Ex Parte Yu et al

Patent Trial and Appeal BoardOct 6, 2017

13272201 (P.T.A.B. Oct. 6, 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. 13/272,201 10/12/2011 Po-Hao Yu 15248.853 1022 759064167 Evan R. Witt Kirton & McConkie 36 South State Street, Suite 1900 Salt Lake City, UT 84111 10/19/2017 EXAMINER SEHN, MICHAEL L ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 10/19/2017 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): ipdocket@kmclaw.com ewitt@kmclaw.com mmichaels@kmclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PO-HAO YU and SHIR-HARN YEH Appeal 2016-004173 Application 13/272,2011 Technology Center 3700 Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and CHARLES N. GREENHUT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Po-Hao Yu and Shir-Ham Yeh (Appellants) seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-7 and 9- 11. Final Office Action (December 19, 2014) (hereinafter “Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellants identify Delta Electronics, Inc. as the real party in interest. Appeal Brief 2 (July 23, 2015) (hereinafter “Br.”). Appeal 2016-004173 Application 13/272,201 CLAIMED SUBJECT MATTER Appellants’ claimed subject matter “relates to an impeller.” Spec. 11. Claim 1 is the sole independent claim and is reproduced below. 1. An impeller, comprising: a hub; and a plurality of blades disposed around an outer periphery of said hub, wherein each of said blades comprises: a connecting end coupled with said hub; a sweep-back part disposed at an edge of said blade and extended from the connecting end, wherein an extending direction of said sweep-back part is opposed to a rotating direction of said impeller; and a sweep-forward part extended from said sweep- back part, wherein an extending direction of said sweep- forward part is the same as said rotating direction of said impeller, wherein an angular part is formed between said sweepback part and said sweep-forward part, said hub has a center, a base point is located between said hub and said sweep-back part, a sweep-back terminal point is located between said sweep-back part and said sweep-forward part for forming said angular part, a sweep-forward terminal point is located at the end of said sweep-forward part, and a first radius R1 is defined from said center to said base point, a second radius R2 is defined from said center to said sweep-back terminal point, a third radius R3 is defined from said center to the outermost periphery of said blade, and a relationship between said Rl, R2, and R3 is: 0.1 < (R2- R1)/(R3-R1) < 0.25. Br. 13 (Claims Appendix). 2 Appeal 2016-004173 Application 13/272,201 REJECTIONS The Final Office Action includes the following rejections:2 1. Claims 1-7 and 9-11 stand rejected under 35U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-6 and 9 stand rejected under 35 U.S.C. § 102(b) as anticipated by Park (US 7,585,155 B2, issued September 8, 2009). 3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Park and Choi (US 6,394,754 Bl, issued May 28, 2002). 4. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Park and Amr (US 5,273,400, issued November 28, 1993). ANALYSIS Written Description Appellants’ Specification discloses an impeller with the claimed relationship of the radii Rl, R2, and R3 in the range of 0.1 to 0.35. Spec. H 18, 28. Claim 1 recites a narrower range of 0.1 to 0.25. The Examiner finds that the exclusion of the range of 0.25 to 0.35 constitutes new matter. Final Act. 3. Appellants argue that this rejection should not be sustained because the claimed range “is clearly within the range initially disclosed in the [Specification.” Br. 4. The Examiner responds that because the 2 The Final Office Action also included a rejection of claim 9 under 35 U.S.C. § 112, second paragraph. Final Act. 3. The Examiner agreed to enter an after-final amendment of claim 9 and withdrew this rejection. Advisory Action (August 5, 2015); Examiner’s Answer 2 (October 2, 2015) (hereinafter “Ans.”). 3 Appeal 2016-004173 Application 13/272,201 Specification “does not mention the exclusion of the range between 0.25 and 0.35, and since 0.25 is not disclosed as an important point for the relationship between the three radii,” the claim limitation at issue is new matter. Ans. 3; see also id. at 2 (stating that the Specification does not mention 0.25 as being a “critical point for the relationship between the three radii”). The written descriptive support inquiry is a question of fact, and determining whether a patent complies with the written description requirement will necessarily vary depending on the context. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. Id. There is no per se rule that a broader range disclosed in the written description will always support a narrower range recited in a claim. That being said, when the original written description describes something more broadly than what is claimed, the burden is on the Examiner in the first instance to give reasons or evidence showing why the broader disclosure does not provide support for the narrower limitation of the claim. See In re Wertheim, 541 F.2d 257, 264-65 (CCPA 1976) (holding that when the claimed range is subsumed within a range disclosed in the original specification, the PTO must present “sufficient reason to doubt that the broader described range also describes the somewhat narrower range” and “give reasons why a description not in ipsis verbis is insufficient.”) 4 Appeal 2016-004173 Application 13/272,201 As set forth in Ariad, factors for evaluating the adequacy of the disclosure when analyzing the written descriptive support question include “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Ariad, 598 F.3d at 1351 (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)). The Examiner does not discuss any of these factors. Rather, the Examiner’s rejection rests on an argument that the Specification lacks literal support for the narrower claim. This showing is not enough to meet the Office’s burden in the first instance to demonstrate a reason to doubt the sufficiency of the description of the broader range. Wertheim, 541 F.2d at 265. Accordingly, we do not sustain the rejection of claims 1-7 and 9-11 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Anticipation Appellants argue the claims subject to the second ground of rejection (i.e., claims 1-6 and 9) as a group. Br. 5-9. We select claim 1 as representative of the group, and claims 2-6 and 9 stand or fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv). The Examiner finds that Park discloses the impeller of claim 1 including a disclosure in which the relationship between radii Rl, R2, and R3 falls within the claimed range. Final Act. 4-5 (citing Figure 10). In particular, the Examiner finds that the horizontal axis of the graph of Park’s Figure 10 shows the relationship of (r — Rh)/(Rt — Rh), where Rh corresponds to the claimed radius Rl and Rt corresponds to the claimed radius R3. Ans. 3. The Examiner finds that “r is a radius at any point along 5 Appeal 2016-004173 Application 13/272,201 the span of the blade, including at a sweep-back terminal point such as PI.” Id. (citing Park, Figure 8). The Examiner further finds that when r is taken an inflection point PI, r corresponds to the claimed radius R2, and Figure 10 of Park shows that at this radius, the relationship between Rh, Rt, and r is around 0.15-0.16, which falls within the claimed range of 0.1 to 0.25. Id. at 4. Appellants argue that “Park fails to disclose the relationship among the three radii, Rl, R2, and R3, as recited in claim 1.” Br. 5. Appellants contend that Park discloses that “the chord length (CL) has the minimum value at a predetermined position satisfying an equation (r-Rh)/(Rt- Rh):0.2~0.6.” Id. at 6 (citing Park, col. 5,11. 19-27). Appellants also argue that “[t]he relationship of the radii disclosed in Park does not define the relationship of R2 (i.e., the radius of the sweep-back terminal point) with respect to Rl and R3.” Id. at 7. As to Figure 10 of Park, Appellants contend that this Figure “merely shows the relationship of the positions of the first and second inflection points in a rotational direction.” Id. at 8. Claim 1 recites an impeller having a hub and a plurality of blades. Br. 13 (Claims Appendix). Claim 1 defines radii Rl, R2, and R3, which are taken from the center of the hub and extend to a base point, a sweep-back terminal point, and the outermost periphery of the blade, respectively. Id. Claim 1 recites that “a relationship between said Rl, R2, and R3 is: 0.1 < (R2-R1)/(R3-R1) < 0.25.” Id. We find adequate support for the Examiner’s finding that when r is taken at inflection point PI in Park, then r corresponds to the claimed radius R2. In particular, r is shown in Figure 8 of Park as being the distance 6 Appeal 2016-004173 Application 13/272,201 between center of the hub and a position on the mid-chord line ML. Park, col. 5,11. 21-25, Fig. 8. PI is an inflection point along mid-chord line ML that denotes a point at which the sweeping angle of the blade changes from a backward sweeping angle to a forward sweeping angle. Park, col. 4,1. 66 - col. 5,1. 