Ex Parte 6328260 et al

Board of Patent Appeals and Interferences

Sep 10, 2010

95000005 (B.P.A.I. Sep. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

HARRY SHANNON
Requester and Respondent

v.

Patent of ENPAT, INC.
Patent Owner and Appellant
____________

Appeal 2010-002305
Reexamination Control 95/000,005 and 90/006,330
Patent 6,328,260 B1
Technology Center 3900
____________

Before JENNIFER D. BAHR, ROMULO H. DELMENDO, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING1

1 The two-month time period for filing an appeal, as recited in 37 C.F.R. §
1.304 (see 37 C.F.R. § 1.983(b)(1)), begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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Reexamination Control 95/000,005 and 90/006,330
Patent 6,328,260 B1

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The Inter Partes Requester (“Requester”) in this merged
Reexamination proceeding has requested a rehearing under 37 C.F.R.
§ 41.52 of the Board Decision entered May 20, 2010 in which we reversed
the Examiner’s final rejection of claims 1-14 of U.S. Pat. No. 6,328,260 B1.
The Patent Owner filed a paper captioned “Comments in Opposition to
Request for Rehearing under 37 CFR § 41.79” on July 19, 2010.

STATEMENT OF THE ISSUES
Claims 1-14 of U.S. Pat. No. 6,328,260 B1 (hereinafter, “the ‘260
patent”) were rejected by the Patent Examiner over three separate grounds of
rejections under 35 U.S.C. § 103(a). The Patent Owner appealed the
rejections and we reversed in a Decision dated May 20, 2010. In this
Request for Rehearing (“Req. Reh’g.”), the Inter Partes Requester contends
that we erred in reversing all three rejections and that our Decision resulted
from a misapprehension of the law and facts (Req. Reh’g. 1). Requester
contends:
1. It was error to import limitations from the Specification into
claim 1 (Req. Reh’g. 2).
2. It was an error of fact to state there was no evidence of the need to
fit the doubler-straps (id. at 6).
3. The Board decision was based on an error of fact regarding the
relationship of the doubler strap and the spar cap (id. at 8).

ISSUE 1
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Patent 6,328,260 B1

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The Requester contends that we erred in construing the limitation
“inboard-end angle” as “ha[ving] an angle other than 90º to match the angle
of the wing-spar cap.” (Req. Reh’g. 3.) The Requester argues that we
reached this determination by improperly importing limitations from the
Specification into the claims (id. at 3-4). The Requester maintains that the
claim interpretation set forth in the Decision limits the claims to a preferred
embodiment “without any clear disclaimer or disavowal in the specification
of the broad, ordinary meaning of the limitation.” (Id. at 5.)
Our reasons for interpreting the claim limitation “inboard-end angle”
to exclude a 90º angle is fully explained on pages 6-9 of the Decision. We
concluded that the claim term, when read in light of the Specification, would
be understood to mean that the inboard end of the doubler-strap is oriented at
an angle other than 90º to correspond to the outwardly-tipped root rib and
wing-spar cap. (Dec. 8). The reason we reached this determination was that
the patent explicitly stated, in the Summary of the Invention, that the
perpendicular 90º angle configuration created stress that could be avoided by
angling the double-strap end to correspond to the angle of the wing spar
(‘260 patent, col. 4, ll. 5-11). Thus, contrary to the Requester’s arguments,
we are not reading limitations from the Specification into claim 1, but
properly interpreting the claim in light of the Specification’s clear statement
of a purpose of its invention.
ISSUE 2
The Requester contends that the following statement in the Decision
was factually incorrect:
To the contrary, the fact that the B-79 kit, which was approved
by the FAA, comprised a doubler with a rectangular edge is at
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odds with the argument that the skilled worker would have
considered such rectangular edge to result in an “unacceptably
narrow bridge” and contrary to “standard practice.”
(Dec. 17.)
The Requester contends: 1) there is no evidence in the record that
Service Bulletin B-79 was approved by the FAA; and 2) Service Bulletin B-
79 does not specify any angles on the doublers; “a reasonable person may
conclude that the doubler straps shown in the Service Bulletin B-79 had the
5° and 6° angles.” (Req. Reh’g. 6-7.)
First, with respect to the quoted statement from the Decision, we note
that our rationale for reversing the Examiner did not require us to find that
Service Bulletin B-79 kit had been approved by the FAA. We made this
statement in response to an argument made by the Requester (Dec. 17). Our
decision, however, was based on independent reasoning, e.g., as set forth on
pages 15-16 of the Decision. Consequently, even if the quoted statement is
factually incorrect, it would not have influenced or changed our decision to
reverse the Examiner’s obviousness determination.
Secondly, our statement that the B-79 had been “approved” by the
FAA was intended to reflect the following summary by the Patent Owner:
A Notice of Public Rule Making (NPRM) was issued by the
FAA on October 6, 1999, (FR, Vol. 64, No. 193) referencing
REVO Service Bulletin B-79 of June 12, 1999, which disclosed
an initial doubler strap modification kit. Airworthiness
Directive (AD) 2000-10-22, a Final Rule AD, was issued with
effective date June 20, 2000, and required implementation of an
FAA-approved corrective action. Installation of a modification
kit according to Service Bulletin B-79 was approved as a
corrective action.
(Br. 6).
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The Requester makes a second point that the doubler-straps in Service
Bulletin B-79 would have been concluded to have end angles of 5º and 6º,
not rectangular ends as asserted in the Decision.
The Requester admitted in his Appeal Brief that the Service Bulletin
“does not specifically show the doubler strap having a 5 or 6 degree angle”
(Requester App. Br. 4, submitted Mar. 18, 2009). Based on the drawings
and statements by the Patent Owner (Dec. 15-16; Br. 7; ‘260 patent, col. 3,
ll. 64-66), the Examiner had sound basis to conclude that the doubler-strap
ends were generally 90º relative to the longitudinal direction of the straps
(Ans. 7, 10, & 11; F9). As the PTO does not have the facilities to obtain and
compare products, once the Examiner provided a sound basis for this belief,
the burden shifted to Requester to prove that the doubler-straps of the
Service Bulletin B-79 did not possess the asserted characteristic. See In re
Best, 562 F.2d 1252, 1255 (CCPA 1977). Respondent argued that a
rectangular strap would not have been designed for engineering reasons, but
did not provide any expert testimony or documentary evidence to support
this position. As we said in the Decision, attorney argument is not evidence
and cannot take the place of evidence lacking in the record (Dec. 16-17).
Thus, in sum, Respondent did not satisfy the burden of showing that the
doubler-strap of B-79 possessed an angle of 5 or 6°.

ISSUE 3
In reaching our decision to reverse the Examiner, we concluded there
was
insufficient evidence to establish that persons of ordinary skill
in the art would have recognized that it was necessary for the
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inboard end angle of the doubler straps to “fit . . . against the
spar cap angle” rather than adjacent but not directly abutting it.
That is, the evidence does not establish that a proper fit required
the inboard end angle to precisely fit up against the wing spar
cap angle.
(Dec. 17.)
The Requester contends that this conclusion was a mistake in fact
(Req. Reh’g. 8).
The Requester contends that the “Service Bulletin B-79 reference
shows that the ‘fit . . . against the spar cap’ is part of the prior art.” (Req.
Reh’g. 8).
We cannot find the quoted language in Service Bulletin B-79. The
Requester admitted that the Service Bulletin B-79 did not specifically show
5 or 6 degree angle (Requester App. Br. 4, submitted Mar. 18, 2009).
Consequently, we do not see how the Service Bulletin can show a precise
and angled fit between the inboard-end angle of the doubler-strap and the
spar cap as we have interpreted the claim to require.
Citing Figure 6 and column 5, lines 33-38, of the ‘260 patent, the
Requester also contends that it is inherent that the doubler-straps “must
tightly fit” against the wing spar cap (Inter Partes Req. Br. 9). However,
the latter disclosures relied upon by the Requester to support his position are
descriptions by the inventors of preferred embodiments of the invention, not
of prior art, and certainly not of the prior art Service Bulletin B-79.
Consequently, this is not evidence of what persons of ordinary skill in the art
would have known about the fit between a doubler-strap and a wing spar cap
prior to the time the ‘260 patent was filed.
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Similarly, Requester quotes from column 6, lines 8-15, of the ‘260
patent to establish that “it is well known in the art that having an improper fit
between tightly coupled metal parts causes stress.” (Req. Reh’g. 9-10).
Once again, these statements are those of the inventors about their own
invention and do not necessarily reflect the knowledge or understanding of
the ordinary skilled worker about the prior art. As we indicated in the
Decision, the Examiner did not meet the burden of establishing that a proper
fit required the inboard-end angle of the doubler-strap to match the angle of
the wing spar cap (Dec. 17). Requester attempts to correct this deficiency by
directing our attention to a description of an embodiment of the invention
described in the ‘260 patent. But statements in the patent by the inventors
about their own invention, and what it achieved, is not evidence that the type
of fit required by claim 1 would have been obvious to the ordinary skilled
worker at the time the patent was filed.
Our Decision to reverse the Examiner was based on the lack of
evidence and persuasive technical reasoning regarding the desirability of a
precision fit in which the angle of the “inboard end of said wing spar has an
inboard-end angle that corresponds to an angle of [the] root rib,” as recited
in claim 1 (Dec. 15). The failure in the Examiner’s case was evidentiary. It
is bedrock law that the Examiner has the burden of establishing a prima facie
case of obviousness. The Examiner cannot discharge this burden by simply
making conclusory statements that lack technical or rational reasoning.
Here, the Examiner found it obvious to have made a doubler-strap
with inboard-end angles as recited in claim 1 “to insure a precision fit and
avoid harmful stress points” (F14). But the Examiner did not establish that
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the kind of fit required by claim 1 would have been recognized by persons of
ordinary skill in the art to relieve stress points. The inventors specifically
disclosed in the patent specification that they discovered that straight
rectangular edges produced “parasitic stresses” relieved by angling the
doubler-strap ends (Dec. 15-16; ‘260 patent, col. 3, ll. 64-66 & col. 4, ll. 5-
9). It thus appears that the Examiner improperly used the inventors’ own
discovery against them – without establishing an independent evidentiary
basis for the obviousness rejection.

CONCLUSION OF LAW
We have considered the Requester’s Request for Rehearing, but
decline to modify our original Decision entered May 20, 2010. The
rehearing is

DENIED

bim

PATENT OWNER

BOHAN MATHERS & ASSOCIATED, LLC
P.O. BOX 17707
PORTLAND, ME 04112-8707

Appeal 2010-002305
Reexamination Control 95/000,005 and 90/006,330
Patent 6,328,260 B1

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FIRST THIRD PARTY REQUESTER for 95/000,005

JIM H. SALTER
BLAKELY SOKOLOFF TAYLOR AND ZAFMAN
12400 WILSHIRE BLVD., 7TH FLOOR
LOS ANGELES, CA 90025

SECOND THIRD PARTY REQUESTER FOR 90/006,330

CLEMENTS BERNARD
1901 ROXBOROUGH ROAD
SUITE 300
CHARLOTTE, NC 28211