Ex Parte SMITH et al

Patent Trial and Appeal Board

Feb 28, 2019

14021094 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/021,094 09/09/2013
1009 7590 03/04/2019
KING & SCHICKLI, PLLC
800 CORPORATE DRIVE, SUITE 200
LEXINGTON, KY 40503
FIRST NAMED INVENTOR
J. Carey SMITH
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.
1527-510 Cont. 4285
EXAMINER
BROWN, ADAM WAYNE
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
uspto@iplawl.net
laura@iplawl.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. CAREY SMITH, RICHARD W. FIZER,
RICHARD M. A YNSLEY, and RICHARD A. OLESON 1
Appeal2018-003824
Application 14/021,094
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
BRENT M. DOUGAL, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
J. Carey Smith et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1, 9, 18-21, and 23-36.
Claim 10 is objected to as being allowable, yet dependent on a rejected base
claim. Final Act. 17. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Delta T Corporation is identified as the real party-in-interest in the Appeal
Brief. Appeal Br. 3.
Appeal2018-003824
Application 14/021,094
THE INVENTION
Appellants' invention relates to a fan system including a fan blade.
Independent claim 1 is illustrative of the claimed invention and reads as
follows:
1. A fan blade, comprising:
(a) a first fan blade portion, wherein the first fan blade portion
compnses:
(i) a first end, wherein the first end is configured to be
coupled with a fan hub,
(ii) a second end, wherein the first fan blade portion has a
length extending between the first end of the first fan blade
portion and the second end of the first fan blade portion,
(iii) a trailing edge,
(iv) a leading edge engagement portion including a
channel;
(b) a second fan blade portion secured to the first fan blade
portion, wherein the second fan blade portion comprises:
(i) a first end,
(ii) a second end, wherein the second fan blade portion has
a length extending between the first end of the second fan
blade portion and the second end of the second fan blade
portion,
(iii) a leading edge, and
(iv) an engagement portion adapted for insertion into the
channel of the leading edge engagement portion of the first
fan blade portion in a direction transverse to the length of
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Application 14/021,094
the first fan blade portion to form a secure mechanical
coupling;
wherein the first fan blade portion and the second fan blade
portion together define an airfoil shape at one or more cross
sections of the fan blade, wherein the trailing edge of the first fan
blade portion defines a trailing edge of the airfoil shape, wherein
the leading edge of the second fan blade portion defines a leading
edge of the airfoil shape.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 9, 19, and 23-26 under 35 U.S.C. § I03(a) as being
unpatentable over Maby (US 6,183,201 B 1, issued Feb. 6, 2001) in view of
Schreiber (US 2007/0140859 Al, published June 21, 2007);
(ii) claim 18 under 35 U.S.C. § I03(a) as being unpatentable over
Maby in view of Schreiber and Aynsley (US 7,284,960 B2, issued Oct. 23,
2007);
(iii) claims 20, 28-30, 35, and 36 under 35 U.S.C. § I03(a) as being
unpatentable over Maby in view of Steinheiser (US 6,790,004 B2, issued
Sept. 14, 2004) and Schreiber;
(iv) claims 21, 32, and 33 under 35 U.S.C. § I03(a) as being
unpatentable over Maby in view of Steinheiser;
(v) claim 27 under 35 U.S.C. § I03(a) as being unpatentable over
Maby in view of Schreiber and Scherer (US 2009/0081045 A 1, published
Mar. 26, 2009); 2
2 The Scherer publication is erroneously identified as US 200,8./0081045 in
the Final Action.
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Application 14/021,094
(vi) claim 31 under 35 U.S.C. § 103(a) as being unpatentable over
Maby in view of Steinheiser, Schreiber, and Scherer; and
(vii) claim 34 under 35 U.S.C. § 103(a) as being unpatentable over
Maby in view of Steinheiser and Scherer.
ANALYSIS
Claims 1, 9, 19, and 23-26--Maby/Schreiber
Independent claim 1 recites a first fan blade portion having a leading
edge channel and a second fan blade portion having an engagement portion
adapted for insertion into the channel in a direction transverse to the length
of the first fan blade portion. Appeal Br., Claims Appendix. Independent
claim 19 includes essentially the same "adapted to" language, with the
components being recited using somewhat different terminology. The
Examiner acknowledges that Maby does not disclose these features, instead
relying on Schreiber as teaching a leading edge channel and a second fan
blade portion having an engagement portion inserted into the channel. Final
Act. 4--5. The Examiner concludes that it would have been obvious to
modify Maby to include these elements from Schreiber in order to obtain the
predictable result of positively securing the leading edge portion. Id. at 4.
