Ex Parte FUKUDA

Patent Trials and Appeals Board

May 9, 2019

14070753 - (D) (P.T.A.B. May. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/070,753 11/04/2013 KokiFUKUDA
116 7590 05/13/2019
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
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.
OBA-51824 7611
EXAMINER
HUTCHENS, CHRISTOPHER D.
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
05/13/2019 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOK.I FUKUDA 1
Appeal2018-005850
Application 14/070,753
Technology Center 3600
Before JAMES P. CALVE, MICHELLE R. OSINSKI, and
WILLIAM C. CAPP, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge OSINSKI.
Opinion Concurring filed by Administrative Patent Judge CAL VE.
Opinion Dissenting-in-Part filed by Administrative Patent Judge CAPP
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 4, 5, 7-12, and 14--17.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Mitsubishi Aircraft Corporation ("Appellant") is the Applicant and real
party in interest. Appeal Br. 3.
2 Claim 3 is cancelled. Appeal Br. 19 (Claims App.). Claim 6 is objected to
as being dependent upon a rejected base claim, but would be allowable if
rewritten in independent form. Non-Final Act. 8. Claim 13 is allowed. Id.
Appeal2018-005850
Application 14/070,753
THE CLAIMED SUBJECT MATTER
Claims 1 and 10 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A nitrogen enriched air supply system comprising:
a fuel tank provided in an aircraft, the fuel tank including
a first tank, and a second tank arranged adjacent to the first tank;
a nitrogen enrichment module that produces nitrogen
enriched air upon supply of source gas obtained in the aircraft;
a first gas pipe that supplies the nitrogen enriched air to
the first tank from the nitrogen enrichment module;
a spill-back pipe that is arranged between the first tank and
the second tank to cause excessive fuel in the second tank to flow
into the first tank, the spill-back pipe being configured such that
fuel in the first tank is consumed first while setting an amount of
fuel in the second tank at a given amount, wherein the spill-back
pipe is set such that an inlet for the fuel is at a higher position
than an outlet for the fuel within an assumed range of a climb
angle of the aircraft; and
a second gas pipe that directly or indirectly supplies the
nitrogen enriched air to the spillback pipe.
EVIDENCE
Runnels us 4,378,920 Apr. 05, 1983
Wozniak US 6,997,415 B2 Feb. 14,2006
Lynas US 2011/0056970 Al Mar. 10, 2011
Surawski US 2011/0068231 Al Mar. 24, 2011
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Application 14/070,753
REJECTIONS
I. Claims 1, 5, 7-12, and 14--17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Surawski and Wozniak. Non-Final
Act. 2---6.
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Surawski, Wozniak, and Lynas. Id. at 6-7.
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Surawski, Wozniak, and Runnels. Id. at 7.
OPINION
Rejection I
Claims 1, 7-9, 11, and 16
The Examiner relies on Surawski for teaching most of the limitations
of independent claim 1, but acknowledges that Surawski fails to teach "a
spill-back pipe that is arranged between the first tank and the second tank."
Non-Final Act. 2 ( citing Surawski, Fig. 1; ,r,r 1, 9). The Examiner finds that
Wozniak teaches a spill-back pipe (i) arranged between first and second
tanks to cause excessive fuel in the second tank to flow into the first tank;
(ii) configured such that fuel in the first tank is consumed first while setting
an amount of fuel in the second tank at a given amount, and (iii) that is set
such that an inlet for the fuel is at a higher position than an outlet for the fuel
within an assumed range of a climb angle of the aircraft. Id. at 3 ( citing
Wozniak, Fig. 4b; 2: 1-12). The Examiner concludes that it would have been
obvious to have modified Surawski "to incorporate the teachings of
Wozniak to disperse fuel using a spill[-]back pipe ... [because] providing a
spill-back pipe between the tanks would allow fuel to be transferred from the
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Application 14/070,753
wing tank into the inboard tanks, to maintain structural integrity of the
outboard wing tanks during flight." Id. (citing Wozniak, Fig. 4b; 2:1-12).
Appellant argues that "[a]t most[,] Wozniak ... discloses a pump (not
labeled) in the outboard tank wherein fuel is positively pumped in one
direction from the outboard tank to the inboard tank." Appeal Br. 11.
