Ex Parte Malek et al

Patent Trial and Appeal Board

Jun 29, 2018

13878855 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/878,855 06/13/2013
144190 7590
Karceski IP Law, PLLC
1717 K. Street, NW
Suite 900
Washington, DC 20006
07/03/2018
FIRST NAMED INVENTOR
Bruce Malek
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.
BOMBARDIER 12 US 5617
EXAMINER
BADAWI, MEDHAT
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
docket@karceskiiplaw.com
edinorma@karceskiiplaw.com
jkarceski@karceskiiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE MALEK, LOUIS JOSEPH GAGNON-
SEGUIN, BRUNO MIRON, PHILIPPE ANDRE EUGENE
ERHEL, and TIM MICHAEL FAGAN
Appeal2017-010084
Application 13/878,855
Technology Center 3600
Before KEVINF. TURNER, BRETT C. MARTIN, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010084
Application 13/878,855
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 21-33, 41, and 42. Claims 34--40 were allowed.
Non-Final Act. 14. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellants' claims are directed generally to "configurations for the
interior architecture of an aircraft, specifically, the layout of various
elements within an aircraft." Spec. i-f 2. Claim 21, reproduced below, is
illustrative of the claimed subject matter:
21. An interior configuration for an aircraft, comprising:
a first longitudinal passageway;
a second longitudinal passageway, the first longitudinal
passageway and the second longitudinal passageway being
laterally offset in relation to each other; and
a transitional area comprising:
a transitional passageway connecting the first
longitudinal passageway to the second longitudinal
passageway, and
a first row of seats comprising a first seat and a
second seat separated from a third seat by the first
longitudinal passageway;
wherein the second seat in the first row of seats is
configured to move laterally in relation to the first
longitudinal passageway between a first seating
configuration suitable for receiving an occupant and a
second seating configuration suitable for receiving an
occupant, and
wherein, in the second seating configuration, the
second seat is positioned farther away from the first seat
and closer towards the third seat than in the first seating
configuration.
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Appeal2017-010084
Application 13/878,855
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Milnar
Quan
Thompson
US 6,648,393 Bl Nov. 18, 2003
US 2005/0087650 Al Apr. 28, 2005
US 2007/0295863 Al Dec. 27, 2007
REJECTIONS
The Examiner made the following rejections:
Claims 21-33, 41, and 42 stand rejected under 35 U.S.C §112, second
paragraph, as being indefinite. Non-Final Act. 4.
Claims 21-28, 41, and 42 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thompson and Milnar. Non-Final Act. 5-11.
Claims 29-33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thompson, Milnar, and Quan. Non-Final Act. 11-14.
ANALYSIS
Indefiniteness
The Examiner's indefiniteness rejection is based upon the assertion
that the phrase "suitable for receiving an occupant" renders "the scope of the
claims unascertainable." Ans. 3. As Appellants point out, however, they
"relied on this language during prosecution to distinguish the present
invention" and "to overcome prior art that the [Appellants believe] is not
applicable to the claims in the present patent application." App. Br. 12.
Appellants further explain that this claim language "differentiates the present
invention from prior art examples directed to collapsible/foldable seats." Id.
While such prior art may meet certain elements of the claims regarding a
movable seat, it does so by folding the seat into a configuration that makes
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Appeal2017-010084
Application 13/878,855
the seat no longer suitable for receiving an occupant. In other words, when
moved and folded, an occupant would not be able to sit in the seat. Given
this backdrop, we determine that one of ordinary skill in the art would
understand that the scope of the claims covers only movable seats that move
while maintaining a configuration allowing an occupant to sit in the seat
before and after moving. As such, we do not sustain the Examiner's
indefiniteness rejection.
Obviousness
We first note that the Examiner is correct in finding that, for example,
the combination of Milnar and Thompson teaches all of the elements of the
claims. Thompson teaches all of the airplane configuration aspects of the
claims as laid out by the Examiner (see Ans. 5), which leaves only the
movable seat aspect, which is taught in Milnar (see Ans. 6). Although
Appellants argue that various aspects are missing from the references, in
each instance the Examiner is not using the reference at issue for the aspect
cited by Appellants. For example, Appellants argue that Thompson fails to
describe movable seats. Reply Br. 5. The Examiner, however, admits this
deficiency and uses Milnar for the movable seat. Likewise, Appellants
argue that Milnar "fails to describe a third seat or any of the claimed
passageways, among other deficiencies." Id. Again, Milnar is not used for
the airplane configuration aspects of the claims, Thompson is. We agree
with the Examiner that these arguments amount to improperly attacking the
references individually rather than addressing the combination set forth by
the Examiner. Ans. 6.
As to motivation to combine, Appellants argue that the Examiner's
motivation, namely to better utilize unused space, to provide more elbow
room, and to create a more comfortable atmosphere during flight is improper
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Appeal2017-010084
Application 13/878,855
because neither Thompson nor Milnar discuss these desires and, therefore,
"the references fail to provide such a motivation for their combination."
Reply Br. 7. While this may be true, Examiners are not limited to teachings
in the references as to a reason for combining the teachings and may look to
the knowledge and experience of one of ordinary skill in the art to determine
a reasonable basis with rational underpinnings for combining references.
Here, while not found in the references themselves, the Examiner merely
draws upon the knowledge of those skilled in this art to articulate three
reasons why one might want to incorporate a movable seat as taught in
Milnar into the airplane seating configuration found in Thompson.
Appellants provide no persuasive argument as to why the Examiner's
reason(s) is/are actually improper other than pointing out that they are not
found in the references themselves.
Appellants also argue that the Examiner's combination is based upon
improper hindsight because only their disclosure teaches "a more
comfortable arrangement," which is akin to the Examiner's basis of
providing a more comfortable atmosphere. Reply Br. 7. Even if this were
sufficient to overcome the Examiner's reasoning based on comfort,
Appellants provide no argument regarding the other two bases set forth by
the Examiner.
As to teaching away, Appellants essentially just repeat their prior
arguments regarding what is missing from Milnar, which again is not
pertinent because the Examiner utilizes Thompson to teach the allegedly
missing elements of Milnar. Appellants, however, have not made the
requisite showing that the reference at issue actually disparages the proposed
combination. Accordingly, we are not persuaded by Appellants' argument
that Milnar teaches away from the proposed combination.
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Appeal2017-010084
Application 13/878,855
As to claims 41 and 42, Appellants merely state that these claims are
patentable "at least for the same reasons that claims 21-28 are patentable
thereover." App. Br. 22. Appellants go on to assert that these claims
"present additional features that provide further bases for finding claims 41-
42 patentable over these two references." Id. Appellants do not, however,
state what those features are nor how they distinguish over the cited prior
art. Accordingly, for the same reasons as stated above, we affirm the
Examiner's rejection of claims 41 and 42.
As to claims 29-33, Appellants restate their arguments regarding the
combination of Thompson and Milnar and assert that Quan does not cure
these deficiencies, but do not provide any basis as to why the Examiner is
incorrect in the application of Quan to the claims at issue. App. Br. 23-26.
Having found the Examiner's combination of Thompson and Milnar
sufficient, we are not persuaded that the Examiner erred on this basis alone.
Accordingly, we sustain the Examiner's rejection of claims 29-33.
DECISION
For the above reasons, we REVERSE the Examiner's rejection of
claims 21-33, 41, and 42 as indefinite and AFFIRM the Examiner's decision
to reject claims 21-33, 41, and 42 as unpatentable.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
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