Ex Parte Kamenomostskiy

Patent Trial and Appeal Board

Sep 28, 2017

13840474 (P.T.A.B. Sep. 28, 2017)

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.
13/840,474 03/15/2013 Aleksandr I. KAMENOMOSTSKIY K007-7804CON 3467
40627 7590
ADAMS & WILKS
17 BATTERY PLACE
SUITE 1343
NEW YORK, NY 10004
09/28/2017 EXAMINER
KATCHEVES, BASIL S
ART UNIT PAPER NUMBER
3638
MAIL DATE DELIVERY MODE
09/28/2017 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 ALEKSANDR I. KAMENOMOSTSKIY
Appeal 2016-007011
Application 13/840,474
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007011
Application 13/840,474
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
11—14. App. Br. 1. Claims 1—10 have been canceled and claims 15—38 have
been withdrawn from consideration. App. Br. 33 (Claims App.). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a thin wall profile member (TPM).
Claim 11, reproduced below, is illustrative of the claimed subject matter:
11. A thin wall profile member (TPM) having a
cross-section shape and a uniform dimensional length,
the TPM comprising:
at least one main strip having a width b and a
thickness 8/,; and
at least one additional strip with common
reinforcing ribs, the at least one additional strip having
a width a and a thickness 8a;
wherein the ratio of the width a of the at least one
additional strip to the width b of the at least one main
strip satisfies the requirement that a/b falls in a range
of values between 0.3 and 0.7;
wherein the ratio of the thickness 8a of the at least
one additional strip to the thickness 8/, of the at least
one main strip satisfies the requirement that 8J8/, falls
in a range of values between 1.0 and 3.0; and
wherein the at least one main strip has a stiffness
8/,/b that does not exceed a stiffness 8 Ja of the at least
one additional strip.
REFERENCE
Jacobs US 4,828,202 May 9, 1989
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Application 13/840,474
REJECTION
Claims 11—14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Jacobs. Non-Final Act. 2.
ANALYSIS
Claim 11
The Examiner finds that Figure 3 of Jacobs depicts a thin wall
member (TPM) having a “main strip” and two “additional strips” with
common reinforcing “ribs.” Non-Final Act. 2—3. Based on the depiction in
Figure 3, the Examiner finds that the width “6” of Jacobs’ main strip is
illustrated as being “twice, or more than twice,” the width “a” of each
additional strip, which satisfies the claim requirement that “a/b fall[] in a
range of values between 0.3 and 0.7.” Id. at 3; see also Appeal Br. 33,
Claims App.1 The Examiner also finds that because Jacobs’ TPM “is made
of a unitary piece of metal” having “an even thickness throughout,” the
“stiffness of the main strip and additional strip would inherently be the
1 The Examiner also asserts that Appellant “fails to show criticality for
specifically claimed dimension, therefore it would have been an obvious
design choice to use the dimensions such as specified in these claims.” Non-
Final Act. 3. Generally, a finding that a claim limitation would have been an
obvious design choice to a person of ordinary skill in the art is not necessary
when the prior art of record teaches the limitation. See, e.g., In re Kuhle, 526
F.2d 553, 555 (CCPA 1975) (finding that limitation of “metallic wrapping,”
presents “no novel or unexpected result over the metallic connections used in
the references . . . and would be an obvious matter of design choice”). Here,
as discussed below, the Examiner finds that Jacobs teaches the claimed
dimensions. See Non-Final Act. 2-4. Thus, we view the Examiner’s obvious-
design-choice position to be an alternative argument for unpatentability.
Because, for reasons discussed in the remainder of this opinion, we sustain
the Examiner’s rejections based on Jacobs’ teachings, we need not address the
Examiner’s obvious-design-choice argument.
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Application 13/840,474
same.” Non-Final Act. 3—\\ see also Jacobs Fig. 3. The Examiner also
notes that the claimed “stiffness is based upon the ratios of the structure
claimed.” Ans. 3.
