Ex Parte Roach

Patent Trial and Appeal Board

Mar 31, 2016

12550847 (P.T.A.B. Mar. 31, 2016)

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.
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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
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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.
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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.
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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
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