2. Thus, when r is taken at point PI, r denotes the radius from the center of the hub to a sweep-back terminal point, i.e., R2 of claim 1. Further, we agree with the Examiner’s finding that Figure 10 of Park discloses that, at point P1, the relationship between the radii Rh, Rt, and r, which correspond to the claimed radii Rl, R3, and R2, respectively,3 falls within the claimed range of 0.1 to 0.25. In other words, Figure 10 of Park discloses that the horizontal axis represents the result of the equation (r-Rh)/(Rt-Rh). The solid line shown in Figure 10 represents various points along the mid-chord line. When the equation is solved at the point PI along the mid-chord line, the result is approximately midway between 0.1 and 0.2 (e.g., 0.15 or thereabouts). Substituting Rl for Rh, R2 for r, and R3 for Rt in Park’s equation, the result is the relationship recited in claim 1, viz, (R2- R1)/(R3-R1) = 0.15. Thus, Park discloses an impeller having blades that meet the claimed relationship between Rl, R2, and R3 as defined in claim 1. For these reasons, we sustain the rejection of claim 1, and claims 2-6 and 9 which fall with claim 1, under 35 U.S.C. § 102(b) as anticipated by Park. 3 Appellants do not contest the Examiner’s findings that Park’s radius Rh corresponds to the claimed radius Rl and Park’s radius Rt corresponds to the claimed radius R3. Ans. 3; Br. 5-9. 7 Appeal 2016-004173 Application 13/272,201 Obviousness Claim 7 Appellants argue only that the rejection of claim 7 as unpatentable over Park and Choi should not be sustained “for at least the same reasons as presented above in connection with claim 1Br. 9. Having not found error in the rejection of claim 1, we likewise sustain the rejection of claim 7 under 35 U.S.C. § 103(a). Claims 10 and 11 Claims 10 and 11 each depend from claim 9 and define the sweep- back angle range and the sweep-forward angle range, respectively. Br. 14 (Claims Appendix).4 The Examiner proposed to modify Park based on the teaching of Amr of an impeller having blades comprising the claimed sweep-back and sweep-forward angle ranges. Final Act. 6 (citing Amr, col. 5,11. 12-28, claim 2). Appellants argue that the rejection of claims 10 and 11 and should not be sustained because the Examiner erred in finding that Amr teaches the claimed angle ranges. Br. 9-10. Appellants contend that “[t]he angles Ah and At are the sweeping angles of the midchord line, and are not [the angles defined in the claims].” Id. at 10. 4 Claim 9 depends from claim 1 and recites that “a sweep-back angle is formed between a first line defined by said center and said base point and a second line defined by said center and said sweep-back terminal point, and a sweep-forward angle is formed between said second line and a third line defined by said center and said sweep-forward terminal point.” Br. 14 (Claims Appendix). Claim 10 further defines the sweep-back angle ranges between -10 and -60 degrees with respect to the first line. Id. Claim 11 further defines that the sweep-forward angle ranges between 10 and 60 degrees with respect to the second line. Id. 8 Appeal 2016-004173 Application 13/272,201 The Examiner responds that Park discloses the sweep-back angle (a2) and the sweep-forward angle (al), but does not disclose the ranges of these angles. Ans. 4-5 (citing Park, Figure 8). The Examiner finds that the ranges are disclosed in Amr, which teaches sweep-back and sweep-forward angles (Ah and At) that are within the claimed ranges. Id. at 5. The Examiner explains that “[although the sweep-back and sweep-forward angles of Amr are shown with respect to the midchord line of the blade, because of the substantial symmetry of the blades, the midchord line follows the same profile as the trailing edge, and the angles that are shown with respect to the midchord line of the blade would likewise be delineated about the trailing edge of the blade.” Id. We agree with Appellants that the angles Ah and At of Figure 2 A of Amr are not the claimed sweep-back and sweep-forward angles defined in claim 9. Even assuming that the midchord line follows the same profile as the trailing edge, the angle Ah is not defined between the first and second lines and the angle At is not defined between the second and third lines, as those lines are specified in claim 9, from which claims 10 and 11 depend. As such, the Examiner has failed to explain adequately how the disclosure in column 5 of Amr as to the ranges of the angle of sweep of the midchord line would have led one having ordinary skill in the art to modify the sweep angles al and al of Park in the manner claimed. Accordingly, we do not sustain the rejection of claims 10 and 11 as unpatentable over Park and Amr. 9 Appeal 2016-004173 Application 13/272,201 DECISION We reverse the rejection of claims 1-7 and 9-11 under 35 U.S.C. § 112, first paragraph, and the rejection of claims 10 and 11 under 35 U.S.C. § 103(a). We affirm the rejection of claims 1-6 and 9 under 35 U.S.C. § 102(b) and the rejection of claim 7 under 35 U.S.C. § 103(a). 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-IN-PART 10