Ex Parte Von Thal

Patent Trial and Appeal Board

Mar 12, 2013

11208343 (P.T.A.B. Mar. 12, 2013)

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.
11/208,343 08/19/2005 German Von Thal 7784-000860 8906
27572 7590 03/12/2013
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
XAVIER, VALENTINA
ART UNIT PAPER NUMBER
3645
MAIL DATE DELIVERY MODE
03/12/2013 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 GERMAN VON THAL
____________________

Appeal 2011-000562
Application 11/208,343
Technology Center 3600
____________________

Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8, 10, 11, and 13-18 under 35 U.S.C. § 103(a) as unpatentable over
Adelson (US 2006/0102791 A1, pub. May 18, 2006), Wickman (US
6,250,287 B1, iss. Jun. 26, 2001), and Didur (US 6,648,027 B1, iss. Nov. 18,
2003). Ans. 4-6. Claims 9 and 12 have been cancelled. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “an airborne mobile platform
refueling boom having a flexible, pressure responsive end tube.” Spec.,
para. [0001]. Claims 1, 5, and 14 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A refueling apparatus for an airborne mobile platform,
comprising:
a first refueling tube in communication with a bottom
side of the airborne mobile platform; and
a second refueling tube having a first end in
communication with the first refueling tube, and a second end
for communicating with a nozzle receiver of a receiver mobile
platform, said second refueling tube being made from a rubber
material having a non-corrugated construction, to be able to
bend at said second end independently of said first end thereof,
and able to expand in its cross-sectional diameter to
accommodate an increased internal pressure within said second
refueling tube when a fuel pressure spike exceeding about 55
pounds per square inch is reached and exceeded when a sudden
stop in fuel flow through said second refueling tube occurs
within said second refueling tube.

1 Appellant identifies the real party in interest as The Boeing Company. Br.
2.
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ANALYSIS
The Examiner found that Adelson teaches all of the limitations of
independent claims 1, 5, and 14, except for the “second refueling tube” of
claim 1, the “flexible refueling tube” of claim 5, or the “third flexible
refueling tube” of claim 14 being able to expand to accommodate a pressure
spike of about 55 pounds per square inch and being made from a non-
corrugated rubber material. Clms. App’x.; Ans. 4-6. The Examiner found
that Didur teaches “a flexible rubber hose strong enough to withstand
pressures greater than 60 psi.” Ans. 4 (citing Didur, col. 4, ll. 55-66). The
Examiner further found that Wickman teaches “a fuel delivery system
having a flexible non-corrugated rubber hose.” Ans. 5. The Examiner
concluded that it would have been obvious to one having ordinary skill in
the art to use the hoses of Didur and Wickman “in place of the flexible tube
of Adelson in order to yield predictable results of strength and flexibility.”
Ans. 4, 5.
Appellant first contends that none of the references singly or in
combination teach “a flexible refueling boom tube that is able to expand in
response to a fuel pressure spike that exceeds about 55 psi.” Br. 7. As an
initial matter, we find Appellant’s arguments regarding Wickman’s failure to
teach a flexible conduit being sufficiently flexible to expand in response to a
fuel pressure spike (Br. 8-9, 13) unpersuasive because these arguments do
not address the rejection as articulated by the Examiner which relies on
Didur for this teaching, not Wickman. Ans. 7. Appellant also contends that
while Didur’s “flexible tube 10 is described as being strong enough to
withstand compressed air pressures supplied by source tires of . . . greater
than 60 psi,” “[t]here is absolutely no discussion or suggestion that the
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flexible transfer tube 10 is constructed so that its cross sectional diameter
can increase in response to experiencing a specified pressure spike.” Br. 9-
10. Appellant contends that “one would want just the opposite in this
application; i.e., that the flexible transfer tube 10 would not bulge in its cross
sectional diameter.” Id. at 10.
It is well established that claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function.
See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order
to satisfy the functional limitations in an apparatus claim, the prior art
apparatus must be capable of performing the claimed function. Id. at 1478.
In this case, the Examiner found that Didur’s flexible rubber hose 10 would
be able to expand during a pressure hike since “any flexible rubber hose as
taught by Didur would allow an expansion to occur in the cross-sectional
diameter.” Ans. 7. Appellant has not provided persuasive evidence to
support that Adelson’s device as modified by the teachings of Didur would
not be capable of performing the function of being able to expand in its
cross-sectional diameter to accommodate an increased internal pressure of
greater than about 55 psi. See Schreiber, 128 F.3d at 1478 (where Patent
Office has a reason to believe that a functional feature is an inherent
characteristic of the prior art, the burden can be shifted to an applicant to
show that the prior art structure is not capable of performing the claimed
function).
Appellant secondly contends that any motivation or desire to combine
the cited references “is completely absent” and the Examiner’s proposed
combination “has been made in hindsight using the pending claims as a road
map.” Br. 13, 14. The Supreme Court has rejected the rigid requirement of
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demonstrating a teaching, suggestion, or motivation to combine references in
order to show obviousness. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 419
(2007). In KSR, the Supreme Court stated that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 415-16.
Here, Appellant has not shown by persuasive evidence or reasoning that the
combined teachings of Adelson, Wickman, and Didur would not have
yielded predictable results. Appellant also has not established that the
combination of teachings would have been beyond the level of ordinary skill
in the art. Accordingly, we find that the Examiner’s proposed combination
of known elements to yield predictable results of strength and flexibility has
a rational underpinning and is not based on improper hindsight reasoning.
See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
Appellant thirdly contends that Wickman and Didur are non-
analogous art. More particularly, Appellant contends that Wickman is “so
far from the field of interest of the present application (i.e., refueling systems
for aircraft) that it is submitted that one of ordinary skill in this art just
would not have been looking to any patent like Wickman for ideas on how
to address a fuel pressure spike problem.” Br. 13. Appellant further
contends that Didur
being directed to a compressed air transfer device to transfer air
from one tire to another, is even less relevant to the subject
matter of the present application . . . [and] one of ordinary skill
in this art just would not have been looking to . . . Didur, to
address the fuel spike issue in an aircraft refueling system.
Id. at 14. The established precedent of our reviewing Court sets up a two-
fold test for determining whether art is analogous: “[‘] (1) whether the art is
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from the same field of endeavor, regardless of the problem addressed and,
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.’” In re Klein, 647 F.3d 1343, 1348 (Fed.
Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)); see
also Ans. 8.
One problem with which Appellant was involved is that of fuel
delivery. Ans. 8; Spec., para. [0001]. Wickman similarly teaches a fuel
delivery system. Ans. 8; Wickman, col. 1, ll. 7-8. Another problem with
which Appellant was involved is accommodation of pressure spikes in tubes.
Ans. 8; Spec., para. [0026]. Didur similarly teaches flexible transfer tubes
strong enough to withstand pressures of fluid greater than 30 psi, 60 psi, or
100 psi. Ans. 8; Didur, col. 4, l. 60 – col. 5, l. 2. Accordingly, we agree
with the Examiner that the teachings of Wickman and Didur are reasonably
pertinent to particular problems with which the inventor was involved and
that Wickman and Didur are not non-analogous art. Ans. 8.
Appellant fourthly contends that Adelson’s hose and drogue assembly
38, identified by the Examiner as the “second refueling tube” of claim 1, “is
not described as being retractable within the telescoping extension portion
18 to which it is coupled, and there is no suggestion that it could be
configured so as to be retracted within the telescoping extension portion 18.”
Clms. App’x; Br. 7.
This argument is unpersuasive since independent claim 1 does not
require that either the first or second refueling tube be retractable.
Unclaimed features cannot impart patentability to claims. In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998). Arguments must be commensurate in
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scope with the actual claim language. In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Appellant separately argues claims 5 and 14 as “expressly call[ing]
out the flexible tube as being retractable.” Br. 8. Claim 5 merely recites that
“said lower refueling boom tube [be] retractable into said upper refueling
boom tube.” Clms. App’x. The Examiner identified Adelson’s hose and
drogue assembly 38 as the “flexible refueling tube” of claim 5. The
Examiner identified Adelson’s tube 20 as the upper refueling tube and
Adelson’s tube 18 as the lower refueling tube and found that “the lower
refueling boom (18) is retractable into said upper refueling boom tube (20).”
Ans. 4, 7 (citing Adelson, para. [0018]). Accordingly, Appellant’s argument
that Adelson fails to teach the hose and drogue assembly 38 being
retractable is unpersuasive as it is not commensurate in scope with the actual
claim language, which does not require the flexible refueling tube to be
retractable. See Hiniker, 150 F.3d at 1369 and Self, 671 F.2d at 1348.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of independent claims 1 and 5 would have
been obvious over Adelson, Wickman, and Didur; and we sustain the
rejection of independent claims 1 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Adelson, Wickman, and Didur. Appellant does not
provide separate arguments for the dependent claims. Therefore, we also
sustain the rejection of dependent claims 2-4, 6-8, 10, 11, and 13.
In contrast, claim 14 recites “a third flexible refueling tube comprised
of a rubber material . . . and retractable within the second flexible refueling
tube.” Clms. App’x. The Examiner has not made any finding that the third
flexible refueling tube (identified by the Examiner as hose and drogue
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assembly 38 (Ans. 5)) of claim 14 is retractable. Neither has the Examiner
articulated a persuasive reason why it would have been obvious to modify
Adelson’s hose and drogue assembly 38 to meet this limitation.
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of independent claim 14 would have been
obvious over Adelson, Wickman, and Didur; and we do not sustain the
rejection of independent claim 14 and its dependent claims 15-18 under 35
U.S.C. § 103(a) as unpatentable over Adelson, Wickman, and Didur.

DECISION
The Examiner’s rejection of claims 1-8, 10, 11, and 13 under 35
U.S.C. § 103(a) is AFFIRMED.
The Examiner’s rejection of claims 14-18 under 35 U.S.C. § 103(a) is
REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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