Ex Parte Smith et alDownload PDFPatent Trial and Appeal BoardFeb 29, 201612495867 (P.T.A.B. Feb. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/495,867 07/01/2009 25944 7590 03/03/2016 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 FIRST NAMED INVENTOR Angus Roy 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. 153869 3522 EXAMINER FABULA, MICHAEL A ART UNIT PAPER NUMBER 3647 NOTIFICATION DATE DELIVERY MODE 03/03/2016 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANGUS ROY SMITH and DIMITRIS ARZOGLOU Appeal2013-009864 Application 12/495,867 Technology Center 3600 Before JOHN C. KERINS, CHARLES N. GREENHUT, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Angus Roy Smith and Dimitris Arzoglou (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-3 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. Claims 4-10 have been canceled. 1 We 1 Appellants canceled claims 4, 5, and 7-10 in an Amendment After Final Rejection filed Apr. 29, 2013. See Amendment After Final Rejection, 3--4; see also Appeal Br. A-1, Appendix A- Claims Appendix, footnote 2. Appeal2013-009864 Application 12/495,867 have jurisdiction under 35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was held on February 18, 2016. We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter "relates to a gas turbine engine nacelle." Spec. para. 2; Figs. 3-6. Claim 1, the sole independent claim, is representative of the claimed subject matter and recites: 1. A nacelle for a gas turbine engine, the nacelle comprising: an intake portion at an upstream end of the nacelle, the intake portion having in flow series, an intake lip, and a diffuser; an exhaust portion at a downstream end of the nacelle, wherein the intake lip has a highlight which is a closed loop defining a boundary between an inner surface of the intake lip and an outer surface of the intake lip at \"1hich a tangent to the inner surface is coincident with a tangent to the outer surface; the highlight lies in a highlight surface which is either planar or curved in only one principal direction; and at each of one or more, but not all, positions on the highlight and in a respective longitudinal section through the nacelle, one portion of the intake lip crosses a tangent to the highlight surface at that position on the highlight and surfaces of the intake lip neighbouring the one portion of the intake lip are adjusted to provide smoothly blended surfaces. ANALYSIS The Examiner determines that Appellants fail to set forth the subject matter which they regard as their invention. See Ans. 2-7; see also Final 2 Appeal2013-009864 Application 12/495,867 Act. 2-3. According to the Examiner, "Appellants are necessarily alleging a product-by-process wherein claim 1 attempts to recite the final product made." Ans. 3. Specifically, the Examiner determines: Since the final product requires a rotation from an initial geometry in order for a portion of the intake lip to cross a reference point, namely a tangent to the highlight surface ... [,] and neither an initial geometry nor a rotation were recited in the amended claim 1, Appellants are not claiming what they regard as their invention, namely, a nacelle having an intake lip with altered geometry. Id. (citing Spec. para. 18; Fig. 6.). Appellants contend that they "clearly and properly claim what they regard as their invention -- a final product [of the design method]," namely, a nacelle having and intake lip with 'altered geometry."' See Appeal Br. 6-7; Reply Br. 1--4. According to Appellants, Independent claim 1 recites a nacelle having an intake with the distinguishing characteristics of the altered geometry. First, claim 1 recites that "one portion of the intake lip crosses a tangent to the highlight surface" (emphasis added). Second, claim 1 further recites that "surfaces of the intake lip neighboring the one portion of the intake lip are adjusted to provide smoothly blended surfaces" [emphasis added]. Thus, claim 1 not only recites that the intake lip crosses a tangent to the highlight surface, but also that other surfaces of the intake lip are adjusted to provide smoothly blended surfaces. Appeal Br. 7 (internal footnote omitted); see also id. at 6; Spec. paras. 33-36. There are two separate requirements set forth in 35 U.S.C. § 112, second paragraph, namely that (1) the claims set forth the subject matter the inventor regards as the invention; and (2) the claims particularly point out 3 Appeal2013-009864 Application 12/495,867 and distinctly define the metes and bounds of the subject matter to be protected. See, e.g., MPEP § 2171; see also Reply Br. 1-2. The first requirement is a subjective one because it is dependent on what the inventor regards as his or her invention. The invention set forth in the claims must be presumed, in the absence of evidence to the contrary, to be that which the inventor or a joint inventor regards as the invention. See MPEP § 2172 (citing In re Moore, 439 F.2d 1232 (CCPA 1971)); see also Reply Br. 1-2. The essence of the second requirement under 35 U.S.C. § 112, second paragraph, the so-called "definiteness" requirement, is that the language of the claims must provide clarity to those skilled in the art regarding the scope of the subject matter which the claims encompass. See In re Hammack, 427 F.2d 1379 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second paragraph, is "whether those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Appellants' Specification describes that "[t]he intake lip 50 has inner 50A and outer SOB surfaces, which meet at a highlight H at the front of the nacelle." Spec. para. 29. Appellants' Specification describes: A next step in the design procedure is to pivot, in the plane of the respective longitudinal section, the front portion of the intake lip about the highlight H in a direction which rotates axis A either towards the engine axis (+0, dot-dashed lines) or away from the engine axis (-0, dotted lines), as shown in Figure 5, and in more detail in Figure 6, which is a close-up view of the forwardmost part of the rotated intake lip. Spec. para. 33; see also Appeal Br. 6. Appellants' Specification further describes: 4 Appeal2013-009864 Application 12/49S,867 Because the inner SOA and outer SOB surfaces of the intake lip SO are tangential to the highlight surface S at the highlight H in the initial geometry of Figure 4, the +B rotation has the effect of causing the inner surface 5 OA to cross the tangent T inwards of axis A, whereas the -B rotation has the effect of causing the outer surface 5 OB to cross the tangent T outwards of axis A. Spec. para. 34 (emphasis added); see also Appeal Br. 6. Appellants' Specification also describes: Having rotated the part of the front portion of the intake lip at the keel position, the next step in the design procedure is to adjust the surfaces of neighbouring parts of the intake to smoothly blend the surfaces of the rotated front keel part with the surfaces of unadjusted parts of the intake further removed from the rotated part. Spec. para. 3S; see also Appeal Br. 7. Upon review of Appellants' disclosure, a skilled artisan would recognize that when one portion of the intake lip (inner surface SOA or outer surface SOB of intake lip SO) crosses a tangent to the highlight surface (via rotation from an initial geometry) and when surfaces neighboring that one portion of the intake lip (inner surface SOA or outer surface SOB of intake lip SO) are adjusted to provide smoothly blended surfaces, an altered geometry of the nacelle intake results. As such, we agree with Appellants that one of ordinary skill in the art, would "understand that claim 1 is directed to Appellants' disclosed final product in which the nacelle intake has the 'altered geometry,' and that this in accordance with Appellants' disclosure." See Appeal Br. 7; see also id. at 8.2 Although Appellants may also regard the process for modifying a 2 Appellants' Specification describes that "the nacelle can be one having an altered geometry designed by the method of the first aspect." See Spec. para. 19. s Appeal2013-009864 Application 12/495,867 nacelle as part of their invention, the Examiner has not established that Appellants do not consider the modified nacelle itself as "the subject matter [they] regard[] as the invention." Contra Final Act. 2-3. The Examiner determines that "[t]he phrase 'the intake lip crosses a tangent to the highlight surface at that position' renders claims 1-3 indefinite." Final Act. 6. According to the Examiner, the limitation "a portion of the intake lip crosses a tangent to the highlight surface at the position" is not possible because if the tangent to the highlight is made with reference to the rotated position of the inlet lip, as depicted by the dotted line in the second Figure, no portion of the inlet lip crosses the dotted line. However, if [Appellants are] instead attempting to refer to the original tangent (solid line), appropriate correction must be made to clarify the meaning of "at that position." Id. (citing Figure 4 of the subject invention and an annotated version of Figure 4 of the subject invention). The Examiner concludes that"[ s ]ince neither a product-by-process nor a nacelle which is rotatable between two states is presently claimed, Appellants have [] failed to particularly point out and distinctly claim the subject matter which they regard as their invention." Ans. 8. Appellants contend: the phrase "at that position" is clear in view of its plain meaning in the context of the remainder of the claim. Claim 1 recites that "at each of one or more, but not all, positions on the highlight .. . one portion of the intake lip crosses a tangent to the highlight surface at that position." As is clear from the context of claim 1, the phrase "one or more ... positions on the highlight" provides antecedent basis for the subsequently recited phrase "at that position." 6 Appeal2013-009864 Application 12/495,867 Appeal Br. 9 (emphasis in original). Appellants further contend that a portion of the intake lip "crosses a tangent to the highlight surface at the same previously recited one position on the highlight [(i.e., at the same one or more position on the highlight)]." Id. at 11 (emphasis in original). In response to the Examiner's determinations regarding the annotated version of Figure 4 of the subject invention, Appellants contend: By rotating the entire Fig. 4, the Examiner also rotates the highlight surface S, in addition to a portion of the intake lip inner surface 50A. However, as discussed in Appellants' specification, pivoting the front portion of the intake lip causes the lip to pivot about the highlight. ... Essentially, by rotating the entirety of Fig. 4, the Examiner renders it mathematically impossible for the intake lip inner surface 50A to ever cross a tangent to the highlight surface. Id. at 10 (emphasis in original) (citing Spec. para. 33). Paragraph 33 of Appellants' Specification describes that "the front portion of the intake lip [pivots/rotates] about the highlight H in a direction which rotates axis A." Upon review of Appellants' disclosure, we agree with Appellants that a portion of the intake lip pivots/rotates about the highlight H and that neither the highlight H nor the highlight surface S pivots/rotates. See Appeal Br. 10. We further agree with Appellants that one of ordinary skill in the art, when reading claim 1, would understand that the tangent to the highlight is at a position on the highlight and the intake lip portion crosses the tangent at that same position. See id. at 9-11. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of claims 1-3 for either failing to set forth the subject matter that the inventors regard as the invention or for being indefinite. 7 Appeal2013-009864 Application 12/495,867 DECISION We REVERSE the decision of the Examiner to reject claims 1-3 under 35 U.S.C. § 112, second paragraph. REVERSED 8 Copy with citationCopy as parenthetical citation