King Abdullah University of Science and Technology

Patent Trials and Appeals BoardAug 27, 2021

2021000401 (P.T.A.B. Aug. 27, 2021)

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. 14/766,346 08/06/2015 Christian CLAUDEL 0338-073-2/2013-002-03 5695 144099 7590 08/27/2021 Patent Portfolio Builders, PLLC 754 Warrenton Road Suite 113-314 Fredericksburg, VA 22406 EXAMINER PARK, HYUN D ART UNIT PAPER NUMBER 2865 NOTIFICATION DATE DELIVERY MODE 08/27/2021 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): Mailroom@ppblaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte CHRISTIAN CLAUDEL, KHALED N. SALAMA, VICTOR CALO, MEHDI GHOMMEM, AMRO ESLSHURAFA, and MOHAMMAD SHAQURA __________ Appeal 2021-000401 Application 14/766,346 Technology Center 2800 ___________ Before ADRIENE LEPIANE HANLON, MERRELL C. CASHION, JR., and JANE E. INGLESE, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision rejecting claims 1, 2, and 7–23. Claims 25–28 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as KING ABDULLAH UNIVERSITY OF SCIENCE AND TECHNOLOGY. Appeal Brief dated June 1, 2020 (“Appeal Br.”), at 2. Appeal 2021-000401 Application 14/766,346 2 We AFFIRM and enter a new ground of rejection under 37 C.F.R. § 41.50(b). The claimed invention is directed to a method for air flow sensing (claims 1, 2, and 7–10) and an airflow sensing system for measuring flight data (claims 11– 23). Representative claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. The limitation at issue is italicized. 1. A method for air flow sensing, comprising: measuring with a transducer two bending amplitudes associated with beam deflections of a cantilever and also measuring a torsional amplitude of the cantilever, wherein the two bending amplitudes are measured along two axes perpendicular to each other; wirelessly transferring information related to the two bending amplitudes and the torsional amplitude of the cantilever, from the transducer to a processing module; extracting information about air flow at the processing module; and determining one or more of an airspeed, an angle of attack, and a sideslip, from the extracted information, wherein the processing module uses calibration data and the two bending amplitudes and the torsional amplitude to determine the one or more of the airspeed, angle of attack and the sideslip. Appeal Br. 18. The Examiner maintains the following grounds of rejection on appeal: (1) claims 1, 2, and 7–23 under 35 U.S.C. § 112, first paragraph, based on the enablement requirement; Appeal 2021-000401 Application 14/766,346 3 (2) claims 1, 2, 7, 8, 11, 13, and 19–21 under 35 U.S.C. § 103(a) as unpatentable over Corda2 in view of Matsiev3 and Rowe;4 (3) claims 9, 10, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Corda in view of Matsiev and Rowe, and further in view of Tzidon;5 (4) claim 12 under 35 U.S.C. § 103(a) as unpatentable over Corda in view of Matsiev and Rowe, and further in view of Stanford;6 and (5) claims 14–18 under 35 U.S.C. § 103(a) as unpatentable over Corda in view of Matsiev and Rowe, and further in view of Syllaios.7 B. DISCUSSION 1. Rejection (1) The Examiner concludes that the following limitation recited in claim 1 is not enabled: “measuring with a transducer two bending amplitudes associated with beam deflections of a cantilever and also measuring a torsional amplitude of the cantilever, wherein the two bending amplitudes are measured along two axes perpendicular to each other.” Non-Final Act. 3 (emphasis added).8 Claim 11, the other independent claim on appeal, similarly recites, “a transducer connected to the cantilever and configured to detect two bending amplitudes and a torsional amplitude of deflections of the cantilever and produce an output based on the deflections, wherein the two bending amplitudes are 2 US 6,526,821 B1 to Corda et al., issued March 4, 2003 (“Corda”). 3 US 2005/0145019 A1 to Matsiev et al., published July 7, 2005 (“Matsiev”). 4 US 2009/0301176 A1 to Rowe et al., published December 10, 2009 (“Rowe”). 5 US 2012/0053916 A1 to Tzidon, published March 1, 2012 (“Tzidon”). 6 Bret Stanford & Philip Beran, Direct flutter and limit cycle computations of highly flexible wings for efficient analysis and optimization, 36 J. Fluids & Structures 111–123 (2013) (“Stanford”). 7 WO 00/39537 to Syllaios et al., published July 6, 2000 (“Syllaios”). 8 Non-Final Office Action dated January 16, 2020. Appeal 2021-000401 Application 14/766,346 4 detected along two axes perpendicular to each other.” Appeal Br. 19 (emphasis added). We interpret claims 1 and 11 as reciting that the same, single transducer measures the claimed two bending amplitudes and torsional amplitude. The Examiner finds that “the original disclosure does not disclose how to measure as claimed.” Non-Final Act. 3. The Examiner explains that “other than generically stating measuring the claimed amplitudes, the original disclosure does not further disclose any detail whatsoever as to how to measure as claimed or any structural details whatsoever to arrive at the claimed invention.” Ans. 39 (italics added); see also Non-Final Act. 4 (finding that the original disclosure does not describe how the claimed amplitudes of a single beam are measured). To support the enablement rejection on appeal, the Examiner directs our attention to Automotive Tech. Int’l, Inc. v. BMW of North America, Inc., 501 F.3d 1274 (Fed. Cir. 2007). Non-Final Act. 4. In that case, the Court found that one short paragraph and one figure relating to an electronic sensor did “little more than provide an overview of an electronic sensor without providing any details of how the electronic sensor operates.” Automotive Tech., 501 F.3d at 1282. The Examiner also finds that the Appellant has not provided any evidence establishing that measuring bending and torsional amplitudes using a transducer as claimed was well-known in the art at the time of the Appellant’s invention. Non- Final Act. 4 (citing In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991) (“§ 112 requires that, unless the information is well known in the art, the application itself must contain this information”)); see also Ans. 5. 9 Examiner’s Answer dated September 18, 2020. Appeal 2021-000401 Application 14/766,346 5 In response, the Appellant argues that “cantilever deflections, i.e., a force, are detected or measured by the transducer, which yields an output, i.e., an electrical or electronic signal. These cantilever deflections include the bending amplitudes and the torsional amplitudes.” Appeal Br. 5 (emphasis added). According to the Appellant, “‘different transduction principles can be used to generate the readout signal of the beam deflections such as capacitive and piezoelectric.’” Appeal Br. 6 (quoting Spec. 16, ll. 13–15) (emphasis added). The Appellant, however, does not direct us to any disclosure in the Specification describing how those transduction principles are used to measure10 the bending and torsional amplitudes11 as claimed. Likewise, the Appellant does not direct us to any evidence establishing that measuring bending and torsional amplitudes using a transducer as claimed was known in the art at the time of the Appellant’s invention. See Spec. 2, ll. 13–18 (disclosing that micro-cantilevers have been employed as force sensors but they do not sense flexural and torsional vibrations). Therefore, the rejection of claims 1, 2, and 7–23 under 35 U.S.C. § 112, first paragraph, based on the enablement requirement is sustained. 2. New ground of rejection The Examiner finds Corda discloses air flow sensing comprising, inter alia, the step of measuring with a transducer (1) bending amplitudes associated with 10 The Appellant does not define the term “measure” in the Specification. We interpret the term “measure” to mean “the dimensions, capacity, or amount of something ascertained by measuring.” Merriam-Webster, Definition of “measure,” merriam-webster.com/dictionary/measure (last visited August 6, 2021). 11 The Appellant contends that “the bending amplitude corresponds (in science) to the maximum displacement of the beam and the torsional amplitude corresponds to the maximum rotational angle of the beam, when experiencing a given air flow.” Appeal Br. 12. Appeal 2021-000401 Application 14/766,346 6 beam deflections of a cantilever and (2) a torsional amplitude of the cantilever as claimed. Non-Final Act. 5. The Examiner finds Rowe teaches measuring a bending amplitude along two axes perpendicular to each other as claimed. Non- Final Act. 6. More specifically, Corda discloses an aerodynamic probe comprising four strain gauges located on the upper and lower surfaces of an air foil member. Corda, col. 2, ll. 62–64; Corda Fig. 2. Corda discloses: At a zero angle of attack, the