Lufthansa Technik AG

Patent Trials and Appeals Board

Dec 3, 2021

2021003855 (P.T.A.B. Dec. 3, 2021)

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.
16/772,832 06/15/2020 Wolfgang Sutter 817652 8627
95683 7590 12/03/2021
Leydig, Voit & Mayer, Ltd. (Frankfurt office)
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
EXAMINER
LUGO, CARLOS
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
12/03/2021 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):
chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WOLFGANG SUTTER and MARTIN OLESCH
____________

Appeal 2021-003855
Application 16/772,832
Technology Center 3600
____________

Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
JEREMY M. PLENZLER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–14 and 16–21. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies LUFTHANSA TECHNIK AG as the
real party in interest. Appeal Br. 1.
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CLAIMS
“The invention relates to a locking device which can be embedded
flush into a surface and is intended for locking flaps or the like, in particular
for aircraft.” Spec. ¶ 2.
Claims 1–11 and 16–21 are directed to a locking device, and claims
12–14 are directed to a method for retrofitting a locking device. Claims 1
and 12 are independent. Appeal Br. 17–19 (Claims App.). Claim 1,
reproduced below, illustrates the claimed subject matter:
1. A locking device which can be embedded flush into a
surface and is intended for locking flaps of an aircraft, the
locking device comprising a plate and a locking element, which
is actuatable thereby,
wherein, in a locked state of the locking device, the plate
is flush with the surface and, in an open state, the plate projects
from the surface, and
wherein at least some faces of the locking device, which
are situated on an inside with respect to the surface in the
locked state and are visible only in the open state, are coated
with photoluminescent material.
Id. at. 17.

REJECTIONS ON APPEAL
Claims 1, 2, and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bourne (US 5,620,212, issued Apr. 15, 1997), Rozo (US
7,552,954 B2, issued June 30, 2009), and Presley (US 8,156,671 B2, issued
Apr. 17, 2012). Final Act. 2.
Claims 3–11, 13, 14, and 16–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Bourne, Rozo, Presley, and Connew (US 4,998,391,
issued March 12, 1991). Final Act. 5.
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Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over
Bourne, Rozo, Presley, and Liang (US 7,699,365 B2, issued Apr. 20, 2010).
Final Act. 6.

ANALYSIS
Claims 1, 2, and 12 over Bourne, Rozo, and Presley
Claims 1 and 2
In rejecting claim 1, the Examiner finds that Bourne discloses a
locking device which can be embedded flush into a surface, comprising a
plate (handle 16) and a locking element (catch 23), and that in a locked state
of the locking device, the plate is flush with the surface, and in an open state,
the plate projects from the surface. Final Act. 2–3 (see Examiner’s
annotated Figs. 2 and 3 of Bourne). The Examiner concedes that Bourne
does not disclose that “at least some faces of the locking device, which are
situated on an inside with respect to the surface in the locked state and are
visible only in the open state, are coated with photoluminescent material,”
as claimed. Id. at 3 (emphasis added).
The Examiner finds that Rozo discloses a member (handle 20) which
is flush with a surface in a closed state and projects from the surface in an
open state. Final Act. 3–4 (see Examiner’s annotated Fig. 8 of Rozo
showing unlatched position). The Examiner finds that Rozo teaches it is
known in the art to provide at least some faces (at visual indicators 80) of
handle 20 that, in the locked state, are situated on an inside with respect to
the surface, and which are visible only in the open state, with a color to
indicate a position of the member. Id. at 4. The Examiner therefore
concludes that, in view of Rozo, it would have been obvious to one of
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ordinary skill in the art to provide at least some faces of Bourne’s locking
device with an indicator to indicate a position of the member. Id.
The Examiner further finds that Presley teaches providing a
photoluminescent coating material on a desired surface 32 of a member
(touch bar 16) “to light any type of color on the desired surface.” Final Act.
4 (citing Presley col. 4, l. 33–col. 5, l. 5). The Examiner explains, “Presley
is only used to demonstrate that it is well known in the art to use a
photoluminescent coating material as an indicator for a user when there is
low light or dark conditions.” Ans. 9. The Examiner concludes that it
would have further been obvious in view of Presley to provide the added
indicator as a visible photoluminescent coating material to be able to see the
indicator in a dark place. Final Act. 5.
Appellant asserts, “the claimed invention uses photoluminescent
material in an unexpected way—in a location that does not normally receive
ambient light—in order to easy [sic] have recognition of the locking device
in an opened state.” Appeal Br. 8 (citing Spec. ¶¶ 22–24) (bold face
omitted). Appellant contends that the Examiner’s rationale for combining
Presley with Bourne and Rozo to change the color of the indicator to a
photoluminescent coating material fails to consider the claimed location of
the “faces.” Id. at 11. Appellant asserts, “[t]he claimed location of the
photoluminescent coating demands strong consideration in the present case
because photoluminescent coatings require being exposed to ambient light to
work. Indeed, Presley itself makes clear this is an important consideration.”
Id.
Appellant contends that “Presley teaches using a photoluminescent
material on a portion of an exit device (namely a touch bar) that is
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specifically on an outside surface such that it can be energized by exposure
to ambient light.” Appeal Br. 10 (citing Presley, col. 4, l. 33–col. 5, l. 5).
According to Appellant, using the photoluminescent material on the front of
a touch bar of an emergency exit is a “design requirement,” “because it
makes the photoluminescent element be permanently directed towards a
room; and thus, constantly charged by the room/ambient lighting.” Id. at 11
(citing Presley, col. 1, ll. 58–68, col. 2, ll. 13–21, col. 3, l. 65–col. 4, l. 3).
In contrast, Appellant submits:
In the case of the photoluminescent coating arranged
according to the present invention, a default state of charging of
the photoluminescent coating is not provided because the faces
in question are located inside the device in the locked state—
i.e., not visible and thus not chargeable by ambient light.
However, a counter intuitive insight of the present inventors—
and something that is not disclosed or suggested by the prior
art—is that a photoluminescent coating on such faces can still
be utilized for maintenance-operated locking elements on the
outer hull of the aircraft at dusk and even in the dark[.]
Appeal Br. 12 (citing Spec. ¶ 22) (bold face omitted).
Appellant’s contentions are unpersuasive.
Rozo discloses providing a colored indicator on one or more sides of a
handle of a latch handle assembly to allow the unlatched or latched position
to be readily ascertained. See Rozo, col. 3, ll. 52–59, Fig. 8. The indicator
“may be formed from various types of paints, including a reflective paint, a
