Ex Parte Hyde et al

Patent Trial and Appeal Board

Jul 16, 2014

11633145 (P.T.A.B. Jul. 16, 2014)

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.
11/633,145 12/01/2006 Roderick A. Hyde 0604-006-001B-000000 9405
44765 7590 07/16/2014
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
RAO, SHEELA S
ART UNIT PAPER NUMBER
2127
MAIL DATE DELIVERY MODE
07/16/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RODERICK A. HYDE, NATHAN P. MYHRVOLD, LOWELL L.
WOOD JR., ALISTAIR K. CHAN, and CLARENCE T. TEGREENE
____________

Appeal 2012-000743
Application 11/633,145
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Examiner finally rejected claims 1-12, 14-16, 19-23, and 77.
Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appeal 2012-000743
Application 11/633,145
2
INVENTION
This invention relates to "active deformation of a surface to alter the
characteristics of the surface to flow or surface to surface interface, by
creating a dynamically changing surface geometry on one or more surfaces
of a body to control motion of the body." (Spec. 2). Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A system for producing surface deformations on a surface of
a body, comprising:
a first surface being a surface of the body exposed to a fluid
flow the first surface being defined by at least two orthogonal
directions;
at least one actuator affecting deformation of the first surface in
at least two orthogonal directions;
a control system providing control commands to the at least one
actuator; and at least one sensor providing environmental
characteristic information to the control system,
[a] wherein the control system includes a correlation function,
configured to correlate a desired control algorithm chosen
from more than one control algorithm based on the
environmental characteristic information.
(Disputed limitation emphasized, steps lettered).
REJECTIONS
R1. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent No. 5,961,080 (Sinha) and U.S. Patent
Application Publication No. 2006/0236777 (Chambers).
R2. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sinha.
Appeal 2012-000743
Application 11/633,145
3
R3. Claims 1-4, 8-11, 15, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sinha and U.S. Patent No. 6,862,502
(Peltz).
R4. Claim 77 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sinha and U.S. Patent No. 6,821,090 (Hassan).
R5. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sinha and U.S. Patent Application Publication No.
2006/0022092 (Miller).
R6. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sinha , Peltz, and International Publication No. WO
2006/040532 (Morrison).
R7. Claims 14, 16, and 21-23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sinha, Peltz, and US Patent No. 6,332,593
(Kamiadakis).

GROUPING OF CLAIMS
Based on Appellants' arguments, we decide the appeal of the rejection
R3 of claims 1-4, 8-11, 15, 19, and 20 on the basis of representative claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1
We address all other rejections separately, infra.

1 Appellants filed a Notice of Appeal on Nov. 10, 2010. The date of filing
the Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the
2004 version of the Board Rules last published in the 2011 edition of Title
37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to
the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th
ed., Rev. 8, July 2010.
Appeal 2012-000743
Application 11/633,145
4
ANALYSIS
We disagree with Appellants' contentions regarding the Examiner’s
rejections, except for rejection R2 of claim 12, which we address and reverse
separately, infra. We otherwise adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2), the reasons set forth by the Examiner in the Answer in
response to arguments made in Appellants' Appeal Brief. (Ans. 14-21). We
highlight and address specific findings and arguments below:
R1. Claim 7
Regarding the Examiner's reasoning to combine the references relied
on in the rejection of claim 7, Appellants contend, "[t]he only rationale
provided by the Examiner is that Chambers [] discloses the feature and that
the feature performs well. Such reasoning is inadequate for providing a
prima facie case of obviousness." (Reply Br. 2).
Appellants' conclusory statement is unpersuasive because it does not
address the Examiner’s specific findings. (Ans. 6, 14). We agree with the
Examiner’s finding (id.) regarding Chambers’ description that acoustically
driven actuators have superior performance. (Chambers ¶13). Thus, an
artisan would have been motivated to substitute Chambers' acoustically
driven actuators (¶13) for Sinha's actuators. (Ans. 6, 14). Because one
skilled in the art would reasonably have used a superior actuator to improve
system performance, we find the Examiner’s articulated rationale has
Appeal 2012-000743
Application 11/633,145
5
sufficient rational underpinning to support the legal conclusion of
obviousness. 2 (Id.).
R2. CLAIM 12
Regarding the claim 12 limitation: "wherein the at least one actuator
is deposited onto the first surface," Appellants contend:
With regard to claim 12, the Examiner states that the
placement of the actuator being deposited under the surface is
disclosed as item 1a in Fig. 2 of Sinha and that because it is
coupled to the outer surface that it would have been obvious to
deposit the actuator on the first surface. Appellants respectfully
disagree with the Examiner's assertion because, the actuators
disclosed and taught by Sinha require that the first surface 3b be
over the second surface 3a in order to actuate the second
surface. This inherently teaches away from the "at least one
actuator being deposited onto the first surface."
(App. Br. 12).
Appellants' contentions are persuasive. The Examiner finds Sinha’s
actuator includes the entire transducer array 1a, the inner wall 3a, and the
outer wall 3b. (Ans. 6, 15). We do not agree with the Examiner's finding
that Sinha suggests forming the actuator deposited on the "first surface"
merely because "Sinha asserts that 'other fabrication techniques ... may be
employed to form the transducer array ... in combination with the inner
wall.'" (Ans. 15; Sinha col. 6, ll. 4-7; Fig. 2). Although Sinha (col. 6, ll. 4-
7) may teach or suggest a portion of the actuator deposited on the outer wall
(3b), the cited section does not suggest “wherein at least one actuator is

2 The Supreme Court guides: “‘[r]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”’ KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appeal 2012-000743
Application 11/633,145
6
deposited on the first surface,” within the meaning of claim 12. (Id.). For
these reasons, we are persuaded the Examiner erred. Therefore, we reverse
rejection R2 of claim 12.3
R3. CLAIM 1
Regarding the claim 1 limitation “wherein the control system includes
a correlation function, configured to correlate a desired actuation scheme
based on the environmental characteristic information," Appellants contend
"[w]hat is suggested in Peltz is that such a mode control system could be
applied to a vehicle such as a train." (App. Br. 13; See Reply Br. 2-3)
Appellants' contentions are unpersuasive because Appellants do not
address the Examiner's specific findings. (Ans. 15- 16). Specifically,
Appellants fail to address the Examiner's finding: "Peltz teaches the process
of selection of a control scheme or algorithm that is chosen from among a
plurality of schemes or algorithms used to control a system based upon
environmental characteristics in column 19 at lines 5-38." (Ans. 16).
Therefore, we sustain the rejection R3 of claim 1 and of the claims
that fall therewith. See “Grouping of Claims,” supra.
R4. CLAIM 77
Regarding the claim 77 limitation:
wherein the control system is configured to determine the onset
of resonance of at least a portion of the body and . . . to modify
the resonance of the at least one portion of the body by
changing forces on the surface of the body due to the

3 In the event of further prosecution, we leave it to the Examiner to consider
if claim 12 should be rejected under 35 U.S.C. § 112 second paragraph for
lack of enablement. (See App. Br. 4, i.e., the only cited support for claim 12
is Figure 5, 520).
Appeal 2012-000743
Application 11/633,145
7
deformation of the surface in response to the control
commands[,]
Appellants' contend, "the Examiner has failed to establish a prima facie case
of unpatentability because it is never explained how sensing non-uniform
airflow is the same as determining the 'onset of resonance of at least a
portion of the body.'" (App. Br. 14).
Appellants' contention is unpersuasive because Appellants do not
address the Examiner’s specific findings. In particular, the Examiner finds
Hassan's sensing of non-uniform airflow may result from oscillation of a
control surface which can indicate the onset of resonance, and which
therefore teaches or suggests the "determin[ing] the onset of resonance of at
least a portion of the body" limitation. (Ans. 16-17; Hassan col. 3, ll. 56-61;
See Hassan col. 1, col. 48-50; Aerodynamically-driven oscillations when
coupled with the natural frequencies of the component result in resonance).
Therefore, on this record, we are not persuaded the Examiner erred.
Accordingly, we sustain rejection R4 of claim 77.
R5. CLAIM 5
Regarding the claim 5 limitation "wherein the at least one actuator
includes micro electromechanical system (MEMS) devices," Appellants
contend, "Sinha nor Miller et al. discloses, teaches, or suggests the use of
MEMS devices used as actuators to cause deformation of the first surface."
(App. Br. 16).
Appellants' contention is unpersuasive because Appellants' contention
is not commensurate with the scope of the claim. Claim 5 does not require
"MEMS devices used as actuators" (id.). Instead claim 5 recites: "wherein
the at least one actuator includes micro electromechanical system (MEMS)
Appeal 2012-000743
Application 11/633,145
8
devices." Secondly, Miller teaches micro-jet's actuators can include MEMS
devices such as discrete effectors and sensors. (Miller ¶14), Ans. 17-18).
The Examiner finds Miller's description of using MEMS devices in actuators
would have taught or suggested the contested limitation. (Ans. 17-18). On
this record, we are not persuaded the Examiner erred. Therefore, we sustain
rejection R5 of claim 5.
R6. CLAIM 6
Appellants contend, "the limitations of claim 6 are not contained in
any proper combination of the references." (Reply Br. 3). Appellants'
conclusory statement is unpersuasive because Appellants fail to address the
Examiner's specific findings regarding the cited sections of the references.
(App. Br. 18-19).
Appellants additionally contend claim 6 is patentable by virtue of its
dependency from base claim 1. (Reply Br. 3). However, we find no
deficiencies in the rejection of parent claim 1 for the reasons discussed
above. Therefore, we sustain rejection R6 of claim 6.
R7. CLAIMS 14, 16, AND 21-23
Appellants contend claims 14, 16, and 21-23 are patentable by virtue
of their dependency from base claim 1. (Reply Br. 4). However, we find no
deficiencies regarding the rejection of parent claim 1 for the reasons
discussed above. Therefore, we sustain rejection R7 of claims 14, 16, and
21-23.

Appeal 2012-000743
Application 11/633,145
9
DECISION
We affirm the Examiner's rejections R1, R3-R7 of claims 1-11, 14-16,
19-23, and 77 under §103.
We reverse the Examiner's rejection R2 of claim 12 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

tkl