UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Mar 12, 2021

2020002956 (P.T.A.B. Mar. 12, 2021)

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.
14/912,187 02/16/2016 Frederick M. Schwarz 75193US02;
67097-2760US1
1902
54549 7590 03/12/2021
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
LEGENDRE, CHRISTOPHER RYAN
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/12/2021 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 FREDERICK M. SCHWARZ and PAUL H. SPIESMAN
Appeal 2020-002956
Application 14/912,187
Technology Center 3700
BEFORE MEREDITH C. PETRAVICK, WILLIAM V. SAINDON, and
ERIC C. JESCHKE, Administrative Patent Judges.
SAINDON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. 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(a). Appellant identifies the real party in interest as United
Technologies Corporation. Appeal Br. 1.
Appeal 2020-002956
Application 14/912,187
2
CLAIMED SUBJECT MATTER
The claims are directed to “a geared turbofan having at least two
compressor rotors and a range of ratios between certain areas in those two
compressor rotors.” Spec. ¶ 2.2 Claim 1, reproduced below, is the sole
independent claim and is illustrative of the claimed subject matter:3
1. A gas turbine engine comprising:
an upstream compressor having an upstream
entrance area leading into a first vane upstream of
the upstream compressor, and a downstream
compressor having an exit area at a leading edge of
an exit vane for said downstream compressor, and
wherein the following ratio applies:
said upstream entrance area divided by said
exit area being greater than or equal to 13.8 and
less than or equal to 15.3.

2 Citations to the Specification refer to the version filed on February 16,
2016, as modified on December 17, 2018.
3 The copy of the claims in the Claims Appendix is incorrect because it does
not include amendments that Appellant proposed in the Response After
Final Action (“Response” or “Resp.”) at pages 2–4, and that the Examiner
thereafter entered in the Advisory Action (mailed September 18, 2018)
(“2018 Advisory Action” or “2018 Advisory Act.”) at page 1. Thus, we use
the version of the claims found in the Response at pages 2–4.
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3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
MacDonald US 3,956,887 May 18, 1976
Seda US 6,732,502 B2 May 11, 2004
Clark US 2010/0172747 A1 July 8, 2010
Kosheleff US 2013/0186060 A1 July 25, 2013
Guzachev4 RU 2251009 C2 Apr. 27, 2005

REJECTIONS
Claims 9, 10, 19, and 20 stand rejected under 35 U.S.C. § 112(b) as
indefinite.
Claims 1–3, 11, 12, and 17–20 stand rejected under 35 U.S.C. § 103
as unpatentable over Clark and Guzachev, and wherein Kosheleff and
MacDonald are cited on an evidentiary basis.
Claims 4–10 and 13–16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Clark, Guzachev, and Seda.
OPINION
The rejection of claims 9, 10, 19, and 20 under 35 U.S.C. § 112(b) as
indefinite.
The Examiner rejects claims 9, 10, 19, and 20 under 35 U.S.C.
§ 112(b) as indefinite. Final Act. 4–5. Appellant presents argument for the
patentability of these claims as a group. Appeal Br. 2; Reply Br. 1. We
select claim 9 as representative, and claims 10, 19, and 20 therefore stand or
fall with claim 9. See 37 C.F.R. § 41.37(c)(1)(iv).

4 We use the machine translation of Guzachev provided in the record.
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Application 14/912,187
4
The test for definiteness under 35 U.S.C. § 112(b) is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986); In re Packard, 751 F.3d 1307, 1313
(Fed. Cir. 2014) (“[C]laims are required to be cast in clear—as opposed to
ambiguous, vague, indefinite—terms. It is the claims that notify the public
of what is within the protections of the patent, and what is not.”). The
primary purpose of the definiteness requirement is to ensure that the claims
are written in such a way that they give notice to the public of the extent of
the legal protection afforded by the patent, so that interested members of the
public can determine whether or not they infringe. All Dental Prodx, LLC v.
Advantage Dental Prods., Inc., 309 F.3d 774, 779–80 (Fed. Cir. 2002);
Packard, 751 F.3d at 1313. In determining whether this standard is met, the
definiteness of the language employed in the claim must be analyzed, not in
a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art. In re Johnson, 558 F.2d 1008,
1015 (CCPA 1977).
Claim 9 is reproduced below, with emphasis:
9. The gas turbine engine as set forth in claim 6,
wherein said gas turbine engine is utilized on a
long range aircraft.
Resp. 3. The Examiner determines that the term “long range” is indefinite
because “‘long range’ is a relative term which renders the claim indefinite
since it is not defined by the claim, the specification does not provide a
standard for ascertaining the requisite degree, and one of ordinary skill in the
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5
art would not be reasonably apprised of the scope of the invention.” Final
Act. 4.
As a comparison, the Examiner points out that the Specification
provides a definition for “short range.” Ans. 3 (citing Spec. ¶ 41); see also
Spec. ¶¶ 41 (“Typically, a short range aircraft may be defined as having a
total flight length of less than 3000 nautical miles.” (emphasis added)), 42
(“[A] short-range aircraft can also be defined as having two passenger
seating areas with a single aisle intermediate the passenger seating areas.
Typically, there would be 200 or less passengers in such a short-range
aircraft. Much smaller numbers would also come within the scope of these
type engines.” (emphasis added) (reference numbers omitted)). By contrast,
the Examiner finds that the term “long range” is not defined anywhere in the
Specification, nor is the term “specifically contrasted against ‘short range’ to
establish an associated range.” Ans. 3–4.
The Examiner also notes that the Specification at paragraphs 43 to 45
discusses the similar phrases of “ultra-long distance” and “longer range.”
2018 Advisory Act. 2 (emphasis added) (citing Spec. ¶¶ 43–45); see also
Spec. ¶¶ 43 (“Engine 2 is for an ultra-long distance aircraft and may have
twin aisles with passenger seating on opposed sides of the twin aisles and
between the twin aisles. Such aircraft may typically fly for any number of
hours and have standard flight lengths longer than ten hours as an example.”
(emphasis added)), 45 (“[T]he longer range aircraft are defined as having
two aisles . . . .” (emphasis added)). However, the Examiner finds that these
passages do not correspond to the claimed term “long range.” 2018
Advisory Act. 2; Ans. 4.
In response, Appellant presents a number of arguments. First,
Appellant argues that the term “long range” is defined in the Specification
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6
because paragraphs 43 through 45 of the Specification set forth a distinction
between “long range” and “short range” aircraft. Appeal Br. 2 (citing Spec.
¶¶ 43–45); Reply Br. 1. Second, Appellant argues that a person of ordinary
skill in the art would recognize that the phrases “ultra-long distance” and
“longer range” from the Specification are used synonymously with the term
“long range” recited in the claim. Appeal Br. 2. Third, Appellant argues
that, “[a]t any rate, even the Examiner agrees that once the dependent claims
10 and 20 add in the number of aisles, the claims are not indefinite.” Id.
Turning to Appellant’s first argument, we are not persuaded that the
Specification sets forth any distinction between “short range” and the
specific phrase “long range” as found in the claim language. The phrase
“short range” appears multiple times in the Specification and, as noted by
the Examiner, is even given an express definition.5 See Spec. ¶¶ 41–42;
Ans. 3. By contrast, the specific phrase “long range” appears only in the
Specification’s Summary of the Invention, which essentially does no more
than reiterate the claim language and thus does not provide any context as to
the meaning of the claims. Compare Spec. ¶¶ 6–26, with Resp. 2–4.
Nowhere else in the Specification is the specific phrase “long range”
discussed or even recited. Thus, by failing to discuss or even recite the
specific phrase “long range” outside of the Summary of the Invention, the
Specification cannot, and indeed does not, discuss how the specific phrase
“long range” is distinct from the phrase “short range.”
Turning to Appellant’s second argument, we are not persuaded that
the phrases “ultra-long distance” and “longer range” would be understood by

5 Indeed, the Examiner did not reject claim 7 for indefiniteness, which has
the exact same claim language as claim 9 other than reciting a “short range
aircraft” instead of a “long range aircraft.” See Final Act. 4–5; Resp. 2–3.
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7
a person having ordinary skill in the art to be synonymous with the term
“long range.” With regards to the phrase “ultra-long distance,” Appellant
admits in the Reply Brief that “[a] worker of skill reading this specification
would recognize that ‘ultra-long distance’ is merely a specie of ‘long
range.’” Reply Br. 1. By being “merely a specie” of the claimed term “long
range,” the phrase “ultra-long distance” therefore may cover a narrower
scope than what is being claimed. Indeed, by adding the modifier “ultra,”
the phrase “long distance” becomes modified to suggest a distance that is
even longer than simply “long distance” or “long range.” Accordingly, the
Specification’s discussion of “ultra-long distance” does not sufficiently
clarify the bounds of the claimed term “long range.”
As for the phrase “longer range,” this phrase likewise does not have
the same meaning as “long range.” The Specification gives an express
definition for “short range” aircraft as being aircraft with a range of “less
than 3000 nautical miles.” Spec. ¶ 41. Thus, if being “short” or “long” were
a binary choice, aircraft having a longer range than “short range” aircraft
might be understood as having a range of 3000 nautical miles or more. But
the presence of the aforementioned “longer” and “ultra-long” distance
categories removes that option, as it introduces the notion that the distance
categorization has potentially many values. For example, no comparable
language in the Specification states that a “longer range” aircraft—despite
having a range that that is greater than “short range” aircraft—necessarily
qualifies as “long range” aircraft. Without such language, a person of
ordinary skill in the art may understand, for example, that some of these
“longer range” aircrafts neither qualify as “short range” or “long range”
aircrafts but as some third category of an aircraft, such as a “medium range”
aircraft (indeed, the Specification already indicates several degrees of range
Appeal 2020-002956
Application 14/912,187
8
by reciting “short,” “longer,” and “ultra-long”). Appellant has not provided
any evidence that a person of ordinary skill in the art would otherwise
understand “long range” to be a range with sufficiently clear bounds.
Indeed, as discussed above, the Specification is devoid of any discussion on
the term “long range,” other than in the Specification’s Summary of the
Invention. Thus, the Specification’s discussion of “longer range” also does
not sufficiently clarify the bounds of the claim term “long range.”
Turning to Appellant’s third argument, we are not persuaded that the
Examiner’s findings with regards to claims 10 and 20 shed sufficient light, if
any, on the scope of the term “long range” recited in claims 9 or 19.6 We
understand Appellant’s argument as referring to the Examiner’s findings
made in the 2018 Advisory Action, in which the Examiner states with
regards to claim 9 that “the Office recommends amending the claim to recite
the feature (e.g., number of aisles) being referred to by ‘long range.’” See
2018 Advisory Act. 2. While dependent claims 10 and 20 do indeed recite
this “number of aisles” feature, see id. at 3–4, the Examiner’s
recommendation in the 2018 Advisory Action is not what Appellant alleges
to be an agreement by the Examiner that, “once the dependent claims 10 and
20 add in the number of aisles, the claims are not indefinite.” See Appeal
Br. 2. Rather, even after reciting this “number of aisles” feature, claims 10
and 20 nevertheless stand rejected by the Examiner “due to dependency” on
claims 9 and 19. See Final Act. 4–5. Thus, even if claim 9 were to be
amended to add in claim 10’s recitation of the “number of aisles” feature,

6 Claim 10 depends on claim 9, and claim 20 depends on claim 19. Resp. 3–
4. Claims 9 and 19 are similarly worded, and claims 10 and 20 are similarly
worded. See id.
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Application 14/912,187
9
claim 9 would still remain rejected due the inclusion of the problematic
“long range” term.
We also note that the Specification explicitly states, “[w]hile the
longer range aircraft are defined as having two aisles, with the shorter range
aircraft having a single aisle, this rule is not universal. As an example, there
are shorter range aircraft having three central seats, and one outer seat on
each side of a pair of aisles.” Spec. ¶ 45 (emphasis added). Thus, according
to the Specification, there exists no necessarily proportional relationship
between the number of aisles in an aircraft and the aircraft’s range. As such,
the fact that dependent claims 10 and 20 additionally recite a “number of
aisles” feature has little to no implications on the term “long range” as
recited in claim 9.
In sum, the record before us does not establish that the term “long
range” is sufficiently definite as required by 35 U.S.C. § 112(b).
Appellant’s mere attorney arguments to the contrary, without supporting
evidence, are unpersuasive to overcome the Examiner’s findings and
reasoning. Consequently, we are not persuaded that the Examiner erred by
rejecting claims 9, 10, 19, and 20 as being indefinite. Accordingly, the
rejection of claims 9, 10, 19, and 20 under 35 U.S.C § 112(b) is sustained.7

7 As another matter, although no issue of definiteness of claim 13 has been
raised in this appeal, we note the following. Claim 13 has been amended to
read “[t]he gas turbine engine as set forth in claim 1, wherein an upstream
turbine for driving a downstream compressor rotor two stages.” Resp. 3
(emphasis added). The phrase “downstream compressor rotor two stages”
appears to be missing one or more words. In the event of further
prosecution, the Examiner and Appellant should consider how to amend the
claim to provide further clarity.
Appeal 2020-002956
Application 14/912,187
10
The rejection of claims 1–3, 11, 12, and 17–20 under 35 U.S.C. § 103 as
unpatentable over Clark, Guzachev, Kosheleff, and MacDonald.
The Examiner rejects claims 1–3, 11, 12, and 17–20 as unpatentable
over Clark and Guzachev, as evidenced by Kosheleff and MacDonald. Final
Act. 5. Claim 1 is reproduced below:
1. A gas turbine engine comprising:
an upstream compressor having an upstream
entrance area leading into a first vane upstream of
the upstream compressor, and a downstream
compressor having an exit area at a leading edge of
an exit vane for said downstream compressor, and
wherein the following ratio applies:
said upstream entrance area divided by said
exit area being greater than or equal to 13.8 and
less than or equal to 15.3.
Resp. 2. The Examiner finds that Clark discloses each element of claim 1
except the limitation requiring “said upstream entrance area divided by said
exit area being greater than or equal to 13.8 and less than or equal to 15.3”
(the “area ratio limitation”), and the fact that Clark discloses one compressor
instead of two. Final Act. 5–6. For the area ratio limitation, the Examiner
finds that it is disclosed by Guzachev, in combination with evidence of the
background knowledge possessed by a person of ordinary skill in the art,
provided in Kosheleff and MacDonald. Id. at 6–7. Appellant only disputes
the Examiner’s finding that the prior art discloses the area ratio limitation.
See Appeal Br. 2–4; Reply Br. 1–2.
As to the area ratio limitation, the Examiner finds that Guzachev
teaches calculating a ratio between the sizes of the entrance and exit areas of
a compressor. Final Act. 6. In particular, the Examiner finds that Guzachev
discloses the individual parameters necessary to calculate both the entrance
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11
area and the exit area of a compressor, and that Guzachev constrains these
individual parameters in a specific way that “results in a reduction . . . of
flowpath area in the downstream direction” to produce a favorable result.
See id. The Examiner starts by highlighting Guzachev’s disclosure that
identifies an “outer diameter of [a] working blade[]” within the compressor,8
which is equal to the outer diameter of the compressor at the location of this
working blade. See id.; see also Guzachev 2, Fig. 2. The compressor
includes multiple working blades that span throughout the length of the
compressor. See Guzachev 2, Fig. 2. Thus, the outer diameter of the “first”
working blade is equal to the outer diameter at the entrance of the
compressor, whereas the outer diameter of the “last” working blade is equal
to the outer diameter at the exit of the compressor. See Final Act. 6;
Guzachev 4, Fig. 2.
The Examiner also highlights Guzachev’s disclosure that identifies the
“heights of airfoil portions…of working blades.” Final Act. 6; see also
Guzachev 3. As the Examiner explains, by simply subtracting this working
blade height from the working blade’s outer diameter, discussed above, the
inner diameter of the working blade, which equals the inner diameter of the
compressor at the location of the working blade, can be calculated. Final
Act. 6; Ans. 5; see also Guzachev 4 (“[T]he first blade [is] formed with an
outer diameter D and a height L from the entrance edge 12 . . . .”), Fig. 2.

8 Guzachev occasionally refers to these working blades as “stages.” See,
e.g., Guzachev 2 (“[T]he outer diameter of the flow passage part is variable
and gradually decreasing from the first stages the compressor from the
entrance side to the middle ones steps, and constant - from the middle to the
last stages . . . .” (emphasis added)).
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Thus, the inner diameters at both the entrance and the exit of the compressor
can be easily found.
The Examiner then notes that the “annular” area of the compressor, or
the air flow path area through the compressor, can be calculated by simply
subtracting the outer area corresponding to the outer diameter of the
compressor with the inner area corresponding to the inner diameter of the
compressor. Final Act. 6; Ans. 5; see also Spec. ¶ 40. Thus, the annular
area at both the entrance and exit of the compressor can be easily calculated,
and the area ratio of the compressor can thereafter be found by simply
dividing one annular area over the other. Final Act. 6; see also Spec. ¶ 40.
In addition to highlighting Guzachev’s teachings toward calculating
the area ratio of the compressor, the Examiner finds that Guzachev also
teaches “that the flow path area, as dictated by the --outer diameter… of
working blades-- and --height of airfoil portions… of working blades--, of a
compressor decreases in the downstream direction.” Ans. 5; Final Act. 6.
Indeed, Guzachev discloses that the outer diameter and working blade height
of the compressor must decrease from the entrance of the compressor to the
exit. Guzachev 2 (“D / d = 1.1-1.25 . . ., where D - the outer diameter of the
first working blade from the side of its input edge; d - constant outer
diameter of the middle and last working blades . . . . [T]he ratio of the
[working blade] heights of the first L and the last l of the compressor
working blades is 4.5-7.5.”), Fig. 2. By decreasing both of these parameters
across the length of the compressor, the area of the compressor likewise
decreases from the entrance to the exit. Ans. 5; Final Act. 6.
Next, the Examiner finds that the area ratio of the compressor is a
“result-effective variable,” or a variable known in the art to achieve a
recognized result. Final Act. 6; see also MPEP § 2144.05(II)(B) (9th ed.
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rev. 10.2019 June 2020). The Examiner relies on Kosheleff as evidence that
varying the area ratio of the compressor is known in the art to affect the
resulting performance of the engine as a whole by affecting “the degree of
compression that is achieved by [the] compressor.” See Ans. 5–6.
According to the Examiner, Kosheleff demonstrates that the “compressor
pressure ratio,” or the degree of compression across the compressor, is
“directly related to [the] area ratio.” Ans. 5–6 (citing Kosheleff ¶ 70); see
also Final Act. 6 (“Kosheleff is cited as evidence that the annular flow area
of a compressor is made to decrease in the downstream direction in order to
account for increasing density resulting from compression of the working
fluid.” (citing Kosheleff ¶ 68)). In addition, Kosheleff demonstrates that the
compressor pressure ratio can be selected “based on desired performance
characteristics of the engine.” Ans. 6. For example, increasing the
compressor pressure ratio results in “more cycle efficiency and still more
power.” Id. (citing Kosheleff ¶ 7). As further support, the Examiner states
that “the purpose of a compressor is self-evident in its name, and the degree
of compression that is achieved by a compressor is determined by the
service performed by the compressed air.” Id. at 6. Thus, the Examiner
finds that a person of ordinary skill in the art would “modify the area ratio of
the compressor, as disclosed by Guzachev, for the purpose of
accommodating an increased pressure / density therethrough that achieves a
desired engine efficiency and/or performance,” thereby establishing that the
area ratio is a result-effective variable. Final Act. 7.
Turning lastly to MacDonald, the Examiner relies on MacDonald to
show that the teachings of Guzachev and Kosheleff can be applied to
compressors having two “section[s]” or stages instead of just one (like
Clark). See Ans. 5. The Examiner states that the teachings of Guzachev and
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Kosheleff can still be applied to such two-section compressors because such
compressors are nonetheless able to be characterized by “a single pressure
ratio” across both sections of the compressor, as taught in MacDonald. Ans.
5; Final Act. 6 (citing MacDonald 3:22–25). As a result, the Examiner finds
that the area ratio across a two-section compressor—i.e., the ratio of the area
at the entrance of the first section of the compressor to the area at the exit of
the second section—can be optimized as taught by Guzachev and Kosheleff
and is thus a result-effective variable within the field of two-section
compressors. Ans. 6; Final Act. 7. As such, the Examiner finds that
discovering the optimal or workable ranges of the area ratio as recited in
claim 1 “involves only routine skill in the art” and would have therefore
been obvious to a person having ordinary skill in the art. Final Act. 6.
In response, Appellant contends that the Examiner failed to
sufficiently establish that the area ratio is recognized as a result-effective
variable and thus failed to present a prima facie case of obviousness.
Appeal Br. 3. In particular, Appellant argues that the Examiner failed to
“point to objective evidence disclosing or suggesting the claimed
relationship.” Id. According to Appellant, “nothing within [Guzachev]
discloses a ratio of areas at the vanes, and nothing within the Kosheleff or
MacDonald reference speak to the ratio of the two claimed areas. Simply,
nothing on this record supports a rejection that the claimed ratio is a result-
effective variable.” Id. at 4.
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). A claimed
range of a particular parameter will be found to be the result of “routine
experimentation” if the parameter is recognized in the art to be a result-
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effective variable, i.e., a variable that achieves a recognized result. MPEP
§ 2144.05(II)(B) (citing In re Antonie, 559 F.2d 618, 620 (CCPA 1977)). In
order to establish that the parameter is a result-effective variable, the
Examiner must explain in sufficient detail “why it would have been routine
optimization to arrive at the claimed invention and why a person of ordinary
skill in the art would have had a reasonable expectation of success to
formulate the claimed range.” Id. (citing In re Stepan, 868 F.3d 1342, 1346
(Fed. Cir. 2017)). Once the parameter is established to be a result-effective
variable, the prima facie case of obviousness is made. Id. The burden then
shifts to Appellant to rebut the prima facie case of obviousness by showing
that, for example, the claimed range is critical, the prior art teaches away
from the claimed range, the claimed parameter is disclosed in a very broad
range in prior art, or the claimed parameter should not have been found to be
a result-effective variable in the first place. Id. at § 2144.05(III).
We are not persuaded by Appellant’s argument that the Examiner
failed to present a prima facie case of obviousness regarding the claimed
range in the area ratio limitation. Specifically, we are not persuaded by
Appellant’s argument that the Examiner failed to point to sufficient evidence
in the references that the area ratio is recognized to be a result-effective
variable. As the Examiner finds, Kosheleff establishes that the “pressure
ratio,” or the degree of compression across the compressor, can be selected
“based on desired performance characteristics of the engine.” Ans. 6 (citing
Kosheleff ¶ 7); see also Kosheleff ¶ 7 (stating that increasing the pressure
ratio across a compressor results in “more cycle efficiency and still more
power” but also “decreased volume flow”). Next, Kosheleff teaches that this
pressure ratio is directly related to the air density across the compressor.
Kosheleff ¶ 70 (“From thermodynamics, P= ρk, where ‘k’, the ratio of
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specific heats, is 1.40 near room temperature.”); see also Ans. 5. Then,
Kosheleff teaches that “the density of the air varies inversely as the area of
the flow vein.” Kosheleff ¶ 67; see also Ans. 5. Thus, decreasing the “area
of the flow vein” across the compressor correspondingly increases the air
density across the compressor, which increases the pressure ratio, which
thereby affects the performance of the gas engine overall. Indeed, as
highlighted by the Examiner, Kosheleff states that “the annulus area must
progressively decrease as the flow proceeds through the compressor because
of the increasing density.” Kosheleff ¶ 68, cited at Final Act. 6. Thus, the
Examiner has provided both specific evidence and a sufficiently detailed
explanation on how the ratio of the area at the entrance of the compressor to
the area at the exit can be modified to achieve a recognized result, thereby
establishing that this area ratio is a result-effective variable.
Lastly, we turn to Appellant’s argument made in the Reply Brief that
specifically addresses dependent claims 2 and 3.9 With respect to these
dependent claims, Appellant argues that “[t]he ratios of claims 2 and 3 are
not discussed at all in [Guzachev].” Reply Br. 2. This argument fails for
two reasons. First, a “naked assertion” that the additional elements of a
dependent claim are not found in the prior art, without more, is insufficient
for us to separately address the patentability of the dependent claim with
respect to 37 C.F.R. § 41.37(c)(1)(iv). In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011). Second, no argument was made in the Appeal Brief that
addresses the patentability of dependent claims 2 or 3 separately from claim
1. See Appeal Br. 2–4. Under our rules, any new argument in the Reply
Brief that was not first raised in the Appeal Brief will not be considered

9 Dependent claims 2 and 3 both depend on claim 1. Resp. 2.
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unless good cause is shown. 37 C.F.R. § 41.41(b)(2). Appellant has not
provided any explanation for good cause, see Reply Br. 2, and thus we will
not consider this new argument.
For the foregoing reasons, we are not persuaded that the Examiner
erred by rejecting claim 1 as unpatentable over Clark and Guzachev, as
evidenced by Kosheleff and MacDonald. The Examiner also rejects claims
2, 3, 11, 12, and 17–20 on the same ground as claim 1. Final Act. 5; Ans. 5.
Appellant presents argument for the patentability of these claims as a group.
Appeal Br. 2–4; Reply Br. 1–2. Thus, claims 2, 3, 11, 12, and 17–20 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, the rejection of
claims 1–3, 11, 12, and 17–20 under 35 U.S.C § 103 is sustained.

The rejection of claims 4–10 and 13–16 under 35 U.S.C. § 103 as
unpatentable over Clark, Guzachev, and Seda.
The Examiner rejects claims 4–10 and 13–16 under 35 U.S.C. § 103
as unpatentable over Clark, Guzachev, and Seda. Final Act. 11. In arguing
for the patentability of these claims, Appellant relies on the same argument
as that which was presented for the patentability of claims 1–3, 11, 12, and
17–20. Appeal Br. 2–4; Reply Br. 1–2. Thus, for the same reasons as
above, the rejection of claims 4–10 and 13–16 under 35 U.S.C. § 103 is
sustained.
CONCLUSION
The Examiner’s rejections are each AFFIRMED.
Appeal 2020-002956
Application 14/912,187
18
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9, 10, 19, 20 112(b) Indefiniteness 9, 10, 19, 20
1–3, 11, 12,
17–20
103 Clark, Guzachev,
Kosheleff,
MacDonald
1–3, 11, 12,
17–20

4–10, 13–16 103 Clark, Guzachev,
Seda
4–10, 13–16
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED