Ex Parte GRIFFIN et alDownload PDFPatent Trial and Appeal BoardJun 8, 201814297370 (P.T.A.B. Jun. 8, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/297,370 06/05/2014 64728 7590 06/12/2018 SHUMAKER, LOOP & KENDRICK, LLP NORTHROP GRUMMAN CORPORATION 42690 WOODWARD A VENUE SUITE 300 BLOOMFIELD HILLS, MI 48304 FIRST NAMED INVENTOR KRISTEN S. GRIFFIN 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. NGC-00147(006504-0030) 3364 EXAMINER GREEN, RICHARD R ART UNIT PAPER NUMBER 3647 NOTIFICATION DATE DELIVERY MODE 06/12/2018 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): CCARDINALE@SLK-LA W.COM tlopez@slk-law.com c golupski@ slk-law. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KRISTEN S. GRIFFIN, JON CARPENTER, GREGORY J. LEE, AMY LO, RONALD POLIDAN, DANIEL SOKOL, BARNABY WAINF AN, WARREN JAMES, and DENNIS POULOS. Appeal2017-008133 Application 14/297,370 Technology Center 3600 Before DANIEL S. SONG, MICHAEL L. HOELTER, and BENJAMIN D. M. WOOD, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's final rejection of claims 1, 5, 6, 8-15, 19, and 20. App. Br. 3. Claims 2--4, 7, and 16-18 have been cancelled. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal2017-008133 Application 14/297 ,3 7 0 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates generally to a semi-buoyant aerial vehicle and, more particularly, to a semi-buoyant propelled or gliding aerial vehicle for exploring solar system bodies with an atmosphere." Spec. i-f 2. Apparatus claims 1 and 15 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below. 1. An aerial vehicle comprising a collapsible and rigid vehicle body defining an enclosure capable of being filled with a lighter than air gas so as to make the vehicle semi-buoyant or 100% buoyant at a predetermined altitude in an atmosphere above a solar system body, said vehicle body having a shape suitable to provide aerodynamic lift, said vehicle further comprising at least one propulsion device directly coupled to and extending from the vehicle body, said at least one propulsion device providing power to propel and provide thrust induced aerodynamic lift of the vehicle above the semi-buoyant or 100% buoyant altitude to a higher altitude where the vehicle can maintain that altitude through the aerodynamic lift and vehicle buoyancy, wherein the vehicle is configured to be deployed and inflated from a collapsed and stowed configuration to a deployed/inflated configuration in an orbit above the atmosphere of the solar system body, and wherein the vehicle is configured to enter the atmosphere in the deployed/inflated configuration and descend to the semi-buoyant or 100% buoyant altitude without propulsion, and wherein the vehicle is configured to have a low aerial density that is effective to provide a low ballistic coefficient lifting entry of the vehicle into the atmosphere of the solar system body and a controlled transition between the entry into the atmosphere and flight in the atmosphere, and wherein the vehicle is configured to be deployed and inflated from the collapsed and stowed configuration to the deployed/inflated configuration while being coupled to a spacecraft, said aerial vehicle being in communication with the spacecraft while the aerial vehicle is separated from the spacecraft. 2 Appeal2017-008133 Application 14/297 ,3 7 0 REFERENCES RELIED ON BY THE EXAMINER Miller, Jr. US 4, 149 ,688 Apr. 17, 1979 Putman et al. US 6,179,248 Bl Jan. 30, 2001 Shaw US 8,104,718 B2 Jan. 31, 2012 THE REJECTIONS ON APPEAL Claims 1, 5, 6, 8-15, 19, and 20 are rejected under 35 U.S.C. § 112(b ), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the joint inventors regard as the invention. Claims 1and8-14 are rejected under 35 U.S.C. § 103 as unpatentable over Putman and Shaw. Claims 5, 6, 15, 19, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Putman, Shaw, and Miller, Jr. Claims 15, 19, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Shaw and Miller, Jr. ANALYSIS The rejection of claims 1, 5, 6, 8-15, 19, and 20 as being indefinite The Examiner addresses both independent claims 1 and 15, and particularly the limitation common to both that "the vehicle is configured to have a low aerial density that is effective to provide a low ballistic coefficient lifting entry." The Examiner explains, "'low ballistic coefficient' is unclear because neither the claims nor the specification provide context for what would constitute a 'low' ballistic coefficient compared with a 'high' ballistic coefficient." Final Act. 3. The Examiner states that such a "distinction is difficult to ascertain without context in the disclosure" and 3 Appeal2017-008133 