Ex Parte Gaitonde

Board of Patent Appeals and Interferences

May 27, 2009

10484425 (B.P.A.I. May. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN M. GAITONDE
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Appeal 2009-002456
Application 10/484,425
Technology Center 1700
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Decided:1 May 27, 2009
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Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3-14, and 18-30. We have jurisdiction under 35

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002456
Application 10/484,425

U.S.C. § 6.
We REVERSE.
Statement of the Case
Appellant claims a structural component for an aircraft, said
component having a locally longitudinally planar feature, the component
comprising a first composite fiber and matrix material exhibiting a first
tensile modulus, an opening in the locally longitudinally planar feature
wherein the material bounding the opening includes a second composite
fiber and matrix material exhibiting a second tensile modulus which is
smaller than the first tensile modulus (claim 1). Appellant also claims a
lower lifting surface skin for an aircraft comprising first and second
composite and fiber matrix materials exhibiting the tensile modulae
discussed above and an opening in the skin wherein a portion of the skin
bounding the opening is the second composite fiber and matrix material
(claim 18).
Representative claims 1 and 18, the sole independent claims on
appeal, read as follows:
1. A structural component for an aircraft, said component having
at least a locally longitudinally planar feature, the component comprised of a
first composite fibre and matrix material exhibiting a first tensile modulus,
wherein an opening is provided in the locally longitudinally planar feature of
the component and the material of a portion of the component bounding the
opening is a second composite fibre and matrix material exhibiting a second
tensile modulus, said second tensile modulus is smaller than the first tensile
modulus, wherein said first composite fibre and matrix material includes
fibres of a first type and the second composite fibre and matrix material
includes fibres of a second type, the fibres of the second type having a
tensile modulus smaller than the tensile modulus of the fibres of the first
type.

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18. A lower lifting surface skin for an aircraft, comprised of:

first and second composite fibre and matrix materials, said materials
exhibiting first and second tensile modulae, respectively, said second
material tensile modulus is smaller than said first material tensile modulus,
wherein said first material includes fibres of a first type and the second
material includes fibres of a second type, the fibres of the second type
having a tensile modulus smaller than the tensile modulus of the fibres of the
first type; and

at least one opening is provided in the skin and, wherein a portion of
the skin bounding the opening is said second composite fibre and matrix
material.

The reference set forth below is relied upon the Examiner as evidence
of anticipation and obviousness:
Browne 5,914,163 Jun. 22, 1999
The Examiner rejects claims 1 and 3-14 under the first paragraph of
35 U.S.C. § 112 for failing to comply with the written description
requirement.
The Examiner rejects all appealed claims under the second paragraph
of 35 U.S.C. § 112 for failing to particularly point out and distinctly claim
the subject matter which Appellant regards as the invention.
The Examiner rejects claims 1, 3, 4, 7-10, 12-14, 18-20, 23-26, and
28-30 under 35 U.S.C. § 102(b) as being anticipated by Browne.
Finally, the Examiner rejects claims 5, 6, 11, 21, 22, and 27 under 35
U.S.C. § 103(a) as being unpatentable over Browne.

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Appeal 2009-002456
Application 10/484,425

The § 112, first paragraph, rejection
Issue
Has Appellant shown error in the Examiner’s finding that the claim 1
phrase “locally longitudinally planar feature” violates the written description
requirement?
Findings of Fact (FF)
The Examiner finds that “the term ‘locally longitudinally planar
feature’ is not a concept in the specification verbatim nor is there sufficient
guidance such that one of ordinary skill in the art would have appreciated
that Applicant has possession of the claimed subject” (Ans. 10).
Figures 1 and 2 of Appellant’s drawing show plan and cross-sectional
views respectively of a lower wing skin 1 (and associated wing structure)
which contains manholes 5, 6, 7 extending in a longitudinal direction along
the length of the wing (i.e., spanwise of the wing which is transverse to the
direction of flying) (Figs. 1-2; Spec. 1, ll. 20-23, 5, ll. 5-27).
Figures 1 and 2 are reproduced below:
Figure 1

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Application 10/484,425

Figures 1 and 2 show a lower wing skin and associated wing structure.
Principles of Law
In order to satisfy the written description requirement, the original
application disclosure must convey with reasonable clarity to those skilled in
the art that applicant, as of the filing date sought, was in possession of the
claimed invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991).
Drawings alone may, under proper circumstances, provide a “written
description” of the claimed invention as required by the first paragraph of
§ 112. Id. at 1564-65.
Analysis
Appellant argues that
the phrase “locally longitudinally planar feature” as used in
the claims, at least to one having ordinary skill in the aircraft
air, is a clear reference to a surface of the wing or fuselage or
any other aircraft component that is at least “locally planar”
and extends in a “longitudinal” direction

(App. Br. 9). We agree.
As indicated in the FF, Appellant’s Specification and drawings
disclose wing skin 1 containing manholes 5, 6, 7 extending in a longitudinal
direction. The longitudinally extending section of wing skin 1 which
contains these manholes is shown in Figures 1 and 2 as including a planar
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Application 10/484,425

feature and as being locally disposed (i.e., disposed on a limited area of the
wing skin surface) rather than globally disposed (i.e., disposed on the entire
wing skin surface).
For these reasons, the original disclosure of this application,
particularly Figures 1 and 2, would convey with reasonable clarity to those
skilled in the art that Appellant, as of the application filing date, was in
possession of the claim 1 invention including the claimed “locally
longitudinally planar feature”.
Conclusions of Law
Appellant has shown error in the Examiner’s finding that the claim 1
phrase “locally longitudinally planar feature” violates the written description
requirement.
Therefore, we cannot sustain the Examiner’s § 112, first paragraph,
rejection of claims 1 and 3-14.

The § 112, second paragraph, rejection
Issue
Has Appellant shown error in the Examiner’s determinations that all
appealed claims are incomplete and therefore indefinite because independent
claims 1 and 18 allegedly omit recitation of essential structural cooperative
relationships between “location of second composite relative to the first
composite” (Ans. 4) and that claims 1 and 3-14 also are indefinite because
allegedly “[i]t is unclear what type of feature” (id.) is defined by the claim 1
phrase “locally longitudinally planar feature”?

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Appeal 2009-002456
Application 10/484,425

Findings of Fact (FF)
See the previously discussed FF in addition to the Findings set forth
below.
Both independent claims 1 and 18 define a component or skin for an
aircraft comprising a first composite fiber and matrix material wherein an
opening is provided in the component or skin and a portion of the
component or skin bounding the opening is a second composite and fiber
and matrix material.
Principles of Law
The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope. In re Warnerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994).
Breadth is not indefiniteness. In re Gardner, 427 F.2d 786, 787-88
(CCPA 1970).
Analysis
Appellant argues that a claim is not necessarily indefinite simply
because it does not recite the inter-relationships between elements and that,
in any event, claims 1 and 18 clearly set forth the structural inter-relationship
between the first and second composite fiber and matrix materials (App. Br.
14-15). Appellant also argues that the claim 1 phrase “locally longitudinally
planar feature” would be understood by those having ordinary skill in the art
(App. Br. 16). These arguments are persuasive.
As noted in the above FF and explained by Appellant in the Appeal
Brief, both claims 1 and 18 explicitly define the location of the second
composite fiber and matrix material as “bounding the opening” (claims 1,
18). Moreover, the language of these claims permits the first composite
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fiber and matrix material to be located anywhere in the claimed component
or skin (which is indisputably consistent with the Specification disclosure).
Therefore, even assuming the Examiner is correct that “location of second
composite relative to the first composite” (Ans. 4) is essential for claim
completeness and definiteness, the appealed claims define the location of
these composites relative to one another. While the scope of this location
may be broad, claim breadth is not indefiniteness.
Concerning the claim 1 phrase “locally longitudinally planar feature”,
we have previously explained that this phrase is descriptively supported by
Appellant’s Specification and drawing disclosures. This explanation also
reveals that one with ordinary skill in this art would be reasonably apprised
of the meaning and scope of the phrase.
Conclusions of Law
Appellant has shown error in the Examiner’s determinations that all
appealed claims are incomplete and therefore indefinite because independent
claims 1 and 18 allegedly omit recitation of essential structural cooperative
relationships between “location of second composite relative to the first
composite” (Ans. 4) and that claims 1 and 3-14 also are indefinite because
allegedly “[i]t is unclear what type of feature” (id.) is defined by the claim 1
phrase “locally longitudinally planar feature”.
It follows that we cannot sustain the § 112, second paragraph,
rejection of all appealed claims.

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Appeal 2009-002456
Application 10/484,425

The § 102 and § 103 rejections
Issue
Has Appellant shown error in the Examiner’s finding that Browne
discloses the independent claim requirement that a portion of the component
or skin “bounding the opening” (claims 1, 18) is the second composite fiber
and matrix material exhibiting a second tensile modulus smaller than the
first?
Findings of Fact (FF)
The Examiner finds that Browne discloses a component comprising
first and second composite fiber and matrix materials which comprise
respectively carbon and glass fibers and which have respectively a first
tensile modulus and a smaller second tensile modulus wherein the
component includes an opening and a portion of the component bounding
the opening is the second composite fiber and matrix material (Ans. para.
bridging 4-5, para. bridging 6-7).
Browne discloses a composite tube having an opening therethrough
which is defined and surrounded by inner layers of carbon fiber fabric and
an outer layer of glass fiber mat added to the outermost surface of the carbon
fibers (Fig. 3C, col. 5, ll. 14-25, para. bridging cols. 5-6).
According to Appellant’s Specification, “[a] particular issue arises if it
desired to place a manhole in a lower wing skin formed of a composite fibre
[e.g., carbon fibers having a high tensile modulus] and matrix material” (1,
ll. 24-25). Specifically, the high stresses created during flight at the edge of
a manhole might not be withstood by the composite material (Spec. para.
bridging 1-2). The Specification teaches solving this problem by forming
the wing skin or component with a first composite fiber (e.g., carbon fiber)
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and matrix material exhibiting a first tensile modulus wherein a manhole
opening is provided in the skin or component and “the material of a portion
of the component bounding the opening is a second composite fibre and
matrix material exhibiting a second tensile modulus . . . that is smaller than
the first tensile modulus” (Spec. 2, ll. 19-22). The inclusion of this second
composite having relatively small tensile modulus in a portion of the
component bounding the opening “can be beneficial both in reducing the
exceptionally high stresses that are likely to arise around an opening
provided in the component and in enabling the component to withstand
higher longitudinal strains” (id. at ll. 28-30).
Principles of Law
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631-32 (Fed. Cir. 1987).
During examination, claims are to be given their broadest reasonable
interpretation consistent with the Specification, and claim language should
be read in light of the Specification as it would be interpreted by one of
ordinary skill in the art. In re Amer. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
Analysis
Appellant argues that the Examiner’s § 102 rejection of independent
claims 1 and 18 is improper for the following reason:
In the third full paragraph on page 14 of the Examiner's
Answer, the Examiner correctly points out that Browne
discloses that its crush tube is comprised of carbon fibers and
glass fibers and the Examiner correctly notes that the glass
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Application 10/484,425

fibers may have a tensile modulus smaller than the carbon
fibers. However, then the Examiner ignores the specific
teaching in Browne that "a thin layer of continuous strand
mat of glass fibers was added to the outer surface of the
carbon fibers as a processing aid . . . ." This clearly teaches
that if the glass fibers are on the outer surface, the carbon
fibers are on the inside of the tube, i.e., "bounding the
opening." This teaching is the direct opposite of Appellant's
claimed construction, i.e., that the lower tensile modulus
fibers bound the opening. Thus, the Examiner ignores this
specific teaching of the Browne reference which would lead
one of ordinary skill directly away from the claimed
construction and thus continues to fail to respond to the
Appeal Brief arguments.

(Reply Br. para. bridging 9-10).
This argument is persuasive.
As previously indicated, the independent claims require that a portion
of the component or skin “bounding the opening” is the second composite
fiber and matrix material having a smaller tensile modulus than the first
composite fiber and matrix material (claims 1, 18). In contrast, the opening
of Browne’s composite tube is immediately adjacent and surrounded by
higher tensile modulus carbon fibers as correctly explained by Appellant and
noted in our FF. These carbon fibers lie between the opening and the
smaller tensile modulus glass fibers in the outermost layer of Browne’s
composite tube. Contrary to the Examiner’s apparent belief, it would be
unreasonable and inconsistent with Appellant’s Specification disclosure to
interpret the independent claims as encompassing Browne’s arrangement
where larger tensile modulus carbon fibers lie between the opening and the
lower tensile modulus glass fibers. This is because such an arrangement
would exhibit the stress damage (see Spec. para. bridging 1-2) which
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Appellant’s invention seeks to avoid. Accordingly, the broadest reasonable
interpretation of the independent claim limitation “a portion of the
[component or skin] bounding the opening is [a or said] second composite”
requires the second composite to be immediately adjacent the opening.
Significantly, the Examiner proffers no express claim interpretation or
any other form of rebuttal to Appellant’s above-quoted argument. Under
these circumstances, the record before us supports a determination that the
Examiner’s § 102 rejection of the independent claims is erroneous. A
corresponding determination is also appropriate for the § 103 rejection since
the Examiner’s obviousness position does not even address much less
remedy the deficiency of the § 102 rejection.
Conclusions of Law
Appellant has shown error in the Examiner’s finding that Browne
discloses the independent claim requirement that a portion of the component
or skin “bounding the opening” (claims 1, 18) is the second composite fiber
and matrix material exhibiting a second tensile modulus smaller than the
first.
As a consequence, we cannot sustain the Examiner’s § 102 rejection
of claims 1, 3, 4, 7-10, 12-14, 18-20, 23-26, and 28-30 as being anticipated
by Browne or the §103 rejection of claims 5, 6, 11, 21, 22, and 27 as being
unpatentable over Browne.

Summary
None of the rejections advanced by the Examiner in this appeal has
been sustained.

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Order
The decision of the Examiner is reversed.

REVERSED

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