Safran Aircraft Engines

Patent Trials and Appeals Board

Mar 10, 2022

2020006543 (P.T.A.B. Mar. 10, 2022)

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. 15/550,570 08/11/2017 Clément Paul Claude Guinot BRV5-57732 2211 116 7590 03/10/2022 PEARNE & GORDON LLP 1801 EAST 9TH STREET SUITE 1200 CLEVELAND, OH 44114-3108 EXAMINER COOK, BRIAN S ART UNIT PAPER NUMBER 2146 NOTIFICATION DATE DELIVERY MODE 03/10/2022 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): patdocket@pearne.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CLÉMENT PAUL CLAUDE GUINOT, BRICE YVAN CÉDRIC CHARPENTIER, LYDIE MARTINE CHEVALIER, and LAURENT YANICK MAURICE HERVAULT ____________ Appeal 2020-006543 Application 15/550,570 Technology Center 2100 ____________ Before MICHAEL R. ZECHER, JOHN A. EVANS, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 15-28, which are all the claims pending and rejected in the application. Appeal Br. 9-10 (Claims Appendix). Claims 1-14 have been cancelled. Id. at 9. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Safran Aircraft Engines as the real party in interest. Appeal Br. 2. Appeal 2020-006543 Application 15/550,570 2 STATEMENT OF THE CASE Introduction The invention relates to a system or method of “assisting with the production or repair of [a] turbomachine.” Spec. 1:1-3. In particular, [t]he method comprises a step (91) of displaying first production or repair information about the turbomachine on a portable display device. The method comprises a step (92) of blocking the display of second production or repair information on the portable display device at least as long as there has been no detection that a user has, in response to the first information, performed a predetermined action (94) of validating (81) and/or of invalidating (82) the condition of the turbomachine. Abstr. Independent claim 15 is exemplary: 15. Method for assisting with the manufacturing or repair of a turbomachine comprising: a step of displaying first manufacturing or repair information for the turbomachine on a portable display device, a step of blocking the display of second manufacturing or repair information on the portable display device, at least until a predetermined action to validate and/or invalidate the condition of the turbomachine has not been detected, wherein the predetermined action is to be performed by a user in response to the first information. Appeal Br. 9 (Claims Appendix). Appeal 2020-006543 Application 15/550,570 3 References and Rejections2 Claims Rejected 35 U.S.C. § References 15-20, 23-28 103 Keller (US 2004/0225390 A1, pub. Nov. 11, 2004), Higgins (US 9,569,397 B2, issued Feb. 14, 2017, prior publication date Jan. 16, 2014), Rataul (US 9,329,594 B2, issued May 3, 2016, prior publication date June 6, 2013) 21, 22 103 Keller, Higgins, Rataul, Garcia (available at https://community.articulate.com/discussions /articulate-storyline/user-needs-to-click-on- all-item-before-the-next-button-is- revealed#reply-102428 (2013)) The Examiner’s Rejection Relating to the Rationale for Combining the Teachings of Keller and Higgins The Examiner cites Keller as the primary reference for teaching most of the claim limitations of claim 15. See Final Act. 5-6. The Examiner finds Keller does not teach the claimed “turbomachine,” but finds Higgins teaches that claim term. See Final Act. 6-7. The Examiner determines one skilled in the art would have modified Keller’s method to incorporate Higgins’ turbomachine feature for the benefit of having an assembly instruction method for the assembly known as a turbomachine that includes condition based replacement (CBRL) activities in order to advantageously minimize discarded parts to obtain the invention as specified in the claims. 2 Throughout this opinion, we refer to the (1) Final Office Action dated Jan. 3, 2020 (“Final Act.”); (2) Appeal Brief dated July 6, 2020 (“Appeal Br.”); (3) Examiner’s Answer dated July 20, 2020 (“Ans.”); and (4) Reply Brief dated Sept. 18, 2020 (“Reply Br.”). Appeal 2020-006543 Application 15/550,570 4 Final Act. 7. In the Answer, the Examiner appears to shift his position and provides the following reasoning instead: Higgins_2017 can provide the benefit of providing product quality data (inspection or validation of parts) in order to inform Keller_2004 about the type of repair which may be performed and this may include condition based replacement life (CBRL) as taught by Higgins_2017. Ans. 7. Appellant’s Contentions Relating to the Rationale for Combining the Teachings of Keller and Higgins Appellant argues the Examiner has not provided the requisite rationale for combining the teachings of Keller and Higgins to reject independent claim 15. See Appeal Br. 5-7; Reply Br. 2-4. In particular, Appellant argues the Examiner’s reasoning for modifying Keller’s method to incorporate Higgins’ turbomachine feature is insufficient and speculative. See Appeal Br. 5-7; Reply Br. 2-4. ISSUE Based on the record before us, the dispositive issue before us is whether the Examiner has provided the requisite rationale for combining the teachings of Keller and Higgins to reject independent claim 15? Appeal 2020-006543 Application 15/550,570 5 ANALYSIS Claim 15 We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contention that the Examiner has not provided the requisite rationale for combining the teachings of Keller and Higgins to reject claim 15. See Appeal Br. 5-7; Reply Br. 2-4. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“Without any explanation as to . . . why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. . . . [W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” (citation omitted)). Further, the U.S. Patent and Trademark Office (“USPTO”) “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made” and that articulation requirement “appl[ies] with equal force to the . . . motivation to combine analysis.” In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (citation omitted). When “motivation to combine . . . is disputed,” the USPTO “must articulate a reason why a [person having ordinary skill in the art] would combine the prior art references.” Id. Appeal 2020-006543 Application 15/550,570 6 In this case, we agree with Appellant that the Examiner has not provided the requisite rationale for modifying Keller’s method to incorporate Higgins’ turbomachine feature. See Appeal Br. 5-7; Reply Br. 2-4. In particular, the Examiner’s assertion that one skilled in the art would have pursued the combination “for the benefit of having an assembly instruction method for the assembly known as a turbomachine that includes condition based replacement (CBRL) activities in order to advantageously minimize discarded parts to obtain the invention as specified in the claims” (Final Act. 7 (emphasis added)) is insufficient. Most importantly, the Examiner has not explained why modifying Keller’s method to incorporate Higgins’ turbomachine feature would result in “minimiz[ing] discarded parts” (Final Act. 7). The connection between the proposed modification and minimizing discarded parts is not readily apparent, and the Examiner has not explained why such a connection exists. Likewise, the Examiner’s assertion that Higgins_2017 can provide the benefit of providing product quality data (inspection or validation of parts) in order to inform Keller_2004 about the type of repair which may be performed and this may include condition based replacement life (CBRL) as taught by Higgins_2017 (Ans. 7) is inadequate. Once again, the Examiner has not explained why modifying Keller’s method to incorporate Higgins’ turbomachine feature would “provid[e] product quality data” or “inform Keller[] about the type of repair which may be performed and this may include condition based replacement life (CBRL)” (Ans. 7). There is no apparent connection between the proposed combination and “providing product quality data” or “inform[ing] Keller[] about the type of repair which may be performed and Appeal 2020-006543 Application 15/550,570 7 this may include condition based replacement life (CBRL)” (Ans. 7). Nor has the Examiner explained why such a connection exists. As a result, the Examiner has not provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by KSR. See KSR, 550 U.S. at 418. Because the Examiner fails to provide the requisite rationale for combining the teachings of Keller and Higgins to reject claim 15, we are constrained by the record to reverse the Examiner’s rejection of independent claim 15. Claims 16-28 By virtue of its dependency, each of dependent claims 16-28 includes all of the limitations of independent claim 15. The Examiner applies the same reasoning for combining the teachings of Keller and Higgins (discussed above regarding claim 15) to dependent claims 16-28. See Final Act. 5-14. Therefore, for the same reasons discussed above with respect to independent claim 15, we reverse the Examiner’s obviousness rejection of dependent claims 16-28. We note Appellant raises additional arguments. Because the identified issue is dispositive of the appeal, we do not address the additional arguments. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (an administrative agency’s “judicious use of a single dispositive issue approach . . . can . . . save . . . unnecessary cost and effort”). Appeal 2020-006543 Application 15/550,570 8 CONCLUSION We reverse the Examiner’s decision rejecting claims 15-28 under 35 U.S.C. § 103. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15-20, 23- 28 103 Keller, Higgins, Rataul 15-20, 23- 28 21, 22 103 Keller, Higgins, Rataul, Garcia 21, 22 Overall Outcome 15-28 REVERSED