Ex parte Jones

Board of Patent Appeals and Interferences

Jan 30, 1998

08222643 (B.P.A.I. Jan. 30, 1998)

Application for patent filed March 31, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TOMMY L. JONES
____________
Appeal No. 97-1114
Application No. 08/222,6431
____________
ON BRIEF
____________
Before STAAB, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 17, which are all of the claims
pending in this application. The appellant states (brief, p. 2)
that the "claims appealed are claims 6 through 15 and 17."
Accordingly, the appeal as to claims 1 through 5 and 16 is
dismissed.
Appeal No. 97-1114
Application No. 08/222,643
We REVERSE and enter a new rejection pursuant to 37 CFR
§ 1.196(b).
Appeal No. 97-1114 Page 3
Application No. 08/222,643
These references were cited by the examiner in Paper No. 32
and copies are of record in the application file.
BACKGROUND
The appellant's invention relates to a vertical takeoff and
landing mass transit system. A copy of claims 6 through 15 and
17 appear in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner as evidence of anticipation under 35 U.S.C. § 102(b) and
obviousness under 35 U.S.C. § 103 are:
Callison 1,818,841 Aug. 11, 1931
Roth 1,921,043 Aug. 8, 1933
Additional references of record relied on by this Board
are:2
Gilbert 3,605,935 Sep. 20, 1971
Kappus 3,618,875 Nov. 9, 1971
Claim 6 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Roth.
Claims 13, 14, 15 and 17 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Roth.
Appeal No. 97-1114 Page 4
Application No. 08/222,643
Claims 7 through 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Roth in view of Callison.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the §§ 102 and 103
rejections, we make reference to the examiner's answer (Paper No.
12, mailed October 17, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 11, filed July 26, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
35 U.S.C. § 102(b) rejection of claim 6
We do not sustain the rejection of claim 6 under 35 U.S.C.
§ 102(b) as being anticipated by Roth.
Appeal No. 97-1114 Page 5
Application No. 08/222,643
To support a rejection of a claim under 35 U.S.C. § 102(b),
it must be shown that each element of the claim is found, either
expressly described or under principles of inherency, in a single
prior art reference. See Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied,
465 U.S. 1026 (1984).
Claim 6 recites a mass transit system comprising, inter
alia, (1) a plurality of routes, (2) a plurality of terminals
located at points of intersection of the plurality of routes,
(3) the plurality of routes extending from an urban area to a
suburban area, and (4) a vertical takeoff and landing craft to
travel between terminals along the plurality of routes.
As correctly pointed out by the appellant (brief, p. 9),
"Roth discloses an airplane which may be operated to rise
vertically in the air, travel horizontally and descend in the
same manner."
We agree with the appellant's argument (brief, pp. 7-11)
that Roth does not disclose several of the elements recited in
claim 6. Specifically, Roth does not disclose (1) a plurality of
Appeal No. 97-1114 Page 6
Application No. 08/222,643
routes, (2) a plurality of terminals located at points of
intersection of the plurality of routes or (3) the plurality of
routes extending from an urban area to a suburban area. Since
all the limitations of claim 6 are not found, either expressly
described or under principles of inherency, in Roth, the
examiner's rejection under 35 U.S.C. § 102(b) cannot be
sustained.
35 U.S.C. § 103 rejection of claims 13, 14 and 15
We do not sustain the rejection of dependent claims 13, 14
and 15 under 35 U.S.C. § 103 as being unpatentable over Roth.
With respect to claims 13, 14 and 15, each of which depends
directly from independent claim 6, the examiner determined
(answer, p. 4) that
[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention was made to fly the craft
of Roth at any desired altitude as is the custom of pilots
in certain areas and is also deemed an obvious method of
operation as well as flying in any desired direction.
Even if Roth was modified as set forth above by the
examiner, the modified device of Roth would still lack the
elements, noted supra with respect to parent claim 6.
Appeal No. 97-1114 Page 7
Application No. 08/222,643
Accordingly, the examiner's rejection of claims 13, 14 and 15
under 35 U.S.C. § 103 cannot be sustained.
Appeal No. 97-1114 Page 8
Application No. 08/222,643
35 U.S.C. § 103 rejection of claim 17
We do not sustain the rejection of claim 17 under 35 U.S.C.
§ 103 as being unpatentable over Roth.
Claim 17 recites an urban-suburban mass transit method
comprising, inter alia, (1) loading passengers onto a first craft
at one terminal, (2) flying the first craft to another terminal,
(3) contemporaneously loading passengers onto a second craft at a
terminal, (4) flying the second craft to another terminal,
(5) contemporaneously loading passengers onto a third craft at a
terminal, and (6) flying the third craft to another terminal.
With respect to independent method claim 17, the examiner
made the same determination as set forth above with respect to
claims 13, 14 and 15.
In our opinion, the device of Roth as modified as set forth
by the examiner would still lack several of the steps recited in
claim 17. In that regard, we agree with the appellant's argument
(brief, p. 23) that the applied prior art would not have
suggested the contemporaneously loading passengers onto three
different crafts as recited in claim 17. Accordingly, the
Appeal No. 97-1114 Page 9
Application No. 08/222,643
examiner's rejection of claim 17 under 35 U.S.C. § 103 cannot be
sustained.
35 U.S.C. § 103 rejection of claims 7 through 12
We do not sustain the rejection of claims 7 through 12 under
35 U.S.C. § 103 as being unpatentable over Roth in view of
Callison.
With respect to claims 7 through 12, each of which depends
directly or indirectly from independent claim 6, the examiner
determined (answer, p. 5) that
[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention was made to provide the
aircraft of Roth with pod and landing field elevators as
taught by Callison since it would make for more efficient
handling of passengers and freight at the airport.
Once again, even if Roth was modified as set forth above by
the examiner, the modified device of Roth would still lack the
elements, noted supra with respect to parent claim 6.
Accordingly, the examiner's rejection of claims 7 through 12
under 35 U.S.C. § 103 cannot be sustained.
New grounds of rejection
Appeal No. 97-1114 Page 10
Application No. 08/222,643
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
Claims 6, 13 and 15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Kappus.
Kappus pertains to V/STOL aircraft (i.e., aircraft "capable
of taking off and landing either vertically or with a short
runway distance" (column 1, lines 4-5)). Kappus' specification,
at column 1, line 7 through column 2, line 5, contains the
following passages pertinent to appellant's claimed mass transit
system:
Commercial air transportation has brought
impressive benefits to the traveler, permitting him to
cross continents and oceans safely in a matter of hours
in comfortable aircraft propelled by gas turbine
engines of the turbofan and turbojet types. Continuing
progress for medium- and long-distance trips is already
well advanced with the scheduled introduction into
service of jumbo jet aircraft capable of carrying
several hundred travelers and supersonic aircraft
capable of crossing the ocean in less than 3 hours.
Aircraft operators have also benefited in these
advances by reason of decreased direct operating costs
and increased utilization times.
Shorter distance air travel has noticeably lagged
behind the advances of medium- and long-distance travel.
There are several reasons for this situation. One is the
large proportion of time required for land travel to and
from airports which are usually located many miles from an
urban center. Another is the long time spent
Appeal No. 97-1114 Page 11
Application No. 08/222,643
nonproductively by airliners maneuvering to and from large
jet ports. Yet another reason and a problem generally
applicable to all air transportation is overcrowding of the
air space at airports and overburdening of the approach and
runway facilities available.
It has long been recognized that these problems could
be alleviated, if not fully solved, by aircraft capable of
operating from small urban airports which could be dispersed
closer to or within urban centers. To some extent rotating
wing aircraft, e.g., helicopters, provide this capability,
and today there art many helicopters in operation from
heliports of extremely small area, many of which are located
on the tops of buildings in a crowded urban center.
However, helicopters have limitations as to the distance and
speeds at which they are effective from a time of travel, as
well as a cost standpoint. The range limit of effectiveness
for today’s helicopters is 75 miles and the expectable
ultimate limit is in the order of 150 miles.
The really significant lack of progress has been
in aircraft which are truly effective, from a cost and
time standpoint, in operating over travel routes of
200-400 miles with the flexibility to perform
adequately over shorter or longer distances. . . .
Generally speaking, . . . [fixed-wing V/STOL
aircraft] have been capable of attaining the obvious
advantage of operating into and out of airports
requiring a very small area and capable of being
located in close proximity to urban centers. They also
have the further advantage over helicopters in that
they can attain reasonably high flight speeds and
altitudes for route distances in the 200-400 mile
range. Such fixed-wing aircraft provide the potential
solution to air transportation problems of congestion,
both in conventional airports and in land
transportation to and from such conventional airports.
Downtown airports may be scattered so that there is not
a concentration of land traffic in any one given access
area. Similarly, air congestion at conventional
airports may be decreased since several different areas
of a large airport could be set aside for simultaneous
landing and takeoff for V/STOL aircraft in the area of
Appeal No. 97-1114 Page 12
Application No. 08/222,643
a conventional runway. The much slower approach speeds
could permit many more aircraft to safely occupy the
air space for multiple takeoffs and landings.
After the scope and content of the prior art are determined,
the differences between the prior art and the claims at issue are
to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966).
Based on our analysis and review of Kappus and claim 6, it
is our opinion that the only difference is the limitation that
there is a plurality of terminals located at points of
intersection of the plurality of routes which extend from an
urban area to a suburban area to form a network.
The test for obviousness is what the teachings of the
applied prior art would have suggested to one of ordinary skill
in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). Moreover, in evaluating such prior
art it is proper to take into account not only the specific
teachings of the prior art but also the inferences which one
skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344
Appeal No. 97-1114 Page 13
Application No. 08/222,643
(CCPA 1968). Additionally, we observe that an artisan must be
presumed to know something about the art apart from what the
applied prior art discloses (see In re Jacoby, 309 F.2d 513, 516,
135 USPQ 317, 319 (CCPA 1962)) and the conclusion of obviousness
may be made from "common knowledge and common sense" of the
person of ordinary skill in the art (see In re Bozek, 416 F.2d
1385, 1390, 163 USPQ 545, 549 (CCPA 1969)). Moreover, skill is
presumed on the part of those practicing in the art. See In re
Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
It is our opinion that it would have been obvious to one of
ordinary skill in the art at the time of the appellant's
invention to have provided a plurality of terminals at the points
of intersection of the plurality of routes suggested by Kappus
which extend from an urban area to a suburban area to form a
network since providing terminals at points of intersection of
routes is well known.
With regard to claim 13, it is our opinion that it would
have been obvious to one of ordinary skill in the art at the time
of the appellant's invention that the plurality of routes
Appeal No. 97-1114 Page 14
Application No. 08/222,643
suggested by Kappus would have been located above a plurality of
existing roadways since air routes over existing roadways is well
known.
With regard to claim 15, it is our opinion that it would
have been obvious to one of ordinary skill in the art at the time
of the appellant's invention to have further extended the
plurality of routes suggested by Kappus to a rural area in view
of Kappus' teaching that the routes can extend 200-400 miles and
the well known provision of having small airports in rural areas.
Claims 8 through 12 are rejected under 35 U.S.C. § 103 as
being unpatentable over Kappus as applied to claim 6 above, and
further in view of Gilbert.
Gilbert pertains to an air surface rapid transit vehicle in
which a passenger- or cargo-carrying pod is detachably connected
to a helicopter or other VTOL aircraft for high-speed transport
between metropolitan and suburban depots, and is then transferred
to and locked onto a self-propelled power unit of one type or
another, for transport on the ground. Gilbert's specification,
at column 1, line 41 through column 2, line 10, contains the
Appeal No. 97-1114 Page 15
Application No. 08/222,643
following passages pertinent to appellant's claimed mass transit
system:
This invention pertains to a new and improved system of
rapid transit, particularly for transporting passengers over
relatively long distances, such as between metropolitan and
suburban centers, or between cities that are spaced far
enough apart to constitute a relatively long-distance trip
by bus, but not quite far enough apart to justify airplane
travel.
