Ex Parte Kane et al

Patent Trial and Appeal Board

Dec 31, 2018

13889268 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/889,268 05/07/2013
122219 7590 01/03/2019
Miller, Matthias & Hull LLP/ The Boeing Company
One North Franklin Street
Suite 2350
Chicago, IL 60606
DanielJ. Kane
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12-1392-US-NP 4765
EXAMINER
LEE, BENJAMIN P
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
01/03/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentadmin@boeing.com
bmatthias@millermatthiashull.com
ynunez@millermatthiashull.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL J. KANE and THOMAS J. LOWE 1
Appeal2018-003754
Application 13/889,268
Technology Center 3600
Before BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 10-12, 16, 17, 19, and 20. Claim 1-9, 13-15, and
18 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Boeing Company ("Appellant") is the applicant as provided under 37
C.F .R. § 1.46 and is identified as the real party in interest. Appeal Brief 3
("Appeal Br."), filed Oct. 3, 2017.
Appeal2018-003754
Application 13/889,268
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "flush fastener design and
installation." See Spec. Title, Figs. 2, 3. Claims 10, 16, and 17 are
independent.
Claim 16 is illustrative of the claimed subject matter and recites:
16. A method of making an aircraft comprising a structure
having an aerodynamic surface; and a plurality of fasteners
installed into the surface, each of the fasteners having ratio of
head-to-shank diameter of less than 2.0, and an included angle
between 100 and 180°; the method comprising:
(a) drilling holes for fastener shanks and to create counter
sinks for fastener heads in an aerodynamic surface of the aircraft
structure;
(b) installing fasteners of a predetermined nominal size
into the drilled holes;
( c) identifying those fasteners that do not meet a
predetermined flushness tolerance;
( d) replacing those identified fasteners with fasteners that
meet the predetermined tolerance; and
( e) terminating the replaced fasteners.
REJECTIONS
I. Claims 10-12, 19, and 202 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
II. Claims 10-12 and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Giedris (US 5,868,356, issued Feb. 9, 1999), Speakman
2 As claims 19 and 20 depend directly from independent claim 10, the
Examiner presumably intended to include these claims in this rejection. See
Appeal. Br. 15, Claims App.; see also Non-Final Office Action 4--5 ("Non-
Final Act."), dated July 10, 2017.
2
Appeal2018-003754
Application 13/889,268
(US 4,004,484, issued Jan. 25, 1977), and Bisiach (US 8,201,312 B2, issued
June 19, 2012).
III. Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over
Giedris, Speakman, Bisiach, 3 and Elkin (US 2,421,689, issued June 3, 1947).
IV. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over
Giedris.
V. Claim 17 stands rejected under 35 U.S.C. § 102(a)(l) as anticipated
by Giedris.
ANALYSIS
Rejection I- Written Description
Claims 10-12, 19, and 20
The Examiner states that Appellant's Specification "was amended
from the original to require a flushness tolerance of+/- 0.005 inch, and the
original disclosure required LESS THAN +/-0.005 inch (i-f 19 and ,r 31 of
original [S]pecification)," and because "'less than +/-0.005' excludes the
boundary numbers of +0.005 and -0.005, claiming a range that includes the
boundary numbers constitutes New Matter." Ans. 3--4; 4 see also Non-Final
Act. 4--5.
In response, "Appellant concedes that portion of the Examiner's
Answer dealing with [the] Section 112 rejection[]." Reply Br. 1. 5 Appellant
3 As claim 20 depends from independent claim 10, the Examiner presumably
intended to include the Bisiach reference in this rejection. See Non-Final Act.
6, 8; see also Appeal Br. 15, Claims App.
4 Examiner's Answer ("Ans."), dated Dec. 21, 2017.
5 Reply Brief ("Reply Br."), filed Feb. 15, 2018.
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Appeal2018-003754
Application 13/889,268
further states that claims 10-12 have been canceled, "as now reflected in
Appellant's REVISED CLAIMS APPENDIX, attached." Id.
As an Amendment to cancel claims 10-12, 19, and 20 has not been
entered by the Examiner (see 37 C.F.R. § 41.33), claims 10-12, 19, and 20
remain before us for review and stand rejected under 35 U.S.C. § 112(a) for
failing to comply with the written description requirement. Because
Appellant concedes the Examiner's § 112(a) written description rejection,
we summarily sustain the Examiner's rejection of claims 10-12, 19, and 20
for lack of written description. 6
Rejections II and III - Obviousness
Claims 10-12, 19, and 20
As Appellant concedes the Examiner's§ 112(a) written description
rejection of claims 10-12, 19, and 20, and as an Amendment to cancel those
claims has not been entered by the Examiner, the Examiner's obviousness
rejections of claims 10-12, 19, and 20 remain before us for review.
However, because Appellant proposes canceling independent claim 10 and
its dependent claims (see Reply Br. 1), we do not address the Examiner's
obviousness rejections of claims 10-12, 19, and 20.
6 Appellant states that "with respect to each of the Examiner's continued
rejections under Section 103 (of claims 16, 17, 19, and 20) ... Appellant ...
stands on its previous arguments." Reply Br. 1. However, as noted above,
claims 19 and 20 depend directly from independent claim 10. See Appeal Br.
15, Claims App.
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Appeal2018-003754
Application 13/889,268
Rejection IV - Obviousness
Claim 16
Appellant contends that "the Examiner improperly relied on the
doctrine of inherency for addressing deficiencies of a rejection supported
only by Giedris, which does not even remotely suggest specific method steps
of claim 16." Appeal Br. 11.
Appellant does not apprise us as to the "specific method steps of claim
16" lacking from the Examiner's obvious rejection of claim 16 over Giedris,
which similarly "relates to fastener systems for joining panels, particularly
aircraft skin panels, to underlying supports." Giedris, 1 :5-7; see also Non-
Final Act. 9-10 (accounting for the method steps of claim 16). Stated
differently, Appellant's statement does not specifically address the
Examiner's findings, including inherency, with respect to the disclosure of
Giedris, or point out why the Examiner's findings are in error. Thus,
Appellant's statement does not constitute a separate argument for
patentability of claim 16 under 37 C.F.R. § 4I.37(c)(l)(iv). See In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably
interpreted 37 C.F.R. § 41.37 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").
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 16 as unpatentable over
Giedris. Accordingly, we sustain the Examiner's rejection of claim 16.
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Appeal2018-003754
Application 13/889,268
Rejection V -Anticipation
Claim 17
Appellant contends that "Giedris does not disclose each and every
limitation of claim 17 .... Appellant submits that this rejection is also
deficient because the Examiner has again relied on the inherency doctrine
for this anticipation rejection." Appeal Br. 12.
Similar to the discussion above for claim 16, Appellant does not
apprise us as to the particular limitations lacking from the Examiner's
anticipation rejection of claim 17 by Giedris. Appeal Br. 12; see also Non-
Final Act. 11-12 (accounting for the method steps of claim 17). Stated
differently, Appellant's statement does not specifically address the
Examiner's findings, including inherency, with respect to the disclosure of
Giedris, or point out why the Examiner's findings are in error. Thus,
Appellant's statement does not constitute a separate argument for
patentability of claim 17 under 37 C.F.R. § 4I.37(c)(l)(iv). See In re Lovin,
652 F.3d at 1357.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 17 as anticipated by
Giedris. Accordingly, we sustain the Examiner's rejection of claim 17.
DECISION
We AFFIRM the decision of the Examiner to reject claims 10-12, 19,
and 20 for lack of written description.
We AFFIRM the decision of the Examiner to reject claim 16 as
unpatentable over Giedris.
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Application 13/889,268
We AFFIRM the decision of the Examiner to reject claim 17 as
anticipated by Giedris.
For the reasons discussed above, we do not address the Examiner's
obviousness rejections of claims 10-12, 19, and 20.
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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