Ex Parte Brody

Patent Trials and Appeals Board

Jun 28, 2019

15208838 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/208,838 07/13/2016 David E. Brody
98783 7590 07/02/2019
Perkins Coie LLP - DEN General
P.O. Box 1247
Seattle, WA 98111-1247
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 13199-8002.US02 2082
EXAMINER
ADAMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID E. BRODY
Appeal2018-008272
Application 15/208,838
Technology Center 3600
Before ANNETTE R. REIMERS, ARTHUR M. PESLAK, and
BRENT M. DOUGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject under 35 U.S.C. § 103 claims 1-17 as unpatentable over
Kobori (US 5,377,465, issued Jan. 3, 1995) and Christol (WO 87/01754 Al
published Mar. 26, 1987). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 XTI Air Transit, Inc., ("Appellant") is the applicant as provided under 37
C.F .R. § 1.46 and is identified as the real party in interest. Appeal Brief 2
("Br."), filed May 7, 2018.
Appeal2018-008272
Application 15/208,838
CLAIMED SUBJECT MATTER
The claimed subject matter relates to heliports. Spec. ,r 6, Figs. 1, 4.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A heliport comprising:
a building having a ground level portion, a roof level
portion, and a plurality of side portions that extend between the
ground level portion and the roof level portion;
at least one helipad platform cantilevered outwardly from
a side portion of the building between the ground level portion
and the roof level portion; the at least one helipad platform
including at least one set of helipad markings that defines a
helipad; the helipad being at least substantially cantilevered from
the side portion of the building; the at least one helipad platform
being positioned with respect to the building in a manner that
allows the landing and take-off of vertical takeoff and landing
aircraft.
ANALYSIS
Independent claim 1 is directed to a heliport including a building
having a plurality of side portions that extend between a ground level
portion and a roof level portion, "at least one helipad platform cantilevered
outwardly from a side portion of the building between the ground level
portion and the roof level portion," wherein "the helipad [is] at least
substantially cantilevered from the side portion of the building." Br. 8
(Claims App.). The Examiner relies on the teachings of Christol for these
limitations. Final Act. 2-3. 2 In particular, the Examiner finds that "it is well
known in the art that a heliport can further comprise the helipad platform
2 Final Office Action ("Final Act."), dated Oct. 6, 201 7.
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Application 15/208,838
being cantilevered and the helipad being at least substantially cantilevered
from the side portion of the building" and that "Christol discloses a plurality
of helipad platforms cantilevered outwardly from the building and the
helipad being at least substantially cantilevered from the side portion of the
building." Final Act. 2-3 ( citing Christol, Fig. 1 ).
Upon review of the record, the Examiner has not met the burden of
proof required to establish that Christol discloses the claimed helipad
platform limitations. "[T]he precise language of 35 U.S.C. § 102 that '(a)
person shall be entitled to a patent unless,' concerning novelty and
unobviousness, clearly places a burden of proof on the Patent Office which
requires it to produce the factual basis for its rejection of an application
under sections 102 and 103." In re Warner 379 F.2d 1011, 1016 (CCPA
1967). The Patent Trial and Appeal Board is primarily a tribunal of review.
See Ex Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI
201 O)(precedential).
For that review to be meaningful it must be based on some concrete
evidence in the record to support the Examiner's factual findings and legal
conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection
must be set forth in a sufficiently articulate and informative manner as to
meet the notice requirement of§ 132, such as by identifying where or how
each limitation of the rejected claims is met by the prior art references. In re
Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. §
1.104( c )(2) ("When a reference is complex or shows or describes inventions
other than that claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference, if not
apparent, must be clearly explained and each rejected claim specified.");
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Application 15/208,838
Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (PTO must
create a record that includes "specific fact findings for each contested
limitation and satisfactory explanations for such findings.").
In the Final Office Action, the Examiner merely cites to Figure 1 of
Christol for disclosure of the helipad platform limitations of claim 1. Final
Act. 2-3. The Examiner fails to identify where the structural limitations of
the helipad platform of claim 1 are disclosed in Figure 1 of Christol and
further fails to establish through technical reasoning that such helipad
arrangements are well known in the art. See id. Following prosecution
closure and filing of the Appeal Brief, the Examiner provides a somewhat
nonsensical machine translation of Christol to Appellant for the benefit of
the Examiner and his supervisors to determine whether to proceed with the
Appeal. 3 Then, in the Examiner's Answer, the Examiner provides
unsupported assertions that the helipad platform limitations of claim 1 are
present in Christo 1. See Ans. 5-6. 4
For example, the Examiner finds that "the machine translation of
Christol explicitly states that reference number O 1' signifies rectangular and
triangular shaped platforms which a helicopter can land on or takeoff from
as well as be parked upon" and that "the machine translation of Christol
specifically states that the lower platform 12 depicted in figure 3 comprises
of platform areas 03 and 04 which form parking and takeoff areas for
3 The Examiner states that "[i]n accordance with MPEP 1207.02, a machine
translation of foreign reference WO 87/017 54 to Christol has been provided
so that the participants of the appeal conference can consider the translation."
See Miscellaneous Communication, dated May 25, 2018.
4 Examiner's Answer ("Ans."), dated May 30, 2018.
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Application 15/208,838
helicopters transferred from the topmost platform." See Ans. 5---6.
However, the Examiner does not direct us to where Christol "explicitly
states" this information in the haphazard translation provided. It is neither
our place, nor Appellant's burden, to speculate as to the basis for rejecting
claims. In re Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO's
obligation to provide timely notice to the applicant of all matters of fact and
law asserted.).
We also do not agree with the Examiner that "Figure 2 of Christol
clearly depicts the central rectangular portion of the building signifies the
central building structure which supports the helipad platform areas 01 '."
Ans. 5 ( emphasis added). In order to fully understand what is illustrated in
Christol' s Figures, a comprehensible translation of Christol must be
provided, which is lacking in this case. See MPEP § 2125; Hockerson-
Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000) ("[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue.").
Because the Examiner errs by not setting forth the Kobori and
Christol rejection in a sufficiently articulate and informative manner as to
meet the notice requirement of§ 132 and fails to create a record that
includes specific fact findings for each limitation and satisfactory
explanations for such findings, the Examiner fails to establish a prima facie
case that the combined teachings of Kobori and Christol are obvious over
the subject application as claimed. Accordingly, we do not sustain the
Examiner's rejection of claims 1-17 as unpatentable over Kobori and
Christol.
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Application 15/208,838
DECISION
We REVERSE the decision of the Examiner to reject claims 1-17 as
unpatentable over Kobori and Christol.
REVERSED
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