Appellant argues that the Examiner improperly relies on a drawing,
Jacobs Figure 3, to disclose the claimed ranges. App. Br. 11. Appellant
asserts that because Jacobs does not disclose that Figure 3 is drawn to scale,
and does not disclose any particular dimensions in the Figure, Jacobs’ Figure
3 “may not be relied upon to show particular sizes.” Id. at 13. This
argument is not persuasive. While it is true that drawings are not presumed
to be drawn to scale, this “[does] not mean that things patent drawings show
clearly are to be disregarded.'1'’ In reMraz, 455 F.2d 1069, 1072 (CCPA
1972) (emphasis in original). Our reviewing court has stated that “[a]s long
as a person of skill in the art could derive the claimed dimensions from the
patent’s disclosure, there is no additional requirement that the specification
must explicitly disclose the precise proportions or particular sizes.”
Cummins-Allison Corp. v. SBM Co., Ltd., 484 Fed. Appx. 499, 507 (Fed.
Cir. 2012) (nonprecedential).
Here, although we agree with Appellant that “particular sizes” may
not be obtainable from Figure 3, we agree with the Examiner that a person of
ordinary skill in the art could derive from Figure 3 that the width b of the
main strip is “twice, or more than twice,” the width a of each of the
additional strips, as depicted in the Examiner’s annotated version of Figure
3. Non-Final Act. 3. Figure 3 of Jacobs can thus be said to illustrate a range
of width ratios a/b that includes, at least, a value around 0.5, and that the
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Application 13/840,474
range at least overlaps the claimed ratio of 0.3 to 0.7.2 Likewise, we agree
with the Examiner that the relevant structure in Figure 3 appears to be made
of a “unitary piece” of material, and appears to have the same thickness
throughout, such that, S„ = 8/,. Thus, 8J8f, = 1, which falls within the
claimed range of 1 to 3. See Non-Final Act. 3^4. Further, because S„ = 8/,
and the additional-strip-width a is less than the main-strip-width b, it
necessarily follows that the main strip stiffness 8iJb does not exceed the
additional-strip-stiffness 8 Jci, as claim 1 requires. Accordingly, we find that
the Examiner has established a prima facie case of unpatentability of claim
11. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (holding that
“even a slight overlap in range establishes a prima facie case of
obviousness”).
Appellant may “overcome a prima facie case of obviousness by
establishing that the [claimed] range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.”
Id. at 1330 (internal quotation marks omitted; alteration in original).
Appellant submits two declarations under Rule 1.132 in support of its
contention that the claimed dimensions are critical: a declaration from
Esteban A. Caraballoso, a mechanical engineer (“Caraballoso Deck”), and a
declaration from Appellant, Dr. Aleksandr Kamenomostskiy
(“Kamenomostskiy Deck”).
Mr. Caraballoso testifies, inter alia, that “the achievement of optimal
weight TPMs is of paramount importance in the field of aircraft design,” that
“the advantage of weight reduction is well-recognized in the aircraft design
2 Indeed, the main-strip width b can be anywhere from about 1.5 to 3 times
the additional-strip width a for a/b to fall within the claimed range.
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Application 13/840,474
industry and is explicitly recognized by Jacobs,” and, therefore, “changes in
the dimensions of components of Jacobs’ reinforced skin structure, including
changes in width/thickness dimensions of components of the Jacobs’
stringers would not constitute a minor dimensional change in Jacobs.” App.
Br. 14—15 (citing Caraballoso Decl. 119—11). In his Declaration, Dr.
Kamenomostskiy discusses “the technical difficulties and the skills required
for attaining the combination of features for the [TPM] profile,” and
identifies “the many technical challenges and difficulties which one of
ordinary skill in the art would confront in trying to arrive at the TPM recited
in claim 11.” App. Br. 18—19 (citing Kamenomostskiy Decl. H5—18). Dr.
Kamenomostskiy also provides calculations of “shape efficiency factor (X)
values for a TPM having an I-shape utilizing values of width/thickness ratios
inside and outside of the ranges recited in claims 12 and 13 of the instant
application.” Kamenomostskiy Decl. 119. According to Dr.
Kamenomostskiy, the results of these calculations “show that there is a
significant decrease in the X values, and therefore a significant increase in
weight of the TPMs, for width/thickness ratio values . . . outside the
width/thickness ratio ranges recited in claims 12 and 13.” Id. 121.
Appellant’s declarations do not persuade us that the claimed ranges
exhibit unexpected results relative to the prior art. First, the Examiner’s
rejection is not based on changing the width/thickness dimensions of
components of Jacobs, so Mr. Caraballoso’s opinion that any such changes
would not be considered “minor” is irrelevant. Also, the claims are not
limited to TPMs used as aircraft parts. Further, Appellant does not explain
how “the technical difficulties and the skills required for attaining the
combination of features” for the TPM profile, of which Dr.
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Application 13/840,474
Kamenomostskiy testifies, relates to unexpected results of the claimed
ranges relative to the prior art. As for Dr. Kamenomostskiy’s test results,
they are not commensurate in scope with claim 11. See Peterson, 315 F.3d
at 1330 (holding that “applicant’s showing of unexpected results must be
commensurate in scope with the claimed range”). First, although the test
results are limited to I-shaped TPMs, claim 11 is not so limited; it covers, at
least, the closed rectangular TPM depicted in Figure 1 of the Specification.
See App. Br. 5. Second, the test results do not appear to evaluate the width
ratio a/b and thickness ratio 8„/8/, of claim 11. Instead, Dr. Kamenomostskiy
evaluates the width ratio c/b and the thickness ratio 8c/8/„ both of which are
found only in independent claims 12 and 13. See Kamenomostskiy Deck ]Hf
20, 22—23. Moreover, the test results do not expressly capture the effects of
the stiffness limitation of any of the independent claims.
Next, Appellant argues that “the specific stiffness relationship called
for in claim 11 does not necessarily flow from the disclosure in Jacobs,
thereby precluding reliance on the doctrine of inherency.” App. Br. 21. We
disagree. As noted above, claim 11 defines stiffness as the ratio of a strip’s
thickness to its width, e.g., main-strip-stiffness is 8/Jb, and additional-strip-
stiffness is 8Jci. Because Jacobs’ main and additional strips have the same
thickness, and the main strip is wider than the additional strips, it is
necessarily the case that 8b/b does not exceed 8 Jci, as claim 11 requires.
Finally, Appellant argues that Jacobs teaches away from the claimed
width/thickness ratio ranges and stiffness relationship. Appellant asserts that
Jacobs “explicitly discloses that resonant vibrations due to reinforcing
member bending, torsional, extensional and tuning fork mode ‘are all
damped.’” App. Br. 26 (citing Jacobs, Abstract, 8:24—34). According to
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Application 13/840,474
Appellant, this disclosure “discourages, and thus teaches away from, the use
of a compressive TPM due to the increased likelihood that the TPM would
fail in the bending mode (overall and local instability) from an external
compressive load.” App. Br. 26. But Appellant’s discussion of the behavior
of a compressive TPM “fail[ing] in the bending mode,” as well as the
characterization of Jacobs’ disclosure as “teaching away,” (see id.) is
entirely based on attorney argument, which we accord little weight. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Therefore, this argument is
unpersuasive.
For the above reasons, we sustain the Examiner’s rejection of claim
11 as unpatentable over Jacobs.
Claims 12 and 13
In addition to relying on the same patentability arguments for claim
11 that we considered and rejected above, Appellant asserts that claims 12
and 13 are “separately patentable” from claim 11 because they “relate[] to a
TPM that is structurally different from the TPM of claim 11.” App. Br. 28
(claim 12), 30 (claim 13). Appellant also identifies the specific differences
between the claims. Id. But merely identifying differences between claims
does not constitute separate arguments for the patentability of the claims.
See 37 C.F.R. § 41.37(c)(l)(vii)(2011) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) (holding that the Board had reasonably interpreted 37 C.F.R. §
41.37(c)(l)(vii) as requiring “more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”). Therefore, for the
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reasons stated above with respect to claim 11, we sustain the Examiner’s
rejection of claims 12 and 13 as unpatentable over Jacobs.
Claim 14
Claim 14 depends from claim 13. App. Br. 35 (Claims App.). In
contesting the rejection of claim 14, Appellant recites the additional
limitation of claim 14 and alleges that Jacobs does not disclose or suggest it.
App. Br. 31. This statement does not constitute a separate argument for
patentability of claim 26 pursuant to 37 C.F.R. § 41.37(c)(l)(vii)(2011).
Therefore, we sustain the Examiner’s rejection of claim 14 as unpatentable
over Jacobs.
DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 11—14 as unpatentable over Jacobs.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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