Ex Parte Chang et al

Patent Trial and Appeal Board

Oct 24, 2016

13156317 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/156,317 06/08/2011
31824 7590 10/26/2016
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
FIRST NAMED INVENTOR
Ming CHANG
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.
086712-0552 (SW-00966) 4820
EXAMINER
WANG, MICHAEL H
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MING CHANG, SERGEY MACHERET, and
JOSEPH V ADY AK
Appeal2014-005197
Application 13/156,317
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and JILL D. HILL,
Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ming Chang et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-24. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing in accordance with 37 C.F.R. § 41.47 was
held on October 13, 2016.
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
Appeal2014-005197
Application 13/156,317
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A system for enhancing operations of an aircraft, comprising:
a plasma generator on an exterior of the aircraft;
a sensor configured to sense and transmit information that
indicates that the aircraft is approaching a transonic flight
condition;
a controller configured to activate the plasma generator in
response to information transmitted from the sensor regarding
the transonic flight condition, so as to mitigate a transonic shock
wave.
REJECTIONS 1
I. Claims 1-20, 23, and 24 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Drouin (US 2010/0004799 Al, pub. Jan. 7,
2010).
II. Claims 21and22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Drouin.
DISCUSSION
Rejections I and II
With respect to independent claim 1, we agree with the Examiner, and
Appellants do not appear to dispute, that Drouin discloses a system for
enhancing operations of an aircraft, the system comprising a plasma
generator, at least one sensor configured to sense and transmit information to
a controller, and a controller configured to activate the plasma generator in
1 The Examiner withdrew a rejection of claims 3, 6-8, and 15-20 under
35 U.S.C. § 112, second paragraph. Adv. Act. 2; see Final Act. 2.
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response to the information transmitted from the sensor to mitigate a shock
wave. Ans. 2-3; Appeal Br. 10-12; see Drouin, paras. 6, 15-19, 29.
Similarly, with respect to independent claim 12, we agree with the Examiner
that Drouin also discloses a method for enhancing operations of an aircraft
comprising the steps of sensing, with a sensor, information; providing the
information to a controller to determine how to activate a plasma generator
to mitigate a shock wave; and activating the plasma generator upon
determining the type of actuation that will mitigate the shock wave. Ans. 8-
9; Appeal Br. 13-14; Drouin, paras. 6, 15-19, 29--40; Figs. 5A-5E, 6A---6C.
The central issue in this appeal is whether Drouin's sensors are
"configured to sense and transmit information that indicates that the aircraft
is approaching a transonic flight condition" and, similarly, whether Drouin
discloses sensing, with those sensors, "information that indicates that the
aircraft is approaching a transonic flight condition," as required in claims 1
and 12, respectively. Appeal Br. 10-14; see id. at 16, 18 (emphasis added)
(Claims App.). For the reasons set forth below in the new ground of
rejection under 35 U.S.C. § 112, second paragraph, the meaning of this
language is not clear, rendering claims 1 and 12, as well as claims 2-11 and
13-24 depending therefrom, indefinite. Accordingly, we cannot sustain the
rejections of these claims under 35 U.S.C. §§ 102(b) and 103(a), because to
do so would require speculation as to the scope of the claims. See In re
Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred
in affirming an anticipation rejection of indefinite claims); In re Steele, 305
F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection
was based on speculative assumptions as to the meaning of the claims). It
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should be understood, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
NEW GROUNDS OF REJECTION
Findings of Fact Pertinent to the New Grounds of Rejection
Independent claim 1 recites "a sensor configured to sense and transmit
information that indicates that the aircraft is approaching a transonic flight
condition" and "a controller configured to activate the plasma generator in
response to information transmitted from the sensor regarding the transonic
flight condition, so as to mitigate a transonic shock wave." Appeal Br. 16
(Claims App.). Independent claim 12 recites "sensing, with a sensor,
information that indicates that the aircraft is approaching a transonic flight
condition"; "providing the information ... from the sensor to a controller
that is configured to use the information ... to determine whether activation
of the plasma generator will mitigate a transonic shock wave"; and
"activating a plasma generator upon determining that activation of the
plasma generator will mitigate a transonic shock wave." Id. at 18 (Claims
App.). Neither independent claim 1 nor independent claim 12, nor any of
dependent claims 2-11 and 13-24, expressly discloses a structure for, or step
of, determining from the information sensed and transmitted by the sensor,
that the aircraft is approaching a transonic flight condition. Id. at 16-21
(Claims App.).
In describing the sensor, Appellants' Specification states that "[t]he
sensor may be configured to sense and transmit a variety of information
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regarding a transonic flight condition such as speed to the controller" and
that "[t]he controller may be configured to activate the plasma generator in
response to information from the sensor, so as to mitigate a transonic shock
wave through localized heating." Spec., para. 5. The Specification also
discloses that "[ t ]he information sensed by the sensor ... may include any
number of variables, such as speed, altitude, temperature, angle of attack,
attitude, or any other indicator that the aircraft ... is approaching transonic
or supersonic flight." Id., para. 18 (emphasis added); see also id., para. 24
(describing a method in which, "[a ]t step S2, the sensor ... may sense the
information regarding the transonic flight condition, such as speed, altitude,
temperature, angle of attack, attitude, etc." and, "[a ]t step S3, the sensor ...
may transmit the information ... to the controller"). The Specification
describes that "[t]he sensor ... may be configured to sense and transmit
information regarding at least one transonic flight condition, such as speed,
altitude, temperature, angle of attack, attitude, etc." Id., para. 20. The
Specification sets forth that "[i]n some aspects, the sensor ... may be
configured to sense multiple transonic flight conditions, either
simultaneously, or in tum," while "[i]n other aspects, the sensor ... may
sense only a single unique transonic flight condition." Id. The Specification
adds that, "[i]n some aspects, one or more additional sensors may be used in
conjunction with the sensor." Id. Thus, according to the Specification, "any
number of sensors may be used to sense and transmit any of a number of
flight variables useful in enhancing operations of the aircraft." Id.
Appellants' Specification provides no limitations as to placement of
the sensor. Id. In particular, the Specification discloses that "[t]he sensor
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... may be inside the aircraft ... , outside or on the exterior ... of the
aircraft ... , or elsewhere." Id.
Appellants' Specification discloses that "[u]pon determination that a
transonic flight condition is present, the controller ... may activate the
plasma generator ... in response to the information transmitted from the
sensor ... regarding the transonic flight condition." Spec., para. 18
(emphasis added). Notably, however, the Specification does not disclose
any algorithm, methodology, or other details as to how the "determination
that a transonic flight condition is present" is made, nor does the
Specification provide any indication that a methodology for making such a
determination was known in the art at the time the present application was
filed.
Written Description
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1-24 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
In order to satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph, "the description must 'clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented what is
claimed."' Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en bane) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563 (Fed.Cir.1991 )). "[T]he test for sufficiency is whether the disclosure
of the application relied upon reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date." Id. This test "requires an objective inquiry into the four comers of
the specification from the perspective of a person of ordinary skill in the
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art." Id. "Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed." Id. This inquiry is a question of
fact. Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570,
1575 (Fed. Cir. 1985)).
As noted in our findings above, Appellants' Specification alludes to a
non-exhaustive list of variables, such as speed, altitude, temperature, angle
of attack, attitude, or other indicators that the aircraft is approaching a
transonic flight condition. However, the Specification does not disclose
which combination of such variables are required to be sensed in order to
indicate that the aircraft is approaching a transonic flight condition. In fact,
to the contrary, the Specification suggests that the sensor may be configured
to sense and transmit only a single unique variable, or, in some aspects, any
number of variables. Further, the Specification does not disclose whether
there are particular threshold values for any such sensed variables, which,
when reached or exceeded, would indicate that the aircraft is approaching a
transonic flight condition, and, if so, what those threshold values are. Along
those same lines, the Specification is silent as to particular combinations of
variables for which the sensed values of multiple variables must be
considered in conjunction with one another to determine whether the aircraft
is approaching a transonic flight condition, or the conditions, if any, under
which the sensed values of such multiple variables must be considered
together. Likewise, the Specification does not specify for which particular
variable(s), or under which particular conditions, the value of one variable
alone is sufficient to make such a determination. Moreover, the
Specification fails to specify at what locations of an aircraft (or elsewhere)
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any particular combination of such variables must be sensed. As also noted
above, Appellants' Specification does not provide any algorithm or
methodology for determining from the information sensed by the one or
more sensors that the aircraft is approaching a transonic flight condition, nor
does the Specification give any indication that an algorithm or methodology
was known in the art at the time the present application was filed.
In essence, Appellants attempt to claim any and all means or steps of
sensing/ detecting that an aircraft is approaching a transonic flight condition
without disclosing sufficient means or steps to accomplish that function, thus
running afoul of the written description requirement. See Ariad, 598 F .3d at
1352 ("The written description requirement also ensures that when a patent
claims a genus by its function or result, the specification recites sufficient
materials to accomplish that function."). Appellants' claims "merely recite a
description of the problem to be solved while claiming all solutions to it,"
leaving the industry to "complete an unfinished invention." See id. at 1353.
Thus, Appellants' disclosure fails to convey that, at the time the present
application was filed, Appellants had possession of a system comprising "a
sensor configured to sense and transmit information that indicates that the
aircraft is approaching a transonic flight condition" or a method comprising
"sensing, with a sensor, information that indicates that the aircraft is
approaching a transonic flight condition." Accordingly, claims 1-24 fail to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
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Enablement
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
1-24 under 35 U.S.C. § 112, first paragraph, as failing to satisfy the
enablement requirement.
