DeVaul et al.v.Knoblach et al.

Patent Trial and Appeal Board

Dec 22, 2016

14328331 (P.T.A.B. Dec. 22, 2016)

BoxInterferences@uspto.gov Entered: December 22, 2016
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Richard Wayne DeVaul,
Eric Teller, Clifford L. Biffle,
Josh Weaver
and
Dan Piponi,
Junior Party
(Patent 8,820,678),

v.

Gerald M. Knoblach
Eric A. Frische
and
Bruce Alan Barkley,
Senior Party
(Application 14/328,331).

Patent Interference No. 106,058 (JTM)
(Technology Center 3600)

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE, and
JAMES T. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

JUDGMENT
37 C.F.R. § 41.127

A conference call before Judge James T. Moore to discuss authorization of 1
motions was held at 4 PM on 26 June 2016. 2
Mr. Krumholz, Counsel for Junior Party DeVaul, indicated that Junior Party 3
DeVaul did not intend to contest priority in this case. 4
We interpret this as a concession of priority. See 37 C.F.R. § 41.127(b)(3) 5
and 37 C.F.R. § 41.127(b)(4). 6
We have granted Knoblach Motion 1 seeking designation of DeVaul claims 7
18, 19, and 20 as also corresponding to the count. 8
In view of the foregoing, it is— 9
10
ORDERED that judgment be entered against Junior Party DeVaul for count 11
1 (Paper 1); 12
13
FURTHER ORDERED that claims 1–12 and 16–24 of Junior Party 14
DeVaul’s involved US Patent 8,820,678 be CANCELED, 35 U.S.C. § 135(a); and 15
16
FURTHER ORDERED that a copy of this judgment be entered in the 17
administrative records of the involved patent and application. 18
19
FURTHER ORDERED that a party seeking judicial review timely serve 20
notice on the Director of the United States Patent and Trademark Office. 21
37 C.F.R. §§ 90.1 and 104.2. 22

NOTICE: "Any agreement or understanding between parties to an interference,
including any collateral agreements referred to therein, made in connection with or
in contemplation of the termination of the interference, shall be in writing and a
true copy thereof filed in the Patent and Trademark Office before the termination
of the interference as between the said parties to the agreement or understanding."
35 U.S.C. 135(c); see also Bd.R. 205 (settlement agreements).

cc (via e-mail):

Attorney for Junior Party DeVaul:

Arnold H. Krumholz
Andrew T. Zidel
Lerner, David, Littenberg,
Krumholz & Mentlik, LLP
akrumholz@lernerdavid.com
azidel@lernerdavid.com

Attorney for Senior Party Knoblach:

Bryan P. Collins
Robert CF Perez
Pillsbury Winthrop Shaw Pittman LLP
bryan.collins@pillsburylaw.com
robert.perez@pillsburylaw.com

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BoxInterferences@uspto.gov Entered: December 22, 2016
Tel: 571-272-9797

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Richard Wayne DeVaul,
Eric Teller, Clifford L. Biffle,
Josh Weaver
and
Dan Piponi,
Junior Party
(Patent 8,820,678),

v.

Gerald M. Knoblach
Eric A. Frische
and
Bruce Alan Barkley,
Senior Party
(Application 14/328,331).

Patent Interference No. 106,058 (JTM)
(Technology Center 3600)

Before: RICHARD E. SCHAFER, SALLY GARDNER LANE, and
JAMES T. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.
DECISION ON MOTIONS

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I. Knoblach Motion 1 1
Senior Party Knoblach moves that DeVaul claims 18-20 should be 2
designated as corresponding to Count 1. Paper 25, 1. The thrust of the argument is 3
that Count 1, in view of U.S. Pat. No. 6,402,090, renders claims 18-20 obvious. Id. 4
The motion is unopposed. 5
II. Discussion 6
A. Standard 7
A claim corresponds to a count if the subject matter of the count, treated as 8
prior art to the claim, would have anticipated or rendered obvious the subject 9
matter of the claim. 37 C.F.R. § 41.207(b)(2). 10
B. The Count 11
Count 1 is claim 1 of U.S. Pat. No. 8,820,678 (the ‘678 Patent) 12
or claim 34 of application No. 14/328,331, which are identical. Paper 1, 4. Count 13
1 reads as follows: 14
1. A method comprising: 15
16
determining a location of a target balloon; 17
18
determining locations of one or more neighbor balloons relative to the 19
determined location of the target balloon, wherein the target balloon 20
comprises a communication system that is operable for data communication 21
with at least one of the one or more neighbor balloons; 22
23
determining a desired movement of the target balloon based on the 24
determined locations of the one or more neighbor balloons relative to the 25
determined location of the target balloon, wherein the desired movement of 26
the target balloon comprises a desired horizontal movement of the target 27
balloon; and 28
29

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controlling the target balloon based on the desired movement of the 1
target balloon, 2
3
wherein controlling the target balloon based on the desired movement 4
of the target balloon comprises controlling an altitude of the target balloon 5
based on the desired horizontal movement of the target balloon. 6
7
C. The Claims 8
9
Claim 1 is identical to the count, and is as reproduced above. 10
Claims 18-20 depend from intermediate claim 16, which also 11
corresponds to the count, and reads as follows: 12
16. The method of claim 1, wherein the target balloon comprises an 13
airfoil. 14
Claims 18-20 read as follows: 15
18. The method of claim 16, wherein controlling the target balloon 16
based on the desired movement of the target balloon comprises controlling 17
the airfoil. 18
19
19. The method of claim 16, wherein the airfoil is operable to move 20
the target balloon horizontally using ambient winds. 21
22
20. The method of claim 16, wherein the airfoil is operable to convert 23
vertical motion of the target balloon into horizontal motion of the target 24
balloon, and wherein controlling the target balloon based on the desired 25
movement of the target balloon comprises controlling a buoyancy of the 26
target balloon. 27
28
D. Prior Art 29
30
US Patent 6,402,090 B1 (the ‘090 patent) issued June 11, 2002 to a 31
balloon trajectory control system. Ex. 1001, 1. De Vaul has been accorded 32
a filing date of January 9, 2012. Paper 1. Accordingly, the ‘090 patent is 33

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available as art under 35 U.S.C. § 102(b) against De Vaul claims 18-20. The 1
‘090 patent is from the same field of endeavor, and logically commends 2
itself to the problem being addressed by the De Vaul patent and claims. 3
E. Claim 18 – Controlling the airfoil 4
Claim 16, from which claim 18 depends, recites that the balloon 5
comprises an airfoil. Claim 18 recites that the balloon is controlled by 6
controlling the airfoil. 7
Count 1, taken as prior art, describes the steps of the claimed method 8
of controlling an altitude of the target balloon based on the desired 9
horizontal movement of the target balloon. 10
The ‘090 patent describes a controllable airfoil (see wing 1), which 11
describes the limitation of claim 16. The ‘090 patent’s airfoil is controlled 12
using control module 19. Ex. 1001 4:50–60. The airfoil is used to control 13
the trajectory of the balloon. This description fulfills the requirement of 14
claim 18 that the balloon’s movement is controlled by controlling the airfoil. 15
We agree with Knoblach that it would have been obvious to 16
incorporate the subject matter taught in the ‘090 patent in order to provide 17
additional control capability over the position of a free-floating lighter than 18
air vehicle such as the recited balloon as explicitly taught by the ‘090 patent. 19
Paper 25, 3. 20
Accordingly, we conclude that claim 18 would have been obvious 21
over, and therefore corresponds to, count 1. 22
23
24

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F. Claim 19 – Airfoil is operable to move the target balloon 1
horizontally using ambient winds. 2
3
Claim 16, from which claim 19 also depends, recites that the balloon 4
comprises an airfoil. Claim 19 recites that the airfoil can move the target 5
balloon using ambient winds. 6
Count 1, taken as prior art, describes the steps of the claimed method 7
of controlling an altitude of the target balloon based on the desired 8
horizontal movement of the target balloon. 9
The ‘090 patent describes that the forces generated on the wing 1 are 10
dependent on the natural, which we find to mean ambient, wind conditions 11
at the altitude at which the wing is disposed. Ex. 1001 3:15–17; 5:1–8. The 12
wing 1 is described as operable to generate a horizontal force on the balloon, 13
which would move the target balloon horizontally. Id. 3:10–14. See also 14
Figure 2. 15
We again agree with Knoblach that it would have been obvious to 16
incorporate the subject matter taught in the ‘090 patent in order to provide 17
additional control capability over the position of a free-floating lighter than 18
air vehicle such as the recited balloon as explicitly taught by the ‘090 patent. 19
Paper 25, 3. 20
Accordingly, we conclude that claim 19 would have been obvious 21
over, and therefore corresponds to, count 1. 22
G. Claim 20 – Vertical and horizontal motion; Buoyancy 23
24
The ‘090 patent describes that the wing or sail is operable to generate 25
a force based on the relative angle of attack between the wing and the 26
ambient air to generate a desired trajectory control force. Ex. 1001 1:6–9; 27

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5:37–47. By appropriate selection of an angle of attack with respect to 1
airflow, the wing or sail of the ‘090 patent is operable to generate a 2
horizontal force and thereby convert vertical motion into horizontal motion. 3
as recited. 4
The ‘090 patent further describes control of altitude to control position 5
of the balloon, and further teaches that the altitude control includes 6
controlling buoyancy of the balloon. Ex. 1001 2:13–18 and 37-47. 7
We again agree with Knoblach that it would have been obvious to 8
incorporate the subject matter taught in the ‘090 patent in order to provide 9
additional control capability over the position of a free-floating lighter than 10
air vehicle such as the recited balloon as explicitly taught by the ‘090 patent. 11
Paper 25, 3. 12
Accordingly, we conclude that claim 19 would have been obvious 13
over, and therefore corresponds to, count 1. 14
15
16
III. Order 17
Accordingly, it is hereby: 18
ORDERED that Knoblach Motion 1 is GRANTED, and claims 18, 19, and 19
20 are designated as corresponding to the count. 20

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cc (via e-mail):

Attorney for Junior Party DeVaul:

Arnold H. Krumholz
Andrew T. Zidel
Lerner, David, Littenberg,
Krumholz & Mentlik, LLP
akrumholz@lernerdavid.com
azidel@lernerdavid.com

Attorney for Senior Party Knoblach:

Bryan P. Collins
Robert CF Perez
Pillsbury Winthrop Shaw Pittman LLP
bryan.collins@pillsburylaw.com
robert.perez@pillsburylaw.com