Ex Parte Smith

Patent Trial and Appeal Board

Aug 29, 2013

10701146 (P.T.A.B. Aug. 29, 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 08/30/2013
Sue Z. Shaper
1800 WEST LOOP SOUTH
SUITE 350
HOUSTON, TX 77027
EXAMINER
COLLINS, TIMOTHY D
ART UNIT PAPER NUMBER
3644
MAIL DATE DELIVERY MODE
08/30/2013 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 1
____________________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
____________________ 5
6
Ex parte FRANK C. SMITH, JR. 7
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9
Appeal 2010-010765 10
Application 10/701,146 11
Technology Center 3600 12
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Before: MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and PHILLIP 16
J. KAUFFMAN, Administrative Patent Judges. 17
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CRAWFORD, Administrative Patent Judge. 19
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DECISION ON REQUEST FOR REHEARING22
Appeal 2010-010765
Application 10/701,146

2

INTRODUCTION 1
Appellant filed a Request for Reconsideration (hereinafter “Request”) 2
contending that the Board, in the Decision on Appeal (mailed March 28, 3
2013, hereinafter “Decision”), failed to designate a new ground of rejection 4
and misapprehended/overlooked evidence. Appellant is asking that the 5
decision be reheard (Request 1). 6
In the Decision on Appeal, the Board reversed the Examiner’s 7
rejection of claims 1 to 12 under 35 U.S.C. § 112, first paragraph and 8
affirmed the Examiner’s rejection of all claims 1 to 12 under 35 U.S.C. § 9
103(a). 10
Appellant argues that we misapprehended the teachings of Rutan 11
regarding the presence of an empennage and the meaning of the term 12
“amidship.” In our decision on page 6 we stated we agreed with the 13
Examiner that Rutan discloses that there is no empennage and that fin 26 is 14
disposed “amidship” or in the middle of the aircraft and therefore is not an 15
empennage. 16
Appellant argues in this request that although Rutan does not disclose 17
a conventional empennage, Rutan nonetheless discloses a nonconventional 18
empennage in the form of fin 26. 19
Appellant’s arguments are well taken. 20
Therefore, we grant this rehearing and modify our opinion as follows: 21
We agree with the Appellant that Rutan does not disclose an aircraft 22
having no empennage as required by claims 3, 4, 11, and 12. 23
The Examiner relies on column 4, lines 26 to 68 to support the finding 24
that Rutan discloses that there is no empennage. We find that while this 25

Appeal 2010-010765
Application 10/701,146

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portion of Rutan discloses that there is no conventional empennage, it does 1
not disclose that there is no empennage at all. 2
We find that Rutan’s fin 26 provides stability (col. 4, ll. 47 to 49). We 3
interpret the disclosure that fin 26 is located “amidship” to mean that fin 26 4
is disposed along the centerline of the aircraft. As Rutan discloses that the 5
fin 26 acts as a skid to prevent the propellers from hitting the ground during 6
an inadvertent over-rotation, we find that fin 26 is located at the rear of the 7
aircraft (col, 4, ll. 50 to 51). Fin 26 provides stability for the aircraft and is 8
disposed at the rear of the aircraft. Therefore even though fin 26 is not a 9
conventional empennage because it projects vertically downward, it is 10
nonetheless an empennage. Therefore, Rutan does not disclose an aircraft 11
with no empennage. 12
In view of the foregoing, we will not sustain the Examiner’s rejection 13
of claims 3, 4, 11, and 12 because each of these claims requires that the 14
aircraft have no empennage. 15
On the record before us, Appellant’s request is granted and we have 16
modified our opinion as detailed above. 17
No time period for taking any subsequent action in connection with 18
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 19
§ 1.136(a)(1)(iv). 20
21
GRANTED 22
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hh 25