Safran Landing Systems UK Limited

Patent Trials and Appeals BoardApr 15, 2021

2020003728 (P.T.A.B. Apr. 15, 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. 15/400,105 01/06/2017 Robert Kyle Schmidt WRS-101US 3491 23122 7590 04/15/2021 RATNERPRESTIA 2200 Renaissance Blvd Suite 350 King of Prussia, PA 19406 EXAMINER AUNG, SAN M ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 04/15/2021 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): PCorrespondence@ratnerprestia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ROBERT KYLE SCHMIDT ________________ Appeal 2020-003728 Application 15/400,105 Technology Center 3600 _________________ Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 filed a Request for Rehearing (“Req. Reh’g”) March 12, 2021, of the Decision on Appeal mailed January 19, 2021 (“Decision”). This Decision affirmed the Examiner’s rejections of claims 1, 2, 4, 6–9, and 14–18 as being unpatentable under 35 U.S.C. § 103.2 See Decision 7. Appellant contends “that the Decision misapprehends or overlooks points 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “Safran Landing Systems UK, Ltd.” as the real party in interest. Appeal Br. 1. 2 Claims 1, 2, 6–9, and 14–18 were rejected in view of Luce and Ernestus while claim 4 was rejected in view of Luce, Ernestus, and Sato. See Final Act. 3, 7; see also Decision 2, 3. Appeal 2020-003728 Application 15/400,105 2 that bear reconsideration, and the Examiner’s rejections should be reversed.” Req. Reh’g 1. Upon consideration of Appellant’s Request, while we modify our Decision to correct a misstatement, we do not modify the outcome of the Decision (i.e., we do not reverse the Examiner’s rejections of the above claims). REQUIREMENTS OF A REQUEST FOR REHEARING A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the [Patent Trial and Appeal Board, hereinafter ‘Board’].” See 37 C.F.R. § 41.52(a)(1). This section also states that arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs “are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” In addition, a request for rehearing is not an opportunity to express disagreement with a decision without setting forth points believed to have been misapprehended or overlooked by the Board in rendering its Decision. The proper course for an Appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. ANALYSIS Appellant initially addresses “the bottom of page 3” of the Decision where the Board “responds to the Appellant’s argument that ‘Ernestus does not describe the use of burnished titanium for a bearing counter face.’” Req. Reh’g 1. In the Decision, the Board stated, “Ernestus was not relied on for teaching such usage, Luce was.” Decision 3 (emphasis added). Appellant Appeal 2020-003728 Application 15/400,105 3 contends, in this Request, that “[t]his is not correct,” that Luce “does not teach a burnished counter face,” and that “Luce does not mention burnishing the titanium cylinder in any way.” Req. Reh’g 1. Appellant is correct. Luce was not relied on by the Examiner as teaching the advantage of burnished titanium, Ernestus was. See Decision 3; Final Act. 4; see also Ernestus 11:1–10, 11:70–71, 13:2–3 (discussing the improvements achieved by burnishing inner and outer surfaces of a titanium work blank). Luce was relied on by the Examiner for teaching the use of titanium as a bearing surface. See Final Act. 3, 4. Hence, the correct response to Appellant’s contention that “Ernestus does not describe the use of burnished titanium for a bearing counter face” (Req. Reh’g 1) is that, indeed, “Ernestus was not relied on for teaching such usage” (Decision 3), the combination of Ernestus and Luce was. The Decision is to be modified accordingly, but such modification does not result in any change in the outcome of the Decision. In the Request, Appellant further contends that “The Decision Improperly Relies on Appellant’s Claims to Support the Rationale for Combining the Art.” Req. Reh’g 1. Appellant references the Decision’s discussion regarding the “lack of dimensional constraints in Appellant’s claims” as support. Req. Reh’g 1 (referencing Decision 4, 5). Indeed, the Decision agreed with the Examiner noting “that ‘claim 1 did not recite the size of the shock strut’ and hence ‘did not require any size of the piston and hollow cylinder.’” Decision 4 (referencing Ans. 4). However, Appellant does not make clear how this agreement with the Examiner’s statement impacts, or renders improper, the Examiner’s reason to combine Luce and Ernestus. Appeal 2020-003728 Application 15/400,105 4 As stated in the Decision, the Examiner’s reason to combine these references is “that it would have been obvious ‘to utilize the cold worked titanium compris[ing] burnished titanium as taught by Ernestus in order to provide greatly improved surface of the work piece.’” Decision 3 (referencing Final Act. 4). As further expressed in the Decision, “Appellant does not explain why a skilled person would not desire to employ the teachings of Ernestus ‘in order to provide greatly improved surface of the work piece’ as expressed by the Examiner.” Decision 4 (emphasis in original). Thus, Appellant’s current contention that the Examiner improperly relied on Appellant’s claims for this reason does not answer that question posed above. Nor does Appellant’s contention provide a reason to avoid improving the surface of the work piece as expressed by the Examiner above. In short, Appellant’s contentions regarding “hindsight reconstruction” (Req. Reh’g 2) are not indicative that the Examiner “Improperly Relie[d] on Appellant’s Claims,” or that the Board misapprehended or overlooked (or was silent with respect to) the Examiner’s stated “Rationale for Combining the Art” as asserted by Appellant. Req. Reh’g 1. Appellant also contends, “The Decision Improperly Assumes the Applicability of Ernestus to a Shock Strut.” Req. Reh’g 2. To be clear, the Examiner did not rely on Ernestus for teaching a shock strut; the Examiner relied on Luce for this. See Luce Title; Final Act. 3. As discussed above, the Examiner relied on Ernestus for improving titanium via a burnishing operation. See Decision 3; Final Act. 4 (citations omitted). Appellant does not dispute “that Ernestus starts with a thick blank to form the final Appeal 2020-003728 Application 15/400,105 5 structure,” and that Ernestus transforms the blank into “a thin-walled structure having properties that are improved for . . . high speed flight.” Req. Reh’g 2. However, Appellant contends that “Ernestus fails to teach that the same benefits could be obtained without converting the thick blank into a thin-walled tube.” Req. Reh’g 2. Thus, “since the benefits are only taught in the context of a thin-walled tube, the skilled artisan would not be interested in trying to obtain those benefits in the robust structural application required by Luce’s landing gear.” Req. Reh’g 2. It was in this context that the Examiner noted “that ‘claim 1 did not recite the size of the shock strut’ and hence ‘did not require any size of the piston and hollow cylinder.’” Decision 4 (referencing Ans. 4). Indeed, Ernestus teaches that a “relatively thick work blank is gradually reduced in thickness,” but provides no dimension of either. Ernestus 1:47–48. Further, Appellant does not explain how the benefit of such working only arises upon final attainment of a certain thinness, or that a less-thinned work piece would fail to have any improvement imparted to it at all. For these reasons, and Appellant’s focus on the size of Ernestus’ work piece, we agreed with the Examiner’s statement as to what claim 1 recites, and asked why a skilled person would not desire to improve the “‘surface of the work piece’ as expressed by the Examiner.” Decision 4 (referencing Final Act. 4). In short, Appellant’s contentions above distinguishing between thick and thin, such that Ernestus’s teachings of improving titanium would not be suitable for “the robust structural application required by Luce’s landing gear” (Req. Reh’g 2), are not indicative that the Board misapprehended or overlooked such arguments. Appeal 2020-003728 Application 15/400,105 6 Appellant additionally contends that Luce and Ernestus are non- analogous art, and disputes the Examiner’s conclusions to the contrary, as well as our agreement with the Examiner in this matter. See Req. Reh’g 3, 4. Appellant challenges both prongs of the analogous art test (i.e., same filed of endeavor and pertinence to a particular problem), but Appellant’s present contentions are not persuasive that our discussion in the Decision, or the Examiner’s analysis on this topic, were in error. See Decision 6; Ans. 7, 8. This is because both cited references relate to the use of titanium in the field of aircraft, and they each particularly discuss titanium’s employment when desiring high wear or abrasion resistance properties, as well as improved strength. See Luce Title, ¶ 24; Ernestus 1:31–40, 8:71–75, 11:1– 10. Accordingly, Appellant’s contentions are not indicative that the Board misapprehended or overlooked this argument. DECISION Accordingly, Appellant’s Request for Rehearing has been granted to the extent that the Board reconsidered its Decision in light of the statements made in this Request, but is denied with respect to the Board altering the outcome of the Decision which affirmed the Examiner’s rejections of these claims. Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 2, 6–9, 14–18 103 Luce, Ernestus 1, 2, 6–9, 14–18 4 103 Luce, Ernestus, Sato 4 Appeal 2020-003728 Application 15/400,105 7 Claims 35 U.S.C. § Reference(s)/Basis Denied Granted Overall Outcome 1, 2, 4, 6– 9, 14–18 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 6–9, 14–18 103 Luce, Ernestus 1, 2, 6–9, 14–18 4 103 Luce, Ernestus, Sato 4 Overall Outcome 1, 2, 4, 6– 9, 14–18 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). DENIED