Ex Parte Smith

Patent Trial and Appeal Board

Mar 27, 2013

10701146 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/701,146 11/04/2003 Frank C. Smith JR. 50121 4832
22929 7590 03/28/2013
Sue Z. Shaper
1800 WEST LOOP SOUTH
SUITE 350
HOUSTON, TX 77027
EXAMINER
DINH, TIEN QUANG
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
03/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK C. SMITH, JR.
____________

Appeal 2010-010765
Application 10/701,146
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010765
Application 10/701,146

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 12. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
Appellant’s invention is directed to a canard design with a rear
fuselage door.
Claim 1 is illustrative:
1. A cargo adapted personal aircraft, comprising:
a two-surface canard having two and only two significant
horizontal lifting surfaces, with a smaller lifting surface in front
of a larger lifting surface;
a large opening at the rear of the fuselage through which
large objects, including at least one of a motorcycle, a patient
on a gurney and a man in a wheelchair can be loaded, the
opening having a closure for flight, the personal aircraft having
a gross weight limit of up to 5000 pounds and a hp limit of up
to 500 hp.

Appellant appeals the following rejections:
Claims 1 to 12 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Claims 1, 3 to 6, and 8 to 11 under 35 U.S.C. § 103(a) as unpatentable
over Rutan (US 4,641,800; iss. Feb. 10, 1987) and Advanced Technology
Tactical Transport (ATTT) (http://www.scaled.com/projects/ATTT.html)
(last accessed Jan. 2, 2008) (hereinafter “Rutan ATTT”).

Appeal 2010-010765
Application 10/701,146

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Claims 2 and 12 under 35 U.S.C. § 103(a) as unpatentable over Rutan,
Rutan ATTT, and Burnelli (US 1,987,050; iss. Jan. 8, 1935).
Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Rutan, Rutan
ATTT, and Appellant’s Admitted Prior Art (hereinafter “AAPA”).

FACTUAL FINDINGS
We adopt the Examiner’s findings regarding the teachings of Rutan as
our own. Ans. 4. Additional findings of fact may appear in the Analysis
that follows.

ANALYSIS
Written Description
The Examiner has rejected claims 1 and 11 because the claims contain
subject matter which in the Examiner’s view is not described in the
Specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor had possession of the claimed invention at the
time of the application. The Examiner states that the language “a two-
surface canard having two and only two significant horizontal lifting
surfaces, with a smaller lifting surface in front of a larger lifting surface” is
not described in Appellant’s Specification. In the Examiner’s view, the
smaller lifting surface is the canard labeled as 12 and the larger lifting
surface is the wing 14. The Examiner reasons that the canard cannot include
the wing.

Appeal 2010-010765
Application 10/701,146

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We agree with the Appellant that the canard as recited in claims 1 and
11 is described in the Specification as including the canard surface 12 and
the wing 14 (Spec. 2, 4 to 5).
Therefore, we will not sustain this rejection of claims 1 to 12.

Obviousness
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the size, weight and horse power (hp) limitations
in claim 1 patentably distinguish the claim over the prior art.
Claim 1 recites an aircraft with a large opening at the rear of the
fuselage through which large objects, including at least one of a motorcycle,
a patient on a gurney, and a man in a wheelchair can be loaded. Claim 1
also recites that the aircraft has a gross weight limit of up to 5000 pounds
and an hp limit of 500 hp.
In our view, the combined teachings of the prior art would have
prompted a person of ordinary skill in the art to select an opening size,
weight limit and horse power limit to fit the mission of the aircraft.
Moreover, in a case such as this one, in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims, in order to show the claim is patentable over the prior art, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range or variable. See In re Boesch, 617 F.2d 272, 276 (CCPA
1980) and In re Aller, 220 F.2d 454, 456 (CCPA 1955); In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996).
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In the present case, the Appellant has not established that the claimed
size, weight, and horsepower limitations recited in claim 1 produce
unexpected results. Therefore, we are of the opinion that an aircraft with the
claimed opening size, weight, and horsepower would have been obvious to
one of ordinary skill in the art at the time of Appellant's invention.
Appellant argues that aircraft design is not a predictable art and that
modifications of the Rutan aircraft as proposed by the Examiner would have
to be tested. We presume that by the foregoing, the Appellant is arguing that
there would not be a reasonable expectation of success if the Rutan aircraft
was modified so as to include an opening at the rear as taught by Rutan
ATTT.
The Appellant quoted a passage from Rutan which, according to the
Appellant, shows that results in canard design on aircraft are not predictable.
App. Br. 6-7. However, this passage from Rutan is not directed to the
modification proposed by the Examiner. The Appellant has also provided a
quote from a Wallis document. See App. Br. 7-8. However, the Appellant
has not adequately identified the Wallis document to permit us to identify it
with certainty or included a copy of the document in the Evidence Appendix.
In any case, the quoted passage is not directed to whether there would have
been a reasonable expectation of success in modifying the Rutan aircraft so
as to include a rear opening as taught by Rutan ATTT and as such is not
persuasive of error on the part of the Examiner.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that modifying the Rutan aircraft so as to have a rear
opening would render the Rutan aircraft inoperable. This contention of the
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Appellant is not supported by evidence but is instead attorney argument.
Attorney's arguments in a Brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Likewise, the Appellant’s argument that the references teach away
from the invention and that there is a long felt need for the invention is not
supported by evidence and thus is not persuasive of patentability.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a).
We will sustain the Examiner’s rejection of claims 3 to 6 and 8 to 10
because the Appellant has not argued the separate patentability of these
claims.
We are not persuaded of error on the part of the Examiner in rejecting
claim 11 by Appellant’s argument that Rutan discloses an empennage. We
agree with the finding of the Examiner that Rutan discloses that there is no
empennage at column 4, lines 36 to 39. We also agree with the Examiner
that Rutan discloses that fin 26 is disposed amidship or in the middle of the
aircraft and thus does not comprise an empennage which would be disposed
at the rear of the aircraft. Further, Appellant defined empennage as a rear
horizontal lifting surface of an airplane and Rutan’s vertical fin 26 is not a
horizontal lifting surface. Spec. 1, n.1; Rutan, col. 4, ll. 45-46; fig. 2. In
addition, we agree with the Examiner that the Appellant has not shown that
the design patent number 292,393 is the same aircraft disclosed in Rutan and
thus it is not relevant what the design patent depicts.
We will also sustain the Examiner’s rejection of claims 2 and 12
under 35 U.S.C. § 103(a) as being unpatentable over Rutan in view of Rutan
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ATTT and Burnelli and claim 7 under 35 U.S.C. § 103(a) over Rutan in
view of Rutan ATTT and AAPA because the Appellant has not specifically
addressed these rejections.

DECISION
The decision of the Examiner is affirmed.
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) (2011).

AFFIRMED

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