Ex Parte Hurley

Board of Patent Appeals and Interferences

Aug 20, 2012

11093309 (B.P.A.I. Aug. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/093,309 06/04/2004 Francis X. Hurley 5976
7590 08/20/2012
Francis X. Hurley
113 Charlesberry Lane
Chapel Hill, NC 27517
EXAMINER
ELDRED, JOHN W
ART UNIT PAPER NUMBER
3641
MAIL DATE DELIVERY MODE
08/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANCIS X. HURLEY
____________________

Appeal 2010-003269
Application 11/093,309
Technology Center 3600
____________________

Before: CHARLES N. GREENHUT, WILLIAM V. SAINDON, and
MICHAEL L. HOELTER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003269
Application 11/093,309
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 6 and 7. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claim 6, reproduced below, is illustrative of the claimed subject
matter.
6. A tandem rotor aeropropulsive suite wherein the natural fluid
mechanical interference of the fore rotor wake on the rear rotor
aerodynamics is eliminated by close-coupling the two rotors as
a counter-rotating pair.

References
The Examiner relies upon the following prior art references:
Brown
Leupold
Olson
Adamson
US 1,804,312
US 1,891,166
US 3,181,810
US 4,883,240
May 5, 1931
Dec. 13, 1932
May 4, 1965
Nov. 28, 1989

Rejections
I. Claim 6 is rejected under 35 U.S.C. § 102(b) as clearly anticipated by
Brown or Adamson.
II. Claim 7 is rejected under § 103(a) as obvious over Brown or
Adamson and Olson or Leupold.

SUMMARY OF DECISION
We AFFIRM.

Appeal 2010-003269
Application 11/093,309
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OPINION
Claim 6
Sole independent claim 6 is directed toward an “aeropropulsive suite”
having close-coupled tandem rotors as a counter-rotating pair. The claim
recites that such a structure eliminates “natural fluid mechanical interference
of the fore rotor wake on the rear rotor aerodynamics.”
The Examiner found that both Brown and Adamson anticipate close-
coupled tandem rotors as a counter-rotating pair. Ans. 3; see also Brown,
figs. 2, 10, and p. 3, ll. 92-98, p. 4, ll. 20-24, Adamson, fig. 9 and col. 1, ll.
17-24.
Appellant first argues that the cited patents do not show “rotors (or
propellers) on separate shafts … repositioned into their close-coupled,
counter-rotating arrangement.” Br. 2. However, claim 6 does not require
propellers on separate shafts or any other structural elements for
repositioning. See, e.g., Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim”). Claim 6 requires close-coupled tandem rotors as a counter-rotating
pair. The Examiner properly found that Brown and Adamson depict tandem
rotors as a counter-rotating pair.
As to close-coupling, Appellant appears to argue that “close-
coupling” means “within about ten blade chord lengths.” Br. 3. However,
Appellant provides no evidence of such an understanding in the art. See,
e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“argument in a brief
cannot take the place of evidence”). The Examiner is entitled to interpret a
claim limitation broadly, subject to the understanding one of ordinary skill in
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Application 11/093,309
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the art would have of the term, and also taking note of the usage of the term
in the specification, particularly if the specification explicitly defines a term.
See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (“claims … are to be given their broadest reasonable interpretation
consistent with the specification” and “should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”);
In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (“Absent an express
definition in their specification, the fact that appellants can point to
definitions or usages that conform to their interpretation does not make the
PTO’s definition unreasonable”); see also, e.g., In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969) (applicant has the opportunity to amend the claims
during prosecution, and broad interpretation reduces the possibility that the
claim, once issued, will be interpreted more broadly than is justified); In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“as
applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee”).
In this case, the Examiner interprets “close-coupled” to include rotors
in close physical proximity, such as directly adjacent (Adamson) or directly
on opposite sides of a motor (Brown). See Ans. 4. This interpretation is
consistent with the plain meaning of the term, in our view, and does not
appear inconsistent with its usage in the Specification. We have not been
apprised of any evidence or persuasive reasoning to the contrary.
Furthermore, we note that even if Appellant were to provide evidence that
close-coupled means “within about ten chord lengths” to one of ordinary
skill in the art, it appears that both Brown (see figs. 2 or 10) and Adamson
(see fig. 9) would satisfy such a limitation. Accordingly, the Examiner
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Application 11/093,309
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properly found Brown and Adamson to describe close-coupled tandem
rotors.
Appellant also argues that the cited patents do not “mention the
vorticity roll-up interference phenomenon.” Br. 2-3. However, what
matters is whether all of the limitations of the claim are found in the
reference, not whether the reference “teaches” what the subject application
teaches. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983). In addition, claim 6 specifically states that the interference problem
is eliminated “by close-coupling the two rotors as a counter-rotating pair”
(emphasis ours). Thus, as claimed, the structure eliminates the interference
problem. See also In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948) (“the
patentability of apparatus claims must be shown in the structure claimed and
not merely upon a use, function, or result thereof”); Hewlett-Packard Co. v.
Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“apparatus
claims cover what a device is, not what a device does.”). In light of the
above, the Examiner properly found Brown and Adamson to describe the
claimed structure.
Appellant does not apprise us of error in the Examiner’s rejection of
claim 6. Accordingly, we sustain it.
Claim 7
Claim 7 requires a tilt-wing, vertical take-off and landing aircraft
“based upon the suite of Claim 6” that is “interference free” and “variable-
cycle between the vertical and horizontal flight modes.” We note that claim
6 already provides for “interference free” by its close-coupled, counter-
rotating, tandem rotor pair. Further, we note that a tilt-wing vertical-take-
off-and-landing aircraft appears to, by its nature, be variable cycle between
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vertical and horizontal flight modes. Accordingly, claim 7 appears to only
limit claim 6 to a particular type of aircraft having the suite of claim 6.
The Examiner concluded that it would have been obvious to
incorporate the close-coupled, counter-rotating, tandem rotor pair of Brown
or Adamson into the tilt-wing vertical-take-off-and-landing aircraft of Olson
or Leupold. See Ans. 4. The Examiner reasons that such a modification will
“increase the efficiency of the propellers” of the Olson or Leupold aircraft.
See id.
Appellant argues that the particular transition maneuver depicted in
figures 1B and 1C of his application is not ordinary, and that there is “no
physical pass-through of high-speed rotors” in Olson or Leupold. Br. 3.
However, there are no limitations in claim 7 requiring the claimed aircraft to
have a structure that operates exactly as depicted in figures 1B and 1C. The
claim merely requires tilt-wing vertical-take-off-and-landing aircraft, which
the Examiner found was taught by Olson or Leupold (Ans. 4). Appellant
does not contest those findings of the Examiner. As we indicated above, the
novelty and non-obviousness of an invention is weighed against what is
claimed, not what is described in the specification (or drawings). See also In
re Hiniker Co., 150 F.3d 1362 (Fed. Cir. 1998) (“The invention disclosed in
Hiniker’s written description may be outstanding in its field, but the name of
the game is the claim”).
Appellant lastly argues certain beneficial and/or novel features of the
invention (Br. 3) but again such an argument does not appear to be directed
to any limitation of the claim. As we discussed above, a reference need only
satisfy the limitations of the claim; it is not necessarily that the reference
teach what the subject application teaches. Kalman, 713 F.2d at 772.
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Accordingly, we are not persuaded of error in the Examiner’s
rejection of claim 7. Accordingly, we sustain it.

DECISION
For the above reasons, we affirm the Examiner’s decision regarding
claims 6 and 7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
JRG