Ex Parte RoachDownload PDFPatent Trial and Appeal BoardMar 31, 201612550847 (P.T.A.B. Mar. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/550,847 08/31/2009 James T. Roach 54549 7590 04/04/2016 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 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. PA-10249-U;67097-1238PUS1 1676 EXAMINER GUILL, RUSSELL L ART UNIT PAPER NUMBER 2123 NOTIFICATION DATE DELIVERY MODE 04/04/2016 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES T. ROACH 1 Appeal2014-005773 Application 12/550,847 Technology Center 2100 Before ERIC S. FRAHM, NATHAN A. ENGELS, and NORMAN H. BEAMER, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-13 and 15-21. Claim 14 is canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies United Technologies Corporation as the real party in interest. App. Br. 1. Appeal2014-005773 Application 12/550,847 APPELLANT'S INVENTION Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Method for creating a design of an airfoil, the airfoil to be made of a plurality of plies, said method comprising the steps of: inputting a spatial definition of an exterior of the airfoil; inputting a parameter of a ply of said plurality of plies to be used in said design; using a protocol for data describing each of said plurality of plies such that said data conforms automatically to steps used to create said design; and creating said plurality of plies according to said parameter, said protocol and said spatial definition to fill said airfoil. APPELLANT'S CONTENTIONS Appellant contends the Examiner erred in rejecting claims 1-13 and 15-21under35 U.S.C. § 103(a) as unpatentable over various combinations of G. Bir & P. Migliore, Preliminary Structural Design of Composite Blades for Two- and Three-blade Rotors, National Renewable Energy Lab., NREL/TP-500-31486 (Sept. 2004); K. Mahesh et al., Optimal Design of Composite Turbine Blade Using Genetic Algorithms; Adv. Composite Mater, Vol. 5, No. 2, pp. 87-98 (1996); B.G. Prakash, AUTOLAY-A Gui- based Design and Development Software for Laminated Composite Components, Computers & Graphics 23, pp. 95-110 (1999); R.K. Pandey & C.T. Sun, Mechanisms of Wrinkle Formation During the Processing of Composite Laminates, Composites Science and Tech., 59, pp. 405--417 (1999); and Alexander V. Bernstein et al., Fast Aerodynamic Model for Design Tech., West-End High Speed Flow Field Conference, Nov. 19-22, 2007. 2 Appeal2014-005773 Application 12/550,847 ANALYSIS The Examiner finds that Bir teaches each limitation of claim 1 except designing plies "to fill said airfoil," for which the Examiner cites Mahesh. Final Act. 3; accord Final Act. 9-11. Appellant does not contest the Examiner's specific findings of fact relating to the limitations of claim 1, but Appellant argues a person of ordinary skill would not have reason to combine the teachings of Bir and Mahesh. See App. Br. 2-3. Specifically, Appellant argues Bir describes the design of rotor blades for wind turbines that have thin walls, open cells, and are between 20 and 80 meters in length (Ans. Br. 2-3 (citing Bir 2-3, 5)), while Mahesh describes filled blades that are 25 centimeters long and designed to spin at speeds of 15,000 rpm (App. Br. 3 (citing Mahesh 94)). Because of those disparities, Appellant argues that Bir teaches away from the teachings of Mahesh (Reply Br. 2), and modifying Bir with the teachings of Mahesh would change the principle of operation (App. Br. 2) and render Bir unsatisfactory for its intended purpose (App. Br. 3). The Examiner responds that combining the teachings of Bir and Mahesh does not involve combining the specific structures disclosed in the references (Ans. 3), and a person of ordinary skill would not have viewed Bir's teachings regarding design methods and design parameters to specific structures (Ans. 5). Further, the Examiner notes that Bir describes computer-based design and creating a filled blade with Bir's computer program would not render the computer-based design method unsuitable for its intended purpose. Ans. 5. We agree with the Examiner. That Bir and Mahesh may primarily address the design of different types of airfoils or blades does not constitute 3 Appeal2014-005773 Application 12/550,847 a teaching away or make the cited combination improper. See Nat'! Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A finding that two inventions were designed to resolve different problems ... is insufficient to demonstrate that one invention teaches away from another."). In fact, contrary to Appellant's arguments, Bir and Mahesh are in the same field of endeavor as Appellant's invention (computer-based methods for designing rotor blades), and both teach known input parameters, protocols, and algorithms useful for computer-based rotor-blade design. Therefore, we agree with the Examiner that a person of ordinary skill would understand the teachings of Bir and Mahesh to be complimentary. See In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004) (finding that a toothbrush and a hair brush are within the same field of endeavor because of common structural similarities); see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one."). Further, we agree with the Examiner that a person of ordinary skill would understand Bir's computer-based methods for designing rotor blades could be readily adapted to include parameters and protocols for plies that fill the blade without undue experimentation, as evidenced by Mahesh. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (finding obviousness in the absence of evidence that a modification would be uniquely challenging or difficult for one of ordinary skill in the art); cf Spec. 17 ("[t ]he user [of computer-based design software] may also choose or experiment"). Accordingly, we sustain the Examiner's rejection of claim 1, as well as claims 3-13 and 15-21, which are not argued independently. 4 Appeal2014-005773 Application 12/550,847 We are also unpersuaded by Appellant's argument that Prakash "only refers to plies offset according to the 'spatial definition' and not 'offset according to the parameter, the protocol and the spatial definition' as claimed" in claim 2. App. Br. 4; accord Reply Br. 2-3. Appellant offers no evidence or analysis beyond simply citing the claim language and stating that it is not met. See 37 C.F.R. § 41.37(c)(l)(iv); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Further, the Examiner finds, and we agree, that the combination of Bir, Mahesh, and Prakash teaches or suggests claim 2 (see Final Act. 12-13), and Appellant's arguments do not substantively address the Examiner's findings. Accordingly, we are unpersuaded of error in the Examiner's rejection of claim 2. Having considered each of Appellant's arguments in light of the Examiner's rejection and the evidence of record, we find Appellant's arguments unpersuasive and agree with the Examiner. We adopt as our own the Examiner's findings, conclusions, and reasons consistent with the above. Accordingly, we sustain the Examiner's rejections of claims 1-13 and 15- 21. DECISION For the above reasons, the Examiner's rejections of claims 1-13 and 15-21 are affirmed. 5 Appeal2014-005773 Application 12/550,847 No time period for taking any subsequent action in connection with this appeal may be extended. 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation