Ex Parte Birkenstock

Patent Trial and Appeal Board

Feb 28, 2017

13344673 (P.T.A.B. Feb. 28, 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.
13/344,673 01/06/2012 David T. BIRKENSTOCK BIRK-006-COA 2713
62008 7590 03/02/2017
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
EXAMINER
DIXON, KEITH L
ART UNIT PAPER NUMBER
3644
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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
following e-mail address(es):
patent @ maierandmaier. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID T. BIRKENSTOCK
Appeal 2015-004891
Application 13/344,673
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—4 and 6—9 as unpatentable under 35 U.S.C. § 103(a)
over Favre (US 2,569,983, iss. Oct. 2, 1951) and of claim 5 over Favre and
Potter (US 2,737,411, iss. Mar. 6, 1956). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our discretionary authority under 37 C.F.R. § 41.50(b).
Appeal 2015-004891
Application 13/344,673
THE INVENTION
Appellant’s invention relates to a system and method for aerodynamic
drag reduction. Spec. H 3, 5. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A method for increasing efficiency of an object moving
through a fluid, comprising the steps of:
forming a convex cusp area at substantially a rear of the
object;
extending a suction inlet and extending a stagnation area
from an end of said suction inlet, said stagnation area having a
concave shape;
increasing a sharpness of said concave shape to vary a
shape of the stagnation area such that a local pressure coefficient
across the stagnation area is optimized to increase thrust output.
OPINION
Unpatentability of Claims 1—4 and 6—9
Appellant argues claims 1^4 and 6—9 as a group. Br. 3—6. We select
claim 1, the only independent claim presented, as representative. See 37
C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that Favre discloses all of the elements of claim 1
except for teaching to increase the sharpness of the concave shape to vary
the stagnation area to optimize a local pressure coefficient. Final Action 2.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to include such an
arrangement. Id. According to the Examiner, such would entail only routine
skill in the art to optimize a result effective variable. Id., citing In re Boesch,
617 F.2d 272 (CCPA 1980).
Appellant traverses the Examiner’s rejection by arguing that Favre
fails to disclose increasing a sharpness of the concave shape to vary the
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Application 13/344,673
stagnation area such that a local pressure coefficient across the stagnation
area is optimized to increase thrust output. Br. 4. Appellant argues that
Favre, at best, merely shows a compound curve in the area of rolls 5. Id.
Appellant argues that the invention is directed to varying the geometry to
optimize aerodynamic static pressure thrust. Id. In other words,
the present invention calls for a method to size the stagnation
area and optimize the local static pressure coefficient (i.e., by
optimizing the sharpness of the convex curve) to match thrust
output to the aerodynamic drag.
Id.
With respect to the Examiner’s findings and conclusion regarding
optimization of a result effective variable, Appellant argues that MPEP
§ 2144.05 requires that the general conditions of a claim must first be
disclosed before any optimization through routine experimentation can be
performed. Id. at 5. Appellant argues that Favre fails to disclose the general
conditions required for optimization.
In response to Appellant’s argument regarding routine optimization,
the Examiner reiterates that where the general conditions are disclosed in the
prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation. Ans. 3, citing In re Aller, 220 F.2d 454, 456
(CCPA 1955). The Examiner also relies on the following principal stated by
the court in the case of In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003).
The normal desire of scientists or artisans to improve upon
what is already generally known provides the motivation to
determine where in a disclosed set of percentage ranges is the
optimum combination of percentages.
Id. at 1330, Ans. 3.
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Application 13/344,673
With respect to Appellant’s compound curve argument, the Examiner
directs our attention to Figure 1 of Favre and interprets that Figure as
illustrating an increase in the radius of curvature across the curved rear panel
of the vehicle. Ans. 3. The Examiner finds that this discloses increasing the
sharpness of the concave shape to vary the shape of the stagnation area. Id. 1
Favre discloses a vehicle with one or more rotating rolls at
substantially the rear of the vehicle. Favre, col. 2,11. 42—50, Fig. 1
(element 2). We agree with the Examiner that roll 5 corresponds to the
convex cusp recited in claim 1. Appellant does not dispute the Examiner’s
finding that Favre discloses the “suction inlet” element of claim 1. Indeed,
there is ample evidence in Favre to support the Examiner’s findings as to the
suction inlet. See Favre, col. 2,1. 50 — col. 3,1. 2 (“slots collect air in
overpressure areas and open between the leading surface and the rolls”).
Slots/can be provided ahead of the rolls and connected
with intakes located in areas of overpressure/; or else the same
result can be attained simply as a consequence of the fluid
being driven upstreams by the roll itself through the clearance
f between said roll 10 and the wall.
Id. at col. 3,11. 58—64. Favre also discloses a stagnation area with a concave
shape. Favre, Fig. 1, col. 3,11. 20-21 (“preferably concave”), Ans. 3.
1 Claim 1 is ambiguous as to whether “increasing the sharpness” of the
concave shape refers to iteratively experimenting with shapes of differing
concavity during Appellant’s iterative design process (Spec. Tflf 38, 46) or
whether the concave shape of Appellant’s stagnation area undergoes an
increase in its radius of curvature as it transitions from one portion of the
stagnation area to another. Nevertheless, Claim 1 is unpatentable as obvious
under either interpretation as it would have been obvious for a practitioner to
engage in routine experimentation with stagnation areas of a constant radius
of curvature and with a changing radius of curvature as part of an iterative
design process.
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Application 13/344,673
Favre is entitled “Aircraft Wing Flap With A Leading Edge Roller”
and is directed to an apparatus. Favre, p. 1. Appellant’s invention claims a
method for increasing the efficiency of an object moving through a fluid.
Claims App., claim 1. Appellant’s method entails the step of:
increasing a sharpness of said concave shape to vary a shape of
the stagnation area such that a local pressure coefficient across
the stagnation area is optimized to increase thrust output.
Id. Appellant’s Discussion of the Prior Art section of the Specification
acknowledges that the concept of pressure thrust is known in the airfoil and
aircraft design arts. Spec. 2.
The phenomenon uses energy of the air rushing past an
airplane’s wing, tail surfaces or fuselage, to push that wing, tail
surface or fuselage forward. The energy required to force the
free stream of airflow against the aircraft is less than the energy
recovered from the airflow, allowing the system to generate a
decrease in total energy required.
Id. Appellant cites an extensive body of aerospace literature that deals with
the “pressure thrust phenomenon.” Id. at 3^4.
Favre’s patent application was filed on December 22, 1945, and
issued on October 2, 1951. The effective filing date of Appellant’s
application is January 6, 2012. In other words, approximately 65 years
passed between the filing date of Favre’s invention and the filing date of
Appellant’s invention. However, for purposes of an obviousness analysis,
we focus on the knowledge and expectations of a person of ordinary skill in
the art as of the date of Appellant’s invention, not the date of the Examiner’s
cited prior art references. See 35 U.S.C. § 103(a), see also Bristol-Myers
Squibb Co., v. leva Pharma USA, Inc., 752 F.3d 967, 976 (Fed. Cir. 2014)
(skilled artisan’s reasonable expectation of success is measured “as of the
date of the invention”). In analyzing Appellant’s contentions we are mindful
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Application 13/344,673
that an artisan is presumed to know something about the art apart from what
the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Thus, the person of ordinary skill in the art at the time of Appellant’s
invention would not only have been knowledgeable concerning the specific
teachings of Favre, but may also be presumed knowledgeable concerning the
general principles of the “pressure thrust phenomenon.” Spec. 2—A.
Appellant’s argument that Favre “is silent” concerning the method
step of varying the shape of the stagnation area is not persuasive. Favre
discloses an apparatus. However, designing and fabricating Favre’s
apparatus necessarily would have involved a method. Favre is silent as to
the dimensions of the vehicle, the rolls, and the specific details of the
concave shape of the rear panel. Thus, it may reasonably be inferred that
Favre leaves the selection of such shapes and dimensions to the skilled
practitioner as a matter of design choice.
This brings us to the issue of whether the final limitation of claim 1 is
a matter of routine optimization. We conclude that it is. At the outset, we
find that, when it comes to aerodynamic drag, the shape of an airfoil is a
result-effective variable. In re Applied Materials, Inc., 692 F.3d 1289, 1297
(Fed. Cir. 2012) (A recognition in the prior art that a property is affected by
a variable is sufficient to find the variable result-effective). The effect of
shape on aerodynamic drag is so well known to practitioners in the field of
aerodynamics that one would hardly expect it to merit mention, even
in 1945, Favre’s date of invention. However, in the case of Favre, the
relationship is mentioned expressly. Favre, col. 4,11. 51—75 (“drag increase
which accompanies the deflection of the lift-increasing flaps on an
airplane”).
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Appellant argues the following with respect to the issue of routine
optimization:
Favre's design could be significantly improved if optimized for
static pressure thrust. Favre shows a stagnation area and
concave curve combination that is insufficient to balance the
pressure drag coming from the large portion of the aft body that
is perpendicular to the direction the vehicle is driving. Favre's
objective is streamlining, not maximum efficiency. While Favre
may inadvertently create some static pressure thrust, nowhere
does Favre teach or suggest a step that adjusts variables in his
system that will tune and optimize that aerodynamic
phenomenon as recited by the present invention.
Br. 4—5 (emphasis added). The foregoing statement merely restates that
Appellant’s invention attempts to optimize the aerodynamic performance of
an airfoil during an iterative design process.2 Furthermore, Appellant
provides no persuasive technical reasoning to differentiate between
“streamlining” and “increasing the efficiency of an object moving through a
fluid” within the meaning of claim 1. Moreover, Appellant provides neither
evidence nor persuasive technical reasoning to convince us that such
optimization is anything more than routine and, therefore, within the ambit
of ordinary skill. Appellant’s Specification essentially admits as much:
Varying the parameters of the stagnation area 104, the inlet
area 106 and the cusp area 108 will change the efficiency of a
mechanism optimized to exploit this phenomenon for a specific
2 Appellant’s statement that “Favre shows a stagnation area and concave
curve combination that is insufficient to balance the pressure drag . . . “
amounts to mere unsubstantiated attorney argument that lacks evidentiary
support. Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed.
Cir. 2005) (unsubstantiated attorney argument is no substitute for competent
evidence); see also EsteeLauder, Inc. v. L’Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997) (Attorney argument cannot take the place of evidence in the
record).
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purpose, such as maximum thrust or maximum fuel efficiency.
The force changes and interactions, brought about by changing
these design details as discussed, are predictable and can be
modeled so that industry standard methods like iterative and
inverse design can be used to optimize the object or mechanism.
In the hands of a person skilled in the art of aerodynamic
optimization, tools like iterative design and inverse design will
make short work of this type of optimization for any purpose.
Spec. 146 (emphasis added). Apart from the foregoing, Appellant provides
no enabling disclosure as to how to achieve the claimed optimization. The
Specification provides few, if any, cues as to specific or relative dimensions
of or among the cusp, suction inlet, and/or concave stagnation area.3,4 The
Specification provides no working examples. In short, Appellant relies
almost entirely on the knowledge of a person of ordinary skill in the art to
carry out the optimization process of claim 1. Applying mere ordinary skill
to solve a known problem is the essence of obviousness. See KSR Int T Co.
3 Claim 1 merely requires varying “a shape” of the stagnation area so that “a
local pressure coefficient across the stagnation area” is optimized. It is
unclear whether “a shape” refers to the shape of the entire stagnation area or
merely a portion thereof. Similarly, it is unclear whether “a local pressure
coefficient” refers to the pressure coefficient over the entire stagnation area
or merely a portion thereof. During examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). For purposes of deciding the art rejection of this
appeal, we will construe “a shape” and “a local pressure coefficient” as
applying to a portion, rather than the entirety, of the stagnation area.
4 Appellant’s claim to “increase output thrust” must be understood in the
context of the overall teaching of the Specification. Spec. 16 (“An analysis
will show that the total Coefficient of Drag has been slashed dramatically
but that the drag forces are positive and still very real”).
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v. Teleflex Inc., 550 U.S. 398, 419-20 (2007) (known problem for which
there is an obvious solution).
In summary, Favre discloses each of the three structural components
(cusp, suction inlet, concave stagnation area) at the substantial rear of an
object moving through a fluid. The size and shape of an airfoil are well
known to affect aerodynamic drag. Optimizing such size and shape entails
no more than application of routine skill in the art.5 The Examiner's findings
of fact are supported by a preponderance of the evidence and the Examiner's
legal conclusion of unpatentability is well-founded. Accordingly, we sustain
the Examiner's unpatentability rejection of claims 1—4 and 6—9.
Unpatentability of Claim 5
over Favre and Potter
Claim 5 depends from claim 1 and adds the limitation: “varying said
convex cusp area and said stagnation area.” Claims App. The Examiner
relies on Potter as disclosing a device for increasing the efficiency of an
object moving through a fluid by varying the cusp area and varying the
concave stagnation area. Final Action 3. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify Favre to include varying the convex cusp and
concave stagnation area because Potter teaches the benefit of providing a
streamlining apparatus for a vehicle. Id.
5 Appellant’s Specification essentially admits as much.
Because the high-lift devices are well known, many skilled in
the art of airfoil design will be readily able to bring that
knowledge and skill to the task of optimizing the pressure thrust
Spec. 176.
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Appellant traverses the rejection by merely arguing that Potter fails to
cure the deficiencies of Favre. Br. 6. As we disagree with Appellant that
Favre is deficient, we are not apprised of error. Accordingly, we sustain the
Examiner’s rejection of claim 5.6
New Ground of Rejection For Indefiniteness
The following new ground of rejection under 35U.S.C. § 112, second
paragraph, regarding indefmiteness, applies to all pending claims.7 The
statute requires, in pertinent part, that: “The specification shall conclude
with one or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” Id.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness under 35
U.S.C. § 112, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). During patent prosecution when claims can be amended,
6 Claim 5 is ambiguous as to whether the “varying” takes places dynamically
when the vehicle is moving through a fluid, or whether each of the cusp and
stagnation areas are fixed in the final design and are merely varied during
the iterative design process leading up to manufacture of a fixed structure.
The Examiner’s reliance on Potter suggests that the Examiner adopted the
former interpretation. Dynamically varying the shape of an airflow during
movement through a fluid is well known as demonstrated by Favre’s flap
(See Fig. 23) as well as Potter’s inflatable device (See Figs. 2-4). Claim 5 is
unpatentable as obvious under either interpretation.
7 In addition to the following discussion, claim 5 is indefinite for the reasons
explained in footnote 6 above.
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ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989). Section 112 places the burden of precise claim drafting on the
applicant. See In re Morris, 111 F.3d 1048, 1056—57 (Fed. Cir. 1997).
During prosecution, a claim is properly rejected as indefinite if it is
“amenable to two or more plausible claim constructions.” Ex parte
Miyazaki, 2008 WL 5105055 at *5 (BPAINov. 19, 2008) (precedential).
As mentioned above in footnote 1, the term in claim 1 directed to
“increasing the sharpness” is susceptible to more than one plausible
interpretation. Similarly, as mentioned above in footnote 3, the terms
directed to varying “a shape” of the stagnation area so that “a local pressure
coefficient across the stagnation area” is optimized are susceptible to more
than one plausible interpretation. To reiterate, it is unclear whether “a
shape” refers to the shape of the entire stagnation area or merely a portion
thereof. Similarly, it is unclear whether “a local pressure coefficient” refers
to the pressure coefficient over the entire stagnation area or merely a portion
thereof. Also, we determine that a person of ordinary skill in the art would
not likely be able to define the metes and bounds of the claimed “stagnation
area” with the requisite definiteness.
In addition, claim 1 is directed to a method for increasing the
efficiency of an object moving through a fluid, but also recites that a local
pressure coefficient across the stagnation area is optimized to increase thrust
output. Claims App. We interpret “efficiency” as corresponding to reducing
or minimizing overall drag. Spec. Title (“System and Method for Drag
Reduction”), H 3, 9, 10, 11 (“drag reduction”). It is unclear to us whether
the goals and objectives of “increasing the efficiency” (drag reduction)
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compliment or conflict with optimizing “a local pressure coefficient” in
connection with varying “a shape” of the stagnation area to “optimize” thrust
output.8
Finally and of paramount importance, use of the term “optimized” in
claim 1, in light of the Specification, renders claim 1 indefinite.
“Optimized” is a term of degree. While terms of degree are not inherently
indefinite, the Federal Circuit admonishes us that claims having terms of
degree will fail for indefmiteness unless they “provide objective boundaries
for those of skill in the art” when read in light of the specification and the
prosecution history. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370-71 (Fed. Cir. 2014), cert, denied, 136 S.Ct. 59 (2015). After
reviewing Appellant’s claims and Specification, we are unable to discern
objective boundaries that skilled artisans may apply to determine whether
thrust output is truly optimized. The problem is exacerbated by uncertainties
in the claims as to the identification and dimensions of the stagnation area
and whether the area to be optimized is the entire stagnation area or only a
portion thereof.
In view of the foregoing, we exercise our discretion to enter a new
ground of rejection of claims 1—9 under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter that Appellant regards as their invention.
8 The concern here is whether a designer might compromise the overall drag
of the object moving through a fluid in order to redirect airflow to increase
the thrust output of only a portion (i.e., a smaller section) of the same object.
To the extent there is a design tradeoff between optimizing overall drag and
optimizing the thrust output of a smaller portion of the object, the claim is
unclear as to which of the two should be given priority.
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DECISION
The decision of the Examiner to reject claims 1—9 as unpatentable
under 35 U.S.C. § 103(a) is AFFIRMED.
We hereby enter a NEW GROUND OF REJECTION under 35 U.S.C.
§ 112, second paragraph, that claims 1—9 are indefinite.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED: 37 C.F.R, $ 41.50(b)
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