Appellant argues that "the term 'spill-back pipe' is known to those skilled in
the art to refer to a pipe wherein a fluid spills into the pipe. Accordingly, a
pipe wherein a fluid is pumped by force through the pipe is not a 'spill-back
pipe."' Reply Br. 2. According to Appellant, because Wozniak's pipe inlet
is disposed at the lowermost point of the outboard tank, the pipe "is
configured to remove substantially all the fuel in the outboard tank" and is
"not a 'spill-over' pipe, i.e., a pipe that allows a fluid to 'spill-over' and
flow, by gravity from one tank to another tank" and also, is not configured to
remove only "excessive fuel." Appeal Br. 11.
The Examiner disagrees that Wozniak fails to teach a spill-back pipe.
Ans. 4. In particular, the Examiner declines to read any structural
limitations into the claimed spill-back pipe beyond that which is explicitly
recited-i.e., that the inlet for the fuel is at a higher position than the outlet
for the fuel. Id. Appellant has not pointed to an explicit definition for "spill-
back pipe" in their Specification, nor has Appellant provided evidence or
persuasive reasoning to support that the term "spill-back pipe" is a term of
art to which a person of ordinary skill in the art would ascribe a particular
meaning, namely, that a spill-back pipe must allow fluid to flow only by
gravity and may not include a pump. As to Appellant's specific argument
that a "spill-back pipe" refers to a pipe where fluid 'spills into [a] pipe,"
which excludes a fluid pumped by force through the pipe (Reply Br. 2), we
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Application 14/070,753
note that an ordinary and customary meaning of the term "spill" is "to ( cause
to) flow, move, fall, or spread over the edge or outside the limits of
something." Cambridge Academic Content Dictionary, available at
https:// dictionary.cambridge.org/ dictionary/ english/ spill. When considering
such an ordinary and customary meaning of the word "spill," Appellant has
not adequately explained how "spill" requires that the flow outside the limits
of something be accomplished solely by gravity, and specifically, without
the aid of a pump. The ordinary and customary meaning is consistent with
the claim language and Appellant's Specification. See claim 1 ("a spill-back
pipe that is arranged between the first tank and the second tank to cause
excessive fuel in the second tank to flow into the first tank"); Spec. 4:13-16
("a spill-back pipe ... is arranged across the first fuel tank and the second
fuel tank to cause fuel in the second fuel tank to flow into the first fuel
tank.") Based on the record before us, we decline to construe "spill-back
pipe" so narrowly as to exclude a pipe that uses a pump to cause excessive
fuel in the second tank to flow into the first tank. Consequently, we are not
persuaded that the Examiner erred in determining that "the pipe in Wozniak
may be interpreted as a spill-back pipe." Id.
As to Wozniak's pipe being configured to remove all fuel from the
second tank to flow into the first tank, rather than only "excessive fuel" as
claimed, we agree with the Examiner that "any amount of fuel may be
considered as excessive" such that "any amount of fuel flowing through the
pipe is best understood by the [E]xaminer to read on the limitation." Id.
at 4--5. Appellant has not persuaded us of error in this specific position by
the Examiner. Finally, Appellant has not otherwise argued that Wozniak's
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Application 14/070,753
pipe identified by the Examiner fails to meet the structural or functional
limitations set forth in independent claim 1.
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's conclusion that the combination of Surawski and Wozniak
renders obvious the subject matter of claim 1. Accordingly, we sustain the
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Surawski
and Wozniak. We also sustain the rejection of claims 7-9, 11, and 16 under
35 U.S.C. § 103(a) as unpatentable over Surawski and Wozniak, for which
Appellant relies on the same arguments and reasoning as independent
claim 1. Appeal Br. 13.
Claim 5
Claim 5 recites that "the nitrogen enriched air [NEA] is supplied to
the second tank via the second pipe and the spill-back pipe, in a descent
phase of the aircraft." Appeal Br. 19 (Claims App.). The Examiner finds
that "Surawski as modified by Wozniak teach the nitrogen enriched air
supply system according to claim 1, wherein the nitrogen enriched air is
supplied to the second tank (40) via the second gas pipe 75 and the fuel
system, in a descent phase of the aircraft." Non-Final Act. 3 (citing
Surawski ,r 5) ( emphasis added).
