United Technologies Corporation

Patent Trials and Appeals Board

Jul 22, 2020

14860604 - (D) (P.T.A.B. Jul. 22, 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.
14/860,604 09/21/2015 Carey Clum 81973US01 (U420015US) 1008
135291 7590 07/22/2020
Cantor Colburn LLP - Pratt & Whitney
20 Church Street
22 Floor
Hartford, CT 06103
EXAMINER
BUI, DUNG H
ART UNIT PAPER NUMBER
1773
NOTIFICATION DATE DELIVERY MODE
07/22/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte CAREY CLUM and CHRISTOPHER W. ROBAK
____________
Appeal 2019-004923
Application 14/860,604
Technology Center 1700
____________
Before MONTÉ T. SQUIRE, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 4–8, and 11–18 of Application
14/860,604.3 We have jurisdiction under 35 U.S.C. § 6(b).

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
14/860,604 filed Sept. 21, 2015; the Final Office Action dated Sept. 26,
2018 (“Final Act.”); the Advisory Action dated Dec. 6, 2018 (“Adv. Act.”);
the Appeal Brief filed Feb. 26, 2019 (“Appeal Br.”); the Examiner’s Answer
dated Apr. 8, 2019 (“Ans.”); and the Reply Brief filed June 7, 2019 (“Reply
Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as United
Technologies Corporation. Appeal Br. 2.
3 Claims 2, 3, 9, 10, and 19 were canceled on Sept. 6, 2018.
Appeal 2019-004923
Application 14/860,604
2
For the reasons set forth below, we REVERSE.
STATEMENT OF THE CASE
The subject matter of the invention relates to apparatuses comprising
particulate collection devices. Spec. ¶ 4. According to the Specification, it
is desirable to remove particulates in the air or gas path of a gas turbine
engine. Spec. ¶ 3. These particulates can reduce the life of parts in service
by erosion and chemical-mechanical degradation. Spec. ¶ 2.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A cooling system for components of a gas turbine engine,
the cooling system comprising:
a particulate collection device, the particulate collection
device including:
a first member of the cooling system, the first member
having a first orifice located therein, the first orifice being
fluidly coupled to the cooling system of the gas turbine engine;
an inlet for directing air towards the first member; and
a second member having a second orifice located therein,
the second orifice being aligned with the first orifice, wherein
the second member and the second orifice are spaced from the
first member and the first orifice by a first distance, the first
distance and a size of the first orifice and a size of the second
orifice concentrate particles of a particular size into the second
orifice via aerodynamic lensing, wherein the size of the second
orifice is smaller than the size of the first orifice;
a collection chamber coupled to the second member such
that the second orifice is fluidly coupled to the collection
chamber; and
wherein the cooling system is located within the engine
and cools components of the engine proximate to a combustor
of the engine.
Appeal 2019-004923
Application 14/860,604
3
REFERENCE
The Examiner relies on U.S. Patent No. 3,483,676 to Sargisson, issued
Dec. 16, 1969 in rejecting the claims. Final Act. 6.
REJECTIONS4
The Examiner maintains the rejection of claims 1, 4–6, and 12–18
under 35 U.S.C. § 102(a)(1) as anticipated by Sargisson, and the rejection of
claims 7, 8, and 11 as obvious over Sargisson. Final Act. 6–10.
DISCUSSION
Our decision in this case turns on the Examiner’s interpretation of the
claim term “engine.” The claims require that “the cooling system is located
within the engine,” with “the engine” referring to the “gas turbine engine”
recited in the preamble. See Appeal Br. 22 (Claims Appx). The
Specification supports that the engine is a gas turbine engine. See Spec.
¶¶ 1–3, 5. Appellant challenges the Examiner’s interpretation. Appeal
Br. 12.
In the Advisory Action, the Examiner defines “engine” as “a
mechanical tool,” citing a definition from the Merriam-Webster Dictionary.5
Adv. Act. 2. Based on that definition, the Examiner finds that an
“‘arbitrary’ engine ‘cover’” is part of the engine of the claims. Id. at 2, 5.
Using this interpretation, the Examiner finds that Sargisson discloses a

4 In the Answer the Examiner withdrew the rejections of claim 1 under
35 U.S.C. § 112(a) as lacking written description, and of claims 1 and 12
under 35 U.S.C. § 112(b) as indefinite. Ans. 3.
5 https://www.merriam-webster.com/dictionary/engine.
Appeal 2019-004923
Application 14/860,604
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cooling system located within the gas turbine engine, illustrating the finding
with the annotated version of Sargisson’s Figure 1 reproduced below:

Sargisson’s Figure 1 is a side view of a helicopter. Sargisson col. 2,
ll. 25–26. A comparison of the original figure and the Examiner’s annotated
version shows that the Examiner drew in an oblong encircling the structures
identified by Sargisson as engine “E” and cowl “14.” Compare Adv. Act. 5
with Sargisson Fig. 1.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the specification, as it would have been interpreted
by one of ordinary skill in the art at the time of the invention. Id.; see also
In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997) (holding that during
prosecution claim terms are given “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.”).
The Examiner’s interpretation of “engine” as a mechanical tool that
includes the engine cover as part of the mechanical tool is inconsistent with
Appeal 2019-004923
Application 14/860,604
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the plain meaning of engine and how one or ordinary skill in the art would
have understood the term in light of the Specification. See In re Baker
Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a
construction that is “beyond that which was reasonable in light of the totality
of the written description”). “The correct inquiry in giving a claim term its
broadest reasonable interpretation in light of the specification is not whether
the specification proscribes or precludes some broad reading of the claim
term adopted by the examiner.” In re Smith Int’l, Inc., 871 F.3d 1375,
13882–83 (Fed. Cir. 2017). Nor is it simply an interpretation that is not
inconsistent with the specification. Id. It is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is consistent with the specification.
Id.
Other dictionary definitions of “engine,” including other definitions in
the Merriam-Webster Dictionary, support that one of ordinary skill in the art
reading the Specification would not have interpreted the engine in the claims
as including an arbitrary cover: “a machine for converting any of various
forms of energy into mechanical force and motion”6; “a machine for
converting thermal energy into mechanical energy or power to produce force
and motion”7; “a machine with moving parts that converts power into
motion”8. The Examiner’s interpretation is so broad as to suggest that a car
body is part of a car engine, or even that tool bag is part of a wrench.
However, one of ordinary skill in the art would have understood that an

6 https://www.merriam-webster.com/dictionary/engine
7 https://www.dictionary.com/browse/engine#
8 Oxford English Dictionary, “engine.”
Appeal 2019-004923
Application 14/860,604
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external covering of an engine does not convert one form of energy into
another.
In the Answer, the Examiner finds that the cowl of Sargisson is an
associated part of the engine. Ans. 3. The Examiner finds that the
particulate collection device is located in the inner wall of the cowl, and,
therefore, within the engine. Id.
A reference must disclose, with sufficient specificity or clearly and
unequivocally, every element of the claimed invention arranged as recited in
the claim to be anticipatory. Karsten Mfg. Corp. v. Cleveland Golf Co., 242
F.3d 1376, 1383 (Fed. Cir. 2001); see also Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (to anticipate, the prior art
reference must not only disclose all elements of the claim within the four
corners of the document, but must also disclose those elements “arranged as
in the claim”) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1548 (Fed. Cir. 1983).
Sargisson Figures 2 and 5 demonstrate that the cowl is separate and
distinct from the engine:

Appeal 2019-004923
Application 14/860,604
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Sargisson Figure 2 is an enlarged elevation, with portions broken
away, of a cowl defining the inlet for air entering a gas turbine engine used
in powering a helicopter. Sargisson col. 2, ll. 27–29. Figure 2 shows the air
inlet 16 to a gas turbine engine is defined by cowl 14 extending from the
fuselage of a helicopter in advance of the actual engine inlet 16. Id. col. 2,
ll. 44–47. A plurality of cyclonic air separators 28 mounted on inner and
outer panels 24, 26 separate dirt and air. Id. col. 2, ll. 63–71. Sargisson
Figure 5 is a section taken through cowl 14, illustrating a front frame 18 and
a rear frame 20 of cowl 14, as well as air inlet 16 in front of the actual
engine. Id. col. 2, ll. 44–51.
Appellant shows reversible error by the Examiner when finding that
Sargisson discloses a cooling system located within the engine. See Appeal
Br. 10–12. One of ordinary skill in the art would not have considered
Sargisson’s cowl to be part of the engine in light of Sargisson’s
unambiguous description of the cowl as separate from the engine.
Therefore, Sargisson fails to disclose “wherein the cooling system is located
within the engine,” and does not anticipate independent claims 1 or 12, or
their dependent claims.
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Application 14/860,604
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In the obviousness rejection of claims 7, 8, and 11, the Examiner
provides no additional reasoning in relation to the cooling system being
located within the engine. See Final Act. 9–10. Therefore, the Examiner
fails to meet the burden of establishing prima facie obviousness of these
claims. See In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (citing In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988). Given the overly broad construction
of “engine,” upon which the rejection is based, the Examiner fails to
establish that the combined references teach all of the claimed limitations.
We do not sustain the rejection of claims 1, 4–6, and 12–18 as
anticipated by Sargisson. We also do not sustain the rejection of claims 7, 8,
and 11 as obvious over Sargisson.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–6,
12–18 102(a)(1)
Sargisson 1, 4–6, 12–18
7, 8, 11 103 Sargisson 7, 8, 11
Overall
Outcome
1, 4–8, 11–18
REVERSED