Ex Parte Bray

Board of Patent Appeals and Interferences

Nov 14, 2006

10476257 (B.P.A.I. Nov. 14, 2006)

1
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for publication and is not binding precedent of the Board.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
____________

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

DECISION ON REHEARING
This is a decision on appellant’s request for rehearing under 37 CFR
§ 41.52(a)(1) (filed September 26, 2006) of our decision mailed July 26, 2006, in
which we reversed the rejection of claims 24 and 25 under 35 U.S.C. § 112, first
paragraph, and affirmed the rejection of claims 1-7, 11-15, 20, 21, 23, 25 and 26
under 35 U.S.C. § 102(b) as being anticipated by Allen, the rejection of claims 8-
10 and 16-18 under 35 U.S.C. § 103(a) as being unpatentable over Allen in view
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of Lavelle and the rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Allen. The appellant requests reconsideration only of that
portion of our decision affirming the rejections under 35 U.S.C. §§ 102(b) and
103(a).
In the request, the appellant persists in his untenable position that the claim
term “winglet” is by definition a fixed upturned tip on a wing. We explained on
pages 5 and 6 of our decision the basis for our conclusion that the term “winglet”
would not have been understood by one of ordinary skill in the art as requiring a
fixed mounting to the wing. The use of the term “winglet” in the Allen, Daude and
Brix patents, all within the field of appellant’s invention, in the context of a
structure that is moveable relative to the wing on which it is mounted clearly
evidences that this term was not construed as narrowly as appellant urges. This is
not a case, as appellant would have us believe, where the Allen patent has uniquely
used the term “winglet” in a manner inconsistent with an established meaning
within the art.
The appellant’s argument (request, p. 4) that this panel’s conclusion
(decision, p. 3) that one of ordinary skill in the art would infer from the appellant’s
specification in its entirety that the winglet 12 discussed therein is fixed, in
reversing the examiner’s written description rejection of claims 24 and 25 under 35
U.S.C. § 112, first paragraph, is inconsistent with our refusal to read a “fixed”
limitation into the claim term “winglet” is not well taken. While it is true that the
claims do not stand alone and must be read in view of the specification, of which
they are a part (see Phillipps v. AWH Corp., 415 F.3d 1303, 1315, 75 USPQ2d
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1321, 1327 (Fed. Cir. 2005)), we also recognize the distinction between using the
specification to interpret the meaning of a claim and importing limitations from the
specification into the claim. We can discern the line between construing terms and
importing limitations with reasonable certainty and predictability by remaining
focused on understanding how a person of ordinary skill in the art would
understand the claim terms. See Phillipps, 415 F.3d at 1323, 75 USPQ2d at 1334.
For instance, although the specification may describe very specific embodiments of
the invention, our reviewing court has repeatedly warned against confining the
claims to those embodiments. Id.
As mentioned in our decision (p. 3), the appellant’s specification does not
expressly state that the winglet 12 is “fixed,” much less define the term “winglet”
as being a structure fixedly mounted to the wing. The appellant’s implication on
page 4 of the request that the appellant’s specification, at page 1, line 4, defines
“winglet” as “a fixed upturned tip on a wing” is a misrepresentation. Appellant’s
specification, at page 1, lines 4-7, reads “A winglet generally takes the form of an
upturned tip on a wing or other flying surface on an aircraft although the term
‘winglet’ may also embrace an end plate which extends both above and below the
upper and lower surfaces at the tip of a wing or other flying surface.” The term
“fixed” is not used therein. The fact that one skilled in the art might infer from the
appellant’s specification, in particular the problems to be solved by the invention,
that the winglet 12 described in the specification is fixed to the wing no more
constitutes a definition of “winglet” as being fixed to the wing than the
specification’s description of the winglet 12 as having a moveable control surface
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thereon constitutes a definition of the term “winglet” as a structure, having a
control surface moveably mounted thereon, at the tip of an aircraft wing.1
Accordingly, there is nothing in the appellant’s specification that would cause one
of ordinary skill in the art to understand that the appellant is using the term
“winglet” in a more restricted manner than its customary meaning within the art.
There is strong evidence in the record before us, in the form of the definition
of “winglet” as “a small, nearly vertical surface mounted at the tip of an aircraft
wing to decrease drag resistance” from the McGraw-Hill Dictionary of Scientific
and Technical Terms cited on page 8 of the appellant’s brief, from which the term
“fixed” is conspicuously absent, and the Allen, Daude and Brix patents, all of
which describe winglets, or portions thereof, that are moveable or articulating
relative to the wing, that the use of the term “winglet” in the aircraft field is not
restricted to structures that are fixed to the wing. Accordingly, our determination
that Allen’s “winglet” 12 or 14 meets the “winglet” limitation in appellant’s claim
1 (the representative claim selected under 37 CFR § 41.37(c)(1)(vii) to decide the
appeal of the rejection of claims 1-7, 11-15, 20, 21, 23, 252 and 26 as being
anticipated by Allen (decision, p. 4)), notwithstanding that it is not fixedly
mounted to the wing, is supported by the record in this case and was not reached in
error.

1 Likewise, Allen’s description of an articulating winglet does not constitute a definition therein of the term
“winglet” as a structure foldably mounted to a wing.
2 We recognize that claim 25 includes the limitation “fixed winglet” (emphasis added), but claim 25 was not argued
in appellant’s brief, reply brief or supplemental reply brief (filed May 24, 2006) separately from claim 1. The
rejection of claim 24, which also includes the limitation of a “fixed winglet,” under 35 U.S.C. § 103(a) as being
unpatentable over Allen was not mentioned at all by appellant in any of the brief, reply brief or supplemental reply
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brief, much less argued, and was thus summarily sustained, as explained on page 8 of our decision.
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The appellant’s argument (request, pp. 7-8) that this panel failed to properly
construe the limitation “air flow control arrangement thereon by means of which
lift generated by the winglet can be varied” is incorrect. In accordance with 35
U.S.C. § 112, sixth paragraph, this panel determined that the structure described in
appellant’s specification for performing the function of controlling air flow to vary
the lift generated by the winglet, and thus corresponding to the “air flow control
arrangement thereon by means of which lift generated by the winglet can be
varied” limitation of claim 1, “is the control surface (i.e., flaps, spoilers, trip
device, doors, louvers) shown in Figures 5-11” (decision, p. 6). This determination
is supported by the appellant’s specification (e.g., p. 2 and p. 4, ll. 23-24) and the
appellant’s statement on page 13 of the reply brief to that effect. As further
explained in our decision (p. 6), the aileron depicted on the rear of the winglet 12
in Allen’s Figure 1 is a control surface, and in particular a flap or spoiler, the
structure described in appellant’s specification corresponding to the “air flow
control arrangement thereon by means of which lift generated by the winglet can
be varied” limitation.
The appellant’s arguments on pages 8 and 9 of the request address
limitations not included in claim 1 and, in particular, not included in the “air flow
control arrangement thereon by means of which lift generated by the winglet can
be varied” limitation of claim 1. The structure identified in appellant’s
specification (p. 2 and p. 4) as the “control arrangement” is the control surface
(e.g., flap, trip device, spoiler, etc.). While such control arrangement may be
linked to a control system of the aircraft, such control system is neither described
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in any detail nor identified as part of the control arrangement. Accordingly, a
control system for controlling the operation of the control surface is not recited in
claim 1.3 Thus, Allen’s failure to describe the control scheme of the aileron
depicted on the winglet 12 is of no moment. Allen’s winglet 12 clearly generates
lift in flight, whether in the folded position or in the extended position, and the
aileron located on such winglet is a control surface that controls air flow by means
of which lift generated by the winglet can be varied, which is all that claim 1
requires.4
The appellant’s argument on page 10 of the request that our decision does
not establish any reason or motivation for combining the Allen and Lavelle
references is incorrect. We explained on page 7 of our decision that the motivation
for providing 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 as proposed by the
examiner (answer, p. 5) is found “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.” That teaching is found in column 1,
lines 7-12, of Lavelle. The appellant’s contention that “[s]lots and flaps are two

3 While claim 25 recites that the air flow control means is responsive to the load on an aircraft wing, this claim was
not argued separately from claim 1 in the brief, reply brief or supplemental reply brief and thus stands or falls with
claim 1. Claim 24 additionally recites means for sensing loads on an aircraft and that the air flow control means is
responsive to said loads sensing means, but the rejection of claim 24 as being unpatentable over Allen was not
argued in the brief, reply brief or supplemental reply brief and was thus summarily sustained, as explained above.
4 We also note, in this regard, that claim 1 does not require that the variance of lift be accomplished, or, more
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entirely different structures and, as such, are well known to those of ordinary skill
in the art”

particularly, be capable of being accomplished, when the winglet is in any particular orientation.
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(request, p. 10) does not address the modification proposed by the examiner. The
modification is not the replacement of landing flaps with slots but, rather, the
replacement of ailerons with slots.
In light of the above, the arguments in the appellant’s request do not
persuade us of any error in our decision. The appellant’s request for rehearing has
been granted to the extent that we have reconsidered our decision but is denied
with respect to making any modification thereto.
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Application No. 10/476,257

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a). See 37 CFR § 1.136(a)(1)(iv).
DENIED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal No. 2006- 1669
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