The Examiner states that the claim language "adapted for insertion
into the channel in a direction transverse to the length of the first fan blade
portion" is interpreted as constituting a product-by-process limitation. Final
Act. 4--5. In doing so, the Examiner tacitly acknowledges that the combined
teachings of Maby and Schreiber do not result in a structure in which the
engagement portion of the second fan blade portion is adapted for insertion
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Application 14/021,094
into the channel of the first fan blade portion in a direction transverse to the
length of the first fan blade portion, as claimed. Instead, the Examiner's
position is that the limitation need not be given any patentable weight,
provided that the end product of the Maby/Schreiber combination and the
end product of the claimed invention are the same.
We agree with Appellants that the claim language at issue is not
properly interpreted as being part of a product-by-process limitation. In
claim 1, the "adapted for" recitation requires particular structure ( albeit not
recited in great structural detail) that permits the engagement portion of the
second fan blade portion to be inserted into the channel of the first fan blade
portion in the claimed direction relative to the first fan blade portion. The
Examiner has not established that such structure would exist in the Maby fan
blade, as modified by Schreiber.
The rejection of independent claims 1 and 19, and of dependent
claims 9 and 23-26, is not sustained.
Claim 18--Maby/Schreiber/Aynsley
Claim 18 depends from claim 1. The Examiner does not rely on
Aynsley in any manner to cure the deficiency in the combination of Maby
and Schreiber as discussed above. The rejection is not sustained.
Claims 20, 28-30, 35, and 36--Maby/Steinheiser/Schreiber
Independent claims 20 and 3 5 do not recite, as do claims 1 and 19
discussed above, that some component be adapted for ( or to) insertion into a
channel of another component in a direction transverse to the length of the
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latter component. Appeal Br., Claims Appendix. Thus, the basis for
reversal of the rejection of claims 1 and 19 over Maby and Schreiber does
not apply to this rejection.
Claim 20 requires that a spine member, connected to a hub and
extending radially outwardly therefrom, have a leading channel and a
trailing channel on opposite sides of the spine member, with modular
leading and trailing edge members removably coupled with their respective
channels. Id. The Examiner's position, similar to that in relation to claims 1
and 19, is that it would have been obvious to modify Maby in view of
Schreiber to use a channel and corresponding engagement portion to secure
Maby's leading edge member to its fan blade. Final Act. 8-9. The
Examiner relies on Steinheiser as evidencing that it is known that some
ceiling fans are capable of rotating in either direction, and as disclosing that
modular leading and trailing edge members may be provided to account for
reverse rotation wherein the formerly "trailing edge" operates as the
"leading edge." Id. The Examiner's proposed modification to Maby
includes providing the Schreiber-type connector on both the leading and
trailing edge. Ans. 18.
Appellants argue that the rejection "fails to provide any reason based
on a rational underpinning for combining the references." Appeal Br. 13.
Appellants additionally argue that none of the references disclose both a
leading channel along a leading portion of the spine member, as well as a
trailing channel along a trailing portion of the spine member. Id. at 15. In
particular, Appellants maintain that the Examiner has failed to show where,
in any of the cited references, a trailing channel is provided along a trailing
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portion. Id.; Reply Br. 3. The argument is in the nature of asserting that,
even if the teachings of the references are combined, the resulting structure
fails to include a trailing channel in a trailing portion.
Taking the latter argument first, Appellants misunderstand the
Examiner's reliance on Steinheiser. The Examiner proposes to modify not
only the leading edge of the fan blade of Maby, with the Schreiber-type
connection structure, but also to similarly modify the trailing edge with the
same connection structure, in view of the disclosure in Steinheiser that either
of the edges may be the leading edge, with the fan rotating in opposite
directions. Ans. 18. We are not apprised of error in the rejection on this
basis.
As for the rationale to combine the teachings, Appellants maintain
that using the attachment method of Schreiber on the Maby fan "would serve
absolutely no purpose" because the fan blade in Maby lacks a channel, and
modifying the fan blade would defeat the stated goal of Maby that its device
be used with conventional fan blades. Appeal Br. 14. The Examiner,
however, points out that the modification would result in the structure
"positively securing" the edge portions to the blade in a predictable manner.
Final Act. 17.
"A person of ordinary skill is also a person of ordinary creativity, not
an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 (2007).
Were a person of ordinary skill in the art to desire the more positive
securement of the edge portions to the blade of Maby, Schreiber provides a
straightforward and obvious manner of doing so. That the resulting structure
deviates from using the so-called conventional fan blade of Maby would be
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Application 14/021,094
one of many considerations weighed by the person of ordinary skill. See
Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000) ("The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.").
The rejection of claim 20 is sustained. Appellants do not separately
argue the patentability of claims 28-30, which depend from claim 20 and are
subject to this same ground of rejection. The rejection of those claims is
thus sustained.
Independent claim 3 5 includes a limitation requiring that a first fan
blade portion and a second fan blade portion together define an airfoil shape,
and that one of the first and second fan blade portions has a "variable cross-
section along the length thereof." Appeal Br., Claims Appendix. The
Examiner relies on Schreiber as teaching that the fan blade has a channel
with a stop at the radial extent, yielding a fan blade having a variable cross-
section, which would be present in the proposed modification of Maby in
view of Schreiber. Final Act. 12.
Appellants baldly assert that "in no way does the stop provide a
variable cross-section along the length of the fan blade." Appeal Br. 16.
However, it is plainly apparent from Figure 3 of Schreiber that, considering
a cross-section taken through the blade transversely to its length, a cross-
section through the portion having the stop at the leading edge would be
different than a cross-section through a portion of the blade having the
channel at the leading edge. This would be the case even if the trailing edge
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Application 14/021,094
of Schreiber were essentially parallel to the leading edge, as seems to be the
case with the Maby blade.
The rejection of claim 35 is sustained. Claim 36 depends from claim
35, and there being no separate arguments directed to that claim, it falls with
claim 35.
Claims 21, 32, and 33--Maby/Steinheiser
Claim 21 includes a limitation requiring either the first fan blade
portion or the second fan blade portion, which together define an airfoil
shape, has a variable width. Appeal Br., Claims Appendix. The Examiner
relies on modular leading edge member 20 shown in Figure 2 of Maby as
evidencing that that portion has a variable width. Ans. 18. Appellants
maintain that, with Figure 2 of Maby being a side section view, it does not
illustrate any variation in the width of that blade portion. Reply Br. 4.
As best as we can understand, the Examiner relies on the variable
vertical dimension of leading edge member 20 as a disclosure of variable
width. However, even though Appellants do not employ the term "width,"
nor the term "variable" in their Specification, it is apparent from Maby as
well as from Appellants' discussion in the Specification of broad and narrow
chord sections (paragraph 26), that the Examiner relies on what would be
understood to be a height of the blade portion, whereas the width of the
blade portion would be effectively orthogonal to that dimension. Appellants
appear to be correct that Figure 2 of Maby does not evidence a varying blade
portion width. Figures 3-5 of Maby instead appear to evidence that the
width of the leading edge portion does not vary along the length.
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The rejection of claim 21, and of dependent claims 32 and 33, is not
sustained.
Claim 27--Maby/Schreiber/Scherer
Claim 27 depends from claim 19, and the Examiner does not rely on
Scherer in any manner that would remedy the deficiency in the rejection of
claim 19 over Maby and Schreiber. The rejection is not sustained.
Claim 31--Maby/Steinheiser/Schreiber/Scherer
Appellants do not separately argue the patentability of claim 31,
which depends from claim 20. For the reasons noted in the discussion of
claim 20 above, the rejection of claim 31 is sustained.
Claim 34--Maby/Steinheiser/Scherer
Claim 34 depends from claim 21, and the Examiner does not rely on
Scherer in any manner that would remedy the deficiency in the rejection of
claim 21 over Maby and Steinheiser. The rejection is not sustained.
DECISION
The rejection of claims 1, 9, 19, and 23-26 under 35 U.S.C. § 103(a)
as being unpatentable over Maby in view of Schreiber is REVERSED.
The rejection of claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Maby in view of Schreiber and Aynsley is REVERSED.
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The rejection of claims 20, 28-30, 35, and 36 under 35 U.S.C.
§ 103(a) as being unpatentable over Maby in view of Steinheiser and
Schreiber is AFFIRMED.
The rejection of claims 21, 32, and 33 under 35 U.S.C. § 103(a) as
being unpatentable over Maby in view of Steinheiser is REVERSED.
The rejection of claim 27 under 35 U.S.C. § 103(a) as being
unpatentable over Maby in view of Schreiber and Scherer is REVERSED.
The rejection of claim 31 under 35 U.S.C. § 103(a) as being
unpatentable over Maby in view of Steinheiser, Schreiber, and Scherer is
AFFIRMED.
The rejection of claim 34 under 35 U.S.C. § 103(a) as being
unpatentable over Maby in view of Steinheiser and Scherer is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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