MARKS, GEOFFREY W.

Patent Trials and Appeals Board

Oct 30, 2019

15811345 - (D) (P.T.A.B. Oct. 30, 2019)

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.
15/811,345 11/13/2017 GEOFFREY W. MARKS NGC-00251(009671-0030) 9433
64728 7590 10/30/2019
SHUMAKER, LOOP & KENDRICK, LLP
NORTHROP GRUMMAN CORPORATION
42690 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304
EXAMINER
WONG, JESSICA BOWEN
ART UNIT PAPER NUMBER
3644
NOTIFICATION DATE DELIVERY MODE
10/30/2019 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):
CCARDINALE@shumaker.com
cgolupski@shumaker.com
tlopez@shumaker.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEOFFREY W. MARKS

Appeal 2019-001898
Application 15/811,345
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Northrop
Grumman Systems Corporation. Appeal Br. 3.
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BACKGROUND
The Specification discloses:
This invention relates to a telescopic boom and reflector
assembly deployable from a spacecraft and, more particularly, to
a telescopic boom and reflector assembly deployable from a
spacecraft, where the assembly is configured so that the boom is
deployed from the spacecraft and the reflector can be unfurled
prior to the boom being extended in a telescoping manner.
Spec. ¶ 1.
CLAIMS
Claims 1, 11, and 14 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A boom and reflector assembly for a spacecraft, said
assembly comprising:
a telescopic boom including a plurality of tubular sections
including a base section where the sections are nested together
within the base section when the boom is in a stowed position;
and
a reflector including an outer truss structure having truss
rods that are foldable to allow the reflector to be collapsed into a
stowed configuration, said reflector being mounted to only an
end face of an outer one of the tubular sections having a smallest
diameter by a support member, wherein the assembly is
configured to be deployed from the spacecraft by releasing the
boom in a telescoping manner.
Appeal Br. 15.
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REJECTIONS
1. The Examiner rejects claims 3, 5, 7, and 14–202 under 35 U.S.C.
§ 112(b) as indefinite.
2. The Examiner rejects claims 1–3 and 5–20 under 35 U.S.C. § 103 as
unpatentable over Cover3 in view of Mobrem.4
DISCUSSION
Rejection 1
Claim 3
With respect to claim 3, the Examiner first finds the claim indefinite
because “it is unclear whether the wrist hinge is the support member of
claim 1 or not.” Non-Final Act. 3. We are persuaded of reversible error in
this aspect of the rejection by Appellant’s argument. The test for
definiteness under 35 U.S.C. § 112(b), is whether “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). In light of the Specification,
in which the support member of claim 1 and the wrist hinge of claim 3 are
only described as separate elements, we agree with Appellant that one of
ordinary skill in the art would understand that these are separate elements in
the claims. See, e.g., Spec. ¶¶ 9, 10; see also Appeal Br. 8–9.

