Ex Parte Sirohi et al

Patent Trial and Appeal Board

Apr 25, 2014

12018217 (P.T.A.B. Apr. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAYANT SIROHI, TIMOTHY FRED LAUDER,
MARK R. ALBER, and DANIEL BAZZANI
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Appeal 2012-002122
Application 12/018,217
Technology Center 3600
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Before: JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jayant Sirohi et al. (“Appellants”) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1–23. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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Application 12/018,217

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CLAIMED SUBJECT MATTER
Independent claims 1, 8, and 13 illustrate the subject matter on appeal:
1. A rotary-wing aircraft comprising:
a rotor system rotatable about an axis of rotation; and
an electric motor mounted along said axis of rotation to
drive said rotor system about said axis of rotation.
8. A rotary-wing aircraft comprising:
a rotor system rotatable about an axis of rotation; and
an electric motor mounted along said axis of rotation to
drive said rotor system about said axis of rotation, said electric
motor mounted at least partially within a rotor hub of said
rotor system.
13. A rotary-wing aircraft comprising:
a rotor system rotatable about an axis of rotation; and
an electric motor mounted along said axis of rotation to
drive said rotor system about said axis of rotation, said electric
motor mounted at least partially within a rotor shaft of said
rotor system.
App. Br., Clms. App’x (emphases added).
REJECTIONS
Appellants request our review of the following rejections. See App.
Br. 2.
Claims 1–4, 8, 10, 13, 14, and 17–19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rehkemper (US 6,659,395 B2, iss. Dec. 9,
2003) and Smith (US 2,961,052, iss. Nov. 22, 1960).
Claims 5–7, 11, 12, 15, 16, and 20–23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rehkemper, Smith, and Arlton (US 5,836,545,
iss. Nov. 17, 1998).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rehkemper, Smith, and Leskow (US 6,908,286 B2, iss. Jun. 21, 2005).
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ANALYSIS
Obviousness over Rehkemper and Smith
Claims 1–4 and 17
In these rejections, the Examiner cites Rehkemper as disclosing each
and every limitation of independent claim 1 except for the electric motor
being “mounted along” the axis of rotation, which the Examiner interprets as
requiring “the motor to be directly in the line of the axis of rotation.”
Ans. 4–5. The Examiner cites Smith as disclosing a motor which is so
arranged, and concludes: “It would have been obvious to one of ordinary
skill in the art at the time of the invention to incorporate the placement of the
motor in Smith into the invention of Rehkemper in order to eliminate the
need to use additional gears to match the drive shaft / axis of rotation to the
motor.” Id. Specifically, this modification “would eliminate the need for
the driving gear 36” in Rehkemper, while retaining combo crown gear 38
and grill 88.1 App. Br. 3 (quoting Final Office Action, 5).
Appellants contend this rejection is improper because it “completely
rearranges the gear system of Rehkemper without any motivation or reason
for the worker in the art, but for the benefit of Appellant’s specification.”
App. Br. 3. We are not persuaded by this contention. The motivation
provided by the Examiner is to eliminate the driving gear 36, which is a
reasonable design goal apart from the disclosure of Appellants’
Specification. See Ans. 5; Final Office Action, 5.

