Jingo Tateiwa

Patent Trials and Appeals Board

May 18, 2020

2019002877 (P.T.A.B. May. 18, 2020)

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.
14/620,703 02/12/2015 Jingo TATEIWA OBA-54045 8937
116 7590 05/18/2020
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
EXAMINER
WANG, MICHAEL H
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JINGO TATEIWA
Appeal 2019-002877
Application 14/620,703
Technology Center 3600
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
BRETT C. MARTIN, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Mitsubishi
Aircraft Corporation. Appeal Br. 3.
Appeal 2019-002877
Application 14/620,703
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CLAIMED SUBJECT MATTER
The claims are directed to an aircraft. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An aircraft comprising:
an accessory member that constitutes an engine accessory,
the accessory member being arranged between a pylon that is
used for supporting an engine on an airframe and the engine, in
an attached state to an attachment base member that is at least
one of the pylon and the engine,
wherein the accessory member includes a surrounding
portion that surrounds at least an end portion of a tubular body
connected to the accessory member, and
a projecting portion that projects from the end portion of
the tubular body,
the entire accessory member including the surrounding
portion and the projecting portion is divided into at least two
separate parts so as to be separable to a left side and a right side
of the pylon, and
the accessory member is attachable to and detachable from
the attachment base member by accessing an outer periphery of
the tubular body from the left side and the right side of the pylon
without removing another member.
Appeal Br. 13 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Greenwald US 4,441,723 Apr. 10, 1984
Rung et al. US 4,639,020 Jan. 27, 1987
Kraft et al. US 7,607,308 B2 Oct. 27, 2009
Stretton US 7,861,513 B2 Jan. 4, 2011
Suciu et al. US 2013/0239584 A1 Sept. 19, 2013
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REJECTIONS
1. The Examiner rejects claims 3–5 and 8–11 under 35 U.S.C.
§ 112(a) for failing to comply with the written description requirement.
Non-Final Act. 2.
The Examiner also rejects various claims under 35 U.S.C. § 103 as
follows:
2. Claims 1, 3, 5–8, and 10–16 as unpatentable over Stretton in
view of Rung and Greenwald. Non-Final Act. 3.
3. Claims 2 and 4 as unpatentable over Stretton in view of Rung,
Greenwald, and Kraft. Non-Final Act. 9.
4. Claim 9 as unpatentable over Stretton in view of Rung,
Greenwald, and Suciu. Non-Final Act. 10.
OPINION
Rejection 1: Written Description
The Examiner rejects claims 3–5 and 8–11 for failing to comply with
the written description requirement. Non-Final Act. 2. The Appellant does
not appeal this rejection, or submit any arguments directed to this rejection.
Thus, the written description rejection is summarily affirmed.

Rejection 2: Claims 1, 3, 5–8, and 10–16
The Examiner rejects claims 1, 3, 5–8, and 10–16 as unpatentable
over Stretton in view of Rung and Greenwald. Non-Final Act. 3. As to
independent claim 1, the Examiner finds that Stretton discloses the invention
substantially as claimed, including “an engine accessory (valve 33)” that has
“[a] surrounding portion that surrounds at least an end portion of a tubular
body connected to the accessory member (valve 33 surrounds ducting 32),”
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and “[a] projecting portion that projects from the end portion of the tubular
body (see portion of heat exchanger 31 to the right of valve 33 in Figure 1).”
Non-Final Act. 3–4. The Examiner concedes that Stretton does not disclose
“the surrounding portion and the projecting portion being divided into at
least two separate parts so as to be separable to a left side and a right side of
the pylon,” so that it can be attached and detached in the manner recited.
Non-Final Act. 4.
The Examiner finds that Rung discloses a coupling with a surrounding
portion that is “divided into at least two separate parts (coupling segments
10 and 12) so as to be separable to a left side and a right side of the pylon,”
which would allow for the recited attachment and detachment. Non-Final
Act. 4. The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to have modified Stretton based on Rung “in order
to make the coupling between the pylon and the engine easier to remove.”
Non-Final Act. 4.
The Appellant disagrees and initially argues that the clamping
mechanism of Rung “does not itself suggest that one of skill in the art would
[m]odify Stretton’s valve 33 in view of such a clamping mechanism to arrive
at claim 1,” and “nowhere in Rung does it disclose or suggest that a separate
two-piece clamping mechanism is easier for installation/removal over other
configurations.” Appeal Br. 9. In that regard, the Appellant points out that
Rung discloses an embodiment having a hinged construction “provides a
technical advantage over the separate two-piece configuration with respect
to installation/removal,” and argues that the rejection “fails to provide
factual evidence derived from the prior art as to why one of skill in the art
would have selected Rung’s non-hinged clamping mechanism.” Appeal Br.
9, citing Rung, col. 13, ll. 58–64; Reply Br. 2.
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These arguments are unpersuasive. Explicit teaching or suggestion in
the references for the combination is not a requirement for proper
obviousness analysis. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418–19
(2007). In addition, as the Examiner notes, “Rung discloses both hinged and
non-hinged embodiments, and appellant is arguing an embodiment that was
not applied in the office action.” Ans. 3. We agree with the Examiner that
“[t]here are advantages and trade-offs to each configuration, and choosing
the configuration based on these advantages and trade-offs would be obvious
to a person having ordinary skill in the art.” Ans. 3. In that regard, “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421.
Nevertheless, we agree with the Appellant that the applied rejection is
deficient. As noted above, the rejection finds that control valve 33 of
Stretton corresponds to the claimed “accessory member,” and claim 1 recites
that “the entire accessory member . . . is divided into at least two separate
parts.” As such, the Appellant is persuasive in arguing that “the structural
make-up of Rung’s clamping mechanism would have no bearing on that of
Stretton’s controllable valve 33” because the controllable valve is “not a
simple cylindrical duct whose only function is associated with directing air
therethrough; rather, reference numeral 33 denotes a controllable valve
which regulates the flow of air through the duct 32.” Reply Br. 4; Stretton,
col. 2, l. 67–col. 3, l. 1; see also Appeal Br. 10.
The Appellant further argues that controllable valves typically include
“a member which varies the size of a flow passage within a conduit,” and
that dividing controllable valve 33 into two separate parts would “degrade
the integrity of the inner circumferential surface of the controllable valve 33
by creating two breaks along the circumferential walls,” such that a person
Appeal 2019-002877
Application 14/620,703
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of ordinary skill would not have been motivated to make such a
modification. Appeal Br. 10–11; see also Reply Br. 3. The Examiner
responds that “the inner circumferential surface of the valve 33 does remain
constant due to the securing force of bolts 18 and carry nuts 20, which are
employed for the tightening down of the coupling,” and that Rung discloses
the use of internal gaskets for sealing. Ans. 4, citing Rung, col. 5, ll. 26–27.
However, the Examiner does not provide sufficient explanation as to how
the teachings of Rung are applied in the rejection to the controllable valve 33
of Stretton. Thus, we are persuaded by the Appellant’s argument that the
Examiner “provides no analysis as to how Stretton’s controllable valve 33
would remain functional after performing the proposed modification,” and
that the proposed modification would appear to require “a substantial
reconstruction and redesign.” Reply Br. 4.
To any extent that the rejection may be based on actual substitution of
the controllable valve 33 of Stretton with Rung’s clamp, we agree with the
Appellant that this would be improper as it would eliminate the function that
the controllable valve performs, thereby changing the principle of operation
of Stretton. Reply Br. 3–4. Finally, as the Appellant notes, the Examiner’s
application of Greenwald “fails to cure the above-noted deficiencies with
respect to Stretton and Rung.” Appeal Br. 11.
Therefore, in view of the above, we reverse the Examiner’s
obviousness rejection of claim 1, and claims 3, 5–8, and 10–13 that
ultimately depend therefrom. As to claims 14–16, which recite the
accessory member of claim 1 as a limitation, the Appellant relies on the
same arguments directed to claim 1 in support of patentability of these
claims. Appeal Br. 11. Thus, also we reverse the rejection of these claims
as well.
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Application 14/620,703
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Rejections 3 and 4: Claims 2, 4, and 9
The Appellant relies on the same arguments directed to claim 1 in
support of patentability of these claims that depend from claim 1. Appeal
Br. 11–12. In view of the above and the dependency of these claims, we
reverse these rejections as well.
CONCLUSION
The Examiner’s rejections are affirmed-in-part. More specifically,
1. The rejection of claims 3–5 and 8–11 under 35 U.S.C. § 112(a)
is affirmed.
2. The rejection of claims 1, 3, 5–8, and 10–16 under 35 U.S.C.
§ 103 as unpatentable over Stretton, Rung and Greenwald is reversed.
3. The rejection of claims 2 and 4 under 35 U.S.C. § 103 as
unpatentable over Stretton, Rung, Greenwald, and Kraft is reversed.
4. The rejection of Claim 9 under 35 U.S.C. § 103 as unpatentable
over Stretton, Rung, Greenwald, and Suciu is reversed.

Appeal 2019-002877
Application 14/620,703
8
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
3–5, 8–11 112(a) Written
Description
3–5, 8–11
1, 3, 5–8,
10–16
103 Stretton, Rung,
Greenwald
1, 3, 5–8,
10–16
2, 4 103 Stretton, Rung
Greenwald, Kraft
2, 4
9 103 Stretton, Rung
Greenwald, Suciu
9
Overall
Outcome
3–5, 8–11 1, 2, 6, 7,
12–16
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART