Ex Parte Ireland

Patent Trial and Appeal BoardAug 22, 2018

12832967 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/832,967 07/08/2010 86671 7590 08/24/2018 NWAMU,P.C. Patent & Trademark Law 360 Grand Ave, Mailbox 109 Oakland, CA 94610 FIRST NAMED INVENTOR Peter Ireland 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PIRELAND.001 US 5478 EXAMINER WOLDEMARYAM, ASSRES H ART UNIT PAPER NUMBER 3642 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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): eofficeaction@appcoll.com fidel@nwamu.com tpaterson@nwamu.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER IRELAND Appeal2018-000867 Application 12/832,967 1 Technology Center 3600 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 54--95, which are all the pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 The Appeal Brief identifies the inventor, Peter Ireland, as the real party in interest. Br. 4. Appeal2018-000867 Application 12/832,967 CLAIMED SUBJECT MATTER Appellant's disclosure "relates to the addition of low drag fully submerged conformal vortex [generators] to a surface in relative motion to a Newtonian fluid and, more particularly, to aeronautical and marine surfaces, blades, rotors, and appendages having a boundary layer with fluid flow across such surface." Spec. 1-2. Claims 54 and 90 are independent. Claim 54 is illustrative of the claimed subject matter, and reads: 54. An application in a Newtonian fluid-flow of a step-formed Conformal Sub-Boundary Layer Vortex Generator, known as a CVG, to a foil or aero/hydrodynamic surface for reducing drag and/or improving lift and/or lift to drag ratios, comprising: an attached fixed geometry vortex generator means of an application media with a design-fixed thickness, attached onto said foil or aero/hydrodynamic surface with a largest fluid-flow face in communication with lowest momentum streamlines of said Newtonian fluid-flow, and further incorporating at least two streamwise-relative aft-facing step edge means configured with integral rear-pointing tip means for locating a streamwise vortex at the lowest level in a downstream boundary layer, further configuring said aft-facing step edge means adjacent to said rear- pointing tip means at a streamwise angle to said Newtonian fluid- flow to induce said streamwise vortex and to additionally reduce a downstream momentum layer thickness, thereby improving the dynamics of said downstream boundary layer and reducing drag and/or improving lift and/or lift to drag ratios. Br. 17 (Claims App.). 2 Appeal2018-000867 Application 12/832,967 REJECTIONS Claims 54--95 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Claims 54--69 and 71-95 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Weigel ("Advanced Rotor Blade Erosion Protection System," July 1996) and Henne (US 5,322,246, issued June 21, 1994). Claim 70 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Weigel, Henne, and Puskas (US 5,839,695, Nov. 24, 1998). ANALYSIS Indefiniteness of Claims 54-95 Claim 54 The Examiner determines that claim 54 is indefinite for several reasons. Particularly, the Examiner determines it is unclear from the language in the preamble of "An application in a Newtonian fluid-flow of a step-formed conformal sub-boundary layer Vortex Generator" whether the claims are directed to an apparatus or a method. Non-Final Act. 3 (emphasis added). Additionally, the Examiner determines that claim 54 claims both an apparatus and method steps of using the apparatus, based on recitations of "incorporating at least two streamwise-relative aft-facing step edge means .. . " and "configuring said aft-facing step edge means .... " Id. at 5. The Examiner determines these limitations seem to be method steps in an apparatus claim, thereby making the claim indefinite. Id. Appellant states that the "[claim] term 'application' is a device" (Br. 7), and that claim 54 is an apparatus claim, not a method claim (id. at 9). In this regard, Appellant states: 3 Appeal2018-000867 Application 12/832,967 Id. the claimed apparatus is the "attached fixed geometry vortex generator means." This "attached fixed geometry vortex generator means" then 'Zurther incorporate{sl at least two streamwise-relative aft-facing step edge means .... " Specifically, the claimed vortex generator means is an apparatus, which further incorporates another apparatus, the " ... aft-facing step edge means." We understand Appellant's position is that claim 54 is directed to an apparatus, that is, the CVG only. We understand from the claim language that the CVG comprises a fixed geometry vortex generator means that incorporates "at least two streamwise-relative aft-facing step edge means configured with integral