Application 14/297 ,3 7 0 that Appellants have "not given any examples of low or high ballistic coefficients to show how one skilled in the art would understand the scope of the term." Final Act. 4; Ans. 11. The Examiner also applies the same reasoning and rejection regarding the limitation "low aerial density." Final Act. 4. Appellants reply that, in this case, "the claimed invention is directed to an aerial vehicle for exploring a solar system body;" that "those persons skilled in the art are rocket scientists;" and, it "is well understood [that] being a 'rocket scientist' is the highest of all skills." App. Br. 7. Based on this, Appellants contend that one skilled in the art "would easily understand the difference between a low ballistic coefficient lifting entry and a high ballistic coefficient lifting entry." App. Br. 7; see also Reply Br. 2. Appellants also state, "MPEP § 2173.0S(c) allows use of the term 'effective' in claim language jf one skilled in the art could determine the relevant values associated therewith." 1 Reply Br. 2 (emphasis added). Appellants have clearly identified the problem addressed by the Examiner, i.e., Appellants have provided no context or framework or scale by which one skilled in the art (i.e., a "rocket scientist") would be able to ascertain whether a certain ballistic coefficient (or aerial density) was "low" or not. In short, Appellants proffer no reference point for comparison. For example, a value that might be deemed to be "low" is actually higher than 1 Of particular note is Appellants' failure to reference any passage in Appellants' Specification that might provide guidance as to any constraints intended for the claim term "low." This need for a boundary or a perspective is consistent with one of its dictionary definitions, i.e., "situated or passing little above a reference line, point, or plane." WEBSTER'S NEW COLLEGIATE DICTIONARY 676 (1979). See also https://www.merriam- webster.com/dictionary/low (last visited June 5, 2018). 4 Appeal2017-008133 Application 14/297 ,3 7 0 the next lowest value. In other words, Appellants do not explain or provide any example as to how low the claim term "low" is to be construed. One might then ask, how low is "low?" because no gauge or measure is provided by Appellants to assist in understanding what the claim means. Appellants also do not proffer any persuasive evidence in support of its assertion that such a term would be understood by one of ordinary skill in the art. Accordingly, although the extremes of this spectrum may be clear to one skilled in the art, we agree with the Examiner that, "that does not mean that the scope of the claim is definite." Ans. 11. Thus, based on the record presented, we affirm the Examiner's rejection of independent claims 1 and 15, and their dependent claims 5, 6, 8-14, 19, and 20, as being indefinite. The obviousness rejections of claims 1, 5, 6, 8-15, 19, and 20 under 35 USC§ 103 Before reviewing a rejection under 35 U.S.C. § 103 can be undertaken (as here), "it is essential to know what the claims do in fact cover." In re Steele, 305 F.2d 859, 862 (CCPA 1962). In Steele, the predecessor to our reviewing court stated that their "analysis of the claims indicates that considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims were made by the examiner and the board" and that "we do not think a rejection under 35 U.S.C. § 103 should be based on such speculations and assumptions." Id. Consequently, until it is made clear what the claims do, in fact, cover, we decline to address the Examiner's rejections under 35 U.S.C. § 103, or Appellants' responses in relation thereto. For the foregoing reasons, we reverse the Examiner's rejections under 35 U.S.C. § 103 (whether such rejection pertains to (a) claims 1 and 8-14 in 5 Appeal2017-008133 Application 14/297 ,3 7 0 view of Putman and Shaw; (b) claims 5, 6, 15, 19, and 20 in view of Putman, Shaw, and Miller, Jr.; or, ( c) claims 15, 19, and 20 in view of Shaw and Miller, Jr.). It 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 the adequacy of the prior art evidence applied in support of these art rejections under § 103. Once definite claims are presented, the Examiner is free to apply the same, different, or additional prior art as the Examiner so chooses. DECISION The Examiner's rejection of claims 1, 5, 6, 8-15, 19, and 20 as being indefinite is affirmed. The Examiner's rejections of claims 1, 5, 6, 8-15, 19, and 20 as being obvious are reversed. No time period for taking any subsequent action in connection with this appeal may be extended as set forth in 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation