Ex Parte GRIFFIN et al

Patent Trials and Appeals Board

Jun 8, 2018

14297370 - (D) (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/297,370 06/05/2014
64728 7590 06/12/2018
SHUMAKER, LOOP & KENDRICK, LLP
NORTHROP GRUMMAN CORPORATION
42690 WOODWARD A VENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
FIRST NAMED INVENTOR
KRISTEN S. GRIFFIN
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.
NGC-00147(006504-0030) 3364
EXAMINER
GREEN, RICHARD R
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
CCARDINALE@SLK-LA W.COM
tlopez@slk-law.com
c golupski@ slk-law. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTEN S. GRIFFIN, JON CARPENTER,
GREGORY J. LEE, AMY LO, RONALD POLIDAN, DANIEL SOKOL,
BARNABY WAINF AN, WARREN JAMES, and DENNIS POULOS.
Appeal2017-008133
Application 14/297,370
Technology Center 3600
Before DANIEL S. SONG, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1, 5, 6, 8-15, 19, and 20. App. Br. 3.
Claims 2--4, 7, and 16-18 have been cancelled. App. Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to a semi-buoyant
aerial vehicle and, more particularly, to a semi-buoyant propelled or gliding
aerial vehicle for exploring solar system bodies with an atmosphere." Spec.
i-f 2. Apparatus claims 1 and 15 are independent. Claim 1 is illustrative of
the claims on appeal and is reproduced below.
1. An aerial vehicle comprising a collapsible and rigid
vehicle body defining an enclosure capable of being filled with a
lighter than air gas so as to make the vehicle semi-buoyant or
100% buoyant at a predetermined altitude in an atmosphere
above a solar system body, said vehicle body having a shape
suitable to provide aerodynamic lift, said vehicle further
comprising at least one propulsion device directly coupled to and
extending from the vehicle body, said at least one propulsion
device providing power to propel and provide thrust induced
aerodynamic lift of the vehicle above the semi-buoyant or 100%
buoyant altitude to a higher altitude where the vehicle can
maintain that altitude through the aerodynamic lift and vehicle
buoyancy, wherein the vehicle is configured to be deployed and
inflated from a collapsed and stowed configuration to a
deployed/inflated configuration in an orbit above the atmosphere
of the solar system body, and wherein the vehicle is configured
to enter the atmosphere in the deployed/inflated configuration
and descend to the semi-buoyant or 100% buoyant altitude
without propulsion, and wherein the vehicle is configured to have
a low aerial density that is effective to provide a low ballistic
coefficient lifting entry of the vehicle into the atmosphere of the
solar system body and a controlled transition between the entry
into the atmosphere and flight in the atmosphere, and wherein
the vehicle is configured to be deployed and inflated from the
collapsed and stowed configuration to the deployed/inflated
configuration while being coupled to a spacecraft, said aerial
vehicle being in communication with the spacecraft while the
aerial vehicle is separated from the spacecraft.
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REFERENCES RELIED ON BY THE EXAMINER
Miller, Jr. US 4, 149 ,688 Apr. 17, 1979
Putman et al. US 6,179,248 Bl Jan. 30, 2001
Shaw US 8,104,718 B2 Jan. 31, 2012
THE REJECTIONS ON APPEAL
Claims 1, 5, 6, 8-15, 19, and 20 are rejected under 35 U.S.C.
§ 112(b ), as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the joint inventors regard as the
invention.
Claims 1and8-14 are rejected under 35 U.S.C. § 103 as unpatentable
over Putman and Shaw.
Claims 5, 6, 15, 19, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Putman, Shaw, and Miller, Jr.
Claims 15, 19, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Shaw and Miller, Jr.
ANALYSIS
The rejection of claims 1, 5, 6, 8-15, 19, and 20
as being indefinite
The Examiner addresses both independent claims 1 and 15, and
particularly the limitation common to both that "the vehicle is configured to
have a low aerial density that is effective to provide a low ballistic
coefficient lifting entry." The Examiner explains, "'low ballistic coefficient'
is unclear because neither the claims nor the specification provide context
for what would constitute a 'low' ballistic coefficient compared with a
'high' ballistic coefficient." Final Act. 3. The Examiner states that such a
"distinction is difficult to ascertain without context in the disclosure" and
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that Appellants have "not given any examples of low or high ballistic
coefficients to show how one skilled in the art would understand the scope
of the term." Final Act. 4; Ans. 11. The Examiner also applies the same
reasoning and rejection regarding the limitation "low aerial density." Final
Act. 4.
Appellants reply that, in this case, "the claimed invention is directed
to an aerial vehicle for exploring a solar system body;" that "those persons
skilled in the art are rocket scientists;" and, it "is well understood [that]
being a 'rocket scientist' is the highest of all skills." App. Br. 7. Based on
this, Appellants contend that one skilled in the art "would easily understand
the difference between a low ballistic coefficient lifting entry and a high
ballistic coefficient lifting entry." App. Br. 7; see also Reply Br. 2.
Appellants also state, "MPEP § 2173.0S(c) allows use of the term 'effective'
in claim language jf one skilled in the art could determine the relevant values
associated therewith." 1 Reply Br. 2 (emphasis added).
Appellants have clearly identified the problem addressed by the
Examiner, i.e., Appellants have provided no context or framework or scale
by which one skilled in the art (i.e., a "rocket scientist") would be able to
ascertain whether a certain ballistic coefficient (or aerial density) was "low"
or not. In short, Appellants proffer no reference point for comparison. For
example, a value that might be deemed to be "low" is actually higher than
1 Of particular note is Appellants' failure to reference any passage in
Appellants' Specification that might provide guidance as to any constraints
intended for the claim term "low." This need for a boundary or a
perspective is consistent with one of its dictionary definitions, i.e., "situated
or passing little above a reference line, point, or plane." WEBSTER'S NEW
COLLEGIATE DICTIONARY 676 (1979). See also https://www.merriam-
webster.com/dictionary/low (last visited June 5, 2018).
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the next lowest value. In other words, Appellants do not explain or provide
any example as to how low the claim term "low" is to be construed. One
might then ask, how low is "low?" because no gauge or measure is provided
by Appellants to assist in understanding what the claim means. Appellants
also do not proffer any persuasive evidence in support of its assertion that
such a term would be understood by one of ordinary skill in the art.
Accordingly, although the extremes of this spectrum may be clear to
one skilled in the art, we agree with the Examiner that, "that does not mean
that the scope of the claim is definite." Ans. 11. Thus, based on the record
presented, we affirm the Examiner's rejection of independent claims 1 and
15, and their dependent claims 5, 6, 8-14, 19, and 20, as being indefinite.
The obviousness rejections of claims 1, 5, 6, 8-15, 19, and 20
under 35 USC§ 103
Before reviewing a rejection under 35 U.S.C. § 103 can be undertaken
(as here), "it is essential to know what the claims do in fact cover." In re
Steele, 305 F.2d 859, 862 (CCPA 1962). In Steele, the predecessor to our
reviewing court stated that their "analysis of the claims indicates that
considerable speculation as to meaning of the terms employed and
assumptions as to the scope of such claims were made by the examiner and
the board" and that "we do not think a rejection under 35 U.S.C. § 103
should be based on such speculations and assumptions." Id. Consequently,
until it is made clear what the claims do, in fact, cover, we decline to address
the Examiner's rejections under 35 U.S.C. § 103, or Appellants' responses in
relation thereto.
For the foregoing reasons, we reverse the Examiner's rejections under
35 U.S.C. § 103 (whether such rejection pertains to (a) claims 1 and 8-14 in
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view of Putman and Shaw; (b) claims 5, 6, 15, 19, and 20 in view of Putman,
Shaw, and Miller, Jr.; or, ( c) claims 15, 19, and 20 in view of Shaw and
Miller, Jr.). It should be understood, however, that our decision in this
regard is based solely on the indefiniteness of the claimed subject matter and
does not reflect the adequacy of the prior art evidence applied in support of
these art rejections under § 103. Once definite claims are presented, the
Examiner is free to apply the same, different, or additional prior art as the
Examiner so chooses.
DECISION
The Examiner's rejection of claims 1, 5, 6, 8-15, 19, and 20 as being
indefinite is affirmed.
The Examiner's rejections of claims 1, 5, 6, 8-15, 19, and 20 as being
obvious are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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