rear-pointing tip means." However, claim 54 recites that the vortex generator means is "attached onto said foil or aero/hydrodynamic surface." Consequently, it is unclear whether claim 54 is directed to a sub-combination (i.e., the CVG only, which is used with "a foil or aero/hydrodynamic surface") or to a combination (i.e., the CVG and "a foil or aero/hydrodynamic surface" that the vortex generator means is attached onto). Appellant does not address the Examiner's determination that the limitation ''further configuring ... to additionally reduce a downstream momentum layer thickness" in claim 54 is indefinite. We agree with the Examiner that this limitation is unclear. Particularly, it is unclear whether this limitation relates to: a) the structure of the vortex generator means that incorporates the step edge means and tip means, for example, "said aft-facing step edge means [is configured (e.g., shaped and/or sized)] adjacent to said rear- pointing tip means"; 4 Appeal2018-000867 Application 12/832,967 b) how the structure is made, for example, "[configuring (i.e., making)] said aft-facing step edge means adjacent to said rear-pointing tip means"Â· or ' c) how the CVG is "attached onto said foil or aero/hydrodynamic surface" used in a Newtonian fluid-flow, for example, "said aft-facing step edge means adjacent to said rear-pointing tip means [is configured (i.e., located, positioned, and/or oriented)] at a streamwise angle to said Newtonian fluid-flow." Regarding Appellant's "request that the Patent Office provide support for its proposition that a method claim should not be claimed in an apparatus claim" (Br. 9), MPEP Â§ 2173.05(p) states, "[a] single claim which claims both an apparatus and the method steps of using the apparatus is indefinite" under 35 U.S.C. Â§ 112(b) or pre-AIA 35 U.S.C. Â§ 112, second paragraph (citing In re Katz, 639 F.3d 1303, 1318 (Fed. Cir. 2011)). In IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), a system claim reciting "an input means" and requiring a user to use the input means was found to be indefinite because it was unclear "whether infringement ... occurs when one creates a system that allows the user [ to use the input means], or whether infringement occurs when the user actually uses the input means." The court determined that because the claim recites both a system and the method for using the system, it does not apprise a person of ordinary skill in the art of its scope, and it is invalid under 35 U.S.C. Â§ 112, second paragraph. Id. Here, it unclear whether the "further configuring" limitation in "apparatus" claim 54 pertains to a method of using the claimed vortex generator means in a Newtonian fluid-flow. 5 Appeal2018-000867 Application 12/832,967 Also for claim 54, the Examiner determines that the limitation, "an attached fixed geometry vortex generator means of an application media," is unclear as to what the "application media" is and whether it refers to the aero/hydrodynamic surface. Non-Final Act. 4. Appellant contends that the "application medium" is noted in the discussion of the device, as being plastics, such as TPU, paint, or metals. Br. 7. We understand that the recited "application media" is the material that the vortex generator means is made of. As discussed below, claim 55, which depends from claim 54, recites materials for the "application media" recited in claim 54. We determine that the meaning of "application media" in claim 54 is sufficiently clear. Further for claim 54, the Examiner determines that there is insufficient antecedent basis for the term "rear-pointing tip means" as there is a prior recitation of "integral rear-pointing tip means" in the claim. Non- Final Act. 4. We disagree. It is sufficiently clear that the term "said rear-pointing tip means" is referring to the preceding term "integral rear-pointing tip means." Furthermore, "[ c ]laims are not necessarily invalid for a lack of antecedent basis." Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1376 (Fed. Cir. 2008). If the scope of a claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite. Energizer Holdings, Inc. v. Int'! Trade Comm 'n, 435 F.3d 1366, 1370-71 (Fed. Cir. 2006) (citation omitted). Here, one skilled in the art 6 Appeal2018-000867 Application 12/832,967 would reasonably understand that "said rear-pointing tip means" and "integral rear-pointing tip means" are referring to the same claim element. 2 Lastly for claim 54, in the final recitation, "thereby improving the dynamics of said downstream boundary layer and reducing drag and/or improving lift and/or lift to drag ratios," it is unclear what the "improving" is relative to. See Br. 17 (Claims App. (emphasis added)). We note the Specification describes "the beneficial effect of reducing drag either [comparative] to existing protective treatments or baseline, and or increasing lift, or lift to drag ratios by promoting spanwise vortices to be generated." Spec. 9 (emphasis added). The Specification also describes, "Comparative to existing sprayed on or rolled on leading edge erosion treatments, the invention removes the adverse effects of an aft facing step at the trailing edge of the current art protective tape layer ... or in extreme cases premature separation of the boundary layer." Id. at 11 (emphasis added). The Specification further describes, [ t ]he application of the vortex generating system by use of the advantageous incorporation in an erosion protection surface, tape or other medium results in improved drag and lift performance of the blade in comparison to untreated blades of between 7% to 10%. The difference in performance between current art protection systems and the invention is approximately a 12% to 15% improvement in drag performance, and an additional improvement in lift coefficient, and angle of attack capability for the treated surface. Id. at 12-13 (emphasis added). Accordingly, the Specification describes improvements in performance that are based on, and vary for, different 2 We note Appellant's statement, "Applicant requests abeyance to insert the word 'integral' before 'rear-pointing tip means' in line 9 to provide sufficient antecedent basis." Br. 8. 7 Appeal2018-000867 Application 12/832,967 comparisons. However, claim 54 does not provide any indication of which comparison( s) should be used with regard to the "improving" limitation. Consequently, this limitation is indefinite. Claim 55 For claim 55, the Examiner determines that the "transitional phrase" "group consisting of' "excludes any element, step, or ingredient not specified in the claim," but the use of "and/or" "includes an element, step, or ingredient not specified in the claim." Non-Final Act. 4 (emphasis added) Claim 55 defines the "application media" in terms of a Markush group, that is, "said application media is selected from the group consisting of; a polymeric and/or elastomeric material attached as a film and/or laminate ... an attached metal and/or laminate material." See Br. 17 (Claims App. (emphasis added)). The transition phrase "group consisting of' is proper for the Markush group, thereby making the group "closed." See Abbott Labs. v. Baxter Pharmaceutical Products Inc., 334 F.3d 1274, 1280 (Fed. Cir. 2003) ("[A] Markush group, incorporated in a claim, should be 'closed,' i.e.[,] it must be characterized with the transition phrase 'consisting of' .... ") The use of the conjunction "and/or" within the Markush group (e.g., "a polymeric and/or elastomeric material") does not make the "group" an "open group." Accordingly, we do not agree with the Examiner that the recitation of both the phrase "group consisting of' and the conjunction "and/or" makes the meaning of claim 55 unclear. Claim 64 Claim 64 depends from claim 54 and recites, "wherein a geometry of said aft-facing step edge means between said rear-pointing tip means is configured to minimize the straight transverse extent of said aft-facing step 8 Appeal2018-000867 Application 12/832,967 means." Br. 19 (Claims App. (emphasis added)). The Examiner determines that it is unclear what "the straight transverse extent of the aft-facing step means" is referring to. Non-Final Act. 4. Appellant submits that a "transverse aft-facing step" is an identifiable feature on many surfaces, such as the rear edge of a slat, or an erosion protection strip on a rotor or blade, and the term "straight" is included in the limitation to "maintain clarity of the section being discussed, as the CVG introduces non-linear geometry to the plan form of the device." Br. 8. Appellant adds that the term "aft-facing step" is synonymous with "rear facing step." Id. We agree with the Examiner that the meaning of claim 64 is unclear. We note the Specification uses similar language as claim 64. Spec. 8. It is unclear, for example, whether the claim language means that the geometry of the aft-facing step edge means between the rear-pointing tip means is configured to minimize the straight transverse extent (i.e., length) of the aft- facing step means between the rear-pointing tip means, or to minimize the straight transverse extent of the aft-facing step means generally. We also note that Figure 5 shows rear-pointing tip means 16 being adjacent to each other and sharing a common apex. It is not apparent where "the straight transverse extent" "of the aft-facing step means" is located "between the rear-pointing tip means" in Figure 5. Figures 8-10 show similar constructions with regard to rear-pointing tip means as Figure 5. Claim 70 The Examiner states that it is unclear in claim 70 what a "negative mask" means. Non-Final Act. 5. However, this term is not recited in claim 9 Appeal2018-000867 Application 12/832,967 70. See Br. 20 (Claims App.). Hence, we do not sustain this rejection of claim 7 0. 3 Claim 74 The Examiner states that it is unclear in claim 7 4 what a "negative mask" means. Non-Final Act. 5. However, this term is not recited in claim 74. See Br. 20 (Claims App.). Hence, we also do not sustain this rejection of claim 74. However, the Examiner determines that it is also unclear what "a spanwise-to-flow half section" refers to. Non-Final Act. 5. Appellant asserts that claim 7 4 "describes the use of a CVG where the front edge is linear and transverse to the flow, and abuts to an existing transverse aft facing step, thus alleviating the effect of the step. The term span-wise to flow half section correctly describes the resultant CVG thus applied." Br. 8. Appellant's explanation is not persuasive. Neither claim 74 nor parent claim 54 recites a "front edge [that] is linear and transverse to the flow." Further, we are unable to find any description of the term "half- section" and or the term "spanwise-to-flow half section" in the Specification. Accordingly, the Specification does not appear to provide any guidance as to the meaning of the claimed "span wise-to-flow half section." For the foregoing reasons, and based on the record before us, we sustain the rejection of claim 54, and of claims 55-89, which depend therefrom, under 35 U.S.C. Â§ 112, second paragraph, as indefinite. 3 We note, however, that claim 71 recites this limitation. See Br. 20 (Claims App.). 10 Appeal2018-000867 Application 12/832,967 Claim 90 As to claim 90, the Examiner determines it is unclear from the recitation in the preamble of "An application in a Newtonian fluid-flow of a step-formed Reverse conformal sub-boundary layer Vortex Generator" whether the claims are directed to an apparatus or to a method. Non-Final Act. 4 ( emphasis added). Additionally, claim 90 recites the limitations of ''further incorporating two streamwise-relative forward-facing step edge means" and ''further incorporating an essentially transverse to freestream flow aft-facing step edge base section." Br. 23 (Claims App. (emphasis added)). Similar to claim 54, the Examiner determines that these limitations seem to be method steps in an apparatus claim. Non-Final Act. 5. We understand Appellant's position is that claim 90 is directed to an apparatus, that is, the Reverse-CVG only. Br. 9. However, claim 90 recites that the vortex generator means is "attached onto said foil or aero/hydrodynamic surface." Consequently, it is unclear whether claim 90 is directed to a sub-combination (i.e., the Reverse-CVG only) or to a combination (i.e., the CVG and "a foil or aero/hydrodynamic surface" that the vortex generator means is attached onto). Also for claim 90, in the recitation, "thereby improving the dynamics of the wake flow of said foil or aero/hydrodynamic surface and reduces drag and/ or improves lift and/ or lift to drag ratios," it is unclear what the "improving" is relative to. See Br. 23 (Claims App. (emphasis added)). Claim 90 does not indicate which comparison(s) should be used with regard to the "improving" limitation. Consequently, this limitation is indefinite. 11 Appeal2018-000867 Application 12/832,967 For the foregoing reasons, and based on the record before us, we sustain the rejection of claim 90, and of dependent claims 91-95, under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Obviousness of Claims 54-95 Having determined all claims 54--95 are indefinite, we cannot sustain the rejections under 35 U.S.C. Â§ 103(a) of claims 54--69 and 71-95 as unpatentable over Weigel and Henne, or of claim 70 as unpatentable over Weigel, Henne, and Puskas, because in order to do so would require speculation on our part as to the scope of the claims. In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F .2d 859, 862---63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. Â§ 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). 4 DECISION We affirm the rejection of claims 54--95 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. We reverse the rejection of claims 54--69 and 71-95 under 35 U.S.C. Â§ 103(a) as unpatentable over Weigel and Henne. We reverse the rejection of claim 70 under 35 U.S.C. Â§ 103(a) as unpatentable over Weigel, Henne, and Puskas. 4 It should be understood, however, that our decision is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the references applied in the rejection. 12 Appeal2018-000867 Application 12/832,967 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 13