Appellant argues that the Examiner has not adequately explained how
the cited references teach the NEA is supplied to the second tank via a
second gas pipe and the spill-back pipe. Appeal Br. 12. The Examiner
responds that "when the ... NEA ... is added to the fuel system of
Surawski, the [NEA] is understood to settle into the fuel system. Therefore,
at least a portion of the NEA travels anywhere that the fuel travels within the
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Application 14/070,753
system, including a system modified by the teachings of Wozniak that
includes a spill-back pipe." Ans. 5.
As an initial matter, we note that we consider the broadest reasonable
interpretation of claim 5 to extend to independent supply ofNEA to the
second tank via the second pipe and independent supply ofNEA to the
second tank via the spill-back pipe, rather than requiring the same supply of
NEA to flow through both the second pipe and the spill-back pipe before
entry to the second tank. Moreover, we note that there is no recitation in
claim 5 that the NEA be supplied directly to the spill-back pipe for direct
supply to the second tank. With this interpretation in mind, considering the
Examiner's previous explanation that Surawski's nitrogen enrichment
module has "a second gas pipe (element (75) corresponding to valve 2 (30))
that indirectly supplies the nitrogen enriched air to the fuel system ( as the air
is mixing with the fuel in the tank" (Non-Final Act. 2 (citing Surawski ,r 1)),
the Examiner has provided an explanation as to how nitrogen enriched air is
supplied to second tank 45 via the second gas pipe (i.e., via piping 75
corresponding to valve 2 in Surawski's Figure 1). See Surawski ,r 11
( explaining that, during descent, ambient air entering into wing tanks 40 is
first mixed with NEA that has passed to mix chambers 55 via piping 75).
However, we agree with Appellant that the Examiner has not
adequately explained how nitrogen enriched air is supplied to the second
tank (40) via the spill-back pipe, in a descent phase of the aircraft. Even
considering the Examiner's previous explanation that (i) Surawski's nitrogen
enrichment module has "a first gas pipe ( corresponding to valve 1 (25)) that
supplies the nitrogen enriched air to the first tank ( 45) from the nitrogen
enrichment module (15)" and (ii) Surawski is being modified to include a
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Application 14/070,753
spill-back pipe between tanks 45 and 40 (id. at 3), it is not entirely clear how
NEA would be supplied to wing tank 40 via such a spill-back pipe disposed
between tanks 45 and 40 because valve 25 is closed during descent (such
that it would not be supplying NEA to the center tank 45 that could then
enter the wing tank 40 via the spill-back pipe) and also "[b ]ecause of
increasing pressure in the wing tanks, there is a natural flow through line 70
towards the center tank," rather than a flow from the center tank 45 towards
the wing tanks 40 (Surawski ,r 11 ).
Even if the NEA would ultimately travel to the spill-back pipe of
modified Surawski in some way, we agree with Appellant that without more
explanation, it is not clear by a preponderance of the evidence that NEA can
be supplied to the second tank via the spill-back pipe in a descent phase of
the aircraft.
For the foregoing reasons, Appellant apprises us of error in the
Examiner's conclusion that the combination of Surawski and Wozniak
renders obvious the subject matter of claim 5. Accordingly, we do not
sustain the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Surawski and Wozniak.
Claim 14
Claim 14 recites that "the spill-back pipe is configured to cause the
excessive fuel in the second tank exceeding a predetermined height to
overflow into the first tank." Appeal Br. 21 (Claims App.). The Examiner
finds that "the spill-back pipe [of Wozniak is configured to cause the
excessive fuel in the second tank (i.e., outboard wing tank) exceeding a
predetermined height (i.e.[,] the height to which the pump may initiate
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Appeal2018-005850
Application 14/070,753
transfer of fuel) to overflow into the first tank (i.e.[,] inboard wing tank
([F]ig. 4b)." Non-Final Act. 5.
Appellant argues that "[a]t most, it is the pump of Wozniak ... that
controls the height of fuel in the outboard tank," whereas the claim requires
that the spill-back pipe itself be configured to remove the excessive fuel.
