throbber
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.
`
`14/376,426
`
`08/03/2014
`
`Claus Grewe
`
`2011P26476WOUS (130)
`
`7440
`
`10/31/2019
`7590
`96537
`BEUSSE WOLTER SANKS & MAIRE
`Mail Stop AG
`390 N. ORANGE AVE, SUITE 2500
`ORLANDO, FL 32801
`
`EXAMINER
`
`CORDAY, CAMERON A
`
`ART UNIT
`
`PAPER NUMBER
`
`3745
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/31/2019
`
`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):
`USPTO@dockettrak.com
`USPTO@patentorlando.com
`
`PTOL-90A (Rev. 04/07)
`
`1
`
`001
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`Ex parte CLAUS GREWE
`____________
`
`Appeal 2019-000855
`Application 14/376,426
`Technology Center 3700
`____________
`
`Before JENNIFER D. BAHR, DANIEL S. SONG, and
`STEFAN STAICOVICI, Administrative Patent Judges.
`
`STAICOVICI, Administrative Patent Judge.
`
`
`
`DECISION ON APPEAL
`
`
`
`STATEMENT OF THE CASE.
`Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
`
`decision in the Final Office Action (dated Apr. 13, 2018) rejecting claims
`14–17 and 24–34. We have jurisdiction over this Appeal under 35 U.S.C.
`§ 6(b).
`
`
`SUMMARY OF DECISION
`We REVERSE and enter a NEW GROUND of REJECTION pursuant
`to our authority under 37 C.F.R. § 41.50(b).
`
`1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
`§ 1.42. Siemens Aktiengesellschaft is identified as the real party in interest in
`Appellant’s Appeal Brief (filed July 18, 2018). Appeal Br. 1.
`
`2
`
`002
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`INVENTION
`Appellant’s invention is directed “to a method for avoiding pump
`surges in a compressor.” Spec., para. 2.2
`Claim 14, the sole independent claim, is representative of the claimed
`invention and reads as follows:
`14. A method for avoiding pump surges in a compressor,
`comprising:
`monitoring a plurality of parameters during an operation
`of the compressor with a plurality of vibration sensors and
`predetermining a desired value range for the plurality of
`parameters,
`triggering a reaction that counteracts an imminent pump
`surge of the compressor if a number of the plurality of
`parameters exceed or fall below the desired value range for the
`number of the plurality of parameters,
`
`wherein the plurality of parameters comprises a
`parameter assigned to rotational noise of the compressor,
`and
`
`
`
`
`
`
`
`
`
`the parameter assigned to the rotational noise of
`the compressor is a vibration amplitude and/or frequency
`of at least one component of a fluid-flow machine, and
`the at least one component comprises a housing of a
`turbine, and
`detecting mechanical vibrations of the at least one
`component with the plurality of vibration sensors fitted at
`multiple points on a circumference of the at least one
`component and not in a flow path of the at least one component.
`
` Substitute Specification, filed August 3, 2014.
`
`3
`
`
`
`
`
`
`
` 2
`
`003
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`I.
`
`II.
`
`REJECTIONS
`
`The Examiner rejects claims 14–16, 24, 25, and 27–29 under
`35 U.S.C. § 103(a) as being unpatentable over Bonanni,3
`Kinzie,4 and Hoyte.5
`The Examiner rejects claims 17 and 30 under 35 U.S.C.
`§ 103(a) as being unpatentable over Bonanni, Kinzie, Hoyte,
`and Walter.6
`III. The Examiner rejects claim 31 under 35 U.S.C. § 103(a) as
`being unpatentable over Bonanni, Kinzie, Hoyte, Walter, and
`Stabley.7
`IV. The Examiner rejects claim 26 under 35 U.S.C. § 103(a) as
`being unpatentable over Bonanni, Kinzie, Hoyte, and Bently.8
`The Examiner rejects claims 32 and 33 under 35 U.S.C.
`§ 103(a) as being unpatentable over Bonanni, Kinzie, Hoyte,
`and Palin.9
`VI. The Examiner rejects claim 34 under 35 U.S.C. § 103(a) as
`being unpatentable over Bonanni, Kinzie, Hoyte, and Abali.10
`
`V.
`
`3 Bonanni et al., US 2004/0068387 A1, published Apr. 8, 2004.
`4 Kinzie et al., US 8,074,499 B2, issued Dec. 13, 2011.
`5 Hoyte et al., US 2011/0247418 A1, published Oct. 13, 2011.
`6 Walter et al., US 5,594,665, issued Jan. 14, 1997.
`7 Stabley et al., US 7,905,702 B2, issued Mar. 15, 2011.
`8 Bently, US 6,092,029, issued July 18, 2000.
`9 Palin et al., US 8,091,862 B2, issued Jan. 10, 2012.
`10 Abali et al., US 7,282,873 B2, issued Oct. 16, 2007.
`
`4
`
`004
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`ANALYSIS
`Rejection I
`Independent claim 14 requires, inter alia, monitoring “vibration
`amplitude . . . of at least one component of a fluid-flow machine,” wherein
`“the at least one component comprises a housing of a turbine.” Appeal Br.
`10 (Claims App.).
`
`The Examiner finds that Bonanni discloses many of the limitations of
`independent claim 14, but does not disclose that “the at least one component
`comprises a housing of a turbine.” Final Act. 2–3 (citing Bonanni, para. 18,
`Fig. 1). Nonetheless, the Examiner finds that “Hoyte teaches parameter
`sensors providing measurements of operating parameters of a turbine
`operating in conjunction with a compressor . . . for monitoring anomalies to
`avoid damage to the system.” Id. at 3. The Examiner explains that Hoyte
`cures the deficiency of Bonanni, which already teaches the use of vibration
`sensors in other locations of a gas turbine, because Hoyt “not only teach[es]
`monitoring many parameters of the turbine, but . . . [also teaches] using
`those parameters of the turbine to determine the state of the compressor.”
`Adv. Act. 2.11 Thus, the Examiner concludes that it would have been
`obvious to a person of ordinary skill in the art to modify the method of
`Bonanni to “change the component to comprise a housing of a turbine as
`taught by Hoyte to avoid damage to the system.” Final Act. 3.
`
`Appellant argues that Bonanni “already teaches avoiding damage to
`the compressor as a goal, so the [Examiner’s] proposed modification
`provides no advantage,” and, thus, “does nothing that . . . [Bonanni] doesn’t
`
`11 Advisory Action, dated May 17, 2018.
`
`5
`
`005
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`already do.” Appeal Br. 6. Thus, according to Appellant, the Examiner’s
`rejection is based on impermissible hindsight as it is based on knowledge
`gleaned from Appellant’s disclosure. Id.
`
`The Examiner responds that because “Hoyte teaches measuring
`compressor vibrations, and explicitly teaches turbine parameters directly
`associated with vibration (load, speed),” “Hoyte suggests monitoring the
`turbine for vibrations to indicate the operating state of the compressor.”
`Ans. 4.12 According to the Examiner, “Hoyte teaches preventing damage
`(and this teaching may provide additional reliability or redundancy) to a
`turbine/compressor system in a different fashion than Bonanni, and one of
`ordinary skill in the art would be motivated to combine these references to
`prevent such damage.” Id. at 5.
`We do not agree with the Examiner’s position because the reason
`proffered by the Examiner to modify the teachings of Bonanni, according to
`Hoyte, i.e., “to avoid damage to the system,” is performed adequately by the
`method of Bonanni. More specifically, Bonanni discloses a method for
`detecting compressor stall and surge13 including, inter alia, monitoring a
`compressor parameter, such as force and vibrations acting on a compressor
`casing, analyzing the monitored parameter, comparing the analyzed
`compressor parameter with a predetermined baseline, and taking corrective
`action to prevent compressor damage. See Bonanni, paras. 18, 25. The
`Examiner has not provided any findings or an adequate reasoning
`establishing a problem with Bonanni’s method for detecting compressor stall
`
`12 Supplemental Examiner’s Answer, dated Oct. 25, 2018.
`13 Similar to Appellant’s objective of preventing compressor “rotating stall” and
`“deep surge.” Spec., para. 3.
`
`6
`
`006
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`and surge to prevent compressor damage. Without a persuasive articulated
`reasoning based on rational underpinnings for modifying the method of
`Bonanni, according to Hoyte, the Examiner’s rejection appears to be the
`result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (“[R]ejections on obviousness grounds [require] . . . some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`398, 418 (2007)).
`Furthermore, we note that Hoyte discloses a method for determining
`the operational status of a compressor by combining the sensor information
`provided by acoustic energy detectors 24 that monitor compressor 12,
`parameter sensors 22 that monitor compressor 12 or associated equipment,
`such as combustor 56 or turbine 58, and input device 54. See Hoyt, paras.
`21, 25, Fig. 1. Stated differently, Hoyt’s determination of the operational
`status of a compressor is not based only on monitoring turbine parameters
`(i.e., turbine speed, turbine exhaust temperature), but rather on a
`combination of monitored parameters, whereas the monitored parameters of
`turbine 58, upon which the Examiner relies, are merely one component of
`the determination process. Hoyte specifically explains that its improved
`method for monitoring compressor anomalies is based on combining sensor
`information from acoustic energy detectors 24, parameter sensors 22, and
`input device 54. See id. at paras. 6, 8.
