Ex Parte Dees et al

Patent Trial and Appeal Board

Jan 25, 2018

13664416 (P.T.A.B. Jan. 25, 2018)

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.
13/664,416 10/30/2012 Paul W. Dees 12-1528-US-CIP 4070
122219 7590 01/29/2018
Miller, Matthias & Hull LLP/ The Boeing Company
One North Franklin, Suite 2350
Chicago, IL 60606
EXAMINER
BURGESS, MARC R
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
bmatthias @ millermatthiashull. com
patentadmin @ boeing. com
ynunez@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL W. DEES, BRUCE R. FOX, MARK S. GOOD,
SEIYA SAKURAI, JAN A. KORDEL, STEPHEN J. FOX,
STEVEN P. WALKER, GREGROY M. SANTINI, and
MATTHEW A. LASSEN
Appeal 2017-004429
Application 13/664,416
Technology Center 3600
Before MICHAEL L. HOELTER, LISA M. GUIJT,
ERIC C. JESCHKE, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’
decision2 rejecting claims 1-3, 5-11, 14-16, 18-26, 29, and 30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as The Boeing Company.
Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated March 4, 2016.
Appeal 2017-004429
Application 13/664,416
CLAIMED SUBJECT MATTER
Claims 1, 21, 29, and 30 are the independent claims on appeal. Claim
1, reproduced below, is illustrative of the subject matter on appeal, with
disputed claim limitations italicized for emphasis.
1. A wing assembly comprising:
a raked wing tip having an outboard portion hinged to one
of a main wing having at least one moveable control surface and
an inboard raked wing tip portion;
the outboard portion of the raked wing tip not
carrying any moveable flight control surfaces,
the outboard portion mov[e]able between a folded
position and an extended positon in which the outboard
portion is approximately co-planer with the main wing or
the inboard raked wing tip portion; and
a locking device for locking the outboard portion in the
extended position to the main wing or the inboard raked wing tip
portion.
REJECTIONS
I. Claims 1-3, 5-11, 14, 18-26, 29, and 30 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Heal (US 2,418,301; issued April 1,
1947).
II. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Heal and Spitzer (US 6,082,665; issued July 4, 2000).
III. Claims 1-3, 5-11, 14-16, 18-26, 29, and 30 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Heal and Handel (US
2,719,682; issued Oct. 4, 1955).
IV. Claim 15 is provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claim 1 of copending US
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Appeal 2017-004429
Application 13/664,416
Application No. 13/251,216 in view of Heal.
ANALYSIS
Rejection I
Independent claims 1, 21, and 29 and dependent claims 2, 3, 5—11, 14, 18—
20, and 22—26
Appellants argue independent claims 1,21, and 29 as a group. Appeal
Br. 9-11. We select claim 1 as representative, with claims 21 and 29
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds, inter alia, that Heal teaches the claimed wing
assembly, except that “Heal does not teach that the outboard portion of the
raked wing tip does not carry any moveable flight control surfaces.” Final
Act. 2-3. The Examiner reasons that it would have been obvious
to omit the moveable flight control surfaces outboard of the hinge
line in order to reduce weight or complexity, or to obtain the
desired flight characteristics, since it has been held that omission
of an element and its function in a combination where the
remaining elements perform the same functions as before
involves only routine skill in the art.
Id. at 3 (citing In reKarlson, 311 F.2d 581 (CCPA 1963)).
First, Appellants argue that “Heal fails to disclose or suggest an
outboard portion of a wing tip having no moveable flight control surfaces”;
rather, Heal “specifically teaches adjustable control surface 24 on a wing tip
21. ” Appeal Br. 9-10. Appellants submit that “the entire point of Heal is to
provide control surfaces on folding wingtips.” Reply Br. 3. The Examiner
correctly responds that the Examiner has not relied on Heal for teaching this
claim limitation. Ans. 3. Thus, Appellants’ argument does not address the
rejection as articulated by the Examiner.
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Application 13/664,416
Notwithstanding, Heal discloses that Heal’s invention (i.e., moveable
flight control surfaces on the outboard portion of a raked wing tip) may be
applied to known aircraft having the claimed limitations. Specifically, Heal
discloses that “[t]he invention contemplates differential adjustment of the
pivoted tips and/or of the control surfaces which they mount” (Heal 1:20-
22)), and that “[i]n a preferred construction as applied to a tailless
monoplane aircraft, the wings, as is usual in such craft, have considerable
sweep back and the extreme tip of each wing is pivoted about an axis
extending substantially parallel with the longitudinal axis of the aircraft”
{id. 1:23-28 (emphasis added)). Put another way, when considering Heal as
a whole, as opposed to only the disclosure of Heal’s improvement, which
Appellants correctly characterize supra as “the whole point” of Heal’s
invention, Heal explicitly discloses that aircraft were known to have raked
wing tips with outboard portions having no moveable flight control surfaces
hinged to main wings having moveable control surfaces, to which Heal’s
improvement (moveable control surfaces on the outboard portion) was
applied. See also id. at 2:21-22 (discussing “flaps on the fixed part of the
wing”). While a prior art reference may indicate that a particular
combination is undesirable for its own purposes, the reference can
nevertheless teach that combination if it remains suitable for the claimed
invention. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). In other
words, Heal already discloses the limitation, “the outboard portion of the
raked wing tip not carrying any moveable flight control surfaces” which is
consistent with the Examiner’s above “omission of an element” rationale
(Final Act. 3) in view of Heal’s inclusion of a control surface at the wing tip.
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Application 13/664,416
Second, Appellants argue that Heal “requires flight control surfaces
on its wing tips because the hinged wings of Heal are folded during flight,
and therefore these control surfaces are necessary to control the flight of the
aircraft,” and that “[consequently, the wing tips of Heal are fundamentally
different from the wing tips of the present application, which are folded
when taxiing on the ground and not during flight.” Appeal Br. 10 (citing
Heal 1:28-31, 2:25-34). In support, Appellants submit that Heal discloses
that “[w]ith the aircraft at altitude and the wings folded, the adjustable
control surfaces 24 on the wing tips are used to provide ruddering or air­
braking,” and “[cjonsequently, if the control surfaces 24 of Heal are omitted
as suggested by the Examiner, the aircraft will lose stability and control
when flying at altitude.” Id. at 10-11 (citing Heal 1:47-2:9). Appellants
argue that “even if the wingtip control surfaces are not always required, that
does not mean that they can be eliminated. Instead, there are some
circumstances in which they are required and therefore must be present and
available to control the aircraft in those circumstances.” Reply Br. 4.
Appellants conclude that Heal “teaches away” from the Examiner’s
proposed modification and that “the omission of the control surfaces would
render the Heal device unsatisfactory for its intended purpose.” Appeal Br.
11 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)).
The Examiner responds that “even if [Heal’s adjustable control
surfaces on the wing tips] were required for flight altitude, one of ordinary
skill in the art would understand that the aircraft could be flown at an
altitude that did not require the control surfaces.” Ans. 4.
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With respect to the known tailless monoplane aircraft discussed supra,
and to which Heal’s control surfaces on the wing tips may be applied, Heal
discloses that
[f]or take-off purposes, each wing tip is locked in a position in
which it is in line with and forms a continuation of the fixed wing
part and the tips can remain in that setting for climb and ordinary
cruising because, providing a contra-rotating air-screw is
employed or providing the aircraft is of a multi-engine type with
oppositely rotating air-screws, rudder control becomes almost
redundant for all ordinary purposes while actually in flight.
Heal 1:28-35. Although Heal discloses that the wing tips are folded during
flight and extended during take-off, as opposed to folded during take-off as
intended by Appellants’ invention, such a limitation is not claimed. Further,
such a limitation would likely be a recitation of the intended use of the
invention, failing to distinguish the known aircraft disclosed in Heal from
Appellants’ claimed invention.
Heal also discloses that, with respect to the application of Heal’s
improved moveable flight control surfaces on the wing tips of tailless type
aircraft,
[w]hen latitude has been achieved or should violent manoeuver
become necessary, the tips are turned upwardly . . . achieving a
considerable reduction in wing area and providing the aircraft
with substantial fin and rudder surface ..., which rudder surface
can be used for rapid change in direction and for control purposes
generally.
Heal 2:19-34. However, a preponderance of the evidence supports the
Examiner’s determination that omitting such moveable flight control
surfaces on the wing tip would prevent the additional control provided by
such moveable flight control surfaces, but would not completely preclude
the aircraft from flying. While tradeoffs may be required in balancing the
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Application 13/664,416
benefits and drawbacks of moveable flight control surfaces on a wing tip,
such tradeoffs do not necessarily prevent the proposed combination or
negate the obviousness of the claimed subject matter. See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine”); see also Winner Int 7
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.”). In other words, we are also not
persuaded by Appellants that because Heal discloses an improvement (i.e.,
moveable flight control surfaces on outboard portions of raked wing tips),
Heal teaches away from aircraft that do not take advantage of the
improvement.
Appellants also argue that because the Examiner relied on case law,
the Examiner improperly applied a per se rule of obviousness. Appeal Br.
12-13; Reply Br. 6. We disagree. Rather, as discussed supra, the
Examiner’s findings are supported by a preponderance of the evidence, and
Appellants do not argue that the Examiner’s proposed modification (i.e.,
omitting Heal’s improvement to reduce weight or complexity, or to obtain
the desired flight characteristics) lacks rational underpinning. Appeal Br. 9-
15; Reply Br. 2-6. Moreover, In re Karlson, relied on by the Examiner,
holds that “[i]t is well settled . . . that omission of an element and its function
in a combination is an obvious expedient if the remaining elements perform
the same functions as before.” Karlson, 311 F.2d at 584. Here, omitting
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Application 13/664,416
HeaPs adjustable control surface from a wing tip is an obvious expedient
because the remaining elements (namely, a wing tip without an adjustable
control surface) still performs the function of a wing tip hinged to a main
wing, as described in Heal with respect to known aircraft to which HeaPs
improvement is applied and as set forth supra—namely, a wing tip that can
move between expanded and folded positions with respect to the main ring.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, under 35 U.S.C. § 103(a) as unpatentable over Heal, and
independent claims 21 and 29 fall therewith. Appellants chose not to present
separate arguments with respect to claims 2, 3, 5-11, 14, 18-20, and 22-26,
which depend from independent claim 1 and 21, and therefore, we also
sustain the Examiner’s rejection of claims 2, 3, 5-11, 14, 18-20, and 22-26
under 35 U.S.C. § 103(a) as unpatentable over Heal for the reasons stated
supra. Appeal Br. 12-13; Reply Br. 6.
Independent claim 30
Independent claim 30 recites, “[a] method of enhancing performance
of an aircraft including wings with raked wing tips, the method comprising
folding outboard portions of the raked wing tips to comply with an airport
code limiting wingspan length, extending the outboard portions to increase
wingspan for flight, and locking the extended outboard portions.” Appeal
Br. 19 (Claims App’x).
Appellants argue that “Heal fails to disclose or suggest folding
outboard portions of the raked wing tips to comply with an airport code
limiting wingspan length,” as recited in independent claim 30. Appeal Br.
11. In support, Appellants submit that “[rjather than disclosing wings that
are folded to meet an airport code, which governs aircraft traveling on the
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Application 13/664,416
ground, Heal teaches wings that are folded during flight once the aircraft has
reached a desired altitude.” Id.
The Examiner responds that “the recitation of ‘to comply with airport
code’ is an intended use . . . limitation, because it does not affect either the
structure of the device or the method steps of its use.” Ans. 4.
Appellants reply that “the ‘airport code’ language indicates the degree
to which the outboard portions of the wing tips are folded, and therefore, is
not merely intended use . . . language.” Reply Br. 6; see also Appeal Br. 11
(“Rather than disclosing wings that are folded to meet an airport code, which
governs aircraft traveling on the ground, Heal teaches wings that are folded
during flight once the aircraft has reached a desired altitude.”).
The Specification discloses that
existing airport designs place limits on aircraft wingspan.
Airport designs are based on International Civil Aviation
Organization (ICAO) Codes A through F, which establish
dimensional limits on wingspan, landing gear width, length, etc.
For instance, an ICAO Code E airport limits wingspan to less
than 65 meters so the aircraft can fit within runways, taxiways
and gate areas.
Spec. ^ 3.
We are not persuaded by Appellants’ argument. The language of
claim 30 states a reason to fold the outboard portions, namely, “to comply
with an airport code limiting wingspan length,” which we agree with the
Examiner, is a statement of the intended use of the folding outboard
portions. Contrary to Appellants’ argument, claim 30 does not specify a
degree to which the wing tips are folded. Further, folding Heal’s wing tips
also results in limiting wingspan length, albeit for a different purpose or
intended use. Structurally, HeaFs disclosure of known aircraft (with Heal’s
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improvement omitted) and Appellants’ claimed invention are
indistinguishable.
Appellants also apply their argument regarding the Examiner’s
reliance on per se rules of obviousness, as applied to independent claim 1, to
independent claim 30. See Appeal Br. 12-13; Reply Br. 6. For the reasons
stated supra, we are not persuaded by such an argument.
Accordingly, we sustain the Examiner’s rejection of independent
claim 30 under 35 U.S.C. § 103(a) as unpatentable over Heal.
Rejections II IV
Appellants rely on the same arguments presented in Rejection I supra
for the patentability of (i) claims 15 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Heal and Spitzer (Rejection II); (ii) claims 1-3, 5-11, 14-
lb, 18-26, 29, and 30 under 35 U.S.C. § 103(a) over Heal and Handel
(Rejection III); and (iii) claim 15 under the ground of nonstatutory double
patenting as being unpatentable over claim 1 of copending US Application
No. 13/251,216 in view of Heal (Rejection IV). Appeal Br. 14-15. In
particular, Appellants argue that none of Spitzer, Handel, or US Application
13/251,216 cures the deficiencies in the Examiner’s reliance on Heal, as
applied in Rejection I. Id. Because we do not agree that the Examiner’s
reliance on Heal is deficient, we also sustain the Examiner’s Rejections II-
IV.
DECISION
The Examiner’s rejection of claims 1-3, 5-11, 14, 18-26, 29, and 30
under 35 U.S.C. § 103(a) as unpatentable over Heal is AFFIRMED.
The Examiner’s rejection of claims 15 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Heal and Spitzer is AFFIRMED.
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Application 13/664,416
The Examiner’s rejection of claims 1-3, 5-11, 14-16, 18-26, 29, and
30 under 35 U.S.C. § 103(a) over Heal and Handel is AFFIRMED.
The Examiner’s rejection of claim 15 under the ground of
nonstatutory double patenting as being unpatentable over claim 1 of
copending US Application No. 13/251,216 in view of Heal is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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