Ex Parte Kupratis et al

Patent Trial and Appeal Board

Apr 6, 2018

14177372 (P.T.A.B. Apr. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/177,372 02/11/2014 Daniel Bernard Kupratis
54549 7590 04/10/2018
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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
ATTORNEY DOCKET NO.
PA30135AB;
67097-2791PUS1
CONFIRMATION NO.
8225
EXAMINER
SUNG, GERALD LUTHER
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
04/10/2018 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 DANIEL BERNARD KUPRA TIS
and FREDERICK M. SCHWARZ
Appeal2017-003587
Application 14/177,372
Technology Center 3700
Before JOHN C. KERINS, KEN B. BARRETT, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 5-8, 15-25, 27, and 29-32. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 United Technologies Corporation is the Applicant pursuant to 37 C.F.R.
§ l .42(a) and identified in the Appeal Brief as the real party in interest.
Appeal Br. 1.
2 The Office Action Summary lists claims 1, 2, and 5-32 as rejected. Final
Act. 1. However, there are no rejections of claims 9-14, 26, and 28 set forth
in the Final Action. See id. passim.
Appeal2017-003587
Application 14/177,372
THE CLAIMED SUBJECT MATTER
Appellants' invention "relates to a core arrangement for a gas turbine
engine." Spec. i-f 2. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A gas turbine engine comprising:
a fan section;
a compressor section, including at least a first compressor
section and a second compressor section;
a turbine section including at least one turbine to drive said
second compressor section and a fan drive turbine to drive at
least a gear arrangement to drive said fan section; and
a power ratio provided by the combination of said first
compressor section and said second compressor section, with
said power ratio being provided by a first power input to said first
compressor section and a second power input to said second
compressor section, said power ratio being equal to, or greater
than, 1.0 and less than, or equal to, 1.4.
REJECTIONS
1) Claims 5-8, 15-20, 23-25, 27, and 29-32 are rejected under 35
U.S.C. § 112(b) as being indefinite.
2) Claims 1, 2, and 21 are rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Coplin (US 4,827,712 issued May 9, 1989).
3) Claims 1, 2, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Coplin and Adamson (US 4,251,987, issued Feb.
24, 1981).
4) Claims 16 and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Coplin and Taylor (US 2005/0241292 Al,
published Nov. 3, 2005) or alternatively over Coplin, Adamson,
and Taylor.
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Application 14/177,372
5) Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over
Coplin and Phillips (US 8,257,024 Bl, issued Sept. 4, 2012) or
alternatively over Coplin, Adamson, and Phillips.
6) Claim 23 is rejected under 35 U.S.C. § 103 as unpatentable over
Coplin and Taylor or alternatively over Coplin, Adamson, Taylor,
and Johnson (US 5,079, 916, issued Jan. 14, 1992).
7) Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over
Coplin, Taylor, and Marshall (WO 2008/045072 Al, published
April 17, 2008) or alternatively over Coplin, Adamson, Taylor, and
Marshall.
DISCUSSION
Rejection 1
The Examiner finds that a number of claim limitations including, inter
alia, "at least two turbine stages" in claim 5, "bypass ratio ... equal to or
greater than 1 O" in claim 6, etc. "are not subject to any upper bound ranges."
Final Act. 2-3. The Examiner determines that the claims subject to this
rejection are indefinite because "[ w ]hile these numbers are bounded by
current practical limits, these limits are subject to the state of the art and
therefore are moving with advances in the state of the art ... and [are] not
fixed by an upper bound." Id. at 3.
Appellants first contend that "numerical ranges without an upper
bound" are permissible and not indefinite per se. Appeal Br. 4 (citing In re
Fisher, 427 F.2d 833 (CCPA 1970) and Exxon Research and Eng'g Co. v.
US., 265 F.3d 1371 (Fed. Cir. 2001), abrogated on other grounds, Nautilus,
Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014)). Appellants next
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Application 14/177,372
contend that one of ordinary skill in the art "would understand [that] there
are some practical physical limits for a gas turbine engine" and "[ t ]he
rejection does not set forth any objective evidence to rebut these practical
physical limitations." Id. at 5---6. In support of this contention, Appellant
provides technical reasoning supporting its contention that one of ordinary
skill in the art would understand the practical upper limits of each of the
claimed ranges. Id. Appellants next contend that the Examiner's position
that the practical limitations are subject to change in the future renders the
claims indefinite is erroneous because the standard is "whether one of
ordinary skill in the art would understand what is claimed, in light of the
specification." Id. at 6 (citing MPEP § 2173.02). In the Answer, the
Examiner does not address Appellants' reasoning in support of the assertion
that one of ordinary skill in the art would understand the practical upper
limits of the claimed ranges but asserts that Appellants do not state the
alleged practical limits of the claims and even if "the claims were subject to
limits at the time of filing, an ordinary skilled worker would not be apprised
of what those limits are." Ans. 4. For the following reasons, we do not
sustain this rejection.
"[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains
words or phrases whose meaning is unclear."' Ex parte McAward, No. 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751F.3d1307, 1310, 1314 (Fed. Cir. 2014)). The
breadth of a claim, however, is not to be equated with indefiniteness. See
e.g., In re Miller, 441F.2d689, 693 (CCPA 1971).
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Application 14/177,372
The Examiner does not dispute Appellants' assertion that one of
ordinary skill in the art would understand that the claimed ranges are
bounded by current practical limits. See Final Act. 3. Further, the Examiner
does not persuasively dispute any of Appellants' explanations of the
practical upper limits of the claimed ranges. See Appeal Br. 5-6; Ans. 4.
From this, we understand the Examiner to be relying on a per se rule of
indefiniteness for a range claimed with no specific upper bound. However,
the Federal Circuit, in In re Fisher, determined that a limitation reciting, in
part, "at least 1 International Unit of ACTH per milligram," was not
indefinite. 427 F.2d 833 at 837-38. Further, in Exxon Research, 265 F.3d
at 1382, abrogated on other grounds, 134 S. Ct. at 2120, the Federal Circuit
noted that "[a] claim ... is not made unclear simply because an upper
boundary is not specified." Nonetheless, even if the practical limits of any
of the claimed ranges change in the future, the Examiner cites no authority
that this possibility renders the claimed ranges indefinite. In that regard, the
ordinary meaning of a claim term at the time of the invention controls. SAS
Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1347 (Fed. Cir.
2016) ("Claim construction seeks to ascribe the meaning to claim terms as a
person of ordinary skill in the art at the time of invention would have
understood them."). Although the ranges cited by the Examiner may be
broadly claimed, the Examiner does not persuade us that the claim language
is unclear and we do not sustain the rejection.
Rejection 2
The Examiner finds that Coplin anticipates claims 1, 2, and 21. Final
Act. 3--4. In particular, the Examiner finds that Coplin discloses "a
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Application 14/177,372
substantially identical structure ... as disclosed in the Applicant's
specification at figure 1. Because the structure is substantially identical, the
structure of Coplin is presumed to be capable of achieving the claimed
power ratio." Id. at 4.
Appellants contend that Coplin does not inherently disclose the
claimed power ratio. Appeal Br. 7-9. Appellants argue that "[t]he
Examiner appears to assert that the engine of Coplin has some power ratio
defined by compressors 96, 14 ... [b Jut that is legally insufficient, because
the rejection does not point to any particular power ratio in Coplin or any
quantities to determine any such power ratio." Id.at 8. Appellants argue that
the Examiner has not met the burden "to show that the claimed power ratio,
within the claimed numerical range, is 'necessarily present"' in Coplin's gas
turbine engine even if the general structural limitations are present. Id.
The Examiner responds that the recited power ratio is a functional
limitation "where the Examiner's position is that if a prior art apparatus is
capable of achieving the claimed power ratio at any point during operation,
the prior art apparatus would anticipate the claimed power ratio." Ans. 6-7.
Further, the Examiner asserts that Coplin "does not need to expressly state
that the engine operates at the claimed power ratio so long as the claimed
power ratio is achievable with the prior art apparatus." Id.at 7. For the
following reasons, we do not sustain this rejection.
The Examiner's characterization of this recitation as "functional" is
not necessarily incorrect. However, the power ratio, as recited in claim 1,
results from the power input to the first compressor section and the second
compressor section provided by the recited turbine section. While we
appreciate the Examiner's statement that Coplin anticipates claim 1 if its
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apparatus "is capable of achieving the claimed power ratio at any point
during operation," the Examiner does not direct us to any disclosure in
Coplin or provide persuasive technical reasoning to support an inference that
Coplin's disclosed gas turbine engine is capable of achieving the claimed
"power ratio." Ans. 6-7; Final Act. 3--4. Further, the Examiner does not
adequately explain at which point "during operation" Coplin's gas turbine
engine is capable of achieving the claimed power ratio. While it may be
possible that Coplin's gas turbine engine is capable of achieving the claimed
power ratio at some point during operation, in the absence of evidence or
persuasive technical reasoning to support this assertion, such a possibility is
not sufficient for us to sustain the rejection of claims 1, 2, and 21 as
anticipated by Coplin. See In re Oelrich, 666 F.2d 578, 581(CCPA1981)
("Inherency ... may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is
not sufficient.")( citations omitted).
Rejection 3
The Examiner finds that Adamson teaches "power extraction and
rotational speed relationships may be modulated to the power consuming
devices." Final Act. 5 (citing Adamson, 2:13-24). The Examiner further
finds that "for any particular operating condition where the total turbine
power is known, the power ratio between fan and compressor can be varied
depending upon the setting of variable compressor stators ... The variable
power ratio allows for control of the gas turbine during various operational
conditions." Id. The Examiner concludes it would have been obvious to one
of ordinary skill in the art "to provide torque and speed varying devices, in
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the apparatus of Coplin, as taught by Adamson" with the result that "Coplin
would be able to vary the power ratio supplied to each power consuming
device, i.e. the first and second compressor, to achieve the power ratio of 1.0
to 1.4." Id. at 6. The Examiner further states that the structure resulting from
the combination of Coplin and Adamson "would be capable of achieving the
claimed power ratio at some point during the operation." Id. at 11.
Appellants contend that the Examiner's combination of Coplin and
Adamson would be unpredictable. Appeal Br. 10. Appellants argue that
Adamson discloses a single engine compressor and the rejection cites no
"objective evidence supporting the Examiner's extrapolation of the alleged
compressor-fan power ratio relationship to a power ratio relationship
between two compressors." Id. For the following reasons, we do not sustain
this rejection.
For the reasons stated above in connection with Rejection 2, the
Examiner does not persuade us that Coplin inherently discloses the claimed
power ratio. In order to cure the deficiencies in the disclosure of Coplin, the
Examiner directs our attention to general teachings from Adamson
concerning how a power ratio between a fan and a compressor can be
determined. See Final Act. 5. The Examiner does not adequately explain
how those general teachings of Adamson regarding the power ratio of a fan
and a compressor would lead one of ordinary skill in the art to modify
Coplin's gas turbine engine resulting in the claimed power ratio of two
compressor sections. The Examiner instead relies on an inherency theory
that the modified Coplin engine would be capable of achieving the power
ratio. Id. at 5, 11.
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Application 14/177,372
When evaluating an obviousness rejection based on inherency, the
Federal Circuit cautions that:
'the use of inherency in the context of obviousness must be carefully
circumscribed because '[t]hat which may be inherent is not
necessarily known' and that which is unknown cannot be obvious."'
Honeywell Int'! v. Mexichem Amanco Holding S.A., 865 F.3d 1348,
1354 (Fed. Cir. 2017) (quoting In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993)). While "[w]e have recognized that inherency may
supply a missing claim limitation in an obviousness analysis," PAR
Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194--95 (Fed. Cir.
2014) (collecting cases), we have emphasized that "the limitation at
issue necessarily must be present" in order to be inherently disclosed
by the reference, id.
Southwire Company v. Cerro Wire LLC, 870 F.3d 1306, 1310-ll(Fed. Cir.
2017). We do not sustain the rejection of claims 1, 2, and 21 as unpatentable
over Coplin and Adamson because the Examiner has not shown, by a
preponderance of the evidence, that Coplin's gas turbine engine as modified
by Adamson is "necessarily" capable of achieving the claimed power ratio.
Re} ections 4-7
Independent claim 17 is rejected based on Coplin and Taylor or,
alternatively, Coplin, Adamson, and Taylor. Final Act. 6-7. Claim 17
recites, inter alia, "a power ratio ... greater than 1.0." Appeal Br. 17
(Claims App.). The Examiner relies on the same inherency theories as
discussed in above in connection with Rejections 2 and 3 to establish a
power ratio greater than 1.0. Final Act. 6-7. The additional disclosure from
Taylor is not relied on to cure the deficiencies in Coplin, and in the
combination of Coplin and Adamson discussed above. Id. We do not
sustain the rejection of claim 17 for the same reasons discussed above in
Rejections 2 and 3.
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Claims 16, 22, and 23 depend from claim 1 and claim 24 depends
from claim 17. Appeal Br. 17-18 (Claims App.). The Examiner's reliance
on additional disclosure from Taylor, Johnson, and Phillips in the rejection
of these claims does not cure the deficiencies stated above in the rejections
of claims 1 and 17. Final Act. 6-9. We, thus, do not sustain the rejection of
dependent claims 16 and 22-24 for the same reasons stated above in
connection with claims 1 and 17.
DECISION
The Examiner's decision rejecting claims 1, 2, 5-8, 15-25, 27, and
29-32 is reversed.
REVERSED
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