Ex Parte Luce

Patent Trial and Appeal Board

Sep 24, 2013

11458909 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM E. LUCE
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Appeal 2011-007200
Application 11/458,909
Technology Center 3600
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Before: JENNIFER D. BAHR, CHARLES N. GREENHUT, and
HYUN J. JUNG, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007200
Application 11/458,909
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
18, 19 and 23-27. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to an aircraft shock strut having a fluid level
monitor. Claim 18, reproduced below, is illustrative of the claimed subject
matter:
18. A method of monitoring a liquid level in an aircraft
shock strut of a landing gear system, the method comprising:
detecting a liquid level with a plurality of probes that
extend into the shock strut, the plurality of probes having at
least a first probe extending by a first distance and a second
probe extending by a different distance into the shock strut,
each probe having a probe tip positioned within a respective
liquid level sensitivity range of the shock strut;
receiving signals related to the liquid level from at least
one of the probes, the signals received by a processor;
processing the signals over a number of flights to
determine a characteristic of the liquid level in the shock strut;
and
analyzing the processed signals to provide a prediction of
the liquid level in the shock strut for a future period.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Luce US 2004/0129834 A1 Jul. 8, 2004

REJECTIONS
Claim 27 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Ans. 3.
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Application 11/458,909
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Claims 18, 19 and 23-26 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Luce. Ans. 4.
Claim 27 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Luce. Ans. 4.

OPINION
The rejection 35 U.S.C. § 112, first paragraph
The Examiner found that the Specification fails to comply with the
written description requirement since the prediction including loss rate per
flight of claim 27 is not described in the Specification. We agree.
As Appellant points out (App. Br. 18), the Examiner has the initial
burden of presenting evidence or reasoning to explain why persons skilled in
the art would not recognize in the original disclosure a description of the
invention defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA
1976). By pointing to the fact that the claim at issue reads on embodiments
outside the scope of the description, the PTO has satisfied this burden. Id;
see also Hyatt v. Dudas, 492 F.3d 1365, 1370-71 (Fed. Cir. 2007)(In making
a written description rejection, an examiner states a prima facie case by
sufficiently explaining to the applicant what, in the examiner’s view, is
missing from the written description. Once the examiner states a prima facie
case, the burden shifts to the applicant either to cite to the examiner where
adequate written description is found or to make an amendment to address
the deficiency.).
In rebuttal, Appellant relies on page 5, lines 21-23 and figure 6 of
Appellant’s disclosure. App. Br. 19. The cited portion of the Specification
(quoted at App. Br. 19) says nothing of a liquid loss rate, nor does it make
any inherent or implicit disclosure of how to estimate that quantity and use it
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for purposes of prediction. Figure 6 and the associated description also fail
to describe anything related to the liquid loss rate during the prediction
period 202. While there is no in haec verba requirement, a description that
merely renders the invention obvious does not satisfy the written description
requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344-48
(Fed. Cir. 2010) (en banc). Appellant cannot claim a particular result without
describing the structure or steps that accomplish it. See Id. at 1358.

The rejection under 35 U.S.C. § 102(b)
Claims 18, 23 and 24 are separately argued. App. Br. 12-16. We select
claim 18 as representative of claims 18, 19, 25 and 26. 37 C.F.R. §
41.37(c)(1)(vii).

Claim 18
There is no dispute that the applied prior art, Luce, discloses the same
structure as Appellant. There are two disputed limitations of the method of
claim 18: “processing the signals over a number of flights to determine a
characteristic of the liquid level in the shock strut”; and “analyzing the
processed signals to provide a prediction of the liquid level in the shock strut
for a future period.” App. Br. 12-14. In both cases, Appellant’s arguments
are not commensurate with the claim scope because the claim language is
much broader than Appellant asserts.
Appellant recognizes that, at the very least,1 Luce collects a single-
flight’s worth of information. App. Br. 13. But, it is clear that Luce intends

1 We do not rely on the Examiner’s assumption regarding the keeping of
maintenance records (Ans. 4-5). While likely correct (see, for example,
Luce, p. 4, para. [0044](broadly suggesting storing data for maintenance
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Application 11/458,909
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to do so each time the aircraft is used. Luce, passim. The result of using
Luce’s device is that signals are processed over several2 flights. As the
Examiner correctly points out (Ans. 5), claim 18 does not require data from
one flight to be stored, combined and/or analyzed with data from another.
Thus, we must agree with the Examiner that, in the ordinary course of using
Luce’s device, the step requiring “processing the signals over a number of
flights” will be performed. See In re King, 801 F.2d 1324, 1326-7 (Fed. Cir.
1986)(If a prior art device, in its normal and usual operation, would
necessarily perform the method claimed, then the method claimed will be
considered to be unpatentable over the prior art device.).
Appellant further contends that Luce makes no type of forward-
looking prediction, specifically of the liquid level. App. Br. 13-14. We again
agree with the Examiner that the claim does not require the liquid level to be
quantified in any specific way. Ans. 6; contra Reply Br. 12-13. So, a
prediction that the liquid level will be sufficient or insufficient for a certain
amount of time into the future, such as a month or a week (Luce, p. 3, para.
[0027]) satisfies this broad requirement of the claimed method. Ans. 7.

Claim 23
There is no dispute that “intermittent signals” are not expressly
described in Luce. Ans. 7; App. Br. 15. The Examiner correctly found that
the same structure, including the sensors coupled to the monitoring device,
and same steps, including monitoring the signals sent by the sensors, must

personnel)), patentability determinations must be made on the basis of
evidence, without resort to speculation. Reply Br. 10-11.
2 For arguments sake, we are construing “a number” more narrowly than is
arguably reasonable as greater than 1, since this appears to be the
interpretation agreed upon by Appellant and the Examiner.
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inherently produce the same result of “receiving intermittent signals when
the liquid level is proximate a lower of the first and second probes.” Ans. 7.
“The intermittent readings [or signals] arise from the oil level being within
the sensor sensitivity range as depicted in FIG. 5.” Spec. 12:8-9. Thus, the
signals themselves are not the product of any structure or step different from
that of the prior art. Rather, they are a result of the prior art process.
Appellant may go on to take advantage of that result in a particular way
according to the process described as Appellant’s preferred embodiment.
Spec. 12:5-7. However, Appellant attempts to distinguish claim 23 from
Luce only on the basis of the existence of these intermittent signals. Reply
Br. 14. Newly discovered results of prior art processes do not distinguish
over that prior art because such results are inherent. See Bristol-Myers
Squibb Co. v. Ben Venue Labs., Inc. 246 F.3d 1368, 1376-1377 (Fed. Cir.
2001).

Claim 24
Like Appellant, we fail to see where the Examiner has set forth a
prima facie case of anticipation for claim 24. App. Br. 15. And, we fail to
see how the rhetorical questions posed by the Examiner (Ans. 7-8) relate to
the question of anticipation regardless of how they are answered. Reply Br.
15. Accordingly, we must reverse the rejection of claim 24.

The rejection under 35 U.S.C. § 103
Regarding claim 27, Appellant focuses mainly on the same absence of
a prediction step as we have addressed above. App. Br. 16-17. Appellant
also contends that the Examiner has not explained how loss rates are to be
calculated from a single liquid level stored after a single flight. App. Br. 17.
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We agree with the Examiner that all that is required for making this
calculation is a temporal element of Luce’s data such as storing the data in a
memory or data storage element, which Luce’s device already includes. Ans.
8; Luce, p. 2, para. [0021]. Once a temporal element is obtained, the only
step required to calculate a rate of liquid loss is differentiating the amount of
liquid sensed with respect to time. We must agree with the Examiner that
preforming such simple data collection and mathematical manipulation
would have been obvious to one having ordinary skill in the art.

DECISION
We reverse the Examiner’s rejection of claim 24 and affirm the
Examiner’s other rejections.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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