Ex Parte Euvino et al

Patent Trial and Appeal BoardOct 16, 2012

11140790 (P.T.A.B. Oct. 16, 2012)

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. 11/140,790 05/31/2005 Frank J. Euvino JR. PA-10920-US; 67097-1182 3758 54549 7590 10/17/2012 CARLSON, GASKEY & OLDS/PRATT & WHITNEY c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER LEE, BENJAMIN P ART UNIT PAPER NUMBER 3641 MAIL DATE DELIVERY MODE 10/17/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANK J. EUVINO, JR. and ANTHONY J. VINCIQUERRA ____________ Appeal 2010-000710 Application 11/140,790 Technology Center 3600 ____________ Before LINDA E. HORNER, JOHN C. KERINS and EDWARD A. BROWN, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000710 Application 11/140,790 2 STATEMENT OF THE CASE Frank J. Euvino, Jr. and Anthony J. Vinciquerra (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1- 7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION The Appellants’ invention is directed to a modular fan inlet ice protection system. Independent claim 1, directed to the system, is illustrative: 1. A modular fan inlet ice protection system, comprising: a center ring; an outer ring; a plurality of struts each coupled at a first end to the center ring, and at a second end to the outer ring; a plurality of shell members, each shell member being configured to be removably coupled to a corresponding strut, and each shell member including an electrothermal heater element. THE REJECTIONS The Examiner has rejected: (i) claims 1-3 under 35 U.S.C. § 103(a) as being unpatentable over Bragg (US 3,617,147, iss. Nov. 2, 1971) in view of Boyd (US 2,540,472, iss. Feb. 6, 1951) and Stoner (US 7,246,773 B2, iss. Jul. 24, 2007); and Appeal 2010-000710 Application 11/140,790 3 (ii) claims 4-7 under 35 U.S.C. § 103(a) as being unpatentable over Bragg in view of Boyd and Stoner and further in view of Hornick (US 6,881,036 B2, iss. Apr. 19, 2005). ANALYSIS Obviousness--Claims 1-3--Bragg/Boyd/Stoner The Examiner maintains that Bragg as modified by Boyd discloses all limitations of the claimed invention with the exception of a plurality of shell members configured to be removably coupled to a corresponding strut. Ans. 4-5. The Examiner cites to the Stoner patent as teaching this element. Id. The Appellants argue that Stoner does not teach shell members “removably coupled” to struts. App. Br. 3-4. It is not entirely clear what the Examiner relies upon in Stoner to support the position that its shell member is inherently “removably coupled” to the leading edge of the airfoil surface. Ans. 4, 6. The Examiner points to nothing in Stoner that suggests that Stoner’s metal foil 16 is removable from airfoil 10. Ans. 4-6. We agree with the Appellants that the manners disclosed by Stoner for attaching the shell to the leading surface of the airfoil strongly imply that the shell is to be permanently affixed thereto. App. Br. 3-4; Stoner, col. 5, ll. 9-13, col. 5, ll. 56-63, Fig. 10. The Examiner is possibly taking the position that any two objects that are joined or coupled are inherently removable from one another, even if by destructive means. To determine the meaning of “removably coupled” with respect to the Appellants’ claimed invention, we look towards the Appellants’ disclosure. Appeal 2010-000710 Application 11/140,790 4 When construing claims, a court must begin by ‘look[ing] to the words of the claims themselves… to define the scope of the patented invention.’ .… Words of a claim ‘are generally given their ordinary and customary meaning’ as understood by a person of ordinary skill in the art in question…. For this reason, ‘claims must be read in view of the specification, of which they are a part.’ Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citations omitted)). The Appellants, in their Specification, describe the shell members as capable of being “easily replaced if damaged, worn, aero/structural iteration of the module occurs, or other performance factors change.” Spec. 3, para. [0013]. The Appellants further explain that “[t]he system 10… allows for easy replacement of the shell members 22 when damaged or worn without major disassembly of the system.” Id. These passages evidence that the term “removably coupled” is employed in a manner that requires removal of the shell without damaging, at a minimum, the strut to which it is coupled. We conclude that the Examiner’s interpretation of “removably coupled,” to the extent that it broadly encompasses removing the shell from the strut by destructive means, is unreasonably broad because it effectively gives no meaning to the term “removably” in Appellants’ claim language.1 The Examiner has not established that Stoner’s metal foil 16 is “removably coupled” from airfoil 10 by non-destructive means. Nearly any 1 Claims are interpreted with an eye toward giving effect to all terms in the claim. Bicon, Inc. v. The Straumann Co., 441 F.3d 945, 950 (2006) (citations omitted). Appeal 2010-000710 Application 11/140,790 5 two objects coupled together can be removed from each other by destructive means. Accordingly, it would not be reasonable to construe a “removably coupled” shell to include a so-called removal that results in destruction of one or more of the coupled objects, because this construction would fail to give appropriate weight to the limitation “removably.” See Bicon, 441 F.3d at 950; Stumbo, 508 F.3d at 1362. Thus, in order to sustain the Examiner’s finding that Stoner inherently describes the “removably coupled” shell, the coupling of Stoner must necessarily describe a coupling that removes the metal foil 16 without destroying itself and/or the airfoil 10. As noted above, it is not apparent from the disclosure of Stoner that removing metal foil 16 with a means sufficient to mechanically disengage it from airfoil 10 will necessarily result in a non-destructive disengagement, and the Examiner sets forth no findings or technical reasoning which support such a position. Accordingly, the Examiner has not established that Stoner inherently describes a shell “removably coupled” to a strut in a manner that allows the shell to be non-destructively removed from the strut. As a result, the Examiner’s conclusion that it would have been obvious, in view of the disclosures of Boyd and Stoner, to modify Bragg to include shells that are removably coupled to the struts, is not supported by rational underpinnings. Accordingly, the rejection of claims 1-3, as being unpatentable over Bragg in view of Boyd and Stoner is not sustained. Obviousness--Claims 4-7--Bragg/Boyd/Stoner/Hornick The rejection of claims 4-7 as being unpatentable over Bragg in view of the teachings of Boyd, Stoner, and Hornick is premised on the Examiner’s Appeal 2010-000710 Application 11/140,790 6 erroneous interpretation, discussed with respect to claim 1 above, of the term “removably coupled.” We do not sustain this rejection. CONCLUSIONS The Examiner erred in concluding that the subject matter of claims 1- 3 would have been obvious over Bragg in view of Boyd and Stoner. The Examiner erred in concluding that the subject matter of claims 4- 7 would have been obvious over Bragg in view of Boyd and Stoner and further in view of Hornick. DECISION The rejection of claims 1-3 is reversed. The rejection of claims 4-7 is reversed. REVERSED hh