Ex Parte Smith et alDownload PDFPatent Trial and Appeal BoardSep 12, 201612620537 (P.T.A.B. Sep. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/620,537 11/17/2009 26096 7590 09/14/2016 CARLSON, GASKEY & OLDS, P,C 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR Blair A. Smith 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. PA0012258US;67010-346PUS1 1776 EXAMINER LEGENDRE, CHRISTOPHER RY AN ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 09/14/2016 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BLAIR A. SMITH, BRIAN P. HUTH, and PAULA. CARVALHO Appeal2014-007463 Application 12/620,537 Technology Center 3700 Before MICHAEL L. HOELTER, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Blair A. Smith et al. (Appellants)1 seek review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1-3, 5-10, 12-19, 24, and 26. The Examiner objects to claims 4 and 11, but indicates that those claims would be allowable if rewritten in independent form. Ans. 32. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM, designating our affirmances as NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellants state that Hamilton Sundstrand Corporation is the assignee and is owned by United Technologies Corporation. Appeal Br. 1. Appeal2014-007463 Application 12/620,537 BACKGROUND The disclosed subject matter "relates to protecting airfoil components from foreign object damage and, more particularly, an indicator that alerts an operator to wear." Spec. i-f 1. Claims 1, 5, 12, and 17 are independent. Claim 1 is reproduced below: 1. An airfoil assembly comprising: an airfoil body extending between a leading edge, a trailing edge, a suction side, and a pressure side; a first protective sheath having an outer side and an inner side that forms a cavity for receiving at least a portion of the airfoil body, the inner side being bonded to the leading edge of the airfoil body; an indicator sheath bonded to the first protective sheath, at least a portion of the indicator sheath positioned forward the first protective sheath relative to the leading edge of the airfoil body; and a second protective sheath, at least a portion of the second protective sheath positioned forward the indicator sheath relative to the leading edge of the airfoil body, wherein the indicator sheath is fixed and immoveable relative to both the first and second protective sheaths. EVIDENCE RELIED ON BY THE EXAMINER Haines US 2,648,388 Aug. 11, 1953 Kageorge US 4,687,159 Aug. 18, 1987 Cross US 4,895,491 Jan. 23, 1990 Lofstrom US 5,908,522 June 1, 1999 Rutherford US 6,279,856 Bl Aug. 28, 2001 Adams US RE38,024 E Mar. 11, 2003 2 Appeal2014-007463 Application 12/620,537 REJECTIONS2 1. Claims 12, 13, and 16 are rejected under 35 U.S.C. § 102(b) as anticipated by Kageorge. 2. Claims 12, 15, and 16 are rejected under 35 U.S.C. § 102(b) as anticipated by Haines. 3. Claims 1, 12, 13, 17, 19, 24, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haines and Cross. 4. Claims 5, 7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haines, Cross, and Rutherford. 5. Claims 2, 3, 14, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haines, Cross, and Adams. 6. Claims 5 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haines, Cross, and Rutherford. 7. Claims 1 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haines and Lofstrom. 8. Claims 5 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haines, Lofstrom, and Rutherford. 2 The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as unpatentable over Haines, Cross, Rutherford, and "an engineering expedient." See Final Act. 17-19 (dated Sept. 11, 2013). In the Answer, the Examiner withdraws this rejection. See Ans. 28, 32. The Examiner also rejected claim 27 under 35 U.S.C. § 112, fourth paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends, and also under 35 U.S.C. § 103(a) as unpatentable over Haines and Cross (as part of Rejection 3). See Final Act. 3--4, 13. In an Amendment after Final, Appellants canceled claim 27. Amend. 6 (dated Nov. 8, 2013). 3 Appeal2014-007463 Application 12/620,537 9. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Haines and Lofstrom. 3 DISCUSSION Rejection 1 - The rejection of claims 12, 13, and 16 as Anticipated by Kageorge For this Rejection, Appellants argue independent claim 12 and do not separately argue claims 13 and 16, which depend from claim 12. Appeal Br. 4--5. Thus, we address claim 12, with claims 13 and 16 standing or falling with claim 12. See 37 C.F.R. § 41.37 (c)(l)(iv) (2014). Claim 12 recites an "indicator sheath having ... an inner side, ... the inner side forming a cavity for receiving at least a leading edge portion of a first protective sheath and for directly bonding the inner side to the leading edge portion." Appeal Br. 18 (Claims App.). The Examiner identified element 20 in Kageorge as the "indicator sheath" and element 18 as the "first protective sheath." Final Act. 4--5. The Examiner also cites column 5, lines 42--46 regarding "directly bonding the inner side to the leading edge portion" (the "'directly bonding' limitation"). See id. at 5. First, Appellants contend that "deformable sheet 20 includes no inner side forming a cavity for directly bonding to a leading edge portion of the base ply 18" and that "deformable sheet 20 moves relative to the base ply at a leading edge portion of the base ply 18" in order to "avoid[] ice formation at the leading edge portion." Appeal Br. 4 (stating also that "Figures 3 and 4 from Kageorge show the positions of the deformable sheet 20 when moved 3 The Examiner also rejected claim 4 under 35 U.S.C. § 103(a) as unpatentable over Haines and Lofstrom. See Final Act. 31. In the Answer, the Examiner withdraws this Rejection as to claim 4. See Ans. 32. 4 Appeal2014-007463 Application 12/620,537 relative to the base ply 18 at the leading edge portion"). Referencing a portion of the passage cited by the Examiner, Appellants state that "[t]his cementing, however, is not at a leading edge portion" but rather "is at a periphery of the sheet 20." Id. at 5. Appellants argue that "sheet 20 wraps over and covers the entire leading edge" and that "[t]he periphery of the sheet 20 is thus not at a leading edge portion as is claimed." Id. According to Appellants, "[i]f the cementing were at the leading edge portion, the sheet 20 would not be able to move relative to the base play 18 at the leading edge portion to prevent ice formation." Id. We are not apprised of error based on this argument. As noted by the Examiner, Kageorge teaches that "sheet 20 has inextensible threads 44 incorporated therein" (see col. 5, 11. 23-24) and that "sheet 20 wraps around the leading edge (as shown in Figure 6) and is cemented to the base ply 18 (see col.5:11.42--46) in such a manner as to form inflatable passages 54 (see Figure 4) for de-icing." Ans. 24. Kageorge, in the relied-upon passage and the passage prior, also provides: Spaced warp threads 46 of preferably the same inextensible material [as threads 44] are also incorporated into the fabric to act as anchoring points around which the ends of the inextensible fill threads may be secured. Retention of the inextensible threads is enhanced by the cementing of the periphery on the inner face of the deformable sheet 20 to the base ply 18 so that the two inextensible warp threads are cemented therebetween. Kageorge, col. 5, 11. 39--46. The "cementing" disclosed is thus located between elements 18 and 20 but only at the "periphery" of element 20 (specifically, along the length of the two inextensible warp threads 46) rather than over the entire inner face of element 20. See Kageorge, Fig. 2 (showing one of the two warp threads 46). 5 Appeal2014-007463 Application 12/620,537 That "deformable sheet 20 moves relative to the base ply at a leading edge portion of the base ply 18" (Appeal Br. 4) does not show that Kageorge fails to satisfy the "directly bonding" limitation. Although certain embodiments in the Specification show the entire "inner side" of the "indicator sheath" bonded to the "leading edge portion" of the "first protective sheath" (see, e.g., Fig. 2A) thereby preventing relative motion of those structures, Appellants have not shown that the limitation at issue requires such a configuration. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("[L]imitations are not to be read into the claims from the specification."). Further, Figures 3 and 4 in Kageorge do not illustrate cross- sections at the location of the relied-upon "cementing." See Kageorge, Fig. 2 (showing line 3-3 at a position other than that of threads 46); see also id., col. 4, 1. 4 ("FIG. 4 is a sectional view taken along line 3-3."). Thus, the "gap between the sheet and the base ply" depicted in Figure 4 (Reply Br. 2) does not indicate that Kageorge fails to satisfy the "directly bonding" limitation. We are also not apprised of error by the contention that the relied- upon cementing "is not at a leading edge portion" but rather "is at a periphery of the sheet 20." Appeal Br. 5. Although Kageorge does disclose that the cementing is located at the "periphery on the inner face of the deformable sheet 20" (Kageorge, col. 5, 11. 