2 The Examiner has partially withdrawn the rejection of claim 3 and
completely withdrawn the rejection of claim 11. See Ans. 3. Because
claims 12 and 13 depend from claim 11 and appear to have been rejected
based on this dependence, we consider this rejection to have been withdrawn
with respect to claims 12 and 13 as well.
3 Cover, US 3,576,566, iss. Apr. 27, 1971.
4 Mobrem, US 2008/0111031 Al, pub. May 15, 2008.
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Regarding claim 3, the Examiner also finds that “it is unclear whether
‘the outer tubular section’ is the same as the ‘outer one of the tubular
sections having a smallest diameter’ or not.” Non-Final Act. 3. Appellant
asserts “that anyone of any skill in the art would easily understand that the
‘outer one of the tubular sections having a smallest diameter’ is the same as
the ‘outer tubular section’ in view of the description in the specification.”
Appeal Br. 9. Appellant also explains that if “the boom is collapsed all of
the boom sections are positioned within an outer boom section having a
largest diameter and the inner most boom section has the smallest diameter,
and that when the boom is expanded the outer most boom section is the one
with the smallest diameter.” Reply Br. 2.
We agree with the Examiner. We note that the language used in
claim 1 is “an outer one of the tubular sections having a smallest diameter”
and the language used in claim 3 is “the outer tubular section.” Further, as
Appellant’s explanation shows, one would understand that an “outer”
section of the boom may refer to a different section depending on whether
the boom is deployed or stowed. Thus, given that the reference in claim 3
does not use the same language as claim 1 and that, by Appellant’s own
admission, in the stowed state, the section of the boom with the largest
diameter may be considered the “outer boom section,” it is not clear that
“the outer tubular section” is referring back to “an outer one of the tubular
sections having a smallest diameter.” Accordingly, we sustain this portion
of the rejection of claim 3 as indefinite.
The Examiner further finds with respect to claim 3 that “it is unclear
whether the reflector is merely mounted to the outer tubular section or
specifically the end face of the outer tubular section having the smallest
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diameter.” Non-Final Act. 4. Claim 1 specifically recites that the reflector
is “mounted to only an end face of an outer one of the tubular sections
having a smallest diameter by a support member.” In light of the discussion
immediately above, we agree with the Examiner that it is unclear whether
the recited wrist hinge must also be mounted to “only an end face of the
outer one of the tubular sections having the smallest diameter,” as claimed.
Accordingly, we sustain this portion of the rejection of claim 3 as indefinite.
We sustain the rejection of claim 3 as indefinite for the reasons
discussed above. Claim 5 is rejected based on its dependence from claim 3,
and thus, we also sustain the rejection of claim 5.
Claim 7
With respect to claim 7, the Examiner finds that there is insufficient
antecedent basis for “the stowing cradle” and that “it is unclear whether the
‘an outer one of the tubular sections’ is the same ‘outer one of the tubular
sections having a smallest diameter’ or not.” Non-Final Act. 4. Appellant
notes that this claim “should have depended from dependent claim 2 to give
the stowing cradle proper antecedent basis and ‘an outer one of the tubular
sections’ should have been ‘the outer one of the tubular sections.’” Appeal
Br. 9. Thus, Appellant indicates agreement with the Examiner’s assessment
of the claim, and therefore, we sustain the rejection of claim 7 here.
Claim 14
Regarding claim 14, the Examiner finds that the limitation “the
stowed position” in line 7 lacks sufficient antecedent basis because “the
stowed position of line 4 refers to the boom instead of the reflector.” Non-
Final Act. 4. In response, “Appellant submits that ‘the stowed position’ can
be easily changed to ‘a stowed position’ upon disposition of this appeal.”
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Appeal Br. 10. Thus, Appellant indicates agreement with the Examiner’s
assessment of the claim, and therefore, we sustain the rejection of claim 14
here. We also sustain the rejection of claims 15–20 based on their
dependence from claim 14.
Claim 17
Finally with respect to claim 17, the Examiner finds that “it is unclear
whether ‘the outer tubular section’ is the same as the ‘outer one of the
tubular sections having a smallest diameter’ or not since ‘an outer tubular
section’ may be any tubular section that [is not] . . . the base section.” Non-
Final Act. 17. We are not persuaded that the claim is indefinite. In contrast
to the discussion above with respect to claim 3, claim 17 recites “the outer
one of the tubular sections” rather than “the outer tubular section.” Appeal
Br. 18. We find that one of ordinary skill in the art would understand that
this refers back to the recitation of “an outer one of the tubular sections” in
claim 14. Accordingly, we do not sustain the separate rejection of claim 17
as indefinite.
Rejection 2
Claim 1
With respect to claim 1, the Examiner finds that Cover teaches a
boom and reflector assembly as claimed except that Cover “does not specify
the reflector mounted to only a single end face of a single boom.” Non-Final
Act. 5 (citing Cover Figs. 1–4, 10; col. 2, l. 75–col. 3, l. 73). The Examiner
relies on Mobrem as teaching “a membrane deployable from a spacecraft via
only a single telescopic boom.” Id. (citing Mobrem Figs. 1, 2). The
Examiner concludes that “it would have been obvious to one having
ordinary skill in the art at the time of the invention, to provide the assembly
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of Cover with only a single telescopic boom scenario, in order to save space
onboard the aircraft by reducing the number of booms.” Id. In response to
Appellant’s arguments, the Examiner finds that Cover shows that “ball 66 is
mounted to an end face of an outer one of the sections [of the boom].”
Ans. 5 (citing Cover Figs. 8, 10; col. 3, ll. 58–60, 65–66). The Examiner
also finds that Cover depicts end faces for each section of the boom, as
shown in Figure 10. Id.
To the extent consistent with our analysis below, we agree with and
adopt the Examiner’s findings and conclusion with respect to claim 1. See
Non-Final Act. 5; see also Ans. 5–6. We are not persuaded of reversible
error by Appellant’s arguments.
Appellant argues that the art of record does not teach or suggest a
reflector that is mounted only to an end face of the outer tubular section
having a smallest diameter. Appeal Br. 11. More specifically, Appellant
asserts that Cover does not state that the ball 66 is mounted to an end face of
an outer section of a boom because Figure 8 does not show the strut sections
and Figure 10 does not show end faces on sections 70 of the strut. Appeal
Br. 11. We disagree with Appellant’s contention that Cover does not at least
suggest a support member that is attached only to the end face of an outer
tubular member as required by the claim. We agree with the Examiner that
Cover’s Figure 10 shows a strut with tubular sections 70 having end
faces 72. See Ans. 5. Cover discloses that Figure 10 depicts an outer most
section of the strut having a ball 66 at the top of this section and a seal 74 at
the bottom of this section. See Cover Fig. 10; col. 3, ll. 65–68. Although we
agree with Appellant that Cover does not expressly disclose how the ball is
attached to this uppermost section, we disagree with Appellant’s contention
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that it “is probably attached internal to the section, and not an end face of the
section.” Reply Br. 3. Rather, we find that this Figure and the
accompanying description thereof at least suggests that the ball is attached to
an end face of this section, as found by the Examiner. In particular, the
picture depicts the ball resting atop the upper most section of the strut and
the description of the Figure does not indicate that this uppermost section
includes flanges 72 with an opening therein, as used with the lower sections
of the strut. Further, the presence of the seal 74 at the bottom of this section
rather than the top of this section would suggest to one of ordinary skill in
the art that connection between the ball and the upper end of this section is
not similar to the attachment between this section and the section below.
Further, the lower portions of the strut are configured so that the strut is
collapsible, however, there is no indication that the ball portion is also
collapsible into the upper section of the strut. This provides further
indication that the ball is not likely to be attached to an internal portion of
the upper section, as Appellant contends.
Overall, we find that the art of record, and specifically Cover, at least
suggests that the ball 66, which has been identified as the claimed support
member by the Examiner, is attached to an end face of the upper section of
the strut, as depicted in Cover’s Figure 10. Because Appellant does not
otherwise explain why the combination of art “does not teach or suggest a
reflector that is mounted to only to an end face of an outer” tubular section,
we are not persuaded of reversible error. Appeal Br. 12. Accordingly, we
sustain the rejection of claim 1.
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Claim 11
Although Appellant initially grouped claim 11 with claim 1 and did
not provide separate arguments regarding this claim, in the Reply Brief
Appellant argues that “neither Cove [sic] nor Mobrem teach or suggest a
stowing cradle, root hinge or wrist hinge, especially in the configuration and
operation as set forth in independent claim 11.” Reply Br. 4. However,
Appellant fails to address the specific findings made by the Examiner with
respect to this claim. See Non-Final Act. 9. Without further explanation, we
are not persuaded of reversible error in the Examiner’s findings and
conclusion, and thus, we sustain the rejection of this claim.
Claim 14
Although Appellant initially grouped claim 14 with claim 1 and did
not provide separate arguments regarding this claim, in the Reply Brief
Appellant argues that the art of record does not teach the specific steps of
deploying the boom and reflector as set forth in this claim. See Reply Br. 3–
4. However, Appellant fails to address the specific findings made by the
Examiner with respect to this claim. See Non-Final Act. 10. Thus, without
further explanation, we are not persuaded of reversible error, and we sustain
the rejection of this claim.
Claims 2, 3, 5–10, 12, 13, and 15–20
With respect to these claims, Appellant argues only that the Examiner
has made “clear admission[s]” that certain elements of the claim are not
taught by either Cover or Mobrem. See Appeal Br. 12–13. However, the
Examiner makes clear that although certain elements are not present in
Cover or Mobrem, the Examiner provides additional evidence “supporting
official notice for the obviousness of those dependent recitations.” Ans. 6;
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see also Non-Final Act. 5–13. In reply, Appellant argues that elements in
the claims “are not taught in the art of record as claimed, and the Examiner
has not identified where in the art that these elements having the specific
claimed operation can be found.” Reply Br. 4. Appellant also asserts that
“the Examiner has merely stated that these elements are obvious.” Id.
We disagree and are not persuaded of error. As noted, the Examiner
clarifies that any additional art provided in the rejection was provided as
evidence with respect to the Examiner’s taking official notice that certain
claim elements were well known in the art. See, e.g., Non-Final Act. 5–6.
Further, with respect to each rejection of the dependent claims, the Examiner
does more than “merely” state that the elements are obvious. For example,
with respect to claim 2, the Examiner finds that the use of stowing cradles
and root hinges is well known in the art and the Examiner concludes that the
use of these elements would have been obvious based on the well-known
functions and effects of cradles and root hinges and that the use of these
elements would have yielded predictable results. Id. Without further
explanation from Appellant, we fail to see any reversible error in the
Examiner’s findings or analysis.
Accordingly, we sustain the rejection of dependent claims 2, 3, 5–10,
12, 13, and 15–20.

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CONCLUSION
We AFFIRM the rejections of claims 1–3 and 5–20.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3, 5, 7, 14–
20
112(b) Indefiniteness 3, 5, 7, 14–
20

1–3, 5–20 103 Cover, Mobrem 1–3, 5–20
Overall
Outcome
1–3, 5–20

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

AFFIRMED