airfoil member will experience a bending stress as the force on the airfoil member is applied to the leading edge of the airfoil member. At a non-zero angle of attack, the aerodynamic force on the airfoil will produce both a bending stress and a torque at the base of the probe, due to the tendency for the airfoil member to twist and bend as a result of the uneven application of aerodynamic forces on the upper and lower surfaces. Corda, col. 3, ll. 13–20. Corda discloses that the strain gauges measure the stresses as a function of millivolts (mV) and output the signal in millivolts to a first conversion step. Corda, col. 3, ll. 20–22. There appears to be no dispute on this record that both Corda and Rowe measure a stress or force. See Appeal Br. 10 (contending that Corda measures stresses as a function of millivolts); Appeal Br. 11 (contending that Rowe measures a stress or force). Similarly, the Appellant explains that in the claimed invention, “cantilever deflections, i.e., a force, are detected or measured by the transducer, which yields an output, i.e., an electrical or electronic signal.” Appeal Br. 5 (emphasis added). However, according to the Appellant, one skilled in the art would not consider the force or stress in the applied art to be equivalent to the claimed amplitude because the bending amplitude corresponds (in science) to the maximum displacement of the beam and the torsional amplitude corresponds to Appeal 2021-000401 Application 14/766,346 7 the maximum rotational angle of the beam, when experiencing a given air flow. Appeal Br. 12 (emphasis added); see also Reply Br. 1112 (arguing that “[a] stress or force is different than an amplitude, e.g., amount of bending or twisting”). Because the claimed transducer measures force rather than the maximum displacement and the maximum rotational angle of the beam, it does not appear that the claimed transducer measures bending amplitudes and a torsional amplitude as recited in the claims on appeal. Significantly, 35 U.S.C. § 112, second paragraph, provides that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention” (emphasis added). In view of the foregoing, it is unclear what the Appellant regards as the invention. Complicating matters is the Appellant’s failure to disclose how the claimed transducer measures two bending amplitudes and a torsional amplitude of deflections of a cantilever as recited in claims 1 and 11. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (“[T]he definiteness of the [claim] language employed must be analyzed—not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art” (emphasis added).). Therefore, we enter a new ground of rejection under 35 U.S.C. § 112, second paragraph, based on the indefiniteness of claims 1, 2, and 7–23. 3. Rejections (2)–(5) In view of the indefiniteness of claims 1 and 11, the obviousness rejections of claims 1, 2, and 7–23 cannot be assessed. Therefore, the obviousness rejections 12 Reply Brief dated October 20, 2020. Appeal 2021-000401 Application 14/766,346 8 on appeal are not sustained. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing obviousness rejection because it was based on speculation as to the meaning of claim terms and assumptions as to claim scope). It is important to note that our reversal of the obviousness rejections on appeal is not based on the merits of the rejections but rather is a procedural reversal predicated on the indefiniteness of claims 1 and 11. C. DECISION The Examiner’s decision is affirmed. Additionally, a new ground of rejection under 37 C.F.R. § 41.50(b) is entered. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed13 New Ground 1, 2, 7–23 112, first paragraph Enablement 1, 2, 7–23 1, 2, 7, 8, 11, 13, 19–21 103(a) Corda, Matsiev, Rowe 1, 2, 7, 8, 11, 13, 19– 21 9, 10, 22, 23 103(a) Corda, Matsiev, Rowe, Tzidon 9, 10, 22, 23 12 103(a) Corda, Matsiev, Rowe, Stanford 12 14–18 103(a) Corda, Matsiev, Rowe, Syllaios 14–18 1, 2, 7–23 112, second paragraph Indefiniteness 1, 2, 7– 23 Overall Outcome 1, 2, 7–23 1, 2, 7– 23 13 As explained above, our reversal of the obviousness rejections on appeal is based on the indefiniteness of the claimed subject matter and not on the merits of the rejections. Appeal 2021-000401 Application 14/766,346 9 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides, “A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b)