Thomas J. Garosshen

Patent Trials and Appeals Board

Aug 5, 2019

13127268 - (D) (P.T.A.B. Aug. 5, 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.
13/127,268 05/03/2011 Thomas J. Garosshen SK-06084-US
(LMS0571US)
1915
91017 7590 08/05/2019
Cantor Colburn LLP - Sikorsky Aircraft Corp.
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
DICKINSON, DUSTIN R
ART UNIT PAPER NUMBER
2867
NOTIFICATION DATE DELIVERY MODE
08/05/2019 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS J. GAROSSHEN
____________

Appeal 2017-009655
Application 13/127,268
Technology Center 2800
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and AVELYN M. ROSS,
Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

The Appellant2 appeals under 35 U.S.C. § 134(a) from the August 26, 2016
Non-Final Office Action rejecting claims 11, 13–17, 19–34, and 36–38.3
We AFFIRM-IN-PART and enter two new grounds of rejection pursuant to
37 C.F.R. § 41.50(b).

1 This Decision includes citations to the following documents: Specification filed
May 3, 2011 (“Spec.”); Non-Final Office Action dated August 26, 2016 (“Non-
Final Act.”); Appeal Brief filed January 25, 2017 (“Appeal Br.”); Examiner’s
Answer dated June 1, 2017 (“Ans.”); and Reply Brief filed June 28, 2017 (“Reply
Br.”).
2 The Appellant identifies the real party in interest as Sikorsky Aircraft
Corporation. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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The invention relates to methods of corrosion detection for use, e.g., on
aircraft. See Spec. ¶¶ 1–2. Independent claim 11 is representative of the appealed
claims, and is reproduced below.
11. A method of corrosion detection comprising:
measuring electrical conductivity with a sensor array attached
to a substrate, the sensor array including at least two interlaced inert
electrodes, wherein the step of measuring electrical conductivity
comprises:
measuring an electrolyte conductivity;
measuring a temperature;
measuring a time of wetness; and
determining corrosion output data as a single
mathematical function of a plurality of factors, the
factors including the electrolyte conductivity, the
time of wetness and the temperature; and
providing an alert when an aggressive corrosion condition is
detected.
Appeal Br. 8 (Appendix of Claims). Claim 22, the only other independent claim on
appeal, recites limitations similar to those in claim 11, but includes an additional
step of “periodically storing the corrosion output data within a data log unit
provided above the coating, the sensor array in communication with a data log unit
through a pin connector which extends through the coating in a direction transverse
to at least a portion of said sensor array.” Id. at 9.
The Examiner relies on the following references as evidence of
unpatentability:
Niblock US 2006/0006137 A1 Jan. 12, 2006
Harris et al. US 2006/0162431 A1 July 27, 2006
McCoy et al. US 7,859,273 B2 Dec. 28, 2010
Yamamoto et al. US 4,294,667 Oct. 13, 1981
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Safai et al. US2008/0312847 A1 Dec. 18, 2008
Sasanuma et al. US 2007/0125663 A1 June 7, 2007
Sabata et al. US 2005/0145018 A1 July 7, 2005
Banks US 6,556,027 B2 Apr. 29, 2003
Falat US 4,869,874 Sept. 26, 1989
Pavlovic US 2007/0114846 A1 May 24, 2007
The Examiner rejected claims 11 and 22 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the enablement
and written description requirements. See Non-Final Act. 4–5. The Examiner
rejected claims 11, 13, 14, 17, 21, 28, 30, and 31 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Niblock, Harris, and Sabata. Id. at 5–8. The
Examiner rejected claims 15, 16, 19, 20, 22–27, 29, 32–34, and 36–38 under 35
U.S.C. § 103(a) as unpatentable over the combination of Niblock, Harris, Sabata,
and one or more additional references. Id. at 8–17; see Order infra pp. 8–9. For the
reasons discussed below, we sustain the rejections under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, but reverse the rejections under 35 U.S.C.
§ 103(a).
Section 112 Enablement Rejection
The Examiner determined the claim phrase “determining corrosion output
data as a single mathematical function of a plurality of factors” (claims 11, 22) is
not enabled because the Specification discloses that “corrosion rate may be
expressed as a function of electrolyte strength, time of wetness and temperature,
but one of ordinary skill in the art would not be able to calculate corrosion output
data based on the specification without undue experimentation.” Non-Final Act. 4
(citing Spec. 5–6). The Examiner explains that undue experimentation would be
required to derive a single mathematical function, because the Specification fails to
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disclose “mathematical operators showing relationships between the variables.”
Ans. 4–5.
The Appellant argues the underlying basis for the Examiner’s rejection is the
breadth of the claims, not whether they are enabled. Appeal Br. 4. The Appellant
argues the Examiner has provided no support for finding that undue
experimentation would be required, and the fact that some experimentation, even if
complex, might be required to derive the mathematical function does not mean the
experimentation would be undue. Reply Br. 1.
In order to reject a claim for lack of enablement, “the PTO bears an initial
burden of setting forth a reasonable explanation as to why it believes that the scope
of protection provided by that claim is not adequately enabled by the description of
the invention provided in the specification of the application.” In re Wright, 999
F.2d 1557, 1562 (Fed. Cir. 1993). The burden then shifts to the appellant to show
that one of ordinary skill in the art could have practiced the claimed invention
without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA
1982). Materials submitted to prove enablement must be factual evidence such as
patents, publications, and affidavits. In re Eynde, 480 F.2d 1364, 1370 (CCPA
1973). Some experimentation, even a considerable amount, is not “undue” if, e.g.,
it is merely routine, or if the specification provides a reasonable amount of
guidance as to the direction in which the experimentation should proceed. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
We determine the Examiner provided a reasonable explanation for
concluding that claims 11 and 22 are not enabled—i.e., the absence of
“mathematical operators showing relationships between the variables” (Ans. 4)—
thereby properly shifting the burden to the Appellant to prove enablement. The
Appellant has not met this burden because the Appellant relies solely on attorney
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argument, and has not provided persuasive factual evidence to establish that the
Specification teaches those of ordinary skill in the art how to make and use the
invention without undue experimentation. See In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997) (explaining that argument by counsel cannot take the place of
evidence).
Accordingly, we sustain the rejection of claims 11 and 22 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with
the enablement requirement.
Section 112 Written Description Rejection
The Examiner found the limitation “determining corrosion output data as a
single mathematical function of a plurality of factors” (claims 11, 22) lacks written
descriptive support because the Specification does not disclose a single
mathematical function relating electrolyte strength, time of wetness, and
temperature. Non-Final Act. 4; see id. at 5 (“[N]o mathematical operators or
relationships are given between the variables which would be used to determine
corrosion output data.”). The Examiner finds lack of written descriptive support for
“a single mathematical function” is further evidenced by the need to calculate the
concentration “C” in the formula “Corrosion Rate = f (C, t, T).” Ans. 6; see Spec.
¶ 32 (“The measured conductivity and a conversion factor may be utilized to
provide concentration, (C) in the corrosion rate formula . . . .”).
The Appellant argues that Specification paragraphs 31 and 32, “read
together[,] disclose that Corrosion Rate is a function of electrolyte conductivity,
time of wetness, and temperature. Thus, the original written description establishes
that the inventors were in possession of the claimed combination.” Appeal Br. 5.
To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing date
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sought, he or she was in possession of the invention. The invention is, for purposes
of the ‘written description’ inquiry, whatever is now claimed.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). The Appellant’s arguments
alone are insufficient to establish that the Examiner erred reversibly in finding the
original Specification does not show possession of a single mathematical function
for determining corrosion output data. See Appeal Br. 5; Reply Br. 1–2 (failing to
clearly address the Examiner’s findings that “no mathematical operators or
relationships are given between the variables which would be used to determine
corrosion output data” and that an additional calculation is required to determine
concentration (Non-Final Act. 5; Ans. 6)).
Accordingly, we sustain the rejection of claims 11 and 22 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with
the written description requirement.
Section 103 Rejections
The Examiner relied on the combination of Niblock, Harris, and Sabata in
rejecting claims 11, 13–17, 19–34, and 36–38 under 35 U.S.C. § 103(a). Non-Final
Act. 5–17. The Examiner found that none of the references explicitly teaches a
single mathematical function to determine corrosion output data. Id. at 6. The
Examiner found that “[i]n the art of electrical measuring and testing one of
ordinary skill in the art would have at least some experience in mathematics such
as linear algebra, systems of equations and/or matrices.” Id. The Examiner found
the ordinary artisan, knowing that electrolyte conductivity, temperature, and time
of wetness are related factors in determining corrosion output data, would have
been motivated to determine corrosion output data as a single mathematical
function of these factors in order to simplify calculations, resulting in faster
determinations. Id.
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The Appellant argues the Examiner failed to identify support for finding that
the ordinary artisan would have understood that combining the factors disclosed in
the references as useful in detecting corrosion would simplify the determination of
corrosion output data, and, therefore, the rejection is based on improper hindsight
reasoning. Appeal Br. 6; see also Reply Br. 2.
The Appellant’s argument is persuasive. See Ans. 7 (“[I]f the board rules
that such a combination of known factors would not be obvious, it would follow
that one skilled in the art would not be enabled to make and use the claimed
invention without additional undue experimentation.”). Accordingly, we do not
sustain the rejections of claims 11, 13–17, 19–34, and 36–38 under 35 U.S.C.
§ 103(a).
New Grounds of Rejection
Claims 13–17, 19–21, 23–34, and 36–38 are rejected under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with
the enablement and written description requirements. Independent claims 11 and
22 fail to comply with the enablement and written description requirements for the
reasons stated by the Examiner in the Non-Final Office Action and the Answer.
See supra pp. 3–6. By virtue of their dependencies from claims 11 and 22, claims
13–17, 19–21, 23–34, and 36–38 likewise are unpatentable under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with
the enablement and written description requirements.

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ORDER
Claims
Rejected
Basis Reference(s) Affirmed Reversed New
Grounds
11, 22 § 112,
enablement
11, 22
11, 22 § 112,
written
description
11, 22
13–17, 19–
21, 23–34,
36–38
§ 112,
enablement
13–17,
19–21,
23–34,
and 36–
38
13–17, 19–
21, 23–34,
36–38
§ 112,
written
description
13–17,
19–21,
23–34,
and 36–
38
11, 13, 14,
17, 21, 28,
30, 31
§ 103(a) Niblock, Harris,
and Sabata
11, 13,
14, 17,
21, 28,
30, 31

15 § 103(a) Niblock, Harris,
Sabata, and
McCoy
15
16 § 103(a) Niblock, Harris,
Sabata, and
Yamamoto
16
19, 20, 22–
24, 27, 33,
34
§ 103(a) Niblock, Harris,
Sabata,
Sasanuma, and
Banks
19, 20,
22–24,
27, 33,
34

25 § 103(a) Niblock, Harris,
Sabata,
Sasanuma,
Banks, and
McCoy
25
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Claims
Rejected
Basis Reference(s) Affirmed Reversed New
Grounds
26 § 103(a) Niblock, Harris,
Sabata,
Sasanuma,
Banks, and
Yamamoto
26
29 § 103(a) Niblock, Harris,
Sabata, and
Safai
29
32 § 103(a) Niblock, Harris,
Sabata, and
Falat
32
36 § 103(a) Niblock, Harris,
Sabata,
Sasanuma,
Banks, and Falat
36
37 § 103(a) Niblock, Harris,
Sabata, and
Pavlovic
37
38 § 103(a) Niblock, Harris,
Sabata,
Sasanuma,
Banks, and
Pavlovic
38
Outcome 11, 22 13–17,
19–21,
23–34,
and 36–
38

37 C.F.R. § 41.50(b) provides that an appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of the
appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
Record.

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R.
§ 41.50(f).

AFFIRMED-IN-PART;
37 C.F.R. § 41.50(b)