Appeal Br. 13. The Examiner responds that "the pump is located at a
predetermined height, and ... if the fuel is not located at the height of the
pump, the fuel would not flow into the pipe" and because "the pipe is
attached to the pump in Wozniak, the pipe is configured to cause the fuel to
flow from the second tank into the first tank when exceeding the
predetermined height." Ans. 5---6. We agree with the Examiner that the
spill-back pipe is configured to cause excessive fuel in the second tank
exceeding a predetermined height to overflow into the first tank in that the
vertical location of the pipe and the pump attached to it affect the ability to
transfer fuel from the second tank to the first tank.
For the foregoing reasons, Appellant does not apprises us of error in
the Examiner's conclusion that the combination of Surawski and Wozniak
renders obvious the subject matter of claim 14. Accordingly, we sustain the
rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Surawski and Wozniak.
Claims 10, 12, 15, and 17
Whereas independent claim 1 requires "a second gas pipe that directly
or indirectly supplies the nitrogen enriched air to the spill-back pipe"
(Appeal Br. 18 (Claims App.)), independent claim 10 more particularly
requires that "the nitrogen enriched air is supplied to the second tank via the
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Application 14/070,753
gas pipe and the spill-back pipe, in a descent phase of the aircraft" similar to
dependent claim 5 (id. at 20 (Claims App.)).
For the same reasons as described above in connection with dependent
claim 5, Appellant apprises us of error in the Examiner's conclusion that the
combination of Surawski and Wozniak renders obvious the subject matter of
claim 10. Accordingly, we do not sustain the rejection of claim 10, or
claims 12, 15, and 17 depending therefrom, under 35 U.S.C. § 103(a) as
unpatentable over Surawski and Wozniak.
Rejection II
Claim 2 recites, among other things, "a bypass pipe that penetrates a
boundary between the first tank and the second tank passes through an inside
of the first tank, the bypass pipe including an inlet and an outlet for the fuel,
the inlet and the outlet of the bypass pipe being provided in the second
tank." Appeal Br. 18 (Claims App.). The Examiner finds that "Surawski as
modified by Wozniak ... teach a bypass pipe (for fuel (80)) that penetrates a
boundary between the first tank and the second tank ([F]ig. 5) and passes
through an inside of the first tank ... , the bypass pipe including an outlet
for the fuel (where fuel (80) is exiting) and an inlet (56) ([F]ig. 7), the inlet[]
and the outlet of the bypass pipe[] being provided in a second tank ([F]ig.
7)." Non-Final Act. 6.
The Examiner acknowledges that "Surawski as modified by Wozniak
fails to disclose the inlet (56) is a pipe." Id. The Examiner turns to Lynas as
teaching "a fuel tank system having a conduit (202) for transferring fuel
from an outboard tank (107) to an inboard tank (102)." Id. The Examiner
concludes that it would have been obvious to have further modified
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Application 14/070,753
Surawski/Wozniak "to have a pipe at the inlet" that "would create space for
a valve to control the return of fuel from the outboard tank." Id. at 7.
Appellant argues that "[p]lacing the pipe ofLynas ... into the
opening 56, at most, simply replaces the opening for a pipe. [However,]
[t]he inlet of the pipe would still be in one tank and the outlet of the pipe
would be in a different tank." Reply Br. 5. We agree with Appellant.
Modifying opening 56 of Figure 7 of Wozniak so as be a pipe does not
adequately explain how the particular pipe, of which the outlet has been
indicated as being where fuel 80 is exiting in a tank, has an inlet that is
provided in the same tank.
For the foregoing reasons, Appellant apprises us of error in the
Examiner's conclusion that the combination of Surawski, Wozniak, and
Lynas renders obvious the subject matter of claim 2. Accordingly, we do
not sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Surawski, Wozniak, and Lynas.
Rejection III
Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with independent claim 1 as the basis for seeking
reversal of the rejection of claim 4. Appeal Br. 16. Accordingly, we also
sustain the rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Surawski, Wozniak, and Runnels.
