Ex Parte Hsu et al

Patent Trial and Appeal Board

Jul 10, 2013

11431632 (P.T.A.B. Jul. 10, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FRANK HSU and CHRIS OAKWOOD
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Appeal 2011-005618
Application 11/431,632
Technology Center 3600
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Before JAMES P. CALVE, WILLIAM A. CAPP, and
SCOTT A. DANIELS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-15. App. Br. 2. Claims 16-28 are canceled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

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CLAIMED SUBJECT MATTER
Claims 1, 6, and 11 are independent. Claim 1 is reproduced below:
1. An aerodynamic vented rotor, comprising:
an outboard disc;
an inboard disc spaced from the outboard disc; and
fins extending between the outboard disc and the inboard disc
and defining vents therebetween,
wherein the fins have a NACA airfoil series shaped cross
section with a leading edge facing radially inwardly on the rotor.

REJECTIONS
Claims 1-15 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 1, 2, 6, 7, 11, and 12 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Seifrit (US 6,306,340 B1; iss. Oct. 23, 2001).
Claims 3-5, 8-10, and 13-15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Seifrit and Adamson (GB 2 172676 A; pub. Sep. 24,
1986).
ANALYSIS
Claims 1-15 as being indefinite
The Examiner found that the term “NACA airfoil series” renders
claims 1-15 indefinite because the claims and Specification fail to disclose
what NACA digit series and designation are covered, and NACA digit series
and designations evolve over time so that the metes and bounds of the claims
are not defined. Ans. 3. The Examiner found that the “NACA” designation
does not specify a particular airfoil but rather any and all airfoils that have a
designation number and as such claims all airfoils. Ans. 3-4, 6-7.

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Appellants argue that the Specification clearly defines the airfoil
shape to be within the NACA airfoil series, which includes series numbers
that indicate a different airfoil shape, and excludes any airfoil that does not
fall within the NACA airfoil series. Reply Br. 4-5; see also App. Br. 13-16.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Merely that a claim is broad does not mean that it is indefinite.
See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller,
441 F.2d 689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA
1970). We agree with Appellants that a skilled artisan would understand
that the claimed fins have the NACA airfoil series shaped cross section as
opposed to a cross section that corresponds to an airfoil design that is not a
NACA airfoil series. We do not sustain the rejection of claims 1-15.
Claims 1, 2, 6, 7, 11, and 12 as anticipated by Seifrit
The Examiner found that Seifrit discloses an aerodynamic vented
rotor comprising an outboard disc 10, an inboard disc 12, and fins 14 that
extend therebetween and are described as airfoils, which the Examiner
interpreted as a NACA airfoil that delays the transition of air to turbulent
flow over the length of the fin and can be designated by a representative
NACA series number such as NACA series 4, designation 1-4-12. Ans. 4
(citing col. 4, ll. 39-40), 7 (citing col. 3, ll. 16-17 and col. 4, ll. 36-42). The
Examiner found that Seifrit discloses a shape that is substantially similar to a
cross section of an aircraft wing and therefore Seifrit envisions fins/airfoils
having a NACA series shape and NACA series designation number where
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Appellants claimed any fin having a cross section characterized as having a
NACA series designation. Ans. 8. The Examiner reasoned that NACA
disbanded in 1958 and recent and future airfoils with NACA series numbers
are developed by private interests. Id.
Appellants argue that NACA designations indicate particular airfoil
shapes having particular thickness and camber percentages and other airfoil
designations such as Wortmann series, Gottingen series, and Althaus series
are used in the aviation industry and do not have a NACA designation. See
Reply Br. 6. Appellants assert that the Examiner’s opinion that the airfoil
shape of Seifrit has a NACA shape is not supported because Seifrit must
provide the requisite detail to disclose that its airfoils are a NACA series.
Reply Br. 7. Appellants further argue that all airfoils that can be given a
NACA series number are covered by Appellants’ claims, but not all airfoils
can be assigned a NACA airfoil series number as there are other airfoil
designs that were not developed by the NACA and therefore do not have
NACA airfoil series shape. App. Br. 20.
The Examiner has not established by a preponderance of evidence that
Seifrit discloses fins with a NACA airfoil shaped cross section as recited in
independent claims 1, 6, and 11. While Seifrit discloses fan blades 14 with a
symmetrical cross section, the Examiner has not adequately established that
this shape is necessarily a NACA airfoil series cross section. See In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”). We
do not sustain the rejection of claims 1, 2, 6, 7, 11, and 12.

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Claims 3-5, 8-10, and 13-15 as unpatentable over Seifrit and Adamson
The Examiner relied on Adamson to disclose features of dependent
claims 3-5, 8-10, and 13-15. Ans. 8. We agree with Appellants that the
rejection of these claims is not sustainable for the same reasons as claims 1,
6, and 11 from which they depend respectively. App. Br. 21.
NEW GROUNDS OF REJECTION
We enter a new ground of rejection of claims 1, 2, 6, 7, 11, and 12
under 35 U.S.C. § 103(a) as being unpatentable over Seifrit. We adopt the
Examiner’s findings as set forth in the Answer at pages 4 and 7-8, except for
the Examiner’s finding that Seifrit discloses fins with a NACA airfoil series
shaped cross section. We also find that Seifrit discloses fan blades 14 with a
generally symmetrical airfoil cross-section (Figure 1) that moves air radially
outwardly from a central space within the brake rotor to areas beyond the
rotor edge as the brake rotor rotates to cool the disk walls. Col. 3, ll. 15-22.
Seifrit also discloses that the airfoil-shaped fan blades 14 provide greater
aerodynamic efficiency so that a given airflow can be achieved with a lesser
blade height (i.e., less surface and thus less spacing between the disks 10,
12) and the rotor has a smaller height. Col. 4, ll. 37-43. In view of Seifrit’s
teaching of aerodynamic fan blades with airfoil cross sections that increase
airflow over the blades and cooling of the rotor, it would have been obvious
to a skilled artisan to use an industry airfoil design, such as a NACA series
design, to provide fan blades with improved aerodynamics and airflow for
improved rotor cooling. It also would have been obvious in view of Seifrit’s
disclosure of an airfoil with an aerodynamic design for improved airflow to
use a NACA series design that would maintain a laminar flow of air passing
by the fins and delay transition to turbulent flow over the length of the fins
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as recited in claims 2, 7, and 12. Moreover, as noted by Appellants, “the
term ‘NACA airfoil series shape’ ha[s] defined bounds that were known and
appreciated by those skilled in the art of airfoil design.” Reply Br. 6. Thus,
it also would have been obvious as a matter of routine engineering to choose
a NACA series airfoil design that optimizes increased airflow and provides
laminar flow over the fan blades to improve cooling of the rotor and such
optimization is within the level of ordinary skill in the art and provides
predictable results.
We enter a new ground of rejection of claims 3-5, 8-10, and 13-15
under 35 U.S.C. § 103(a) as unpatentable over Seifrit and Adamson. We
adopt the Examiner’s findings and conclusion of obviousness as set forth in
the Answer at pages 5-6 and 8. Appellants have not challenged any of those
findings or determination of obviousness. See App. Br. 21; Reply Br. 8.
DECISION
We REVERSE the rejection of claims 1-15 as indefinite.
We REVERSE the prior art rejections of claims 1-15.
We enter a NEW GROUND OF REJECTION of claims 1, 2, 6, 7, 11,
and 12 under 35 U.S.C. § 103(a) as being unpatentable over Seifrit.
We enter a NEW GROUND OF REJECTION of claims 3-5, 8-10,
and 13-15 as being unpatentable over Seifrit and Adamson.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the Examiner, in which event
the proceeding will be remanded to the Examiner.…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…

REVERSED; 37 C.F.R. § 41.50(b)

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