Ex Parte Shepshelovich et al

Patent Trial and Appeal Board

May 8, 2018

13119315 (P.T.A.B. May. 8, 2018)

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.
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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.
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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
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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
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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
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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.)
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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
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