Alan B. Minick et al.

Patent Trials and Appeals Board

Oct 9, 2019

14629558 - (D) (P.T.A.B. Oct. 9, 2019)

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.
14/629,558 02/24/2015 Alan B. Minick 67097-1491PUS2;
51910US02
4806
54549 7590 10/09/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
BURGESS, MARC R
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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 ALAN B. MINICK and
WILLIAM T. COUSINS

Appeal 2019-001438
Application 14/629,558
Technology Center 3600
____________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
MICHAEL L. WOODS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6, 7, and 9–15. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “United
Technologies Corporation.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to boundary layer control using
ionic winds.” Spec. ¶ 2. Method claim 1 is the sole independent claim, is
illustrative of the claims on appeal and is reproduced below.
1. A method for controlling a boundary layer over a vehicle
surface comprising:
generating an ionic wind using a network of emitters and
receivers wherein the vehicle surface is an aircraft wing having
a leading edge and the network of emitters and receivers
include a plurality of emitters and a plurality of receivers with
all of the plurality of receivers located on only one side of the
aircraft wing and a first emitter is located upstream of the
leading edge of the wing;
propelling an external fluid with the ionic wind over the
vehicle surface; and
controlling the strength of the ionic wind to adjust said
boundary layer thickness.
EVIDENCE
Donald US 3,446,464 May 27, 1969
Schwimley et al. US 2010/0133386 A1 June 3, 2010
REJECTIONS
Claims 1, 3, 4, 6, 7, and 9–15 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Donald.
Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Donald and Schwimley.
Claims 1–4, 6, 7, and 9–15 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Schwimley and Donald.
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ANALYSIS
The rejection of claims 1, 3, 4, 6, 7, and 9–15
as unpatentable over Donald
Appellant argues all these claims (i.e., claims 1, 3, 4, 6, 7, and 9–15)
together. See Appeal Br. 2–6. We select independent claim 1 for review,
with the remaining claims (i.e., claims 3, 4, 6, 7, and 9–15) standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1 recites “generating an ionic wind.” The Examiner relies on
Donald for such teaching. See Final Act. 2. Appellant disagrees contending,
“Donald utilizes electrophoresis and dielectrophoresis as a forcing function.”
Appeal Br. 2 (referencing Donald 1:63–2:5); see also Reply Br. 1, 2. The
Examiner responds “[t]his difference is semantics” and that “moving air by
electrophoresis is the same process as ‘ionic wind.’” Ans. 7–8; see also
Advisory Action dated July 10, 2018 (“Advisory Act.”).
Appellant’s Specification provides some guidance as to the scope of
“ionic wind” by stating “the system 10 may be utilized to generate a
directed ion field, referred to herein as ionic wind 100.” Spec. ¶ 29
(emphasis added). Appellant’s Specification further describes “generating
an ionic wind using a network of emitters and receivers” and, more
specifically, “[t]he ionic wind 100 is generated by a current through an
anode (or cathode) 102 of each emitter and through a cathode (or anode) 104
of each receiver.” Spec. ¶¶ 5, 29. Appellant explains, “[a]n external fluid is
propelled with the ionic wind over the vehicle surface” and that ionic wind
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“forc[es] the fluid in a direction in opposition to the direction of motion of
the surface 14.” Spec. ¶¶ 5, 29.2
The Examiner states, “[t]he entirety of the appellant’s argument is that
Donald describes its operating principle as ‘electrophoresis,’ while the
appellant has labeled their process ‘ionic wind.’” Ans. 7; see also Advisory
Act. The Examiner continues, “[w]hile the appellant believes this is a
crucial difference, this document [Examiner’s Answer] will attempt to
explain why these are two different terms which describe the same process.”
Ans. 7; see also Advisory Act. In support thereof, the Examiner references
“Winefordner US 6,008,496” and quotes a passage therefrom stating, “[t]he
idea is based on the effect of ionic winds for gases (similar to electrophoresis
for liquids).” Ans. 10, Advisory Act. (both quoting Winefordner 15:30–31).
Appellant seeks to distinguish Winefordner by noting the association
of electrophoresis with liquids and that, in contrast, “Donald does not
disclose using electrophoresis or dielectrophoresis in liquids.” Appeal Br. 4,
Reply Br. 3. Appellant is silent regarding Donald’s disclosure of “applying
an electric field to the air” but yet seizes upon Donald’s designation of the
electrical effect as “respectively electrophoresis and dielectrophoresis” in an
attempt to distinguish Donald. Donald 1:13, 1:67–68; see also Appeal Br. 4
(“Donald is not used in liquids, but still mentions electrophoresis and

