Andrei Smirnov et al.

Patent Trials and Appeals Board

Jun 14, 2021

2021000215 (P.T.A.B. Jun. 14, 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.
15/313,085 11/21/2016 Andrei Vladimirovitch Smirnov 5096
66857 7590 06/14/2021
ANDREI V. SMIRNOV
10406 Stone Ridge Ln
Vienna, VA 22182
EXAMINER
GILBERT, WILLIAM V
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
06/14/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREI VLADIMIROVITCH SMIRNOV and
MICHAEL ANDREW SMIRNOFF

Appeal 2021-000215
Application 15/313,085
Technology Center 3600
Before CARL M. DEFRANCO, BRANDON J. WARNER, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 proceeding pro se, appeals
from the Examiner’s decision to reject claim 5. See, generally, Second
Appeal Br.2 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(a). Appellant identifies the inventors as the real party in interest.
Second Appeal Br. 1.
2 Our reference to “Second Appeal Br.” is to the appeal brief filed on April
6, 2019.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The Specification describes the invention as relating “to the field of
unmanned flying vehicles in general and micro-areal [sic] vehicles in
particular.” Spec. ¶ 1. Claim 5 is the sole claim pending and is reproduced,
below:
5. A method of enabling autonomous flight capability for
a small aerial vehicle, comprising:
(a) providing an autonomous aerial vehicle equipped with
a plurality of wings in a number greater than four,
(b) arranging a coordinated wing flapping whereby tip
positions of all said wings at each time form a wave-like pattern,
(c) making the fuselage of said autonomous aerial vehicle
comprising joined winged sections, each section having at least
one pair of said wings,
(d) changing angle between each pair of said joined
winged sections which amounts to flexing the body of said
autonomous aerial vehicle during the flight, thereby increasing
the maneuverability of said autonomous aerial vehicle.
Appeal Br. 9.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Narobe US 1,189,612 July 4, 1916
Pietrek US 2011/0121129 A1 May 26, 2011
Final Act. 6.
REJECTIONS
The following rejections are before us on appeal:
Claim Rejected 35 U.S.C. § Reference(s)/Basis
5 112(b) Indefinite
5 102(a)(1) Narobe
5 103 Narobe, Pietrek
Final Act. 3–7.
OPINION
1. Proposed Amendments to Claim 5
Appellant filed a First Appeal Brief along with an Amendment
seeking to amend the Specification and claim 5. See Amendment 7–10, 15
(dated March 12, 2019) (“Amendment”); see also First Appeal Br. 7 (dated
March 12, 2019) (“First Appeal Br.” or “First Appeal Brief”). In a
subsequent Advisory Action, the Examiner denied entry of the Amendment
and the First Appeal Brief. See Adv. Act. (dated March 29, 2019).
Appellant filed a Second Appeal Brief on April 6, 2019 (“Second
Appeal Br.” or “Second Appeal Brief”). Our decision considers Appellant’s
arguments presented in the Second Appeal Brief.

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2. Objection to Specification
The Examiner objected to and did not enter a substitute specification
for failing to comply with our Rules. See Final Act. 2 (citing 37 C.F.R.
§ 1.125 (b), (c)).
Appellant appeals the Examiner’s objection to the Specification. See
Second Appeal Br. 2 (“we would appreciate the courtesy of this committee if
such replacement is allowed”).
We decline to review the Examiner’s objection to the substitute
specification, as this objection should be decided by the Director on petition,
rather than by the Board on appeal. See MPEP §§ 706.01, 1201.

3. Indefinite Rejection
The Examiner rejects claim 5 as indefinite, “not[ing] numerous
issues.” Final Act. 3.
First, the Examiner cites to the MPEP and rejects the claim for failing
to use “a” or “an” when describing a claimed term for the first time, and for
failing to subsequently use “the” or “said” in referring to that same term
again. See Final Act. 3–4 (citing MPEP §§ 608.01(i)–(n)).
Second, the Examiner finds the recited term “wave-like pattern”
indefinite, explaining that “wave-like” cannot be determined. See id. at 4.
Third, the Examiner finds that the claimed term “amounts to flexing
the body” is indefinite, as the term “amounts to” cannot be determined. See
id.
In contesting the rejection, Appellant cites to the proposed claim
amendments submitted with its Amendment and First Appeal Brief. See
Second Appeal Br. 3–6. For example, Appellant refers to particular
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unentered amendments of claim 5, including the deletion of the term “the
fuselage of,” removing the word “tip,” and adding language “such as
sinusoidal” after “wave-like pattern.” See id. at 3–4; see also Amendment
15 (amending “wave-like pattern” to be “wave-like pattern such as
sinusoidal”; deleting reference to “the fuselage of”; amending “joined wing
sections” to be “a plurality of joined wing sections”; deleting “which
amounts to flexing the body of said autonomous aerial vehicle”).
Appellant further cites to the Specification and its associated figures
in arguing that the claimed limitations are definite. See, e.g., Second Appeal
Br. 4–5 (asserting that the “Specification illustrates in the text and multiple
figures” that “changing of angles between sections is part of the proposed
method of flying the vehicle and not an unintended result of external
forces”).
Appellant’s arguments are not persuasive. We agree with the
Examiner that “several of Appellant’s remarks and positions address
proposed claim 5 and are not considered at this time as they do not address
the claim under appeal.” Ans. 9 (emphasis added). Accordingly,
Appellant’s arguments are not responsive to the rejection at hand.
Furthermore, Appellant’s particular citations to the Specification are
not persuasive. For example, even if the Specification were to state that
“flexing the body of the vehicle during flight enhances the maneuverability
of the vehicle,” as pointed out by Appellant (see Second Appeal Br. 3 (citing
proposed amendment to Spec. ¶ 5)), the cited description does not save the
claimed limitation—“changing angle between each pair of said joined wing
sections which amounts to flexing the body”—from being indefinite.
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Accordingly, Appellant’s arguments do not apprise us of error in the
Examiner’s rejection of claim 5.

4. Prior Art Rejections
a. Examiner’s Position
The Examiner rejects claim 5 as anticipated by Narobe and, in the
alternative, as obvious over Narobe in view of Pietrek. See Final Act. 6.
As to the anticipation position, the Examiner finds that Narobe
discloses a method as recited in claim 1. See id. at 6–7 (citing Narobe, 1:68,
1:85–105, Fig. 1). We reproduce Narobe’s Figure 1, below:

“Figure 1 is a plan view of [Narobe’s] machine.” Narobe 1:25–26. The
Examiner finds that Narobe’s flying machine comprises eight wings and that
changing the angle between each pair of said joined winged sections would
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“amount[] to flexing the body of said autonomous aerial vehicle,” as “the
body of the vehicle would necessarily flex to some degree during flight
resulting from the motion of the wings[] during the flight.” Final Act. 6–7
(citing Narobe 1:85–105).
As to the alternative position based on Narobe and Pietrek, the
Examiner explains, “[s]hould applicant disagree with the examiner’s
position regarding flexing of the body, Pietrek teaches that it is known in the
art to have a flexible body with an aerial vehicle.” Id. at 7 (citing Pietrek
¶ 15). In combining Narobe with Pietrek’s teachings, the Examiner reasons
that
It would have been obvious at the time of filing to a person
having ordinary skill in the art to have a flexing body in order to
withstand the forces being applied to the vehicle while airborne.
A rigid body would be more subjective to failure due to not being
able to withstand such loads as wind and impact versus a flexible
body.
Id.

b. Analysis
In contesting the rejection, Appellant first argues that “none of the
earlier inventions, including [Narobe and Pietrek] . . . mention the possibility
of changing angles between sections of the vehicle as is proposed in the
current invention and as is illustrated in Drawings[] 2, 3, and 4.” Appeal Br.
6. Appellant explains that “the relevant Figures of the proposed invention
. . . clearly illustrate the mechanism for changing angles between the joined
sections to provide flight maneuverability and efficiency.” Id. at 7
(emphasis added).
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Appellant’s first argument is not persuasive, as claim 5 does not recite
language that requires a particular “mechanism for changing angles between
the joined sections to provide flight maneuverability and efficiency,” as
Appellant’s argument presumes. See id. Even if the figures of the
application show this particular “mechanism,” limitations from the
Specification are not read into the claims. See In re Van Geuns, 988 F.2d
1181 (Fed. Cir. 1993). Claim 5 requires the step of “changing angle
between each pair of said joined wing sections” and we agree with the
Examiner’s finding that Narobe’s wings satisfy this limitation. See Final
Act. 6–7 (citing Narobe, 1:80–85). In particular, Narobe discloses, “[a]s the
wings are disposed in pairs, each extending outwardly, the downward effect
of one is neutralized by the upward movement of its mate and so on
throughout the several series of pairs employed.” Narobe, 1:80–85. As
Narobe’s wings pivot up and down, they satisfy the limitation of “changing
angle between each pair of said joined wing sections.”
Second, Appellant argues, “[e]ven though it is neither obvious nor
true that a flexible body is better at withstanding the aerodynamic forces
than a rigid body (it would depend on the design purpose, materials used,
etc.), the point of the matter is not about withstanding aerodynamic forces
but about providing adequate maneuverability and economy of flight.”
Second Appeal Br. 7 (emphasis added). Appellant explains, “[t]he idea of
this invention is not to propose a ‘flexible body,’ but a combination of solid
bodies joined in a chain-like fashion and being able to change the shape of
combined formation which is obvious from the statements of the claim, from
the drawings.” Id. (citing Spec. ¶¶ 6, 7, Figs. 2, 3, 4) (emphasis added).
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Appellant’s second argument is not persuasive. We agree with the
Examiner that Appellant’s argument is not based on limitations recited in the
claims. See Ans. 12.
Furthermore, Appellant’s argument about the “point of the matter” or
“idea of the invention” is inapposite. See Second Appeal Br. 7. The issue is
not whether Narobe or Pietrek shares the same “idea of invention” as
Appellant’s invention. Rather, the issue is whether the Examiner erred in his
findings or reasoning. We find that the Examiner did not err.
We agree with the Examiner’s finding that Narobe’s “body of the
vehicle would necessarily flex to some degree during flight resulting from
the motion of the wings.” Final Act. 6–7. Additionally, we agree with the
Examiner’s finding that “flexing prevents damage and possible failure of the
vehicle . . . [and, as] a result, this would necessarily assist in maneuvering
the vehicle as it withstands these loads.” See Ans. 11–12. We also find
persuasive the Examiner’s alternative position, in which he reasons that a
skilled artisan would have modified Narobe’s body to be flexible, based on
Pietrek’s teachings, “in order to withstand forces being applied to the vehicle
while airborne.” Final Act. 7. Appellant’s arguments do not identify error
in the Examiner’s findings or reasoning.
Accordingly, we affirm the rejection of claim 5 as anticipated by
Narobe and, in the alternative, as obvious over Narobe in view of Pietrek’s
teachings.

CONCLUSION
We affirm the rejections of claim 5 as unpatentable.
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DECISION SUMMARY3, 4
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
5 112(b) Indefiniteness 5
5 102(a)(1) Narobe 5
5 103 Narobe, Pietrek 5
Overall
Outcome
5

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED