Ex Parte Goto

Board of Patent Appeals and Interferences

May 29, 2012

11256429 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENICHI GOTO
____________

Appeal 2010-006498
Application 11/256,429
Technology Center 3600
____________

Before TERESA STANEK REA, Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent and
Trademark Office, and LINDA E. HORNER and STEFAN STAICOVICI,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kenichi Goto (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 1-9, 11-13, and 16-19. Claims 10,
14, and 15 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
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THE INVENTION
Appellant’s claimed invention relates to an ice prevention system that
uses, in combination, a de-ice subsystem and an anti-ice subsystem in a
configuration that is correlated to engine position relative to the associated
wing. Spec. 3, para. [0006]. Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. An aircraft, comprising:
a fuselage defining a longitudinal center axis of the
aircraft;
first and second wings extending from opposite sides of
the fuselage, each wing defining a leading edge, said each wing
further defining first and second sections along a length thereof;
a first engine offset from the center axis on a first side of
the fuselage and generally rearward of the first wing leading
edge, said first engine being disposed on a first vertical side of
the first wing;
a second engine offset from the center axis on a second,
opposite side of the fuselage and generally rearward of the
second wing leading edge, said second engine being disposed
on the first vertical side of the second wing;
an anti-ice subsystem configured solely along a first
portion of the leading edge of the first section of each wing,
wherein the first sections are aligned with the first and second
engines on the first and second wings, and wherein the first
portion is only on the first vertical side of the first and second
wings; and
a subsystem, capable of performing a de-icing function
only, configured on the first section of each wing solely along a
second portion, opposite the anti-ice subsystem, said second
portion being on a second vertical side of the first and second
wings;
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wherein the anti-ice subsystem prevents ice from forming
on, and subsequently detaching from, the wing at a location
where said detached ice can contact the first and second engines
and the de-ice subsystem allows ice to form on, and be
subsequently detached from the wing at a location where
detaching ice passes around the first and second engines.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-5, 7, 9, 12, 13, 16, 17, and 19 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Giamati ‘610 (US 7,278,610 B2; iss. Oct. 9,
2007).
2. Claims 6 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Giamati ‘610 and Palmer (US 6,253,126 B1; iss. Jun. 26, 2001).
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Giamati ‘610.
4. Claims 1 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Boeing (“Boeing 747-400 Family”, Boeing (Aug. 2000), 1 page,
retrieved from http://web.archive.org/web/20000816092549/
http://www.boeing.com/commercial/747/family) and Giamati ‘314
(US 6,129,314; iss. Oct. 10, 2000).
CONTENTIONS AND ISSUE
Despite the claim language calling for the anti-ice subsystem to be
“configured solely along a first portion of the leading edge of the first
section of each wing,” the Examiner interpreted independent claims 1 and 12
to allow for an anti-ice subsystem on the second portion of the leading edge
of the first section of each wing because the claims use the open-ended
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transition term “comprising.” Ans. 9. Appellants argue that the claims limit
the specific location of the anti-icing subsystem to the first portion of the
wing. App. Br. 11. Appellants seek to have the Board reverse the rejections
because both Giamati ‘610 and Giamati ‘314 include anti-ice systems on the
second portion of the wing. App. Br. 12, 19-20.
The issue presented by this appeal is:
Does the claim language calling for the anti-ice subsystem to be
“configured solely along a first portion of the leading edge of the first
section of each wing” limit the claims so as not to encompass an aircraft also
having an anti-ice subsystem along a second portion of the leading edge of
the first section of each wing despite the use of the open-ended transition
term “comprising” in independent claims 1 and 12?
ANALYSIS
Claim Construction
Independent claims 1 and 12 call for “an anti-ice subsystem
configured solely along a first portion of the leading edge of the first section
of each wing, . . . wherein the first portion is only on the first vertical side of
the first and second wings.” (Emphasis added.) Claims 1 and 12 further
call for “a subsystem, capable of performing a de-icing function only,
configured on the first section of each wing solely along a second portion,
opposite the anti-ice subsystem, said second portion being on a second
vertical side of the first and second wings.” (Emphasis added).
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The Specification describes the use of the anti-ice system and the de-
ice system in the invention:
The ice prevention system of the present invention utilizes, in
combination, a de-ice1 subsystem and an anti-ice2 subsystem in
a new configuration that is correlated to engine position relative
to the associated wing. More specifically, depending on the
vertical location of the aircraft’s engines with respect to the
wing, the anti-ice subsystem is configured on an upper or lower
portion of the wing’s leading edge. If the engine is located
above the wing, the anti-ice system is configured only on the
upper portion of the leading edge on a section of the wing in
alignment with the engine. If the engine is located below the
wing, the anti-ice system is configured only on the lower
portion of the leading edge on a section of the wing in
alignment with the engine. The de-ice subsystem is configured
on the opposite portion of the leading edge adjacent to the anti-
ice subsystem and on the remainder of the leading edge of the
wing.
Spec. 3, para. [0006].
The claims define the first and second sections of the wings as being
disposed along a length of each wing and further define “the first sections
are aligned with the first and second engines” on the wings. The claims also
define a first vertical side of the first wing to be the vertical side of the wing
on which the first engine is disposed. The claims also define a first portion

1 “A de-ice system allows solid ice to form on the wing, but removes the ice
before it accumulates to a dangerous shape or amount. The accumulating ice
is peeled from the wing by the de-ice system and is blown off the wing by
passing air.” Spec. 1, para. [0002].
2 “An anti-ice system does not allow solid ice to even form on the wing,
thus, only condensate water is formed on the wing and the water is also
blown off by the passing air.” Spec. 1, para. [0002].
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of the first section of each wing as being “only on the first vertical side” of
each wing. In light of these definitions in the claim language, a person of
ordinary skill in the art would understand the claim language “an anti-ice
subsystem configured solely along a first portion of the leading edge of the
first section of each wing” when read in light of the Specification to call for
a subsystem that does not allow solid ice to form on the wing, i.e., an anti-
ice subsystem, to be disposed on a leading edge of each wing along a length
of each wing aligned with the engine and only on the vertical side of each
wing on which the engine is disposed. The claim language does not allow
for either the claimed anti-ice subsystem or another, unclaimed anti-ice
subsystem to be located on a leading edge of each wing along a length of
each wing aligned with the engine and on the vertical side of each wing
opposite the vertical side on which the engine is disposed. In other words,
the use of the word “comprising” in the preamble does not allow the
Examiner to read the word “solely” out of the claim. “The broadest-
construction rubric coupled with the term ‘comprising’ does not give the
PTO an unfettered license to interpret claims to embrace anything remotely
related to the claimed invention.” In re Suitco Surface, Inc., 603 F.3d 1255,
1260 (Fed. Cir. 2010) (in a case involving flooring, holding the PTO’s claim
construction that relied on the open-ended term “comprising” to read the
claim to allow for other materials to be placed on top of a claimed “finishing
layer” as unreasonably broad when the express language of the claim and the
specification required the finishing material to be the top and final layer on
the surface being finished). See also In re Skvorecz, 580 F.3d 1262, 1267
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(Fed. Cir. 2009) (holding that the Board erred relying on the claim term
“comprising” to hold that some wire legs of the claimed device need not
have an offset, when the claims state that each wire leg has an offset).
Anticipation by Giamati ‘610
Giamati ‘610 discloses an aircraft wing 112 that includes an
electrothermal deicing/anti-icing device 134. Col. 6, ll. 38-41 and 48-51;
fig. 7. In the embodiment of Figure 73, the wing 112 has an anti-icing zone
150a “disposed near the apex of the airfoil which continuously maintains
this area above freezing” and a lower anti-icing zone 150h disposed below
the wing. Col. 6, ll. 43-44, 46-48; col. 7, l. 4; fig. 7.
Based on the claim interpretation provided supra, we disagree with
the Examiner’s interpretation of the claim language as allowing for an anti-
ice subsystem along a second portion of the leading edge of the first section
of the wing. Ans. 9-10. Because Giamati ‘610 contains an anti-ice zone
150h on the second (lower) portion of the first section of the wing, Giamati
‘610 does not disclose “an anti-ice subsystem configured solely along a first
portion of the leading edge of the first section of each wing” as called for in
claims 1 and 12. As such, we cannot sustain the rejection of independent
claims 1 and 12, or claims 2-5, 7, 9, 13, 16, 17, and 19 depending therefrom,
as anticipated by Giamati ‘610.

3 The Examiner relied on the embodiment shown in Figure 7 of Giamati
‘610. Ans. 4
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Obviousness based on Giamati ‘610 alone or in view of Palmer
The Examiner’s obviousness rejections of dependent claims 6 and 18
based on Giamati ‘610 and Palmer and dependent claim 8 based on Giamati
‘610 alone are based on the same overly broad claim interpretation of
independent claims 1 and 12. Ans. 7. As such, we cannot sustain the
rejections of claims 6, 8, and 18 for the reasons provided supra.
Obviousness based on Boeing and Giamati ‘314
The Examiner’s rejection of claims 1 and 11 over Boeing and Giamati
‘314 is based on the finding that the “lower half of [skin heating means
101]” of Giamati ‘314 is the claimed anti-ice subsystem and “the upper half
is considered a second, non-claimed anti-icer.” Ans. 12
For the same reasons discussed supra in our analysis of the rejection
based on Giamati ‘610, we disagree with the Examiner’s interpretation of
the claim language as allowing for a second anti-ice subsystem along a
second portion of the leading edge of the first section. The language of
claim 1 limits the anti-ice subsystem to a location “solely along a first
portion of the leading edge of the first section of each wing.” As such, we
cannot sustain the rejection of independent 1, or dependent claim 11, as
unpatentable over Boeing and Giamati ‘314.
CONCLUSION
The claim language calling for the anti-ice subsystem to be
“configured solely along a first portion of the leading edge of the first
section of each wing” restricts the claims so as not to encompass an aircraft
also having an anti-ice subsystem along a second portion of the leading edge
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of the first section of each wing despite the use of the open-ended transition
term “comprising” in independent claims 1 and 12.
DECISION
The decision of the Examiner to reject claims 1-9, 11-13, and 16-19 is
REVERSED.

REVERSED

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