Ex Parte Domel et al

Patent Trial and Appeal Board

Nov 14, 2017

13324537 (P.T.A.B. Nov. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/324,537 12/13/2011 Neal D. Domel 7134.3036.002, TA-01307 2488
16139 7590
Reising Ethington PC
755 W. Big Beaver Road
Suite 1850
Troy, MI 48084
11/16/2017 EXAMINER
BONZELL, PHILIP J
ART UNIT PAPER NUMBER
3644
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
j ones @ reising. com
U S PTOmail @ reising. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL D. DOMEL, ERIC F. CHARLTON, and
DANIEL N. MILLER
Appeal 2017-000067
Application 13/324,537
Technology Center 3600
Before CAROLYN D. THOMAS, HUNG H. BUI, and
BETH Z. SHAW, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge SHAW.
Opinion Dissenting filed by Administrative Patent Judge BUI.
DECISION ON APPEAL1
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—18 and 20, which represent all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Throughout this Decision we have considered the Appeal Brief filed May
19, 2016 (“App. Br.”), the Reply Brief filed September 26, 2016, the
Examiner’s Answer mailed August 1, 2016 (“Ans.”) and the Final Rejection
mailed October 20, 2015 (“Final Act.”).
Appeal 2017-000067
Application 13/324,537
INVENTION
Appellants’ invention is directed to mitigation of wake turbulence
through the weakening of wake vortices generated at outboard edges of
aircraft wings, or outboard and/or inboard edges of ailerons, flaps, or other
airfoils. Spec. 11.
Claim 1 is illustrative and reproduced below.
1. An airfoil tip vortex mitigation arrangement comprising one or more
flow directors configured and positioned to re-direct ffeestream air
over a low pressure surface of an airfoil, the one or more flow
directors being arranged to direct ffeestream air toward a tip of the
airfoil in such a way as to displace and weaken a main tip vortex
generated at the tip of the airfoil.
REJECTION
The Examiner rejected claims 1—18 and 20 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Gupta (US 2010/0187366 Al,
published July 29, 2010 and Egolf (US 2005/0061921 Al, published Mar.
24, 2005). Final Act. 3-7.
ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to the Appellants’
arguments. For the reasons discussed below, we do not sustain the § 103
rejection, based on this record.
Claim 1 recites, in part, “one or more flow directors being arranged to
direct freestream air toward a tip of the airfoil in such a way as to displace
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Application 13/324,537
and weaken a main tip vortex generated at the tip of the airfoil.” Appellants
argue that the cited combination of references, and in particular Egolf, fails
to teach directing freestream air toward the tip of the airfoil. App. Br. 9.
The Examiner finds that Figure 4 of Egolf shows that freestream air is
directed towards a tip of the aircraft. Ans. 7. Yet, we agree with Appellants
that Egolf s Figure 4 includes small vortices depicted as wiggly lines that are
too crudely drawn to readily illustrate that the protuberances 32 specifically
direct freestream air toward a tip of the airfoil, as set forth in claim 1. App.
Br. 9. We also find that it is unclear in Egolf s Fig. 4 whether the vortex
generator directs freestream air outboard and/or redirects freestream air over
a low pressure surface, as set forth in claims 13 and 20 respectively. The
ordinary and usual meaning of “to direct” and/or “re-directing” is to cause to
turn, move, or point towards a particular course. Merriam-Webster’s
Collegiate Dictionary, p. 358 (9th Edition 1990). No such direction or re­
direction is sufficiently shown in Egolf s Fig. 4.
Thus, we are persuaded of error in the Examiner’s finding that Egolf
teaches directing freestream air toward a tip of the airfoil. Therefore, we do
not sustain the § 103 rejection of independent claim 1, or independent claims
13 and 20, which contain similar recitations of directing or redirecting
freestream air. We do not sustain the remaining pending claims, which
depend from one of claims 1,13, and 20.
DECISION
The decision of the Examiner to reject claims 1—18 and 20 is reversed.
REVERSED
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Appeal 2017-000067
Application 13/324,537
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEAL D. DOMEL, ERIC F. CHARLTON,
and
DANIEL N. MILLER
Appeal 2017-000067
Application 13/324,537
Technology Center 3600
Before CAROLYN D. THOMAS, HUNG H. BUI, and
BETH Z. SHAW, Administrative Patent Judges.
BUI, Administrative Patent Judge, dissenting.
I respectfully disagree with the majority’s reversal of claims 1—18 and
20 under 35 U.S.C. § 103(a). In particular, the majority concludes that
Appellants’ claims are not unpatentable over Gupta and Egolf.
In my view, claims 1—18 and 20 are unpatentable over Gupta and
Egolf, whether taken individually or in combination. In addition, I would
also recommend the Examiner consider rejecting: (1) claims 1—12 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description for the disputed limitation: “the one or more flow directors
being arranged to direct ffeestream air toward a tip of the airfoil” as recited
in claim 1; and (2) claims 1 and 13 under 35 U.S.C. § 112, first paragraph,
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Application 13/324,537
for reciting single means claims which are not commensurate in scope with
Appellants’ disclosure.
For example, Appellants argue Gupta and Egolf do not teach or
suggest the disputed limitation: “one or more flow directors being arranged
to direct freestream air toward a tin of an airfoil in such a way as to displace
and weaken a main tip vortex generated at the tip of the airfoil” as recited in
claim 1. App. Br. 9—11. The disputed limitation of directing freestream air
“toward a tip of the airfoil” was added via Appellants’ amendment on
September 18, 2015, without an explanation of written description support in
Appellants’ Specification. Appellants cite paragraphs 8 and 10 of the
Specification to provide written description support for the disputed
limitation. App. Br. 6. However, the cited paragraphs 8 and 10 of
Appellants’ Specification only describe:
(1) “one or more flow directors 12 [shown in Figure 1]
configured and positioned to re-direct freestream air flowing
over a low pressure surface 14 of an airfoil 16 such as a wing,
strake, flap, canard, flaperon, or elevon” (Spec. 1 8); and
(2) “[t]he flow directors 12 may be arranged to direct
freestream air over a low pressure surface 14 in such a way as to
displace and weaken a main tip vortex 18 of the airfoil 16” (Spec.
110).
Appellants’ Figure 1 is reproduced below with additional markings
for illustration.
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Application 13/324,537
Appellants’ Figure 1 shows “one or more flow directors 12 configured
and positioned to re-direct freestream air flowing over the low pressure
surface 14 of an airfoil 16.”
There is no support from Appellants’ Specification for the claimed
“one or more flow directors” 12 directing air “toward a tip of the airfoil.” In
fact, Appellants’ “flow directors” 12 are passive components, i.e.,
protuberances (see Spec. Figs. 1, 3) “designed to be minimally intrusive in
an aerodynamic sense” (Spec. 110) and, as such, simply cannot act to direct
or re-direct the airstream backwards, i.e., toward the tip of the airfoil (e.g.,
aircraft wing). See Spec. Figs 1—3.
Even assuming arguendo that the disputed limitation of directing
freestream air “toward a tip of the airfoil” is fully supported by Appellants’
Specification, which 1 do not believe that it is, the claimed recitation that the
flow directors are configured and arranged “to direct freestream air toward a
tip of the airfoil in such a way as to displace and weaken a main tip vortex
generated at the tip of the airfoil” is a statement of intended use for the
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Application 13/324,537
application of flow directors, and therefore not entitled to patentable weight.
That is, the claim language “arranged to direct” freestream air merely
indicates the capability to perform a certain action—i.e., to direct air in a
certain direction. Our reviewing court has held that a statement of intended
use in an apparatus claim cannot distinguish over a prior art apparatus that
discloses all the recited structural limitations and is capable of performing
the recited function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). Additionally, “[a]n intended use or purpose usually will not limit the
scope of the claim because such statements usually do no more than define a
context in which the invention operates.” See Boehringer Ingelheim
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir.
2003).
Giving claim 1 its broadest reasonable construction, therefore, the
limitations merely require the use of one or more flow directors or
protuberances (see Spec. Figs. 1, 3) on an airfoil (e.g., aircraft wing)
subjected to air circulation. 1 find that claim l’s intended use limitation is
met by the equivalent prior art structure (vorticity generating protuberances
32) disclosed in Egolf s Figures 4 and 5, which appears to be capable of
performing the recited functions. In particular, Egolf s protuberances 32 can
direct freestream air as to displace and weaken a main tip vortex (Egolf s
primary tip vortex V) generated at the tip of the airfoil. See Egolf 21—22
(“the blade tip 18 generates a primary tip vortex V. The vorticity generating
protuberances 32 produce small-scale vortices v” that “cause[] the primary
tip vortex V to diffuse and dissipate at a rate greater than what normally
occurs” and “destabilize the core of the primary tip vortex V and accelerates
its diffusion”), Fig. 4. Alternatively, claim l’s intended use limitation is met
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Application 13/324,537
by the equivalent prior art structure (actuation surfaces 1020 integrated in a
blade 1001) disclosed in Gupta’s Figure 10, which similarly appears to be
capable of performing the recited functions. In particular, Gupta’s actuation
surfaces 1020 can direct air and displace an air vortex as claimed, by mere
arrangement of the actuation surfaces against incoming air streams. See
Gupta 149, Fig. 10. Egolf s protuberances and Gupta’s actuation surfaces
are capable of performing the “intended use” as recited in claim 1, and
therefore they meet the claim. See, e.g., Schreiber, 128 F.3d at 1477.
Claim 13 similarly provides a statement of intended use for the
application of “one or more vortex generator vanes” to cause air movement,
i.e., “to direct freestream air outboard,” “impede[] circulation of the airfoil
tip vortex,” and “form vane vortices rotating in the same sense as the airfoil
tip vortex.” Claim 13’s intended use limitation is met by Egolf s equivalent
prior art structure (protuberances 32), which appears to be capable of
performing the functions recited in claim 13. See Egolf H 21—22, Fig. 4.
Moreover, claim 1, and similarly claim 13, are nothing more than
single means claims, coupled with an intended use statement as discussed
supra. In particular, claim 1 recites “one or more flow directors” for various
functional purposes; thus the claim comprises, at best, a single means claim.
Similarly, claim 13 recites “one or more vortex generator vanes” for various
functional purposes. Apart from reciting that the flow directors and vortex
generator vanes move freestream air, claims 1 and 13 recite no particular
structure to perform the claimed air movement. Such single means claims
are not commensurate in scope with the Appellants’ disclosure. See In re
Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983) (“The long-recognized problem
with a single means claim is that it covers every conceivable means for
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Application 13/324,537
achieving the stated result, while the specification discloses at most only
those means known to the inventor.”). As single means claims, claims 1 and
13 should be rejected under 35 U.S.C. §112, first paragraph, as single means
which are non-enabling for the scope of the respective claims. See
MPEP § 2164.08(a). See also In re Hyatt, 708 F.2d at 714—15 (A single
means claim which covered every conceivable means for achieving the
stated purpose was held non-enabling for the scope of the claim because the
specification disclosed at most only those means known to the inventor); Ex
parte Rodriguez, 92 USPQ2d 1395, 1406—11 (BPAI 2009) (precedential)
(discussing functional claiming and scope of enablement).
For the reasons discussed above, I would affirm the Examiner’s
rejections of claims 1—18 and 20 under 35 U.S.C. § 103(a). Additionally, I
would reject (1) claims 1—12 for failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph; and (2) claims 1
and 13 for failing to comply with the enablement requirement of 35 U.S.C. §
112, first paragraph, as single means claims which are non-enabling for the
scope of the claims.
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