2019000502 (P.T.A.B. Aug. 3, 2020)

Michael Kordt

Patent Trials and Appeals BoardAug 3, 2020

2019000502 (P.T.A.B. Aug. 3, 2020)

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. 13/641,918 12/19/2012 Michael Kordt 4404.91784 1093 24978 7590 08/03/2020 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 EXAMINER XAVIER, VALENTINA ART UNIT PAPER NUMBER 3642 NOTIFICATION DATE DELIVERY MODE 08/03/2020 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): docket@gbclaw.net ptomail@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL KORDT Appeal 2019-000502 Application 13/641,918 Technology Center 3600 ____________ Before CHARLES N. GREENHUT, MICHAEL L. WOODS, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision (entered Oct. 6, 2017, “Final Act.”) to reject claims 16– 28 and 30. Claims 1–15 have been cancelled and claim 29 has been withdrawn. 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 the real party in interest as “Airbus Operations GmbH.” Appeal Br. 2. Appeal 2019-000502 Application 13/641,918 2 CLAIMED SUBJECT MATTER The disclosed subject matter relates to “a system and a method for minimizing buffeting loads in the case of an aircraft.” Spec. ¶ 1. “Buffeting,” according to the Specification, “is generally identified as a shaking or vibrating of airfoils.” Id. ¶ 3. The Specification describes “buffeting” generally as follows. When the speed of an aircraft decreases, to maintain the lift, the angle of its airfoils is increased to a degree “in which a relatively low-energy boundary layer on the upper side of the wing can no longer overcome the pressure maximum after passing through a pressure minimum.” Id. “The flow then separates upstream of the rear edge of the wing” and “[t]he unstable separation point can rapidly drift backwards and forwards in a specific region.” Id. This drifting movement of the separation point can cause “the position and magnitude of the resulting compressive force [to] constantly chang[e]” and “produce[] a turbulent wake downstream of the wing.” Id. As a result, the tailplane (also known as a horizontal stabilizer) may undergo irregular vibrations, which are called buffeting (vibrations). Id. These vibrations can create mechanical stresses that must be considered in the construction of an aircraft and can cause discomfort to the passengers. Id. Claims 16 and 30 are independent; claims 17–28 depend from claim 16. Claim 16 is illustrative of the claims on appeal and is reproduced below. 16. A system for minimizing buffeting in an aircraft, comprising buffeting load control elements located in airfoils of the aircraft which can be at least partly extended out of the airfoils by a control to reduce buffeting loads acting on the aircraft, wherein the buffeting load control elements are fin- shaped webs. Appeal 2019-000502 Application 13/641,918 3 EVIDENCE Name Reference Date Kerker US 2,885,161 May 5, 1959 Schülein US 2010/0243818 A1 Sept. 30, 2010 REJECTIONS I. Claims 16, 18, 20, and 30 are rejected under 35 U.S.C. § 102(b) as anticipated by Kerker. II. Claims 17, 19, and 21–28 are rejected under 35 U.S.C. § 103(a) as obvious in view of Kerker and Schülein. ANALYSIS I. Anticipation of Claims 16, 18, 20, and 30 The Examiner found Kerker to disclose each of the recited elements of claims 16, 18, 20, and 30. Final Act. 2. In particular, the Examiner found Kerker discloses, “stability control system in an aircraft, comprising buffeting load control elements (16) located in airfoils (1, 2) of the aircraft which can be at least partly extended out of the airfoils by a control . . . to reduce buffeting loads acting on the aircraft, wherein the buffeting load control elements are fin-shaped.” Id. (citing Kerker, 4:20, Figs. 1–5). The Examiner further found that, because “[t]he structure disclosed in the claims do not differ from the structure disclosed in Kerker,” “any buffeting loads being minimized . . . by the wing in the applicant’s invention would be similar to that of Kerker.” Id. at 4. The Examiner found that “[w]hile Kerker does not explicitly discuss minimizing buffeting loads, the structure taught by Kerker would result in the same effect since it is similar to that of the instant application.” Id. Appeal 2019-000502 Application 13/641,918 4 Appellant argues claims 16, 18, 20, and 30 collectively. See Appeal Br. 7–9. We select independent claim 16 for review, with the remaining claims (i.e., claims 18, 20, and 30) standing or falling together with claim 16. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant has waived, however, all other arguments of error that it could have raised regarding these claims. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002). Appellant contends, “Kerker does not disclose ‘buffeting load control elements located in airfoils of the aircraft which can be at least partly extended out of the airfoils by a control to reduce buffeting loads acting on the aircraft, wherein the buffeting load control elements are finshaped webs’ as required by Claim 16.” Appeal Br. 7. Appellant does not rely on any structural differences between the elements recited in claim 16 and the structures identified by the Examiner from Kerker, but instead argues that the structure Kerker discloses serves a different purpose than controlling buffeting loads. See id. at 7–9. In particular, Appellant argues, “Kerker does not provide a device, in which device load forces caused by buffeting are reduced as far as possible independently of a flight maneuver and independently of simultaneous gust effects in any flight phase of the aircraft.” Id. at 8–9 (emphasis omitted). Appellant argues that a “person of ordinary skill will be readily aware that the general configuration of a buffeting load control element must fulfill different requirements than a longitudinal stability control element such as described by Kerker, e.g. with respect to specific position, orientation, material etc. and depending on the type of aircraft.” Id. at 9. According to Appellant, “the claimed buffeting load control element needs to be partially or fully extended out of an airfoil under different conditions and Appeal 2019-000502 Application 13/641,918 5 requirements, e.g. with respect to flight phase and flight maneuvers and so on, because the physical causes are different and consequently also the actions to be taken to prevent adverse effects or to counteract certain effects are different.” Id. In the Answer, the Examiner counters that “alleviating instability on an airframe would inevitably minimize buffeting loads.” Ans. 3. In addition, the Examiner asserts that “[t]he structure and operation of the control elements (16) of Kerker is not distinct from that of the instant application, and would be similarly capable of reducing buffeting loads as claimed.” Id. at 4. The Examiner notes that “Appellant has also failed to present evidence in the Appeal Brief with reasons as to why the structure of Kerker, while being capable of alleviating longitudinal instability on the airframe, would not reduce buffeting loads acting on the airframe.” Id. Finally, “in response to [A]ppellant’s argument that the references fail to show certain features of Appellant’s invention, it is noted [by the Examiner] that the features upon which Appellant relies (i.e., load forces caused by buffeting being reduced independently of a flight maneuver or gust effects in any flight phase) are not recited in the rejected claim(s).” Id. Appellant replies by arguing that there is no support for the Examiner’s suggestion that minimizing buffeting loads is an inevitable result of the structure disclosed by Kerker. Reply Br. 2. This is so, according to Appellant, because “the stability control of Kerker, i.e. either longitudinal, directional or lateral stability control of an aircraft as such, is an entirely different aspect of aeroelasticity than buffeting control, i.e. control of dynamic high-frequency oscillations of airfoils.” Id. Appeal 2019-000502 Application 13/641,918 6 Having considered the evidence and arguments, we do not find Appellant to have apprised us that an error exists with the Examiner’s anticipation rejection. We find the facts and Appellant’s argument regarding this rejection to be analogous to those raised and rejected in In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997). In Schreiber, there was no dispute that the structural limitations recited by the claim were found in the prior art reference. Schreiber, 128 F.3d at 1477. Instead, Schreiber argued that the prior art reference, Harz, did not disclose structure that can be used in the recited manner (i.e., to dispense popcorn). Id. The Federal Circuit held that “[a]lthough Schreiber is correct that Harz does not address the use of the disclosed structure to dispense popcorn, the absence of a disclosure relating to function does not defeat the [Examiner’s] finding of anticipation.” Id. “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” Id. Because the structure of the prior art was intended to dispense oil from an oil can (id. at 1475), Schreiber further argued that the functional limitations of the claim (i.e., the conically shaped dispenser “allows several kernels of popped popcorn to pass through at the same time” by “[jamming] up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package”) distinguished it from the prior art. Id. at 1478. While noting that there is nothing wrong with reciting features of an apparatus using functional language, the Federal Circuit stated that “choosing to define an element functionally, i.e., by what it does, carries with it a risk.” Id. The Federal Circuit described this “risk” as follows: Appeal 2019-000502 Application 13/641,918 7 where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Id. Because the structural elements recited in the claim at issue in Schreiber were described broadly (e.g., “dispensing top,” “a generally conical shape and an opening at each end”) and because the prior art depicted a structural element with the “same general shape” as was shown for a preferred embodiment of the claimed invention, the Federal Circuit held that the examiner “was justified” in finding the prior art disclosed the functional limitations. Id. “At that point, the burden shifted to Schreiber to show that the prior art structure did not inherently possess the functionally defined limitations of his claimed apparatus,” which Schreiber failed to do. Id. The burden-shifting framework employed by the PTO in situations such as these is detailed in MPEP § 2112(V). Similar to the situation in Schreiber, Appellant here does not dispute the Examiner’s finding that Kerker discloses the structural limitations claim 16 recites, but instead limits its arguments to whether those disclosed structures perform the recited function of controlling buffeting loads. Given the similarity between the broadly claimed structure in claim 16 and the structure disclosed by Kerker, we find that the Examiner was justified in concluding the disclosed structure is likewise capable of performing the recited functional attributes as well. Thus, we do not find any error with the prima facie case made by the Examiner that Kerker anticipates claim 16. As Schreiber makes clear, this shifts the burden to Appellant to provide evidence or argument demonstrating that the subject matter shown Appeal 2019-000502 Application 13/641,918 8 to be in the prior art does not necessarily possess the characteristic relied on. Appellant, however, has merely provided us with attorney argument without any evidentiary support, which is not enough to carry its burden. Even accepting Appellant’s contentions that Kerker does not contemplate controlling buffeting loads and that Kerker discloses controlling completely different loads with its disclosed structure, Appellant fails to offer any evidence, or supported technical reasoning, to show that the disclosed structures do not also control buffeting loads. As a result, we are not apprised of error by Appellant regarding the Examiner’s rejection of claim 16. Therefore, we sustain the Examiner’s rejection of claims 16, 18, 20, and 30. II. Obviousness of Claims 17, 19, and 21–28 For claims 17, 19, and 21–28, the Examiner concludes that the claimed combination of elements would have been obvious in view of Kerker and Schülein. Final Act. 3–4. Appellant disputes the Examiner’s determination that a skilled artisan would have known to combine the apparatuses in the manner claimed because neither Kerker nor Schülein is directed to reducing load forces caused by buffeting. Appeal Br. 9–10. Appellant further argues, “[t]he combination of Kerker with Schulein only makes sense in hindsight.” Id. For the following reasons, we find Appellant’s argument persuasive. Claims 17, 19, and 21 Addressing collectively claims 17, 19, and 21, the Examiner finds that, although “Kerker fails to disclose the use of a sensor for detecting flight phases for controlling the buffeting load control elements accordingly,” Appeal 2019-000502 Application 13/641,918 9 “Schülein discloses a device on a wing that's retractable and extendable [0065] wherein actual flight phases might be identified in order to apply suitable controls [0053].” Id. at 3. The Examiner determines that “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to use sensors to detect flight phases in order to use stored information to minimize buffeting would further prevent structural fatigue failures and the need for costly repairs.” Id. The Examiner adds that “using flight phase sensors (to sense flight phases in which buffeting would occur) would prevent these failures preemptively as opposed to sensing buffeting before alleviating the problem.” Id. The Examiner’s reasoning for why a skilled artisan would have been motivated to combine Kerker and Schülein in the manner claimed depends on a skilled artisan knowing that the structure Kerker discloses can be used to minimize buffeting. The Examiner, however, offers no evidence to establish that a skilled artisan would have known to use the structures disclosed by Kerker to minimize buffeting. Notably, the Examiner does not dispute that Kerker relates to a longitudinal stability control for aircrafts that have a high degree of sweep-back and that move at ultra-high speeds (see Ans. 4; Kerker, 1:12–15, 1:72–2:3). Moreover, the Examiner does not suggest that a skilled artisan would have understood Schülein to teach controlling a structure in order to minimize buffeting. Rather, the Examiner states Schülein teaches more generally that it was known to use load sensors with control elements in order detect flight phases. Ans. 5. In the anticipation rejection, the issue was not whether a skilled artisan at the time of the invention recognized that the structure Kerker Appeal 2019-000502 Application 13/641,918 10 discloses would minimize buffeting,2 but whether the Examiner’s finding that the structure would perform the function of minimizing buffeting was justified because, if justified, it shifted the burden to Appellant to establish that the structure would not perform the recited function. In the obviousness rejection, however, the Examiner’s reasoning depends on the factual assertion that a skilled artisan knew that the structure Kerker discloses would minimize buffeting. The Examiner here, however, has provided no evidence that at the time of the invention it was known by a skilled artisan to use the structures Kerker discloses to reduce buffeting loads. With respect to core factual findings in a determination of patentability, an Examiner cannot establish a prima facie case based on conclusions simply deemed to be basic knowledge or common sense. In re Zurko, 258 F.3d 1379, 1385–86 (Fed. Cir. 2001). Rather, the Examiner “must point to some concrete evidence in the record in support of [those] findings.” Id. As a result, the Examiner’s rationale for why a skilled artisan would have combined Kerker and Schülein in the manner claimed lacks a rational underpinning. Therefore, we do not sustain the Examiner’s obviousness rejection of claims 17, 19, and 21. Claim 22 For claim 22, the Examiner finds Kerker fails to disclose the recited elements, but “takes Official Notice that the use of load sensors are very well known in the art.” Id. The Examiner determines that “[i]t would have been obvious to . . . include load sensors in the device of Kerker as modified 2 See, e.g., Schering Corp. v. Geneva Pharmaceuticals, 339 F. 3d 1373, 1377 (Fed. Cir. 2003) (“this court rejects the contention that inherent anticipation requires recognition in the prior art”) Appeal 2019-000502 Application 13/641,918 11 by Schülein in order to impart precise actuation on the buffeting load control elements.” Id. Similar to the obviousness determination of claims 17, 19, and 21, the Examiner’s rejection of claim 22 depends on the unsupported assertion that a skilled artisan knew to use the structure that Kerker discloses to minimize buffeting. Therefore, we do not sustain the Examiner’s obviousness rejection of claim 22. Claims 23 –28 Regarding claims 23–28, the Examiner does not identify any reason why a skilled artisan would have been motivated to modify Kerker with the teachings of Schülein in the manner claimed. Presumably, the Examiner is relying on the same rationale articulated for claims 17, 19, 21, and 22, which we have found defective. Therefore, we do not sustain the Examiner’s obviousness rejection of claim 23–28. Appeal 2019-000502 Application 13/641,918 12 DECISION The Examiner’s rejection of claims 16, 18, 20, and 30 is affirmed and the rejection of claims 17, 19, and 21–28 is reversed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 18, 20, 30 102(b) Kerker 16, 18, 20, 30 17, 19, 21–28 103(a) Kerker, Schülein 17, 19, 21– 28 Overall Outcome3 16, 18, 20, 30 17, 19, 21– 28 No 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 3 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.”