United Technologies CorporationDownload PDFPatent Trials and Appeals BoardFeb 28, 202014818392 - (D) (P.T.A.B. Feb. 28, 2020) Copy Citation 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. 14/818,392 08/05/2015 Robert Russell Mayer 67097-1747PUS2;61306US02 4887 54549 7590 02/28/2020 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER SUNG, GERALD LUTHER ART UNIT PAPER NUMBER 3741 NOTIFICATION DATE DELIVERY MODE 02/28/2020 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT RUSSELL MAYER, GEORGE J. KRAMER, and PAUL W. PALMER ____________ Appeal 2019-003492 Application 14/818,392 Technology Center 3700 ____________ Before ANTON W. FETTING, BRADLEY B. BAYAT, and TARA L. HUTCHINGS, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 from the Examiner’s final rejection claims 1–7, 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. Appeal 2019-003492 Application 14/818,392 2 CLAIMED SUBJECT MATTER Appellant’s “disclosure relates to a gas turbine engine mid turbine frame bearing support.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A gas turbine engine comprising: high and low pressure turbines; a mid-turbine frame arranged axially between the high and low pressure turbines; a bearing operatively supported by a support structure; an inner case secured to the support structure and including a first conical member; and a bearing support to which the bearing is mounted, the bearing support including a second conical member that is secured to the first conical member at a joint, the first and second conical members arranged radially inward of the joint, the joint provided at a plane perpendicular to a rotational axis of the high and low pressure turbines, a first axial side on one side of the plane, and a second axial side on another side of the plane opposite the one side, the first and second conical members are arranged on the first axial side; a fan; a compressor section fluidly connected to the fan, the compressor comprising a high pressure compressor and a low pressure compressor; a combustor fluidly connected to the compressor section; a turbine section fluidly connected to the combustor, the turbine section comprising: a high pressure turbine coupled to the high pressure compressor via a first shaft; a low pressure turbine coupled to the low pressure compressor via a second shaft; a geared architecture interconnects between the second shaft and the fan; and wherein the gas turbine engine is a high bypass geared aircraft engine having a bypass ratio of greater than six (6). Appeal Br. 10 (Claims App.). Appeal 2019-003492 Application 14/818,392 3 REJECTION Claims 1–7 are rejected under 35 U.S.C. § 112 (Pre-AIA), first paragraph, as failing to comply with the enablement requirement. OPINION Enablement Claim 1 recites the limitation “a bypass ratio of greater than six (6),” claims 2, 4, and 5 recite “a pressure ratio that is greater than 5,” and claims 3, 4, 6, and 7 recite “a gear reduction ratio of greater than 2.5:1.” Appeal Br. 10–12 (Claims App.). The Examiner rejects claims 1–7 for failing to comply with the enablement requirement. The Examiner asserts: All three limitations are open ended ranges which approach infinity. A review of the specification shows that the Applicant only nominally discloses the features without disclosing how the bypass ratio is achieved above 6, the pressure ratio above 5, and the gear ratio greater than 2.5:1. Paragraph [0020] states that the bypass ratio may be greater than 10:1 without further explanation and that the gear reduction ratio may be greater than 2.1:1. The claimed scope covers bypass ratios, gear reduction ratios, and pressure ratios approaching infinite and not currently in existence. Final Act. 2–3. According to the Examiner, “the breadth of the claims covers any performance increases in bypass ratio, gear reduction ratios, and pressure ratios of the turbine and therefore is found to be expansive. . . . No known working examples exist in the prior art disclosing the upper bounds of the claimed ranges and the inventor provides no direction.” Id. at 3–4. “Thus, [the Examiner concludes that] the quantity of experimentation Appeal 2019-003492 Application 14/818,392 4 needed to make and use the invention at the upper bounds of the claimed scope is unduly high.” Id. at 4. Alleging error in the rejection, Appellant argues that “the rejection fails to consider the claims in the proper context” because “one of ordinary skill in the art would recognize that each of the claimed quantities has an inherent upper limit based on the practical physical limitations and basic architecture of a bypass turbine engine.” Appeal Br. 4–5 (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed. Cir. 1991)). With respect to bypass ratio, Appellant argues that one would understand that an inherent upper limit exists in view of paragraphs 16, 18, and 19 of Appellant’s disclosure. Id. at 5 (“One would understand from at least these portions of Appellant’s Specification that the basic architecture of a bypass turbine engine requires sufficient airflow to be delivered by the fan section 22 to the core airflow path for combustion to occur and the engine to function.”). With respect to gear reduction ratio, Appellant argues that in light of paragraphs 18, 20, and 43 of the Specification, “[o]ne would understand that the fan must have some speed to deliver sufficient airflow to the core engine so that the engine may operate and for the fan to produce thrust, making an infinitely high gear reduction ratio impractical.” Appeal Br. 6 (“The turbines 46, 54 rotationally drive the respective low speed spool 30 and high speed spool 32 in response to the expansion. The limited combustion products for extraction of energy makes an infinitely high turbine speed impractical.”). With respect to turbine pressure ratio, paragraph [0020] discloses: “Low pressure turbine 46 pressure ratio is pressure measured prior to inlet of low pressure turbine 46 as related to Appeal 2019-003492 Application 14/818,392 5 the pressure at the outlet of the low pressure turbine 46 prior to an exhaust nozzle.” Paragraph [0043] discloses: “The core airflow is compressed by the low pressure compressor 44 then the high pressure compressor 52, mixed and burned with fuel in the combustor 56, then expanded over the high pressure turbine 54 and low pressure turbine 46.” One would understand that the limited combustion products delivered to the low pressure turbine 46 makes an infinitely high turbine pressure ratio impractical. Accordingly, one of ordinary skill in the art would recognize that each of the claimed ratios have an inherent practical and physical upper limit. Id. at 6. Responding to Appellant’s arguments, “the Examiner acknowledges that open ended claims are not inherently improper,” but asserts that “the specification merely nominally recites such limitations without any explanation on what the practical limit is and how to approach that practical limit.” Ans. 5 (“Appellant’s specification provides little to no guidance as to how to make and use an apparatus at the upper bounds of the claimed range.”). According to the Examiner, “though the Appellant’s claims are drawn to mechanical inventions, it does not follow the Appellant is absolved from the requirement to provide an enabling specification.” Id. at 6. Appellant’s arguments are persuasive. 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: Appeal 2019-003492 Application 14/818,392 6 (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. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). 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 reproduces these considerations in the rejection (Final Act. 3) and the Answer (Ans. 3–4), the Examiner does not address the Wands factors in light of Appellant’s disclosure, by performing the requisite weighing. For instance, the Examiner does not explain adequately why an artisan would not recognize that the upper limit for each of the claimed ranges is bounded by known practical structural and physical limits of a gas turbine engine. “The Examiner does not provide any reasoning why a skilled worker would be unable to recognize that each of the claimed ratios has an inherent upper limit based on the practical physical limitations and basic architecture of a bypass turbine engine in view of at least the previously cited portions of Appellant’s disclosure.” Reply Br. 2. [T]he Examiner does not dispute that a skilled worker would understand that the basic architecture of a gas turbine engine limits each of the claims ratios, including the following: (a) sufficient airflow needs to be delivered by the fan section to the core airflow path for combustion to occur and the engine to function; (b) the fan blades and the flow paths must fit within the surrounding structure; (c) the fan must rotate with at least Appeal 2019-003492 Application 14/818,392 7 some speed to deliver sufficient core airflow into the bypass and core flow paths for compression to occur and for the engine to produce thrust; and (d) the limited combustion products delivered to the turbine for extraction of energy limits turbine speeds[.] Id. In fact, as Appellant points out, “the Examiner concedes that towards the bottom of the ratio, e.g. bypass ratios of 10, such a disclosure would likely be appropriate and such a ratio would likely be adequately enabled by the specification.” Reply Br. 3 (quoting Final Act. 6); see also Appeal Br. 5. Yet, the Examiner explains that “these claimed ratios extend from the lower bound to the upper bound which may include bypass ratios of 100, 1000, 10000, etc.” Final Act. 6. To the extent that this determination appears to relate to the breadth of the claims, we recognize that the limitations at issue here are broad in that they do not expressly recite an upper boundary for the recited bypass ratio, gear reduction ratio, and turbine pressure ratio ranges. However, the Examiner has not adequately explained how the breadth of these limitations would relate to undue experimentation in the context of Appellant’s invention. The Examiner concluded that the claimed subject matter would require undue experimentation because the Specification does not provide “what the practical limit is and how to approach that practical limit” (Ans. 5), but did not articulate any findings or analysis to show that a person of ordinary skill in the art would have been unable to make and use the claimed invention without undue experimentation, given the basic architecture and confines of a gas turbine engine. We agree with Appellant that, Appeal 2019-003492 Application 14/818,392 8 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 with Appellant that infinity is not a practical limitation for the recited features. Accordingly, we do not sustain the rejection of claims 1–7 as failing to comply with the enablement requirement. CONCLUSION The decision to reject claims 1–7 is reversed. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–7 112, first paragraph Enablement 1–7 REVERSED Copy with citationCopy as parenthetical citation