General Electric Company

Patent Trials and Appeals Board

Mar 2, 2020

14982437 - (D) (P.T.A.B. Mar. 2, 2020)

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.
14/982,437 12/29/2015 Thomas Ory Moniz 285038-US-1/GECV-704 3150
122218 7590 03/02/2020
Dority & Manning, P.A. and GEC-Aviation
Post Office Box 1449
Greenville, SC 29602-1449
EXAMINER
SUTHERLAND, STEVEN M
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
03/02/2020 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):
oc.prosecution@ge.com
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS ORY MONIZ, JOSEPH GEORGE ROSE, and
PAUL DANIEL KEMPER
____________

Appeal 2019-004633
Application 14/982,437
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, LISA M. GUIJT, and
LEE L. STEPINA, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 24–43. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the General Electric Company as the real
party in interest. Appeal Br. 1.
Appeal 2019-004633
Application 14/982,437
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THE INVENTION
Appellant’s invention relates to “gas turbine engines, and, more
particularly, to gas turbine engine assembly and methods of assembling
same.” Spec. ¶ 1. Claims 24, 32, and 39 are the independent claims on
appeal. Claim 24, reproduced below, is illustrative of the subject matter on
appeal.
24. A method of assembling a turbofan engine, the method
comprising:
inserting a core gas turbine engine into a fan case
assembly in an axial direction, the inserting taking place with a
first outlet guide vane segment of an outlet guide van assembly
coupled to the fan case assembly and a second outlet guide vane
segment of the outlet guide vane assembly decoupled from the
fan case assembly, and the core gas turbine engine having been
shifted in a radial direction away from the first outlet guide van
segment to clear a radial inner diameter of the first outlet guide
van segment; and
coupling the core gas turbine engine to the fan case
assembly, comprising coupling the first outlet guide van
segment to the core gas turbine and coupling the second outlet
guide vane segment to the fan case assembly;
wherein the core gas turbine engine comprises a booster
compressor and the first outlet guide van segment and the
second outlet guide vane segment have a radially inner diameter
that is smaller than the radial outer diameter of the booster
compressor.
THE REJECTIONS2
I. Claims 24–43 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.

2 The Examiner’s objection to the drawings for failing to show every feature
of the claimed invention is a petitionable, not appealable, matter. See Non-
Final Action 2; 37 C.F.R. § 134(a); 37 C.F.R. § 1.181(a)(1).
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Application 14/982,437
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II. Claims 24–43 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the enablement requirement.
III. Claims 24–43 are rejected under 35 U.S.C. § 112(b) as
indefinite.
OPINION
Rejection I
The Examiner finds that the independent claim 24 fails to comply
with the written description requirement because the Specification fails to
adequately describe the claim imitation “coupling the core gas turbine
engine to the fan case assembly.” Ans. 3. In support, the Examiner
determines that paragraph 19 of the Specification discloses that “disk (142)
of the fan is part of the fan case assembly (114),” and that Figure 1 of the
Specification “shows disk (142) of the fan as an extension of both the
booster compressor (122) and the low pressure shaft that extends through the
core gas turbine engine (116).” Non-Final Act. 4. The Examiner determines
that “[t]he type of connection that allows the core gas turbine engine to be
inserted and removed from the fan of the fan case assembly, and the location
of the connection, is not disclosed by [the Specification], such that it cannot
be determined that that [the inventors] possessed the claimed invention at the
time of disclosure.” Id. at 4–5 (emphasis added); see also id. at 5 (rejecting
claims 32 and 39 for “the same reasons”); Ans. 3 (“adequate disclosure as to
how and where the fan of the fan case assembly is coupled and decoupled
from the core gas turbine engine needs to be disclosed in order to show
[A]ppellant possessed the [disputed] claimed limitation’” (emphasis added));
id. at 4 (“coupling of the fan disk of the fan to the core gas turbine is not
disclosed, and is necessary to show that [A]ppellant possessed the claimed
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invention at the time of disclosure” (emphasis added)). The Examiner
further finds that
[the Specification] is silent [as] to a connection between the fan
of the fan case assembly and the core gas turbine engine that
allows the fan to be decoupled from the core gas turbine engine,
and contradicts that the fan of the fan case assembly is separable
from the core gas turbine engine by showing the fan integral with
both the low pressure compressor 120 and the low pressure shaft
136 of the core gas turbine engine in [F]igure 1.
Ans. 3.
Appellant argues that “claim 24 does not require coupling the core gas
turbine engine to the fan of the fan case assembly,” but rather, “claim 24
recites the feature: ‘coupling the core gas turbine engine to the fan case
assembly.” Appeal Br. 8. Appellant submits that the Specification provides
adequate written description support for this limitation because the
Specification discloses, for example, with reference to Figures 1 and 2, that
“core gas turbine engine (116) is decoupled from the fan case assembly
(114) at radially inner fan hub frame flange (153) and radially outer fan case
flange (155), such as using bolts (180) and bolt flanges (182).” Id. (citing ¶¶
21, 25). Appellant also submits that it is “conventional or well-known in the
art” how to connect a fan, including rotor blades via componentry to a core
turbine engine. Appeal Br. 10 (citing US Patent No. 7,841,165, for example,
col. 4, ll. 30–40, for disclosing that it is well-known in the art how to couple
“a fan (i.e., rotor blades (60)) . . . to a core turbine engine (12),” for example,
“fan assembly (50) includes a cone (84), which is connected at a forward
end (86) to the rotor disk (66) and at a downstream end (88) to a first output
of a gearbox (100),” wherein “a low-pressure shaft (34) [is] coupled to [the]
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gearbox (100),” which is “coupled to a frame (13) of a core turbine engine
(12)”).
To satisfy the written description requirement, the Specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562–63 (Fed. Cir. 1991). The issue of whether the written
description requirement has been satisfied is a question of fact. Wang Labs,
Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).
We find that the Specification describes the coupling of a core gas
turbine engine to a first outlet guide vane segment of an outlet guide vane
assembly, which outlet guide vane assembly is in turn coupled to
components of a fan case assembly, and therefore, the fan case assembly, in
sufficient detail so that one skilled in the art can reasonably conclude the
inventors had possession of the subject matter of claim 24 as of the filing
date. See, e.g., Spec. ¶ 21. In other words, a description of any further
coupling of the core gas turbine engine to other components of the fan case
assembly, which are admittedly disclosed in the Specification as a part of
the fan case assembly (i.e., disk 142), is unnecessary given the scope of
claim 24. As argued by Appellant, claim 24 does not require the core gas
turbine engine to be coupled to the fan of the fan case assembly,
notwithstanding Appellant’s evidence that such further coupling is well-
known in the art.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 24, and dependent claims 25–31 depending therefrom.
The Examiner relies on the same findings relative to the rejection of
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independent claims 32 and 39 pursuant to the written description
requirement of 35 U.S.C. § 112(a), and therefore, for essentially the same
reasons, we do not sustain the Examiner’s rejection of independent claims
32 and 39, and claims 33–38 and 40–43 depending therefrom. Non-Final
Act. 5.
Rejection II
The Examiner finds that the Specification “does not enable how to
couple and decouple the fan of the fan case assembly to the core gas turbine
engine, which is required for the gas turbofan engine to function.” Non-
Final Act. 5 (emphasis added). The Examiner addresses the Wands factors,
finding, inter alia, “[o]ne of ordinary skill would need to learn where and
how the fan of the fan case assembly is connected to the core gas turbine
engine,” and also finding that the inventors are “silent to both the point of
connection and the type of connection used.” Id. at 6.
Appellant argues that the Specification contains “sufficient
information regarding how to connect the fan case assembly to the core gas
turbine engine to enable one skilled in the art to make and use the claimed
subject matter without undue experimentation at least for the reasons
discussed with respect to [Rejection I].” Appeal Br. 12.
All questions of enablement are evaluated against the claimed subject
matter. As concerns the breadth of a claim relevant to enablement, the only
relevant concern should be whether the scope of enablement provided to one
skilled in the art by the disclosure is commensurate with the scope of
protection sought by the claims. MPEP § 2164.08 (citing AK Steel Corp. v.
Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003); In re Moore, 439 F.2d 1232,
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1236 (CCPA 1971)). See also Plant Genetic Sys., N.V. v. DeKalb Genetics
Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003).
We find that the Specification enables one skilled in the art to insert a
core turbine gas engine into a fan case assembly in an axial direction, the
core gas turbine engine having been shifted in a radial direction, as claimed,
and also to couple the core gas turbine engine to the fan case assembly by
coupling a first outlet guide vane segment to the core gas turbine engine
(which first outlet guide vane segment has already been coupled to the fan
case assembly) and also coupling a second outlet guide van e assembly to
the fan case assembly, as claimed. See, e.g., Spec. ¶ 21. As discussed supra
with respect to Rejection I, further coupling the core gas turbine engine,
directly or indirectly, to other components of the fan case assembly is not
claimed, notwithstanding Appellant’s evidence that such a further coupling
is well-known in the art.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 24, and dependent claims 25–31 depending therefrom.
The Examiner relies on the same findings relative to the rejection of
independent claims 32 and 39 pursuant to the enablement requirement of 35
U.S.C. § 112(a), and therefore, for essentially the same reasons, we do not
sustain the Examiner’s rejection of independent claims 32 and 39, and
claims 33–38 and 40–43 depending therefrom. Non-Final Act. 5.
Rejection III
The Examiner finds that (i) independent claims 24, 32,3 and 39, and
therefore, all claims 24–43, are indefinite because the limitations “the

3 Although the Examiner’s analysis omits independent claim 32, claim 32
recites “the radially outer diameter of the booster compressor” similar to
independent claims 24 and 39. Appeal Br. 18 (Claims App.).
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radially outer diameter” of the booster compressor lack antecedent basis; (ii)
dependent claims 27 and 36 are indefinite for reciting “a fan frame hub,” in
addition to the recitation of “a fan frame hub” in claims 26 and 35 from
which claims 27 and 36 depend respectively; (iii) claim 32 is indefinite
because the limitations “the radially inner diameter,” “the fan case
assembly,” and “the radially outer diameter” lack antecedent basis; and (iv)
claim 40 is indefinite for reciting “a second outlet guide vane segment,” in
addition to the recitation of “a second outlet guide segment” in claim 39
from which claim 40 depends. Non-Final Act. 7–8.
In the Appeal Brief, Appellant does not present arguments in response
to the Examiner’s rejections under 35 U.S.C. § 112(b). Appeal Br. 1–15; see
also 37 C.F.R. § 41.37(c)(1)(iv) (“The [Appeal Brief] arguments shall
explain why the examiner erred as to each ground of rejection contested by
appellant.”)
The Examiner notes in the Examiner’s Answer that “[t]he 35 USC
112(b) rejections . . . have not been argued by [Appellant].” Ans. 7.
In the Reply Brief, for the first time, Appellant presents new
arguments responsive to the Examiner’s rejections pursuant to 35 U.S.C.
§ 112(b). Although Appellant characterizes Appellant’s arguments in the
Reply Brief as “responsive to arguments raised in the Examiner’s
[A]nswer,” the Examiner merely notes, in the Examiner’s Answer, the lack
of Appellant’s arguments, without adding any substantive analysis—new or
otherwise—to the rejections. Appeal Br. 5–7. Thus, Appellant’s arguments
are waived as untimely, because Appellant’s arguments are not responsive to
any positions newly raised in the Examiner’s Answer, nor does Appellant
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show good cause as to why these new arguments should be considered. See
37 C.F.R.§ 41.41(b)(2).
Accordingly, we summarily sustain the Examiner’s rejection of claims
24–43 under 35 U.S.C. § 112(b) as indefinite.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s) Affirmed Reversed
24–43 112(a)
written
description
24–43
24–43 112(a)
enablement
24–43
24–43 112(b)
indefiniteness
24–43
Overall
Outcome
24–43
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED