Ex Parte Shepshelovich et alDownload PDFPatent Trial and Appeal BoardMay 8, 201813119315 (P.T.A.B. May. 8, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/119,315 03/16/2011 111739 7590 05/10/2018 Dorsey & Whitney I RCPs Intellectual Property Department - SLC 111 South Main Street 21st Floor Salt Lake City, UT 84111-2176 FIRST NAMED INVENTOR Michael Shepshelovich 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. 241318US01_ 446373-100 1551 EXAMINER BURGESS, MARC R ART UNIT PAPER NUMBER 3647 NOTIFICATION DATE DELIVERY MODE 05/10/2018 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): simon.marcus@dorsey.com ip.docket.slc@dorsey.com ip.patent.sl@dorsey.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL SHEPSHELOVICH, ALEX NAGEL, and DANNY ABRAMOV Appeal2017-005122 1 Application 13/119,315 Technology Center 3600 Before: JOHN C. KERINS, GEORGE R. HOSKINS, and ANTHONY KNIGHT, Administrative Patent Judges. KNIGHT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 76-79. 2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Israel Aerospace Industries Ltd. Appeal Br. 3. 2 Claims 1--42, 49, 53, 55-68, 70, 73, 74, and 80-82 are canceled. Appeal Br. 20-27, Claims App'x. Claims 43--48, 50-52, 54, 69, 71, 72, and 75 are indicated as allowable by the Examiner. Final Act. 7. Appeal2017-005122 Application 13/119,315 CLAIMED SUBJECT MATTER The claims are directed to a method for modifying a geometry of a wing element by attaching an aerofoil accessory to cause a desired change in performance of the wing element. Spec. 83. Claim 76, reproduced below, is illustrative of the claimed subject matter: 76. A method of operating an air vehicle, comprising providing an air vehicle having fixed-wings, each said fixed wing including a wing leading edge; providing a leading edge slot accessory for each said fixed wing, each said leading edge slot accessory being configured for being selectively and reversibly affixed to each said wing leading edge to provide a leading edge slot between the leading edge slot accessory and the wing leading edge, said fixed wings being designed for providing aerodynamic flight absent said leading edge slot accessory; selectively affixing the leading edge slot accessory to each of the fixed wings to provide increased maximum lift performance of the thereby modified fixed wings to enable the air vehicle to take-off with a heavy payload for a predetermined mission under predetermined conditions as compared with a datum maximum lift performance obtained with said fixed wing absent said leading edge slot accessory, wherein under said predetermined conditions the corresponding said datum maximum lift performance of said fixed wings absent said leading edge slot accessory is insufficient for enabling take-off of the air vehicle with said heavy payload; and flying said air vehicle in said predetermined mission. 3 We herein refer to the Specification filed Mar. 16, 2011 ("Spec."); Final Office Action mailed Nov. 9, 2015 ("Final Act."); Appeal Brief filed Oct. 5, 2016 ("Appeal Br."); and Examiner's Answer mailed Dec. 8, 2016 ("Ans."). A Reply Brief was filed on Jan. 30, 2017, but it is not cited in this Decision. 2 Appeal2017-005122 Application 13/119,315 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Weick et al. (hereinafter "Weick") Fairey Somers us 2,036,905 us 2,135,887 US 6,905,092 B2 REJECTIONS The Examiner made the following rejections: Apr. 7, 1936 Nov. 8, 1938 June 14, 2005 I. Claims 76-79 stand rejected under 35U.S.C.§102(b) as being anticipated by Weick. II. Claim 78 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Weick. III. Claims 76-79 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Somers and Fairey. OPINION Rejection I The Examiner finds that Weick discloses a wing-accessory assembly including a fixed wing, a leading edge with the wing-accessory configured for being mounted to an air vehicle. Final Act. 2. A copy of Weick's Figure 2 annotated by the Board is provided below to facilitate our understanding of the Examiner's position. 3 Appeal2017-005122 Application 13/119,315 "Fig. 2 is a purely diagrammatical view in end elevation and outline, of a preferred design and form of tandem wing arrangement in which the front wing takes the form of an auxiliary air-foil, the tandem wing being shown in low attack angle, high speed attitude." Weick, p. 1, col. 2, 1. 52- p. 2, col. 1, 1. 2. The Examiner states that Weick discloses that the "leading edge slot accessory 40 [is] selectively and reversibly affixed to said wing." Final Act. 2 (citing Weick, p. 3, col. 1, 11. 6-13). Further, the "fixed wing [is] designed for providing [] aerodynamic flight absent said leading edge slot accessory. Id. (citing Weick, p. 1, col. 1, 11. 39-52). Further, the Examiner finds that the "wing-accessory assembly provides an increased maximum lift performance for a predetermined mission under predetermined conditions as compared with maximum lift performance obtained with said fixed wing absent said leading edge slot accessory." Id. (citing Weick, p. 1, col. 1, 11. 