`Accordingly, the Examiner’s rejection, which relies on Hoyte’s
`teaching of monitoring parameters of turbine 58, does not take into
`consideration Hoyte’s disclosure that improving the determination of the
`operational status of a compressor requires more than just monitoring
`
`7
`
`007
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`turbine parameters, that is, it requires combining the information from an
`acoustic energy parameter and at least a turbine parameter. See Final Act. 3;
`Ans. 4 (“Hoyte suggests monitoring the turbine for vibrations to indicate the
`operating state of the compressor.”). As such, it is not clear how in light of
`Hoyte, the Examiner’s modification of Bonanni’s process to merely monitor
`turbine parameters, results in “additional reliability or redundancy to a
`turbine/compressor system,” when Hoyte specifically discloses that
`improving the determination of the operational status of a compressor
`requires combining information from at least a turbine parameter and an
`acoustic energy parameter. Ans. 5 (emphasis added). The Examiner has not
`provided any findings or technical reasoning to sufficiently show that
`monitoring turbine parameters, as taught by Hoyte, in the process of
`Bonanni, will “provide additional reliability or redundancy[] to a
`turbine/compressor system.” See id. (emphasis added). Accordingly, the
`Examiner’s alternate reasoning is not supported by sufficient factual
`evidence, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017
`(CCPA 1967) (holding that “[t]he legal conclusion of obviousness must be
`supported by facts. Where the legal conclusion is not supported by facts it
`cannot stand.”).
`Moreover, Appellant is correct, that even assuming arguendo that the
`combined teachings of Bonanni and Hoyte disclose using vibration sensors
`to monitor force and vibrations acting on a turbine, the Examiner has not
`adequately explained why a person having ordinary skill in the art would
`specifically place such vibration sensors on the turbine housing. Reply Br.
`
`8
`
`008
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`8.14 We agree with Appellant that Hoyte merely discloses monitoring
`turbine parameters, but does not disclose that such monitoring occurs
`specifically on the turbine housing. Id. Hence, the Examiner has not set
`forth adequate reasoning to explain why a person having ordinary skill in the
`art would have been prompted by Hoyte’s teachings to move Bonanni’s
`sensors from its compressor casing (housing) to the turbine housing to
`monitor force and vibrations acting on the turbine.
`The Examiner’s use of the Kinzie disclosure does not remedy the
`deficiency of the Examiner’s combination of Bonanni and Hoyte. See Final
`Act. 3. Accordingly, for the foregoing reasons, we do not sustain the
`rejection under under 35 U.S.C. § 103(a) of claims 14–16, 24, 25, and 27–29
`as unpatentable over Bonanni, Kinzie, and Hoyte.
`
`
`Rejections II–VI
`The Examiner’s use of the Walter, Stabley, Bently, Palin, and Abali
`disclosures does not remedy the deficiency of the Bonanni, Kinzie, and
`Hoyte combination discussed supra. See Final Act. 4–8. Therefore, for the
`same reasons discussed above we also do not sustain Rejections II–VI.
`
`
`NEW GROUND OF REJECTION
`Claims 14, 24, 25, 27, and 28 are rejected under 35 U.S.C. § 103(a) as
`being unpatentable over Bonanni and Kinzie.
`With respect to independent claim 14, we adopt the Examiner’s
`findings regarding the respective teachings of Bonanni and Kinzie. See
`Final Act. 2–3. We specifically find Bonanni explicitly discloses that “one
`
`14 Appellant’s Reply Brief, filed Nov. 20, 2018.
`
`9
`
`009
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`or more sensors 30 are disposed about casing 26 for monitoring compressor
`parameters such as . . . force and vibrations exerted on compressor casing
`26.” Bonanni, para. 18. We further adopt the Examiner’s conclusion that it
`would have been obvious to a person of ordinary skill in the art to not
`position the vibration sensors in the process of Bonanni in “the flow path of
`the at least one component as taught by Kinzie [in order] to protect the
`sensors from the extreme conditions in the flow path.” Id. at 3.
`Furthermore, moving the sensors of Bonanni, as modified by Kinzie, from
`compressor casing 26 to the turbine housing to monitor force and vibrations
`acting on the turbine would have been obvious to a skilled artisan as this
`decision is merely a matter of design choice.
`It is well established that changes in the placement of a component
`that does not result in a different structure and function, and, moreover, does
`not provide any unexpected results, is an obvious matter of design choice.