42--46 (emphasis added)), even the "periphery" of element 20 is within the "leading edge portion." Indeed, Kageorge describes Figure 2 using that term, stating that Figure 2 "shows the leading edge portion of the wing with its pneumatic deicer operatively secured thereto." Kageorge, col. 4, 11. 28-29. 6 Appeal2014-007463 Application 12/620,537 Second, Appellants contend that Kageorge's "deformable sheet 20 also includes no inner side forming a cavity for directly bonding to a leading edge portion of the base ply 18." Appeal Br. 5. The Examiner responds that "[s]ince the sheet 20 wraps around the leading edge (as shown in Figure 6) and is cemented to the base ply 18 (see col.5:11.42--46), then the claimed limitation is deemed to be anticipated." Ans. 24--25. Here, we view the Examiner as implicitly finding that, based on the structural relationship between elements 20 and 18 and the leading edge depicted, for example, in Figure 6, that Kageorge discloses that the "inner side" of element 20 forms a "cavity." Appellants have not apprised us of error in that finding. To the extent that Appellants contend that the limitation at issue requires the entire "inner side" of the "indicator sheath" to be bonded to the "leading edge portion" of the "first protective sheath," we disagree for the reasons discussed above. For these reasons, we sustain the rejection of independent claim 12 as anticipated by Kageorge. Claims 13 and 16 fall with claim 12. Because certain findings of fact differ from those of the Examiner, we designate our affirmance of this Rejection as a new ground of rejection under 37 C.F.R. § 41. 50(b) to provide Appellants with a full and fair opportunity to respond to the Rejection, as modified. Rejection 2 - The rejection of claims 12, 15, and 16 as Anticipated by Haines For this Rejection, Appellants argue independent claim 12 and do not separately argue claims 15 and 16, which depend from claim 12. Appeal Br. 5-7. Thus, we address claim 12, with claims 15 and 16 standing or falling with claim 12. See 37 C.F.R. § 41.37 (c)(l)(iv). The Examiner identified 7 Appeal2014-007463 Application 12/620,537 element 3 5 in Haines as the "indicator sheath" and elements 15/16 (which include elements 20/21/22/23) as the "first protective sheath." Final Act. 4-- 5; see also Appeal Br. 5 (stating that the Examiner identified "forward margins 22 and 23 as ... the first protective sheath"). First, Appellants contend that "filling material 35 is not an indicator sheath" and that Haines teaches that "nosepiece 30 of the blade in Haines is removed and replaced well before wearing to the point of exposing filler material 35." Appeal Br. 5, 6 (discussing Haines, col. 3, 11. 9-13). Appellants argue that "[i]t is directly contrary to these teachings that the propeller of Haines would wear through the nosepiece, and then through the heater element 40, to expose the cellular rubber core as an indicator." Id. at 6; see also id. at 5 (stating that "filling material 35 is a cellular rubber or plastic"). Features of an apparatus claim may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). If the Patent Office has reason to believe that a functional limitation recited in an apparatus claim "may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). Here, Appellants have not shown that the term "sheath" structurally distinguishes over element 35 in Haines. Although Appellants contend that the term"' [i]ndicator' structurally distinguishes the claimed sheath from sheaths that are not indicators" (Reply Br. 2), Appellants do not explain what structural limitations the term "indicator" provides as to the "sheath." See also Reply Br. 2 ("Indicator structurally modifies sheath into a sheath 8 Appeal2014-007463 Application 12/620,537 that is an indicator."). We view "indicator" as modifying "sheath" such that the "sheath" is configured to perform the function of indicating wear to other structure(s). This is supported by the Specification, which provides that "indicator sheath 72, when exposed, is a visual cue that the nose 62 of the airfoil assembly 20 has worn through the distance 84 of the sheath 60." Spec. i-f 28 (discussing Fig. 2a). Based on the configuration disclosed in Haines, we find that element 35 would inherently be capable of performing the recited function. Specifically, we find that element 35 would, based on its configuration with respect to elements 30 and 40, be capable of indicating wear through elements 30 and 40 that exposed element 35. See, e.g., Haines, Fig. 3. That Haines does not explicitly disclose using element 35 to perform this function does not undermine the rejection, as such a characteristic can be inherent. See Schreiber, 128 F.3d at 1478. Further, that Haines discloses that "if the nose-piece 30 be damaged it may be quite readily removed from the main blade structure" (col. 3, 11. 9-11) such that element 35 may not, in some instances, actually be exposed does not undermine that, in the disclosed configuration, element 35 is capable of indicating wear. Second, Appellants contend that "sheaths 15 and 16 are not protective sheaths," but rather, "are the main upper airfoil sheath 15 and the main lower airfoil sheath 16" that "provide the airfoil." Appeal Br. 6. According to Appellants, "[i]t is not a reasonable interpretation of the claim to consider the sheaths that define the airfoil body as being protective sheaths separate from an airfoil body" because "rubber filler 55, 56, 57 would not provide an airfoil body without the sheaths 15 and 16" as "[t]he rubber filler is held together by the sheaths 15 and 16." Id. 9 Appeal2014-007463 Application 12/620,537 We are not apprised of error here. The term "protective" modifies "sheath" such that the "sheath" is configured to perform the function of protecting other structure(s). The Examiner states that "sheaths 15 and 16 perform the function of being 'protective' of filler material 55 due to their relative locations." Ans. 25; see also Haines, Fig. 3. Appellants have not shown error in that finding. See Schreiber, 128 F.3d at 1478. We tum now to the assertions that "rubber filler 55, 56, 57 would not provide an airfoil body without the sheaths 15 and 16" and that "Haines teaches no airfoil body without the sheaths 15 and 16." Appeal Br. 6. Contrary to Appellants' assertion, claim 12 does not recite "an 'airfoil body extending between a leading edge, a trailing edge, a suction side, and a pressure side."' Appeal Br. 6. And we will not import into claim 12 the requirement that the "first protective sheath" must "protect[]" an "airfoil body." See Van Geuns, 988 F.2d at 1184. For these reasons, we sustain the rejection of independent claim 12 as anticipated by Haines. Claims 15 and 16 fall with claim 12. Because certain findings of fact differ from those of the Examiner, we designate our affirmance of this Rejection as a new ground of rejection under 37 C.F.R. § 41. 50(b) to provide Appellants with a full and fair opportunity to respond to the Rejection, as modified. 10 Appeal2014-007463 Application 12/620,537 Rejection 3-The rejection ofclaims 1, 12, 13, 17, 19, 24, and 26 as Unpatentable over Haines and Cross A. Claims 1, 12, 13, 17, 24, and 26 Appellants argue the patentability of the three independent claims in this Rejection---claims 1, 12, and 17-based on the same arguments and do not provide separate arguments for any dependent claims. Appeal Br. 7-9. We select independent claim 1 as representative, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv). For each of the independent claims, the Examiner identified, in Haines, ( 1) element 40 as the "indicator sheath," (2) element 35 as the "first protective sheath," and (3) element 30 as the "second protective sheath." Final Act. 7-8, 9, 11. First, Appellants argue that "heater element 40 fails to teach the claimed indicator sheath" and, instead, "is a flexible sheet of wires." Appeal Br. 7. According to Appellants, Haines teaches that "if the nose-piece 30 is damaged, the nose-piece 30 is removed and replaced by another nose-piece 30." Id. (citing Haines, col. 3, 11. 9-13). Appellants contend that because "nose-piece 30 is removed and replaced when damaged, the heater element 40 ... is never exposed" and "thus never an indicator." Id. Appellants argue that "the Examiner's interpretation of the claimed indicator sheath essentially assigns no patentable weight to 'indicator' or 'sheath."' Id. Here, Appellants have not shown that the term "sheath" distinguishes over element 40 in Haines. As noted by the Examiner, the Specification "indicates that a sheath can take the form of a wire (see paragraph [0037])." Ans. 27; see Spec. i-f 37 (discussing Figure 5 and stating, "[i]n this example, a copper wire 92 is used as the indicator sheath 472"). As to "indicator," for the same reasons discussed above (see supra Rejection 2 (first argument)), we view that term as modifying "sheath" such 11 Appeal2014-007463 Application 12/620,537 that the "sheath" is configured to perform the function of indicating wear to other structure(s). Based on the configuration disclosed in Haines, we find that element 40 would be inherently capable of performing the recited function. Specifically, we find that element 40 would, based on its configuration with respect to element 30, be capable of indicating wear through element 30 that exposed element 40. See, e.g., Haines, Fig. 3. That Haines does not explicitly disclose using element 40 to perform this function does not undermine the rejection, as such a characteristic can be inherent. See Schreiber, 128 F.3d at 1478. Further, that Haines discloses that "if the nose-piece 30 be damaged it may be quite readily removed from the main blade structure" (col. 3, 11. 9-11) such that element 40 may not, in some instances, actually be exposed does not undermine that, in the disclosed configuration, element 40 is capable of indicating wear. Second, Appellants argue that "filling material 3 5 fails to teach the claimed first protective sheath" and that "filling material 35 is a cellular rubber or plastic," "not a sheath." Appeal Br. 8. Appellants argue that "[i]t is not reasonable to consider the rubber or plastic filler material to teach a protective sheath" because the "filler material is never exposed and thus is never in a position appropriate to provide protection." Id. Although Appellants contend that element 3 5 is "not a sheath" (Appeal Br. 8), Appellants do not explain how that term distinguishes over element 3 5. Here, the Examiner finds that "filling material 3 5 is a unified body of material that provides covering and therefore a sheath." Ans. 27. Appellants have not apprised us of error in this finding. Further, as discussed above (see supra Rejection 2 (second argument)), the term "protective" modifies "sheath" such that the "sheath" is configured to 12 Appeal2014-007463 Application 12/620,537 perform the function of protecting other structure(s). The Examiner states that "the filling material performs the function of being 'protective' of sheaths 15 and 16 due to their relative locations." Ans. 27; see also Haines, Fig. 3. Appellants have not shown error in that finding. See Schreiber, 128 F.3d at 1478. For these reasons, we sustain the rejection of claim 1 as unpatentable over Haines and Cross. Claims 12, 13, 17, 24, and 26 fall with claim 1. Because the reasoning and certain findings of fact differ from those of the Examiner, we designate our affirmance of this Rejection as to claims 1, 12, 13, 17, 24, and 26 as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a full and fair opportunity to respond to the Rejection, as modified. B. Claim 19 Claim 19 depends from claim 1 7 and recites "wherein wearing the second protective sheath exposes the indicator sheath." Appeal Br. 19 (Claims App.). Appellants argue that, in Haines, "wearing the nose-piece does not expose the heater element 40" but rather "results in the nose-piece 30 being replaced (see column 3, lines 9-13)." Id. at 9. We are not apprised of error based on this argument. As noted by the Examiner, "[t]he wording of the instant claim has the effect of limiting the structure of the invention rather than further defining procedural steps." Ans. 27. We agree with the Examiner that "[ d]ue to their relative locations, sufficient wear of the nose-piece 30 would result in heater element 40 being exposed." Id. at 27-28. That Haines discloses that "if the nose-piece 30 be damaged it may be quite readily removed from the main blade structure" (col. 3, 11. 9-11) such that element 40 may not, in some instances, actually be 13 Appeal2014-007463 Application 12/620,537 exposed does not undermine the fact that, in the disclosed configuration, element 40 would be exposed by sufficient wear to nose-piece 30. See Ans. 28 (stating that "the intended process of replacement of nose-piece 30 disclosed by Haines does not negate the structural relationship between nose-piece 30 and heater element 40"). Thus, we sustain the rejection as unpatentable over Haines and Cross. Based on the dependence of claim 19 from claim 1 7 and the disposition above (see supra Rejection 3, §A), we designate our affirmance of this Rejection as to claim 19 as a new ground of rejection under 37 C.F.R. § 41.50(b). Rejection 4-The rejection of claims 5, 7, 9, and 10 as Unpatentable over Haines, Cross, and Rutherford For this Rejection, Appellants rely on the same arguments discussed above regarding the rejection of claim 1 as unpatentable over Haines and Cross (see supra Rejection 3, §A). See Appeal Br. 9. For the same reasons discussed above, we sustain this Rejection. Because the reasoning and certain findings of fact differ from those of the Examiner (based on the arguments relied upon from Rejection 3), we designate our affirmance of this Rejection as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a full and fair opportunity to respond to the Rejection, as modified. Rejection 5 - The rejection of claims 2, 3, 14, and 18 as Unpatentable over Haines, Cross, and Adams Appellants do not separately argue claims 2, 3, 14, and 18 (Appeal Br. 10), which depend from claims addressed in Rejection 3, §A. For the same reasons discussed above, we sustain this Rejection. Based on the 14 Appeal2014-007463 Application 12/620,537 dependence of these claims from claims addressed above (see supra Rejection 3, §A) and the disposition as to those parent claims (see id.), we designate our affirmance of this Rejection as a new ground of rejection under 37 C.F.R. § 41.50(b). Rejection 6-The rejection of claims 5 and 7 as Unpatentable over Haines, Cross, and Rutherford For this Rejection, Appellants rely on the same arguments discussed above regarding the rejection of claim 1 as unpatentable over Haines and Cross (see supra Rejection 3, §A). See Appeal Br. 11. For the same reasons discussed above, we sustain this Rejection. Because the reasoning and certain findings of fact differ from those of the Examiner (based on the arguments relied upon from Rejection 3), we designate our affirmance of this Rejection as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a full and fair opportunity to respond to the Rejection, as modified. Rejection 7 - The rejection of claims 1 and 6 as Unpatentable over Haines and Lofstrom For this Rejection, Appellants argue claim 1 and do not separately argue claim 6, which depends from claim 1. Appeal Br. 11-12. Thus, we address claim 1, with claim 6 standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv). The Examiner identified, in Haines, (1) elements 55, 56, 57, and 10 as the "airfoil body," (2) element 35 as the "indicator sheath," and (3) elements 15 and 16 as the "first protective sheath." Final Act. 26. First, Appellants contend that "filling material 3 5 fails to teach the claimed indicator sheath" and that Haines teaches that "if the nose-piece 30 is damaged, the nose-piece 30 is removed and replaced by another nose- 15 Appeal2014-007463 Application 12/620,537 piece 30." Appeal Br. 11 (discussing Haines, col. 3, 11. 9-13). According to Appellants, because "nose-piece 30 is removed and replaced when damaged, the filling material 35 is not an indicator sheath in any way" and "never functions as an indicator." Id. Appellants argue that "the Examiner's interpretation of the claimed indicator sheath essentially assigns no patentable weight to 'indicator."' Id. at 12. Here, Appellants have not shown that the term "sheath" structurally distinguishes over element 35 in Haines. Although Appellants contend to not be "attempting to broadly claim all types of sheaths, but rather a specific type of sheath - an indicator sheath" (Reply Br. 3), Appellants do not explain what structural limitations the term "indicator" provides as to the "sheath" itself. Applying the same construction of "indicator" discussed above (see supra Rejection 2 (first argument)), we find (for the same reasons discussed above (see id.) that element 35 would be inherently capable of performing the recited function. Second, Appellants contend that "sheaths 15 and 16 are not protective sheaths," but rather "are the main upper airfoil sheath 15 and the main lower airfoil sheath 16" that "provide the airfoil." Appeal Br. 12. According to Appellants, "[i]t is not reasonable to consider the sheaths that define the airfoil body as being protective sheaths separate from an airfoil body" because "rubber filler 55, 56, 57 would not provide an airfoil body without the sheaths 15 and 16" as "[t]he rubber filler is held together by the sheaths 15 and 16." Id. We are not apprised of error here. The term "protective" modifies "sheath" such that the "sheath" is configured to perform the function of protecting other structure(s). The Examiner states that "sheaths 15 and 16 16 Appeal2014-007463 Application 12/620,537 perform the function of being 'protective' of filler material 55 due to their relative locations." Ans. 29; see also Haines, Fig. 3. Appellants have not shown error in that finding. See Schreiber, 128 F.3d at 1478. We tum now to the assertion that "[i]t is not reasonable to consider the sheaths that define the airfoil body as being protective sheaths separate from an airfoil body." Appeal Br. 12. Although Haines does refer to elements 15 and 16 as the "main upper air foil sheath" and "main lower air foil sheath," respectively (col. 2, 11. 