DECISION
The Examiner's decision to reject claims 1, 7-9, 11, 14, and 16 under
35 U.S.C. § 103(a) as unpatentable over Surawski and Wozniak is
AFFIRMED.
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Application 14/070,753
The Examiner's decision to reject claims 5, 10, 12, 15, and 17 under
35 U.S.C. § 103(a) as unpatentable over Surawski and Wozniak is
REVERSED.
The Examiner's decision to reject claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Surawski, Wozniak, and Lynas is REVERSED.
The Examiner's decision to reject claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Surawski, Wozniak, and Runnels is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
12
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOK.I FUKUDA
Appeal2018-005850
Application 14/070,753
Technology Center 3600
Before JAMES P. CAL VE, MICHELLE R. OSINSKI, and
WILLIAM C. CAPP, Administrative Patent Judges.
CAL VE, Administrative Patent Judge, concurring.
I concur with the decision authored by Judge Osinski; however,
additional issues support the decision to affirm the Examiner's rejection.
The Appeal Brief shall contain arguments, which "shall explain why
the examiner erred as to each ground of rejection contested by appellant."
37 C.F.R. § 41.37(c)(l)(iv). The Board has interpreted this provision (and
its predecessor) to require an applicant to identify the alleged error in an
examiner's rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("Moreover, even assuming that the examiner had failed to make a prima
facie case, the Board would not have erred in framing the issue as one of
'reversible error."); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) ("The panel then reviews the obviousness rejection for error
based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon.") (cited with approval in Jung, 637 F.3d at
1365). As a result, we limit our review to arguments raised by Appellant.
Appeal2018-005850
Application 14/070,753
Regarding the rejection of claim 1, Appellant argues that Figure 4b of
Wozniak teaches pump that conveys fuel from an outboard fuel tank to an
inboard fuel tank through a pipe. Appeal Br. 10. Thus, this fact is admitted.
The Examiner correctly finds that Wozniak discloses all the structure
recited in claim 1 for the claimed system. Ans. 4--5. In response, Appellant
argues that Wozniak's pipe is disposed at a lowermost part of the outerboard
tank and a pump removes substantially all of the fuel in the outboard tank.
Appeal Br. 11. Appellant argues the pipe of Wozniak is not a "spill-back"
pipe because it does not allow excessive fluid to spill-over or flow by gravity
from one tank to another. Id.
Appellant's arguments regarding the position of Wozniak's pipe in a
lowermost part of the outboard tank is not persuasive because claim 1 does
not exclude such a position or recite any particular position of an outlet in
either tank. Claim 1 merely requires an inlet for the fuel to be at a higher
position than an outlet for the fuel. The Examiner identifies structure in
Wozniak that places one end of the pipe in Figure 4b at a higher position
than another end of the pipe, i.e., the end of the pipe located in the outboard
tank is shown as "higher" than the other end in the inboard tank. Claim 1
requires no more in this regard, and Appellant's arguments do not apprise
me of Examiner error in these findings.
Nor does Appellant's attorney provide any evidence that a spill-back
is an art-recognized term or element. See Reply Br. 2; see also Invitrogen
Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005)
("Unsubstantiated attorney argument regarding the meaning of technical
evidence is no substitute for competent, substantiated expert testimony.").
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Application 14/070,753
Furthermore, Appellant's arguments that the claimed spill-over must
allow a fluid to spill-over or flow by gravity from one tank to another is not
commensurate with the scope of claim 1. Claim 1 recites that a spill-back
pipe is arranged between the first and second tank "to cause excessive fuel in
the second tank to flow into the first tank." As Appellant points out, the
spill-back pipe does not cause fluid to flow; gravity does. Claim 1 does not
recite this critical feature of the spill-back pipe, particularly given the many
orientations of an aircraft during flight. Thus, Appellant has not explained
persuasively why the fuel flow pipe in Wozniak cannot be a spill-back pipe.
Moreover, Appellant has not explained why the presence of a pump prevents
fluid flow in Wozniak's pipe due to gravity.
