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Patent Trials and Appeals Board

Dec 2, 2019

15674576 - (D) (P.T.A.B. Dec. 2, 2019)

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.
15/674,576 08/11/2017 Richard M. Marshall 49405US03;
67097-717 PUS3
8712
54549 7590 12/02/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
KIM, CRAIG SANG
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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 RICHARD M. MARSHALL
____________

Appeal 2019-003502
Application 15/674,576
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Richard M. Marshall (Appellant)1 seeks our review under 35 U.S.C.
§ 134 from the Examiner’s final rejection claims 1–30, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C. §
6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies “United Technologies Corporation” as the
real party in interest. Appeal Br. 1.
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THE INVENTION
Appellant’s “invention relates to gas turbine engines and, more
particularly, to a gas turbine engine having a variable fan nozzle integrated
with a thrust reverser of the gas turbine engine.” Spec. ¶ 2.
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A gas turbine engine comprising:
a fan nacelle that extends circumferentially about a fan;
a bypass ratio of greater than 10;
a low pressure compressor and a high pressure
compressor;
a gear train driving the fan, the gear train having a gear
reduction ratio of greater than 2.5;
a combustion section in communication with the low
pressure compressor and the high pressure compressor;
a low pressure turbine and a high pressure turbine, the
low pressure turbine having a pressure ratio of greater than 5,
with the low pressure turbine and high pressure turbine coupled
for rotation with respective spools to rotationally drive the low
pressure compressor, the high pressure compressor and the gear
train, and the fan driven through the gear train;
at least one integrated mechanism coupled to the fan
nacelle, the at least one integrated mechanism including a
variable fan nozzle and a thrust reverser, the thrust reverser and
the variable fan nozzle having a common part;
at least one actuator coupled to the at least one integrated
mechanism; and
a controller that communicates with the at least one
actuator in operation to selectively move the at least one
integrated mechanism.

Appeal Br. 12 (Claims App.).

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THE REJECTIONS2
Claims 1–30 are rejected under 35 U.S.C. § 112 (Pre-AIA), first
paragraph, as failing to comply with the enablement requirement.
Claims 1–30 are rejected under 35 U.S.C. § 112 (Pre-AIA), first
paragraph, as failing to comply with the written description requirement.

OPINION
Enablement
Independent claim 1 recites the limitations: (1) “a bypass ratio of
greater than 10”; (2) “the gear train having a gear reduction ratio of greater
than 2.5”; (3) “the low pressure turbine having a pressure ratio of greater
than 5.” Appeal Br. 12 (Claims App.). The Examiner determines that
because the range of each of these recited ratios do not have an upper
boundary, (1) “[t]he disclosure as originally filed does not enable such large
bypass ratios . . . ranging from 11 to 15, 25, 50, 100, . . . 250 and greater”;
(2) “[t]he disclosure as originally filed does not enable such large gear
reduction ratios . . . ranging from 2.6 to 25, 50, 100 . . . 2000 and greater”;
and (3) “[t]he disclosure as originally filed does not enable such large low
pressure turbine pressure ratios . . . ranging from 5 to 10, 50, 100, 500 . . .
5000 and greater.” Final Action 8–9.
Alleging error in the rejection, Appellant argues that the Examiner has
failed to establish “a prima facie case under the enablement requirement . . .
[because o]pen-ended claims are not inherently improper; as for all claims

2 “35 USC 112(b) rejections to claims 1-30 have been withdrawn. 35 USC
103(a) rejections to claims 1, 10, 11, 17, 23, 25, and 26 have been
withdrawn.” Answer 3.
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their appropriateness depends on the particular facts of the invention, the
disclosure, and the prior art. They may be supported if there is an inherent,
albeit not precisely known, upper limit and the specification enables one of
skill in the art to approach that limit.” Appeal Br. 4–5 (citing Scripps Clinic
& Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1572 (Fed. Cir.
1991)). Appellant contends that “the Examiner’s enablement analysis
focuses on an incorrect and irrelevant range (i.e., between the claimed lower
limit and an infinite upper limit). . . . Under the proper analysis, one would
recognize that each of the claimed ratios have an inherent upper limit based
on the practical physical limitations and basic architecture of a bypass
turbine engine.” Id. at 5. According to Appellant:
With respect to bypass ratios, one would understand that
an inherent upper limit exists in view of Appellant’s disclosure.
For example, paragraphs [0036, 0039-0040] and Figure 1 of
Appellant’s Specification teach that at least some airflow must
be communicated from the fan 14 into the engine core to be
compressed by the compressors 16a, 16b, mixed with fuel in
the combustion section 18, and expanded across the turbines
20a, 20b to drive the compressors 16a, 16b and fan 14. Further,
paragraph [0038] and Figure 1 teach that a size of the fan
bypass passage 32 is constrained by nacelle 28: “An outer
housing, nacelle 28, (also commonly referred to as a fan
nacelle) extends circumferentially about the fan 14. A fan
bypass passage 32 extends between the nacelle 28 and an inner
housing, inner cowl 34, which generally surrounds the
compressors 16a, 16b and turbines 20a, 20b.” A skilled worker
would understand that the fan bypass passage 32 must fit within
the nacelle 28.
. . .
Regarding gear reduction ratios, paragraphs [0036-0037]
and Figure 1 teach that rotor 22 drives the fan 14 through gear
train 24. Paragraph [0036] discloses: “The turbines 20a and 20b
are coupled for rotation with, respectively, rotors 22 and 24
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(e.g., spools) to rotationally drive the compressors 16a, 16b and
the fan 14 in response to the expansion. In this example, the
rotor 22 also drives the fan 14 through a gear train 24.”
Paragraph [0037] discloses: “The gear train 24 is an epicycle
gear train, for example, a star gear train, providing a gear
reduction ratio of greater than 2.5.” Further, paragraphs [0039-
0040] teach that the fan 14 must rotate with at least some speed
to deliver sufficient core airflow into the core flow path C for
compression by the compressors 16a, 16b so that the engine can
operate, and sufficient bypass airflow into the bypass flow D
path so that the engine can produce thrust, making an infinitely
high gear reduction ratio impractical.
. . .
Regarding turbine pressure ratios, paragraph [0037]
discloses: “The low pressure turbine 20a has a pressure ratio
that is greater than 5, in one example.” Figure 1 discloses
turbine 20a being downstream of turbine 20b. Paragraph [0036]
discloses that “air compressed in the compressors 16a, 16b is
mixed with fuel that is burned in the combustion section 18 and
expanded in the turbines 20a and 20b. The turbines 20a and 20b
are coupled for rotation with, respectively, rotors 22 and 24
(e.g., spools) to rotationally drive the compressors 16a, 16b and
the fan 14 in response to the expansion.” One would understand
that the limited combustion products delivered to the low
pressure turbine 20a makes an infinitely high turbine pressure
ratio impractical.

Id. at 5–7.
In response to Appellant’s arguments, the Examiner asserts that
Appellant has “failed to properly address the second prong of Scripps two
prong test of enablement of open-ended claims.” Answer 3 (citing Andersen
Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1376–77 (Fed. Cir. 2007)).
According to the Examiner:
So the first prong of Scripps legal test was #1 - there is an
inherent, albeit not precisely known, upper limit and the second
prong of Scripps legal test was #2 - the specification enables
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one of skill in the art to approach that limit. Appellant’s
independent claims fail the second prong of Scripps two prong
test because the specification fails to enable one of skill in the
art to approach the claimed infinite limits. The specification, as
originally filed, does not enable one of skill in the art to
approach the claimed infinite limits because the specification,
in Paragraphs [0036, 0039-0040], merely repeats the claim
language without describing any details of the structure(s)
required to achieve the claimed infinite limits. The structure
outlined in the specification is standard gas turbine structure
and well known in the art.
. . .
Appellant’s Specification failed to recite any physical gas
turbine engine dimension, e.g., weight, length, diameter,
maximum thrust, etcetera, that would have placed physical
limits on Appellant’s claimed gas turbine engine. Similarly,
Appellant’s Specification failed to recite any aircraft physical
dimension, e.g., length, wingspan, ground clearance, required
maximum thrust, etc., that would have placed physical limits on
Appellant’s claimed gas turbine engine.
Id. at 3–5.
We are persuaded by Appellant’s arguments.
In support of the contention that the recited claim limitations are not
bounded at their upper limit and therefore include ratios with infinite upper
limits, the Examiner cites Anderson Corp., which relied upon Scripps as
setting forth a test for open-ended claims. See supra. However, Scripps set
forth no such test. Rather, Scripps stands for the proposition that
[o]pen-ended claims are not inherently improper; as for all
claims their appropriateness depends on the particular facts of
the invention, the disclosure, and the prior art. They may be
supported if there is an inherent, albeit not precisely known,
upper limit and the specification enables one of skill in the art
to approach that limit.

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Scripps, 927 F.2d at 1572 (citing In re Fisher, 427 F.2d 833 (CCPA 1970)).
The standard for determining whether the specification meets the
enablement requirement was cast in the Supreme Court decision of Minerals
Separation v. Hyde, 242 U.S. 261, 270 (1916), which presented the question:
is the experimentation needed to practice the invention undue or
unreasonable? That standard is still the one to be applied. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988).
Determining enablement is a question of law based on underlying
factual findings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). The
determination that “undue experimentation” would have been needed to
make and use the claimed invention is not a single, simple factual
determination. Rather, it is a conclusion that may be reached by weighing
relevant factual considerations including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Wands, 858 F.2d at 737. The initial burden is on the Examiner to set forth
“a reasonable explanation” of why the Examiner believes a person of
ordinary skill in the art, given what the Specification discloses, would be
unable to practice the invention without “undue experimentation.” See In re
Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993).
Although the Examiner lists many of these considerations in the body
of the rejection (see Final Act. 12–14), the rejection fails to address the
Wands factors in light of Appellant’s disclosure, by performing the requisite
weighing. For instance, this is demonstrated by the Examiner’s
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contradicting statements in the Answer. As reproduced above, the Examiner
initially asserts that “[t]he structure outlined in the specification is [a]
standard gas turbine structure and well known in the art” (Answer 4), which
supports Appellant’s position. Then, in support of the position that the
claimed ratios do not have an inherent upper limit, the Examiner asserts:
Appellant’s Specification failed to recite any physical gas
turbine engine dimension, e.g., weight, length, diameter,
maximum thrust, etcetera, that would have placed physical
limits on Appellant’s claimed gas turbine engine. Similarly,
Appellant’s Specification failed to recite any aircraft physical
dimension, e.g., length, wingspan, ground clearance, required
maximum thrust, etc., that would have placed physical limits on
Appellant’s claimed gas turbine engine.
Answer 5. The Examiner’s contradictory position reveals a fundamental
flaw in weighing the relevant factual considerations under Wands, and, thus,
fails to set forth a prima facie case of non-enablement. Furthermore, we
agree with Appellant that, the physical and structural limitations of a gas
turbine engine construction necessarily impose a maximum bound, for
example, on the bypass ratio that can be achieved. We agree “that there are
definite physical and practical limits to the scope of the claims that are
understood by those skilled in the art. Infinity is not a practical limitation
for the recited features.” Appeal Br. 8.
Accordingly, we do not sustain the rejection of claims 1–30 as failing
to comply with the enablement requirement.

Written Description Requirement
We reverse the rejection under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement because the
Examiner contends that the recitation of gear reduction ratios, bypass ratios
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and turbine pressure ratios having no explicit upper limit are unsupported by
Appellant’s Specification and Drawings. See Final Act. 2–8. To establish a
prima facie case under the written description requirement, “[t]he
fundamental factual inquiry is whether the specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed.” MPEP
§ 2163 (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
Cir. 1991)). As Appellant points out, “[t]he Examiner does not dispute that
the Specification as filed discloses the claimed numerical ranges (see Final
Act. at pp. 2–3 and Response dated 1/18/2018 at p. 9). Nor does the rejection
contend that Appellant lacked possession of quantities within the claimed
numerical ranges.” Appeal Br. 10. As such, we agree that the Examiner
erred in rejecting claims 1–30 as failing to comply with the written
description requirement.
CONCLUSION
The decision to reject claims 1–30 is reversed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–30 112, ¶ 1 Enablement 1–30
1–30 112, ¶ 1 Written
description
1–30
Overall Outcome 1–30

REVERSED