29-31 ), that does not indicate that those structures "define"-and would necessarily be included in structures identified as-the "airfoil body" recited in claim 1 (emphasis added). Indeed, claim 1 recites the "airfoil body" as only one element of an "airfoil assembly." Appeal Br. 16; see also Spec. i-f 16 ("In this case, the airfoil assembly 20 includes an airfoil body 22 that extends between a leading edge 24, a trailing edge 26, a suction side 28, and a pressure side 30. In general, the leading edge 24, the trailing edge 26, the suction side 28, and the pressure side 30 are made with reference to an intended air flow 32 over the airfoil assembly 20."). We tum now to the assertions that "rubber filler 55, 56, 57 would not provide an airfoil body without the sheaths 15 and 16" because "[t]he rubber filler is held together by the sheaths 15 and 16" and that "Haines teaches no airfoil body without the sheaths 15 and 16." Appeal Br. 12. Appellants have not persuasively shown that "airfoil body" distinguishes over the identified structures---collectively, elements 55, 56, 57, and 10. Even assuming that elements 15 and 16 are necessary to hold elements 55, 56, 57, and 10 together, Appellants have not shown this precludes elements 55, 56, 57, and 10 from satisfying the "airfoil body" limitation. 17 Appeal2014-007463 Application 12/620,537 For these reasons, we sustain the rejection of claim 1 as unpatentable over Haines and Lofstrom. Claim 6 falls with claim 1. Because the reasoning and certain findings of fact differ from those of the Examiner, we designate our affirmance of this Rejection as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a full and fair opportunity to respond to the Rejection, as modified. Rejection 8-The rejection of claims 5 and 8 as Unpatentable over Haines, Lofstrom, and Rutherford For this Rejection, the Examiner identified, in Haines, (1) elements 55, 56, 57, and 10 as the "airfoil body," (2) element 35 as the "indicator sheath," and (3) elements 15 and 16 as the "first protective sheath." Final Act. 28-29. A. Independent Claim 5 For claim 5, the Examiner stated that Haines does not disclose "the inner side of the first protective sheath (15, 16) being bonded to the leading edge of the airfoil body (55)" but found that Lofstrom discloses "a rotor blade having a sheath (i.e. - wear strip 32) (Figures 6 and 7) adhesively bonded (50,52) (Figure 7) to an airfoil body (40) (Figure 7)." Id. at 29. According to the Examiner, it would have been obvious "to modify the airfoil assembly of Haines to include an adhesive bond between the first protective sheath and the airfoil body, as disclosed by Lofstrom, for the purpose of providing a secure attachment therebetween." Id. at 29-30. First, Appellants argue that element 35 "is not an indicator sheath" for "at least the reasons mentioned in response to the anticipation rejection of claim 12 involving Haines." Appeal Br. 13. For the same reasons discussed 18 Appeal2014-007463 Application 12/620,537 above, we are not apprised of error based on this argument. See supra Rejection 2 (first argument). Second, Appellants argue that elements 15 and 16 are not "the claimed protective sheaths" for "the reasons mentioned in response to the anticipation rejection of claim 12." Appeal Br. 13. For the same reasons discussed above, we are not apprised of error based on this argument. See supra Rejection 2 (second argument). Third, Appellants argue that "there is no legally sufficient reason for modifying Haines to include an adhesive bond between the sheaths 15 and 16, and the hard sponge rubber 55." Appeal Br. 13. According to Appellants, because "sheaths 15 and 16 are assembled prior to the rubber 55 filling the space between the sheaths 15 and 16," there is "no need to stabilize the sheaths 15 and 16 by bonding them to the rubber 55." Id. As stated by the Examiner, "the proposed modification of adding an adhesive to bond sheaths 15 and 16 to the rubber 55 is not to stabilize the sheaths, per se, but, rather, to promote further stabilization of the attachment between the sheaths 15 and 16 and the rubber 55 and, hence, the entire airfoil assembly." Ans. 30. We determine that the statements relied on by the Examiner to address claim 5 in this Rejection (Final Act. 29-30; Ans. 30) provide a "rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants have not shown error in that reasoning. 19 Appeal2014-007463 Application 12/620,537 B. Claim 8 Claim 8 depends from claim 5. Appeal Br. 17 (Claims App.). As to the additional limitation of claim 8, the Examiner stated that stainless steel nose-piece 30 may be fixed rigidly in place where its upper and lower margins 31 and 32 overlap suitably indented portions of sheaths 15 and 16 by soldering or otherwise fixing these overlapping portions together as by a rubber cement bond- -)(see Haines col. 2, 11. 54--55 through col. 3, 11. 1--4) to bond the second protective sheath (Haines, 30) to the first protective sheath (Haines; 15, 16). Final Act. 30-31. Appellants contend that "there is no legally sufficient reason for modifying Haines to space the sheaths 15 and 16 to 'establish an area that is filled with an adhesive to bond the second protective sheath to the first protective sheath."' Appeal Br. 13 (quoting claim 8). According to Appellants, "sheaths 15 and 16 are welded together" and "[a] rubber cement bond, as is suggested, would not benefit Haines in any way." Id. We are not apprised of error based on this argument. As noted by the Examiner, with respect to the limitation at issue, the Rejection "does not rely on a modification but rather on a disclosure of the base reference [i.e., Haines] being inherited from the parent rejection." Ans. 30-31. Appellants have not shown that column 2, line 54 through column 3, line 4 of Haines fails to satisfy the limitation at issue. For these reasons, we sustain the rejection of claims 5 and 8 as unpatentable over Haines, Lofstrom, and Rutherford. Because the reasoning and certain findings of fact differ from those of the Examiner (based on the arguments relied upon from Rejection 2), we designate our affirmance of this Rejection as a new ground of rejection under 37 C.F.R. § 41.50(b) to 20 Appeal2014-007463 Application 12/620,537 provide Appellants with a full and fair opportunity to respond to the Rejection, as modified. Rejection 9 - The rejection of claim 1 as Unpatentable over Haines and Lofstrom For this Rejection, the Examiner identified, in Haines, (1) elements 55, 56, 57, and 10 as the "airfoil body," (2) element 35 as the "indicator sheath," (3) elements 15 and 16 as the "first protective sheath," and ( 4) element 40 as the "second protective sheath." Final Act. 31-32. First, Appellants argue that element 35 "is not an indicator sheath" for the reasons "mentioned in response to the first obviousness rejection involving Haines and Lofstrom." Appeal Br. 14. For the same reasons discussed above, we are not apprised of error based on this argument. See supra Rejection 7 (first argument). Second, Appellants argue that elements 15 and 16 are not "the claimed protective sheaths" for "the reasons mentioned in response to the anticipation rejection of claim 12." Appeal Br. 14. For the same reasons discussed above, we are not apprised of error based on this argument. See supra Rejection 2 (second argument). Third, Appellants argue that "heater element 40 fails to teach a protective sheath." Appeal Br. 14. Appellants contend that "heater element 40 is a flexible sheet that is not exposed (see column 3, line 27)" and that "offers no protection whatsoever." Id. According to Appellants, "[i]t is not reasonable to consider a flexible sheet sandwiched between two metallic structures as a protective sheath." Id. We are not apprised of error here. The term "protective" modifies "sheath" such that the "sheath" is configured to perform the function of 21 Appeal2014-007463 Application 12/620,537 protecting other structure(s). The Examiner states that "heater element 40 performs the function of being 'protective' of resilient material 35 due to their relative locations." Ans. 31-32; see also Haines, Fig. 3. Appellants have not shown error in that finding. See Schreiber, 128 F.3d at 1478. Appellants contend that "protective implicates structure to the claimed sheath" (Reply Br. 3), but do not explain how "protective sheath" distinguishes over element 40. Further, as noted by the Examiner, "the flexibility of a material does not necessarily negate its ability to provide protection, and the lack of exposure does not negate its serving the function and/or having the structure of a sheath." Ans. 32. For these reasons, we sustain the rejection of claim 1 as unpatentable over Haines and Lofstrom. Because the reasoning and certain findings of fact differ from those of the Examiner (based on the arguments relied upon from Rejections 7 and 2), we designate our affirmance of this Rejection as a new ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellants with a full and fair opportunity to respond to the Rejection, as modified. DECISION We AFFIRM the decision to reject claims 1-3, 5-10, 12-19, 24, and 26, and designate each affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of 22 Appeal2014-007463 Application 12/620,537 rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED; 37 C.F.R. § 41.50(b) 23 Copy with citationCopy as parenthetical citation