Ex parte Cloft
Appeal 2012-005061; Appl. No. 12/016,234; Tech. Center 3600
Decided June 9, 2014
The application was directed to structures for mounting an aircraft engine. Where prior art arrangements used multiple bolted joints to attach the engine to a pylon structure on the wing, the invention used engine mount beams that were integrally formed with the pylons.
A representative claim on appeal read:
1. A mounting arrangement for a gas turbine engine comprising:The Examiner rejected as obvious over a combination of two references. In the rejection, the Examiner asserted that a POSITA would have used the teaching, in the secondary reference, of a pylon mount portion integrally formed with a mount beam, and combined that with the remaining claim elements taught in the primary reference (Marche).
a pylon mount structure having a first mount portion and a second mount portion positioned aft of said first mount portion,
said first and said second mount portions comprising separate components to be independently attached to a pylon;
a first engine mount beam integrally formed with said first mount portion as a single-piece component ... ; and
a second engine mount beam integrally formed with said second mount portion as a single-piece component ...
The Applicant appealed. One argument on appeal concerned the limitation that the first pylon mount portion "be independently attached to a pylon". The Examiner specifically asserted that the first mount portion corresponded to structures 14/16 in the primary reference Marche, and that the pylon corresponded to structure 4. (See figure below.)
The Applicant argued that Marche did not teach that the mount portion was "to be independently attached to" the pylon because the reference taught instead that the triangle structure 14 was “already part of” the rigid structure 4. (Emphasis added.)
In the Answer, the Examiner provided this additional information:
The first portion 14/16 and the second portion 18 are distinct components joined to the pylon at separate locations (fore and aft of pylon 4). As such, they are separate components to be "independently" attached from each other (i.e. one's joining does not depend on the other) to the pylon. It is further noted that integration (combining multiple into one) is a form of "attachment." The claims do not specify the type of attachment to be obtained.
(Emphasis in original.)
The Applicant filed a Reply Brief to address this new information.
Pyramid 14 is the pylon itself (see paragraph ). Specifically, the pylon comprises lower 12 and upper 20 stringers and the pyramid 14. The aft mount 18 is attached to the pylon stringer 12. As such, the examiner's first [mount portion] and second mount portions cannot be considered as "separate components to be independently attached to a pylon."The Board was not persuaded by the Applicant's argument.
The Board found that pyramid 14 was indeed "attached to" pylon 4 – during assembly of the pylon. That is, the Board adopted the Examiner's reasoning that combining stringer 10, stringer 12, and pyramid 14, to produce an integrated pylon 4, involved attaching the stringer 12 to the pylon 4. The Board explained as follows:
To be clear, Marche discloses that “rigid structure 4 is globally made by the assembly of lower stringers 12 and upper stringers 10 connected to each other.” Marche para. 76. This same paragraph also discloses that “a forward part of this rigid structure 4 is composed of a pyramid 14.” Marche para. 76. Hence, Appellants’ argument is understood that as item 14 is already part of item 4, then it is not clear how this item 14 can also be independently attached to item 4.
The Examiner clarifies “that integration (combining multiple into one) is a form of ‘attachment.’ The claims do not specify the type of attachment to be obtained.” Ans. 9. The Examiner further finds that as Marche’s corresponding first portion 14/16 and second portion 18, “are distinct components joined to the pylon at separate locations (fore and aft of pylon 4),” that “they are ‘separate components’ to be ‘independently’ attached from each other (i.e., one’s joining does not depend on the other) to the pylon.” Ans. 9.
Appellant disagrees, contending that “[p]yramid 14 is the pylon itself” and references Marche paragraph  for support (Reply Br. 2), but as stated above, this paragraph only states that pyramid 14 is a “forward part” of “rigid structure 4” which itself is described as being an “assembly” made from different stringers 10 and 12 that are “connected to each other.” Hence, there is no indication in Marche that the construction of rigid structure/pylon 4 is monolithic but instead, Marche describes item 4 as an assembly of multiple components connected together. Marche para. 76. Consequently, Appellant’s contention that Marche’s item 14 is not “independently attachable to a pylon as claimed” is not persuasive. App. Br. 6.
My two cents: The Board tried to be to clever, and in doing so, got this one wrong.
First, I do agree that the process of producing an integrated component sometimes involves attaching subcomponents – as was the case here. However, here the subcomponents were attached to each other: stringers 10 and 12 are attached to pyramid 14 to form pylon 4. I do not agree that pyramid 14 was attached to pylon 4, as there was no pylon 4 until all three pieces were attached together.
Second, the claim is to an apparatus not a method. Once Marche's pylon 4 was formed, the pyramid 14 can't be considered a "separate component to be independently attached to a pylon ". Right? You can't, on the one hand, rely on the fully assembled pylon 4 as the claimed pylon and, at the same time, rely on the pyramid subcomponent 14 as a structure attached.
Perhaps the Applicant's use of the phrase "to be attached" rather than "attachable" weakens my argument. Perhaps "to be attached" can be read as referring to the time of assembly? But note that neither the Board nor the Examiner appeared to rely on this.