The Boeing Company

Patent Trials and Appeals Board

Jun 22, 2020

14309252 - (D) (P.T.A.B. Jun. 22, 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.
14/309,252 06/19/2014 Santiago Alvarado JR. 13-1958-US-CIP 9794
101302 7590 06/22/2020
Hanley, Flight & Zimmerman (Boeing)
150 S. Wacker Drive
Suite 2200
Chicago, IL 60606
EXAMINER
KLEINMAN, LAIL A
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
docketing@hfzlaw.com
mhanley@hfzlaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANTIAGO ALVARADO and JOSEPH M. WAPENSKI
Appeal 2019-005634
Application 14/309,252
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, 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 to reject claims 1, 3–5, 7–9, 11–14, 16, 18, 19, 21, 22,
24–28, and 30–32. See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the Boeing Company.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to methods and an apparatus to predict
landing system operating parameters. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method comprising:
measuring a value of an operating parameter of a landing
system of an aircraft;
determining a deceleration setting of the aircraft;
determining a ground travel path;
determining a range of brake temperature data associated
with a previous brake deployment of a brake of the aircraft;
determining a peak temperature associated with the
previous brake deployment;
measuring depleted brake material of the brake;
calculating, using a processor, a margin between the peak
temperature and a pre-determined maximum temperature; and
calculating, using the processor, a predicted value of the
operating parameter corresponding to the ground travel path,
wherein the predicted value is calculated based on the measured
value of the operating parameter, the deceleration setting, the
ground travel path, the range of brake temperature data, the
measured depleted brake material and the margin.
REJECTION
Claims 1, 3–5, 7–9, 11–14, 16, 18, 19, 21, 22, 24–28, and 30–32 are
rejected under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement. Final Act. 3.
OPINION
The claims are argued as a group for which claim 1 is representative
under 37 C.F.R. § 41.37(c)(1)(iv).
New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written
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description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971).
“The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required ‘to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.”’ Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba requirement,
newly added claim limitations must be supported in the specification
through express, implicit, or inherent disclosure. The fundamental factual
inquiry is whether the specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935
F.2d at 1563–64. When an explicit limitation in a claim is not present in the
written description it must be shown that a person of ordinary skill would
have understood that the description requires that limitation. Hyatt v. Boone,
146 F.3d 1348, 1353, (Fed. Cir. 1998). If the originally filed disclosure does
not provide support for each claim limitation, a new or amended claim must
be rejected under 35 U.S.C. § 112, paragraph 1, as lacking adequate written
description.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact.
Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir.
1997) citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991)). The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
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Application 14/309,252

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the original disclosure a description of the invention defined by the claims.
In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). The PTO has the initial
burden of presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the invention defined
by the claims. By pointing to the fact that the claim at issue reads on
embodiments outside the scope of the description, the PTO has satisfied its
burden. In re Wertheim, 541 F.2d 257, 263–4 (CCPA 1976).
The Examiner succinctly stated the basis for the § 112(a) rejection:
Applicant’s original disclosure does not appear to draw a
connection between the margin and the calculation of the
predicted value of the operating parameter. Rather, the
calculation of the predicted value of the operating parameter
appears to be based on various sensor inputs but appears to fail
to include the above determined margin as an input (See at least
¶34 of Applicant’s Specification).
Final Act. 3.
Appellant repeatedly asserts, in one form or another:
[O]ne of ordinary skill in the art when reading the originally filed
specification would clearly understand that a margin (e.g., a
brake temperature margin) could be used in calculating a
predicted value of an operating parameter value, as set forth by
claim.
See, e.g., Appeal Br. 11, 12–13; Reply. Br. 4.
Appellant essentially asserts that one skilled in the art would
understand that a temperature margin (illustrated as 420 in Fig. 4) could,
somehow or other, be used to calculate a predicted operating parameter, the
only examples of which we are aware of being “brake temperature” or
“dispatch turn time” (see, e.g., claim 3; Spec. para. 22). However, notably
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absent from Appellant’s argument is any indication whatsoever as to
specifically how temperature margin is used in the presently claimed
invention to calculate a predicted operating temperature or other parameter.
We think the latter is a fair requirement for demonstrating Appellant was, at
the time of filing, in possession of the subject matter for which Appellant
now seeks the exclusive right.
It is true that patent specifications are written for those skilled in the
art and, as such, preferably omit that which is well-known and already
available to the public. See MPEP § 2164.05(a). Because we find no mention
in the portions of the Specification cited by Appellant of the subject matter
in question, presumably the Specification here omits such information. If
that is the case, and Appellant is indeed relying on the knowledge available
to the public, it is fair to require Appellant to produce either some evidence
or technical explanation describing the actual subject matter omitted from
the Specification that Appellant asserts would be understood by the skilled
artisan. Here, we have no such information presently before us and none is
apparent.
According to Appellant’s Specification, several parameters that would
clearly and undoubtedly influence at least brake temperature predictions are
discussed, including, but not limited to, the other factors present in claim 1:
current measured temperature (p. 5, para. 22), anticipated deceleration (p. 5,
para. 22), anticipated ground travel pathways (p. 4–5, para. 22), temperature
history (para. 31), brake material depletion (para. 35). See also Claim 4
(listing other factors clearly related to brake temperature predictions). It is
not apparent to us how or why the “margin,” represented by arrow 420 in
Figure 4, and described as the difference “between the peak temperature 416
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of the brake temperature history 406 and the horizontal line 408 (i.e., the
threshold temperature at which a fuse plug may begin to melt),” would have
any influence over predicted values of brake temperature or any other
relevant “operating parameter.” Appellant does not adequately explain how
or why the measured difference between a historic peak brake temperature
measurement and some arbitrary threshold would influence predictions of
brake temperature values. Nor does Appellant adequately demonstrate why
this subject matter is so well-known that it could be omitted from the
Specification without violating the requirements of 35 U.S.C. § 112(a).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claim 1 as lacking an adequate written description in support
thereof.

CONCLUSION
The Examiner’s rejection is AFFIRMED.
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DECISION SUMMARY
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 3–5, 7–9,
11–14, 16,
18, 19, 21,
22, 24–28,
30–32
112(a) Written
Description
1, 3–5, 7–9,
11–14, 16,
18, 19, 21,
22, 24–28,
30–32

TIME PERIOD FOR RESPONSE
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