As metropolitan areas spread out, and suburban areas
move farther away from their centers, highway congestion
becomes increasingly more of a problem, and bus travel
during the rush hours is slowed down to the point where it
ceases to be an attractive form of transportation. At the
same time, the proliferation of automobiles, most of which
carry only one or two passengers, produces more and more air
pollution, which is rapidly approaching a critical stage.
The present invention contemplates a system of rapid
transit, wherein passengers may be picked up by a
motor-driven wheeled vehicle, such as a bus or monorail (or
other vehicle running on tracks) which is driven around a
predetermined route and then taken to an airport or
helicopter port, where the passenger-carrying pod is
detached from its wheeled vehicle and detachably connected
to the underside of a helicopter, or other VTOL aircraft.
The pod is then carried at high speed by the helicopter from
the suburban area to the metropolitan center, above the
traffic congestion of surface highways. At the metropolitan
center depot, the helicopter lands, and in one aspect of the
invention, transfers its passenger-carrying pod onto a
waiting automotive-type wheeled chassis. When the passenger
carrying pod is thus mounted on the chassis, driving
controls inside the pod are connected to their respective
operating mechanisms on the chassis, and these are
manipulated by the operator, who drives the vehicle away, to
make the circuit of the predetermined bus route, delivering
the incoming passengers and picking up other passengers for
the return trip. Since the passenger pod would carry up to
40 (or more) passengers on each trip, this would eliminate
from 30 to 40 passenger cars from the highways, with a
Appeal No. 97-1114 Page 16
Application No. 08/222,643
corresponding reduction of highway congestion, air
pollution, and parking problems.
With regard to claims 8 through 10, it is our opinion that
it would have been obvious to one of ordinary skill in the art at
the time of the appellant's invention to have modified Kappus'
VTOL aircraft to include a detachable and replaceable passenger-
or cargo-carrying pod as suggested and taught by Gilbert to
efficiently transport passengers or cargo.
With regard to claims 11 and 12, it is our opinion that it
would have been further obvious to one of ordinary skill in the
art at the time of the appellant's invention to have used the pod
to transport either medical or military passengers or cargo.
SECONDARY CONSIDERATIONS
Having arrived at the conclusion that the teachings of the
newly applied prior art are sufficient to establish a prima facie
case of obviousness, we recognize that the evidence of
nonobviousness submitted by the appellant must be considered en
route to a determination of obviousness/nonobviousness under
35 U.S.C. § 103. See Stratoflex Inc. v. Aeroquip Corp., 713 F.2d
1530, 218 USPQ 871 (Fed. Cir. 1983). Accordingly, we consider
Appeal No. 97-1114 Page 17
Application No. 08/222,643
Declarations of Tommy Lee Jones, filed October 16, 19953
and April 26, 1996 (see Paper Nos. 4 and 6).
anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating therewith the objective evidence of nonobviousness
supplied by the appellant. See In re Oetiker, 977 F.2d 1443,
1445-46, 24 USPQ2d 1443, 1444-45 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
In this case the appellant has submitted rebuttal evidence
in the form of two declarations under 37 CFR § 1.132 to3
establish nonobviousness of the claimed invention by attempting
to establish long-standing problems in the mass transit industry
and the prior failure of others to resolve these problems.
We have reviewed the declarations and the exhibits attached
thereto but find insufficient evidence to establish that an art
recognized problem existed in the art for a long period of time
without solution. It is our determination that solutions to the
alleged mass transit problem already exist as set forth in the
newly applied prior art. Furthermore, evidence of
nonobviousness, although being a factor that certainly must be
considered, is not necessarily controlling. See Newell
Appeal No. 97-1114 Page 18
Application No. 08/222,643
Companies, Inc. v. Kenney Manufacturing Co., 864 F.2d 757, 768, 9
USPQ2d 1417, 1426 (Fed. Cir. 1988).
In view of the foregoing, we are satisfied that when all the
evidence is considered, the evidence of nonobviousness fails to
outweigh the evidence of obviousness as in Richardson-Vicks Inc.
v. Upjohn Co., 122 F.3d 1476, 44 USPQ2d 1181 (Fed. Cir. 1997) and
EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20
(Fed. Cir. 1985).
Appeal No. 97-1114 Page 19
Application No. 08/222,643
CONCLUSION
To summarize, the decision of the examiner to reject claim 6
under 35 U.S.C. § 102(b) is reversed; the decision of the
examiner to reject claims 7 through 15 and 17 under 35 U.S.C.
§ 103 is reversed; and a new rejection of claims 6, 8 through 13
and 15 under 35 U.S.C. § 103 has been added pursuant to
provisions of 37 CFR § 1.196(b).
This decision contains new grounds of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203 Off. Gaz.
Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides
that, "A new ground of rejection shall not be considered final
for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
Appeal No. 97-1114 Page 20
Application No. 08/222,643
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
JEFFREY V. NASE )
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1114 Page 21
Application No. 08/222,643
STAAB, Administrative Patent Judge, concurring.
I concur with the result reached by my colleagues with
respect to the anticipation and obviousness issues raised by the
examiner’s rejections. Additionally. I concur with the new
rejection of claims 6, 8 through 13 and 15 under 35 U.S.C. § 103
that has been added pursuant to provisions of 37 CFR § 1.196(b).
However, I write separately to place on record my belief that the
newly applied prior art patent to Kappus also renders
unpatentable under 35 U.S.C. § 103 the method of independent
claim 17 and the system of dependent claim 14.
Claim 14 depends from claim 6 and adds details concerning
the "plurality of routes" called for in the base claim.
Specifically, claim 14 calls for first, second, third and fourth
routes that ascend vertically from a terminal to an altitude of
400, 600, 800 and 1000 feet, respectively, extend to another
terminal, and descend vertically. Appellant's claims do not
preclude the "craft" of the claimed "system" from being a
conventional helicopter. Ascending vertically from a first
location to a given altitude, flying at that altitude to a second
location, and descending vertically to a second location is an
obvious method of operating a conventional helicopter. Moreover,
Appeal No. 97-1114 Page 22
Application No. 08/222,643
I take official notice that it is conventional for air traffic
controllers to assign different altitudes to different aircraft
in congested airspace in order to avoid mid-air collisions.
Given these considerations, and the fact that conventional
helicopters are quite capable of operating efficiently at the
relatively low altitudes of 400, 600, 800 and 1000 feet called
for in claim 14, I believe it would have been obvious to one of
ordinary skill in the art to provide the "system" suggested by
Kappus with helicopters operating over a plurality of commuting
routes of the type called for in claim 14, thus rendering claim
14 obvious under 35 U.S.C. § 103.
As to the method of claim 17, the remarks of the previous
paragraph concerning the obvious method of operating a
conventional helicopter and the taking of official notice of how
air traffic controllers assign different altitudes apply. In
addition, the claim requirement of "contemporaneously" loading,
flying, and unloading passengers utilizing a plurality of
aircrafts operating between various terminals is nothing more
than what is done every day when commercial airlines operate
amongst a plurality of regional airports. Based on these
considerations, and the portions of the disclosure of Kappus
Appeal No. 97-1114 Page 23
Application No. 08/222,643
noted by the majority, I believe it would have been obvious to
one of ordinary skill in the art to operate the system suggested
by Kappus in a manner which corresponds to the "mass transit
method" of claim 17, thus also rendering claim 17 obvious under
35 U.S.C. § 103.
LAWRENCE J. STAAB ) BOARD OF PATENT APPEALS
Administrative Patent Judge ) AND INTERFERENCES

Appeal No. 97-1114 Page 24
Application No. 08/222,643
MARK A. OATHOUT
5615 KIRBY DRIVE, SUITE NO. 508
HOUSTON, TX 77005
APPEAL NO. 97-1114 - JUDGE NASE
APPLICATION NO. 08/222,643
APJ NASE
APJ CRAWFORD
APJ STAAB
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 23 Dec 97
1st Rev. 16 Jan 98
2nd Rev. 23 Jan 98
FINAL TYPED: