch statements often ... appear in the claim's preamble," a statement of intended use or purpose can appear elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). 4 Appeal 2017-011470 Application 13/929,366 F.3d 1356, 1363 (Fed. Cir. 1999). "It is trite to state that the patentability of apparatus claims must be shown in the structure claimed and not merely upon a use, function, or result thereof." In re Gardiner, 171 F.2d 313, 315- 16 (CCPA 1948) (cited with approval in Catalina Marketing Int'! v. Coolsavings.com, 289 F. 3d 801, 809 (Fed. Cir. 2002). Appellants make the naked assertion that the language in question "is a structural requirement." App. Br. 33. However, Appellants do not inform us, and we are unaware, of any specific structure implicated by the recitation in question. Appellants do not apprise us of any reason why the rings of Memmer and Moree could not be subjected to the process steps or limitations recited in claim 1. When considering the claims directed to the machine or apparatus, Appellants' arguments that Memmer and Moree intended their rings to be subject to different processes (App. Br. 32-35) does not, without more, demonstrate patentability as to Appellants' claimed machine or apparatus (i.e., it does not identify any structural difference). Appellants argue claims 5 and 7 under a separate subheading but do not argue any specific language added to parent claim 1 by claims 5 and 7. Rather, Appellants repeat the arguments set forth with regard to claim 1 and argue Daunt does not cure the alleged deficiencies of the rejection based on Moree. As we did not find any such deficiencies in the rejection based on Moree alone, Appellants' arguments in this regard do not apprise us of any error in the rejection of claims 5 and 7 based on Moree and Daunt. Accordingly, we sustain the Examiner's anticipation rejections. 5 Appeal 2017-011470 Application 13/929,366 Obviousness of the claimed methods Turning to independent method claims 10 and 18, despite lengthy briefing on the subject (App. Br. 12-20, 22-28, 29-31) there does not appear to be any dispute from the Examiner that neither Moree nor Minor expressly describes a process by which the inner diameter or flow channel of the removed rings (Moree 26; Minor 126) is enlarged. Moree touts "tighter clearances" as a benefit to ring replacement. Moree para. 13. Minor is, at least predominantly, 5 concerned with "restor[ ation ]" of the rings to the original, pre-worn, size. Moree para. 30. We agree with the Examiner that one skilled in the art of turbine compressor design would not regard Moree' s disclosure as limited in relevance only to reducing the flow channel size. First, "tighter clearances" does not necessarily require size reduction of the flow channel, but matching the particular size of the blade employed. Second, attributing, as we must, the requisite level of skill to the hypothetical designer of turbine compressors (In re Sovish, 769 F. 2d 738, 743 (Fed. Cir. 1985)), we agree with the Examiner that the skilled artisan would understand that the abradable material in Moree and Minor's designs could be used to both increase the size of the flow channel as well as to decrease or restore it. The skilled designer of turbine compressors must be presumed to know 5 The portion of Minor cited by the Examiner (para. 30) does mention that "[i]n some embodiments, an associated abradable layer is removed from the structural substrate, such as by machining, grinding and/ or chemical stripping" which seems to suggest flow channel enlargement. However, the Examiner does not appear to specifically rely on this disclosure in Minor, instead focusing on the AP A regarding flow channel enlargement. 6 Appeal 2017-011470 Application 13/929,366 something about the art apart from what the references expressly disclose or suggest. See In re Jacoby, 309 F.2d 513,516 (CCPA 1962). Appellants acknowledge, but do not dispute (App. Br. 16), the Examiner's finding based on the APA that it was known in the prior art as sometimes desirable to enlarge a flow path. Final Act. 10 ( citing Spec. 1 :33-34, 2:3--4). Appellants' only argument against the Examiner's reliance on the AP A is that the AP A does not disclose what the Moree and Minor references were cited as disclosing. App. Br. 16. "Non-obviousness cannot be shown by attacking references individually when the rejection is predicated upon the teachings of a combination of references." See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). Although Appellants purport to provide separate arguments for dependent claims 14, 17, 19, and 20, these arguments and claim limitations relate to the same issues already addressed above. App. Br. 22-24, 30-31. Accordingly, we sustain the Examiner's obviousness rejections of claims 10-20. DECISION The Examiner's rejections are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7