Ex Parte McGrath

Patent Trial and Appeal Board

Oct 27, 2016

12151178 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/151,178
Alan McGrath
Apt. 201B
7590
4400 West Lake Ave.
Glenview, IL 60026
05/05/2008
10/28/2016
FIRST NAMED INVENTOR
Alan Thomas McGrath
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.
prose 9557
EXAMINER
SUAREZ, ERNESTO A
ART UNIT PAPER NUMBER
3653
MAILDATE DELIVERY MODE
10/28/2016 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 ALAN THOMAS MCGRATH
Appeal2014-007659
Application 12/151,178
Technology Center 3600
Before JENNIFER D. BAHR, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alan Thomas McGrath (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 6-16 under 35 U.S.C.
§ 103(a) as unpatentable over Tillotson (US 7,365,674 B2, iss. Apr. 29,
2008) and Lacaze (US 2007/0260366 Al, pub. Nov. 8, 2007). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-007659
Application 12/151,178
THE CLAIMED SUBJECT MATTER
Claim 11, reproduced below, is illustrative of the claimed subject
matter.
11. A method of controlling the flight of an aircraft in windy and
current icing potential conditions, the method comprising:
(a) releasing a plurality of dropsonde[s] which measure
meteorological values of the atmosphere;
(b) collecting meteorology data by the dropsondes;
( c) transmitting the data from the dropsondes to the
plane;
( d) calculating wind vectors and current icing potential
during flight for comparison to pre-determined values in a table
for determining whether unfavorable wind conditions or current
icing potential exist;
( e) when wind or current icing potential values exceeds
a selected value in the table indicating unfavorable winds or
current icing potential conditions, automatically operating flight
control devices on the aircraft so as to minimize the effects of
the wind or current icing potential conditions on the flight of the
aircraft.
DISCUSSION
Appellant argues for patentability of claims 6-16 subject to the
rejection under 35 U.S.C. § 103(a) as a group. Br. 5-14. We select claim 11
as representative of this group, and claims 6-10 and 12-16 stand or fall with
claim 11. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Tillotson discloses a method of controlling
the flight of an aircraft in windy and current icing potential conditions, as
called for in claim 11, except that Tillotson
does not explicitly recite calculating the wind vectors and current
icing potential for comparison to predetermined values in a table
2
Appeal2014-007659
Application 12/151,178
for determining whether an unfavorable wind condition or an
unfavorable current icing potential exist; or when wind or current
icing potential values exceeds a selected value in the table
indicating unfavorable winds or current icing potential
conditions, automatically operating flight control devices on the
aircraft so as to minimize the effects of the wind or current icing
potential conditions on the flight of the aircraft.
Final Act. 5-6.
The Examiner determined:
In view of Lacaze' s teaching of the application of an aircraft
using calculated values related to meteorological values and
specific aircraft characteristic (e.g. the mass etc), comparing
them to predefined values to see if they exceed a selected value,
determining whether unfavorable conditions for the aircraft exist
based on the comparison and further automatically controlling
the aircraft in accordance with a result of the comparison, it
would have been obvious to one of ordinary skill in the art at the
time of the invention to modify Tillotson' s disclosed method
such that the calculated wind vectors and current icing potential
are used for comparison to pre-determined values in a table for
determining whether an unfavorable wind condition or an
unfavorable current icing potential exist and when the wind or
current icing potential values exceed a selected value in the table
indicating unfavorable winds or current icing potential
conditions, automatically operating flight control devices on the
aircraft so as to minimize the effects of the wind or current icing
potential conditions on the flight of the aircraft for the purpose
of increasing automation and utility in the method by scaling the
calculated wind vectors and current icing potential with aircraft
specific characteristics such as mass, to predict the performance
of the aircraft, and provide an automated means for dealing with
adverse conditions, should they arise.
Id. at 7-8.
Appellant does not contest either the Examiner's findings with respect
to the teachings of Tillotson and Lacaze or the Examiner's determination
that the subject matter of claim 11 would have been obvious in view of the
3
Appeal2014-007659
Application 12/151,178
combined teachings of Tillotson and Lacaze. Br. 5-14. Rather, Appellant
seeks to disqualify Lacaze as prior art to Appellant's invention by relying on
two affidavits1 purporting to establish conception of the claimed invention
prior to the effective date of Lacaze (i.e., March 29, 2007, the date on which
the Lacaze application was filed) coupled with due diligence from prior to
March 29, 2007 to May 6, 2007 (i.e., the filing date of the provisional
application to which the present application claims benefit). See Final
Act. 2; Br. 5---6, 14.
After reviewing the affidavits, including the attachments thereto, the
Examiner determined that they are ineffective to disqualify Lacaze as prior
art. Final Act. 9. In particular, the Examiner identified two deficiencies in
the submitted evidence, as set forth below. Id. at 9-11.
First, according to the Examiner, the submitted evidence is sufficient
