Ex Parte Hyde et alDownload PDFPatent Trial and Appeal BoardJul 16, 201411633145 (P.T.A.B. Jul. 16, 2014) Copy Citation 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 Copy with citationCopy as parenthetical citation