Ex Parte Bray

Board of Patent Appeals and Interferences

Jul 26, 2006

10476257 (B.P.A.I. Jul. 26, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT M. BRAY
____________

Appeal No. 2006-1669
Application No. 10/476,257
Technology Center 3600
____________

Heard: July 11, 2006
____________

Before FRANKFORT, BAHR and FETTING, Administrative Patent Judges.
BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 1-18, 20, 21 and 23-
26.
We AFFIRM.
Appeal No. 2006-1669 Page 2
Application No. 10/476,257

BACKGROUND
The appellant's invention relates to a winglet. A copy of the claims under appeal is set
forth in the appendix to the appellant's brief.
The examiner relies upon the following as evidence of unpatentability:
Lavelle 2,557,829 Jun. 19, 1951
Allen 5,988,563 Nov. 23, 1999

The following rejections are before us for review.
Claims 24 and 25 stand rejected under 35 U.S.C. § 112, first paragraph, as containing
subject matter which was not described in the specification so as to convey to one of ordinary
skill in the art that, at the time the application was filed, the appellant was in possession of the
invention now claimed.
Claims 1-7, 11-15, 20, 21, 23, 25 and 26 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Allen.
Claims 8-10 and 16-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Allen in view of Lavelle.
Claim 24 stands rejected under 35 U.S.C. § 103 as being unpatentable over Allen.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding this appeal, we make reference to the examiner's answer (mailed March 24,
2006) for the examiner's complete reasoning in support of the rejection and to the appellant's
brief (filed August 24, 2005) and reply brief (filed January 12, 2006) for the appellant's
arguments thereagainst.
Appeal No. 2006-1669 Page 3
Application No. 10/476,257

OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art, and to the respective positions
articulated by the appellant and the examiner. As a consequence of our review, we make the
following determinations.
We turn our attention first to the rejection of claims 24 and 25 under the first paragraph
of 35 U.S.C. § 112. The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed reasonably conveys to
the artisan that the inventor had possession at that time of the later claimed subject matter, rather
than the presence or absence of literal support in the specification for the claim language. See
Vas Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir.
1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
In this case, it is true that the appellant’s specification does not expressly state that the
winglet 12 is “fixed.” Further, while a person of ordinary skill in the art might readily envisage a
winglet as a structure fixed to the wing, as discussed in more detail infra, we find no evidence in
this record indicating that a winglet is necessarily fixed or that one of ordinary skill in the
aircraft art would consider a fixed relationship to the wing to be a required element of a winglet.
After reviewing the original specification in its entirety, however, we conclude that one of
ordinary skill in the art would infer from the description therein that the winglet 12 discussed
therein is fixed because, if the winglet were moveable, the control surfaces which are the subject
of the appellant’s invention would not appear to be necessary, as the orientation of the winglet
could presumably be altered to reduce the lift during maneuvers.
In light of the above, we will not sustain the rejection under the first paragraph of 35
U.S.C. § 112, first paragraph.
We turn next to the rejection of claims 1-7, 11-15, 20, 21, 23, 25 and 26 as being
anticipated by Allen. The appellant’s brief does not separately argue any of the claims included
Appeal No. 2006-1669 Page 4
Application No. 10/476,257

in this rejection separately from the other claims so included. In accordance with 37 CFR §
41.37(c)(1)(vii), we have selected claim 1 as the representative claim from the appellant's
grouping of claims to decide the appeal on this rejection. Claims 2-7, 11-15, 20, 21, 23, 25 and
26 shall stand or fall with representative claim 1 (see In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Wood, 582 F.2d 638, 642, 199 USPQ 137, 140
(CCPA 1978)).
Allen describes an airplane having “a pair of wings 11 having at their outboard ends a
pair of foldable winglets 12 and 14” (col. 2, ll. 60-61). Allen teaches that
[t]he present invention relates generally to the concept of airplanes
having folding winglets, and more particularly, to winglet
assemblies which can be extended during cruise to increase span
and automatically/passively retracted to an upright position as
needed to reduce the wing bending moment and aircraft weight
when subjected to large loads at conditions such as dive [col. 1, ll.
4-10].

Allen discusses prior art fixed winglets and foldable wing tips and points out that it was
known in the prior art that having an aircraft’s winglets extend at an angle to the remaining
portion of the wing can affect the flight characteristic of the aircraft (col. 1, ll. 27-29) and that
commercial aircraft employing foldable wing tips were known in the prior art (col. 1, ll. 40-55).
Allen then goes on to explain that none of the discussed prior art employs a wing including a
foldable winglet that can be folded while the aircraft is in flight and that, as a result, none of the
discussed prior art can take advantage of the extended winglets during cruise and folded winglets
during severe load conditions (col. 1, ll. 56-60).
In light of the above discussion, it appears clear that Allen’s invention is directed to an
improvement to the fixed winglet arrangement wherein the inventive winglet is moveable during
flight. In accordance with Allen’s control system, whether it be a button depressed by the flight
crew or a load sensor 28 energizing the winglet actuator 24, the winglet assumes its retracted or
folded position when on the ground at airports where size restrictions require the winglets to be
Appeal No. 2006-1669 Page 5
Application No. 10/476,257

retracted, its extended position 12a or 14a during cruise, and its retracted position when the
aircraft is undergoing severe flight loads.
The examiner considers Allen’s winglet to correspond to the “winglet” recited in claim 1
and the aileron illustrated thereon in Figure 1 but not numbered or discussed by Allen to be a
control surface meeting the limitations of the “air flow control arrangement …” limitation of
claim 1 (answer, p. 4). As discussed more fully below, we agree with the examiner.
The appellant argues throughout the brief and reply brief that Allen’s winglet, despite
Allen’s use of the terminology “winglet,” is not in fact a “winglet” as one of ordinary skill in the
art would understand that term, because it is not fixed in an upturned or vertical position on the
wing. Even accepting the definition of “winglet” as “a small, nearly vertical surface mounted at
the tip of an aircraft wing to decrease drag resistance” urged by the appellant on page 8 of the
brief, we find nothing in this definition that requires the winglet to be fixedly mounted to the
wing as the appellant contends. Furthermore, even assuming that one of ordinary skill in the art
would have an understanding that winglets are typically upturned surfaces fixed at the tip of an
aircraft wing, Allen evidences a recognition in the art at the time of the appellant’s invention that
winglets need not be fixedly mounted and that, indeed, there are advantages to winglets which
can be moved between upturned and extended positions during flight. Although not relied upon
by the examiner in the rejection of claim 1 as being anticipated by Allen, the patents to Daude
(US Pat. No. 4,457,479, issued July 3, 1984) and Brix (US Pat. No. 6,345,790, issued February
12, 2002) alluded to by the examiner on page 8 of the answer are further evidence of the
recognition in the art at the time of the appellant’s invention of the advantages of moveably
mounting winglets or portions of winglets on aircraft wings.
Allen’s disclosed improvement of an actuator and control system for moving the winglet
between retracted or folded and extended positions no more detracts from it being a “winglet”
than does appellant’s improvement of a control surface on the winglet detract from it being a
Appeal No. 2006-1669 Page 6
Application No. 10/476,257

“winglet.” We find no error in the examiner’s determination that Allen’s winglet 12 or 14 is a
“winglet” as used in claim 1 on appeal.
The appellant (reply brief, p. 12) argues that the limitation “air flow control arrangement
thereon by means of which lift generated by the winglet can be varied” is a means-plus-function
recitation in accordance with 35 U.S.C. § 112, sixth paragraph, and that the structure described
in appellant’s specification corresponding to this means is the variety of control arrangements
(i.e., flaps, spoilers, trip device, doors and louvres) illustrated in Figures 5-11 (reply brief, p. 13).
Even accepting the appellant’s contention that the examiner has erred in refusing to interpret
this language as a means-plus-function recitation in accordance with 35 U.S.C. § 112, sixth
paragraph, the examiner’s ultimate conclusion that the aileron illustrated (but neither numbered
nor discussed) in Allen’s Figure 1 responds to this limitation is correct, as explained below.
While Allen does not specifically discuss ailerons on the wing or winglet of the inventive
aircraft, the depiction on the rear of the winglet 12 in Figure 1 has the appearance and location of
a classical aileron (see http://en.wikipedia.org/wiki/Aileron and http://www.aviation-
history.com/theory/flt_ctl.htm, copies attached hereto) and would have been recognized by one
of ordinary skill in the aircraft art at the time of appellant’s invention as such. Moreover, the
appellant does not dispute in either the brief or the reply brief that Allen’s winglet 12 or 14 has
an aileron thereon.
As is apparent from the appellant’s specification and as stated on page 13 of the
appellant’s reply brief, the structure described in appellant’s specification corresponding to the
air flow control arrangement is the control surface (i.e., flaps, spoilers, trip device, doors,
louvers) shown in Figures 5-11. An aileron is a control surface, a flap or spoiler in particular,
and is thus the structure described in the appellant’s specification corresponding to the recited
“air flow control arrangement.”
That Allen does not disclose how such aileron is controlled or indicate whether it is
moveable when the winglet 12 or 14 is in the folded or retracted position is of no relevance with
Appeal No. 2006-1669 Page 7
Application No. 10/476,257

respect to claim 1, as these details relate to the control system for controlling operation of the
control surface, which is not recited in claim 1, and not to the control surface itself. It is well
established that limitations not appearing in the claims cannot be relied upon for patentability.
In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).
For the reasons set forth above, we arrive at the same conclusion reached by the examiner
that the subject matter recited in claim 1 is anticipated by Allen. We therefore sustain the
rejection of claim 1, as well as claims 2-7, 11-15, 20, 21, 23, 25 and 26, which stand or fall with
claim 1, as being anticipated by Allen.
With respect to the rejection of claims 8-10 and 16-18 as being unpatentable over Allen
in view of Lavelle, the focus of the appellant’s argument appears to be that, as neither Allen nor
Lavelle is directed to a “winglet” as used in the appellant’s claims, they cannot disclose or render
obvious the appellant’s invention (brief, pp. 14-15; reply brief, p. 10). As discussed above, the
winglets are found in the primary reference to Allen. As for the appellant’s contention that there
is no suggestion or motivation provided by the references for the modification proposed by the
examiner, we note, at the outset, that the appellant’s query as to why one of ordinary skill in the
art would ignore the teaching or Lavelle and adopt the folding wing tip teaching of Allen instead
(brief, p. 14) appears to mischaracterize the modification proposed by the examiner. We
understand the examiner’s position to be that it would have been obvious to provide a passage or
slot in the winglet 12 or 14 of Allen from a lower surface to an upper surface thereof that can be
opened to permit passage of air therethrough for decreasing the distance required for landing
(answer, p. 5). We find such motivation in Lavelle’s teaching that it was well known in the art at
the time of the appellant’s invention to replace or supplement the usual ailerons with controlled
wing slots so that the entire length of the trailing edge of the wing could be used for landing
flaps. We thus sustain the rejection of claims 8-10 and 16-18 as being unpatentable over Allen
in view of Lavelle.
Appeal No. 2006-1669 Page 8
Application No. 10/476,257

The appellant has not mentioned the rejection of claim 24 as being unpatentable over
Allen in either the brief or reply brief. The rejection is thus summarily sustained.

CONCLUSION
To summarize, the rejection of claims 24 and 25 under the first paragraph of 35 U.S.C. §
112 is reversed and the rejections under 35 U.S.C. §§ 102 and 103 are sustained. The decision of
the examiner to reject claims 1-18, 20, 21 and 23-26 is AFFIRMED.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

Attachments: http://en.wikipedia.org/wiki/Aileron and http://www.aviation-
history.com/theory/flt_ctl.htm
Appeal No. 2006-1669 Page 9
Application No. 10/476,257

NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203

M/BM TEAM

APPEAL NO. 2006-1669
APPLICATION NO. 10/476,257

Copies:

______ APJ BAHR

______ APJ FETTING

______ APJ FRANKFORT

DECISION: AFFIRMED

PREPARED: Aug 15, 2006

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