to establish conception of parts of the claimed invention, but insufficient to
establish conception of the entirety of the claimed invention. Id. at 9.
Specifically, the Examiner determined that "[t]here is insufficient evidence
to establish conception of' the aspect of claim 11 directed to
Id.
calculating current icing potential during flight for comparison
to predetermined values in a table for determining whether
current icing potential exists; when current icing potential values
exceed a selected value in the table indicating current icing
potential conditions, operating flight control devices so as to
minimize the effects of the current icing potential conditions on
the flight of the aircraft.
1 Br. B084-B090 (Affidavit of Alan McGrath dated Dec. 12, 2011), Bl 15-
B186 (Affidavit of Alan McGrath dated Jan. 14, 2013).
4
Appeal2014-007659
Application 12/151,178
Second, the Examiner determined that "[t]he submitted evidence ...
is insufficient to establish diligence from a date prior to the date of reduction
to practice (March 29, 2007) of the Lacaze reference to either a constructive
reduction to practice (May 6, 2007) or an actual reduction to practice." Id. at
10.
Appellant does not contest the Examiner's determination that the
submitted evidence is insufficient to establish conception of the invention of
claim 11 as a whole. See Br. 5 ("According to the Examiner, I didn't
establish an early enough date of conception for the 'icing potential'
elements of the above claims. Those elements are parts of items ( d) and ( e)
of claims 6 and 11. I am not appealing that rejection (B196 and B197).").
Rather, the only issue identified by Appellant for our review is "whether the
evidence supports that [Appellant] established reasonable diligence through
affirmative actions or excuses to establish an earlier invention date for some
of the claims of [Appellant's] invention." Id.
In order to disqualify a reference as prior art by establishing invention
of the subject matter of a rejected claim prior to the effective date of the
reference on which the rejection is based:
The showing of facts for an oath or declaration ... shall be such,
in character and weight, as to establish reduction to practice prior
to the effective date of the reference, or conception of the
invention prior to the effective date of the reference coupled with
due diligence from prior to said date to a subsequent reduction
to practice or to the filing of the application.
37 C.F.R. § 1.131(a), (b) (emphasis added).
Appellant does not allege, and has not submitted any evidence to
establish, reduction to practice of the claimed invention prior to the effective
date of the Lacaze reference. See Br. 5-14. Thus, Appellant seeks to show
5
Appeal2014-007659
Application 12/151,178
prior invention by establishing conception of the invention prior to the
effective date of the Lacaze reference coupled with due diligence from prior
to said date to the filing of the application (i.e., the date of the provisional
application of which the present application claims benefit). See Br. 14
(asserting error in the Examiner's determination that the evidence is
insufficient to establish diligence from a date prior to the filing date of the
Lacaze reference "to the constructive reduction to practice (May 6, 2007)."
In order to be effective to antedate and disqualify Lacaze as prior art,
Appellant's evidence must establish both conception of the claimed
invention prior to the effective date of Lacaze and due diligence from prior
to the effective date of Lacaze to the filing date of the present application.
In other words, a deficiency in showing either conception or due diligence
renders Appellant's submitted evidence ineffective to antedate and
disqualify Lacaze as prior art. Moreover, in order to establish conception of
the claimed invention, the affidavit, "in addition to showing what the
reference shows," must also establish "possession of either the whole
invention claimed or something falling within the claim, in the sense that the
claim as a whole reads on it." In re Tanczyn, 347 F.2d 830, 833 (CCPA
1965).
As already noted above, the Examiner has determined that Appellant's
submitted evidence is deficient in regard to both the conception showing and
the due diligence showing. Final Act. 9-10. Thus, in order to show error in
the Examiner's determination that Appellant's submitted evidence is
insufficient to antedate and disqualify Lacaze as prior art, it is not enough
for Appellant to identify error only in the Examiner's determination that the
evidence is insufficient to establish the requisite due diligence, even
6
Appeal2014-007659
Application 12/151,178
assuming, arguendo, that Appellant is correct on this point. Appellant must
also identify error in the Examiner's determination that Appellant's
submitted evidence is insufficient to establish conception of the claimed
invention as a whole. As Appellant does not contest the Examiner's
determination that Appellant's submitted evidence is insufficient to establish
conception of the invention of claim 11 as a whole, Appellant fails to
apprise us of error in the Examiner's determination that Appellant's
submitted evidence is insufficient to antedate and disqualify Lacaze as prior
art against claim 11. Consequently, Appellant fails to apprise us of error in
the rejection of claim 11. Accordingly, we sustain the rejection of claim 11,
as well as claims 6-10 and 12-16, which fall with claim 11, under 35 U.S.C.
§ 103(a) as unpatentable over Tillotson and Lacaze.
DECISION
The Examiner's decision rejecting claims 6-16 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
7