red paint, a red reflective paint, or various types and colors of indicators.
See id. at col. 3, ll. 60–65, Fig. 8 (emphasis added). Although Rozo does not
explicitly mention photoluminescent material, Rozo does not limit the type
of paint, or the type and color of the indicator.
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Presley discloses:
Photoluminescent materials contain inorganic phosphorus and
pigments that absorb ambient light. In darkness, the
photoluminescent material produces a sustained visible yellow-
green, red or blue glow which provides sufficient illumination
for guiding someone out of a darkened area.
See Presley, col. 1, ll. 33–39. Presley discloses using a photoluminescent
material on at least a portion of an exit device to provide a light source in
low-light or dark conditions. See Presley, col. 3, ll. 65–67. According to
Presley, the photoluminescent material can be provided for “the touch bar
16, or any other component of the exit device 10.” See id. at col. 4, ll. 52–54
(bold face omitted, emphasis added). In view of this disclosure, we disagree
with Appellant that using the photoluminescent material on the front of a
touch bar of an emergency exit is a “design requirement.” Appeal Br. 11.
As shown in Figure 1 of Presley, exit device 10 includes other components
than touch bar 16, and Presley teaches that the photoluminescent material
can be provided on any of these other components. This disclosure
contradicts Appellant’s assertion.
As to Appellant’s assertion that “[t]he claimed location of the
photoluminescent coating demands strong consideration in the present case
because photoluminescent coatings require being exposed to ambient light to
work,” we are unpersuaded that Presley’s photoluminescent material would
not be exposed to sufficient radiation, in the combination, to provide
photoluminescence in low-light or dark conditions. Appeal Br. 11. First,
Appellant’s Specification discloses that locking devices that can be activated
without tools, of the kind disclosed in Bourne (i.e., US 5,620,212), are used
with “maintenance openings that have to be opened more frequently.” See
Spec. ¶¶ 3, 4. A person of ordinary skill in the art would reasonably expect
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that opening the maintenance openings “more frequently” would increase
the amount of exposure of Bourne’s locking device to ambient light, which
would be absorbed by Richert’s photoluminescent material.
Second, Appellant’s Specification discloses, “in twilight, the ambient
light that is still available may be sufficient to activate the photo luminescent
property of the coating, with the result that it begins to glow in its luminous
color and is therefore easily recognizable.” See Spec. ¶ 22. We further note
that the Specification discloses zinc sulfide compounds and/or strontium
aluminate compounds as exemplary photoluminescent materials. See id.
¶ 30. Presley discloses that these same photoluminescent materials can be
used. See Presley, col. 4, l. 62–66. Accordingly, one of ordinary skill in the
art would reasonably have expected Presley’s photoluminescent materials to
likewise be exposed to ambient light, and consequently glow, in twilight.
Third, as to Appellant’s contention that “locking devices used to
secure flaps are often opened only for maintenance purposes,” claim 1 is not
directed to a method of using the locking device. Appeal Br. 12 (Claims
App.). Claim 1 does not recite any limitation as to when the locking device
is to be opened, or how the photoluminescent material is to be energized.
Bourne’s locking device is used with “maintenance openings that have to be
opened more frequently.” See Spec. ¶¶ 3, 4. In the combination, when the
locking device is in the open state, the photoluminescent material would be
exposed to, and consequently absorb, ambient light in twilight or daylight.
Moreover, Appellant’s Specification discloses that photoluminescent
materials generally have a “natural color, which is easily recognizable in
daylight.” See Spec. ¶ 21. Accordingly, in the combination, the
photoluminescent material would be expected to be “easily recognizable” in
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daylight, which would provide a visual indication that the locking device is
in the open state, at such times.
For the foregoing reasons, we are unpersuaded that the Examiner
erred in rejecting claim 1 as being unpatentable over Bourne, Rozo, and
Presley. Accordingly, we sustain the rejection of claim 1, and claim 2
depending therefrom and not separately argued.
Claim 12
Appellant contends that the method recited in claim 12 is patentable
for substantially the same reasons as claim 1. Appeal Br. 13. As Appellant
has not apprised us of any deficiency in the rejection of claim 1, we sustain
the rejection of claim 12 as being unpatentable over Bourne, Rozo, and
Presley for the same reasons as those for claim 1.

