Ex Parte Guzzardo

Board of Patent Appeals and Interferences

Aug 12, 2004

09964149 (B.P.A.I. Aug. 12, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

Paper No. 13

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRYAN J. GUZZARDO
____________

Appeal No. 2004-1600
Application No. 09/964,149
____________

ON BRIEF
____________

Before WARREN, JEFFREY T. SMITH and PAWLIKOWSKI, Administrative
Patent Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1, 2, 9, 10, 12-14, 16, and
19.
Claims 1 and 13 are representative of the subject matter on
appeal and are set forth below:
1. A notched blade seal for covering a gap
between a wing and a wing flap of a high performance
aircraft, comprising:
a bottom seal strip of a flexible, resilient
material having a generally right triangle cross-
section configuration and a plurality of spaced-apart
notches defining a plurality of finger portions, and
a top seal strip of a flexible, resilient
material having a generally right triangle cross-
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Application No. 09/964,149

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section configuration similar to the bottom seal strip
and also having a plurality of spaced-apart notches
defining a plurality of finger portions,
the top seal strip overlying and engaging the
bottom seal strip along one leg of the generally right
triangle cross-section configuration and being
positioned relative to the bottom seal strip such that
the fingers of the top seal strip overlie and cover
the notches in the bottom seal strip.

13. A notched blade seal for covering a gap
between a wing and a wing flap of a high performance
aircraft, comprising:
an elongated bottom seal strip having a generally
right triangle cross-section configuration and a
plurality of spaced-apart notches defining a plurality
of spaced-apart finger portions, and
an elongated top seal strip having a generally
right triangle cross-section configuration similar to
the bottom seal strip and also having a plurality of
spaced-apart notches defining a plurality of finger
portions,
the top seal strip overlying and engaging the
bottom seal strip along one leg of the generally right
triangle cross-section configuration and being
positioned relative to the bottom seal strip such that
the fingers of the top seal strip overlie and cover
the notches in the bottom seal strip,
each seal strip having a substantially uniform
width along a longitudinal extent and being tapered
widthwise from a thicker edge to a thinner edge, and
the notches and fingers being along the thinner
edge.

The examiner relies upon the following references as
evidence of unpatentability:
Honeycutt, Jr. et al. 4,645,217 Feb. 24, 1987
(Honeycutt, Jr.)
Burbridge et al. 5,913,494 Jun. 22, 1999
(Burbridge)

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Application No. 09/964,149

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Claims 1, 2, 9, 10, 12-14, 16, and 19 stand rejected under
35 U.S.C. § 103 as being obvious over Honeycutt in view of
Burbridge.

OPINION
Beginning on page 3 of the brief, appellant argues that
there is no suggestion or motivation to combine Honeycutt and
Burbridge as proposed by the examiner. We agree for the
following reasons.
It is the examiner’s position that it would have been
obvious “to utilize the teachings of Burbridge, in regards to a
seal having a right triangle cross-section configuration, to
increase flexibility of Honeycutt’s flexible finger portions,
such that reduced actuation force is sufficient to actuate said
flexing.” Answer, page 5.
The examiner further states that “one of ordinary skill in
art would reasonably be led to reduce the required actuation
force of Honeycutt’s fingers, since ‘stiff’ fingers requiring
large actuation forces would be susceptible to fractures while
engaging the sliding member.” The examiner states that
“[a]ccordingly, it would have been obvious to one having
ordinary skill to modify Honeycutt the with explicit teachings
of Burbridge.” Answer, pages 5-6.
We note that where an obviousness determination is based on
a combination of prior art references, there must be some
“teaching, suggestion or incentive supporting the combination.”
In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). “[T]he factual inquiry whether to combine references
must be thorough and searching.” McGinley v. Franklin Sports,
Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir.
Appeal No. 2004-1600
Application No. 09/964,149

4
2001). Thus, the burden is on the examiner to identify concrete
evidence in the record to support his conclusion that it would
have been obvious to modify the teachings of the cited
references to achieve the claimed invention. See, In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In the instant case, as explained by appellant on pages 3-4
of the brief, the finger seal means 12 of Honeycutt has a
particular shape important in Honeycutt to perform its
particular function. See Figure 1 of Honeycutt (particularly
finger seal means 12). The examiner has not explained how
changing the particular shape of the finger seal means 12 in
Honeycutt, to correspond with the shape disclosed in Burbridge,
would still allow for the finger seal means 12 in Honeycutt to
perform its function as required in Honeycutt (which is to
prevent cooling gas flow exiting from between augmentor casing
12 and augmentor liner 16 from leaking forwardly between
augmentor casing 14 and nozzle actuating cylindrical sleeve 59).
See column 3, lines 24-28 of Honeycutt.
Also, while the examiner states that incorporating such a
shape would serve to reduce actuation force, the examiner does
not support this conclusion with evidence sufficient to satisfy
the reasonable expectation of success standard. See, In re Merck
& Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 379 (Fed. Cir.
1986). Also, the examiner never explains how the resultant
shape would continue to be able to function as required in
Honeycutt. Honeycutt’s finger seal means 12 is incorporated
between an augmentor duct and nozzle actuating sleeve of a jet
engine, whereas, the blade seal of Burbridge is to be employed
on the exterior of the aircraft at control surfaces 12 as shown
in Figure 1. In view of these two disparate teachings, it is
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Application No. 09/964,149

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clear that the examiner’s rejection can only be based on
improper hindsight reasoning. In re Fine, 837 F.2d 1071, 1075,
5 USPQ2d 1596, 1600 (Fed. Cir. 1988) (“One cannot use hindsight
reconstruction to pick and choose among isolated disclosures in
the prior art to deprecate the claimed invention.”).
Hence, we agree with the appellant that a person of
ordinary skill in the art would not have been motivated to
combine Honeycutt and Burbridge. Honeycutt was designed to
prevent cooling gas flow exiting from between an augmentor
casing and an augmentor liner from leaking forwardly between
augmentor casing and nozzle actuating cylindrical sleeve of a
jet engine, whereas Burbridge was designed to acquire less
actuation force moving from the blade seal when a control
surface is pivoted. Hence, we reiterate that we believe that
the only guidance for so combining the applied reference
teachings is based upon impermissible hindsight derived from
appellants’ own disclosure (W.L. Gore & Assocs. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984)) rather than some
teaching, suggestion or incentive derived from the prior art
(ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir., 1984)).

Appeal No. 2004-1600
Application No. 09/964,149

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Accordingly, we reverse the rejection.

REVERSED

CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)BOARD OF PATENT
) APPEALS AND
JEFFREY T. SMITH ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld
Appeal No. 2004-1600
Application No. 09/964,149

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