1 The Examiner and Appellants describe Rehkemper’s element 88 as a
“gear.” Final Office Action, 5; App. Br. 3. However, Rehkemper describes
element 88 as a “grill” (Rehkemper, 5:43–46), so we use that term here.
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Appellants also contend the Examiner’s modification would “change
the fundamental principle of operation of Rehkemper through selective
movement and elimination of particular gears” (App. Br. 3–4), and also
would “render Rehkemper unsatisfactory for its intended purpose” by
eliminating any cooling benefit provided by combo crown gear 38 (App.
Br. 5). Appellants suggest the Examiner’s modification would require
moving combo crown gear 38 and grill 88 to be out of line with the rotor’s
axis of rotation. See App. Br. 3.
We are not persuaded by Appellants’ contentions in this regard. The
fundamental principle of operation of Rehkemper is maintaining horizontal
stability and safety via horizontal stabilizing means 42 and safety arcs 52.
See Rehkemper, 1:64–2:13 (describing problems of prior art), 5:47–6:24
(describing solutions to problems). Those aspects are unrelated to the
removal of driving gear 36 described by the Examiner. As to combo crown
gear 38, it would need to remain even with the Examiner’s modification in
order to operate tail rotor 16. See Rehkemper, 4:42–45, 5:6–20. Thus, the
cooling function provided by fan blades 38d of combo crown gear 38 is not
eliminated by the Examiner’s proposed modification. See Final Office
Action, 5.
Appellants further point out that Rehkemper has an electric motor,
whereas Smith has an internal combustion engine. See App. Br. 4.
According to Appellants, “[t]his further undermines the motivation for the
proposed combination as an electric motor typically requires a different gear
system than an internal combustion engine or, at least, would change the
principle of operation of the primary reference Rehkemper.” Id. We,
however, are not persuaded that this difference between Rehkemper and
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Smith would deter one of ordinary skill in the art from modifying
Rehkemper in the manner set forth by the Examiner in order to eliminate the
driving gear 36. In particular, on the present record, we are not persuaded
that electric motors and internal combustion engines require significantly
different gear systems.
For the foregoing reasons, we are not persuaded by Appellants’
arguments urging us to reverse the rejection of independent claim 1 as
unpatentable over Rehkemper and Smith. We therefore sustain that
rejection. Appellants do not argue for the patentability of dependent claims
2–4 and 17 separately from their parent independent claim 1. Therefore,
pursuant to 37 C.F.R. § 41.37(c)(vii) (2011), those claims fall with claim 1.
Claims 8, 10, 13, 14, 18, and 19
In these rejections, the Examiner recognizes that neither Rehkemper
nor Smith discloses a motor “mounted at least partially within a rotor hub,”
as required by independent claim 8, or “mounted at least partially within a
rotor shaft,” as required by independent claim 13. See Ans. 5. The
Examiner nonetheless concludes such arrangements would be obvious, for
two reasons. First, the Examiner contends:
[I]t has been held that a mere rearrangement of the essential
working parts of a device involves only routine skill in the art.
In re Einstein, 8 USPQ 167. Further, it would have been an
obvious matter of design choice to rearrange the motor to place
it either in the helicopter body, the hub or the shaft, since
applicant has not disclosed that rearranging the motor along the
same axis solves any stated problem or is for any particular
importance and it appears that the invention would perform
equally as well in any rearrangement of the motor along the
same axis.
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Ans. 5. Second, the Examiner provides a reason for moving the electric
motor from the fuselage of the Rehkemper aircraft into the rotor hub or the
rotor shaft: “in order to relocate the center of gravity of the aircraft.” Id.; see
also id. at 8.
Appellants respond “there is no motivation or reason . . . without the
benefit of Appellant’s [sic] specification, to make these extensive motor and
gear changes as proposed by the Examiner.” App. Br. 5–6. Appellants
additionally contend “the extensive nature and complexity of moving the
electric motor into the rotor shaft and/or into the rotor hub is simply not
suggested by the proposed combination.” Id.
We agree with Appellants that moving the motor from the Rehkemper
fuselage to locate it within the rotor hub or rotor shaft is a significant design
change. On the record before us, we are not persuaded by the Examiner’s
characterization of this modification as a “mere rearrangement” of parts or a
simple matter of “design choice.”
Appellants additionally challenge the Examiner’s reason for moving
the motor — i.e., to relocate the center of gravity of the aircraft — as based
on improper hindsight. See App. Br. 5–6. We are persuaded that the
Examiner has not established obviousness of the claimed inventions by a
preponderance of the evidence. No doubt, moving the electric motor into
the rotor hub or rotor shaft of Rehkemper would change the center of
gravity, but to what purpose? The record before us does not indicate
persuasively how this would benefit the overall aircraft design. Indeed, from
the record presently before us, it may very well be that moving the motor as
suggested by the Examiner would detrimentally affect the center of gravity.
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For the foregoing reasons, we do not sustain the rejections of
independent claims 8 and 13, or of their dependent claims 10, 14, 18, and 19,
as being unpatentable over Rehkemper and Smith.
Obviousness over Rehkemper, Smith, and Arlton
Claims 5–7, 20, and 21
These claims depend, directly or indirectly, from independent claim 1.
We have sustained the rejection of claim 1 as unpatentable over Rehkemper
and Smith. The Examiner rejects these dependent claims as unpatentable
over the additional disclosure of Arlton. See Ans. 6, 9. Claim 6 is
representative: “The aircraft as recited in claim 1, further comprising a servo
system mounted within said rotor system to pitch a rotor blade mounted to a
rotor hub.” See App. Br., Clms. App’x. The Examiner states:
Regarding the arguments referring to the position of the servo
system, Leskow [sic “Arlton”] discloses a servo system
wherein the upper portion of the servo system (The portion
attached to the rotor blade to control pitch) is located in the
rotor system (which is broad enough to read on any part of
the system that causes the rotors to operate).
Ans. 9 (all emphases in original). Appellants contend these rejections are
improper because none of the Arlton servos 69, 70, 71, or 72 is “mounted
within” the rotor system as claimed. See App. Br. 7.
Claim 5 does not include the “mounted within” requirement. See
App. Br., Clms. App’x. Thus, Appellants’ contention is not well taken as to
that claim, and we sustain the rejection of claim 5 as otherwise unopposed
by Appellants.
As to claims 6, 7, 20 and 21, these claims require that the servo
system be mounted within a rotor hub. The issue, thus, is one of claim
construction. That is, under a broadest reasonable interpretation, do the
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claims require the entire servo system (including the servos) to be “mounted
within” the rotor system? We conclude that they do. Taking claim 6 as
representative, the claim language does not include any broadening terms
such as “in part” or “a portion of.” Rather, it simply recites “a servo system
mounted within said rotor system.” This claim construction is consistent
with the Specification, in which all Figures 1–3 show servo system 32M as
being entirely disposed within rotor hub 22 of rotor system 12. See also
Spec. ¶ 0011. We therefore conclude claims 6, 7, 20, and 21 require the
servo of the servo system to be mounted within the rotor system.
We agree with Appellants that the Arlton servos 69, 70, 71, and 72 are
each mounted within fuselage 84 of Arlton, outside of the Arlton rotor
system. See App. Br. 7–8; Arlton, 7:36–55. The Examiner does not rely on
either of Rehkemper or Smith to cure this deficiency in Arlton, and also does
not assert it would have been obvious to mount the Arlton servo(s) in the
rotor system.
For the foregoing reasons, we sustain the rejection of claim 5, but we
do not sustain the rejections of claims 6, 7, 20, and 21, as being unpatentable
over Rehkemper, Smith, and Arlton.
Claims 11, 12, 15, 16, 22, and 23
These claims depend, directly or indirectly, from independent claim 8
or independent claim 13. We have not sustained the rejections of those
parent independent claims as unpatentable over Rehkemper and Smith.
Arlton does not cure the deficiencies of Rehkemper and Smith in relation to
mounting the motor in the rotor hub or rotor shaft. Therefore, we do not
sustain the rejections of these claims as unpatentable over Rehkemper,
Smith, and Arlton.
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Obviousness over Rehkemper, Smith, and Leskow
Claim 9 depends from independent claim 8. We have not sustained
the rejection of independent claim 8 as unpatentable over Rehkemper and
Smith. Leskow does not cure the deficiencies of Rehkemper and Smith in
relation to mounting the motor in the rotor hub. Therefore, we do not
sustain the rejection of claim 9 as unpatentable over Rehkemper, Smith, and
Leskow.
DECISION
The rejections of claims 1–5 and 17 as unpatentable over the prior art
are each AFFIRMED. The rejections of claims 6–16 and 18–23 as
unpatentable over the prior art are each REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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