39-52). According to the Examiner, "[g]iven the structure of Weick, the claimed method steps (affixing the accessory in situations when it is needed, flying the vehicle) would be inherently performed." Id. at 3. Appellants argue that the Examiner did not demonstrate that Weick discloses expressly or inherently the specific limitations in claim 76. Appeal Br. 7. Appellants contend that "the Examiner implicitly acknowledged that 4 Appeal2017-005122 Application 13/119,315 Weick does not expressly disclose expressly each and every limitation of independent claim 76." Id. at 10. More to the point, Appellants contend that "the Examiner provided no explanation as to why the method ... is purportedly inherent ... Specifically, the Examiner did not demonstrate that the device of Weick, when used in its normal and usual operation, would operate in the manner recited in independent claim 76." Id. at 10-11. If a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be unpatentable over the prior art device. In re King, 801 F.2d 1324, 1326-7 (Fed. Cir. 1986). However, the steps of a process patent are not necessarily taught or suggested by an apparatus which might have been adapted to carry out those steps. While an apparatus claim may be unpatentable over a prior device of like construction that is capable of performing the same function, it is otherwise with a process patent. The mere possession of an apparatus does not teach or suggest all the possible processes to which it may be adapted. See Carnegie Steel Co v. Cambria Iron Co 185 U.S. 403, 424-5 (1902). Appellants have the better position. Weick discloses some of the structure of claim 7 6 in that Weick teaches improved aerodynamics with the addition of the "auxiliary airfoil." See Weick at p. 1, col. 1, 11. 46-48. ("a higher maximum lift coefficient is obtained for the combination, than for either of the individual airfoils or wings separately"). Weick's "auxiliary airfoil" is bolted to the wing. See id. at p. 3, col. 1, 11. 12-13. ("the auxiliary airfoil can be removably bolted, or otherwise suitably secured"). However, Weick lacks disclosure that teaches that during the normal and usual 5 Appeal2017-005122 Application 13/119,315 operations, Appellants' method steps are performed with the airfoil of Weick. Although, Weick states that the airfoil is bolted in place, the disclosure does not establish that during the normal and usual operations the airfoil is to be removed. Weick does not state under what circumstances the airfoil could be or should be removed and we decline to speculate as to Weick's reasons for removing the airfoil. Accordingly, we do not sustain the rejection of claim 76 as anticipated by Weick. Additionally, we do not sustain the rejection of claims 77-79 as anticipated by Weick because these claims depend from claim 76 (Appeal Br. 27, Claims App'x.) and the rejection of these claims does not cure the deficiencies of Weick. Rejection II Claim 78 depends from claim 76. Appeal Br. 27, Claims App'x. The Examiner relies on the same deficient findings and reasoning based on Weick, discussed above, regarding claim 76 (see supra Rejection I). Further, the Examiner's reliance on Official Notice does not cure the deficiencies of Weick noted above in Rejection I. Thus, for the same reasons discussed above, we do not sustain the rejection of claim 78. Rejection III The Examiner finds that Somers teaches a fixed wing for an air vehicle with a leading edge but does not teach a leading edge slot accessory. Final Act. 5. The Examiner relies upon Fairey to teach "an aerofoil a with a leading edge slot accessory e being selectively and reversibly affixed to said 6 Appeal2017-005122 Application 13/119,315 aerofoil leading edge b of said fixed wing." Id. at 5. Further, the Examiner finds that when "[under] predetermined conditions the corresponding[] maximum lift performance of said aerofoil absent said leading edge slot accessory is considered unsuitable for said predetermined mission (as this is why the accessory is added at all)." Id. The Examiner concludes that "[t]he combination renders the claimed method steps obvious since such (affixing the accessory in situations when it is needed, such as take off with a heavy payload, and flying the vehicle) would be a logical manner of using the combination." Id. at 6. Appellants argue that "independent claim 7 6 is a method claim, yet the Examiner appeared to have analyzed the claim as an apparatus claim." Appeal Br. 15. Further, Appellants argue that the references must teach or suggest the method as a whole and the combination of Somers and Fairey lack the method steps recited in claim 7 6. See id. at 16. ("The Examiner simply not did demonstrate that Fairey or Somers, alone or in combination, teaches anything about the use of a leading edge slot accessory for a heavy payload mission in which lift performance of fixed-wings absent the leading edge slot accessory is insufficient"). Again, the Examiner does not establish that during the normal and usual operations the airfoil of Somers as modified by Fairey would be removed nor does the combination of Somers and Fairey teach the method steps as required by claim 76. Accordingly, we do not sustain the rejection of claim 76 as obvious over Somers and Fairey. Additionally, we do not sustain the rejection of claims 77-79 as obvious over Somers and Fairey because these claims depend from claim 76 (Appeal Br. 27, Claims App'x.) 7 Appeal2017-005122 Application 13/119,315 and the rejection of these claims does not cure the deficiencies of Somers and Fairey. DECISION The Examiner's decision to reject claims 76-79 under 35 U.S.C. § 102(b) as anticipated by Weick is reversed. The Examiner's decision to reject claim 78 under 35 U.S.C. § 103(a) as unpatentable over Weick is reversed. The Examiner's decision to reject claims 76-79 under 35 U.S.C. § 103(a) as unpatentable over Somers and Fairey is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation