THE BOEING COMPANY

Patent Trials and Appeals Board

Sep 23, 2020

14590337 - (D) (P.T.A.B. Sep. 23, 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.
14/590,337 01/06/2015 Sesinando P. Macaraeg 14-1182-US-NP (800-0063) 2278
107112 7590 09/23/2020
The Small Patent Law Group LLC
225 S. Meramec, Suite 725
St. Louis, MO 63105
EXAMINER
EMRICH, LARISSA ROWE
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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@splglaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SESINANDO P. MACARAEG and FREDERICK T. CALKINS

Appeal 2019-006544
Application 14/590,337
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1, 3–15, and 18–20. 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 The Boeing
Company. Appeal Brief dated June 17, 2019 (“Appeal Br.”) 4.
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Application 14/590,337

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CLAIMED SUBJECT MATTER

The present application generally relates to “an environmental aspect
control assembly.” Specification filed January 6, 2015 (“Spec.”) ¶ 1. The
Specification teaches embodiments of “an environmental aspect control
assembly configured to control one or more environmental aspects, such as
moisture, sound, and/or temperature.” Id. ¶ 10.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:

1. An environmental aspect control assembly configured to
control one or more environmental aspects, the environmental
aspect control assembly comprising:
at least one aspect-controlling portion formed of one or
more environmental aspect-controlling materials; and
at least one shape-changing actuator operatively
connected to the at least one aspect-controlling portion, wherein
the at least one shape-changing actuator automatically adapts to
changing environmental conditions by having a first actuator
shape at a first ambient temperature and a second actuator shape
at a second ambient temperature that differs from the first
ambient temperature, wherein the at least one shape-
changing actuator changes shape in response to changes
between the first ambient temperature and the second
ambient temperature, wherein the first actuator shape causes
the at least one aspect-controlling portion to form a first
structural shape, wherein the second actuator shape causes the
at least one aspect-controlling portion to form a second
structural shape that differs from the first structural shape,
wherein the first structural shape is one of an expanded or
compressed structural shape, wherein the second structural
shape is the other of the expanded or compressed structural
shape, wherein the at least one shape-changing actuator is
formed of a single piece of wire having a plurality of windings
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that wrap around or within the at least one aspect-controlling
portion, and wherein the plurality of windings squeeze and
constrict the at least one aspect-controlling portion in the
compressed structural shape.
Appeal Br. 23 (Claims App.).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Jacobs et al. (“Jacobs”) US 5,700,337 Dec. 23, 1997
Yambe et al. (“Yambe”) US 2005/0016637A1 Jan. 27, 2005
Kim US 2010/0138983Al June 10, 2010
Lewis et al. (“Lewis”) US 2014/0220277 Al Aug. 7, 2014
Barton EP0475677 A1 March 18, 1992
M. Ashby, K. Johnson, Materials and Design, The Art and Science of
Material Selection in Product Design, 2d ed. (2010) (“Ashby”)
P. Tortora, B. Collier, Understanding Textiles, 5th ed. (1997) (“Tortora”)2

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1, 7, 8, and 10 are rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Yambe. Final Action dated March 21, 2019
(“Final Act.”) 2–4.
2. Claims 3, 5, 6, and 12 are rejected under 35 U.S.C. § 103 as
being unpatentable over Yambe in view of Lewis and as
evidenced by Ashby. Id. at 4–5.
3. Claims 4 and 9 are rejected under 35 U.S.C. § 103 as being

2 Although the Examiner refers to this reference as “Aramid,” we follow our
normal practice of referring to cited art according to its author’s surname.
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unpatentable over Yambe in view of Lewis and Kim as
evidenced by Tortora and Ashby. Id. at 5–8.
4. Claim 11 is rejected under 35 U.S.C. § 103 as being
unpatentable over Yambe in view of Jacobs. Id. at 8–9.
5. Claims 13 and 18–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Yambe in view of Lewis as
evidenced by Ashby. Id. at 9–11.
6. Claim 14 is rejected under 35 U.S.C. § 103 as being
unpatentable over Yambe in view of Lewis as evidenced by
Ashby and further in view of Barton. Id. at 12.
7. Claim 15 is rejected under 35 U.S.C. § 103 as being
unpatentable over Yambe in view of Lewis and Kim as
evidenced by Tortora and Ashby. Id. at 12–13.
DISCUSSION
Rejection 1. The Examiner rejects claims 1, 7, 8, and 10 as
anticipated by Yambe. Id. at 2–4. Yambe is titled “Conveying Device with
Peristaltic Movement.” Yambe, code (54). Yambe teaches “[a] conveying
device with peristaltic movement [that] includes a flexible transport tube and
a two-way shape memory alloy.” Id., Abstract.
In support of the rejection, the Examiner finds that Yambe teaches a
two-way shape memory alloy arranged in a helical or ring form on the
surface or inside of a transport tube. Final Act. 3. Figure 2A of Yambe is
reproduced below.
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Figure 2A “is a side view of a conveying device with peristaltic movement.”
Id. ¶ 39. The figure depicts transport tube 1, two-way shape memory alloys
2, and wirings 3. Id.
The Examiner finds that transport tube 1 satisfies the “aspect-
controlling portion” limitation and that memory alloys 2 satisfy the “shape-
changing actuator” limitation. Final Act. 3.
Appellant seeks reversal on several bases. Appeal Br. 12–18. First,
Appellant argues that Yambe does not teach an assembly “wherein the at
least one shape-changing actuator automatically adapts to changing
environmental conditions by having a first actuator shape at a first ambient
temperature and a second actuator shape at a second ambient temperature
that differs from the first ambient temperature, wherein the at least one
shape-changing actuator changes shape in response to changes between the
first ambient temperature and the second ambient temperature” as required
by claim 1. Id. at 13–15.
Appellant argues that the foregoing provision requires that the
actuator have a first shape at a first ambient temperature, and a second shape
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at a second ambient temperature rather than being connected to a source of
electrical power that is used to change the shape. Id. at 13. Appellant
argues that Yambe does not teach such feature because, in Yambe, the alloy
“changes shape in response to being electrically conducted and heated.” Id.
at 14. Appellant further argues that the Examiner did not adequately address
the subject limitation in the Final Office Action. Id. at 15.
In the Answer, the Examiner determines that “Yambe teaches a shape
memory alloy that responds to a change in temperature from an external heat
source, therefore it is inherent to the material that in response to a change in
temperature a change in shape will occur, regardless of how the change in
temperature is applied.” Answer 17 (emphasis added).
In its Reply Brief, Appellant argues that the Examiner has not
accorded all words of the limitation patentable weight. Reply Brief dated
Sept. 3, 2019 (“Reply Br.”). Appellant argues that “the Office Action
acknowledges that these limitations were ‘not evaluated.’” Reply Br. 2.
The portion of the Final Office Action quoted by Appellant is not, however,
reflective of the Examiner’s determination. The full sentence provides that
“[t]his is a functional limitation, and therefore was not evaluated on its own,
but in conjunction with the remainder of claim 1.” Final Act. 3. In any case,
we consider the scope of the limitation at issue as follows.
The claims are to an “assembly.” Appeal Br. 23–27 (Claims App’x.).
Thus, the claims are apparatus claims.3 See 35 U.S.C. § 101. It has long
been held that “apparatus claims cover what a device is, not what a device

3 Claims 13–15, and 18 are to a “system.” Accordingly, they are also
apparatus claims.
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does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). Here, the Applicant uses functional language (“adapts,”
“changes shape”) to define the claim. In order to be accorded patentable
weight, functional language in an apparatus claim must limit the claim in
terms of structure rather than function. In re Schreiber, 128 F.3d at
1477-78; MPEP § 2114. Thus, the limitation at issue is construed to require
that the assembly or system of the claims “possess[es] the recited structure
[which is] capable of performing the recited functions.” See MasterMine
Software v Microsoft Corp., 874 F.3d 1307, 1315–16 (Fed. Cir. 2017).
The Examiner makes a specific finding that “it is inherent to the
material [of Yambe] that in response to a change in temperature a change in
shape will occur, regardless of how the change in temperature is applied.”
Ans. 17. That is, the Examiner finds that Yambe teaches structure capable
of changing shape in response to a change in ambient temperature.
As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art. Absent legal error or contrary factual evidence, those
findings can establish a prima facie case of obviousness. In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003).
The Examiner’s finding that Yambe’s memory alloy is capable of
changing shape in response to a change in ambient temperature is not
specifically rebutted and is sufficient to support a prima facie case of
obviousness. Accordingly, Appellant has not shown error in this regard.
Second, Appellant argues that Yambe fails to teach an assembly
“wherein the at least one shape-changing actuator is formed of a single piece
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of wire having a plurality of windings that wrap around or within the at least
one aspect-controlling portion.” Appeal Br. 15–16. Appellant argues that
Yambe’s disclosure of a “plurality of two-way shape memory alloys”
teaches a device with multiple alloys rather than “a single piece of wire” as
claimed. Id. at 16.
In the Answer, the Examiner interprets the limitation “as the
environmental aspect control assembly comprising at least one shape-
changing actuator (i.e. either a single actuator or a plurality of actuators),
wherein each individual actuator is formed of a single wire with a plurality
of windings.” Ans. 18. The Examiner further construes the claim to “limit[]
each individual shape-changing actuator to being formed of a single piece of
wire.” Id. The Examiner maintains the findings that these limitations are
satisfied by Yambe’s two-way shape memory alloys wound around a
transport tube. Id. at 19.
We find the Examiner’s determinations to be supported by the record.
Figure 2A of Yambe, supra, shows several memory alloys 2 (actuators).
The claim’s “at least one shape-changing actuator” language explicitly
permits multiple actuators. Further, the Examiner’s finding that the memory
alloy may be a wire arranged in a helical or ring form (id. at 19) is
supported. See Yambe ¶ 14 (“The two-way shape memory alloy may be of a
fine wire shape or a coil form.”); see also Yambe Fig. 2A. Thus, we adopt
the Examiner’s finding that “Yambe discloses at least one two-way shape
memory alloy (shape changing actuator) which individually comprise a
single wire and a plurality of windings.” Ans. 20.
Accordingly, Appellant has not shown error in this regard.
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Third, Appellant argues that the Examiner has adopted certain
inconsistent positions during the course of prosecution. Appeal Br. 16–18.
Appellant argues that “the evolving positions within the Office Actions cast
doubt on the sufficiency of support for the current positions and arguments
within the Office Action.” Id. at 18. Appellant further argues that
inconsistency “seemingly impeach[es] any deference that the Board may
deem it owes to the Examiner.” Id. This is not persuasive of error.
The Board has a statutory duty to “review adverse decisions of
examiners upon applications for patents.” 35 U.S.C. § 6(b)(1). Prior actions
by the Examiner are not “adverse decisions” presently under review and are
outside the scope of the present appeal. Further, the Federal Circuit has held
that prior decisions during prosecution are not binding on the Examiner. See
BlackLight Power v. Rogan, 295 F.3d 1269, 1273–1274 (Fed. Cir. 2002)
(quoting In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc) (“the
Commissioner has an obligation to refuse to grant a patent if he believes that
doing so would be contrary to law.”)); see also id. at 1273 (“The complexity
of the examination process, and the potential for error in any human activity,
weigh on the side of according the PTO latitude.”).
Accordingly, Appellant has failed to show error in the rejection on
this basis.

Rejections 2–7. The Examiner rejects claims 3–6, 9, 11–15, and 18–
20 as obvious over Yambe and various additional references. Final Act. 4–
13. In support of its appeal of these claims, Appellant relies on the
arguments described above. Appeal Br. 19–22. As we have not found such
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arguments to be persuasive, we find that Appellant has not shown error with
respect to the rejection of claims 3–6, 9, 11–15, and 18–20.

CONCLUSION

The Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 8, 10 102(a)(1) Yambe 1, 7, 8, 10
3, 5, 6, 12 103 Yambe, Lewis,
Ashby
3, 5, 6, 12
4, 9 103 Yambe, Lewis,
Kim, Tortora,
Ashby
4, 9
11 103 Yambe, Jacobs 11
13, 18–20 103 Yambe, Lewis,
Ashby
13, 18–20
14 103 Yambe, Lewis,
Ashby, Barton
14
15 103 Yambe, Lewis,
Kim, Tortora,
Ashby
15
Overall
Outcome
1, 3–15,
18–20

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

AFFIRMED