Claims 3–11, 13, 14, and 16–20 over Bourne, Rozo, Presley, and Connew
Claims 3–6, 13, and 14
Appellant contends that Connew fails to cure the deficiency in the
rejection of claims 1 and 12. Appeal Br. 14. As Appellant has not apprised
us of error for claim 1 or 12, we sustain the rejection of dependent claims 3–
6, 13, and 14 as being unpatentable over Bourne, Rozo, Presley, and
Connew for the same reasons as those for claims 1 and 12.
Claims 7–11 and 16–20
Claims 7–11 and 16–20 depend ultimately from claim 1 or 12, and
recite limitations pertaining to the composition, thickness, and properties of
the coating. See Appeal Br. 17–19 (Claims App.).

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For claims 7–11 and 16–20, the Examiner submits:
With respect to the limitations of claims 7–11 and 16–20,
the combination is capable of presenting the claimed
percentages and dimensions. Applicant is reminded that it
would have been obvious to one having ordinary skill in the art
at the time the invention was made to utilize the claimed
quantitative value, since it has been held that discovering an
optimum value of a result effective variable involves only
routine skill in the art.
Final Act. 6.
Appellant contends that the Examiner’s “result effective variable”
analysis fails to establish a factual basis that each claimed element “recites a
particular parameter this is recognized in the prior art as a variable that
achieves a recognized result.” Appeal Br. 14. The Examiner responds, “[i]n
the specification, paragraphs 28–32 and 45–47, the applicant recites that it is
preferred to have those values. This statement from the applicant suggest[s]
that the value[s] claimed [are] known.” Ans. 12.
We agree with Appellant that the Examiner fails to provide sufficient
findings and reasoning to support a result effective variable position with
respect to claims 7, 8, 10, 11, and 16–20. The Examiner did not identify
sufficient evidence that the limitations recited in these claims were
recognized in the prior art as a result-effective variable. See In re Antonie,
559 F.2d 618, 620 (CCPA 1977) (finding no disclosure of the relationship
between the recited variable and the result in the prior art). In fact, the
Examiner makes no findings in support of these variables being known to be
result-effective variables. Accordingly, we agree with Appellant that the
Examiner did not provide an adequate reason why one skilled in the art
would have optimized the values of the recited variables in the proposed
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combination to have the numerical values recited in claims 7, 8, 10, 11, and
16–20. Nor has Examiner established that these values were known.
However, claim 9 recites that “the coating comprises zinc sulfide
compounds or strontium aluminate compounds.” Appeal Br. 18 (Claims
App.). Presley discloses these compounds as exemplary known
photoluminescent materials that can be used to provide lighting, and the
Examiner cited this disclosure. See Presley, col. 4, ll. 62–66; see Final Act.
4. We agree with the Examiner that it would have been obvious to select the
claimed compounds in the combination in view of Presley.
Accordingly, we sustain the rejection of claim 9, but not the rejection
of claims 7, 8, 10, 11, and 16–20, as being unpatentable over Bourne, Rozo,
Presley, and Connew.

Claim 21 over Bourne, Rozo, Presley, and Liang
Claim 21 depends from claim 1 and recites, in part, “wherein the
locking device comprises a locking element arranged on under side of the
plate, the locking element situated being arranged at the inside with respect
to the surface in the locked state, the locking element being coated with the
photo luminescent material.” Appeal Br. 19 (Claims App.). The Examiner
finds that Liang teaches providing colored surfaces (first color 32, second
color 33 of signaling means 28) on a locking element so as to be only visible
when the locking element is in a respective position. Final Act. 7. The
Examiner concludes that it would have been obvious to modify the
combination of Bourne, Rozo, and Presley to provide the coating on the
locking element, as taught by Liang, to indicate a position or location of the
locking element and be able to see the indicator in a dark place. Id.
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Appellant contends that Liang does not cure the deficiency in the
rejection of claim 1:
the teaching of providing colored surfaces on a locking element
does not cure the above-described issues of using a
photoluminescent material in an [sic] counter-intuitive location
where there is no reasonable expectation that it will work due to
having insufficient ambient light to allow the material to
luminesce.
Appeal Br. 15. This contention does not apprise us of error in the rejection
of claim 1. Thus, we sustain the rejection of claim 21 as being unpatentable
over Bourne, Rozo, Presley, and Liang for the same reasons as for claim 1.

CONCLUSION
We affirm the rejections of claims 1–6, 9, 12–14, and 21, and reverse
the rejections of claims 7, 8, 10, 11, and 16–20.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 12 103 Bourne, Rozo,
Presley
1, 2, 12
3–11, 13,
14, 16–20
103 Bourne, Rozo,
Presley, Connew
3–6, 9, 13,
14
7, 8, 10, 11,
16–20
21 103 Bourne, Rozo,
Presley, Liang
21
Overall
Outcome
1–6, 9,
12–14, 21
7, 8, 10, 11,
16–20

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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