Ex Parte Basso et al

Patent Trial and Appeal Board

Dec 12, 2017

13971916 (P.T.A.B. Dec. 12, 2017)

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.
13/971,916 08/21/2013 Pasquale Basso AIRBUS 3.0-497 I860
530 7590 12/14/2017
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
RODRIGUEZ, VICENTE M
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PASQUALE BASSO and BERND TOMSCHKE
Appeal 2016-008092
Application 13/971,9161
Technology Center 3600
Before MICHELLE R. OSINSKI, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner’s
decision, as set forth in the Final Office Action dated July 16, 2015 (“Final
Act.”), rejecting claims 1—13. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Airbus SAS and Airbus Operations GmbH (“Appellants”) are the
applicants as provided in 37 C.F.R. § 1.46 and are identified as the real
parties in interest. Appeal Br. 1.
Appeal 2016-008092
Application 13/971,916
BACKGROUND
The disclosed subject matter “relates to a wing box of an aircraft.”
Spec. 12. Claim 1, the sole independent claim, is reproduced below, with
emphasis added:
1. A wing box of an aircraft with a stiffened
shell structure comprising fiber reinforced
material, the shell structure comprising a skin for
absorbing shear loads, and a plurality of stringers
arranged on an inner side of the wing box for
absorbing axial loads,
wherein at least 60% of mass of the stiffened
shell structure is concentrated in the stringers, and
wherein the stringers provide at least 80%
of axial stiffness of the stiffened shell structure.
REJECTIONS
1. Claims 1, 3, 6, and 9-13 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sarh (US 2005/0236524 Al, published Oct.
27, 2005).
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Sarh and Munk (US 6,314,630 Bl, issued Nov. 13, 2001).
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Sarh, Tsai (US 2012/0177872 Al, published July 12,
2012), and Bequet (US 6,908,526 B2, issued June 21, 2005).
4. Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sarh and Bequet.
5. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Sarh and Munsen (US 4,606,961, issued Aug. 19, 1986).
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Appeal 2016-008092
Application 13/971,916
DISCUSSION
Rejection 1 — Claims 1, 3, 6, and 9—13
For independent claim 1, the Examiner relied on Sarh as disclosing
the language preceding the two recited “wherein” clauses, but stated that
Sarh does not “expressly disclose” either “wherein” clause. Final Act. 3.
According to the Examiner, it would have been obvious for one of ordinary
skill in the art at the time of the invention “to determine the percentage of
the mass concentrated in the stringers and the percentage of axial stiffness
provided by the shell structure since determining optimal or working ranges
in order to optimize the strength of a structure involves routine skill in the
art.” Id. at 3—4.
Appellants argue that the “doctrine [of routine optimization] was
misapplied” here. Appeal Br. 6. We agree. As argued by Appellants, the
record does not show that the prior art recognized the parameters in the
“wherein” clauses—(1) percentage of mass of the stiffened shell structure
concentrated in the stringers and (2) percentage of axial stiffness of the
stiffened shell structure provided by the stringers—as result-effective
variables that allow one to “optimize the strength of a structure” (Final Act.
3—4). See Appeal Br. 7 (citing MPEP § 2144.05(II)(B) and In re Antonie,
559 F.2d 618 (CCPA 1977)); see also Antonie, 559 F.2d at 620 (“The PTO
and the minority appear to argue that it would always be obvious for one of
ordinary skill in the art to try varying every parameter of a system in order to
optimize the effectiveness of the system even if there is no evidence in the
record that the prior art recognized that particular parameter affected the
result.” (emphasis added)).
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Appeal 2016-008092
Application 13/971,916
In the Answer, the Examiner does not address this issue. First, the
Examiner quotes two sentences from paragraph 15 of the Specification as
relating to “maximizing/optimizing strength while reducing weight of the
structure” and then states that “[i]t is well known in the art to optimize
weight and strength in an aircraft structure in order to provide an aircraft that
can economically carry passengers and cargo without being overweight.”
Ans. 10. The Examiner has not explained, however, why one seeking to
“optimize weight and strength in an aircraft structure” would adjust the
particular parameters recited in claim 1.
Second, the Examiner quotes from section 2144.05(II)(B) of the
MPEP, which, in turn, quotes from KSR International Co. v. Teleflex, Inc.,
550 U.S. 398,421 (2007):
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.
See Ans. 11. To the extent that the Examiner relies on an “obvious to try”
rationale, the Examiner has not explained why the particular parameters
recited would have been part of the “finite number of identified, predictable
solutions” (KSR, 550 U.S. at 421 (emphasis added)) to the problem of
“maximizing/optimizing strength while reducing weight” (Ans. 10).
Third, the Examiner states that Appellants “ha[ve] not disclosed the
criticality associated with the [claimed] ranges” or “the unexpected results
which are achieved.” Ans. 11. According to the Examiner, “[wjithout this
demonstrated criticality[,] the obviousness rejection in view of Sarh has not
been answered and the rejection of claim 1 is maintained.” Id.
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Appeal 2016-008092
Application 13/971,916
We agree with Appellants that, in the context of a rejection based on
routine optimization, a showing of “criticality” comes as one potential
rebuttal to a prima facie case. See In re Stepan Co., 868 F.3d 1342, 1348
(Fed. Cir. 2017); Reply Br. 2 (“Appellants do not have the burden of
presenting evidence of criticality because a prima facie case of obviousness
was not yet established.”); see also MPEP § 2144.05(111) (9th ed., Rev.
07.2015, Nov. 2015) (listing “Showing That the Change is Critical' as one
form of “REBUTTAL OF [A] PRIMA FACIE CASE OF
OBVIOUSNESS”). For the reasons above, here, the Examiner has not
established a prima facie case of obviousness.
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 3, 6, and 9-13, which depend from claim 1.
Rejections 2—5 — Claims 2, 4, 5, 7, and 8
Claims 2, 4, 5, 7, and 8 depend from claim 1. Appeal Br. 10 (Claims
App.). The Examiner’s added reliance on Munk, Tsai, Bequet, and Munsen
does not remedy the deficiencies discussed above, regarding independent
claim 1 (see supra Rejection 1). Thus, for the same reasons discussed
above, we do not sustain the rejection of claims 2, 4, 5, 7, and 8.
DECISION
We reverse the decision to reject claims 1—13.
REVERSED
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