Essentially, Appellant wants us to interpret "spill-back pipe" to mean
an element having an "inlet" and an "outlet" without a pump attached either
to the inlet or to the outlet such that fluid flows through the spill-back pipe
via gravity. Appellant points to no lexicographic definition that requires us
to interpret this term in such a limited manner. Under a broadest reasonable
interpretation, we are not required to read limitations from the Specification
into the claims or to limit the claims to a particular embodiment when the
claim language is broader than that embodiment as it is here. Essentially,
Appellant wants us to interpret "spill-back pipe" as imposing a negative
limitation such that no other element is connected to an inlet or an outlet.
The Examiner correctly finds that Wozniak's pump would "cause
excessive fuel in the second tank to flow into the first tank" and Appellant
has not apprised us of error in that finding except to argue that Wozniak
does not prevent "excessive" fuel in the second tank. See Final Act. 3;
Appeal Br. 11; Reply Br. 2 ( arguing that a pump where fluid is pumped
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Application 14/070,753
through the pipe is not a "spill-back pipe"). Appellant's argument raises an
issue regarding the clarity of claim 1. Appellant's interpretation of claim 1
to require fluid to be "allowed" to flow by "gravity" when claim 1 merely
requires the pipe to "cause excessive fuel ... to flow" without specifying
that such flow is caused only by gravity should be clarified.
During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow .... The
reason is simply that during patent prosecution when claims can
be amended, ambiguities should be recognized, scope and
breadth of language explored, and clarification imposed ....
An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this
way can uncertainties of claim scope be removed, as much as
possible, during the administrative process.
In re Zietz, 893 F.2d 319, 321-22 (Fed. Cir. 1989) (quoted in Packard, 751
F.3d at 1313). Because applicants are in the best position to resolve any
ambiguity in the patent claims, patent examiners should demand that they do
so in appropriate circumstances so the application can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation.
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008) (quoted in Packard, 751 F.3dat 1313).
The term "excessive" raises similar issues of clarity. It is well settled
that claim language whose meaning depends entirely on a person's purely
subjective opinion, personal taste, or opinion without any guidance in the
claim language or written description is indefinite. E.g., Sonix Tech. Co. v.
Publ'ns Int'!, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017); Interval Licensing
LLC v. AOL, Inc., 766 F.3d 1364, 1373-74 (Fed. Cir. 2014); Datamize, LLC
v. Plumtree Software, Inc., 417 F.3d 1342, 1352 (Fed. Cir. 2005).
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Appellant's arguments do not provide any objective standard or other
explanation to guide a skilled artisan to determine what is an "excessive"
amount of fuel. Nor has Appellant explained why Wozniak's arrangement
does not satisfy this limitation. See Appeal Br. 11; Reply Br. 2-3; see also
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that a patent
applicant may recite features of an apparatus structurally or functionally;
however, if the PTO has a reason to believe that the prior art possesses that
functional feature as an inherent characteristic, it has the authority to require
the applicant to prove that the subject matter does not possess the claimed
functional feature.).
Notably, claim 1 does not even clearly tie the inlet and outlet to the
spill-back pipe. The spill-back pipe is "set such that an inlet for the fuel is at
a higher position than an outlet for the fuel."
5
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOK.I FUKUDA
Appeal2018-005850
Application 14/070,753
Technology Center 3600
Before JAMES P. CALVE, MICHELLE R. OSINSKI, and
WILLIAM C. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge, dissenting-in-part.
I do not agree with the majority's decision to sustain the Examiner's
rejection of claim 1.
In my opinion, the Examiner and panel majority use an overly broad
interpretation of the "spill-back pipe" limitation. During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. A cad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable
interpretation standard, claim terms are given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). However, a construction that is "unreasonably
broad" and which does not "reasonably reflect the plain language and
Appeal2018-005850
Application 14/070,753
disclosure" will not pass muster. Microsoft Corp. v. Proxyconn, Inc. v 789
F.3d 1292, 1298 (Fed. Cir. 2015).
It is a "bedrock principle" of patent law that "the claims of a patent
define the invention to which the patentee is entitled the right to exclude."
Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d
1111 (Fed. Cir. 2004); see also Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576 (Fed.Cir.1996) ("we look to the words of the claims themselves ...
to define the scope of the patented invention"); Markman v. Westview
Instruments, Inc., 52 F.3d 967,980 (Fed.Cir.1995) (en bane), ajfd, 517 U.S.
370 (1996) ("The written description part of the specification itself does not
delimit the right to exclude. That is the function and purpose of claims.").
It is well settled that the claims themselves provide substantial
guidance as to the meaning of particular claim terms. Phillips v. A WH
Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005); see also ACTV, Inc. v. Walt
Disney Co., 346 F.3d 1082, 1088 (Fed.Cir.2003) ("the context of the
surrounding words of the claim also must be considered in determining the
ordinary and customary meaning of those terms"). Thus, the context in
which a term is used in the asserted claim can be highly instructive.
Phillips, at 1314. The Phillips court cited numerous examples in which the
use of a term within the claim provides a firm basis for construing the term.
Id., citing Mars, Inc. v. HJ. Heinz Co., 377 F.3d 1369, 1374 (Fed. Cir.
2004) (claim term "ingredients" construed in light of the use of the term
"mixture" in the same claim phrase); Process Control Corp. v. HydReclaim
Corp., 190 F.3d 1350, 1356 (Fed. Cir. 1999) (claim term "discharge rate"
construed in light of the use of the same term in another limitation of the
same claim).
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Appeal2018-005850
Application 14/070,753
In my opinion, the majority decision relies too heavily on a plain
English language dictionary definition of "spill" to derive an ordinary and
customary meaning for "spill-back pipe." Phillips highlighted the problem
with over reliance on dictionary definitions in construing claim language.
The main problem with elevating the dictionary to such
prominence is that it focuses the inquiry on the abstract
meaning of words rather than on the meaning of claim terms
within the context of the patent. Properly viewed, the "ordinary
meaning" of a claim term is its meaning to the ordinary artisan
after reading the entire patent. Yet heavy reliance on the
dictionary divorced from the intrinsic evidence risks
transforming the meaning of the claim term to the artisan into
the meaning of the term in the abstract, out of its particular
context, which is the specification.
Phillips, 415 F.3d at 1321.
In the instant case, the word "spill" is used in the context of aircraft
fuel systems. Persons of ordinary skill in such field understand that fuel can
be transferred between fuel tanks by means of either gravity or fuel transfer
pumps. Persons of ordinary skill also understand that aircraft and their
associated fuel systems are affected by various forces and changes of
orientation vis-a-vis the Earth's gravitational force. For example, banking
an aircraft left and right, changing an aircraft angle of attack during climb or
descent, and G-forces experienced in aircraft maneuvering may have
different effects on various aspects of an aircraft fuel system depending on
whether those aspects operate under gravity flow or via a fuel transfer pump.
Here, the claimed "spill-back pipe" is arranged between a first tank
and a second tank. Claims App., claim 1. Such arrangement causes
"excessive fuel" in the second tank to flow into the "first tank." Id.
Furthermore, the spill-back pipe is configured so that fuel in the first tank is
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Appeal2018-005850
Application 14/070,753
consumed first while setting an amount of fuel in the second tank at a given
amount. Id. Furthermore, a spill-back pipe inlet situated so that it is in a
higher position than an outlet. Id. Moreover, situating an inlet in a higher
position than an outlet takes into account a climb angle of the aircraft. Id.
Taking the foregoing into account, it is my opinion that a person of
ordinary skill in the art of aircraft fuel system design would understand that
the claimed "spill-back" pipe entails fuel transfer between tanks by gravity
flow and without the assistance of a fuel transfer pump. It strikes me as
incongruent that person of ordinary skill in the art would understand a "spill-
back pipe" to encompass a fuel transfer pump in the overall context of a
system that contemplates "excessive fuel," "setting an amount ... in the
second tank," and the height of an inlet and outlet relative to climb angle.
Therefore, taking the surrounding context of the language of the claim into
account and applying the correct construction, the Wozniak reference fails to
satisfy the "spill-back pipe" limitation of claim 1 as Wozniak relies on a fuel
transfer pump rather than gravity to transfer fuel from a first tank to a second
tank.
For the foregoing reasons, I would reverse the Examiner's rejection of
claim 1 as well as the rejection of any other claims that are based on finding
that Wozniak discloses a "spill-back pipe."
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