2 We note Appellant’s Specification is directed primarily to “aircraft” but
also references “other vehicles” as well. Spec. ¶¶ 3, 25 (“It should be
understood that the vehicle 12 may be a portion of, or the entirety of a
conventional or lighter than air aircraft as well as other vehicles such as land
vehicles.”). This is consistent with Appellant’s repeated reference
throughout the Specification to “fluid,” and the total lack of any distinction
therein between a gas and a liquid. See Spec. ¶¶ 5–7, 26, 29, and 32.
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dielectrophoresis.”). As is well-known, a patentee (i.e., Donald) can be their
own lexicographer even though others (such as Winefordner and perhaps
Appellant as well) would perhaps better understand Donald’s process (which
is applied to air) as “ionic wind,” and not as “electrophoresis and
dielectrophoresis.” Hence, there is a basis for the Examiner’s “semantics”
statement above and that, “[i]f anything, ionic wind can be a label given to
the process of electrophoresis when used to move air particles.” Ans. 7;
Advisory Act. The Examiner’s summation is also consistent with
Appellant’s Specification which states, “the system 10 may be utilized to
generate a directed ion field, referred to herein as ionic wind 100.” Spec.
¶ 29.
Appellant argues that the Examiner “conclude[d] that electrophoresis
and ionic wind are the same process. There is no support for making such a
conclusion.” Reply Br. 4. To be clear, the Examiner previously stated,
“[w]hile the specification gives no definitions for either, ‘ionic wind’ and
‘electrophoresis’ are essentially the same process.” Ans. 7. The Examiner’s
statement is consistent with Winefordner’s statement above, i.e., “[t]he idea
is based on the effect of ionic winds for gases (similar to electrophoresis for
liquids).” Winefordner 15:30–31 (emphasis added). Consequently,
Appellant’s contention that “[t]here is no support for making such a
conclusion” is not persuasive.
To further bolster the Examiner’s position, the Examiner also
references “Beal US 4,924,937” (directed to “gas flow” (Beal 1:11)) and
quotes therefrom, “ESC is a high voltage, low current, non-uniform, high
electric field stress, electrostatic gas flow phenomena, associated with
needle-like emitters which project a charged jet of ionic wind (negative or
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positive polarity) to a spot being cooled (opposite polarity).” Ans. 11,
Advisory Act. (both quoting Beal 1:37–41); see also Reply Br. 4. The
Examiner further references Beal which states, “[t]his non-uniform force
produces motion of air molecules by the combined effects of
dielectrophoresis (translational motion of neutral matter caused by
polarization effects in a non-uniform electric field), and electrophoresis (the
electric field force upon a charged body).” Ans. 11, Advisory Act. (both
quoting Beal 1:51–56); see also Reply Br. 4.
Appellant again challenges the Examiner’s conclusion “that ionic
wind, dielectrophoresis, and electrophoresis are the same.” Reply Br. 5.
However, as indicated above, Beal also appears to interrelate or comingle
the two processes. Hence, Appellant’s argument is still not persuasive of
Examiner error.
Appellant further argues, “Beal discusses motion of air particles in
relation to dielectrophoresis and electrophoresis and not with respect to
creating an ‘ionic wind.’” Reply Br. 5. Again, it is important to look
beyond whatever lexicographic labels have been applied by the various
parties to the disclosed processes.3 In doing so, we cannot help but notice
the similarity of the above discussion in Appellant’s Specification with that
disclosed in Winefordner, Beal, and, ultimately, Donald (“The force exerted
on air particles to move them from a position in front of the leading edge to
a position rearwardly of the leading edge is attributable to one or both of
electrical effects designated respectively electrophoresis and
dielectrophoresis.” (Donald 1:64–68)).

3 We recall such well-known phrases as “a rose is a rose is a rose” and “a
rose by any other name would smell as sweet.”
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Appellant further submitted a Declaration by one of the inventors, Mr.
William T. Cousins, (hereinafter “Declaration”) addressing the difference
between the claimed “ionic wind” and Donald’s “designated”
“electrophoresis and dielectrophoresis.” The Declaration states that the
process between the two operations are “significantly different” because
“electrophoresis and dielectrophoresis are not capable of ‘generating an
ionic wind’ but instead generat[e] a forcing function through low voltage
differentials which does not result in ionization.” Declaration 1–2. This
distinction based on “low voltage differentials” that “does not result in
ionization” appears to completely disregard Donald’s express teachings
involving both low and high voltages. See also Reply Br. 2. For example,
Donald explains that the disclosed difference in electric charge “effect is
observable even with relatively low voltage gradients” but also that “[a]
highly divergent field and relatively high field strength, for example 100 v.
or more per centimeter, are required in order to produce effective movement
of the air particles.” Donald 2:3–4, 2:13–16; see also id. at 2:68–70 (“a
voltage generator of the electronic type in which a high voltage alternating
current is produced and then rectified”).
These high and low voltage teachings in Donald expressly contradict
the assertion made in the Declaration that Donald’s “forcing function in
electrophoresis and dielectrophoresis is generated through creating relatively
low voltage differentials.” Declaration 1. Thus, Appellant’s Declaration is
undermined by Donald itself, and Appellant has not provided any further
evidence in support of the asserted differences. Additionally, Appellant’s
proffered distinction is not otherwise self-evident from the record, including
that which one skilled in the art would understand as evidenced by the
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teachings of Winefordner and Beal.4 Consequently, and based on the record
presented, we are not persuaded of Examiner error. We sustain the
Examiner’s rejection of claims 1, 3, 4, 6, 7, and 9–15 as being obvious over
Donald.
The rejection of claim 2
as unpatentable over Donald and Schwimley
Appellant does not present a separate argument for claim 2, but
instead relies on “the reasons discussed above.” Appeal Br. 6. In short,
Appellant contends, “[t]he addition of Schwimley fails to resolve the above
noted deficiencies.” Appeal Br. 6. As indicated above, we are not aware of
any deficiencies in need of correction. Accordingly, we likewise sustain the
Examiner’s rejection of claim 2 as being obvious over Donald and
Schwimley.
The rejection of claims 1–4, 6, 7, and 9–15
as unpatentable over Schwimley and Donald
In response to this rejection (of all the claims on appeal), Appellant
argues the rejected claims as a group, and does not present any argument for
any individual claim. See Appeal Br. 6–7. We select claim 1 for review,
with the remaining claims (i.e., claims 2–4, 6, 7, and 9–15) standing or
falling with claim 1.
Claim 1 includes the limitation, “a first emitter is located upstream of
the leading edge of the wing.” The Examiner primarily relies on Schwimley

4 The Examiner also appears puzzled asking “How can the processes be said
to be ‘significantly different’ when they employ the same setup (electrodes
on an aircraft wing), which uses the same process (ionizing air particles), to
accomplish the same function (moving the air particles over the wing), for
the same purpose (reducing aerodynamic drag)?” Ans. 9.
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for many of the recited limitations. Final Act. 5–6. The Examiner also
relies on Donald for many of these same limitations, but specifically relies
on Donald for this “upstream” limitation. See Final Act. 6–7. Appellant
disagrees with the Examiner’s combination of Schwimley with Donald
“because Donald does not disclose generating an ionic wind for the reasons
discussed above.” Appeal Br. 6. However, even presuming arguendo the
accuracy of Appellant’s argument regarding Donald (which we do not, see
supra), the Examiner primarily relies on Schwimley for disclosing the
generation of ionic wind and notes, “the appellant does not contest that
Schwimley generates ‘ionic wind.’” Ans. 12. Instead, Appellant contends
that because of Donald’s ionic wind defect noted above, “the rejection fails
to establish a prima facie case of obviousness.” Appeal Br. 6. We are not
persuaded by this argument due to the Examiner’s primary reliance on
Schwimley, and the Examiner’s secondary reliance on Donald for the recited
“upstream” limitation (regardless of whether or not Donald likewise teaches
the generation of “ionic wind”).
Alternatively, Appellant challenges the Examiner’s reasoning for
combining Schwimley with Donald’s upstream electrode location. See
Appeal Br. 6. Appellant contends that if one of Schwimley’s electrodes was
relocated as taught by Donald, “the electrode would not cover a greater
portion of the wing if the electrode was located upstream of the leading edge
of the wind as compared to at the leading edge.” Appeal Br. 6 (emphasis
added); see also Reply Br. 6. To be clear, Schwimley does not exactly teach
an electrode location “at the leading edge” as argued by Appellant, instead,
Schwimley teaches placement “along the leading edges” or “adjacent
leading edges” of the vehicle. Schwimley ¶¶ 17, 21. Hence, while such
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language may indicate that Schwimley’s electrodes are actually located “at
the leading edge” as Appellant argues, Donald leaves no doubt that
electrodes may also be located “upstream of the leading edge” as recited.
See Donald Fig. 1 and 2:34–36 (“the forward electrode 1 comprises a metal
plate which projects forwardly of the leading edge 5C and is parallel to the
edge”). Consequently, we are not persuaded by Appellant’s argument that
the Examiner erred in making this rejection.
In summation, and based on the record presented, we sustain the
Examiner’s rejection of claims 1–4, 6, 7, and 9–15 as unpatentable over
Schwimley and Donald.
CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
1, 3, 4, 6, 7, and
9–15
35 U.S.C. § 103(a)
over Donald 
1, 3, 4, 6, 7,
and 9–15

2 35 U.S.C. § 103(a)
over Donald and
Schwimley  
2
1–4, 6, 7, and 9–
15
35 U.S.C. § 103(a)
over Schwimley and
Donald
1–4, 6, 7, and
9–15

Overall Outcome 1–4, 6, 7, and
9–15

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED