Ex Parte Wright et al

Board of Patent Appeals and Interferences

Jan 15, 2009

09976647 (B.P.A.I. Jan. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS H. WRIGHT and JAMES J. ZIARNO

____________

Appeal 2008-4274
Application 09/976,6471
Technology Center 2600
____________

Decided: January 15, 2009
____________

Before KENNETH W. HAIRSTON, ROBERT E. NAPPI and KARL D.
EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL

1 This application claims priority to great-grandfather application
08/557,269, US 6,047,165, filed November 14, 1995 (App. Br. 1).
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 59-75. (App. Br. 2).2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants describe their invention as an aircraft system that stores
large amounts of flight data in a “black box” during flight. Upon landing,
the aircraft system wirelessly transmits a selected portion of the stored flight
data that exceeds certain performance parameters in a compressed and
encrypted format. (Spec. 1:3-13; 19:19-26; 40:25 to 41:13).
Claim 59 is illustrative of the invention and reads as follows:
59. An aircraft data transmission system, the aircraft
having a data acquisition unit, and the aircraft including a data
storage medium having stored thereon flight data gathered in-
flight by at least a first sensor on the aircraft, comprising:
a communications unit located in the aircraft and in
communication with the data acquisition unit;
at least a second sensor configured to sense a landing of
the aircraft;
a cellular infrastructure in communication with said
communications unit after the aircraft has landed, wherein the
cellular infrastructure communicates said flight data, and
wherein the communication is initiated when at least the second
sensor senses the landing of the aircraft;
a data reception unit in communication with said cellular
information; and
wherein said flight data includes time, airspeed, altitude,
vertical acceleration, and heading data relating to a flight of
the aircraft.

2 Appellants’ Appeal Brief (filed November 5, 2007) (“App. Br.”) and Reply
Brief (filed March 20, 2008), and the Examiner’s Answer (mailed February
20, 2008) (“Ans.”), detail the parties’ positions.
Appeal 2008-4274
Application 09/976,647

The Examiner relies on the following prior art references to show
unpatentability:
Miller, Jr. US 4,729,102 Mar. 1, 1988
Ross US 5,351,194 Sept. 27, 1994
Polivka US 5,463,656 Oct. 31, 1995
Miller US 5,652,717 Jul. 29, 19973
Bannister US 5,943,399 Aug. 24, 19994

The Examiner rejected claims 59 to 75 under 35 U.S.C. §112 1st ¶ as
lacking in written description.
The Examiner rejected claims 59, 62-70, and 75 under 35 U.S.C.
§ 103(a) as being obvious based on Ross and Miller.
The Examiner rejected claims 60 and 71 under 35 U.S.C. § 103(a) as
being obvious based on Ross, Miller, and Miller, Jr.
The Examiner rejected claims 61 and 72 under 35 U.S.C. § 103(a) as
being obvious based on Ross, Miller, and Bannister.
The Examiner rejected claims 73 and 74 under U.S.C. § 103(a) as
being obvious based on Ross, Miller, and Polivka.

ISSUES
This Appeal presents two issues. First, the Examiner found that
claims 59-75, amended by Appellants after filing of the original
Specification, constitute new matter. Specifically, the Examiner found that
claims 59-75 lack original written description for communicating, on

3 Filed Oct. 22, 1996, claims priority to U.S. application 08/285,830, filed
August 4, 1994.
4 Filed Sept. 25, 1996, claims priority based upon Provisional application No.
60/004,604, filed Sept. 29, 1995.
3
Appeal 2008-4274
Application 09/976,647

landing, the recited flight data, which “includes time, airspeed, altitude,
vertical acceleration, and heading data relating to a flight of the aircraft.”
(Ans. 3, 9-10). Appellants, acknowledging that their Specification does not
explicitly disclose the specific types of flight data recited in the claims,
maintain that the Specification inherently supports such data. (App. Br. 16-
17).
Appellants also contend, with respect to the obviousness rejection
based on Ross and Miller, that the collective teachings at most would
motivate one to transmit only data regarding cancellation of a flight plan,
and not the flight data recited in the independent claims. 5 (App. Br. 22).
Therefore, the issues on appeal are:
Did Appellants meet their burden of showing that their Specification
inherently supports, as required under 35 U.S.C. 112 1st ¶, initiating flight
data communications on landing, “wherein said flight data includes time,
airspeed, altitude, vertical acceleration, and heading data relating to a flight
of the aircraft” as recited in claim 59?
Did Appellants show that the Examiner erred in finding that Ross and
Miller collectively teach initiating communications of flight data on landing,
“wherein said flight data includes time, airspeed, altitude, vertical
acceleration, and heading data relating to a flight of the aircraft” as recited in
claim 59?

5 Appellants’ arguments, with respect to the written description rejection, are
directed only to the subgroup of independent claims 59, 65, 68, 69, and 75 in
the group of claims 59-75, and, with respect to the obviousness rejection
based on Ross and Miller, to claims 59, 62-70, and 75, as a group. (App. Br.
12-14, 18-21). Accordingly, claim 59 is selected as representative of each of
the groups involved in both statutory rejections. See 37 C.F.R.
§ 41.37(c)(1)(vii).
4
Appeal 2008-4274
Application 09/976,647
ISSUE 1- Written Description
FINDINGS OF FACT (FF)
1. Appellants do not dispute the Examiner’s finding (Ans. 3, 9-10)
that the original disclosure does not recite “time, airspeed, altitude, vertical
acceleration, and heading data relating to a flight of the aircraft.”
2. Appellants base their theory of inherent support for the above data
items (see FF 1) on two Exhibits filed with their first Appeal Brief (filed
Sept. 10, 2007), Exhibit 1(hereinafter the “FAA” regulations document) and
Exhibit 2 (hereinafter the “Arinc 717” document). (See App. Br. 1 -
referencing Exhibits 1 and 2 from Appendix B of the first Appeal Brief;
App. Br. 15, 30). Appellants first introduced what is now Exhibit 2, during
an office interview (see Appellants’ Amendment/Remarks 7, filed January
24, 2007). Exhibit 1 first appeared with Appellants’ first Appeal Brief (App.
Br. 29: Appendix B, titled “Federal Aviation Administration Section
121.344 (1994)).”
3. Exhibit 1 lists Federal Aviation Regulations that generally require,
for large airplanes or turbine-engine powered airplanes “certificated for
operations above 25,000 feet altitude,” except as otherwise provided, “one or
more approved flight recorders that record data from which the following
may be determined . . . (1) Time; (2) Altitude; (3) Airspeed, (4) Vertical
acceleration; (5) Heading; and (6) Time of each radio transmission either to
or from air traffic control” (App. Br.: Appendix B, Exhibit 1, FAA
§ 121.343 ¶(a)). FAA Regulation §121.343 ¶¶ (c) and (d) apply to later
certificated, equipped, or manufactured airplanes and require the same six
elements of data as ¶(a), but add more data requirements, respectively
5
Appeal 2008-4274
Application 09/976,647
totaling 11 and 17, and also generally require a retrieval of the data. (App.
Br. Appendix B, Exhibit 1).
4. Exhibit 2 displays a publication date of April 1, 1998, which
occurs after the filing date upon which Appellants rely for the instant
application (see n. 1, supra) (App. Br.: Appendix B).
5. Appellants base partial support for claim 59; i.e., initiating
communication of the disputed flight data when the second sensor senses the
landing of the aircraft, on their Specification at page 41, lines 7-9. (App. Br.
6-7).
6. The passage relied upon in FF 5 describes the data as “provided . . .
in a compressed and encrypted format, that is automatically downloaded . . .
when the aircraft lands.” (Spec. 41: 5-9, emphasis added). Appellants also
generally describe downloading “stored, compressed, [and] encrypted” flight
performance data. (Spec. 3: 25-26, emphasis added). Further, as Appellants
point out in their Appeal Brief, “[a] principal function of the GDL unit is to
store a compressed copy of the (ARINC 717) flight performance data
generated by the DFDAU and supplied to the aircraft’s flight data recorder.”
(App. Br. 15, quoting Spec. 5:1-4, emphasis added).
7. Appellants state that a “GDL unit on board the aircraft will be
automatically commanded what to do, once a ground link has been
established.” The passage implies that such an automatic command comes
from a systems analyst who “may initially request only a copy of the
exceedence list portion of the flight parameter summary report. Should the
report list one or more parameter exceedences, the system analyst may
access the entire flight performance file relating to such parameter
exceedences.” (Spec. 19: 19-26) (emphasis added).
6
Appeal 2008-4274
Application 09/976,647
8. “The compressed data file includes a flight summary report . . .that
includes a list of exceedences as defined by the parameter exceedence file.”
(Spec. 21: 20-23). An RF transceiver accesses the GDL unit’s compressed
data file and transmits an encrypted version of it responsive to an
interrogation beacon signal. (Spec. 22: 16-20).
9. Appellants conclude by stating that their disclosed system satisfies
the “FAA’s current airline Fight Operations Quality Assurance program,
which recommends that airlines routinely analyze aircraft data, . . . by means
of a frequency-agile wireless ground data link, . . . and supplies the same
aircraft data provided by the airborne data acquisition unit in a compressed
and encrypted format, that is automatically downloaded . . . .” (Spec. 40:25
to 41:7).
10. Appellants invention applies to “commuter, cargo or military
aircraft.” (Spec. 3: 15-18).

PRINCIPLES OF LAW
“In the context of the written description requirement, an adequate
prima facie case must therefore sufficiently explain to the applicant what, in
the examiner’s view, is missing form the written description.” Hyatt v.
Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). “To overcome a prima facie
case, an applicant must show that the invention as claimed is adequately
described to one skilled in the art.” In re Alton, 76 F.3d 1168, 1175 (Fed.
Cir. 1991). “A disclosure in a parent application that merely renders the
later-claimed invention obvious is not sufficient to meet the written
description requirement; the disclosure must describe the claimed invention
with all its limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158, 1160
(Fed. Cir. 1998) (citations omitted).
7
Appeal 2008-4274
Application 09/976,647

“In order for a disclosure to be inherent, however, the missing
descriptive matter must necessarily be present in the parent application’s
specification such that one skilled in the art would recognize such a
disclosure.” Tronzo, 156 F.3d at 1159 (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. (Citations omitted.)” Pingree v. Hull, 518 F.2d 624, 628 (CCPA
1965).
ANALYSIS
Appellants copied the disputed flight data phrase “verbatim” from
another US patent to provoke an interference. (App. Br. 2). The Examiner
found that such data was not originally supported because the Specification
fails to mention storage or transmission of any of the five specific elements
of flight data recited in claim 59. (Office Action 8-10, mailed April 10,
2007; Ans. 3, 9, 10; FF 1). Thus, under Hyatt and Alton, supra, the
Examiner’s articulation shifted the burden to Appellants to demonstrate that
the Specification clearly supports the disputed limitation.
Appellants, relying in part on Exhibits 1 and 2,6 not originally filed
with their Specification, contend that the disclosure inherently supports the
disputed data functions recited in claim 59. (See FF 2-3, 5). Accordingly,

6 Insufficient evidence exists that Exhibit 2, published after filing, was
available. (FF 4). Nonetheless, it has been considered, because the
Examiner did not object to the document. But see Quaker City Gear Works,
Inc. v. Skil Corp, 747 F.2d 1446, 1454-55, n. 10 (CAFC 1984) (quoting the
MPEP “essential material” requirement for an adequate disclosure under 35
USC § 112 without deciding its propriety, holding that incorporation by
reference of an unavailable document “has never been permissible under 35
USC § 112”).
8
Appeal 2008-4274
Application 09/976,647

Appellants also have the burden to prove such inherent support. See Hyatt,
Tronzo, and Alton, supra.7
In response to the Examiner’s finding of a lack of inherent
transmission of the five flight data elements, “Appellants admit that a flight
data recorder can store lots of data,” but maintain that the FAA regulations
mandate a minimum amount of data that must be stored, including the
disputed flight data. (Reply Br. 6). Thus at landing, according to the
Appellants, “that minimum accumulated and stored flight performance data
will be transmitted in accordance with the claimed invention.” (Id.).
Appellants’ argument fails because Appellants disclose transmitting
only a compressed version of “lots of data.” (Id., FF 5-9). Thus, even with,
inter alia, the claimed FAA required data and other data stored in the “black
box” (i.e., the disclosed DFDAU) (see App. Br. 15; Spec. 2: 3; 4: 3-5),
Appellants’ GDL first compresses the DFDAU data before the RF
transceiver transmits it as a “list of exceedences.” (FF 7, 8). In other words,
Appellants’ system only transmits, upon landing, compressed data – i.e.,
data that exceeds certain parameters. (FF 5-9).
Hence, a distinct, if not large, possibility exists that each of the five
claimed flight data elements would not exceed the required parameters
during any one flight. It follows that all five disputed claimed data elements
would not be transmitted inherently upon landing, as required to satisfy the
written description requirement under Appellants’ theory. Therefore,

7 See also Pingree v. Hull, 528 F.2d 624, 627 (1975) (describing a two-fold
burden in an interference proceeding when an applicant copies claims to
provoke the interference proceeding and relies on inherency to support the
copied claims) (citations omitted).
9
Appeal 2008-4274
Application 09/976,647
Appellants have not met their burden of showing that the disclosure
inherently supports the claims.
Accordingly, the Examiner’s written description rejection of
independent claims 59, 65, 68, 69 and 75, and dependent claims 60-64, 66-
67, and 70-74 incorporating the disputed claim limitation, is sustained.

ISSUE 2 (Obviousness)
FINDINGS OF FACT (FF)
11. Ross discloses “a method for canceling a flight plan and for reporting
the location of an aircraft needing assistance either in flight or on the
ground.” (Ross, col. 3, ll. 28-31). Upon landing, Ross’s airplane
automatically contacts the ATC (air traffic control) authority via a cellular
telephone system to cancel the flight plan or to report the location and
initiate search efforts, depending on whether the plane arrived at its intended
destination or landed elsewhere with difficulty. (Ross, col. 3, ll. 27-46).
The ATC authority continually communicates with the airplane, tracking its
location, airspeed, altitude, and direction. (Ross, col. 4, ll. 35-50; col. 6, ll.
13-36).
12. Switches on the aircraft sense normal and crash landings to initiate
automatic communications between the aircraft and ATC. Upon a crash
landing, the aircraft transmits location data and aircraft identification
number data. (Ross, col. 5, ll. 48-56; col. 6, ll. 23-36).
13. Ross’s automatic data communications improves upon prior art manual
flight cancellation methods and satisfies ATC regulations requiring prompt
landing notification. Prior art VHF radio communications limitations
sometimes prevented the pilot from timely notifying the airport of safe
arrival. (Ross, col. 1, l. 53 to col. 2, l. 11; col. 6, ll. 64-68).
10
Appeal 2008-4274
Application 09/976,647
14. Appellants disclose a prior art system establishing a direct line-of-sight
radio communications, proposed to improve airline safety by transferring
flight data to a ground unit from a landed aircraft. The proposal responded
to FAA recommendations that “airlines look at the information provided by
the digital flight data acquisition unit at regular intervals.” (Spec. 2: 7-14).
Appellants mention “obvious drawbacks” to the prior art line-of-sight
system, including cost and a requirement “that the aircraft be parked at the
gate.” (Spec. 3: 5-18).
15. Miller discloses regulatory standards requiring recordation of “five
flight parameters, including indicated air speed, altitude, vertical
acceleration, heading and time” (col. 1, ll. 35-38). The digital recording of
the “five primary flight parameters,” and more, up to sixteen, became
mandatory in the United States and other countries for passenger carrying
aircraft certified after September 1969. (Miller, col. 1, l. 61 to col. 2, l. 2).
16. Miller also notes that evolving standards and economical feasibility
renders
the collection and analysis of such data . . . extremely beneficial
in both short term and long term aircraft maintenance and
planning. For example, if the recorded data can be rapidly
analyzed and made available to flight line maintenance
personnel, the time required to identify and replace a faulty
component can be substantially reduced to thereby prevent or
minimize disruptions in aircraft departure and arrival schedules.