`See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (a spring-loaded electrical
`contact was an obvious matter of design choice within the skill in the art
`where placement of electrical contact provides no novel or unexpected
`result). Here, Appellant’s Specification states that
`the component provided with the appropriate sensors is the
`shaft and/or the housing of the turbine and/or of the
`compressor. By using the housing and/or shaft vibrations of
`turbine and/or compressor, the rotational noise can be
`determined particularly well, in particular with regard to an
`imminent approach to the pump limit.
`Spec., para. 15 (emphasis added).
`As such, Appellant’s Specification establishes that there are no
`benefits to positioning the vibration sensors on the turbine housing vis a vis
`the compressor housing or the shaft. Accordingly, selecting the location of
`
`10
`
`010
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`the turbine housing to position the sensors in the process of Bonanni, as
`modified by Kinzie, amounts to choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success. See, e.g., In
`re Kubin, 561 F.3d 1351, 1358–60 (discussing “obvious to try” situations in
`light of In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988); KSR, 550 U.S.
`at 421).
`As for claims 24, 25, and 27, Bonanni discloses a gas turbine engine
`10 including, inter alia, compressor 14 with vibration sensors 30 mounted
`about compressor housing 26, combustor chamber 18, and turbine rotor 24.
`Bonanni, paras. 16, 18, Fig. 3. In regards to claim 28, Bonanni discloses
`establishing the presence of a foreign body in the compressor by monitoring
`compressor parameters to prevent compressor stall. Id., para. 17.
`Although we decline to reject every claim under our discretionary
`authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
`not mean the remaining claims are patentable. Rather, we merely leave the
`patentability determination of these claims to the Examiner. See MPEP
`§ 1213.02.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`011
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`Affirmed Reversed
`
`CONCLUSION
`
`35 U.S.C. § Reference(s)/
`Basis
`Bonanni,
`Kinzie, Hoyte
`Bonanni,
`Kinzie, Hoyte,
`Walter
`Bonanni,
`Kinzie, Hoyte,
`Walter,
`Stabley
`Bonanni,
`Kinzie, Hoyte,
`Bently
`Bonanni,
`Kinzie, Hoyte,
`Palin
`Bonanni,
`Kinzie, Hoyte,
`Abali
`Bonanni,
`Kinzie
`
`Claims
`Rejected
`14–16, 24,
`25, 27–29
`17, 30
`
`31
`
`26
`
`32, 33
`
`34
`
`14, 24, 25,
`27, 28
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`103(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14–16, 24,
`25, 27–29
`17, 30
`
`31
`
`26
`
`32, 33
`
`34
`
`
`
`14–17,
`24–34
`
`New
`Ground
`
`
`
`
`
`
`
`
`
`
`
`
`14, 24,
`25, 27,
`28
`14, 24,
`25, 27,
`28
`
`Overall
`outcome
`
`
`
`
`
`
`
`
`
`This Decision contains a new ground of rejection pursuant to
`37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
`rejection pursuant to this paragraph shall not be considered final for judicial
`review.”
`Section 41.50(b) also provides (emphasis added):
`When the Board enters such a non-final decision, the appellant,
`within two months from the date of the decision, must exercise
`
`12
`
`012
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

`

`Claus Grewe 14376426 - (D) (P.T.A.B. Oct. 31, 2019)
`
`one of the following two options with respect to the new ground
`of rejection to avoid termination of the appeal as to the rejected
`claims:
`
`(1) Reopen prosecution. Submit an appropriate amendment of
`the claims so rejected or new Evidence relating to the claims so
`rejected, or both, and have the matter reconsidered by the
`[E]xaminer, in which event the prosecution will be remanded to
`the [E]xaminer. The new ground of rejection is binding upon
`the examiner unless an amendment or new Evidence not
`previously of Record is made which, in the opinion of the
`[E]xaminer, overcomes the new ground of rejection designated
`in the decision. Should the [E]xaminer reject the claims,
`appellant may again appeal to the Board pursuant to this
`subpart.
`
`(2) Request rehearing. Request that the proceeding be reheard
`under § 41.52 by the Board upon the same Record. The request
`for rehearing must address any new ground of rejection and
`state with particularity the points believed to have been
`misapprehended or overlooked in entering the new ground of
`rejection and also state all other grounds upon which rehearing
`is sought.
`
`Further guidance on responding to a new ground of rejection can be
`found in the Manual of Patent Examining Procedure § 1214.01 (9th ed.
`2018).
`No time period for taking any subsequent action in connection with
`this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
`
`REVERSED
`37 C.F.R. § 41.50(b)
`
`
`
`
`13
`
`013
`
`ONE-E-WAY 2008
`Apple v. One-E-Way
`IPR2021-00283
`
`

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