Ex Parte Murakami

Patent Trials and Appeals Board

Nov 30, 2018

13299105 - (D) (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/299, 105 11/17/2011 Hideyo Murakami
97379 7590 12/04/2018
Rankin, Hill & Clark LLP
23755 Lorain Road, Suite 200
North Olmsted, OH 44070
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.
NEX-35203 9774
EXAMINER
DINH, TIEN QUANG
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
ishihara@rankinhill.com
97379@rankinhill.com
shea@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEYO MURAKAMI
Appeal2017-011707 1
Application 13/299,1052
Technology Center 3600
Before NINA L. MEDLOCK, BART A. GERSTENBLITH, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 8, 10, 11, 13-15, 17, and 18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Br.," filed Feb. 13, 2017), the
Examiner's Answer ("Ans.," mailed June 22, 2017), and the Final Office
Action ("Final Act.," mailed Sept. 14, 2016).
2 According to Appellant, the real party in interest is Hideyo Murakami.
Br. 3.
Appeal 2017-011707
Application 13/299,105
BACKGROUND
According to Appellant, "[ t ]he present invention relates to a flight
device, in particular, a flight device with a main body including an air sac."
Spec. ,r 1.
ILLUSTRATIVE CLAIM
Claim 8 is the only independent claim on appeal and recites:
8. A flight device with a main body, comprising:
a wing whose position and/or shape is changed by control
of a controller;
a forward air resistance changing unit that lies horizontally
anterior to the main body in traveling direction and is controlled
by the controller to change air resistance against external air
relative movement against the main body; and,
an air sac in the main body,
wherein the forward air resistance changing unit includes
a plurality of air resistance members;
the air sac causes buoyant force to change altitude and the
wing gives horizontally forward driving force to the flight device
from relatively vertical movement of the external air caused by
changing altitude of the flight device and the forward air
resistance changing unit decreases upward or downward air
resistance and horizontally forward air resistance;
all of the plurality of air resistance members, at a same
time, decrease angle to forward traveling direction to decrease
air resistance when the wing is in horizontal posture or is put in
and when the external air moves relatively against the main body
from forward in traveling direction; and
all of the plurality of air resistance members, at a same
time, increase angle to forward traveling direction to increase air
resistance and to stabilize posture as well as to cause horizontally
forward driving force and functioning as a sail when the wing is
in horizontal posture or is put in and when the external air moves
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Application 13/299,105
relatively against the main body from backward in traveling
direction.
Br. 26.
REJECTIONS
1. The Examiner rejects claims 8, 10, 11, 13-15, 17, and 18 under
35 U.S.C. § 112, second paragraph, as indefinite.
2. The Examiner rejects claims 8, 10, 11, 13, 17, and 18 under 35 U.S.C.
§ 103 (a) as unpatentable over Bothe3 in view of Boelitz4 and Heaven. 5
3. The Examiner rejects claims 14 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Bothe in view of Boelitz, Heaven, and DeJ onge. 6
DISCUSSION
Indefiniteness - Claims 8, 10, 11, 13-15, 17, and 18
With respect to claim 8, the Examiner finds that the claim terms
"horizontally anterior," "horizontally forward driving force," and
"horizontally forward air resistance" render the claim indefinite. Final
Act. 2. The Examiner explains that "it is not clear from the claim what these
terms or combination of terms is intended to mean." Id. The Examiner also
finds that the phrase "'relatively vertical movement' in claim 8 is a relative
term which renders the claim indefinite." Id. at 3.
Appellant argues that the term "horizontally" should be given its plain
meaning, which refers to the plane parallel to the ground or horizon. Br. 10.
3 Bothe, US 5,823,468, iss. Oct. 20, 1998.
4 Boelitz et al., US 8,408,497 B2, iss. Apr. 2, 2013.
5 Heaven, Jr. et al., US 7,156,342 B2, iss. Jan. 2, 2007.
6 Delonge, US 5,121,325, iss. June 9, 1992.
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Application 13/299,105
Appellant also argues that the phrase "relatively vertical movement" would
be "clear and understandable to one skilled in the art." Id. at 11.
The text of 35 U.S.C. § 112, second paragraph, requires "[t]he
specification shall conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the applicant regards as
his invention." "As the statutory language of 'particular[ity]' and
'distinct[ ness]' indicates, claims are required to be cast in clear - as opposed
to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d 1307, 1313
(Fed. Cir. 2014). Claims comply with 35 U.S.C. § 112, second paragraph, if
"the claims, read in light of the specification, reasonably apprise those
skilled in the art both of the utilization and scope of the invention, and if the
language is as precise as the subject matter permits." Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986) (citing
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624
(Fed. Cir. 1985)). Thus, the test for determining the question of
indefiniteness may be formulated as whether the claims "set out and
circumscribe a particular area with a reasonable degree of precision and
particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With
regard to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an
imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, although exact precision is not required, an
applicant is required to use language as precise as the subject matter
reasonably permits. Id.
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Application 13/299,105
Here, even if we were to agree with Appellant that the term
"horizontally" should be construed according to its plain meaning, we
nonetheless agree with the Examiner that at least the claim term
"horizontally anterior" lacks clarity in combination with the claimed
"traveling direction" such that the claim is indefinite. The claim requires "a
forward air resistance changing unit that lies horizontally anterior to the
main body in traveling direction." Br. 26. By defining the location of the
air resistance changing unit in these terms, one cannot be certain where the
air resistance changing unit is located. For example, if the main body of the
device is traveling vertically, i.e., perpendicular to a plane parallel to the
ground, it is unclear what portion of the flight device would be "horizontally
anterior" to the body. Similarly, if the device is traveling in a plane parallel
to the ground, the location of the forward air resistance unit would appear to
change depending on whether the device is traveling from the left to right,
which would place the unit on the right of the device, or the right to left,
which would place the unit on the left of the device. Thus, by defining the
location of the air resistance unit as "horizontally anterior to the main body
in traveling direction" the claim lacks the degree of precision required to
determine the full scope of what is claimed with respect to the location of
the air resistance unit.
To the extent the Examiner also rejects the claim based on the phrase
"relatively vertical movement," we agree with Appellant that one of ordinary
skill in the art would understand the scope of this term. See id. at 11.
Accordingly, we agree with the Examiner that the claim language
related to the air resistance unit being "horizontally anterior" in the traveling
direction is indefinite, and we sustain the rejection of claim 8. We also
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sustain the rejection of claims 10, 11, 13-15, 1 7, and 18 because each
depends from claim 8.
Indefiniteness - Claim 18
In addition to the reasons discussed above, the Examiner finds that
claim 18 is indefinite due to the recitation of the relative terms upside, front
side, downside, and backside. Final Act. 3. We agree with the Examiner
that these terms are indefinite when considered in light of the analysis of
claim 8 above. Claim 18 defines a distance between the plurality of air
resistance members based on the upside, front side, downside, and backside
of the flight device. Br. 28. The air resistance members, however, are part
of the forward air resistance changing unit, and because the precise location
of the air resistance changing unit is unclear, it is not clear how one can
determine a distance between the air resistance members. Accordingly, we
also sustain the Examiner's separate rejection of claim 18 as indefinite.
Obviousness
Having determined that the scope of claims 8, 10, 11, 13-15, 17, and
18 is indefinite, we are unable to determine the propriety of the obviousness
rejections set forth by the Examiner because those rejections depend on the
limitations considered indefinite. Our review of these rejections would
require considerable speculation as to the scope of the claims. Such
speculation would not be appropriate in the circumstances here. In re Steele,
305 F.2d 859, 862 (CCP A 1962).
We, therefore, reverse proforma the Examiner's obviousness
rejections of claims 8, 10, 11, 13-15, 17, and 18. We emphasize that this is
not a reversal based upon the merits of the rejections.
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CONCLUSION
We AFFIRM the rejection of claims 8, 10, 11, 13-15, 17, and 18, and
the additional rejection of claim 18, under 35 U.S.C. § 112, second
paragraph. We REVERSE proforma the rejections of claims 8, 10, 11, 13-
15, 17, and 18 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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