(Miller, col. 2, ll. 38-47). The data can also be useful in identifying flight
procedures to reduce fuel consumption, and otherwise monitor aircraft
performance, deterioration, and efficiency. (Miller, col. 2, ll. 26-60).
17. Miller’s system discloses storing and transmitting, during flight,
“excessively low or high vertical acceleration, excessive air speed prior to
11
Appeal 2008-4274
Application 09/976,647
landing, descent rates that exceed a preselected value, changes in aircraft
heading at rates that exceed desired limits, excessive altitude loss during
climb out procedures, and various other conditions that are useful in
determining both aircraft performance and the execution of various
maneuvers.” (Miller, col. 6, ll. 22-30, 51-55). Miller’s system also stores
for access, inter alia, the primary five data parameters (col. 14, ll. 54-65).
18. Ground personnel can also retrieve the data through a ground station
which can then also transmit it via conventional telephone lines. (Miller,
col. 13, ll. 44-62).
19. Miller generally discloses transmitting fight data to a ground station
without specifically limiting the transmission during flight or otherwise.
(Col. 12, ll. 55-60; col. 15, ll. 27-32).

PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007).
“One of the ways in which a patent’s subject matter can be proved obvious
is by noting that there existed at the time of invention a known problem for
which there was an obvious solution encompassed by the patent’s claims.”
KSR, 127 S.Ct. at 1742.
12
Appeal 2008-4274
Application 09/976,647
ANALYSIS
Appellants do not dispute (Reply Br. 7) that Ross discloses automatic
data transmission upon landing and during flight. (FF 11-13). Similarly,
Miller teaches transmitting, inter alia, the “primary” five disputed and
claimed data elements, albeit, during flight. (FF 15, 17, 19). Miller teaches
that ground personnel can retrieve the data through a ground station which
then transmits the data via conventional telephone lines (FF 18). Miller also
generally discloses transmitting data without restriction ; i.e., during flight or
on the ground. (FF 19).
Miller discloses long and short term advantages of rapidly analyzing
all such recorded flight data. (FF 16). Ross also discloses the advantages of
automatic and prompt transmission to satisfy regulatory requirements upon
landing. (FF 13). Similarly, Appellants disclose a known regulatory need to
transmit flight data upon landing, and disclose that prior art systems have
“obvious” problems due to cost and line of sight transmission of such data
upon landing. (FF 14).
Accordingly, Appellants’ argument that the combination teaches only
that “aircraft personnel would manually enter the plane to retrieve any
additional flight data via a disk” (App. Br. 22) ignores the principal
enunciated in Leapfrog, supra, that “[a]pplying modern electronics to older
mechanical devices has been common place in recent years.” Leapfrog, 485
F.3d at 1161. Hence, applying modern prior art automatic wireless
transmission techniques to transfer promptly the required primary five
regulatory data as Miller suggests, upon landing as Ross, Miller, and
admitted prior art systems suggest, would have been obvious. Such a
combination satisfies regulatory requirements and gains short and long term
cost, maintenance, and safety advantages, thereby remedying known prior
13
Appeal 2008-4274
Application 09/976,647
art problems, including manual or other line of sight retrieval problems. (FF
11-19). According to KSR, and Leapfrog, the combination amounts to the
predictable combination or substitution of a prior art techniques. Under
Kahn, Appellants did not demonstrate that the Examiner erred in the
obviousness determination.
Accordingly, the Examiner’s obviousness rejection of claim 59 and
claims 62-70 and 75, not separately argued, based on Ross and Miller, is
sustained. Similarly, the Examiner’s obviousness rejections of claims 60
and 71, 61 and 72, and 73 and 74, based respectively on the added teachings
of Miller, Jr., Bannister, and Polivka, are sustained. Appellants do not
present separate patentablity arguments for those rejections. See Kahn and
37 C.F.R. § 41.37(c)(1)(vii).
CONCLUSION
Appellants did not meet their burden of showing that their
Specification inherently supports, as required under 35 U.S.C. 112 1st ¶,
initiating flight data communications on landing, “wherein said flight data
includes time, airspeed, altitude, vertical acceleration, and heading data
relating to a flight of the aircraft” as recited in claim 59. Appellants also did
not show that the Examiner erred in finding that Ross and Miller collectively
teach initiating communications of said flight data on landing, as recited in
claim 59. We sustain all rejections on appeal.

DECISION
We affirm the Examiner’s decision rejecting claims 61-75.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

14
Appeal 2008-4274
Application 09/976,647
AFFIRMED

Eld

ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST
255 S ORANGE AVENUE
SUITE 1401
ORLANDO, FL 32801
15