Ex Parte Wakayama

Board of Patent Appeals and Interferences

Jul 27, 2000

08917480 (B.P.A.I. Jul. 27, 2000)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SEAN R. WAKAYAMA
____________
Appeal No. 2000-0408
Application No. 08/917,480
____________
ON BRIEF
____________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-20, which are all of the claims pending in
this application.
We REVERSE and REMAND.
BACKGROUND
The appellant's invention relates generally to aerodynamics
and, more particularly, to a reconfiguration control system for
Appeal No. 2000-0408
Application No. 08/917,480
Page 2
optimizing the spanwise lift distribution on a blended wing-body
aircraft by reconfiguring the deflection of trailing edge control
surfaces (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Ashkenas 2,549,045 April 17, 1951
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ashkenas.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejection, we make reference to the final rejection (Paper No. 6,
mailed February 1, 1999) and the answer (Paper No. 14, mailed
August 24, 1999) for the examiner's complete reasoning in support
of the rejection, and to the brief (Paper No. 12, filed May 28,
1999) for the appellant's arguments thereagainst.
Appeal No. 2000-0408
Application No. 08/917,480
Page 3
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the respective
positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). As stated in In re Oelrich, 666
F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939))
(internal citations omitted):
Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.
If, however, the disclosure is sufficient to show that the
natural result flowing from the operation as taught would
result in the performance of the questioned function, it
seems to be well settled that the disclosure should be
regarded as sufficient.
Thus, a prior art reference may anticipate when the claim
limitation or limitations not expressly found in that reference
Appeal No. 2000-0408
Application No. 08/917,480
Page 4
are nonetheless inherent in it. See In re Oelrich, 666 F.2d at
581, 212 USPQ at 326; Verdegaal Bros., Inc. v. Union Oil Co., 814
F.2d 628, 630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Under the
principles of inherency, if the prior art necessarily functions
in accordance with, or includes, the claimed limitations, it
anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136,
138 (Fed. Cir. 1986). However, inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in the
art. See Mehl/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362,
1365, 52 USPQ2d 1303, 1305-06 (Fed. Cir. 1999); Atlas Powder Co.
v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed.
Cir. 1999).
With this as background, we analyze the single prior art
reference applied by the examiner in the rejection of the claims
on appeal.
Ashkenas' invention relates to anti-stall slots for
airplanes, and more particularly, to a means and method for
controlling tip stall in airplanes having swept-back wing panels.
One wing panel W of an all-wing army bomber is shown in Figure 1.
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Application No. 08/917,480
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The wing panel includes elevons 4, rudders 5 for producing
unilateral drag at the wing tips and landing flaps 6.
We agree with the appellant (see Brief, pp. 6-8) that the
subject matter of claims 1-20 is not anticipated by Ashkenas. In
that regard, Ashkenas does not disclose every limitation of the
claimed invention, either explicitly or inherently.
Specifically, Ashkenas does not disclose the "control surface
reconfiguration system" as recited in claims 1-10, the
"reconfiguration means" as recited in claims 11-18, or the
"reconfiguring" step as recited in claims 19 and 20 since
Ashkenas does not specifically teach or disclose that his control
surfaces (i.e., the elevons 4, the rudders 5 and the landing
flaps 6) are selectively reconfigurable to a plurality of
predetermined positions as required to optimize the spanwise
force distribution across the wing for each of a plurality of
different flight configurations. The examiner's reliance (see
Answer, pp. 3-4) on the basic elements of flight and/or the
knowledge of one skilled in the art is misplaced in this instance
since the rejection is under 35 U.S.C. § 102, not under 35 U.S.C.
§ 103.
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Application No. 08/917,480
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1 The examiner may wish to consider computer-based flight
management systems, aircraft operating manuals, and pilot
operating handbooks.
Since all the limitations of claims 1-20 are not disclosed
by Ashkenas for the reasons set forth above, the decision of the
examiner to reject claims 1-20 under 35 U.S.C. § 102(b) is
reversed.
REMAND
We remand this application to the examiner to consider the
patentability of claims 1-20 under 35 U.S.C. § 103 over the cited
prior art. In addition, the examiner should consider searching
for other prior art1 that would teach how the control surfaces
along a wing's trailing edge should be set for different flight
conditions (e.g., take-off, landing, cruising, pitching).
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CONCLUSION
To summarize, the decision of the examiner to reject claims
1-20 under 35 U.S.C. § 102(b) is reversed. In addition, this
application has been remanded to the examiner for further
consideration.
REVERSED; REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-0408
Application No. 08/917,480
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