Insofar as the enablement requirement is concerned, the dispositive
issue is whether an applicant's disclosure, considering the level of ordinary
skill in the art as of the date of the application, would have enabled a person
of such skill to make and use the applicant's invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982). In
calling into question the enablement of an applicant's disclosure, the USPTO
has the initial burden of advancing acceptable reasoning inconsistent with
enablement so as to shift the burden to the applicant to show that one of
ordinary skill in the art could have practiced the claimed invention without
undue experimentation. Id.
Factors to be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
As indicated in our findings above, Appellants' Specification provides
no discernible guidance as to which variable(s) or combinations of variables
must be sensed, or the locations (on the aircraft or elsewhere) at which those
variables must be sensed, in order to indicate that the aircraft is approaching
a transonic flight condition. Further, despite alluding broadly to
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"determination that a transonic flight condition is present" (Spec., para. 18),
the Specification provides no algorithm, methodology, or other details as to
how such a determination would be made from the information sensed and
transmitted by the nonspecific sensors, nor do we discern in this record any
evidence showing that such an algorithm or methodology was known to
those of ordinary skill in the art at the time the present application was filed.
The Specification enumerates several variables that may be sensed by
the sensor, but provides no working examples of a particular variable or
combination of variables sensed by the sensor, or the requisite threshold
values thereof, if any, that indicate the aircraft is approaching a transonic
flight condition. Further, the Specification is silent as to how, if at all, the
sensed value of one variable might impact the significance of another sensed
variable in indicating whether the aircraft is approaching a transonic flight
condition.
Additionally, the claims are broad in scope, in that they do not recite a
structure for, or step of, determining that the aircraft is approaching a
transonic flight condition, much less set forth any operative connection
between the sensed information and a structure for, or step of, determining
that the aircraft is approaching a transonic flight condition. As such, the
claims seek to cover any and all means of sensing/ detecting that an aircraft is
approaching a transonic flight condition without disclosing sufficient means
or steps to accomplish that function.
For the above reasons, the subject matter of claims 1-24 is not
disclosed in the present application so as to enable one skilled in the art to
make and/or use the claimed invention. Accordingly, claims 1-24 fail to
satisfy the enablement requirement of 35 U.S.C. § 112, first paragraph.
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Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
1-24 under 35 U.S.C. § 112, second paragraph, as being indefinite.
For the above reasons, persons having ordinary skill in the art would
not be able to ascertain whether a particular sensor or combination of
sensors is "configured to sense and transmit information that indicates that
the aircraft is approaching a transonic flight condition," as called for in
independent claim 1 and its dependent claims 2-11 and 23, or whether
sensing and transmitting information from a particular sensor or combination
of sensors is performed in such a manner that the sensed information
"indicates that the aircraft is approaching a transonic flight condition," as
called for in independent claim 12 and its dependent claims 13-22 and 24.
Without sufficient understanding of the methodology of determining that an
aircraft is approaching a transonic flight condition, one of ordinary skill in
the art would not be able to ascertain the scope of "information that indicates
that the aircraft is approaching a transonic flight condition," as called for in
independent claims 1 and 12. Merely by way of example, it is not clear
whether "information that indicates that the aircraft is approaching a
transonic flight condition" requires information denoting that a variable has
reached or exceeded a certain threshold value indicating the aircraft is
approaching a transonic flight condition. In the case of a speed sensor, for
example, it is not clear whether the presence and operation of a speed sensor
is sufficient, without more, to satisfy the "information that indicates that the
aircraft is approaching a transonic flight condition" limitations of
independent claims 1 and 12, or whether sensing a speed having a value
meeting or exceeding a predetermined threshold level is required.
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Moreover, as noted above, none of the claims contains an explicit
recitation of a structure for, or step of, determining from the information
sensed and transmitted by the sensor that the aircraft is approaching a
transonic flight condition. Without such a structure or step, it is not clear
how information sensed by a sensor indicates that the aircraft is approaching
a transonic flight condition, as recited in claims 1 and 12. In contesting the
anticipation rejection, Appellants argue that Drouin's sensors "do not
necessarily determine whether the aircraft is approaching a transonic
condition" (Appeal Br. 13), which suggests that Appellants might be
advocating that we construe the "information that indicates that the aircraft
is approaching a transonic flight condition" limitation as requiring the
function of determining whether the aircraft is approaching a transonic flight
condition to be a function performed by the sensor. To the extent that this
may be the case, one of ordinary skill in the art would not be able to
ascertain, for the reasons set forth above, what is required for the sensors to
perform this function, the details of which are not disclosed in the present
application.
For the above reasons, claims 1-24 are indefinite.
DECISION
The Examiner's decision rejecting claims 1-20, 23, and 24 under
35 U.S.C. § 102(b) and rejecting claims 21and22 under 35 U.S.C. § 103(a)
is REVERSED.
Pursuant to our authority under 37 C.F.R. § 41.50(b ), we reject claims
1-24 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement; we reject claims 1-24 under 35 U.S.C.
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§ 112, first paragraph, as failing to comply with the enablement requirement;
and we reject claims 1-24 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 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.
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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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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